Ex Parte Little et alDownload PDFPatent Trials and Appeals BoardJun 21, 201913422349 - (D) (P.T.A.B. Jun. 21, 2019) Copy Citation 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. 2 Appeal2018-006547 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. 3 Appeal2018-006547 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 4 Appeal2018-006547 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 5 Appeal2018-006547 Application 13/422,349 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 6 Appeal2018-006547 Application 13/422,349 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 7 Appeal2018-006547 Application 13/422,349 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 8 Appeal2018-006547 Application 13/422,349 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. 9 Appeal2018-006547 Application 13/422,349 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. 10 Appeal2018-006547 Application 13/422,349 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. 11 Appeal2018-006547 Application 13/422,349 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 12 Copy with citationCopy as parenthetical citation