Ex Parte Johnson et al

Patent Trial and Appeal Board

Mar 14, 2018

13655179 (P.T.A.B. Mar. 14, 2018)

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.
13/655,179 10/18/2012 Philip E. Johnson 00758.2029USC1 2983
117527 7590 03/16/2018
Merchant Rr (Tonlrl OnnalHsinn
EXAMINER
P.O. Box 2903 KURTZ, BENJAMIN M
Minneapolis, MN 55402
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
USPTOl 17527@merchantgould.com
donaldson_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP E. JOHNSON, CLAUDIO FORMICA,
ENRICO GRECO, MICHAEL L. BROWN, and
JOHN R. HACKER
Appeal 2017-006671
Application 13/655,179
Technology Center 1700
Before TERRY J. OWENS, SHELDON M. McGEE, and
JANE E. INGLESE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 16, 18-20, and 24-28. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a spin-on filter cartridge and a filter assembly
comprising the cartridge. Claim 16 is illustrative:
16. A spin-on filter cartridge comprising:
(a) a housing having a closed end, an open end,
and an interior volume;
Appeal 2017-006671
Application 13/655,179
(b) a cylindrical filter element operably oriented in
the housing interior volume and defining open filter
interior;
(i) the filter element including first and
second end caps at opposite ends;
(ii) an extension of media being between the
first and second end caps;
(c) a baffle plate non-removably secured to the
housing at the housing open end;
(i) the baffle plate having a central hub
defining a central flow aperture forming an outlet
arrangement;
(ii) the baffle plate defining an inlet
arrangement including a plurality of fluid apertures
circumscribing and being disposed radially
outward of the central flow aperture;
(iii) the baffle plate defining a circular
groove immediately adjacent to and forming part
of the central flow aperture;
(A) the groove defining a radial
sealing surface and a support surface; the
support surface intersecting the radial
surface; the groove being seal member free
and constructed to receive a seal member
from an operably placed filter head;
(B) the support surface of the groove
facing a direction opposite of the open filter
interior;
(d) a seal arrangement secured to the baffle plate
spaced from and circumscribing the groove, the inlet
arrangement, and the outlet arrangement;
(i) the support surface of the groove being
located axially closer to the closed end of the
housing than the seal arrangement is located
axially relative to the closed end of the housing;
and
(iii) [sic, (ii)] the seal arrangement facing a
direction opposite of the open filter interior.
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Application 13/655,179
The References
Stifelman
Gulsvig
Bradford
US 4,369,113
US 5,395,518
US 5,928,513
US 6,146,527
Jan. 18, 1983
Mar. 7, 1995
July 27, 1999
Nov. 14, 2000
July 22, 2003
Oelschlaegel
Minowa US 6,595,372 B1
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 16
and 18-20 over Minowa in view of Gulsvig, Stifelman and Bradford,
claims 24-28 over Minowa in view of Gulsvig, Stifelman, Bradford and
Oelschlaegel and claims 16, 18-20, and 24-28 over Oelschlaegel in view of
Minowa.
OPINION
We reverse the rejection over Minowa in view of Gulsvig, Stifelman
and Bradford and affirm the rejections over Minowa in view of Gulsvig,
Stifelman, Bradford and Oelschlaegel and over Oelschlaegel in view of
Minowa.
Rejection over Minowa in view of
Gulsvig, Stifelman and Bradford
We need address only the sole independent claim among claims 16
and 18-20, i.e., claim 16. That claim requires a spin-on filter cartridge
comprising a baffle plate having a circular groove which defines intersecting
radial and support surfaces and is constructed to receive a seal member from
an operably placed filter head. To meet that claim requirement the Examiner
relies upon Minowa (Ans. 2-3).
Minowa discloses a spin-on filter cartridge comprising, as its lid, a set
plate (30) (which corresponds to the Appellants’ baffle plate) which is an
externally threaded (35) hollow disk having a peripheral portion (31), an
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Application 13/655,179
integrally-formed wall (32) inward of the peripheral portion (31), a
horizontal bottom portion (33 a) extending inwardly from the wall (32) to a
gently-upwardly-slanting tapering portion (33) which has eight
equally-spaced inlet ports (37) therethrough and at its inner periphery has an
internally threaded (38) cylindrical outlet portion (34) (col. 4,11. 35-37;
col. 5,11. 15-22, 32-35, 40^12; col. 8,11. 36-37; Figs. 1^1). “An annular
seal member 42 is fitted in the lower side of the horizontal bottom
portion 33a of the set plate 30” (col. 5,11. 58-59; Figs. 1-3).
The Examiner concludes that the Appellants’ “recitation of the groove
being constructed to receive a seal member from an operably placed filter
head is a recitation of intended use and does not further structurally limit the
apparatus” (Ans. 3).
When claims are interpreted, all limitations must be given effect. See
In re Angstadt, 537 F.2d 498, 501 (CCPA 1976) (“we must give effect to all
claim limitations”). The Appellants’ claim 16 requires that the groove is
“constructed to receive a seal member from an operably placed filter head.”
