Ex Parte Morgan et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10875757 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEE PENDLETON MORGAN and JAN ERIC LARSON
____________

Appeal 2009-006652
Application 10/875,757
Technology Center 1700
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Decided: April 29, 2010
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
ADRIENE LEPIANE HANLON, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 2-5 and 8-17. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal 2009-006652
Application 10/875,757

Appellants claim an air filter assembly comprising a filter cartridge 20
having pleats 21 which are separated from each other by beads (e.g., beads
or strips of hot melt glue) 19 (claim 8, Fig. 4). Appellants also claim a
method for fabricating an air filter assembly which comprises coating one
surface of a flexible paper sheet with one row of hot melt glue beads and
folding the sheet into a pleated configuration with the row of beads in each
section being opposite each other so that the sides of adjoining pleats are
kept separated from each other (claim 15).
Representative independent claims 8 and 15 read as follows:
8. An air filter assembly comprising:

A filter cartridge in the form of a container having an open top and a
side portion fabricated of an air filter material running around the entire side
of said cartridge, said side portion having pleats formed therein and beads
separating said pleats from each other;

A blower for drawing air through said cartridge from the outer walls
of said side portion, said side portion filtering said air, said blower further
drawing said filtered air our [sic, out] of said cartridge feeding said air to a
predetermined clean air area;

a reservoir;

compressed air stored in said reservoir;

a valve connected to the output of said reservoir;

a blowpipe having a nozzle connected to the output of said valve, said
blowpipe feeding air into the interior of said filter cartridge; and

an automatic timer control for effecting pulsed feeding of said
compressed air at a predetermined rate.

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Application 10/875,757

15. A method for fabricating an air filter assembly comprising the
steps of:

coating one surface of a sheet of flexible paper media with one row of
hot melt glue beads, said row running along the entire width of said sheet but
for small sections of said sheet at the opposite ends thereof,

folding said sheet into a pleated configuration with the row of beads in
each section being opposite each other so that the sides of adjoining pleats
are kept separated from each other; and

winding said sheet into a predetermined shape.

The references set forth below are relied upon by the Examiner in the
rejections before us (Ans. 2):
Labadie 4,786,293 Nov. 22, 1988
Barris 5,616,171 Apr. 01, 1997
Choi 2004/0112023 A1 Jun. 17, 2004

Under 35 U.S.C. § 103(a), the Examiner rejects claims 2-5, 8, 10, and
12-14 as being unpatentable over Labadie in view of Choi and rejects claims
9 and 11 as being unpatentable over Labadie, Choi and Barris.
Under 35 U.S.C. § 102(b), the Examiner rejects claims 15-17 as being
anticipated by Choi.
We will sustain each of these rejections for the reasons expressed by
the Examiner in the Answer. We adopt the findings of fact, conclusions of
law, and rebuttals to argument set forth in the Answer. We add the
following comments for emphasis.
In rejecting claims 2-5, 8, 10, and 12-14, the Examiner acknowledges
that Labadie does not teach Appellants’ claimed pleat-separating beads but
finds that Choi discloses using pleat-separating bead strips in order to
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Application 10/875,757

optimize pleat spacing and fluid resistance (Ans. 4). The Examiner
concludes that it would have been obvious for one with ordinary skill in this
art to provide Labadie with pleat-separating beads in order to obtain the
advantages taught by Choi (id. at 5).
Appellants state that “[t]he Choi reference is directed to a pleated
filter having separators formed by strips” and argue that “[t]here is no
teaching or any suggestion in this reference of employing this pleated
structure in a system for reverse pulse cleaning or any type of filter
cleaning” (App. Br. 8).
This argument is unpersuasive. The record before us supports the
Examiner’s determination that the disclosure of Choi would have suggested
providing Labadie with filter pleats separated from each other by beads, as
required by representative claim 8, in order to obtain the advantages
expressly taught by Choi. Appellants’ argument does not specifically
address this determination and therefore reveals no error in the findings of
fact or conclusions of law made by the Examiner in the rejection under
consideration.
In an apparent attempt to show non-obviousness, Appellants allege
that their invention enjoys commercial success (App. Br. 9-10). However,
this allegation is unsupported by evidence (id.; see also App. Br., Evidence
Appendix (“No evidence has been submitted by the Applicant”)).
Accordingly, Appellants’ allegation of commercial success is without
probative value in assessing the rejection based on Labadie and Choi.
For the reasons stated above and in the Answer, we sustain the
Examiner’s § 103 rejection of claims 2-5, 8, 10, and 12-14 as being
unpatentable over Labadie in view of Choi.
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Application 10/875,757

Concerning the rejection of claims 9 and 11 over Labadie, Choi and
Barris, Appellants state that “[n]either Labadie or [sic, nor] Choi have any
teaching of the changing of the pulsing rate as set forth in the claims” (App.
Br. 10). However, this statement merely reiterates the Examiner’s
acknowledged deficiency of Labadie and Choi (Ans. 7-8). The Examiner
relies on Barris to supply this deficiency (id.). Appellants do not discuss
Barris at all and therefore necessarily fail to reveal any error in the fact
finding or obviousness conclusion made by the Examiner in rejecting claims
9 and 11.
It follows that we sustain the § 103 rejection of claims 9 and 11 as
being unpatentable over Labadie, Choi, and Barris.
In discussing the § 102 rejection of claims 15-17, Appellants merely
describe what is recited in these claims and indicate that such claim
recitations distinguish over Choi (App. Br. para. bridging 10-11). However,
this discussion fails to address with any reasonable specificity the findings of
fact made by the Examiner in support of the § 102 rejection (Ans. 8).
Necessarily, Appellants also have failed to reveal any error in these findings
of fact. Moreover, the regulation governing appeals advises that “[a]
statement which merely points out what a claim recites will not be
considered for separate patentability of the claim” (37 C.F.R. §
41.37(c)(1)(vii)(2007)).
Under these circumstances, we also sustain the § 102 rejection of
claims 15-17 as being anticipated by Choi.
Finally, we observe that Appellants’ Reply Brief presents additional
arguments which were not, but could have been, presented in their Principal
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Appeal Brief. Our observation is reinforced by Appellant’s following
characterization of the Reply Brief arguments:
Applicant notes that above arguments are made in
addition to arguments in Appeal Brief submitted previously
and the purposes of these additional arguments are to further
more clearly and particularly describe the claimed invention,
and not for purposes of patentability or overcoming any art.

(Reply Br. 7).
As reflected above, our disposition of this appeal has not included
consideration of the Reply Brief arguments. We have declined to consider
these Reply Brief arguments for two reasons. First, consideration of the
additional arguments in the Reply Brief is unnecessary since Appellants
expressly state that “these additional arguments are . . . not for purposes of
patentability or overcoming any art” (id.). Second, under regulations
governing appeals to the Board, any argument not timely presented in the
Principal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief. See Ex Parte George R. Borden IV, 2010
WL 191083 *1-*5 (BPAI 2010) and Ex Parte Atsuhisa Nakashima, 2010
WL 191183*3-*5 (BPAI 2010).
In summary, we have sustained each of the § 102 and § 103 rejections
advanced in this appeal.
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

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Application 10/875,757

AFFIRMED

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