Ex Parte Morse et al

Patent Trial and Appeal Board

Jan 3, 2018

11552391 (P.T.A.B. Jan. 3, 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.
11/552,391 10/24/2006 Thomas C. Morse CMFL/045 1979
69826 7590 01/05/2018
PATTERSON & SHERIDAN, LLP - CAMFIL
24 Greenway Plaza
Suite 1600
Houston, TX 77046
EXAMINER
KOSANOVIC, HELENA
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
01/05/2018 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):
KTABOADA@PATTERSONSHERIDAN.COM
PAIR_eOfficeAction@pattersonsheridan.com
psdocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS C. MORSE and
MARK HUZA
Appeal 2016-007435
Application 11/552,391
Technology Center 3700
Before: EDWARD A. BROWN, MICHAEL L. HOELTER, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a non-
final rejection of claims 1—5, 8, 10, 13, and 22—32. App. Br. 1. Claims 6, 7,
9, 11, 12, and 14—21 have been canceled. App. Br. 21—22 (Claims
Appendix). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-007435
Application 11/552,391
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a housing assembly having an
integrated damper, and more specifically, a housing assembly for an air filter
having an integrated damper with a linear drive mechanism.” Spec. 12.
Apparatus claims 1 and 10 are independent. Claim 1 is illustrative of the
claims on appeal and is reproduced below.
1. A housing assembly, comprising:
a housing having an inlet and an outlet;
a damper disposed in the housing in an orientation that
remains centered with respect to the inlet;
a linear drive mechanism adapted to move the damper
linearly between positions that open and close the inlet without
rotating the damper, wherein the linear drive mechanism further
comprises a rack coupled to the damper engaged with a feature
that prevents rotation of the damper when the rack is moved
axially; and
a seal coupled to a perimeter of the damper and adapted
to sealingly engage the housing to providing a bubble-tight seal
of the inlet when the damper is in the closed position.
REFERENCES RELIED ON BY THE EXAMINER
Knab US 3,323,437 June 6, 1967
Nelson US 3,987,812 Oct. 26, 1976
Harriman US 4,557,185 Dec. 10, 1985
Morse US 7,588,614 B2 Sept. 15,2009
THE REJECTIONS ON APPEAL
Claims 25 and 31 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Claims 1, 2, 4, 5, 8, 10, 13, 25, 31, and 32 are rejected under 35
U.S.C. § 103(a) as unpatentable over Harriman and Nelson.
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Application 11/552,391
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Harriman, Nelson, and Knab.
Claims 8 and 22—31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Harriman, Nelson, and Morse.
ANALYSIS
The rejection of claims 25 and 31 as being indefinite
Dependent claims 25 and 31 each recite, “wherein the housing is a
containment housing.” The Examiner states, “[i]t is not clear from the
specification what [a] containment housing is.” Non-Final Act. 2.
Appellants identity where either the term “containment system” or
“containment housing” is described in Appellants’ Specification stating, “it
is clear from the specification that the containment housing is housing 700 in
Figure 7.” App. Br. 11—12 (referencing Spec. Tflf 43, 45, and 49).
Appellants also contend, “‘containment housing’ is a term of art which
identifies a type of filter housing used to provide safety and protection when
hazardous substances must be prevented from exposure to people and the
environment.” App. Br. 16;1 see also App. Br. 18; Reply Br. 6, 8—9.
The Examiner does not withdraw this rejection in view of Appellants’
assertions, but neither does the Examiner indicate that this rejection is
maintained because this rejection is not included among those listed after the
Examiner states, “[t]he following ground(s) of rejection are applicable to the
appealed claims.” Ans. 2. Thus, we presume that lacking any express
withdrawal thereof by the Examiner, this rejection is still before us on
appeal. However, in view of Appellants’ assertions above, we are persuaded
1 Referencing http://camfil.com/Products/Containment-Systems/
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Application 11/552,391
Appellants have made clear (from both Appellants’ Specification and as a
term of art) what a containment housing is, which the Examiner does not
dispute. Accordingly, we reverse the Examiner’s rejection of claims 25 and
31 as being indefinite.
The rejection of claims 1, 2, 4, 5, 8, 10, 13, 25, 31, and 32
as unpatentable over Harriman and Nelson
Appellants interweave arguments for independent claims 1 and 10
together. App. Br. 12—15. We address these claims together where possible
and separately as needed. Appellants also argue claim 13 alone (App. Br.
