Ex Parte Salmisuo et al

Patent Trials and Appeals Board

May 9, 2019

13468086 - (D) (P.T.A.B. May. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/468,086 05/10/2012
22203 7590
KUSNER & JAFFE
Paragon Center II
6150 Parkland Boulevard
Suite 105
Mayfield Heights, OH 44124
05/13/2019
FIRST NAMED INVENTOR
Mauri Salmisuo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ST10482US 5469
EXAMINER
SPAMER, DONALD R
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
05/13/2019 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):
mail@kusnerjaffe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAURI SALMISUO and JANI PETTERSSON
Appeal2018-005553
Application 13/468,086
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 5-11, 14, 15, and 17-24. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART. 2
1 Appellants identify STERIS EUROPE, INC. SUOMEN SIVULIIKE as the
real party in interest (Appeal Br. 3).
2 Our Decision refers to the Specification ("Spec.") filed May 10, 2012, the
Examiner's Final Office Action ("Final Act.") dated June 15, 2017,
Appellants' Appeal Brief ("Appeal Br.") filed December 11, 2017, the
Examiner's Answer ("Ans.") dated April 20, 2018, and Appellants' Reply
Brief ("Reply Br.") filed May 8, 2018.
Appeal2018-005553
Application 13/468,086
STATEMENT OF THE CASE
The invention relates to a device for sterilization of fluids comprising
gases, vapors, and suspended particles. Spec. ,r 1.
Claim 5, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
5. A device for the sterilization of a fluid comprising one or
more of the following: gas, suspended particles and vapors, said
device comprising:
a longitudinal tubular body having an inlet port at a first
end of a heating section of said body and an exit port at a
second end of a filtration section of said body, a flow path
extending through said body being defined between said inlet
port and said exit port, said heating section of said body sharing
a central axis with said filtration section of said body;
a heating element extending from said first end of said
heating section into said heating section of said body, said
heating element extending along a major length of said body;
a plurality of spaced-apart baffles disposed in said
heating section of said body, each of said plurality of baffles
traversing said heating element in a direction generally
perpendicular to a longitudinal axis of said heating element,
each of said plurality of baffles having a free end spaced from
an inner surface of said body, adjacent baffles extending in
opposite directions such that free ends thereof are disposed on
generally opposite sides of said body to define a meandering
channel through said body from the first end of said heating
section to a second end of said heating section wherein fluid
flowing through said meandering channel repeatedly traverses
said heating element as said fluid flows from said first end of
said heating section to said second end of said heating section;
at least one metal filter unit disposed in said filtration
section of said body, said at least one metal filter unit being
seamlessly welded to said body and said at least one metal filter
unit having a pore size of 0.1 µm or less; and
a first temperature sensor disposed at said inlet port of
said body and a second temperature sensor disposed at said exit
port of said body,
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Application 13/468,086
wherein said device is designed to heat said fluid to a
temperature of at least 600 °C.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims:
Philipot US 5,300,098 Apr. 5, 1994
Hunter US 2003/0170151 Al Sept. 11, 2003
Fauret US 2006/0065753 Al Mar. 30, 2006
Larsson US 2010/0086438 Al Apr. 8, 2010
Obermuller WO 95/19216 July 20, 1995
Suni Jha et al., SINTERED METAL HOT GAS FILTERS, 4th Int'l
Symp. Gas Cleaning at High Temperatures, Mott Corp. (1999)
("Jha").
M. C. Jones, THE TEMPERATURE DEPENDENCE OF THE LETHAL
RATE IN STERILIZATION CALCULATIONS, J. Fd Tech. 3, 31-38
(1968) ("Jones").
Sports Whirlpools, S SERIES 85 GALLON STATIONARY
WHIRLPOOL S-85-S (2008) ("Sports Whirlpools").
REJECTIONS
The Examiner maintains, and Appellants appeal from, the following
grounds of rejection under 35 U.S.C. § I03(a):
1. Claims 5-7 and 11 as unpatentable over Obermuller in view of
Jha, Hunter, Fauret, Larsson, Jones, and Sports Whirlpools;
2. Claims 8-10, 14, and 15 as unpatentable over Obermuller in
view of Jha, Hunter, Jones, Philipot, and Sports Whirlpools;
3. Claims 1 7 and 18 as unpatentab le over Obermuller in view of
Jha, Hunter, Jones, and Sports Whirlpools; and
4. Claims 19-24 as unpatentable over Obermuller in view of Jha,
Hunter, Jones, and Sports Whirlpools, and further in view of Fauret.
