Ex Parte Merritt et al

Patent Trial and Appeal Board

Feb 15, 2017

11634647 (P.T.A.B. Feb. 15, 2017)

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.
11/634,647 12/06/2006 Steven J. Merritt 505401 4610
53609 7590 02/17/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
02/17/2017 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN J. MERRITT and KYLE SWANSON
Appeal 2016-000571
Application 11/634,647
Technology Center 1700
Before JULIA HEANEY, JEFFREY R. SNAY, and JENNIFER R. GUPTA,
Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 8—10, 12—19, and 21—34. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 We cite to the Specification (“Spec.”) filed Dec. 6, 2006; Non-Final Office
Action (“Non-Final Act.”) dated Sep. 24, 2014; Appellants’ Appeal Brief
(“App. Br.”) dated Feb. 20, 2015; Examiner’s Answer (“Ans”) dated Aug.
13, 2015; and Appellants’ Reply Brief (“Reply Br.”) dated Oct. 12, 2015.
2 Appellants identify Baldwin Filters as the real party in interest. App. Br. 2.
Appeal 2016-000571
Application 11/634,647
BACKGROUND
The subject matter on appeal relates to fluid filters for removing
particulate matter from a flow of liquid or gas. Spec. 11. Claims 8 and 29,
the only independent claims on appeal, are reproduced from the Claims
Appendix of the Appeal Brief as follows, with emphasis provided to show
the key recitation in dispute:
8. A filter element, comprising, a length of filter media
wound about a winding structure, wherein, the filter element
defines a longitudinal axis and two axial ends of the filter
element, the length of filter media having two axial edges, the
winding structure having two axial ends thereof, each axial end
of the winding structure disposed adjacent to, and recessed
axially inward from, the axial edges of the filter media, the
winding structure including winding features on each axial end
of the winding structure, each winding feature extending axially
outward away from its respective axial end of the winding
structure to a distal end of the winding feature, and the length of
filter media being wrapped about the winding structure in such
a manner that each axial edge of the filter media extends axially
beyond a corresponding end of the winding structure and is
disposed flush with or beyond the distal end of the winding
feature such that no portion of the winding structure extends
beyond either axial edge.
29. A filter element defining a longitudinal axis and first and
second axial ends of the filter element, the filter element
comprising:
a winding structure, and a length of fluted filter media,
having first and second axial ends, wound about the winding
structure with the flutes of the media oriented substantially
parallel to the longitudinal axis, to thereby provide for filtration
of a flow of fluid passing substantially parallel to the
longitudinal axis through the filter element;
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Application 11/634,647
the winding structure defining a winding structure axis
extending substantially parallel to the longitudinal axis of the
filter element, and oppositely facing axial ends of the winding
structure disposed at opposite ends of the winding structure
along the winding structure axis adjacent and axially inward
from the corresponding first and second axial ends of the fluted
filter media;
the winding structure having a length, width and
thickness thereof, with the length extending substantially along
the winding structure axis between the first and second axial
ends of the winding structure, the width extending substantially
orthogonally to the winding structure axis, and the thickness
extending substantially orthogonally to both the winding
structure axis and the width of the winding structure;
the winding structure also including a winding feature
extending substantially axially outward beyond at least one of
the axial ends of the winding structure, the winding feature
being flush or below an axial end of the fluted filter media such
that no portion of the winding structure extends beyond either
axial end of the fluted filter,
the winding feature being configured for receiving a
winding torque, applied to the winding structure, for rotation of
the winding structure about a winding axis extending
substantially parallel to the longitudinal axis of the filter
element, as the media is wound onto the winding structure; and
wherein, the winding feature comprises at least two lugs
spaced from one another across the thickness of the winding
structure to define a pair of guide surfaces extending
substantially along the width of the winding structure.
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Appeal 2016-000571
Application 11/634,647
REJECTIONS3
I. Claims 33 and 34 stand rejected under 35 U.S.C. § 112, first
paragraph.
II. Claims 15—19 stand rejected under 35 U.S.C. § 112, second
paragraph.
III. Claims 8—10, 12—19, and 21—34 stand provisionally rejected on the
ground of non-statutory double patenting over claims 1, 3, 5, 6, and 11—22 of
Application Serial No. 11/634,558.
IV. Claims 8—10, 12—19, and 21—34 stand provisionally rejected on the
ground of non-statutory double patenting over claims 2—15 and 24—26 of
Application Serial No. 11/933,904.
V. Claims 8—10, 12, 13, 21, 22, and 25—34 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gieseke,4 Obermaier,5 and Bernard.6
VI. Claims 14—17, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gieseke, Obermaier, Bernard, and Scheffey.7
VII. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gieseke, Obermaier, Bernard, Scheffey, and Wasielewski.8
3 Non-Final Act. 4—24; Ans. 2—29. After issuance of the Non-Final Action,
the Examiner withdrew certain grounds of rejection and imposed new
grounds. See Ans. 3—29. We refer to the Examiner’s Answer for the
statement and explanation of all grounds of rejection before us.
4 US 6,547,857 B2, issued Apr. 15, 2003 (“Gieseke”).
5 US 3,680,806, issued Aug. 1, 1972 (“Obermaier”).
6 US 4,151,581, issued Apr. 24, 1979 (“Bernard”).
7 US 1,616,874, issued Nov. 19, 1925 (“Scheffey”).
8 US 4,227,953, issued Oct. 14, 1980 (“Wasielewski”).
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Application 11/634,647
VIII. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gieseke, Obermaier, Bernard, Scheffey, and Wasielewski, and
Johnston.9
DISCUSSION
I
35 U.S.C. § 112, first paragraph
The Examiner finds that the terms “slot” and “slotted member” as
recited in claim 33 do not appear in the Specification, and rejects claims 33
and 34 under 35 U.S.C. § 112, first paragraph, on that basis. Ans. 2.
Appellants point to Figures 4 and 7 of the Specification as demonstrating the
inventors’ possession of the recited features. Reply Br. 6—7.