15—16), and claims 25 and 31 together (App. Br. 16). Accordingly, we
select claims 1, 10, 13, and 25 for review with the remaining claims (i.e.,
claims 2, 4, 5, 8, 31, and 32) standing or falling with their respective parent
and/or grouped claim. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
The Examiner primarily relies on the teachings of Harriman for
disclosing many of the limitations of claim 1, but the Examiner specifically
relies on Nelson for teaching a damper coupling “with a feature that prevents
rotation of the damper when the rack is moved axially.” Non-Final Act. 3,
5. Appellants disagree with the Examiner’s reliance on Nelson stating, “the
rack 12 of Nelson is not coupled to a damper in a manner that ‘prevents
rotation of the damper when the rack is moved axially’, as recited in claim
1.” App. Br. 12; see also Reply Br. 2.
The Examiner correlates Nelson’s item 14 to the recited damper. Ans.
7. Nelson teaches that damper 14 is mounted (“screwed”) to valve stem 10
(a part of which forms rack 12). Nelson 2:30-36; see also Figs. 2—3.
Nelson states that damper 14 moves when valve stem 10/rack 12 moves.
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Application 11/552,391
Nelson 2:33—36; see also Ans. 7. The Examiner explains what a rack is (i.e.,
“a bar with teeth on one face for gearing”) and how teeth being on one side
only (along with a pinion gear (see Nelson’s pinion gear 20)), “transform[s]
rotary motion to linear motion or vice versa.” Ans. 7 (citation omitted); see
also Ans. 8—9. This is in contrast to the “bar and pinion” arrangement
depicted at page 10 of the Examiner’s Answer “that does not transform the
rotational motion into linear” motion because the bar has “teeth all around
the bar.” Ans. 10. The Examiner thus states that as depicted, Nelson’s rack
12 has teeth “on one face (which means not all around the bar, because this
kind of teeth would rotate the bar).” Ans. 7; see also Nelson Figs. 2—3.
Hence, the Examiner concludes that Nelson “teaches that the rack bar 10, 12
does not provide rotational movement which in turn does not provide the
rotational movement of the damper attached to the rack, because it is a
common knowledge of one of ordinary skill in the art.” Ans. 10.
Appellants contend, “[t]he Examiner does not articulate how moving
the damper axially (in an up/down direction) prevents rotation of the
damper” and that Nelson is silent on this point. App. Br. 13. We disagree
with this assessment of Nelson by Appellants (even if Nelson is silent) in
view of the illustrated explanation provided by the Examiner discussed
above, and in view of the rack and pinion structure readily disclosed by
Nelson (which discloses teeth extending perpendicular to the longitudinal
axis of stem 10 as contrasted with the helical teeth arrangement of a bar and
pinion arrangement, see Nelson Figs. 2, 3; Ans. 10).
Appellants state that the references “do not recognize a need for
preventing such rotation” (App. Br. 13), but the disclosed recognition of
such a need is not the test for a finding of obviousness. We are instructed,
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“[i]n determining whether the subject matter of a patent claim is obvious,
neither the particular motivation nor the avowed purpose of the patentee
controls.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Accordingly, Appellants’ contention regarding the prior art failing to
recognize a need to prevent rotation is not persuasive of Examiner error.
Appellants also contend, “Nelson teaches a mechanism which is more
complicated, having additional parts which would add to the complexity and
costs contrary to the assertion of the Examiner.” App. Br. 15. Even if this
contention is true (the Examiner is substituting Harriman’s solenoid
arrangement with Nelson’s rack and gear arrangement, Non-Final Act. 5),
Appellants do not persuasively explain how a known device possibly being
more complicated and/or costly thereby automatically renders the allegedly
less-complicated and claimed device non-obvious. Appellants’ unsupported
attorney argument is not persuasive.
Appellants further contend, “[t]he round teeth of the rack 12 shown in
the Appeal Brief Illustration 1 has but a single point of contact with the
pinion 20 allowing for twisting of the valve stem 10.” App. Br. 14; see also
Reply Br. 2, 4. Appellants’ contention is based on a figure found only in
their Appeal Brief from which Appellants conclude that Nelson’s teeth (a)
are round and (b) have but a single point of contact with pinion gear 20.
