Ex Parte Little et al

Patent Trials and Appeals Board

Jun 21, 2019

13422349 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/422,349 03/16/2012
117798 7590 06/25/2019
MRG/Donaldson Company, Inc.
c/o Mueting, Raasch & Gebhardt, P.A.
PO Box 581336
Minneapolis, MN 55458-1336
FIRST NAMED INVENTOR
Daniel Little
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.
0444.007 l 47US01 5278
EXAMINER
KURTZ, BENJAMIN M
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
06/25/2019 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):
ptodocketing@mrgs.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 DANIEL LITTLE and ROBERT M. ROGERS 1
Appeal2018-006547
Application 13/422,349
Technology Center 1700
Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
Patent Judge, CHRISTOPHER C. KENNEDY and BRIAND. RANGE,
Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This case is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-19 and 3 6-41. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to filter media elements
comprising bi component fibers. E.g., Spec. 1: 10-15; Claim 1. Claim 1 is
reproduced below from the Claims Appendix of the Appeal Brief:
1 The Appellants identify the real party in interest as Donaldson Company,
Inc. App. Br. 2.
Appeal2018-006547
Application 13/422,349
1. A filter element comprising a filter medium comprising a media
layer comprising fibers in a thermally bonded nonwoven web,
the web comprising:
(a) a bi-component fiber having a structural polymer portion
and a thermoplastic binder polymer portion, wherein the
structural polymer portion has a melting point of at least
240°C and the binder polymer portion has a melting point
of up to 115°C; and the bi-component fiber has a diameter
of about 5 to 25 µm;
(b) a bi-component fiber having a structural polymer portion
and a thermoplastic binder polymer portion, wherein the
structural polymer portion has a melting point of at least
240°C and the binder polymer portion has a melting point
of I20°C to 170°C; and the bi-component fiber has a
diameter of about 5 to 25 µm; and
( c) a staple fiber;
wherein the web has a solidity of about 2 to 10%.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1, 2, 4, and 5 under 35 U.S.C. § I02(b) as anticipated by
Healey (US 2009/0272084 Al, published Nov. 5, 2009). Ans. 3.
2. Claims 36 and 37 under 35 U.S.C. § 102(b) as anticipated by, or in
the alternative under 35 U.S.C. § I03(a) as unpatentable over, Healey.
Ans. 4.
3. Claims 7 and 8 under 35 U.S.C. § I03(a) as unpatentable over
Healey. Ans. 5.
4. Claims 3 and 9 under 35 U.S.C. § I03(a) as unpatentable over
Healey and Adamek (US 2009/0044702 Al, published Feb. 19, 2009).
Ans. 6.
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Application 13/422,349
5. Claims 6 and 41 under 35 U.S.C. § I03(a) as unpatentable over
Healey and Kahlbaugh (US 2006/0096263 Al, published May 11, 2006).
Ans. 8.
6. Claims 10-19 and 38--40 under "35 U.S.C. I02(b) as anticipated
by or, in the alternative, under pre-AIA 35 U.S.C. § I03(a) as obvious over"
Healey, Adamek, and Kahlbaugh. 2 Ans. 11.
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final
Act. 2-21; Ans. 3-23.
Claims 1, 2, 4, and 5 (Rejection 1)
The Examiner finds that Healey anticipates the subject matter of
claim 1. Ans. 3--4. As to the inclusion of two different bicomponent fibers
in a single media layer, the Examiner cites ,r 54 of Healey, which discloses
"bicomponent binder fibers" in which "each component can have a different
melting temperature." Healey ,r 54. Healey provides the following
description of particular types of "core/sheath" bi component binder fibers
that can be included in the coarse support layer of Healey's filter element:
The core/sheath binder fibers can be concentric or non-
concentric, and exemplary core/sheath binder fibers can include
2 We understand the § 102(b) component of this rejection to be over Healey
alone, and the "alternative"§ I03(a) component as adding Adamek and
Kahlbaugh to remedy potential deficiencies in the § 102(b) rationale.
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Application 13/422,349
the following: a polyester core/copolyester sheath, a polyester
core/polyethylene sheath, a polyester core/polypropylene sheath,
a polypropylene core/polyethylene sheath, and combinations
thereof
Id. ( emphasis added). In the Response to Argument section of the
Examiner's Answer, the Examiner finds that the phrase "and combinations
thereof. . . . is a clear teaching in Healey that combinations of the differing
types of bicomponent fibers can be used in a media layer of a filter
medium." Ans. 20-21.
