Ex Parte Li et alDownload PDFPatent Trials and Appeals BoardMay 22, 201914112615 - (D) (P.T.A.B. May. 22, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/112,615 01/23/2014 HanhaoLi 116387 7590 05/24/2019 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. 106389-1279 (8-02-40469) 5162 EXAMINER OLIVERA, ANGEL J ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 05/24/2019 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 HANHAO LI, PING SHEN, PENGHUA HOU, and CHUNXIWANG Appeal2018-004454 Application 14/112,615 Technology Center 1700 Before BEYERL YA. FRANKLIN, CHRISTOPHER C. KENNEDY, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-004454 Application 14/112,615 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection2 of claims 5-12, which constitute all the claims pending in this application. Claims 1--4 and 13-27 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. CLAIMED SUBJECT MATTER The claims are directed to a filter cartridge. Claim 5, reproduced below, is illustrative of the claimed subject matter: 5. A filter apparatus, comprising: a filter head defining an outlet having an outlet opening for discharging filtered fluid; a valve having a valve body extending axially from a first end to a second end with the first end connected to the filter head, the valve body having a first end opening at the first end, a second end opening at the second end and at least one side opening between the first end and the second end, the first end opening and the second end opening axially facing each other and in fluid communication with each other and with the side opening and the outlet opening; a ball receivable inside the valve body, the ball being axially movable between a first position at which filtered fluid flows into the outlet opening and into the outlet and a second 1 The real party in interest is identified as "Cummins Filtration IP, Inc." Appeal Brief of October 5, 2017 ("Br."), 2. 2 Final Office Action of May 1 7, 201 7 ("Act."). In this opinion, we also refer to the Examiner's Answer of February 6, 2018 ("Ans.") and the Reply Brief of March 23, 2018 ("Reply Br."). 2 Appeal2018-004454 Application 14/112,615 position preventing fluid flow through the outlet opening into the outlet; and the valve further having a holding member between the side opening and the second end of the valve body, configured to releasably retain the ball at the first position. Claims Appendix (Br. 29). REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Drexel et al. ("Drexel") Connor Jr. ("Connor") Jiang us 5,165,655 us 4,364,825 US 6,884,349 Bl REJECTI0NS 3 Nov. 24, 1992 Dec. 21, 1982 Apr. 26, 2005 Claims 5-9 are rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Jiang in view of Connor. Final Act. 4. Claims 10-12 are rejected underpre-AIA 35 U.S.C. § I03(a) as being unpatentable over Jiang in view of Connor and Drexel. Final Act. 7. 3 The Examiner rejected claims 10-12 "under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite" and subsequently withdrew the rejection. Final Act. 2; Ans. 8; see also Reply Br. 2. The indefiniteness rejection is therefore not before us on appeal. 3 Appeal2018-004454 Application 14/112,615 OPINION Rejection of Claim 5 4 Appellants argue that the Examiner reversibly erred in rejecting claim 5 because the prior art apparatus does not teach or suggest "a holding member ... configured to releasably retain the ball at the first position." Br. 13. Appellants first argue that the claim limitation "releasably retain" "is generally understood in the art to refer to restrain or confine the ball to one location up until it is released" and cites dictionary definitions of "releasable" and "retain" in support. Id. at 15. Appellants also argues that the intrinsic evidence - in the form of the claim language "retain the ball at the first position" - shows that "claim 5 describes an arrangement where an element is structured to hold a ball in a first position and prevents the ball's natural movement to other positions up until a fluid flow force acts upon the ball causing the element to release the ball." Id. at 16. In Reply, Appellants offer yet another interpretation: "the ordinary meaning of 'releasably retain' as meaning confinement of an object until it is set free from the confinement." Reply Br. 8. The Examiner disagrees and points out that the dictionary definitions provided by Appellants do not support Appellants' proposed definition. Ans. 11-12. Indeed, Appellants provide that the dictionary definition of "releasable" is "to set from restraint, confinement, or servitude" and that of "retain" is "to hold secure or intact." Br. 15 ( citing Merriam-Webster dictionary) ( emphases removed). Neither definition explicitly provides that 4 Appellants do not present separate arguments for claims 6-9, 11, and 12, and they stand or fall with claim 5. Br. 13-22; see also 37 C.F.R. § 4I.37(c)(1)(iv)(2013). 