Nelson’s Figures 2 and 3 give lie to both. First, Figure 3 of Nelson provides
a view along or parallel to the trough/teeth of Nelson’s rack 12, the bottom
of the trough and the apex of the teeth both being flat or square. Further,
Figures 2 and 3 of Nelson together show such troughs/teeth as extending
straight and perpendicular to the longitudinal axis of stem 10. Hence,
Nelson’s rack 12 is not depicted as having “round” teeth, such as those that
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extend helically about a bar, as Appellants’ assert. For better understanding,
compare and contrast the helical or “round” teeth illustrated at page 10 of the
Examiner’s Answer with the straight teeth depicted at pages 8 and 9 of the
Examiner’s Answer (and Nelson Figs. 2, 3) discussed above. Further, as
shown in Figures 2 and 3 of Nelson, both rack 12 and pinion gear 20 have
elongated, straight teeth that overlap. Hence the respective planes of these
meshing teeth contact each other, in other words, there is no disclosure in
Nelson of only “point” contact (which might cause twisting) as Appellants
assert. Accordingly, Appellants’ contentions are not persuasive of Examiner
error.
In a further attempt by Appellants to emphasize the “twisting” nature
between a pinion gear and a rack such that rotation might occur, Appellants
identify “Patent US4296641 to inventor James May, assigned to Ford Motor
Company” (hereafter, “May”). Reply Br. 3. Appellants quote from this
reference as follows, “it has been recognized that the loads applied to the
rack shaft by the pinion operate to produce an undesirable rotation of the
rack shaft about its central longitudinal axis. {May at Col. 1, Ins. 31-34).”
Reply Br. 3. Thus, as per Appellants, May “evidences contrary to the
Examiner's opinion that a car (or damper) rack and pinion system can rotate
along a central longitudinal axis unless care in design is taken to prevent
such rotation.” Reply Br. 3; see also id. at 5.
However, what Appellants do not address is the reason expressed in
May that explains why, and under what conditions, such rotation about a
central axis may arise. Following the quote above, May further states,
This phenomenon is the result of the rack teeth being cut to a
shallow depth which necessarily locates the resultant of the
applied forces at a position substantially eccentric of the axis of
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the shaft. The loads have a tangential component about the axis
which tends to rotate the shaft and cause the teeth of the rack to
rotate.
May 1:34-40 (emphasis added). Hence, it is eccentricity, and an offset
tangential load, that causes unwanted rotation, and not the mere fact that a
rack and pinion arrangement is employed. Appellants do not identify where
any such eccentricity/tangential loading might exist in Nelson, nor is any
such loading self-evident. Accordingly, we are not persuaded that Nelson is
subject to the above-described loading such that Nelson’s damper might
possibly rotate.
Appellants also contend, “the incorporation of the drive mechanism of
Nelson into the exhaust system of [Harriman] would render the exhaust
system unsatisfactory for its intended purpose.” App. Br. 14. This is
because “Nelson teaches a means for allowing the pinion 20 to rotate
independently of the shaft 18” via Nelson’s “lost motion connection.” App.
Br. 15 (referencing Nelson 2:44-49). In other words, in Nelson, fluid can
flow when the shaft is at rest, which “is contrary to teachings of [Harriman]
wherein an air tight seal is formed when the solenoid is in the de-energized
position.” App. Br. 15 (referencing Harriman 2:67 to 3:15).
Indeed, Nelson discloses a “lost motion connection means” that
includes a pin 22 secured to shaft 18, and a lug 24 formed on a portion of
pinion gear 20. Nelson 2:44—51. However, the Examiner is not
incorporating this structure of Nelson into that of Harriman in the rejection.
See Non-Final Act. 5. It is well settled that obviousness does not require
that all of the features of the secondary reference be bodily incorporated into
the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, the Examiner is addressing Nelson’s linear drive mechanism and
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concluding that it would have been obvious “to substitute the Harriman
linear drive mechanism with [Nelson’s] linear drive mechanism” and that
doing so “would have yielded predictable results of moving the damper.”
Non-Final Act. 5. Appellants do not explain how the Examiner’s
substitution of Nelson’s rack and gear arrangement for Harriman’s
solenoid/spring arrangement would render Harriman unsatisfactory for its
intended use.
Accordingly, and based on the record presented, we are not persuaded
of Examiner error. We sustain the Examiner’s rejection of independent
claim 1, and dependent claims 2, 4, 5, and 8.
Claim 10
Independent claim 10 includes the limitation, “the rack having
truncated crests and trenches engaging the flat teeth of the gear.” Appellants
contend that Nelson lacks this teaching. App. Br. 12—14; Reply Br. 4—5.