The Appellants argue only that Healey does not teach or suggest the
inclusion of more than one type ofbicomponent fiber. See App. Br. 15
("Healey et al. provide no teaching to include more than one type of bi-
component fiber in a single media layer of a filter medium."). In the Appeal
Brief, the Appellants do not address the "and combinations thereof'
language described above and instead focus on the phrase "[t]he binder
fibers can be monocomponent fibers or any one of a number of bicomponent
binder fibers," Healey ,r 54 (emphasis added), arguing that "[a] teaching to
include one bi-component fiber is not an express teaching to combine
different bi-component fibers." App. Br. 15-16. In the Reply Brief, the
Appellants address the "and combinations thereof language" for the first
time. The entirety of their argument concerning that language is as follows:
"The statement does not clearly teach combinations of the differing types of
bicomponent fibers, as asserted by the Examiner, but, rather, teaches
different core-sheath combinations (in addition to those listed) in a single
bi component fiber." Reply Br. 3.
We are not persuaded by the Appellants' argument. Paragraph 54 of
Healey discloses "exemplary core/sheath binder fibers" in which the core
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Application 13/422,349
and sheath are different materials, e.g., "a polyester core/copolyester sheath"
and "a polyester core/polyethylene sheath." Healey ,r 54. We read Healey's
statement that "combinations thereof' may be used as indicating that
"combinations" of the "exemplary core/sheath binder fibers" may be used,
e.g., a combination of "polyester core/copolyester sheath" fibers and
"polyester core/polyethylene sheath" fibers, see id., not merely as indicating
that other combinations of polyester, copolyester, polyethylene,
polypropylene for the core/sheath can be used, as the Appellants argue, see
Reply Br. 3. The language "and combinations thereof' immediately follows
a listing of several different types of "exemplary core/sheath fibers,"
indicating that "combinations" of those exemplary core/sheath fibers may be
used. Healey ,r 54.
Our understanding of ,r 54 is consistent with other paragraphs of
Healey. For example, certain paragraphs disclose the use of "at least one
binder fiber and at least one non-binder fiber" in the coarse layer. E.g., id.
,r,r 8, 12, 14 (emphases added). Although those disclosures refer to
embodiments in which "a blend" of binder fibers and non-binder fibers is
used, as opposed to a single bicomponent fiber, see id. ,r 54, they disclose
the use of different binder fibers ("at least one") and different non-binder
fibers in a single coarse layer, e.g., id. ,r,r 8, 12, 14. Paragraph 55 of Healey
includes the following disclosure: "Exemplary synthetic non-binder fibers
can include polyesters, acrylics, polyolefins, nylons, rayons, and
combinations thereof" Healey ,r 55. Healey's use of the phrase "and
combinations thereof' in ,r 55, in view of Healey's disclosures that "at least
one non-binder fiber" can be used, e.g., ,r 8, is best understood as indicating
that Healey uses the phrase "and combinations thereof' to refer to
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combinations of different items in a preceding list, e.g., a combination of
both polyester fibers and acrylic fibers, rather than as referring to a single
type of fiber in which each individual fiber includes both polyester and
acrylic.
In view of the foregoing discussion, to the extent that the phrase "and
combinations thereof' in ,r 54 is ambiguous, we determine that the
Examiner's interpretation of that phrase as indicating combinations of
different bicomponent fiber types in a single coarse layer is more consistent
with the disclosures of Healey as a whole than is the Appellants'
interpretation as indicating a single fiber type that has different core/sheath
material combinations than those expressly disclosed. Thus, the Appellants'
argument that Healey "provide[ s] no teaching to include more than one type
of bi-component fiber in a single media layer of a filter medium" is not
persuasive. See App. Br. 16.
