Ex Parte Morgan et alDownload PDFBoard of Patent Appeals and InterferencesApr 29, 201010875757 (B.P.A.I. Apr. 29, 2010) Copy Citation 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 ____________ Decided: April 29, 2010 ____________ 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. 2 Appeal 2009-006652 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 3 Appeal 2009-006652 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. 4 Appeal 2009-006652 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 5 Appeal 2009-006652 Application 10/875,757 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). 6 Appeal 2009-006652 Application 10/875,757 AFFIRMED ssl LAW OFFICE OF ROBERT E. 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