Ex Parte Schoepp et al

Patent Trial and Appeal Board

Jul 30, 2018

13811192 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/811,192 04/04/2013
10291 7590 08/01/2018
FISHMAN STEW ART PLLC
39533 WOODWARD A VENUE
SUITE 140
BLOOMFIELD HILLS, MI 48304-0610
FIRST NAMED INVENTOR
Wilhelm Schoepp
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.
66814-0230 7249
EXAMINER
GORDON II, BRADLEY R
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
docketing@fishstewip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILHELM SCHOEPP and REINHARD WIERLING
Appeal2017-008096
Application 13/811, 192
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-3 and 5-8, and 11-21 of
Application 13/811,192 under 35 U.S.C. §§ l 12(b) and/or 103(a). Final Act.
(July 14, 2016) 2-9. Appellants 1 seek reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(a).
For the reasons set forth below, we AFFIRM.
1 Mahle International GmbH is identified as the real party in interest.
Appeal Br. 3.
Appeal2017-008096
Application 13/811, 192
BACKGROUND
The present application generally relates to a hydraulic filter element.
The filter element includes a cylindrical sleeve around its exterior. Spec. ,r
8. The sleeve is permeable to the hydraulic medium and bears against the
filter body under radial prestress. Id. This sleeve serves to prestress (press)
the filter material against the inner frame of the filter element. The sleeve
additionally can act as a prefilter or coarse dirt filter which reduces damage
to the filter from impurities. Id.
Claim 1 is illustrative and is reproduced below:
1. A hydraulic filter element, comprising:
a cylindrical filter body having a filter material folded in
a star-shaped manner,
a cylindrical inner frame radially supported on an inside
of the filter body,
a cylindrical sleeve being permeable to a respective
hydraulic medium and arranged radially against the outside of
the filter body under prestress,
wherein the sleeve includes a knitted textile material; and
wherein the textile material has a structure having warp
fibres that run axially in the sleeve and not in a circumferential
direction, and woof fibres that extend in the circumferential
direction in the sleeve and not axially.
Appeal Br. 23 (Claims App.).
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Application 13/811, 192
REJECTIONS
The Examiner maintains the following rejections:
1. Claim 1-3, 5-8, and 11-21 are rejected under 35 U.S.C. § 112(b)
for failure to point out and distinctly claim the subject matter
which the applicant regards as the invention. Final Act. 2--4.
2. Claims 1-3, 5-8, and 11-21 are rejected under 35 U.S.C. § 103(a)
as obvious over Oschinsky et al. 2 in view of Billiet et al. 3 Id. at 4--
7.
3. Claims 6, 7, 12, 20, and 21 are rejected under 35 U.S.C. § 103(a)
as obvious over Oschinsky in view of Billiet, Hamilton, 4 and
Shepherd. 5 Id. at 8-9.
DISCUSSION
Rejection 1. The Examiner rejected claims 1-3, 5-8, and 11-21 for
indefiniteness. The Examiner rests this rejection on two bases.
First, the Examiner determined that the claims were indefinite because
each rejected claim requires "warp fibers and woof fibers running in
mutually exclusive directions: axial and circumferential. However,
determining which fibers are the warp fibers and which are the woof fibers is
not possible as both sets of fibers are indistinguishable." Final Act. 2.
2 DE 10 2009 005 980 Al, published July 29, 2010 ("Oschinsky")
(references to translation).
