Ex Parte Munn

Board of Patent Appeals and Interferences

Mar 20, 2008

10829005 (B.P.A.I. Mar. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte MYRON L. MUNN
______________

Appeal 2008-0734
Application 10/829,005
Technology Center 1700
_______________

Decided: March 20, 2008
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 4 and 6 through 8 in the Office Action
mailed January 18, 2007, which claims were subsequently amended in the
Amendment filed February 12, 2007 entered in the Advisory Action mailed
March 9, 2007. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2006).

Appeal 2008-0734
Application 10/829,005
We affirm the decision of the Primary Examiner.
Claim 4 illustrates Appellant’s invention of an oil filter adapter, and is
representative of the claims on appeal:
4. An oil filter adapter for attachment to the externally threaded
filtered oil tube extending outwardly from an oil filter receptacle of an
automotive engine which normally threadably receives the internally
threaded filtered oil outlet at one end of a standard oil filter canister with the
one end thereof having a canister O-ring or gasket provided thereon, the
adapter enabling a replacement oil filter canister to be substituted for the
standard oil filter canister with one end of the replacement oil filter canister
having a canister O-ring or gasket provided thereon outwardly of an
internally threaded filtered oil outlet, the standard and replacement oil filter
canisters having substantially the same diameter with the replacement oil
filer canister having a greater length than the standard oil filter canister to
provide a greater filter capacity thereof, the replacement canister O-ring or
gasket having a greater diameter than the standard canister O-ring or gasket,
the oil filter adapter comprising:
a disc-shaped adapter member having an engine side and a filter side;
said engine side of said disc-shaped adapter member having an annular
O-ring or gasket groove formed therein;
an O-ring or gasket positioned in said O-ring or gasket groove of said disc-
shaped adapter member which is adapted to sealably engage the oil filter
receptacle;
said O-ring or gasket positioned in said O-ring or gasket groove of said disc-
shaped adapter member having the same diameter as said standard canister
O-ring or gasket;
said disc-shaped adapter member having an internally threaded central
opening formed therein which extends inwardly from said engine side
thereof which is adapted to threadably receive the externally threaded
filtered oil tube of the oil filter receptacle;
said disc-shaped adapter member having an externally threaded, hollow
nipple extending from its said filter side at the center thereof which is in
communication with the interior of said internally threaded central opening
in said disc-shaped adapter member;
2
Appeal 2008-0734
Application 10/829,005
the threads of said hollow nipple matching the threads of the oil outlet of the
replacement oil filter canister;
said disc-shaped adapter member having a plurality of spaced-apart
unfiltered oil passageways formed therein which extend therethrough from
said engine side to said filter side thereof outwardly of said central opening
of said disc-shaped adapter member;
said filter side of said disc-shaped adapter member having an annular seat
formed thereon which is positioned outwardly of said hollow nipple and said
unfiltered oil passageway thereof;
the internally threaded filtered oil outlet of the replacement oil filter canister
selectively threadably receiving said externally threaded hollow nipple
whereby the canister O-ring or gasket of the replacement oil filter canister
may be drawn into sealing engagement with said annular seat on said filter
side of said disc-shaped adapter member.
The Examiner relies upon the evidence in this reference (Ans. 3):
Sparling 5,766,451 Jun. 16, 1998
Appellant requests review of the following grounds of rejection
advanced on appeal (App. Br. 4-7):
claims 4 and 7 under 35 U.S.C. § 102(b) as anticipated by Sparling (Ans. 3);
claim 6 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as being obvious over Sparling (Ans. 4); and
claim 8 under 35 U.S.C. § 103(a) as being obvious over Sparling (Ans. 5).
Appellant separately argues the claims in the first ground of rejection.
App. Br. 7-8. Thus, we decide this appeal based on claims 4 and 6 through
8. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
The basic issues in this appeal are whether the Examiner has carried
the burden of establishing a prima facie case in each of the grounds of
rejection advanced on appeal.
The principal issue involves the interpretation of the preamble of
claim 1. The plain language of claim 4 as a whole specifies an oil filter
3
Appeal 2008-0734
Application 10/829,005
adapter comprising at least the parts specified in the clauses in the body of
the claim. The preamble consists of two parts. We determine the first part,
“for attachment” to “an oil filter receptacle of an automotive engine,” must
be given weight to the extent of requiring that the adapter fit at least the oil
filter receptacle of an automotive engine, but without limitation on the
receptacle or the engine.
We determine that in the second part, “the adapter enabling a
replacement oil filter canister to be substituted for the standard oil filter
canister,” the two canisters have “substantially the same diameter” to any
extent and the “replacement canister” has a greater length in order “to
provide a greater filter capacity” to any extent, and the diameter of the
O-ring or gasket of the “replacement canister” is greater to any extent,
however small, than that of the “standard canister.” In light of the disclosure
in the Specification, we determine the “standard canister” is the filter
recommended for an automotive engine by the manufacturer and a
“replacement filter” is any other filter which one may desire for service on
that engine. Indeed, we find no definition for the term “replacement filter”
in the Specification. Spec., e.g., 1-2. See, e.g., In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited therein.
Upon considering the second part of the preamble in view of the
record as a whole taken in light of Appellants’ arguments (App. Br. 7; Reply
Br. 1-2), we agree with the Examiner (Ans. 6) that this language constitutes
a statement of intended use as there is no correlation between the canister
diameter, canister length, and diameter of a canister O-ring or gasket of a
“standard canister” and any desired “replacement canister,” and a structural
4
Appeal 2008-0734
Application 10/829,005
limitation of any component of the oil filter adapter as specified in the rest of
claim 4. See, e.g., Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999);1 Corning Glass Works v. Sumitomo Elect.
U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989); In re Stencel, 828 F.2d
751, 754-55 (Fed. Cir. 1987), and cases cited therein (“Whether a
[statement] . . . of intended purpose constitutes a limitation to the claims is,
as has long been established, a matter to be determined on the facts of each
case in view of the claimed invention as a whole.”).
We find Sparling would have disclosed to one of ordinary skill in this
art an oil filter adapter which, as described and illustrated in this reference,
corresponds, as a matter of fact, with the claimed structural elements of the
oil filter adapter specified in claim 4 in the manner pointed out by the
Examiner. Ans. 3-4; see Sparling, e.g., col. 3, l. 66 to col. 5, l. 5, col. 6,
l. 44 to col. 8, l. 57, and Figs. 1, 2, and 4. Sparling’s adapter is threaded for
any “attachment conventionally used in automotive engines” and for
“attachment of any conventional industry standard spin on oil filter.”