4 Appeal2018-004454 Application 14/112,615 the phrase "releasably retain" means "to restrain or confine the ball to one location up until it is released" (id.) as Appellants assert. The Examiner finds that the claim language does not recite, for example, conditions or causes which would result in the release of the ball. Ans. 9. The Examiner responds that Appellants' definition improperly imports limitations from a non-limiting embodiment of the specification. The Examiner proposes that the limitation be construed to mean that "the ball is releasably retained at the first position by the interaction of the disclosed holding member and gravity." Id. at 10. Consistent with the Examiner's analysis, the specification provides that "the holding member, e.g., the spring strips 52, releasably retains the ball 50 at the bottom end of the valve body 42. It is to be understood that the self-gravity of the ball alone may not be strong enough to hold the ball 50 in the first position, so the holding member may be employed." Spec. 9:3---6. Appellants' argument to the contrary does not persuade us otherwise. Appellants argue that "the specification and drawings are consistent with the ordinary meaning of 'releasably retain' and do not contradict the meaning of 'releasably retain' in any location." Reply Br. 6-7. Even if that is the case, this argument does not persuade us why the Examiner's broader interpretation is also consistent with and not contradicted by the specification or the ordinary meaning. Appellants' argument that releasably retaining the ball "requires more than the mere gravitational force" does not address the Examiner's construction which does not require the ball to be retain by gravitational force alone. Compare id. at 7, with Ans. 10 (providing that "the ball is releasably retained at the first position by the interaction of the disclosed holding member and gravity"). It is also unclear 5 Appeal2018-004454 Application 14/112,615 why Appellants' argument that the dictionary meanings of "releasable" and "retrain" differ from "allowing the natural movement of the ball along [a] path" addresses the Examiner's interpretation. Br. 17; Reply Br. 7-8 ( arguing the same). In any event, as detailed infra, under Appellants' interpretation that "releasably retain" "is generally understood in the art to refer to restrain or confine the ball to one location up until it is released" (Br. 15)5 or that "the ordinary meaning of 'releasably retain' as meaning confinement of an object until it is set free from the confinement" (Reply Br. 8), no reversible error has been identified in the Examiner's finding that the prior art device is configured to perform the recited function. 5 Appellants seem to offer various interpretations of the limitation "releasably retain." Br. 15 (stating that the term "is generally understood in the art to refer to restrain or confine the ball to one location up until it is released"), 17 (stating that "to function as a 'releasably retain,' the track (35) must perform a function different than allowing for the natural movement of the ball along the path thereof'), 17 & 21 ("To function as 'releasably retain,' the track (35) must be configured to confine the ball to a first positon between the opening and the second end of the valve body, preventing the natural movement of the ball, and, subsequently, allow the ball to be released from confinement under certain conditions."); Reply Br. 5 (stating that "'releasably retain' describes a limitation of the holding member being configured to hold a ball in a first position and prevent the ball's movement to other positions up until the ball is released from the retainment"), 7 ( stating that "the widely accepted meaning and the intrinsic evidence of record both point to the same meaning for the term 'releasably retain,' in that the retention of the bail requires something more than gravitational forces"), 8 (stating that "releasably retain" must exclude "the natural positioning of a ball on a slanted surface such that it is biased in a direction . . . " and also stating that "the ordinary meaning of 'relesably retain' [is] confinement of an object until it is set free from the confinement"). We emphasize that we decline to adopt any of Appellants' proposed interpretations. 