Ex Parte Tubby et al

Patent Trial and Appeal Board

Feb 24, 2017

14186882 (P.T.A.B. Feb. 24, 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.
14/186,882 02/21/2014 Brian J. Tubby 61580US015 3479
32692 7590 02/28/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
MELLON, DAVID C
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte 3M INNOVATIVE PROPERTIES COMPANY
Appeal 2016-001492
Application 14/186,882
Technology Center 1700
Before LINDA M GAUDETTE, RAE LYNN P. GUEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001492
Application 14/186,882
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision2
finally rejecting claims 1—15 under pre-AIA 35 U.S.C. § 102(b) as anticipated
by Bassett et al. (US 6,458,269 Bl, iss. Oct. 1, 2002 (“Bassett”)) and under pre-
AIA 35 U.S.C. § 102(e) as anticipated by Wolf et al. (US 7,387,726 B2, iss. June
17, 2008 (“Wolf’)). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a liquid filtration system that may be used, for
example, to filter water in a refrigerator. Specification filed Feb. 21, 2014
(“Spec.”) 1 64. The system allows a replaceable filter cartridge to be both installed
and removed from a manifold assembly with a straight line push/pull motion. Id.
114. According to the Specification, this feature provides an advantage over
known prior art systems that require both translational and rotational motions for
filter cartridge installation and/or removal, because it eliminates the high breakout
torque phenomenon associated with the rotational motion. Id. H 100—101.
Claim 1, the sole independent claim on appeal, is representative of the
claimed invention, and is reproduced below:
1. A filter cartridge for installation and removal from a manifold
assembly by linear translation of the filter cartridge, the filter cartridge
comprising:
a cartridge body having a first diameter,
1 Appellant identifies the real party in interest as itself. Appeal Brief filed July 7,
2015 (“App. Br.”), 3. The named inventors are Brian J. Tubby, Andrew M.
Candelora, Thomas D. Holler, and Faurence W. Bassett.
2 Final Office Action mailed Feb. 12, 2015 (“Final Act.”). The Examiner
apparently has withdrawn the non-statutory double patenting rejections (see Final
Act. 3—4) in view of Appellant’s terminal disclaimer, filed on May 8, 2015. See
Examiner’s Answer mailed Sept. 17, 2015 (“Ans.”), 2—5 (identifying the rejections
under 35 U.S.C. § 102 as the only grounds of rejection applicable to the appealed
claims).
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Appeal 2016-001492
Application 14/186,882
a filter disposed within the cartridge body,
a stem comprising a stem body and a stem tip, the stem body
extending from one end of the cartridge body and ending at the stem
tip, the stem body having a second diameter smaller than the first
diameter of the cartridge body;
an inlet opening and an outlet opening in the stem;
a cartridge latching structure on an outer surface of the cartridge
body to interact with a latching mechanism of the manifold assembly,
the cartridge latching structure being effective to:
(i) latch the filter cartridge into engagement with the
manifold assembly by linear translation of the filter cartridge
toward the manifold assembly; and
(ii) unlatch the filter cartridge from engagement with the
manifold assembly by linear translation of the filter cartridge
toward the manifold assembly.
App. Br. 16 (Claims App’x).
We have fully considered the arguments advanced by Appellant in the
Appeal Brief and the Reply Brief (filed Nov. 16, 2015). However, these arguments
are not persuasive of reversible error in the Examiner’s findings that the claims are
anticipated by both Bassett and Wolf, for the reasons explained by the Examiner in
the Response to Argument section of the Answer. See Ans. 6—10. Accordingly,
we adopt the Examiner’s fact finding and reasoning, as set forth in the Final Office
Action and the Answer, in sustaining both grounds of rejection under 35 U.S.C.
§ 102. See Final Act. 4—7; Ans. 2—10. We add the following comments to address
arguments made by Appellant in the Reply Brief.
Appellant contends the Examiner applied an overly broad interpretation of
the claim term “cartridge body” as encompassing the lower part of Bassett’s neck
portion (646) (see, e.g., Bassett Figs. 46-47). See Reply Br. 3—5.
During examination, claim terms are given their broadest reasonable
construction consistent with the Specification. In re ICON Health & Fitness, Inc.,
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Appeal 2016-001492
Application 14/186,882
496 F.3d 1374, 1379 (Fed. Cir. 2007). An applicant seeking a narrower claim
construction must either show why the broader construction is unreasonable or
amend the claim to expressly state the scope intended. In re Morris, 111 F.3d
1048, 1057 (Fed. Cir. 1997).
As an initial matter, we observe that the term “cartridge body” is not defined