3 US 4,838,905, issued June 13, 1989 ("Billiet").
4 US 5,645,924, issued July 8, 1997 ("Hamilton")
5 US 2004/0099016 Al, published May 27, 2004 ("Shepherd")
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Application 13/811, 192
In the Answer, the Examiner explained the rejection in greater detail
as follows:
Examiner wishes to point out that fabrics are constructed
using a machine with a "machine direction"; and this machine
direction is what determines whether a fiber is classified as warp
or woof. See, e.g., US 3,538,564, col. 3, 11. 10-23. However,
once a fabric is removed from a machine, it is not possible to
identify warp fibers from woof fibers without either: (A) direct
knowledge and accurate recollection of the orientation of the
fabric relative to the machine direction; or (B) a readily
identifiable distinction between the fibers ( e.g., color, thickness,
material, etc.). See, e.g., US 5,390, 708, col. 3, 11. 8-13 (which
avoids using the terms "warp" and "weft" in order to eliminate
confusion). It should be noted that the Specification discloses
that the fibers used for warp and woof are interchangeable. See
,r,r 0014, 0015, and 0049: for "vice versa". In addition, no
machine direction is disclosed in Appellant's Specification or
Drawings. Rather, the fibers are merely labelled as warp and
woof. See, e.g., FIG. 4. Compare id. with the illustration shown
in§ 1.1.1 supra. Therefore, Appellant's designations of warp and
woof appear to be arbitrary: since the warp and woof fibers can
be interchanged.
Answer 10.
During prosecution, a claim is examined for compliance with 35
U.S.C. § 112(b) by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting MPEP § 2173.02). A claim should be rejected as
indefinite when it is amenable to two or more plausible claim constructions.
Ex Parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211 (BP AI 2008); In re Packard,
751 F.3d 1307, 1324 (Fed. Cir. 2014) ("There are good reasons why
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Application 13/811, 192
unnecessary incoherence and ambiguity in claim constructions should be
disapproved").
Here, claim 1 (and claims 2, 3, 5-8, and 11-15 which depend
therefrom) require that the warp fibres "run axially" and the woof fibers
"extend in the circumferential direction in the sleeve and not axially."
Appeal Br. 23-25 (Claims App.). Similarly, claims 16 (and dependent
claims 1 7-21) require "warp fibres that extend coaxially" and "woof fibres
that extend in a circumferential direction in the sleeve and not axially."
Appeal Br. 25-26 (Claims App.). Thus, in the context of the claims, the two
terms ("warp fibres" and "woof fibres") are distinct and meet threshold
requirements of clarity and precision.
As a second basis for finding claims 1-3, 5-8, and 11-15 to be
indefinite, the Examiner determined that the limitation "wherein the sleeve
includes a knitted textile material" is inconsistent with the limitation
requiring that "the textile material has a structure having warp fibres that run
axially in the sleeve and not in a circumferential direction, and woof fibres
that extend in the circumferential direction in the sleeve and not axially." 6
Final Act. 3--4; Answer 12.
The Examiner construes the term "knitted" as requiring loops in the
textile material. Final Act. 3. Such construction is supported by citation to
6 In the Answer, the Examiner indicated that "[t]he rejection of claim 16
under Ground of Rejection No. 2, supra, is withdrawn: since this claim does
not recite the word 'knitted."' Answer 9. We construe this withdrawal to be
applicable to claims 1 7-21 which depend from claim 16 and also lack the
"knitted" limitation. In the alternative, we determine such basis of rejection
to be in error as to claims 17-21 for the reasons set forth in Appellants'
Brief.
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Application 13/811, 192
extrinsic evidence bearing upon the plain meaning of "knitted." Id. The
Examiner further determines that "knitted material cannot have the claimed
configuration as the loops of a knitted textile material ( shaped as a
cylindrical sleeve) will run in both axial and circumferential directions." Id.
Appellants contend that the Examiner is in error because the
Specification makes reference to "circular knitting. Appeal Br. 11. In this
regard, the Specification teaches that "[a] configuration of the sleeve as a
hose can be realised for example by circular knitting or circular weaving of
the textile material." Spec. ,r 22. This teaching, however, is not explicitly
contrary to the Examiner's finding and does not show error.
In view of the foregoing, we sustain the§ 112 rejection as applied to
claims 1-3, 5-8, and 11-15. We do not sustain the§ 112 rejection as
applied to claims 16-21.
Rejection 2. The Examiner additionally rejected claims 1-3, 5-8, and
11-21 as obvious over Oschinsky in view of Billiet. Final Act. 4--7.
