Ex Parte Muter

Patent Trial and Appeal Board

Sep 17, 2013

11273610 (P.T.A.B. Sep. 17, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/273,610 11/14/2005 John Muter 8521-000031 3145
27572 7590 09/18/2013
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
SHUMATE, ANTHONY R
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
09/18/2013 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 JOHN MUTER
____________

Appeal 2012-006288
Application 11/273,610
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
GEORGE C. BEST, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006288
Application 11/273,610

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-27. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.

Appellant claims a filtering apparatus comprising channels 26, 28
facing one another with a porous filtering medium 30 therebetween to
thereby form passages each having an inlet and outlet, wherein the filtering
medium has edges terminating at the inlet and outlet ends of the channels so
that the filtering medium does not block the inlet or outlet ends and the inlet
and outlet ends are open, and wherein the inlets and outlets of the passages
are each provided with a non-blocking flow restrictor (e.g., a tapered
passage) causing a pressure differential across the filtering medium so that
fluid flows from one channel through the filtering medium into another
channel while also permitting some fluid flow along the channels even if the
filtering medium becomes blocked (independent claims 12, 22, and 27; see
also remaining independent claims 1 and 20; Figs. 1-5).
A copy of representative independent claims 12, 22, and 27, taken
from the Claims Appendix of the Appeal Brief, appears below.
12. A filter apparatus comprising:
first and second sheets formed into a plurality of
longitudinally extending tapered channels having opposite inlet
and outlet ends, said channels alternating between narrowing
and broadening along respective lengths thereof between said
inlet and outlet ends;
said first and second sheets being stacked one above the
other with said inlet and outlet ends corresponding, and a sheet
of porous filtering medium interspersed therebetween to define
a stacked set, the filtering medium having edges terminating at
the inlet and outlet ends of the channels so that the filter
Appeal 2012-006288
Application 11/273,610

3
medium does not block the inlet or outlet ends, the inlet and
outlet ends being open;
a longitudinally extending housing extending around said
stacked set defining a fluid conduit extending between said inlet
and outlet ends; and
wherein said inlet and outlet ends in the first and second
sheets are not completely blocked by filtering media so as to
permit flow directly along said channels if said filtering media
becomes blocked.

22. A filtering apparatus comprising:
a first sheet formed into a first plurality of longitudinally
extending channels;
a second sheet formed into a second plurality of
longitudinally extending channels;
a filter medium disposed between said first and second
sheets and cooperating with said first and second pluralities of
longitudinally extending channels to form first and second
pluralities of passages; and
non-blocking flow restrictors disposed at inlets of said
first plurality of passages and outlets of said second plurality of
passages, said non-blocking flow restrictors providing a
pressure differential across said filter medium in response to a
pressurized fluid being introduced to said first and second
pluralities of passages,
wherein said first and second pluralities of longitudinally
extending channels include longitudinally extending openings
facing each other to allow said pressure differential to force at
least a portion of said pressurized fluid to communicate
between said first and second pluralities of longitudinally
extending channels through said longitudinally extending
openings; and
the filtering medium having edges terminating at the
inlets and outlets of the passages so that the filter medium does
not block the inlets or outlets, the inlets and outlets being open.
Appeal 2012-006288
Application 11/273,610

4

27. A filtering apparatus for exhaust from diesel engines,
said filtering apparatus comprising:
a first metal foil sheet having a plurality of longitudinally
extending tapered channels formed therein, each channel having
opposite inlet and outlet ends, said channels being alternately
tapering along respective lengths thereof between said inlet and
outlet ends;
a second metal foil sheet having a plurality of
longitudinally extending tapered channels formed therein, each
channel having opposite inlet and outlet ends, said channels
being alternately tapering along respective lengths thereof
between said inlet and outlet ends;
said first and second sheets being stacked one above the
other such that a broadened inlet of one channel in one sheet is
next to a narrower inlet of an adjacent sheet;
a sheet of porous filtering medium being interspersed
between the first and second sheets, the filtering medium
having edges terminating at the inlet and outlet ends of the
sheets so that the filter medium does not block the inlet or
outlets ends ,the inlet and outlet ends being open;
the tapered channels causing a pressure differential
across the filtering medium in response to diesel exhaust being
presented to the inlets of the channels, the diesel exhaust
flowing from the channels of one sheet through the filter
medium into channels of an adjacent sheet while also
permitting some fluid flow directly along the channels in the
first and second sheets wherein the diesel exhaust is permitted
to flow directly along said channels if the filtering medium
becomes blocked;
said metal foil sheets and filtering medium being wound
in a spiral; and
a housing extending around the spiral defining a fluid
conduit extending between said inlet and outlet ends.
Appeal 2012-006288
Application 11/273,610

5
The Examiner rejects independent claim 22 under 35 U.S.C. § 102(b)
as anticipated by Elbers (US 4,537,812 issued Aug. 27, 1985) (Ans. 5-7).

Appellant argues "Elbers fails to disclose at least the limitation of the
filtering medium having edges terminating at the inlets and outlets of the
passages so that the filter medium does not block the inlets or outlets, the
inlets and outlets being open as claim 22 recites" (App. Br. 36).
Appellant's argument is persuasive for the reasons detailed in the
Appeal Brief (id. at 36-38). The Examiner's unembellished response that
claim 22 does not recite this limitation (Ans. 53-54) is clearly erroneous.
For this reason, we will not sustain the Examiner's § 102 rejection of
independent claim 22. For this same reason, we also will not sustain the
Examiner's corresponding § 102 and § 103 rejections of claims 23-26 which
depend from claim 22.