The Examiner, on the other hand, references Figure 3 of Nelson as
disclosing this limitation. Non-Final Act. 5; Ans. 11. The Examiner also
provides a dictionary definition of “truncate” (i.e., “having the end square or
even”) which Appellants do not dispute. Ans. 11—12 (dictionary citation
omitted). Nelson’s Figure 3, as discussed above, provides a side view of
Nelson’s rack 12 along or parallel to the teeth/trough disposed therein. The
respective apex and valley of each tooth/trough is depicted in this Figure 3
as flat or squared-off (i.e., “truncated”). This is the same “truncated”
configuration depicted by Appellants when illustrating the teeth/troughs of
Appellants’ rack. See Appellants’ Fig. 5. Appellants do not explain how
their teeth are truncated whereas a similar configuration depicted in Nelson
is not. Accordingly, Appellants are not persuasive that the Examiner erred
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in concluding that Nelson discloses this limitation. Thus, and incorporating
similar reasons addressing similar language addressed above with respect to
claim 1, we sustain the Examiner’s rejection of independent claim 10 and
dependent claim 32.
Claim 13
Claim 13 depends from claim 10 and includes the additional
limitation, “the rack having a non-circular cross section.” The Examiner
states that “it would have been [an] obvious [matter] of design choice ... to
have non-circular instead of circular cross section” because Appellants have
“not disclosed that the non-circular cross section of the rack provides an
advantage [or] is used for [a] particular purpose or solves a stated problem.”
Non-Final Act. 4. Appellants dispute this position, indicating that
Appellants’ Specification describes “the flat form of the teeth of the rack”
and that such flat teeth “substantially prevents rotation of the shaft.” Spec.
148; see also App. Br. 15. In short, Appellants seek to ascribe the non­
circular nature of the cross section to the benefit of preventing rotation (App.
Br. 15; Reply Br. 3, 6), when, in fact, Appellants’ Specification ascribes the
lack of rotation to the “flat form of the teeth of the rack,” not to any cross-
sectional shape. Spec. 148. The only usage of the term “non-circular,” and
the only discussion of a “cross-section,” in Appellants’ original disclosure is
in claim 13 itself. Accordingly, we agree with the Examiner that Appellants
have not disclosed any particular advantage, solution, or usage that would
render the Examiner’s finding of “design choice” with respect to a cross-
sectional shape inaccurate or inapplicable. We sustain the Examiner’s
rejection of claim 13.
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Claim 25
Claim 25 depends directly from claim 1 and, as discussed above,
includes the limitation, “wherein the housing is a containment housing.”
The Examiner relies on Harriman Figure 1 as disclosing this limitation.
Non-Final Act. 5. Appellants provide a definition of “containment housing”
(i.e., it identifies “a type of filter housing”). App. Br. 16; Reply Br. 6.
Appellants contend that Harriman does not “consider, or is configured to,
accept a filter” and as such, “Harriman in view of Nelson does not disclose
‘wherein the housing is a containment housing’ as recited in claims 25 and
31” and as this term is defined above. App. Br. 16; Reply Br. 6—7. The
Examiner does not address this “filter” component of a “containment
housing,” or indicate where such teachings regarding a filter can be found in
either Harriman’s or Nelson’s housings. Accordingly, we do not sustain the
Examiner’s rejection of claims 25 and 31 as being obvious over Harriman
and Nelson.
The rejection of claim 3
as unpatentable over Harriman, Nelson, and Knob
Claim 3 depends from claim 1 and further recites “a filter element
disposed in the housing.” Here, the Examiner acknowledges that Harriman
and Nelson are “silent about a filter.” However, “Knab teaches a filter 4
(fig. 2).” Non-Final Act. 6. Appellants do not dispute Knab’s disclosure of
a filter in a housing (see Knab Fig. 2) but instead contend that “Knab cannot
suggest a modification to Harriman and Nelson” that would cure the rack
defect argued above. App. Br. 17; Reply Br. 7. We are not in agreement
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with Appellants that Harriman and Nelson are deficient on this point.
Accordingly, we sustain the Examiner’s rejection of claim 3.2
The rejection of claims 8 and 22—31
as unpatentable over Harriman, Nelson, and Morse
Appellants present arguments for claims 31 and 1 (in that order)
separately. App. Br. 18. Appellants also argue claims 25 and 31 together
and claim 30 separately. App. Br. 18—19. We select claims 31, 1, 25 and 30
for review (in that order) with claims 8, 22—24, and 26—29 standing or falling
with their respective parent and/or grouped claim.
Claim 31
Appellants initially contend, “the office action does not provide any
grounds for the rejection of claim 31 outside that discussed above.” App.
