Ex Parte Holzmann et al

Patent Trial and Appeal Board

Feb 26, 2019

13544164 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/544,164 07/09/2012 Mark V. Holzmann
116387 7590 02/28/2019
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
106389-1926 9011
EXAMINER
VARMA, AKASH K
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK V. HOLZMANN and
J. BRUCE SCHELKOPF
Appeal2018-004323
Application 13/544, 164
Technology Center 1700
Before BRIAND. RANGE, JENNIFER R. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 9--18 and 28-30. We have jurisdiction. 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Cummins Filtration IP,
Inc. Appeal Br. 2. Appellants state that Cummins Filtration IP, Inc. is a
subsidiary of Cummins Filtration Inc. and states that Cummins Filtration
Inc. is a subsidiary of Cummins International Finance LLC. Id.
Appeal2018-004323
Application 13/544,164
STATEMENT OF THE CASE2
Appellants describe the invention as relating to filters making use of a
conductive element whose resistance can be measured in order to identify
counterfeit filters. Spec. 3 :3-11. Figure 4 of the Specification is an
embodiment of the invention and is reproduced below.
Fig. 4
2 In this Decision, we refer to the Final Office Action dated April 20, 201 7
("Final Act."), the Appeal Brief filed September 20, 2017 ("Appeal Br."),
the Examiner's Answer dated February 5, 2018 ("Ans."), and the Reply
Brief filed March 19, 2018 ("Reply Br.").
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Appeal2018-004323
Application 13/544,164
Figure 4 depicts a replaceable filter element 410 having an anticounterfeit
mechanism. Spec. 15: 19--20. In particular, second conductive path 430
extends from inlet end cap 400 and down "the axial length of the filter
element 410 along filtration media 415 to a second position 4 2 8 on or
adjacent to the outlet end cap 470." Id. at 15:25-28. The resistance
signature of the conductive path can be assessed to determine whether or not
the filter is counterfeit. Id. at 13:12-14:3.
Claim 9, reproduced below with emphasis added to certain key
recitations, is illustrative of the claimed subject matter:
9. A replaceable filter element comprising:
a first endcap;
a second endcap;
filter media having an axial length and extending between
the first end cap and the second endcap; and
a conductive path formed by a wire extending between a
first electrical contact terminal and a second electrical contact
terminal, the conductive path extending the axial length of the
filter media, the conductive path having a pre-determined
externally measurable electrical resistance signature.
Appeal Br. 16 (Claims App'x.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Farber
Irwin, Jr. et al.
("Irwin")
Liu et al.
("Liu")
us 5,602,042
US 2003/0042306 Al
US 2011/0059233 Al
3
Feb. 11, 1997
Mar. 6, 2003
Mar. 10, 2011
Appeal2018-004323
Application 13/544,164
Bridges et al.
("Bridges")
Hacker et al.
("Clint")3
US 2012/0186691 Al July 26, 2012
WO 2005/113112 Al Dec. 1, 2005
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 9, 10, and 14--18 under 35 U.S.C. § I03(a) as
unpatentable over Clint in view of Bridges. Ans. 3.
Rejection 2. Claims 11 and 12 under 35 U.S.C. § I03(a) as
unpatentable over Clint in view of Bridges and further in view of Irwin and
Liu. Id. at 16.
Rejection 3. Claim 13 under 35 U.S.C. § I03(a) as unpatentable over
Clint in view of Bridges and further in view of Liu. Id. at 19.
Rejection 4. Claims 28-30 under 35 U.S.C. § I03(a) as unpatentable
over Clint in view of Bridges and further in view of Farber. Id. at 20.
ANALYSIS
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
3 Although Mr. John R. Hacker is the first listed inventor on the PCT
publication, the Examiner refers to this reference by the name of one of the
other named inventors: "Clint." Ans. 3. To avoid confusion in the record,
we do the same.
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Appeal2018-004323
Application 13/544,164
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
We need only address independent claim 9 to resolve this appeal. The
Examiner rejects claim 9 as obvious over Clint in view of Bridges. Ans. 3.
The Examiner finds that Clint does not teach a conductive path formed by a
wire and, instead, teaches use of RF (radio frequency) tags. Id. at 7. The
Examiner quotes Clint as teaching that its tag reader "can be mounted in any
location in which it can communicate with the RF tag 121." Id. at 6-7
( quoting Clint 5 :9-16) ( emphasis omitted). The Examiner thus reasons that
the reader and tag could be mounted so that the path extends "an axial length
of the filter media." Id. at 7 (emphasis omitted).
The Examiner further finds that Bridges teaches a security system that
makes use of a wired RFID unit. The Examiner determines that it would
have been obvious to modify Clint's wireless design (with sensors extending
the axial length of the filter media) to be wired because Bridges teaches
security advantages to use of a wired design. Id. at 9.
Appellants argue that Clint does not teach or suggest a path extending
an axial path the length of the filter media. Ans. 7-11; Reply Br. 3-7. On
this record, Appellants' argument is persuasive as explained below.
We begin our analysis with claim construction. The Examiner states
that "the conductive path extending the axial length of the filter media"
recitation of claim 9 "is very broad and does not limit the actual location of
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Appeal2018-004323
Application 13/544,164
the conductive path being on the first and second end caps." Ans. 26.
Claim 9, however, defines the filter media as having an axial length and
extending between endcaps. Thus, while we agree that claim 9 does not
require that the ends of the conductive path must be on the end caps, the
conductive path must nonetheless extend "the axial length of the filter
media" meaning that the conductive path must at least extend from one end
cap to the other. Figure 4 of the Specification, as explained above, is
illustrative of such an embodiment.
In view of this claim construction, we agree with Appellants that the
Examiner has not adequately explained why a person of skill in the art
would have reached the "conductive path extending the axial length of the
filter media" recitation of claim 9. Clint teaches that its tag reader 124 "can
be mounted in any location in which it can communicate with the RF tag
121." Clint 5:9--16. Clint, however, also indicates having the reader and tag
closer together can help avoid interference problems. Clint 11 :4--19.
Although the Examiner states that the page 11 embodiment of Clint is not
the embodiment the Examiner relies upon (Ans. 26), Clint's teaching
regarding distortion still weighs against arbitrarily placing the reader and tag
far apart. Moreover, the Examiner does not address why this positioning of
the electrical path would have remained obvious to a person of skill in the
art once Clint's RF communication is replaced with wired communication.
Because the cited references, taken as a whole, do not suggest having
a communication path that extends the axial length of the filter media and do
not suggest having a wire conductive path extending the axial length of the
filter media, we do not sustain the Examiner's rejection of claim 9. Because
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Application 13/544,164
the Examiner's treatment of claims that depend from claim 9 do not cure this
error, we also do not sustain the rejection of those claims.
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 9--18 and 28-30.
REVERSED
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