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Application 13/468,086
ANALYSIS
Rejection 1: Obviousness of claims 5-7 and 11
The Examiner finds that Obermuller teaches a device for sterilizing a
fluid comprising a gas, suspended particles, and vapors, the device
comprising, in relevant part, a longitudinal tubular body corresponding to
the housing of heating section 14 from just above blower 14.1 and filtration
section corresponding to filter housing 1 including supply air chamber 1.1
and clean air chamber 1.2. Final Act. 4. According to the Examiner, the
heating section and the filtration section share a central axis corresponding
to a horizontal axis across Figure 1, going through the center portion of each
section. Id.
Appellants argue, among other things, that the central axis as defined
by the Examiner extends out of Obermuller' s body, but the ordinary artisan
would not interpret Obermuller' s left half, the filtration section, as sharing a
central axis with the right half, the heating section. Appeal Br. 1 7. We
agree. In re Baker Hughes Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (the
PTO cannot adopt a construction that is "beyond that which was reasonable
in light of the totality of the written description"). Here, claim 5 recites a
longitudinal tubular body. Within this context, the ordinary artisan would
reasonably interpret a central axis that is shared by heating and filtration
sections of the body as the central axis of the longitudinal tubular body.
While many axes may be arbitrarily defined within Obermuller' s structure,
defining a central axis of the heating and filtration sections of a longitudinal
tubular body as extending horizontally between the two sections is
unreasonable within the context of claim 5.
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Application 13/468,086
Appellants further argue that Obermuller' s heating element 14.4 does
not extend from the opening to the blower 14.1 into the heating section as
required by claim 5. Appeal Br. 16-17. We agree. Obermiiller's heating
element 14.4 extends from a position intermediate the heating section, rather
than from the first end of the heating section.
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
Because the Examiner's obviousness rejection of claim 5 relies on each of
these erroneous findings, we cannot say that the Examiner has presented a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. ").
Accordingly, we do not sustain the Examiner's obviousness rejection
of independent claim 5 or of dependent claims 6, 7, and 11.
Rejection 2: Obviousness of claims 8-10, 14, and 15
Independent claim 8 is reproduced below from the Claims Appendix
to the Appeal Brief.
8. A system for sterilizing a fluid comprising one or more of
the following: gas, suspended particles and vapors, said system
including:
a body having an inlet port at a first end of said body, an
exit port at a second end of said body and an opening extending
between said inlet port and said outlet port and defining a path
extending through said body through which a first stream of
filtered ambient air and a second stream of said fluid
respectively flow;
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Application 13/468,086
a heating element extending into said first end of said
body to define a heating section of said body that extends along
a major length of said body;
a plurality of spaced-apart baffles disposed in said
heating section of said body, each of said plurality of baffles
traversing said heating element in a direction generally
perpendicular to a longitudinal axis of said heating element,
each of said plurality of baffles extending partially across said
opening of said body to define a gap between an end of said
baffle and an inner surface of said body, adjacent baffles
extending in opposite directions such that gaps defined by
adjacent baffles are disposed on generally opposite sides of said
body to define a meandering channel through said body from a
first end of said heating section to a second end of said heating
section, wherein said first and second streams respectively flow
through said meandering channel from said first end of said
heating section to said second end of said heating section, said
first and second streams repeatedly traversing said heating
element in said meandering channel until exiting said
meandering channel at said second end of said heating element;
at least one metal filter unit disposed in said second end
of said body to define a filtration section of said body, said at
least one metal filter unit being configured to receive said first
and second flows respectively from said heating element, said
at least one metal filter unit being seamlessly welded to said
body and said at least one metal filter unit having a pore size of
0.1 µm or less;
an inlet conduit having a first end and a second end, said
first inlet conduit end being connected to said inlet port of said
body to respectively supply said first and second streams to said
inlet port, said second inlet conduit end being directly
connected to a supply of said first stream, the inlet conduit
comprising a first valve at said second inlet conduit end, said
first valve being configured to control said supply of said first
stream to said inlet conduit and close when said at least one
metal filter unit reaches a temperature greater than or equal to a
predetermined operating temperature to inhibit said first stream
from passing through said inlet conduit to said body; and
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a source conduit having a first end and a second end, the
second source conduit end being connected to a source chamber
that is configured to supply said second stream to said source
conduit, the first source conduit end being connected to a
portion of said inlet conduit located between the first inlet
conduit end and the second inlet conduit end, the source conduit
having a second valve between the first and second source
conduit ends, the second valve being configured to control a
supply of said second stream to said inlet conduit and open
when said at least one metal filter unit reaches said temperature
greater than or equal to said predetermined operating
temperature to allow said second stream to pass through said
inlet conduit and be supplied to said body.
