Ex Parte Haslam et alDownload PDFPatent Trial and Appeal BoardFeb 7, 201713598125 (P.T.A.B. Feb. 7, 2017) Copy Citation United States Patent and Trademark Office 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. 13/598,125 08/29/2012 Jeffery J. Haslam IL-12435 7799 24981 7590 02/09/2017 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 EXAMINER GORDON II, BRADLEY R LIVERMORE, CA 94551-0808 ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 02/09/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): llnl-docket@llnl.gov PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFERY J. HASLAM and MARK A MITCHELL Appeal 2015-006104 Application 13/598,125 Technology Center 1700 Before JEFFREY T. SMITH, JAMES C. HOUSEL, and JULIA HEANEY, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the Examiner’s decision finally rejecting claims 1—39 under 35 U.S.C. § 103(a) 1 Our decision refers to the Specification filed August 29, 2012, Appellants’ Appeal Brief (Appeal Br.) filed March 11, 2015, the Examiner’s Answer (Ans.) delivered May 28, 2015, and Appellants’ Reply Brief (Reply Br.) filed June 2, 2015. 2 According to Appellants, the real parties in interest are Lawrence Livermore National Security, LLC and the United States of America as represented by the United States Department of Energy (DOE). Appeal Br. 2. Appeal 2015-006104 Application 13/598,125 as unpatentable over Graham3 in view of Alvin.4 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The invention relates to the use of nanofibers in relation to ceramic filters. Spec. 5:18—19. Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. The limitation at issue is italicized. 1. A filter apparatus for filtering the flow of a gas wherein the gas contains particles, consisting of. a filter body that contains the flow of the gas; a base plate that forms a portion of said filter body and is part of said filter body that contains the flow of the gas; a first opening through said base plate for the flow of the gas; a first tubular filter element in said filter body mounted directly on said base plate over said first opening through said base plate and for the flow of the gas, said first tubular filter element having a first internal passage positioned directly on said base plate over said first opening through said base plate for the flow of the gas, a first bottom, and a first top; wherein said first top is closed; said first tubular filter element having a first tubular porous substrate, said first tubular porous substrate made of a porous ceramic material; and a first filtering material entirely surrounding said first tubular porous substrate, said first filtering material including nanofibers; wherein the flow of the gas travels through said first opening through said base plate, travels through said first internal passage of said first tubular filter 3 US 2004/0255783 Al, published December 23, 2004. 4 US 6,863,868 Bl, published March 8, 2005. 2 Appeal 2015-006104 Application 13/598,125 element and travels through said first filtering material entirely surrounding said first tubular porous substrate, wherein the particles are captured in said first filtering material; and a second opening through said base plate for the flow of the gas; a second tubular filter element in said filter body mounted directly on said base plate over said second opening through said base plate for the flow of the gas, said second tubular filter element having a second internal passage positioned directly on said base plate over said second opening through said base plate for the flow of the gas, a second bottom, and a second top; wherein said second top is closed; said second tubular filter element having a second tubular porous substrate, said second tubular porous substrate made of a porous ceramic material; and a second filtering material entirely surrounding said second tubular porous substrate, said second filtering material including nanofibers; wherein the flow of the gas travels through said second opening through said base plate, travels through said second opening through said base plate, travels through said second internal passage of said second tubular filter element and travels through said second filtering material entirely surrounding said second tubular porous substrate, wherein the particles are captured in said second filtering material. Additional independent apparatus claim 12 similarly recites a filter apparatus for filtering the flow of a gas containing particles, but uses the term “means” in reference to the first and second porous substrates and the first and second filtering materials. Independent method claims 16, 31, 32, 35, and 36 each recite methods of filtering the flow of a gas containing particles, but uses the transitional phrase, “consisting of,” to limit the steps of the methods. 3 Appeal 2015-006104 Application 13/598,125 ANALYSIS Appellants do not argue the claims separately, but focus on the transitional language, “consisting of,” relative to the applied prior art as applied to claim 1. Although Appellants’ method claims use this transitional language with regard to the steps of the method, Appellants do not separately argue the method claims. Consistent with 37 C.F.R. § 41.37(c)(iv) (2015), we select claim 1 to address Appellants’ arguments and the remaining claims stand or fall with this claim. Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner’s rejection for the reasons well expressed in the Answer to the Appeal Brief, which we adopt as our own. We highlight and address specific findings and arguments for emphasis as follows. Initially, we note Appellants do not contest the Examiner’s findings as set forth in the Answer with regard to Graham and Alvin, nor do Appellants contest the Examiner’s reasoning for combining these reference to establish a prima facie case of obviousness. Instead, Appellants contend that because Graham’s apparatus as shown in Figure 35 and Alvin’s apparatus as shown in Figures 1 and 2 include structure in addition to that recited in claim 1, the Examiner’s combination of Graham and Alvin does not support the rejection by virtue of the limiting scope of claim 1 ’s use of the closed transitional language, “consisting of.” Appeal Br. 16—27. In particular, Appellants assert that Graham includes 1) a turbine (id. at 16—17); 2) a gas turbine intake (id. at 18); 3) an inlet hood 526 (id. at 18— 19); 4) a