Ex Parte Milan et al

Patent Trial and Appeal Board

Jan 16, 2018

13719529 (P.T.A.B. Jan. 16, 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.
13/719,529 12/19/2012 Lucic Milan 63491US01; 1668
67010-465US1
26096 7590 01/18/2018
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
LEGENDRE, CHRISTOPHER RYAN
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
ptodocket @ cgolaw. com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCIC MILAN, ROBERT TELAKOWSKI,
CRAIG M. BEERS, JOHN M. BECK, and DARRYL A. COLSON
Appeal 2017-002586
Application 13/719,529
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2017-002586
Application 13/719,529
THE INVENTION
Appellants’ invention relates to a debris filter interposed in a stream
of air. Spec. 1,5. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A ram air fan comprising:
a fan impeller and a motor for driving said fan impeller,
said impeller and said motor being mounted within a housing;
an inlet header for delivering air to an inlet for said fan
impeller;
an air supply system for delivering air from an internal
cavity of said inlet header to the motor, said air supply system
including a conduit extending through said housing, a
connection from said conduit to a J-shaped tube mounted within
said inlet header, and said J-shaped tube connected to said
conduit at an inner wall of said inlet header, and extending to a
remote end, with a perforated member positioned on said
remote end; and
said perforated member extending to a remote end which is
open, and said perforated member having a plurality of
openings, with a size of said open remote end being greater than
a size of said openings.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Spinnler US
Shigezawa US
Le US
McAuliffe US
4.857.175
6,143,020
2004/0003719 A1
7.394.175 B2
Aug. 15, 1989
Nov. 7, 2000
Jan. 8, 2004
July 1,2008
The following rejections are before us for review:
1. Claims 1-3 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McAuliffe, Shigezawa, and Spinnler.
2
Appeal 2017-002586
Application 13/719,529
2. Claims 4 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McAuliffe, Shigezawa, Spinnler, and a design choice.
3. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over McAuliffe, Shigezawa, Spinnler, and Le.1
OPINION
Unpatentability of Claims 1—3 and 7
Over McAuliffe, Shigezawa, and Spinnler
Claim 1
The Examiner finds that the combination of McAuliffe, Shigezawa,
and Spinnler discloses all of the limitations of claim 1. Final Action 4-6. In
particular, the Examiner finds that Spinnler discloses a perforated member
(filter) on a remote end. Id. at 6. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to combine the references to achieve the claimed
invention. Id. According to the Examiner, a person of ordinary skill in the
art would have done this to filter particulates from an airstream. Id.
Appellants traverse the rejection by arguing, among other things, that
Spinnler’s alleged “remote end” is at an inlet end, not an outlet end, of a
tube. Appeal Br. 3. Appellants construe “remote end” as corresponding to
the outlet end of a tube. Id.
In response, the Examiner disagrees with Appellants’ construction of
“remote end,” and takes the position that the “remote end” of the tube can be
construed as corresponding to the inlet end of the tube. Ans. 9-11 (“[T]he
1 Rejections of claims 3 and 5 under 35 U.S.C. § 112 have been withdrawn
by the Examiner. Final Action 2-3, Ans. 9.
3
Appeal 2017-002586
Application 13/719,529
‘remote end’ is implied as being representative of an inlet of the ‘J-shaped
tube.’”).
The dispute between Appellants and the Examiner is largely a matter
of claim construction. During examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). However, even under the broadest reasonable interpretation,
construction “cannot be divorced from the specification and the record
evidence.” In reNTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011).
Appellants’ Figure IB indicates a direction of flow of the airstream
that is filtered by the invention. See Fig. IB, element 40. The
accompanying disclosure in the Specification provides as follows:
As shown in Figure IB, the conduit 28 connects to a motor
tube 38 which delivers an airstream 40 into various paths 42,
44, 46, and 48, which then cools a motor 30, and its associated
bearings. A fan impeller 32 moves air from the inlet 34 to an
outlet 36.
Spec. 14. Figure 2 depicts J-shaped tube 52, which is described as facing
in a “downstream direction.” Id. 15, Fig. 2. The conical filter 54 has two
ends: (1) a larger end 62, which is connected to J-shaped tube 52; and (2) a
smaller end 64, which is described as the “downstream” end. Id. 16,
Fig. 3A. Figure 3B depicts conical filter 54 with its larger diameter end 62
connected to J-shaped tube 52 and its smaller diameter “downstream” end
having an end 66 that is “left open.” Id. 16, Fig. 3B (“The perforated
4
Appeal 2017-002586
Application 13/719,529
conical filter 54 extends from a larger end 62 which is connected to the
tube 52 to a smaller downstream end 64. The end 66 is left open.”). The
context of the disclosure, including the Specification and Drawings, supports
Appellants’ construction that the “remote end” in claim 1 corresponds to the
outlet end of the airstream conduit/tube assembly.
Even when guidance is not provided in explicit definitional
format, the specification may define claim terms by implication
such that the meaning may be found in or ascertained by a
reading of the patent documents.
Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1300 (Fed.
Cir. 2004).
Construing the claim language in accordance with its ordinary and
customary meaning as would be understood by one of ordinary skill in the
art in the context of the entire disclosure, we determine that the Examiner’s
finding of fact that Spinnler discloses a filter disposed on a remote end is
erroneous as based on an incorrect claim construction. Accordingly, we do
not sustain the Examiner’s anticipation rejection of claim 1.
Claims 2, 3, and 7
Claims 2, 3, and 7 depend, directly or indirectly, from claim 1.
Claims App. The rejection of these claims suffers from the same infirmity
that we have identified above with respect to claim 1. For the same reasons
articulated above with respect to claim 1, we do not sustain the Examiner’s
unpatentability rejection of claims 2, 3, and 7.
Unpatentability of Claims 4 and 6
over McAuliffe, Shigezawa, Spinnler, and Design Choice
Claims 4 and 6 depend, directly or indirectly, from claim 1. Claims
App. The rejection of these claims suffers from the same infirmity that we
5
Appeal 2017-002586
Application 13/719,529
have identified above with respect to claim 1, which infirmity is not cured
by the Examiner’s reliance on “design choice” for the dimensional
limitations in these claims. Final Action 7-9. Thus, for the same reasons
articulated above with respect to claim 1, we do not sustain the Examiner’s
unpatentability rejection of claims 4 and 6.
Unpatentability of Claim 5
over McAuliffe, Shigezawa, Spinnler, and Le
Claim 5 depends from claim 1. Claims App. The rejection of claim 5
suffers from the same infirmity that we have identified above with respect to
claim 1, which infirmity is not cured by the Examiner’s reliance on the Le
reference for the shape of the filter screen openings. Final Action 9-10.
Thus, for the same reasons articulated above with respect to claim 1, we do
not sustain the Examiner’s unpatentability rejection of claim 5.
DECISION
The decision of the Examiner to reject claims 1-7 is REVERSED.
REVERSED
6