Ex Parte ShaneDownload PDFPatent Trial and Appeal BoardOct 31, 201312236801 (P.T.A.B. Oct. 31, 2013) Copy Citation 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. 12/236,801 09/24/2008 Bruce E. Shane P133P0029USA 8616 49458 7590 11/01/2013 DON W. BULSON (PARK) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE / 19TH FLOOR CLEVELAND, OH 44115 EXAMINER ALLEN, CAMERON J ART UNIT PAPER NUMBER 1774 MAIL DATE DELIVERY MODE 11/01/2013 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 BRUCE E. SHANE ____________ Appeal 2012-006319 Application 12/236,801 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. GARRIS, Administrative Patent Judge. HOUSEL, Administrative Patent Judge, concurring. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s rejection of claims 1-19. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-006319 Application 12/236,801 2 CLAIMED SUBJECT MATTER The claims are directed to a filter media that inhibits formation of a static electric charge in a fluid passing through the filter media. Claims 1, 11, 17, and 18 are the independent claims on appeal. Claims 1, 11, and 12 are illustrative of the subject matter on appeal and recite (italics added to emphasize argued limitations): 1. A filter media for filtering a prescribed liquid flowing therethrough comprising: a filtration layer having a first surface and a second surface opposite the first surface and comprising a non-conductive fibrous material having a plurality of fibers, the fibrous material having a metal layer deposited on at least a portion of the fibers through at least a portion of the thickness of the filtration layer, the filtration layer inhibiting formation of a static charge in the prescribed liquid when the prescribed liquid passes through the media. 11. A method of making a filter media for filtering a prescribed fluid comprising: providing a filtration layer having a first surface and a second surface opposite the first surface, the filtration layer comprising a non- conductive fibrous material having a plurality of fibers; selecting a metal having a position in the triboelectric series closer to the prescribed fluid than the position of the fibrous material relative to the prescribed fluid; and depositing the metal to form a metal layer on at least a portion of the fibers of the fibrous material through at least a portion of the thickness of the filtration layer. 12. The method according to claim 11, wherein depositing the metal comprises vacuum depositing the metal onto the fibers of the fibrous material. Appeal 2012-006319 Application 12/236,801 3 REJECTIONS 1) Claims 1 and 17-19 are rejected under 35 U.S.C. § 102(b) as anticipated by Breusch (US 2004/0245169 A1, pub. Dec. 9, 2004). 2) Claims 2-11 and 13-16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Breusch. 3) Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over Breusch in view of Hobson (US 5,527,569 issued Jun. 18, 1996). ANALYSIS The rejection of claims 1 and 17-19 as anticipated by Breusch and the rejection of claims 2-11 and 13-16 as unpatentable over Breusch Claims 1 and 11, above, include a metal layer deposited on at least a portion of the fibers. The Examiner argues that the metal and plastic “weave of fibers” disclosed in Breusch is included within the definition of deposit: “[t]he act of putting or placing something somewhere.” (Ans. 11). That is, in Breusch, “[t]he fibers are deposited on each other in the location where they overlap, meaning the fibers are put or placed on top of each other.” (Id.). Appellant argues that overlapping fibers are not the same as a layer deposited on a fiber. “The overlapping fiber is just that, a fiber that overlaps. It is not a ‘layer’ that is deposited on a fiber.” (App. Br. 13). We agree with Appellant that the meaning of deposit as used in the claims would not include the “weave of fibers” disclosed in Breusch. The Specification discloses that the metal layer is to be provided by coating or “metalizing” the fibers rather than weaving in metallic threads. “The fibers may be metalized by any suitable method including, for example, vacuum Appeal 2012-006319 Application 12/236,801 4 depositing a metal onto the fibers. The metallization process, such as by vacuum deposition, may involve the infusion of metal particles onto the fibers.” (Spec. 5-6). Based on the foregoing, we determine that the broadest reasonable meaning of the claim term “deposit” consistent with the Specification is the coating or metallization of at least part of the fibers with a layer of metal, and does not include the “weave” taught by Breusch. It is well settled that during examination, “claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Accordingly, we reverse the Examiner’s rejection of claims 1-11 and 13-19. The rejection of claim 12 as unpatentable over Breusch in view of Hobson. Claim 12 includes the method of making a filter media of claim 11, but also includes vacuum depositing the metal onto the fibers of the fibrous material. The Examiner concludes “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Breusch reference with the Hobson reference by using vacuum depositing to coat the fiber, since the Breusch reference discloses the use of a coated fiber and the Hobson reference discloses a method to make the fiber[,] the combination would yield the expected result of a vacuum deposited metal coated fiber.” (Ans. 9). Appeal 2012-006319 Application 12/236,801 5 Appellant argues that “the Examiner has not articulated a reason why a person skilled in the art would modify Breusch to arrive at the claimed method. . . . Breusch does not even disclose or suggest depositing a metal layer on non-conductive fibers. Lacking is any reason for the skilled person to look to Hobson.” (App. Br. 22). Appellant is correct. Breusch discloses the use of a “zinc-coated iron material” as a conductive weft thread in the filter material (Breusch 0016), but does not disclose coating the non-conductive fibers with metal. Thus, it would not be obvious to one of ordinary skill in the art to combine Breusch and Hobson so as to vacuum deposit a metal onto the non-conductive fibers of Breusch. Accordingly, we reverse the Examiner’s rejection of claim 12. Conclusion The decision of the Examiner rejecting claims 1-19 is reversed. REVERSED cam Appeal 2012-006319 Application 12/236,801 1 HOUSEL, Administrative Patent Judge, concurring Although I concur with the majority that the Examiner has not shown that Breusch anticipates or renders obvious the claimed invention, even when taken with Hobson, I write separately to raise the following matter which neither the Examiner nor the majority address. Specifically, I find Hobson, column 1, lines 52-58 (fifth paragraph of Section 2. Description of Prior References) describes one prior art approach for controlling static electrical charges was to apply a coating of metals to the outside surface of fibers used in producing organic polymeric textile materials. While this paragraph does not itself state that these materials are used for a filtration media, I find the context of this paragraph indicates this material is a filtration media. In Section 1, I find Hobson teaches the field of the invention disclosed relates to antistatic, electrically conductive filtration material. Hobson, 1:5-7. Further, I find Hobson teaches the dangers in various industries due to uncontrolled electrostatic discharge. Hobson, 1:10-19. I find Hobson also teaches organic polymeric textile materials can be the source of static discharges, and that these materials can provide good filtration efficiency. Hobson, 1:20-31. Moreover, I find Hobson teaches to control static electrical charges found in these textile materials include providing antistatic surface finishes to the material, introducing at least partially conductive fibers into the material, and electrically grounding the material. Hobson, 1:32-51. I find, following the disclosure of applying a metal coating to the fibers used to prepare the textile material, Hobson teaches incorporating conductive fibers into a matrix of nonwoven filtration media. Hobson, 1:60- 65. Finally, I find Hobson’s application of a metal coating onto the fibers Appeal 2012-006319 Application 12/236,801 2 used to prepare the textile filtration media is inherently equivalent to depositing a metal layer on the fibers through at least a portion of the filtration layer. Accordingly, I find Hobson reads on, and therefore anticipates, the filter media of claim 1 under 35 U.S.C. § 102(b). Alternatively, should the context of Hobson’s disclosure of the metal coated fibers of the textile material not be found to support that the material is a filtration media, such context at least supports a conclusion that the use of this textile material as a filtration media would have been obvious to one of ordinary skill in the art under 35 U.S.C. § 103(a). Copy with citationCopy as parenthetical citation