Under 35 U.S.C. § 103(a), the Examiner rejects independent claims 1,
12, and 20 as unpatentable over Elbers in view of Fanselow
(US 6,273,938 B1 issued Aug. 14, 2001) and Dullien (US 6,063,165 issued
May 16, 2000) and rejects dependent claims 2-11, 13-19, and 21 as
unpatentable over these references alone or in combination with other prior
art.
The Examiner concludes that it would have been obvious to replace
the continuous filter medium of Elbers with discontinuous filter media 430
of Fanselow so that Elbers' channel inlets and outlets are not blocked with
filter media, thereby achieving the benefit of a pressure drop which remains
at a constantly low-level as taught by Dullien (Ans. 7-16).
Appeal 2012-006288
Application 11/273,610

6
As correctly indicated by Appellant, layers 430 of Fanselow serve to
minimize nesting of the tortuous channel layers 405 which constitute the
filter medium of the Fanselow filter (App. Br. 26). There may be some fluid
flow through layers 430 if constructed of porous material (e.g., filter
medium) rather than non-porous material (e.g., film or paper) (Fanselow
para. bridging col. 5-6). However, the Examiner does not identify any
teaching in Fanselow that layers 430 perform a filtering function. As
Appellant again correctly indicates (App. Br. 26), the majority of filtering or
adsorption in Fanselow occurs by lateral diffusion during fluid flow along
the tortuous channels rather than via passage of the fluid through the filter
medium of the channel layers (Fanselow col. 4, ll. 45-55).
We agree with Appellant that the filtering operations used by
Fanselow and Dullien are entirely different from the filtering mechanism of
the claimed apparatus (App. Br. 27). Similarly, the Fanselow and Dullien
filtering operations are entirely different from the filtering mechanism of
Elbers. For these reasons, we do not share the Examiner's conclusion that it
would have been prima facie obvious to replace Elbers' continuous filter
medium with Fanselow's discontinuous filter media 430 based upon a
reasonable expectation of success. Only Appellant's own Specification
disclosure would have suggested such a replacement with a reasonable
expectation of success.1

1 With respect to this and other rejections on appeal, the Examiner
repeatedly responds to Appellant's arguments by quoting the argument
language, stating that the quoted language is not recited in the argued claim,
and dismissing the argument as not commensurate in scope with the claim
(see, e.g., Ans. 41-42). Such a response has no value whatsoever in
assessing whether an argument possesses convincing merit. Similarly, the
Appeal 2012-006288
Application 11/273,610

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It follows that we will not sustain the Examiner's § 103 rejection of
independent claims 1, 12, and 20 as unpatentable over Elbers, Fanselow, and
Dullien or the corresponding rejections of dependent claims 2-11, 13-19, and
21 as unpatentable over these references alone or in combination with other
prior art.2

The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Fanselow in view of Barany (US 3,293,833 issued Dec.
27, 1966).
The Examiner concludes that it would have been obvious to substitute
the tortuous channels of Fanselow with the tapered channels of Barany
"because the substitution of one type of channel shape for another that are
both used for the same purpose (i.e. filtering) would be well within the scope
of the skilled artisan" (Ans. 24).
Appellant argues that "[t]o modify Fanselow as suggested by the
Examiner would destroy the intended function and mode of operation of
Fanselow" (App. Br. 32). We find convincing merit in this argument. As
explained earlier, the filtering operation of Fanselow relies on a tortuous

Examiner repeatedly dismisses Appellant's discussion of applied prior art as
"not a substitute for evidence" (see, e.g., id. at 44). By so dismissing
Appellant's prior art discussion, the Examiner provides no insight at all as to
whether the discussion reveals deficiencies in the rejection under
consideration.
2 With respect to this and other rejections on appeal, the Examiner contends
that certain claim recitations are merely statements of intended use (see, e.g.,
Ans. 14). The Examiner's contention is without merit. The recitations in
question define structure and the function performed thereby, both of which
must be taught or suggested by the prior art in order to establish
obviousness.
Appeal 2012-006288
Application 11/273,610

8
channel shape. The Examiner has provided this record with no support for
the proposition that the non-tortuous, tapered channel shape of Barany
would be capable of performing the type of filtering operation taught by
Fanselow.
We will not sustain, therefore, the Examiner's § 103 rejection of claim
12 as unpatentable over Fanselow and Barany.

The Examiner rejects claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Ban (US 5,908,480 issued June 1, 1999) in view of
Barany.
The propriety of this rejection depends on the Examiner's finding that
the channels and filtering medium of Ban are constructed and arranged so as
to perform the claim 27 function of "permitting some fluid flow directly
along the channels in the first and second sheets wherein the diesel exhaust
is permitted to flow directly along said channels if the filtering medium
becomes blocked" (claim 27) (Ans. 33-34).
Appellant correctly explains that the Ban filter is not capable of
performing this claimed function because Ban uses closure members to close
the ends of the filter element (App. Br. 17-18 (citing Ban col. 6, l. 7 et seq.
and Figs. 2-2C)). The Examiner's opposing view in response to this
argument (Ans. 38-39) is contrary to the unambiguous teachings of Ban.
As a consequence, we also will not sustain the Examiner's § 103
rejection of claim 27 as unpatentable over Ban in view of Barany.

The decision of the Examiner is reversed.

Appeal 2012-006288
Application 11/273,610

9
REVERSED
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