The Examiner must establish that the prior art discloses or would have
suggested to one of ordinary skill in the art a groove having that capability.
The Examiner relies upon the transition between Minowa’s set
plate (30)’s tapering portion (33) and outlet portion (34) as corresponding to
the Appellants’ groove (Ans. 2—4), and finds that the groove “is capable of
receiving a seal member of a filter head” (Ans. 3) and “is capable of
receiving a seal member as the radial and support surfaces are capable of
interacting with a seal member” (Ans. 10).
The Appellants challenge that finding (App. Br. 12-13). Hence, we
do not accept it as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA
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Application 13/655,179
1964). The Examiner must establish that the applied prior art discloses or
would have suggested a groove capable of receiving a seal member from an
operably placed filter head, and the Examiner has not done so. Accordingly,
we reverse the rejection over Minowa in view of Gulsvig, Stifelman and
Bradford.
Rejections over Minowa in view of Gulsvig, Stifelman, Bradford
and Oelschlaegel and over Oelschlaegel in view of Minowa
The Appellants argue only the independent claims (16 and 24)
(App. Br. 15-17). We therefore limit our discussion to those claims. The
dependent claims stand or fall with the independent claim from which they
depend. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Oelschlaegel discloses a spin-on filter cartridge comprising a
mounting hub (102) (which corresponds to the Appellants’ baffle plate)
having a projecting collar (103) with a central through-bore (122) and
external threads which mate with threads in a base (16) (which corresponds
to the Appellants’ filter head) having around the collar (103)’s external
threads, at the origin of their projection from the mounting hub (102), a
shallow counterbore containing a resilient O-ring (130) which provides a
fluid-tight seal between the collar (103) and the base (16) (col. 6,11. 42-44,
54-61). “The threaded attachment could alternatively be reversed, that is,
collar 103 could be inwardly-threaded, which would cooperate with
outwardly-directed threads on a central spud projecting from base 16”
(col. 6,11. 61-65; Fig. 2).
The Appellants argue (Reply Br. 3^1):
Oelschlaegel teaches nothing about changing the location of the
counterbore. Oelschlaegel only discusses reversing the
direction of the threads for the two mating parts. The
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Application 13/655,179
Examiner’s assertion amounts to either mere speculation or
impermissible hindsight. Neither is sufficient to establish
prima facie obviousness.
Oelschlaegel’s disclosure regarding reversing the threaded attachment
appears to apply to the entire attachment including the threads and the
O-ring seal around them (col. 6,11. 54-65). Thus, OelschlaegeTs disclosure
that when the externally-threaded collar (103) projects into the base (16), the
counterbore is in the base (Fig. 2), indicates that when the
externally-threaded collar (103) projects into the mounting hub (102), the
counterbore is in the mounting hub (102) and, therefore, is configured to
receive a seal member (O-ring 130) from the base (16).
Regarding the Appellants’ claim requirement that the baffle plate is
non-removably secured to the housing, the Appellants argue (App. Br. 15):
[Cjolumn 7, lines 47-57, of Oelschlaegel teaches how to
“prevent mounting hub 102 from falling out of the main
housing portion 32 when the filter element is removed.” A
snap ring can be used to retain the mounting hub 102 in place.
This must mean that the mounting hub is removably secured,
and not the claimed non-removably secured.
‘“[Djuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellants’ support for
the claim limitation “a baffle plate non-removably secured to the housing at
the housing open end” is: “FIG. 1 and page 4,11. 1-2; baffle plate 30 is
operably oriented over housing open end 16 Page 4,11. 3-4 and 11. 11-12;
baffle plate has central flow aperture 32 and central hub 34” (App. Br. 5,8).
Neither those disclosures nor the remainder of the Appellants’ Specification
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indicates that the baffle plate is non-removably secured. Therefore, the
broadest reasonable interpretation of the Appellants’ claim term
“non-removably secured” consistent with the Specification includes any
non-removable securing for any amount of time, including non-removable
securing via a snap ring until the snap ring is removed.
For the above reasons we are not persuaded of reversible error in the
rejections over Minowa in view of Gulsvig, Stifelman, Bradford and
Oelschlaegel and over Oelschlaegel in view of Minowa.
DECISION/ORDER
The rejection of claims 16 and 18-20 under 35 U.S.C. § 103 over
Minowa in view of Gulsvig, Stifelman and Bradford is reversed. The
rejections under 35 U.S.C. § 103 of claims 24-28 over Minowa in view of
Gulsvig, Stifelman, Bradford and Oelschlaegel and claims 16,18-20
and 24-28 over Oelschlaegel in view of Minowa are affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED
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