1 If the claim preamble, when read in the context of the entire
claim, recites limitations of the claim, or, if the claim preamble
is ‘necessary to give life, meaning, and vitality’ to the claim,
then the claim preamble should be construed as if in the balance
of the claim . . . . If, however, the body of the claim fully and
intrinsically sets forth the complete invention, including all of
its limitations, and the preamble offers no distinct definition of
any of the claimed invention’s limitations, but rather merely
states, for example, the purpose or intended use of the
invention, then the preamble is of no significance to claim
construction because it cannot be said to constitute or explain a
claim limitation.
Pitney Bowes, 182 F.3d at 1305.
5
Appeal 2008-0734
Application 10/829,005
Sparling col. 4, ll. 14-24 and col. 5, ll. 1-5; see also col. 6, ll. 58-61, col. 7,
ll. 53-57, and Fig. 1. Sparling discloses the adapter “could also be
configured to fit any filter by changing the filter end 40 to a configuration to
match the desired filter.” Sparling col. 7, ll. 57-59, and Fig. 1.
Appellant acknowledges in the Specification that a Ford F-350 truck
has a metric externally threaded oil filter attachment nipple and
commercially available filters can have English system internal mounting
threads. Spec 1:17-2:3 and 6:2-3.
We are not persuaded by Appellant’s contentions (App. Br. 7) that the
Examiner’s finding of anticipation of claim 4 under § 102(b) over Sparling
is in error because of the second part of the preamble of this claim in view of
our interpretation thereof and the term “a replacement canister” above. As
we determined above, the difference in O-ring or gasket diameter between a
“standard” canister and any desired “replacement” canisters can be very
small, and Appellant does not argue that the ninth clause of claim 4, defining
annular seat element 46, thus has a specific size limitation when no such
limitation is stated therein. See App. Br. 7. Such limitation is not disclosed
in the Specification. See Spec. 7:4-6 and Fig. 3. Indeed, one skilled in this
art armed with the knowledge in this art would have, as a matter of fact,
found in Sparling the description of an oil filter adapter which can have a
filter end configuration 40 that would accommodate the O-ring or gasket
diameter of any desired “replacement” canister, thus placing this person in
possession of the claimed oil filter adapter encompassed by claim 4. See,
e.g., In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995), and cases cited
therein (“[A] skilled artisan could take [the reference’s] teachings in
6
Appeal 2008-0734
Application 10/829,005
combination with his own knowledge and be in possession of the [claimed
system] device.”); see also, e.g., In re Preda, 401 F.2d 825, 826 (CCPA
1968) (“[I]n considering the disclosure of a reference, it is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.” (citation omitted)).
Dependent claim 7 modifies claim 4 by specifying, in pertinent part,
“annular seat on said filter side . . . has a width sufficiently large enough to
enable replacement oil filter canister O-rings or gaskets of various diameters
to be placed into sealing engagement.” We are of the opinion that
unspecified “various diameters” of O-rings or gaskets of unspecified
“replacement” canisters include very small differences in diameter which
provide little additional size limitation on annular seat 46 than does the
second part of the preamble of claim 4 with respect to the annular seat
limitation in that claim. Thus, we are not convinced by Appellant’s
contentions that this claim patentably distinguishes over Sparling for the
same reasons we set forth with respect to claim 4 above.
Accordingly, the Examiner has established that, prima facie, as a
matter of fact, Sparling describes to and places in possession of one skilled
in the art of oil lubricating systems familiar with the attachment of oil filter
canisters on automotive engines, each and every element of the claimed oil
filter adapter encompassed by claims 4 and 7, arranged as required therein.
See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997), and cases
cited therein (“To anticipate a claim, a prior art reference must disclose
7
Appeal 2008-0734
Application 10/829,005
every limitation of the claimed invention, either explicitly or inherently.”).
Therefore, we affirm this ground of rejection.
Turning now to the separate grounds of rejection of dependent claim 6
under §§ 102(b) and 103(a),2 this claim modifies claim 4 by specifying the
adapter is internally threaded with “SAE” threads and the hollow nipple
thereof is externally threaded with “metric” threads. The “SAE” threads are
unspecified and indeed, undisclosed in the Specification. 3 Thus, we are of
the view that “SAE” threads include any conventional threading, metric or
English system, on the oil filter attachment nipple of any automotive engine.
The external metric threads on the hollow nipple would receive the internal
mounting metric threads of filters.
We find convincing evidence supporting the Examiner’s position with
respect to each ground of rejection (Ans. 4) in Sparling’s description of
appropriate threading to attach the adapter to the desired engine and to the
desired filter canister. Indeed, Appellant acknowledges that a truck engine is
known which requires metric threaded filters. Thus, one skilled in this art
armed with the knowledge in this art would have, as a matter of fact, found
in Sparling the description of an oil filter adapter which can have metric
threads as claimed, thus placing this person in possession of the claimed oil
filter adapter encompassed by claim 6 within the meaning of § 102(b). See,
e.g., Graves, 69 F.3d at 1152, and cases cited therein; see also, e.g., Preda,

