Ex Parte Gasseling

Board of Patent Appeals and Interferences

Feb 16, 2006

09948377 (B.P.A.I. Feb. 16, 2006)

The opinion in support of the decision being entered today was not written for publication
and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN B. GASSELING

____________

Appeal No. 2005-2646
Application No. 09/948,377
____________

ON BRIEF
____________

Before FRANKFORT, McQUADE, and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claim 1, the
only claim pending in the application.
Appellant’s invention relates to an oil filter cooler for internal combustion engines.
More particularly, as noted on
page 1 of the specification, the invention addresses an oil filter having fins incorporated
on the top of the oil filter during the manufacturing process. An oil filter cooler with fins
located only on top is said to be easy to install and to allow for improved clearance, air
circulation, and increased heat transfer. Claim 1 on appeal reads as follows:
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Application No. 09/948,377

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1. An oil filter for cooling oil comprising: circular fins permanently incorporated
and limited to the top of an oil filter, wherein said circular fins are 360 degrees starting in
the center and increasing in diameter to the outer top edge, wherein said circular fins
are rectangular in shape from bottom to top.

The references of record relied upon by the examiner in rejecting claim 1 are:
Mitterer 2,191,490 Feb. 27, 1940
Bartalone et al. (Bartalone) 5,718,281 Feb. 17, 1998

Claim 1 stands rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention. In particular, the examiner points to lines 4-5 of
claim 1 and urges that the language therein is indefinite “because it is not clearly
understood what it means by the circular fins being rectangular in shape from bottom to
top” (final rejection, page 2).

Claim 1 also stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Bartalone in view of Mitterer.

Rather than reiterate the conflicting viewpoints advanced by appellant and the
examiner regarding the above-noted rejections, we refer to the final rejection (mailed
February 18, 2004) and the answer (mailed February 4, 2005) for a complete exposition
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Application No. 09/948,377

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of the examiner’s position, and to appellant’s brief (filed April 8, 2004) for the arguments
thereagainst.
OPINION
Having carefully reviewed the indefiniteness and obviousness issues raised in this
appeal in light of the record before us, we have made the determinations which follow.

Concerning the rejection of claim 1 under 35 U.S.C. § 112, second paragraph,
appellant urges that the specification and drawings of the application as originally filed
clearly show and describe circular fins permanently incorporated and limited to the top
of an oil filter, and wherein the fins have a rectangular shape from bottom to top. More
particularly, appellant contends that the side perspective view of Figure 1 shows (in
hidden lines) a rectangular fin configuration. We agree. Although we appreciate the
examiner’s position, we are of the opinion that one of ordinary skill in the art reading the
specification of the present application and viewing Figures 1 and 2 of the drawings
would clearly understand that the circular fins carried by the top portion of the oil filter
each have a rectangular shape in cross-section, wherein the long axis of the rectangle
extends vertically, or from the bottom to the top of the fins. The specification (page 8)
expressly describes the fins of Figure 1 as being “rectangular in shape from bottom 5 to
top 6” and such a configuration is readily apparent from Figure 1 of the drawings. As for
the language in claim 1 that the circular fins “are 360 degrees starting in the center and
Appeal No. 2005-2646
Application No. 09/948,377

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increasing in diameter to the outer top edge,” we understand this language to mean that
the circular fins on the top of the oil filter as seen in Figures 1 and 2 are concentrically
arranged beginning with a smaller diameter fin near the center of the top and with each
additional circular fin being of increasing diameter as the fins progress outwardly to the
outer top edge.

Given the foregoing discussion, we consider that claim 1 on appeal makes it clear as
to what subject matter is encompassed and is therefore definite within the meaning of
35 U.S.C. § 112, second paragraph. Thus, the examiner’s rejection of claim 1 under 35
U.S.C. § 112, second paragraph, will not be sustained.

In rejecting claim 1 under 35 U.S.C. § 103(a) the examiner contends that the
cooler/reservoir and filter holder (100) seen in Figures 10 and 11 of Bartalone is used
for cooling oil (see, e.g., col. 9, lines 47-61) and comprises fins (332) permanently
incorporated and disposed on top of an oil filter wherein the fins are rectangular in
shape from bottom to top. The examiner recognizes that Bartalone fails to show the fins
on the housing cover or top (110) being 360 degrees circular and increasing in diameter
from the center to the outer edge, as defined in claim 1 on appeal. To account for this
difference, the examiner looks to the Mitterer patent, urging that Mitterer shows, in
Figure 8, a cooler comprising circular fins (17) “permanently incorporated to the tip [sic]
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Application No. 09/948,377

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of the filter, wherein the circular fins are 360 degrees starting in the center and
increasing in diameter to the outer top edge (see the cap portion of the filter), wherein
the circular fins are rectangular in shape from bottom to top” (final rejection, page 3).