Appellants initially present argument for the patentability of claims 1, 5, and
6, considered as a group, followed by argument regarding claims 16, 19, 20,
and 21.
Claims 1, 5, and 6
Appellants argue that claims 1, 5, and 6 were rejected in error.
Appeal Br. 11-14. Appellants indicate that they had intended to amend
claim 1 so as to incorporate the limitations of claims 5 and 6; accordingly,
Appellants treat such claims as though amended. As Appellants' proposed
amendment was not entered, we treat such claims as presently drafted. We
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note, however, that claim 6 depends from claim 5 which depends, in tum,
from claim 1. Accordingly, claim 6 includes all limitations presently at
lSSUe.
Claim 5 provides as follows:
The hydraulic filter element according to claim 1, wherein the
textile material is elastically extended in the circumferential
direction, and further wherein this circumferential extension
produces the prestress.
Claim 6 further requires as follows:
The hydraulic filter element according to claim 5, wherein the
textile material forming the sleeve has greater elastic
extensibility in the circumferential direction than in the axial
direction, and further wherein the textile material has an elastic
extensibility of at least approximately 20% in the
circumferential direction and an elastic extensibility of no more
than approximately 10% in the axial direction.
Appeal Br. 23-24 (Claims App.).
In support of the rejection of these claims, the Examiner found that
Oschinsky teaches shrinkable sleeve 11 (Oschinsky and the pending
Application share Figures 1-3). Final Act. 4. The Examiner additionally
found that Billiet teaches a sleeve that is a "tubular-woven fabric jacket that
has been heat-shrunk onto the outer surface of the filter material - either to
compress the filter material or to hold the filter material in a pre-compressed
state." Id. at 5. The Examiner further determined that "the weft fibers can
extend circumferentially around the jacket and are capable of greater
shrinkage than the warp fibers, which run longitudinally (i.e. axially).
Accordingly, the concept of producing prestress via a circumferential
extension ( of pre-shrunk weft fibers) wherein said prestress causes the filter
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material to bear against an inner frame is considered to be within the
teaching of Billiet." Id. (internal citations omitted). The Examiner
additionally determined that specific extensibility values "are based upon the
selection of material for the fibers. And the general concept of such
selection is taught by Billiet." Id. at 6-7. The Examiner further compared
the textile materials taught by Billiet and the Specification and determined
that "since Billiet's fibers appear to be comprised of the same materials used
by Applicant, the as-claimed extensibility values are inherent." Id. at 7.
The Examiner additionally found that Billiet teaches weft yams
(extending circumferentially) that are capable of shrinking by up to 30%.
Answer 13; Billiet 2:55-57. The Examiner further finds that "[t]he
shrinkage explicitly defines the elastic extensibility: since shrinking a weft
(i.e., woof) fiber by 30% would imply to PHOSITA that said fiber can be
extended close to its original length." Answer 13.
Appellants argue that the references do not teach the 20% elastic
extensibility of claim 6. Appeal Br. 12. Appellants argue that Oschinsky
teaches "an embodiment in which the shrink material in the axial direction to
less than 1 % shrinkage, while it shrinks at the same time in the
circumferential direction by at least 3 to 15%." Oschinsky ,r 24. Thus,
Appellants argue, Oschinsky does not teach a circumferential elastic
extensibility of at least approximately 20%. Appeal Br. 12. Rather,
Appellants argue, Oschinsky teaches away from such extensibility. Id.;
Reply 6. Appellants further argue that the Examiner may not look to the
Specification to establish obviousness. Id. at 13; Reply 5.
As noted above, the Examiner determined that Billiet teaches 30%
extensibility. Answer 13. Appellants do not contest this finding apart from
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Application 13/811, 192
a bare denial. Reply Br. 6. Similarly, the Examiner determined that Billiet
teaches an embodiment with "substantially zero shrinkage longitudinally."
Id. at 13; Billiet, 2:54. Accordingly, the Examiner has made a prima facie
case of obviousness.