6 Appeal2018-004454 Application 14/112,615 "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). "'Functional' terminology may render a claim quite broad. By its own literal terms a claim employing such language covers any and all embodiments which perform the recited function." In re Swinehart, 439 F.2d 210,213 (CCPA 1971). Functional language in an apparatus claim is interpreted as requiring that the apparatus possess the capability of performing the recited function. Intel Corp. v. US. Int 'l Trade Comm 'n, 946 F.2d 821, 832 (Fed. Cir. 1991). In this case, claim 5 recites a "filter apparatus" having a component known as "a holding member" which the Examiner finds is structurally indistinguishable from the prior art recessed track 35 in Jiang. Final Act. 4. The Examiner finds that the prior art track 35 is fully capable of performing the recited function: The holding member is considered to "retain" the ball at the side opening as it prevents the ball from moving further down the valve shaft. The holding member is considered to "releasably retain the ball" as the ball is released from the retained position when the ball is moved upward and/or sideways by a flow of fluid (see C5/L8-10 "The valve ball 36 rides in the recessed track 35 and is movable across the upper surface of interior shelf 24 in response to incoming fuel flow."). Id. at 11. The Examiner explains (using an annotated Figure 2 of Jiang reproduced below): "The slope of the location of the holding member/track on the sloped interior shelf imparts a bias on the ball which releasably retains said ball at the first position." Ans. 10. 7 Appeal2018-004454 Application 14/112,615 Examiner Annotated Jiang Figure 2. Final Act. 7. The Examiner further finds that Jiang teaches that the ball will be released from the first location to the second location "when there is a sufficient flow of fluid to overcome the gravitational force retaining the ball at said first location." Ans. 10; see also id. at 12. Without structurally distinguishing the prior art component, Appellants argue that Jiang track 35 lacks the recited functional limitation because it "is used to facilitate the natural movement of the ball among many positions along the path of the recessed track (35)." Br. 19 (also stating that "the recessed track (35) of Jiang is used for an entirely different purpose"), 21 (stating the same). This line of argument- directed to how the prior art track is used - does not address the dispositive issue of the functional limitation of the prior art device. See id. at 17 ( acknowledging that "[t]o function as 'releasably retain,' the track (35) must be configured to" perform the recited functionality). Appellants argue "Jiang is structured to allow for and facilitate the natural movement of the ball among many positions along the path of the track" without specifying any structural distinction (id. at 18) and do not explain why the prior art device is incapable of performing the recited function as Appellants' own definition does not 8 Appeal2018-004454 Application 14/112,615 exclude functions such as facilitating movement. That is, Appellants assert that "releasably retain" means "to restrain or confine the ball to one location up until it is released" (Br. 15) or the "confinement of an object until it is set free from the confinement" (Reply Br. 8) but do not show track 35 in Jiang is incapable of the recited function. Appellants also fault the Examiner for failing to show that Jiang track 3 5 is capable of the recited function "without adding additional features or disrupting the functionality of the filter assembly of Jiang." Br. 20. Appellants, however, do not present factual evidence in support of this argument. "Attorneys' argument is no substitute for evidence." Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). In any event, this argument does not patentably distinguish the prior art device as claim 5 does not exclude any additional features and Appellants do not sufficiently explain how Jiang' s filter may be disrupted as being inoperable for the obviousness rejection. Based on the foregoing, we find that Appellants have not identified error in the Examiner's finding that the prior art device is capable of performing the recited function. Rejection of Claim 10 Claim 10 depends from 5 and additionally recites: "wherein the holding member includes at least one spring strip disposed in a slot within the valve body, the spring strip extending axially from a base end to a free end." Appellants argue that the Examiner reversibly erred in rejecting claim 10 because the prior art apparatus does not teach or suggest "at least one 9 Appeal2018-004454 Application 14/112,615 spring strip," as recited. Br. 22. Without structurally distinguishing the prior art device in Drexel, Appellants argue that Drexel's spring strip does not impede movement of the ball and "does not function to releasably retain a ball and recover size and shape after deformation." Id. at 24, 25. Appellants' argument with regard to the recited function of "releasably retain" is addressed in detail supra. As to the remaining arguments, claim 10 does not require the spring strip to impede the movement of the ball, nor does it require the spring strip to recover size and shape after deformation. Appellants' argument, based on features not recited in the claim, cannot impart patentability. Appellants do not structurally distinguish the recited "spring strip," and we accordingly are unpersuaded that the Examiner's findings here are in error. DECISION 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation