Ex Parte Nydahl

Patent Trial and Appeal Board

Feb 28, 2017

13261246 (P.T.A.B. Feb. 28, 2017)

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.
13/261,246 03/28/2012 Anders Nydahl AC-193 3643
2529 7590
MARK P. STONE
400 Columbus Avenue
Valhalla, NY 10595
EXAMINER
KELLEY, HEIDI RIVIERE
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
stone92349 @ msn. com
aleitner. stonelaw @msn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDERS NYDAHL
Appeal 2016-000583
Application 13/261,246
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 4, 6—9, 11, and 17—20. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 We cite to the Specification (“Spec.”) filed Mar. 28, 2012, as amended
Sep. 8, 2012; Final Office Action (“Final Act.”) dated Dec. 31, 2014;
Examiner’s Answer (“Ans.”); and Appellant’s Appeal Brief (“App. Br.”)
and Reply Brief (“Reply Br.”).
2 Appellant identifies Atlas Copco Rock Drills AB as the real party in
interest. App. Br. 1.
Appeal 2016-000583
Application 13/261,246
BACKGROUND
The subject matter on appeal relates to a filter and filtration method.
Spec. 1; Claims 1, 8. Claims 1 and 8 are the only independent claims on
appeal, and are reproduced below from the Claims Appendix of the Appeal
Brief, with italics provided to highlight the key recitation in dispute:
Claim 1. A filter for a return line for hydraulic oil to a
hydraulic tank, which filter comprises a filter element, wherein
the filter is arranged to filter the hydraulic oil through the filter
element when the hydraulic oil is below a first oil level in the
filter and, wherein the filter comprises a level based bypass
arrangement for causing the hydraulic oil to bypass the filter
element when the oil level in the filter exceeds the first oil
level, said bypass arrangement comprising an opening defined
at a predetermined position in said filter element at or above
said first oil level, said filter further comprising an arrangement
for equalizing the pressure of air in an air compartment in the
filter for carrying out the level based bypass arrangement
without causing any significant back pressure by leading the
hydraulic oil to bypass the filter element through the opening
therein.
Claim 8. A method for the filtration of hydraulic oil in a
return line with the aid of a filter, wherein filtration of the
hydraulic oil occurs if an oil level in the filter is below a first oil
level, and the hydraulic oil is lead bypasses the filter if the oil
level in the filter exceeds the first oil level, the steps of said
method comprising carrying out a level based bypass
arrangement, without causing any significant backpressure by
equalizing the air pressure in an air compartment in the filter,
and by causing the hydraulic oil to bypass the filter through an
opening in the filter at or above said first oil level.
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Appeal 2016-000583
Application 13/261,246
REJECTIONS3
I. Claims 1 and 6 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Kasten.4
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kasten and Rinaldo.5
III. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kasten, Rinaldo, and Mould.6
IV. Claims 3,4, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kasten and Mould.
V. Claims 7 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Newman7 and Kasten.
VI. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Newman, Kasten, and Mould.
DISCUSSION
Each of Rejections I—VI is premised on the Examiner’s finding that
Kasten describes a hydraulic fluid filter that is operable to perform a filter
bypass without causing significant backpressure due to the presence of an air
breather assembly communicating between the interior of the filter housing
and the atmosphere. See Final Act. 7 (finding that “because atmospheric
3 Final Act. 5—17; Ans. 2—14. A previously applied rejection under
35 U.S.C. § 112 was withdrawn subsequent to issuance of the Final Office
Action. Ans. 14.
4 US 2,707,562, issued April 17, 1952 (“Kasten”).
5 US 3,750,888, issued Aug. 7, 1973 (“Rinaldo”).
6 US 2,998,138, issued Aug. 29, 1961 (“Mould”).
7 US 3,525,404, issued Aug. 25, 1970 (“Newman”).
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Appeal 2016-000583
Application 13/261,246
pressure is maintained by the breather assembly ... it does not cause any
significant back pressure while allowing the level based bypass arrangement
to carry out the bypass function”). Appellant argues that Kasten’s spring-
biased bypass valve would cause significant backpressure prior to opening to
perform a bypass function. App. Br. 4—5.
The relevant aspects of Kasten’s filter are depicted in the sole Figure
of that reference, which we reproduce below:
Kasten’s Figure shows a vertical cross-section of a hydraulic fluid
filter, comprising a cylindrical filtering element 12 within a filter housing
10. Kasten col. 1,11. 41—46. Unfiltered hydraulic fluid enters through inlet
passage 18 to chamber 20, and then through filter element 12 to chamber 30,
from which it is drawn when needed through outlet passage 32. Id. at col. 2,
11. 31—59. An air breather assembly, formed by vents 56 and 58, “is
operative to maintain atmospheric pressure in the unfilled portions of
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Application 13/261,246
chambers 20 and 30.” Id. at col. 2,11. 47—59. A bypass valve 16, biased by
spring 37, serves to permit unfiltered fluid to bypass filter element 12 in the
event that the filter element 12 becomes clogged such that unfiltered fluid in
chamber 20 rises to a level sufficient to compress spring 37 and open bypass
valve 16. Id. at col. 2,11. 60-67.
Appellant argues that Kasten’s filter creates two sources of significant
backpressure associated with a bypass operation.
First, Appellant contends that when Kasten’s filter element is clogged,
air within chamber 20 will not pass through the filter and pressure within
chamber 20 will not be equalized by the breather assembly. App. Br. 5.
This argument is not persuasive. We agree with the Examiner’s finding
(Ans. 17) that because unfiltered fluid enters from the bottom, any clogging
due to fluid contaminants would not affect air flow through the filter element
above the level of fluid in chamber 20. Kasten’s teaching that the bypass
valve is opened by “fluid pressure” exerted on the valve by the hydraulic
fluid, as opposed to any increase of air pressure above the hydraulic fluid, is
consistent with the Examiner’s finding. See Kasten col. 2,11. 60-67.
Second, Appellant contends that any bypass operation in Kasten’s
device creates backpressure because “it is first necessary ... to overcome
the opposed resilient force of the spring 37 to open the bypass valve 16.”
App. Br. 5. In that regard, Kasten teaches that the filter device is assembled
such that the spring 37 exerts an unspecified “predetermined force on the
retainer and by-pass valve 16.” Kasten col. 2,11. 29—30. We agree that the
degree of any backpressure in Kasten’s device just prior to opening the
bypass valve would be governed by the predetermined force selected for the
retaining spring. We find no countervailing evidence or technical reasoning
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Appeal 2016-000583
Application 13/261,246
in the Final Office Action or Answer addressing this particular argument.
Thus, we are persuaded that the Examiner erred in finding that Kasten’s air
breather assembly, alone, is sufficient to satisfy the recitation of “an
arrangement... for carrying out the level based bypass arrangement without
causing any significant back pressure” in claim 1, or the corresponding step
of “carrying out a level based bypass arrangement, without causing any
significant back pressure” recited in claim 8. For that reason, we are
constrained not to sustain any of Rejections I—VI.
New Grounds of Rejection
Claims 1 and 6 are rejected on a new ground under 35 U.S.C. § 103(a)
as unpatentable over Kasten and Appellant’s admission of prior art.
Claim 8 is rejected on a new ground under 35 U.S.C. § 103(a) as
unpatentable over Kasten, Rinaldo, and Appellant’s admission of prior art.
Claim 9 is rejected on a new ground under 35 U.S.C. § 103(a) as
unpatentable over Kasten, Rinaldo, Mould, and Appellant’s admission of
prior art.
Claims 3,4, 11, and 17 are rejected on a new ground under 35 U.S.C.
§ 103(a) as unpatentable over Kasten, Mould, and Appellant’s admission of
prior art.
Claims 7 and 18 are rejected on a new ground under 35 U.S.C.
§ 103(a) as unpatentable over Newman, Kasten, and Appellant’s admission
of prior art.
Claims 19 and 20 are rejected on a new ground under 35 U.S.C.
§ 103(a) as unpatentable over Newman, Kasten, Mould, and Appellant’s
admission of prior art.
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Application 13/261,246
Appellant does not persuasively dispute any of the Examiner’s
findings in connection with Kasten, Rinaldo, Mould, and Newman, other
than the contention, discussed above, that Kasten’s filter device might create
significant backpressure depending upon the selected resilient force of
Kasten’s bypass valve spring. We adopt each of the Examiner’s undisputed
findings regarding these references in support of the new grounds of
rejection.
Concerning Kasten’s spring, Kasten teaches that the housing
components are tightened “to compress all compressible units . . .
[including] the spring 37, to exert a predetermined force on the retainer and
by-pass valve 16.” Kasten col. 2,11. 25—29. Kasten’s predetermined force
dictates the fluid pressure needed to open the bypass valve. Id. at col. 2,11.
60-65. Appellant admits in the Specification that hydraulic components,
and particularly hydraulic pumps, previously were known to be “very
sensitive to back pressure,” such that manufacturers set back pressure limits
to avoid damage. Spec. 1. We find that a preponderance of the evidence of
record supports a finding that one skilled in the art would have had a reason
to select the predetermined force exerted by Kasten’s spring to be less than
that which would cause significant backpressure in Kasten’s hydraulic fluid
line, so as to avoid damage to hydraulic pumps. See Kasten col. 2,11. 31—33
(disclosing that the inlet passage to the filter device “receives unfiltered
pressurized hydraulic fluid from the discharge side of a pump”).
Accordingly, we determine that each of claims 1,3,4, 6—9, 11, and 17—20 is
unpatentable under 35 U.S.C. § 103(a) based on the same prior art and
findings identified by the Examiner in the Final Office Action, along with
the foregoing additional evidence from Appellants’ admitted prior art,
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Application 13/261,246
because one of ordinary skill in the art, armed with the cited prior art, at the
time of the invention would have been led to the claimed subject matter.
CONCLUSION
We do not sustain the Examiner’s rejection of claims 1 and 6 under
35 U.S.C. § 102(b).
We also do not sustain the Examiners rejection of any of claims 3, 4,
7-9, 11, and 17-20 under 35 U.S.C. § 103(a).
We enter new grounds of rejection, rejecting claims 1,3,4, 6—9, 11,
and 17—20 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision is reversed and new grounds of rejection
entered.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
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Application 13/261,246
examiner, in which event the prosecution will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. . . .
REVERSED; 37 C.F.R, $ 41.50(b)
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