Ex Parte Hawkins et alDownload PDFPatent Trial and Appeal BoardFeb 10, 201512277643 (P.T.A.B. Feb. 10, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHARLES W. HAWKINS and WILLIAM R. KNOX ____________ Appeal 2013-002821 Application 12/277,6431 Technology Center 1700 ____________ Before TERRY J. OWENS, ROMULO H. DELMENDO, and BEVERLY A. FRANKLIN, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellants seek our review under 35 U.S.C. § 134(a) of a decision of the Primary Examiner to reject claims 1, 2, 4–9, and 11–15. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 According to the Appellants, the real party in interest is Cummins Filtration IP, Inc. (Appeal Brief filed August 10, 2012, hereinafter “Br.,” 2). Appeal 2013-002821 Application 12/277,643 2 BACKGROUND The invention relates to a nutplate, which covers a filter housing or shell, having anti-rotation features that prevent rotation of the filter housing or shell relative to the nutplate and to a filter assembly that includes such a nutplate (Specification, hereinafter “Spec.,” 1, ll. 10–12, 24–26). Representative claim 1 is reproduced from page 13 of the Appeal Brief (Claims App’x), with the disputed limitations indicated in italicized text, as follows: 1. A nutplate comprising: fluid inlet openings that extend therethrough; a hub having an opening therethrough, the fluid inlet openings are disposed between the hub and a sidewall of the nutplate; and the sidewall having a first groove formed therein, the first groove includes a plurality of pre-formed anti-rotation features[,] wherein each of the anti-rotation features is a faceted region, wherein each of the faceted regions includes a rear wall that is substantially linear in top plan view, and wherein the rear wall is a wall at the bottom of the depth of the first groove. THE REJECTION The Examiner rejected claims 1, 2, 4–9, and 11–15 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Brown (United States Patent 5,080,787 issued January 14, 1992) (Examiner’s Answer entered September 24, 2012, hereinafter “Ans.,” 2–6; Office Action entered March 20, 2012 at 2–6). Appeal 2013-002821 Application 12/277,643 3 DISCUSSION The Appellants rely on the same arguments for claims 1, 2, 4–9, and 11–15 (Br. 6–11). Therefore, we confine our discussion to claim 1, which we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv). Claims 2, 4–9, and 11–15 stand or fall with representative claim 1. The Examiner found that Brown describes every limitation of claim 1 except for the requirement in the claim that “each of the faceted regions [in the first groove constituting anti-rotation features] includes a rear wall that is substantially linear in top plan view” (Ans. 2–3). The Examiner further found, however, that Brown describes various shapes and designs for the anti-rotation features (id. at 3). The Examiner explained “[t]here are only so many finite shapes that the anti-rotation fixtures may exist as and a faceted region with a substantially linear rear wall in top plan view [would have been] an obvious modification” (id. at 5). The Appellants contend that the “circular outline of [Brown’s] groove 50 would not contain a faceted region that includes a rear wall that is substantially linear in top plan view as recited in claims 1 and 8” (Br. 8). According to the Appellants, the Examiner applied a per se rule of obviousness, which is insufficient to satisfy the Examiner’s burden in an obviousness rejection (id. at 9–10). Furthermore, the Appellants argue that, unlike the subject matter of claim 1 or claim 8, Brown teaches “a secondary operation that deforms edge portions 70 of the housing into the recesses 72 that are formed along the circumference of the top of the nutplate 16” (id. at 11) (citing Brown’s col. 7, ll. 56–62; Figs. 3A, 3B). The Appellants’ arguments are unpersuasive to demonstrate any reversible error in the Examiner’s factual findings, analysis, and legal Appeal 2013-002821 Application 12/277,643 4 conclusion. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[E]ven assuming that the examiner had failed to make a prima facie case, the Board would not have erred in framing the issue as one of ‘reversible error.’”). It is well settled that the PTO is obligated to give claims their broadest reasonable interpretation not inconsistent with the remainder of the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.”) (citations omitted). See also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“[T]his court counsels the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages.”) (citation omitted). As found by the Examiner, Brown plainly teaches deformation of edge portions 70 of the housing into recesses 72 in groove 50 “such that rotation between the cover plate 16 [i.e., a nutplate] and the housing 10 is prevented” (Brown col. 5, ll. 37–61). Applying the correct mode of claim construction, the Examiner further found that Brown discloses faceted regions for the anti-rotation features in the groove (Ans. 3) (citing Brown Figs. 2, 4C, 4E). The Appellants have not explained with any reasonable specificity why the terms “faceted region” in claim 1 compels a narrower construction exclusive of the faceted shapes shown in Brown’s Figures 4C and 4E. Therefore, we find no merit in the Appellants’ position that Brown does not describe the limitation “each of the anti-rotation features is a faceted region,” as recited in claim 1. Although Brown does not describe recesses 72 as including “a rear wall that is substantially linear in top plan view,” as required by claim 1, we Appeal 2013-002821 Application 12/277,643 5 discern no error in the Examiner’s conclusion that a person of ordinary skill in the art would have arrived at the Appellants’ specified shape as a matter of obvious design choice. That is, the discovery of suitable shape configurations for Brown’s recesses that would satisfy the disclosed design need for anti-rotation would have been within the ordinary skill of a person of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). See also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (an analysis of obviousness “may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”). Lastly, we do not agree with the Appellants’ argument, Br. 11, that the subject matter of claim 1 differs from the prior art because Brown requires a “secondary operation” of deformation of edges 70 into recesses 72 to effect anti-rotation. As pointed out by the Examiner, Ans. 6, claim 1 is directed to a nutplate, which must distinguish over the prior art in terms of structure rather than by manufacturing steps, and, in any event, claim 1 does not exclude such deformation. Indeed, the current Specification itself contemplates the use of deformation of the flange of the housing to the shape of the pre-formed anti-rotation features (Spec. 1, ll. 24–28). For these reasons, we uphold the Examiner’s rejection. SUMMARY The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1, 2, 4– 9, and 11–15 as unpatentable over Brown is affirmed. Appeal 2013-002821 Application 12/277,643 6 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 cdc Copy with citationCopy as parenthetical citation