Ex Parte Galifi et al

Patent Trial and Appeal Board

Sep 11, 2013

12450080 (P.T.A.B. Sep. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/450,080 09/10/2009 Giuseppe Galifi 55741 8539
1609 7590 09/11/2013
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
KEYWORTH, PETER
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
09/11/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GIUSEPPE GALIFI and HARALD MEES
____________

Appeal 2012-006282
Application 12/450,080
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006282
Application 12/450,080

2
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejections under 35 U.S.C. § 103(a) of claims 10-14, 17, and 18 as
unpatentable over Rohrmeier (US 2005/0194308 A1 published Sept. 8,
2005) in view of Kreiner (WO 2007/023174 A1 published Mar. 1, 2007; as
translated via US 2008/0296809) and Sudo (US 7,087,166 B1 issued Aug. 8,
2006) and of claims 15 and 16 as unpatentable over these references in
combination with Katayama (US 2007/0134504 A1 published June 14,
2007)1. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appellants claim a method for producing a filter element which
comprises providing a support body 19 having a first end edge 27
surrounding a filter medium 3, covering an end of the filter medium with a
laser-permeable end cap having a laser-impermeable barrier layer 31 inside
the end cap and extending over the filter medium and the first end edge of
the support body, and welding the end cap to the filter medium and the
support body with laser energy thereby forming a welded joint between the
filter medium, the support body and the end cap (claim 10; see Figs. 1-2).

1 The Examiner clarifies that the statement of rejection for dependent claims
15 and 16 as listed in the Final Office Action (see FOA 7; see also Ans. 8)
was obviously erroneous because it failed to include the Sudo reference and
because it referred to the base rejection as applied to canceled claim 2 (Ans.
12). The Examiner further clarifies that the statement of rejection for these
claims should have read in the manner indicated above (id.). Appellants
acknowledge this clarification (Reply Br. 4) but do not express an intention
to pursue any complaint (e.g., via a petition to withdraw the appeal and
reopen prosecution) regarding the erroneous statement of rejection.
Therefore, we consider the error in question to be harmless.
Appeal 2012-006282
Application 12/450,080

3
A copy of representative claim 10, taken from the Claims Appendix of
the Appeal Brief, is set forth below:
10. A method for producing a filter element comprising
the steps of:
arranging a filter medium of a heat-sealable material to
surround an inner filter cavity;
providing a support body about and surrounding the filter
medium, the support body having first end edge;
covering a first end of the filter medium and the filter
cavity with a first end cap of thermoplastic, laser-permeable
material, the first end cap having an enclosure;
inserting a first laser-impermeable barrier layer into the
enclosure of the first end cap to extend over the first end of the
filter medium and the first end edge of the support body in a
radial plane relative to a longitudinal axis of the filter medium
and the support body; and
welding the first end cap to the filter medium and the
support body by irradiating laser-permeable material bordering
the first barrier layer with laser energy to heat a region
bordering the first barrier layer and to produce a welding
volume forming a welded joint between the filter medium, the
support body and the first end cap in a single pass at the first
end of the filter medium, the first end edge of the support body
and a bordering surface of the first end cap extending in a radial
plane relative to the longitudinal axis.
The only reasonably specific argument advanced by Appellants in the
record of this appeal relates to the rejection of independent claim 10 (App.
Br. 4-11). The comments regarding commonly rejected claims 11-14, 17,
and 18 merely point out what the claims recite (id. at 8-9) and accordingly
are not considered arguments for separate patentability of these claims. See
Appeal 2012-006282
Application 12/450,080

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37 C.F.R. § 41.37(c)(1)(vii). Concerning the separate rejection of dependent
claims 15 and 16, Appellants state without embellishment that "[t]he
[applied] Katayama publication does not relate to forming a filter element,
and thus, is not analogous or obvious to combine with the other citations"
(id. at 11). Such an unembellished statement is merely an unsupported
assertion, not an argument. For these reasons, claims 11-18 will stand or fall
with independent claim 10.
For the reasons expressed in the Answer and below, we will sustain
the rejection of independent claim 10 and concomitantly the rejections of the
other claims on appeal.
The Examiner finds that Rohrmeier discloses a method of producing a
filter element wherein a filter medium is welded via infrared radiation to an
end disk (see, e.g., 11) comprising an infrared permeable layer (see, e.g., 12)
(cf. the claim 10 end cap) and an infrared impermeable fusion layer (see,
e.g., 13) (cf. the claim 10 laser-impermeable barrier layer) (Ans. para.
bridging 4-5 (citing Rohrmeier Fig. 1 and paras. [0009]-[0010])). The
Examiner additionally finds that Rohrmeier does not disclose surrounding
the filter medium with a support body or welding with laser energy as
required by claim 10 (id. at 5).
The Examiner finds that Sudo discloses a filter element comprising a
support cylinder/body having a top edge (cf. the claim 10 first end edge)
sealed to an end cap (id. at 5, 9-10 (citing Sudo col. 2, ll. 56-63, col. 4, ll. 29-
51)) and concludes that it would have been obvious to provide Rohrmeier
with a support body surrounding the filter medium in order to provide
support therefor in view of Sudo (id. at 5).
Appeal 2012-006282
Application 12/450,080

5
Further, the Examiner finds that Kreiner teaches welding filter
components together via laser energy and materials which are variously laser
permeable and impermeable (id. at 6 (citing Kreiner paras. [0006], [0007],
and [0012])) and concludes that, in view of this teaching, it would have been
obvious to use laser energy in place of Rohrmeier's infrared radiation to
thereby form a welded joint between the filter medium, the support body,
and the end cap of the modified Rohrmeier filter element (id. at 6-7).
In contesting this proposed combination of prior art references,
Appellants argue that "claim 10 is patentably distinguishable by the welding
with the laser-impermeable layer in the end cap enclosure and radially over
the filter material and the support body" (App. Br. 5; capitalization
removed). According to Appellants,
The Rohrmeier and Kreiner publications and the Sudo
patent considered individually or in any obvious combination
thereof fail to disclose laser welding where the laser
impermeable layer is between the two parts being welded and
where the parts being welded are both a filter medium and a
surrounding support body to an end cap.
(Id. at 8).
Appellants' argument lacks persuasive merit.
The record contains a preponderance of evidence that each of the
argued claim 10 elements and their attendant functions were known in the
prior art. Therefore, the Examiner's conclusion of prima facie obviousness
is supported by the established legal principle that "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results" (KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007)). Specifically, it would have been prima facie
obvious to provide Rohrmeier's filter medium with a support body as taught
Appeal 2012-006282
Application 12/450,080

6
by Sudo and to form a weld joint between the filter medium, the support
body and the end cap via laser energy as taught by Kreiner in order to
thereby obtain "the predictable use of prior art elements [i.e., Rohrmeier's
filter medium and end cap, Sudo's support body and Kreiner's laser welding
technique] according to their established functions" (KSR, 550 U.S. at 417).
In forming such a weld joint, a person of ordinary skill in this art
would have found it obvious to use a fusion layer similar to the type taught
by Rohrmeier which is laser-impermeable and which extends over the ends
of the filter medium and the support body to be welded to the end cap as
desired. Appellants argue that it would not have been obvious to extend
such a fusion layer over both of the parts being welded to the end cap (App.
Br. 8). However, this argument is incompatible with the principle that "[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton" (KSR, 550 U.S. at 421).

The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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