Although the Appellants raise no other argument concerning claim 1,
see App. Br. 15-16, for completeness, we further observe that Healey
discloses "Trevira Types 254, 255," along with only seven other binder
fibers, as "[e]xemplary bi-component binder fibers." Healey ,r 54. The
Examiner finds that Trevira Types 254 and 255 fall within the scope of
elements (a) and (b), respectively, of claim 1. Ans. 3--4. The Trevira data
sheets ( of record) indicate that Trevira Type 254 is a core/sheath fiber with a
"PET" core and a "CoPET" sheath, and that Trevira Type 255 is a
core/sheath fiber with a "PET" core and a "PE" sheath. The Appellants have
not identified reversible error in the Examiner's finding that a person of
ordinary skill in the art would have understood ,r 54 of Healey as teaching
the use of "combinations" of core/sheath fibers having materials of different
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melting points, such as Trevira Type 254 and Trevira Type 255. See Ans. 3-
4. Given Healey's disclosure of the use of combinations, and Healey's
disclosure in the same paragraph of a fairly limited list of exemplary fibers
including Trevira Types 254 and 255, a person of ordinary skill in the art
would have "at once envisaged" using any two ( or more) of those nine fibers
as the disclosed "combination." See Kennametal, Inc. v. Ingersoll Cutting
Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) ("[A] reference can
anticipate a claim even if it does not expressly spell out all the limitations
arranged or combined as in the claim, if a person of skill in the art, reading
the reference, would 'at once envisage' the claimed arrangement or
combination." (some internal quotation marks and citation omitted)).
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 1. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections .... ").
Because the Appellants raise no separate arguments concerning
claims 2, 4, and 5, also subject to Rejection 1, we are likewise unpersuaded
of reversible error as to the Examiner's rejection of those claims. See
37 C.F.R. § 4I.37(c)(l)(iv).
Claims 36--40 (Rejections 2 and 6)
The Appellants argue claims 36-40 as a group. See App. Br. 17-18.
Claims 36-39 are similar to claim 1 but also recite particular "wet bursting
strength[ s]." Claim 40 recites a particular tensile strength. The Examiner
acknowledges that Healey does not expressly disclose the wet bursting
strength or tensile strength of its filter elements, but the Examiner
determines that "wet burst strength is a property of a material" that "depends
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largely on the tensile strength of the material." Ans. 4--5, 15, 19. The
Examiner determines that, because Healey teaches "the same exact structure
and composition as claimed," the wet bursting strengths of claims 36-39 and
the tensile strength of claim 40 are "inherently present in Healey." Id.
The Appellants first reiterate the argument discussed above that
Healey "provide[s] no teaching to include more than one type ofbi-
component fiber in a single media layer of a filter medium." App. Br. 18.
That argument is unpersuasive for reasons set forth above.
The Appellants also argue that, because Healey's coarse layers "can
'have a variety of thicknesses, air permeabilities, and basis weights,"' "the
Examiner has not provided any basis to reasonably support the assertion that
the structure and composition as claimed ( or the recited wet bursting
strengths and tensile strengths) would necessarily be achieved by a skilled
artisan from the teachings of Healey." Id.
That argument is not persuasive because the Appellants do not
persuasively dispute the Examiner's findings that Healey teaches or would
have rendered obvious filter elements that have thicknesses, air
permeabilities, and basis weights that fall within the scope of the claims that
include recitations directed to those elements. See, e.g., Ans. 4 (thickness
and basis weight), 5-6 (air permeability), 8 (air permeability), 12
(thickness), 14 (basis weight). In that regard, we note the Examiner's
uncontested finding that Healey discloses a thickness range of 0.254 mm to
0.1524 cm (1.524 mm), id. at 4, which falls entirely within claim 1 O's
recited range of "0.25 to about 2 mm." We also note the Examiner's
uncontested finding that Healey discloses a basis weight range of 10-100
grams per square meter, id., which substantially overlaps claim lO's recited
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range of "about 45 to about 150 grams per square meter." The Appellants
do not allege that a person of ordinary skill in the art would not have at once
envisaged values falling within the claimed ranges in view of Healey' s
disclosure of substantially overlapping ranges. Cf In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) ("[E]ven a slight overlap in range establishes a
prima facie case of obviousness.").
The Examiner explains in the Answer:
The filter layer of Healey is manufactured using the same
techniques as disclosed by the applicant and it is made of the
same materials as those disclosed by the applicant. As discussed
in the rejection above, Healey also teaches that the filter media
layer has the same solidity, same thickness and basis weight as
the claimed invention. The only variable not specifically
matched by Healey is air permeability and only then because
applicant uses a different measurement with different units (mis)
versus what Healey uses (CFM) and there is no direct way to
convert between the two measurements. As discussed in the
rejection above, Healey teaches that the permeability may be
varied depending on the requirements of the desired application.