Appellants further argue that the Examiner's reliance on the
Specification to show the properties of the fibers taught by Billiet is
improper. Appeal Br. 13. The Examiner cites to the Specification to show
that certain properties are inherent to certain textiles. Final Act. 7. In
evaluating inherency, the Examiner may look to the Specification to
determine if a property is inherent to a material or structure. See In re Huai-
Hung Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) ("Substantial evidence
supports the Board's finding, based upon the specification, which confirms
that the claimed 'food effect' is an inherent property of oxymorphone
itself'); see also In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009).
Accordingly, Appellants have not shown error in this regard.
Nor does Oschinsky teach away from a circumferential extensibility
of greater than about 20%. "[M]ere disclosure of alternative designs does
not teach away." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). "A
reference does not teach away ... 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).
Rather, teaching away requires "clear discouragement" from implementing a
technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).
Appellants do not cite to any portion of Oschinsky that criticizes or
discredits greater extensibility. Indeed, the teaching of shrinkage in the
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Application 13/811, 192
circumferential direction by at least 3 to 15% is described as an exemplary
embodiment, Oschinsky ,r 24, suggesting other embodiments are possible.
In view of the foregoing, Appellants have not shown error in the
rejection of claims 1, 5, and 6.
Claims 16, 19, 20, and 21
Appellants additionally argue that claims 16, 19, 20 and 21 were
rejected in error. Appeal Br. 14--16. Appellants indicate that they had
intended to amend claim 16 so as to include the subject matter of claims 19
and 21. Appeal Br. 14. As above, we will treat the claims as presently
drafted.
The only claim element argued by Appellants is found in claim 21.
Claim 21 requires "[t ]he filter element according to claim 20, wherein the
textile material is configured to extend in the circumferential direction to
such an extent that at least approximately 80% of its elastic extensibility in
the circumferential direction is exhausted when the sleeve is in a mounted
state." Appeal Br. 26 (Claims App.).
The Examiner determined that Billiet teaches that the filter material is
compressed due to the shrinkage of its jacket. Answer 14. The Examiner
further determined that Billiet teaches that "the jacket [sleeve] holds the
filter material in even, uniform compression ... so as to provide resistance
to burst pressures." Id. As a result, the Examiner determines, "it would
have been obvious to one skilled in the art at the time the instant invention
was made to optimize the shrinkage (i.e., elastic extensibility) of the woof
fibers (which run circumferentially) in order to enhance the compression of
the filter material as well as the resistance to burst pressure." Id.
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Appellants argue that the Examiner has failed to make out a prima
facie case of obviousness. Reply Br. 6. Appellants assert that Oschinsky is
silent as to elastic extensibility being exhausted. Id. at 6-7. Appellants
further argue that the portion of Billiet cited by the Examiner teaches only
that "[t]he filter material is compressed due only to the shrinkage of the
jacket, and can be compressed by up to about 15% of its original thickness."
(citing Billet 3:3-5). Appellants argue that the 15% compression taught by
Billiet pertains to the filter material, not the jacket (sleeve). Reply Br. 6-7.
Appellants' arguments do not rebut, or even squarely meet, the
Examiner's determinations as made in the Answer. The Examiner finds that
one of skill in the art, considering the teachings of Billiet, would have
optimized the extensibility of the circumferential fibers. Appellants do not
address such determination. Accordingly, Appellants have failed to show
reversible error in this regard.
Rejection 3. The Examiner rejected claims 6, 7, 12, 20, and 21, in the
alternative, over Oschinsky, Billiet, Hamilton, and Shepherd. Final Act. 8-
9. In view of our affirmance of the rejection over the combination of
Oschinsky and Billiet, we need not address this alternative rejection.
CONCLUSION
In view of the foregoing, the Final Rejection, and the Examiner's
Answer, the rejection of claims 1-3, 5-8, and 11-15 as indefinite is
affirmed. The rejection of claims 16-21 as indefinite is reversed. The
rejection of claims 1-3, 5-8, and 11-21 as obvious over Oschinsky in view
of Billiet is affirmed.
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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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