Ex Parte Heine

Board of Patent Appeals and Interferences

Feb 4, 2011

11187153 (B.P.A.I. Feb. 4, 2011)

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.
11/187,153 07/23/2005 Wilhelm Heine NI 166 7298
7590 02/04/2011
Klaus J. Bach
4407 Twin Oaks Drive
Murrysville, PA 15668
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
02/04/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILHELM HEINE
____________________

Appeal 2009-011423
Application 11/187,153
Technology Center 1700
____________________

Before CHUNG K. PAK, TERRY OWENS, and CATHERINE Q. TIMM,
Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1 and 3-19 under 35 U.S.C. § 103(a) as
unpatentable over Mohn (US 4,892,657; issued Jan. 9, 1990) in view of

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/187,153

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Hilgendorff (US 6,258,270 B1; issued Jul. 10, 2001). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention relates to a spacer element for guiding flow
media within a filtration unit (Spec. 1:1-3).
As is known in the art, the spacer elements are placed between filter
elements (Spec. 1:17-21). As is further known in the art, the spacer
elements have projections on their surfaces upon which the filter elements
rest such that a space is created between the spacer element and filter
element through which the flow medium can travel (Spec. 1:10 to Spec
2:11). According to the Specification, the known spacer elements have
rounded tops such that the surface area abutting the filter element
theoretically approaches zero and, as a result, the flow and pressure lowering
area of the projections is as small as possible (Spec. 3:6-13). But it has been
found that the filter membrane mechanically wears at the support points,
which causes piercing of the membrane and failure of the filtration device
(Spec. 3:14-33).
The projections of Appellant’s spacer elements have essentially flat
support areas. According to the Specification, the larger area engagement of
the essentially flat support area reduces the forces on the membrane so that
the mechanical stresses are reduced and the membrane remains undamaged
even over an extended operation of the apparatus (Spec. 5:4-14).
Figures 7 and 8 are illustrative of the essentially flat support areas
(290) formed on the top of the projections (29) located on the spacer element
(11). Figure 7 is reproduced below:
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Fig. 7 is a top view of a number of projections (29) on a portion of the
spacer element (Spec. 10:15-16).
Figure 8 is reproduced below:

Fig. 8 is a partial and cross-sectional view of the spacer element of
Fig. 7 showing the flat support area (290) formed on top of the projection
(29) (Spec. 10:18-19).

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Appellant presents arguments only for claim 1 and states that
dependent claims stand or fall with claim 1 (Br. 3). We, therefore, confine
our review to claim 1, which reads as follows:
1. A spacer element (11) for guiding a flow medium (15)
particularly in an apparatus (10) for filtering and separating the
flow medium (15) by reverse osmosis and ultrafiltration, with a
filter element (13) disposed between two adjacent spacer
elements (11),
each spacer element (11) being disc-shaped and having a
central opening (12) with a plurality of spaced openings (14)
disposed around the central opening (12) for conducting the
flow medium (15) through the spacer element (11),
said spacer element (11) having opposite surfaces (118,
119), and a plurality of projections (29) extending from each
surface (118, 119),
said projections (29) having essentially flat support areas
(290) formed on top of the projections (29) oriented essentially
parallel to the surfaces (118, 119) of the spacer element (11) so
that the filter element (13) abuts the spacer element over the
essentially flat support area (290).

(Claim 1, emphasis and indentations added.)
II. DISPOSITIVE ISSUE
Does the evidence as a whole support the Examiner’s conclusion that
it would have been obvious to one of ordinary skill in the art to have
designed flat engagement surfaces on the Mohn spacer projections in view
of the teachings of Hilgendorff?
III. DISCUSSION
There is no dispute that Mohn describes a spacer element (spacer 11)
with projections (raised bosses 29) upon which the filter element is to rest
(Mohn, Figs. 2 and 3; col. 7, ll. 42-50). Mohn, however, does not disclose
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that these projections have flat tops, rather Mohn depicts the projections as
having rounded tops as shown in Figures 8 and 9, reproduced below:

Figures 8a and 9a are cross-sectional views of exemplary embodiments of
boss 29 (Mohn, col. 2, ll. 33-34 and 37-38).

Figures 8b and 9b are plan views of the bosses of 8a and 9b, respectively
(Mohn, col. 2, ll. 35-36 and 39-40).

Hilgendorff also describes a filtration unit with spacer elements
(spaced guide elements 15) stacked along with fiber elements 16 and,
optionally, intermediate elements 22 (Hilgendorff, col. 4, ll. 55-58; col. 5, ll.
2-7; col. 5, ll. 16-18; Fig. 1). The spacer elements 15 include channels 18
formed by webs 180 (Hilgendorff, col. 5, ll. 31-33; Figs. 2 and 5). Figure 5
the bottom portion of which is reproduced below:
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The bottom portion of Figure 5 is a cross-sectional view of a section
of a stack of guide elements 15 with filter elements 16 and intermediate
elements 22 between and outside of guide elements 15
(Hilgendorff, col. 4, ll. 42-44).

As shown in Figure 5, the tops of the webs 180 are flat (Fig. 5 at 180).
The webs 180, however, do not support the filter elements 16.
While we agree with Appellant that element 180 of Hilgendorff is a
web and not a spacer engaging the filter element, we cannot say that the
evidence as a whole, on this record, fails to support the position of the
Examiner. This is because the obviousness analysis must take into “the
inferences and creative steps” or even routine steps that a person of ordinary
skill in the art would employ. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007); Ball Aerosol and Specialty Container, Inc. v Limited Brands,
Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). “If a person of ordinary skill can
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implement a predictable variation, § 103 likely bars its patentability.” KSR,
at 417.
Appellant asserts that Mohn’s raised bosses “provide for a point-like
contact in order to form the largest possible accessible filtration area.” (Br.
3.) However, Appellant cites to no part of Mohn describing such a function
for the boss tops (Br. 3), and we find no mention of a point-like contact in
Mohn. Mohn discusses the cross-sectional shape of the boss in the plane of
the spacer. In the plane parallel to the spacer surface, the bosses have a
spherical or circular cross-sectional shape or drop-like cross-sectional shape
with the latter largely eliminating turbulence when the flow medium flows
along past the boss and furthermore reduces pressure loss (Mohn, col. 4, ll.
1-7; col. 6, ll. 52-61). It is not clear from Mohn that the shape of the top is
critical.
Given that Mohn does not seem to be overly concerned about the
shape of the top of the boss, and various shapes including a flat shape would
have had the required ability to support the filter element in a predictable
manner, and Hilgendorff provides some evidence that flat topped elements
were known to be used in spacer elements, the evidence supports the
Examiner’s conclusion of obviousness.
We are cognizant of Appellant’s assertions that the rounded top had a
known purpose of providing a point-like contact in order to form the largest
possible assessable filtration area, but Appellant offers no evidence in
support of the assertion. Attorney argument in the briefs cannot take the
place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor
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has Appellant provided evidence that the flat-tops provide an unexpected
result.
On this record, we determine that the evidence as a whole supports the
Examiner’s conclusion that it would have been obvious to one of ordinary
skill in the art to have designed flat engagement surfaces on the Mohn spacer
projections.
IV. CONCLUSION
On the record before us, we sustain the rejection maintained by the
Examiner.
V. DECISION
The decision of the Examiner is affirmed.
VI. TIME PERIOD FOR RESPONSE
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

cam

KLAUS J. BACH
4407 TWIN OAKS DRIVE
MURRYSVILLE PA 15668