The filter material of Healey is used in same applications as those
of appellant (paragraph 86 of Healey and paragraph 40 of the
printed publication of the instant application). Therefore, one of
ordinary skill in the art would be motivated to optimize the
permeability of the filter media layers of Healey to withstand the
same operating conditions as that of applicant's filter media layer
and therefore would have the same air permeability. Given the
overwhelming similarities between the claimed filter media layer
and that of Healey, the properties of wet burst strength and tensile
strength would necessarily be present in the filter layer of
Healey.
Ans. 22-23.
The Appellants filed a Reply Brief, but they do not acknowledge,
address, or otherwise dispute that analysis. See generally Reply Br.
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On this record, we are not persuaded of reversible error in the
Examiner's rejection of claims 36-40 under§ 102 or§ 103. See In re Best,
562 F.2d 1252, 1255-56 (CCPA 1977) ("Where, as here, the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product."); Ex parte Obiaya, 227
USPQ 58, 60 (BPAI 1985) ("The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious."); see also In re Kubin, 561 F.3d 1351, 1357 (Fed.
Cir. 2009) ("Even if no prior art of record explicitly discusses the
[limitation], [applicants'] application itself instructs that [the limitation] is
not an additional requirement imposed by the claims on the [ claimed
invention], but rather a property necessarily present in [the claimed
invention].").
Claims 3, 6--19, and 38-41 (Rejections 3-6)
The Appellants argue claims 3, 6-19, and 38--41 3 as a group. See
App. Br. 16-17.
The Appellants argue that "the Examiner provided no clear
articulation why a person having ordinary skill in the art would have used
two different bi-component fibers in a single media layer of a filter
3 The Appellants include claims 38--40 in both this claim grouping, see App.
Br. 16, and in the grouping discussed above ( claims 3 6-40), see id. at 17.
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medium." Id. at 17. That argument is unpersuasive for the reasons
discussed above.
The only other argument that the Appellants raise is specific to claims
10-19, which stand rejected under "35 U.S.C. 102(b) as anticipated by or, in
the alternative, under pre-AIA 35 U.S.C. § 103(a) as obvious over" Healey,
Adamek, and Kahlbaugh. 4 See Ans. 11. The Appellants argue that those
claims "cannot be anticipated by Healey" "at least because the Examiner
admitted that 'Healey does not teach the percentage of Trevira 255 and
Trevira 254 [bicomponent] fibers in the material.'" Id. at 16 (quoting Final
Act. 12, 16).
The Examiner finds that Healey teaches amounts of binder fiber, i.e.,
"the total amount must be no greater than 80%," that overlap the claimed
ranges, and the Examiner finds that "[i]t was well within the skill of one of
ordinary skill in the art to determine the optimal percentage of Trevira 255
versus Trevira 254." Ans. 12-13.
Although an optimization rationale is typically raised in the context of
obviousness, rather than anticipation, if Healey' s disclosures concerning the
amounts of fiber would have enabled a person of ordinary skill in the art to
"at once envisage" filter elements with amounts of Trevira 254 and 255 that
fall within the scope of the claims, Healey could anticipate even though it
does not expressly disclose the claimed percentages. See Kennametal, 780
F.3d at 1381. The Appellants do not address whether the "at once envisage"
rationale is applicable to the Examiner's rejection under§ 102(b).
4 We understand the § 102(b) component of this rejection to be over Healey
alone, and the "alternative"§ 103(a) component as adding Adamek and
Kahlbaugh to remedy potential deficiencies in the § 102(b) rationale.
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In any event, the Examiner's rejection of claims 10-19 is alternatively
presented under§ 103(a), and the Appellants fail to assert that the fiber
amounts of claims 10-19 would not have been obvious in view of the prior
art. See App. Br. 16-17. Thus, even were we to agree with the Appellants
concerning the § 102(b) basis for the rejection, the rejection nevertheless
stands on the alternative§ 103(a) basis, which the Appellants do not contest
as to the claimed amounts of binder fiber.
We affirm the rejection of claims 10-19 only under§ 103, and we
decline to reach the alternative § 102 basis for the rejection of claims 10-19.
We affirm the rejection of claims 3, 6-9, and 41 under§ 103 (the only
statutory basis that the Examiner provides for rejecting those claims). We
affirm the Examiner's rejection of claims 38--40 under both§ 102 and§ 103.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-19 and 3 6--41
( except that, as explained above, we do not reach the alternative § 102 basis
for the rejection of claims 10-19).
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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