The Examiner rejects claims 8-10, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Obermuller in view of Jha, Hunter, Jones,
Philipot, and Sports Whirlpools. Without repetition, we adopt the
Examiner's findings and articulated reasoning in support of the conclusion
of obviousness as our own. See generally, Final Act. 7-11. Appellants
argue the claims in this rejection as a group. We select claim 8 to address
Appellants' arguments consistent with 37 C.F.R. § 4I.37(c)(l)(iv).
Dependent claims 9, 10, 14, and 15 stand or fall with claim 8.
Appellants urge that "the claimed heating section is defined by the
claimed heating element," and extends along a major length of the body.
Appeal Br. 24. In contrast, Appellants argue that Obermuller' s "heating
element 14.4 takes up a very limited length of the body----certainly less than
20%." Id. at 25.
This argument is not persuasive of reversible error in the Examiner's
obviousness rejection of claim 8. Appellants appear to confuse the recitation
of claim 8 that the heating element defines a heating section of the body
"that extends along a major length of said body" with a requirement that the
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heating section defined by the heating element that extends a major length of
the body. In the latter instance, the heating section would have to extend a
major length of the body or a significant percentage of the body's major
length. However, in the former instance as claimed, the heating section need
only extend along, or in the same direction as, the body's major length even
a minor percentage. We also note that claim 8 does not recite how the
heating element defines the heating section. The presence of Obermuller' s
heating element 14 in the tubular section on the left side of Figure 1 defines
that section as the heating section. This heating section extends along, or in
the same direction as, a major length of the body. Therefore, we are not
persuaded of reversible error in the Examiner's finding that Obermuller's
heating element defines a heating section that extends along a major length
of the body.
Appellants next argue that Obermuller' s principle of operation is
directed to filtering without heating, followed by heat sterilization of the
filters for safe exchange. Appeal Br. 25. Appellants contend, as a result,
that Obermuller is concerned with the reuse of removable filters cells and
teaches away from the use of metal filters that are seamlessly welded to the
body. Id. at 26. Appellants argue that there is no motivation to modify
Obermuller with the teachings of Jha and Sports Whirlpools to seamlessly
weld metal filters to the body. Id. According to Appellants, seamlessly
welding metal filters would prevent Obermuller from being operable to
allow removal of the filter cells for reuse. Id. at 26-27. As such, Appellants
contend that Obermuller teaches away from such a combination. Id.
We disagree. We note that Appellants fail to direct our attention to
any teaching in Obermuller that criticizes, discredits, or otherwise
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discourages use of metal filter units or filter units that are welded to the
body, nor do we find any. "A reference does not teach away, however, if it
merely expresses a general preference for an alternative invention but does
not 'criticize, discredit, or otherwise discourage' investigation into the
invention claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)).
In addition, we note that Appellants' argument focuses on
Obermuller's intended use for the sterilization system, whereas the
Examiner finds that Obermuller' s system is capable of being used to sterilize
a fluid stream containing suspended particles. The Examiner finds Jha
teaches a sintered metal filter that can be welded to metal hardware to form
strong seals and has the benefits of strength, toughness and pressure
capability, corrosion resistance, cleanability, and long service life. Final
Act. 8. Moreover, the Examiner finds Sports Whirlpools teaches seamless
welding of two pieces to minimize bacterial buildup. Id. at 10. Appellants
do not dispute these findings.
The Examiner concludes that it would have been obvious to use
sintered metal filters for the benefits Jha teaches and to seamlessly weld
these filters to Obermuller' s body to minimize bacterial buildup. Id.