2 A rejection of a claim under § 102(b) and alternatively under § 103(a),
constitutes a separate ground of rejection under each statutory provision.
See, e.g., In re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990).
3 The term “SAE” is not used in the Specification and it appears to be the
acronym for the Society of Automotive Engineers.
8
Appeal 2008-0734
Application 10/829,005
401 F.2d at 826. Furthermore, in view of the conventionality of the
threading of Sparling’s oil filter adapter, one of ordinary skill in this art
would have been led by Sparling to design and implement with predictable
success an adapter based on the threading necessary to combine an
automotive engine with a desired oil filter canister, thus arriving at a claimed
oil filter adapter encompassed by claim 6 within the meaning of
§ 103(a). See KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007).
We are not convinced that Appellant has sufficiently rebutted the
prima facie case with respect to either ground of rejection of claim 6 as we
interpreted this claim above. Indeed, Appellant has not established that the
capability to use a “larger capacity replacement oil filter canister” in place of
the “standard” canister for an automotive engine patentably distinguishes the
claimed oil filter adapter encompassed by claim 6 over Sparling with respect
to either ground of rejection.
Accordingly, the Examiner has established that, prima facie, as a
matter of fact, Sparling describes to and places in possession of one skilled
in this art, each and every element of the claimed oil filter adapter
encompassed by claim 6, arranged as required therein under § 102(b), see,
e.g., Schreiber, 128 F.3d at 1477, and cases cited therein; and that the
claimed adapter encompassed by claim 6 would have been prima facie
obvious to one of ordinary skill in this art over Sparling under § 103(a). See
KSR, 127 S. Ct. at 1740. Therefore, we affirm these grounds of rejection.
The plain language of dependent claim 8 modifies the oil filter adapter
of claim 4 by specifying that the adapter must be “of one piece
construction.” Sparling would have disclosed the exploded view of an
9
Appeal 2008-0734
Application 10/829,005
adapter in Fig. 1 as well as a cutaway view of the assembled adapter in Fig.
3. We determine that one of ordinary skill in this art would have been led by
Sparling’s illustrations to design and implement with predictable success a
one piece adapter which can receive gasket 36 and seal 16 (Starling, e.g.,
col. 7, ll. 39-43, col. 8, ll. 32-47, and Figs. 1 and 3), thus arriving at a
claimed oil filter adapter encompassed by claim 6 within the meaning of
§ 103(a). See KSR, 127 S. Ct. at 1740. Appellant’s contentions based on the
one piece construction of the claimed oil filter adapter do not address
whether one of ordinary skill in the art would have been led to a one piece
oil filter adapter by the teachings of Sparling.
Accordingly, the Examiner has established that, prima face, the
claimed adapter encompassed by claim 8 would have been prima facie
obvious to one of ordinary skill in this art over Sparling under § 103(a).
Therefore, we affirm this ground of rejection
The Primary Examiner’s decision is affirmed.

10
Appeal 2008-0734
Application 10/829,005
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).
AFFIRMED

cam

THOMITE LAW OFFICE
2120 S. 72ND STREET, SUITE 1111
OMAHA, NE 68124
11