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s Specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(iquoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)). “The content of the drawings may also be considered in determining
compliance with the written description requirement.” In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983). The claimed subject matter need not
be described in haec verba in the specification in order for the specification
to satisfy the description requirement. In re Smith, 481 F .2d 910, 914
(CCPA 1973).
9 US 2006/0151655 Al, published July 13, 2006 (“Johnston”).
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Application 11/634,647
Figure 4 of the Specification depicts an axially-extending winding
feature formed by a plurality of lugs which define guide surfaces configured
to couple to a driver of a winding machine. Spec. 1 68; Fig. 4. Figure 7
depicts the guide surfaces formed by a slot in a slotted winding feature.
Fig. 7. In light of the foregoing original disclosures, we agree with
Appellants that the Examiner has not shown that the Specification fails to
convey with reasonable clarity that the inventor possessed the invention as
claimed at the time of invention. Accordingly, we do not sustain
Rejection I.
II
35 U.S.C. § 112, second paragraph
The Examiner finds that “[i]t is unclear what structure is being
claimed” by the language recited in claim 15, and rejects claims 15—19 as
indefinite on that basis. Ans. 2. Appellants point out that Claim 15 recites
relative geometric features of the winding structure’s cross-section, as are
depicted in Figure 3 and explained at paragraphs 55 and 56 of the
Specification. Reply Br. 8. The Examiner does not identify any particular
aspect of the structure recited in claim 15 that is deemed indefinite or
unclear. Nor does the Examiner provide a rationale to support the
indefmiteness finding, other than the Examiner’s determination that “the
scope of the claim is much broader than what Appellant is arguing.” Ans.
30. On this record, we are persuaded that the Examiner has not adequately
demonstrated that any of claims 15—19 is indefinite. We do not sustain
Rejection II for that reason.
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Application 11/634,647
III, IV
Non-statutory double patenting
Appellants do not dispute the Examiner’s findings and obviousness
determination in connection with the provisional non-statutory double
patenting rejections, Rejections III and IV. See App. Br. 19; Reply Br. 8—9
(arguing only that these rejections may be addressed by filing a terminal
disclaimer if and when the rejections become non-provisional). Thus, each
of Rejections III and IV is summarily sustained.
V-VIII
Obviousness under 35 U.S.C. § 103
The claimed filter element includes, inter alia, a filter media wound
about a winding structure that includes winding features extending from
axial ends of the winding structure. See claims 8, 29. At issue in this appeal
is the further recitation that no portion of the winding structure extends
beyond a corresponding axial end of the wound filter material. Claim 8 (“no
portion of the winding structure extends beyond either axial edge”); claim 29
(“no portion of the winding structure extends beyond either axial end of the
fluted filter”).
With regard to Rejection V, the Examiner finds that Gieseke discloses
“[a] length of (cellulose) filter media wound about a (plastic) winding
structure,” Ans. 4, but fails to disclose “winding features on each axial end
of the winding structure” and the filter media being disposed such that “no
portion of the winding structure extends beyond either axial edge,” id. at 5.
Particularly, Gieseke’s winding structure includes a handle member 70
extending beyond the filter material at one end and fastening members 240,
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250 extending beyond the filter material at the other end. Gieseke col. 8,
lines 19-48; Fig. 8. Gieseke states that the handle member 70 is provided
for removal of the filter element from a housing, and the fastening members
are provided for attaching the filter element to a frame construction provided
to form a seal between the filter and a housing. Id. at col. 3,11. 49—60.
The Examiner also finds that Obermaier discloses a winding mandrel
about which an electrical conductor is wound to form a roll-type capacitor.
Ans. 7. Obermaier’s mandrel includes toothed ends for engaging a winding
chuck to “provide a positive torque connection which will allow positive and
even transmission of the winding power.” Ans. 8 (citing Obermaier col. 2,
11. 45—59). Based on these respective teachings in Gieseke and Obermaier,
the Examiner finds that one of ordinary skill would have been motivated to
provide Gieseke’s winding structure with Obermaier’s toothed winding
features because “the positive and even transmission of the winding power
will reduce the cellulose filter media bowing outwardly during winding.”
Ans. 9.
Appellants argue that the combination of Gieseke, Obermaier, and
Bernard fails to teach “a winding feature that extends axially away from the
axial end of the winding structure while being flush with, or recessed axially
from, the end of the filter media.” Reply Br. 16. Although the Examiner
states that one of ordinary skill “would have been motivated to construct the
Gieseke et al. plastic winding structure where . . . [t]he filter media is
disposed such that no portion of the winding structure extends beyond either
axial edge,” Ans. 9, the Examiner does not point to any particular evidence
of record to support that finding. Nor does the Examiner explain why one
skilled in the art would modify Gieseke’s winding structure in that manner,
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Application 11/634,647
despite Gieseke’s express teaching of a handle member and fastening
members that necessarily extend beyond the ends of the filter media.
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). On this
record, we are persuaded that the Examiner has not set forth a factual basis
which is sufficient to support a prima facie determination that it would have
been obvious to modify Gieseke’s winding structure such that no portion
extends beyond either axial end of the filter media. Accordingly, we cannot
sustain Rejection V. Because each of Rejections VI to VIII is premised on
the same deficient findings, these rejections also are not sustained.
DECISION
The Examiner’s decisions provisionally rejecting claims 8—10, 12—19,
and 21—34 on the ground of non-statutory double patenting are summarily
affirmed.
The Examiner’s rejections under 35 U.S.C. §§ 112 and 103 are
reversed.
AFFIRMED
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