Ex Parte Morgan

Patent Trial and Appeal Board

Feb 12, 2014

11858315 (P.T.A.B. Feb. 12, 2014)

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.
11/858,315 09/20/2007 H. William Morgan 178-022.007 2543
31179 7590 02/12/2014
BOTKIN & HALL, LLP
105 E. JEFFERSON BLVD.
SUITE 400
SOUTH BEND, IN 46601
EXAMINER
KURTZ, BENJAMIN M
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
02/12/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte H. WILLIAM MORGAN
____________

Appeal 2012-008989
Application 11/858,315
Technology Center 1700
____________

Before TERRY J. OWENS, JEFFREY T. SMITH, and GEORGE C. BEST,
Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-008989
Application 11/858,315
2
On June 14, 2011, the Examiner finally rejected claims 1-9 of
Application 11/858,315 under 35 U.S.C. § 103(a) as obvious. Claim 9 also
was rejected under 35 U.S.C. § 112, ¶ 1 as not enabled. Appellant1 seeks
reversal of the obviousness rejections pursuant to 35 U.S.C. § 134(a).2 We
have jurisdiction under 35 U.S.C. § 6(b)(1).
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’315 application describes a filter assembly for filtration of fluids.
Spec. ¶ 0002. One embodiment of this filter assembly comprises a filter
element that is secured in a filter housing by snapping an annular rib on the
filter element into a corresponding annular groove on the filter housing. Id.
at ¶ 0007.
Claim 1 is the only independent claim in the ’315 application and is
reproduced below:
1. A fluid filler assembly of the type having a filter element
and a filter housing, wherein
the filter housing includes an inlet, an outlet, at least one
housing section disposed between the inlet and the outlet and
communicating fluid from the inlet to the outlet, wherein said
filter housing includes a shoulder surface which defines a filter
opening,
the filter element including a mounting ring mounted in said
filter opening,

1 The inventor and applicant, H. William Morgan, is identified as the real
party in interest. (Ans. 2.)
2 The Examiner has withdrawn the rejection of claim 9 for non-enablement.
(Ans. 4.)
Appeal 2012-008989
Application 11/858,315
3
said mounting ring having a mounting interface,
said mounting interface including an axially extending
portion and a radially outwardly extending flange having
a diameter greater than said filter opening so as to overlie
said shoulder surface,
said axially extending portion of said mounting ring
including an annular rib extending radially outwardly
therefrom and spaced from said flange in the direction
of said outlet;
said rib seated upon unidirectional axial insertion
of the filter element into the filter housing toward
said outlet within an annular groove defined
within said filter housing and located between said
shoulder surface and said outlet to thereby secure
said axially extending portion of said mounting
ring within said filter opening with said flange
contacting said shoulder surface.
(App. Br. 20 (Claims App’x) (emphasis, paragraphing, and indentation
added).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Morgan ’966,3 Hughes,4 Morgan ’769,5
and Asterlin.6 (Ans. 4.)

3 U.S. Patent No. 4,204,966, issued May 27, 1980.
4 U.S. Patent No. 6,524,477 B1, issued February 25, 2003.
5 U.S. Patent No. 4,133,769, issued January 9, 1979.
6 U.S. Patent No. 4,669,167, issued June 2, 1987.
Appeal 2012-008989
Application 11/858,315
4
2. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Morgan ’966, Hughes, Morgan ’769, Asterlin,
and Beyne.7 (Ans. 7.)
DISCUSSION
Rejection 1. Claim 1 requires, inter alia, that the filter element be
secured to the filter housing through a snap-fit arrangement between an
annular rib and a corresponding groove. The rib is located on the filter
element, and the groove is on the filter housing. Claim 1; see also Spec. Fig.
1C. The rib-and-groove securing system is spaced apart from the interface
between the housing and the filter element’s flange. Claim 1.
In rejecting claim 1 as obvious, the Examiner found that one
embodiment of Morgan ’966 uses a non-annular “rib” that is spaced apart
from the flange. (See Ans. 5 (citing Morgan ’966, col. 5, ll. 3-8; Fig. 10).)
A variation of this arrangement is
shown in Figure 11 of Morgan ’966,
which is reproduced at left. This figure
is a fragmentary sectional view of one
embodiment of a filter assembly
described in Morgan ’966. Morgan
’966 col. 2, ll. 1-2. In this embodiment, pin 82 is inserted into slot 72, and
then the filter element is rotated relative to the filter housing, to produce a
cam action as pin 82 rides along cam surface 74 of slot 72. The cam action
holds the surface of the filter element’s flange 86 against an o-ring (not

7 U.S. Patent No. 5,192,424, issued March 9, 1993.
Appeal 2012-008989
Application 11/858,315
5
shown) that is positioned between flange 86 and a shoulder surface (not
shown) of the filter housing. Morgan ’966 col. 4, l. 50-col. 5, l. 8.
The Examiner also found that Morgan ’966 describes a different
embodiment in which the filter element includes a flange. (Ans. 5 (citing
Morgan ’966 Figs. 7-9).) The outer edge of this flange engages an annular
groove in the filter housing. (Id.) The Examiner found that Morgan ’769,
Asterlin, and Hughes also describe similar arrangements. (Id. at 5-6.)
Based upon these findings, the Examiner concluded that it would have
been obvious “to provide an annular rib on a filter element and an annular
groove in a filter housing to attach and secure the filter element within the
filter housing.” (Ans. 6.)
We disagree and therefore reverse the rejection of claim 1 as obvious.
Because claims 2-8 depend from claim 1, we also reverse the rejection of
these claims.
We begin by noting that the Examiner has not provided a definition of
the claim term “rib.” The Examiner, however, has apparently construed this
term broadly enough to find that pin 82 in Morgan ’966 is a rib. (See Ans. 5
(“the axially extending portion of the mounting ring including a rib (82)”).)
The term rib normally refers to a curved, elongated ridge. See, e.g.,
WEBSTER’S NINTH NEW COLLEGIATE DICTIONARY 1013 (1985) (defining rib:
“an elongated ridge” or “something resembling a rib [bone] in shape or
function”). The Examiner has not explained why a person of ordinary skill
in the art would have understood the term rib, as interpreted in view of the
’315 application’s Specification, as encompassing circular pin 82 depicted in
Morgan ’966. The Examiner, therefore, has not supported the finding that
the embodiment of Morgan ’966 shown in Figures 10-12 describes a rib.
Appeal 2012-008989
Application 11/858,315
6
As discussed above, the Examiner relies upon another embodiment in
Morgan ’966, as well as embodiments described in the secondary references,
for the description of an annular rib. (See Ans. 5-6.) In each case, the
structure to which the Examiner points is located on the edge of a flange.
These structures, therefore, do not describe or suggest that a rib-and-groove
structure that is spaced apart from the flange could replace the cam-locking
structure shown in Figure 11 of Morgan ’966.
Because the Examiner has not established a prima facie case of
obviousness, we reverse the rejection of claims 1-8 of the ’315 application.
Rejection 2. The Examiner did not find that Beyne describes or
suggest locating the claimed annular rib and groove in a position spaced
apart from the flange as required by claim 1. (See Ans. 8.) Thus, there is no
finding that Beyne cures the deficiency that prompted the reversal of the
rejection of claims 1-8. We, therefore, also reverse the rejection of claim 9
of the ’315 application.
CONCLUSION
For the foregoing reasons, we reverse the rejection of claims 1-9 of
the ’315 application.

REVERSED

lp