deflector plate 528 (id. at 19-20); 5) a dust collection hopper 532 4 Appeal 2015-006104 Application 13/598,125 (id. at 20-21); 6) a partition 538 (id. at 21—22); and 7) a pulse jet air cleaner 552 (id. at 22—23). Appellants further assert that Alvin includes: 1) a pressure vessel 22 (id. at 23—24); 2) a frusto-conical ash hopper 40 (id. at 24—25); 3) a tubesheet 48 (id. at 25—26); and 4) a dust shield or particle- deflector 56 (z'<2. at 26—27).5 Because claim 1 uses closed transitional language “consisting of’ and does not recite any of these identified structures, Appellants argue that the Examiner’s rejection does not comply with the legal standard for closed claims and should be reversed. Id. at 16— 27. “Consisting of’ is a closed transitional phrase that is “understood to exclude any elements, steps, or ingredients not specified in the claim.” AFC Indus., Inc. v. CardinalIG Co., Inc., 239 F.3d 1239, 1245 (Fed. Cir. 2001). “‘Consisting of is a term of patent convention meaning that the claimed invention contains only what is expressly set forth in the claim. See Vehicular Techs. Corp. v. Titan WheelInt’l, Inc., 212 F.3d 1377, 1382—83 5 These are the only structures in Graham and Alvin which Appellants identify as being excluded from the claims through their use of closed transitional language. Any argument that other structures depicted and described in these references might also be excluded is waived. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.”). See also Ex parte Frye, 2010 WF 889747, *4 (BPAI 2010) (“Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). 5 Appeal 2015-006104 Application 13/598,125 (Fed. Cir. 2000). However, while ‘consisting of’ limits the claimed invention, it does not limit aspects unrelated to the invention. It is thus necessary to determine what is limited by the ‘consisting of’ phrase.” Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004). In the context of this appeal, Appellants’ assertions that Alvin includes additional structure excluded from claim 1 are not persuasive, because the Examiner merely relied on Alvin as evidence of the use of a porous ceramic substrate in a similar environment and for a similar purpose to that of Graham’s substrate and Appellants’ invention (Ans. 23). Thus, Appellants’ argument as it relates to Alvin lacks persuasive merit. With regard to Graham, we begin by noting that the invention of claim 1 is directed to a filter apparatus for filtering the flow of a gas containing particles. Thus, the limits of the transitional language in this claim extend to the filter apparatus for filtering the flow of a particle- containing gas, and not to structure functionally separate from this apparatus. Norian supra. We further note, as did the Examiner (Ans. 22), that one of ordinary skill in the art would have found it obvious to have placed Graham’s filter apparatus in other gas flow systems in order to filter particles from those gas systems with a reasonable expectation of success. KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”) Moreover, it is facially obvious to use known elements for their known advantages in a known context. In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991); accord KSR, 550 U.S. at 417, 421 (2007). In addition, the Examiner notes that deletion or omission of structure along with its associated function generally 6 Appeal 2015-006104 Application 13/598,125 would have been an obvious expedient. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re Keegan, 331 F. 2d 315, 319 (CCPA 1964). Applying these principles to the present case, Graham’s turbine and gas turbine intake are merely directed to the particular use of the gas filtered by Graham’s filtering apparatus. As correctly noted by the Examiner (Ans. 22), Graham’s filtering apparatus may be applied to any of a variety of systems requiring filtered gas. Graham || 2 and 16. Thus, the turbine and gas turbine intake are not part of the filtering apparatus per se, and their omission would have been well within the ordinary skill in the art. Graham’s inlet hood 526, deflector plate 528, and hopper 532 clearly function to contain and direct the flowing gas to the filter elements. Graham’s partition 538 serves both to contain and direct the flowing gas to the filter elements, while also having the filter elements mounted thereto. These structures together constitute the filter body and base plate of claim 1. That hopper 532 additionally functions to collect filtered particulate does not negate the fact that it is clearly part of the filter body that functions to contain the flowing gas. In fact, Appellants disclose similar structure for the filter body, i.e., filter unit body 1002 as shown in Appellants’ Figure 10. With regard to Graham’s pulse jet air cleaner 552, we note that this structure functions to periodically shake or otherwise dislodge particles trapped in or on the filter media. Graham 1242. While Graham’s pulse jet air cleaner clearly would extend the working life of the filter media and permit continued operation of the filter without interruption for cleaning, one of ordinary skill in the art would nonetheless have found it obvious to omit such a cleaner along with its associated function to reduce the cost and 7 Appeal 2015-006104 Application 13/598,125 complexity of the filtering system. Ans. 22—24; In re Thompson, 545 F.2d 1290, 1294 (CCPA 1976). Finally, we note Appellants merely assert that Graham and Alvin include additional structure which are specifically excluded from claim l’s use of closed transitional language. Appellants do not address the Examiner’s position that Graham’s filtering apparatus is not limited to use with a turbine and gas turbine inlet, and that the ordinary artisan would have found it obvious to have omitted other structure, e.g., the pulse jet cleaner, along with its associated function with a reasonable expectation of success. Therefore, Appellants have not identified a reversible error in the Examiner’s findings, articulated reasoning, or conclusions of law. Jung, 637 F.3d at 1365. DECISION Upon consideration of the record, and for the reasons given above and in the Answer, the decision of the Examiner rejecting claims 1—39 under 35 U.S.C. § 103(a) as unpatentable over Graham in view of Alvin 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)(1). AFFIRMED 8 Copy with citationCopy as parenthetical citation