Br. 18. As noted, claim 31 recites the limitation “wherein the housing is a
containment housing” with Appellants defining “containment housing” as
being “a type of filter housing.” App. Br. 18. The Examiner identifies
Morse as disclosing “a housing being a filter housing with filter inside said
housing in order to provide clean air . . . and thus provide clean
environment.” Non-Final Act. 7; see also Ans. 13; Morse Title and
Abstract. In view of Morse’s disclosure of a contained filter (see Morse Fig.
1), we are not persuaded by Appellants’ argument that the Examiner failed
to provide “any grounds for the rejection of claim 31.” App. Br. 18.
2 The Examiner’s initial reason to combine Knab with Harriman and Nelson
is “in order to provide clean air in the room.” Non-Final Act. 6. However,
the Examiner indicates this “was a typo in the office action” and that,
instead, it should have read, “in the environment—the examiner said ‘in the
room.’” Ans. 13. Appellants do not dispute this corrected “in the
environment” language. See Reply Br. 7—8.
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Claim 1
Appellants also present arguments addressing how “Morse is silent”
regarding the rack limitation of claim 1 and that “Morse does not bridge the
gap” left by Harriman and Nelson on this point. App. Br. 18; Reply Br. 8, 9.
Such arguments are not persuasive since we are not persuaded there is any
deficient in Harriman and Nelson regarding the “rack” limitation recited in
the parent claim.
Claim 25
Appellants, similar to the above argument regarding claim 31,
contends, “[t]he Examiner does not articulate why one of ordinary skill in
the art at the time of the invention would substitute the housing of Harriman
in view of Nelson with the housing of Morse.” App. Br. 18; Reply Br. 9.
However, as above, we are not persuaded the Examiner failed to articulate
“why” this is to be accomplished (rather, the Examiner states that it would
have been obvious “because the substitution of one known element for
another would have yielded predictable results”). Non-Final Act. 7.
Appellants also contend, “the combination of the containment housing
disclosed by Harriman in view of Nelson with that of Morse would require a
redesign of the invention of Harriman in view of Nelson in a manner that is
costly, unwarranted and not entirely clear.” App. Br. 19; see also Reply Br.
9 (the combination of Harriman, Nelson and Morse “would be wholly
unsuitable as a ‘containment housing’ as recited by claims 25 and 31”).
Appellants thereafter describe both Harriman’s and Nelson’s device,
contending that such combination “does not teach or disclose ‘wherein the
housing is a containment housing’ as recited in claims 25 and 31.” App. Br.
19. We disagree with Appellants’ contention. The Examiner has already
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gone on record as acknowledging that “Harriman in view of Nelson teaches
the invention as discussed above, but is silent about a filter.” Non-Final
Act. 6 (emphasis added). However, as evidenced by statements made by the
Examiner, the Examiner relies on Morse for such teachings, not Harriman or
Nelson. See Non-Final Act. 6—7; Ans. 13. Accordingly, we are not
persuaded of Examiner error on this point. We sustain the Examiner’s
rejection of claims 25 and 31 as being obvious over Harriman, Nelson, and
Morse.
Claim 30
Claim 30 includes the limitation, “wherein the housing is a filter
housing.” Appellants contend, “[t]he Examiner does not articulate why one
of ordinary skill in the art at the time of the invention would substitute the
[housing of] Harriman in view of [the] Nelson housing with the housing of
Morse.” App. Br. 19. To be clear, the Examiner identifies where Morse
discloses “a filter housing assembly.” Non-Final Act. 7 (referencing Morse
2:5); see also Morse Title and Abstract. The Examiner thereafter addresses
“the substitution of one known element for another” and that it would have
been obvious to employ a housing “with filter inside said housing in order to
provide clean air . . . and thus provide clean environment.” Non-Final Act.
7. Accordingly, Appellants’ contention regarding claim 30 is not persuasive
of Examiner error. We sustain the Examiner’s rejection of claim 30 as being
obvious over Harriman, Nelson, and Morse.
DECISION
The Examiner’s rejection of claims 25 and 31 as being indefinite is
reversed.
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The Examiner’s rejection of claims 1, 2, 4, 5, 8, 10, 13, and 32 as
unpatentable over Harriman and Nelson is affirmed.
The Examiner’s rejection of claims 25 and 31 as unpatentable over
Harriman and Nelson is reversed.
The Examiner’s rejection of claim 3 as unpatentable over Harriman,
Nelson, and Knab is affirmed.
The Examiner’s rejection of claims 8 and 22—31 as unpatentable over
Harriman, Nelson, and Morse 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).
AFFIRMED
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