Accordingly, the Examiner provides articulated reasoning in the rejection
based on sufficient factual underpinning found in the prior art for the
combination. That the use of seamlessly welded metal filters would at least
render replacement more difficult in itself is not a sufficient reason to
conclude otherwise. Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the
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Application 13/468,086
expense of another benefit ... should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.").
Accordingly, we sustain the Examiner's obviousness rejection of
claims 8-10, 14, and 15.
Rejections 3 and 4: Obviousness of claims 17-24
Independent claim 1 7 is reproduced below from the Claims Appendix
to the Appeal Brief.
1 7. A device for the sterilization of a fluid comprising gas,
suspended particles and possibly vapors, said device
compnsmg
a body having an inlet port and an exit port;
a heating section disposed in said body, said heating
section having a space for conveying the fluid in intimate
contact with heated surfaces, said space provided with baffles
forming a meandering channel; and
a metal filter unit disposed in said body, the filter unit
being seamlessly welded to the body downstream from said
heating section, said filter unit having a pore size of 0.1 µm or
less,
wherein said heating section is configured to heat the
filter unit to at least 400 °C.
The Examiner rejects claims 17 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Obermuller in view of Jha, Hunter, Jones, and Sports
Whirlpools, and rejects 19-24 as unpatentable adding Fauret. Without
repetition, we adopt the Examiner's findings and articulated reasoning in
support of the conclusion of obviousness as our own. See generally, Final
Act. 11-15. Appellants argue the claims in these rejections as a group. We
select claim 17 to address Appellants' arguments consistent with 37 C.F.R.
§ 4I.37(c)(l)(iv). Dependent claims 18-24 stand or fall with claim 17.
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Appellants again argue that Obermuller' s principle of operation is
directed to filtering without heating, followed by heat sterilization of the
filters for safe exchange. Appeal Br. 32-33. Appellants contend, as a result,
that Obermuller is concerned with the reuse of removable filters cells and
teaches away from the use of metal filters that are seamlessly welded to the
body. Id. at 33. Appellants argue that there is no motivation to modify
Obermuller with the teachings of Jha and Sports Whirlpools to seamlessly
weld metal filters to the body. Id. at 33-34. According to Appellants,
seamlessly welding metal filters would prevent Obermuller from being
operable to allow removal of the filter cells for reuse. Id. at 34. As such,
Appellants contend that Obermuller teaches away from such a combination.
Id.
We disagree. We note that Appellants fail to direct our attention to
any teaching in Obermuller that criticizes, discredits, or otherwise
discourages use of metal filter units or filter units that are welded to the
body, nor do we find any. "A reference does not teach away, however, if it
merely expresses a general preference for an alternative invention but does
not 'criticize, discredit, or otherwise discourage' investigation into the
invention claimed." DePuy Spine, 567 F.3d at 1327.
In addition, we note that Appellants' argument focuses on
Obermuller's intended use for the sterilization system, whereas the
Examiner finds that Obermuller's system is capable of being used to sterilize
a fluid stream containing suspended particles. The Examiner finds Jha
teaches a sintered metal filter that can be welded to metal hardware to form
strong seals and have the benefits of strength, toughness and pressure
capability, corrosion resistance, cleanability, and long service life. Final
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Act. 8. Moreover, the Examiner finds Sports Whirlpools teaches seamless
welding of two pieces to minimize bacterial buildup. Id. at 10. Appellants
do not dispute these findings.
The Examiner concludes that it would have been obvious to use
sintered metal filters for the benefits Jha teaches and to seamlessly weld
these filters to Obermuller' s body to minimize bacterial buildup. Id.
Accordingly, the Examiner provides articulated reasoning in the rejection
based on sufficient factual underpinning found in the prior art for the
combination. Appellants' unsupported argument that the use of seamlessly
welded metal filters might render filter replacement more difficult in
Obermiiller's device in itself is not a sufficient reason to refute the
Examiner's obviousness determination. Winner, 202 F.3d at 1349 n.8.
Accordingly, we sustain the Examiner's obviousness rejection of
claims 17-24.
DECISION
For the reasons given above and in the Appeal and Reply Briefs, the
decision of the Examiner rejecting claims 5-7 and 11 is reversed.
However, upon consideration of the record, for the reasons given
above and in the Final Office Action and Answer, the decision of the
Examiner rejecting claims 8-10, 14, 15, and 17-24 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)(l).
AFFIRMED-IN-PART
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