Based on the collective teachings of Bartalone and Mitterer, the examiner concludes
that it would have been obvious to one of ordinary skill in the art at the time of
appellant’s invention to modify the linearly formed fins of Bartalone (Figs. 10-11) with
the circularly formed fins as taught by Mitterer (Fig. 8) in order to provide a more
efficient cooling means by providing a more cooling surface such as a “domed” top.
The examiner further opines that
“[a]s to the matter of fins being incorporated and limited to the
top of an oil filter, it would have been obvious to limit the fins
to the top portion of the filter since one of ordinary skill in the
art can easily adapt the shape and size of the filter to include
the fins only on the top portion of the filter so that a space
can be saved.
Even if the Mitterer fails to suggest to
one of ordinary skill in the art to modify the fins of Bartalone
et al., it would be obvious to modify the shape of the fins of
Bartalone et al. with circular fins since the Examiner takes
Official Notice of the fact that such shaping of the fins to cool
devices and its practice to maximize the cooling effect would
be within the level of ordinary skill in the art" (final rejection,
page 3).

Appellant argues that Mitterer is directed to a fuel condenser that cools fuel on its
way from the fuel tank to an internal combustion engine to prevent vapor lock, and thus
is not in the field of appellant’s invention. Moreover, it is apparent that appellant is of
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Application No. 09/948,377

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the view that there is no teaching, suggestion or incentive in the applied prior art to
support the examiner’s modification of Bartalone in the manner urged in the final
rejection. We agree. In the first place, the fins (332) shown in Figures 10 and 11 of
Bartalone are clearly not rectangular in shape from bottom to top as the examiner
contends. It is readily apparent from Bartalone’s Figures 10 and 11 that the fins (332) on
the housing cover or top (110), like the fins (350) on the side wall of reservoir housing
(108), are tapered in cross section from bottom to top. The fins on the top portion of the
fuel condenser seen in Figure 8 of Mitterer are likewise not rectangular in shape (cross
section) from bottom to top. Moreover, Bartalone and Mitterer both disclose cooler
structures which include fins on the top as well as on the side walls to facilitate cooling
of the various fluids used therein. Thus, we see no way that the teachings of Bartalone
and Mitterer, even
if combinable, would have resulted in an oil filter like that claimed by appellant wherein
fins of the particular configuration claimed are incorporated in and limited only to the top
of the oil filter.

Regarding the examiner’s further positions that (1) it would have been obvious to
limit the fins to the top portion of the filter since one of ordinary skill in the art can easily
adapt the shape and size of the filter to include the fins only on
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Application No. 09/948,377

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the top portion of the filter so that a space can be saved, and (2) even if Mitterer fails to
suggest a modification of the fins of Bartalone, it would have been obvious to modify the
shape of the fins of Bartalone with circular fins “since the examiner takes Official Notice
of the fact that such shaping of the fins to cool devices and its practice to maximize the
cooling effect would be within the level of ordinary skill in the art” (final rejection, page
3), we find that both of these positions fail for the same reason, i.e, a total lack of any
substantial evidence to support them. Conclusory statements like those noted above do
not fulfill the examiner’s obligation in the first instance to make out a prima facie case of
obviousness and when relied upon as the principal evidence upon which a rejection is
based inevitably lead to a perception that the examiner is merely engaged in hindsight
reconstruction of the claimed subject matter based on appellant’s own disclosure.

In accordance with the foregoing discussions, the decision of the examiner to reject
claim 1 under 35 U.S.C. § 103 is reversed.

Since we have not sustained either of the rejections of claim 1 maintained by the
examiner on appeal, it follows that
the decision of the examiner is reversed.

REVERSED
Appeal No. 2005-2646
Application No. 09/948,377

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CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )

Appeal No. 2005-2646
Application No. 09/948,377

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John B. Gasseling 1815 Evergreen Dr. apid City, SD 57702 R

CEF/jrg

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