explicitly in the Specification, and is used only in claim 1. As recited in claim 1,
the cartridge body is included in “the filter cartridge,” the filter cartridge further
comprising a filter disposed within the cartridge body, and a stem. App. Br. 16
(Claims App’x). The filter cartridge is described in the Specification in
connection with Figure 22, reproduced below:
'A
\
Figure 22, above, is an exploded perspective view (Spec. 146) of filter
cartridge 58 comprising closure member 158, filtration media 160, top end cap 162
and “shell 164 including the stem 154” (id. | 111). “[S]hell portion 164 .. .
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Appeal 2016-001492
Application 14/186,882
comprises representative cartridge latching structure 126, 128, 130, 132 projecting
outwardly from the outer surface of the shell 164.” Id. 1112. In addition to the
cartridge latching structure, shell 164 comprises outer stem portion 214. Id. 1113.
The Specification discloses that, although the cartridge latching structure is
illustrated in Figure 22 as positioned on the outer surface of shell 164, it could be
positioned “at any other location [on filter cartridge 58] so long as the
corresponding structure positioned on the main bracket and the latch assembly are
capable of successfully interfacing therewith.” Id. 1114.
The Specification’s description of shell 164 as including cartridge latching
structure 126, 128, 130, 132 and outer stem portion 214 supports the Examiner’s
interpretation (see Final Act 5) of the claim term “cartridge body” as reading on
Bassett’s filter cartridge 640 and lower portion of neck 646 (46b in Bassett
Figure 3) shown in Figure 46, reproduced below. Compare Spec. Fig. 22 (shell
164 and outer stem portion 214) with Bassett Fig. 46 (filter cartridge 640 and lower
portion of neck 646).
Bassett Figure 46 is a side elevational view of neck portion 646
of filter cartridge 640, including cam lugs 661—664 positioned at
a first axial height on neck portion 646. Bassett 4:49—50, 10:54—59.
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Appeal 2016-001492
Application 14/186,882
More specifically, claim 1 requires “a cartridge latching structure on an outer
surface of the cartridge body.” Therefore, in order for the Figure 22 embodiment
to fall within the scope of claim 1, the claim term “cartridge body” must
encompass shell 164 on which the cartridge latching structure is located. Because
shell 164 is described as including outer stem portion 214, the claim term
“cartridge body” reasonably is construed as also encompassing outer stem
portion 214, which is the lower portion of stem (or neck) 154. See Accent
Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013)
(“[A] claim interpretation that excludes a preferred embodiment from the scope of
the claim is rarely, if ever, correct.” (quoting On-Line Techs., Inc. v.
BodenseewerkPerkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004))).
Appellant argues the Examiner’s references to Wolf Figure 3 in the Final
Office Action and Answer do not provide sufficient “guidance as to [how the]
Examiner[] interprets Wolf to include the alleged stem having a stem body or stem
tip, or how the openings are located in the stem.” Reply Br. 6—7. For reference,
Wolf Figure 3 is reproduced below:
Wolf Figure 3 is a perspective view of housing 11 and filter element 19
inserted therein, the housing including collar 30 and inlet and
outlet openings 13 arranged within collar 30. Wolf 4:44-45, 5:5—9.
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Appeal 2016-001492
Application 14/186,882
With respect to the claim recitations relating to the “stem,” although
Appellant argues it is unclear which portion of collar 30 is considered to be the
stem body and which portion is considered to be the stem tip, Appellant does not
assert that the Examiner erred in finding collar 30 includes both a body and a tip.
See App. Br. 12. Accordingly, we are not convinced that the Examiner failed to
meet the requirements of 35 U.S.C. § 132(a) and 37 C.F.R. § 1.104(a)(2) in the
statement of the rejection of the claims as anticipated by Wolf.
With respect to the claim recitations relating to the locations of openings in
the stem, Appellant has not explained with sufficient specificity why the Examiner
erred in finding Wolf Figure 3 describes “an inlet opening and an outlet opening in
the stem,” as claimed, by virtue of the fact that the openings are contained within
the circumference of the stem (collar 30). See Ans. 8; In re Bager, 47 F.2d 951,
953 (CCPA 1931) (explaining that description for purposes of anticipation can be
by drawings alone). Appellant does not direct us to, nor do we find, any disclosure
in the Specification that supports a narrow interpretation of the claim 1 phrase “an
inlet opening and an outlet opening in the stem” that would not encompass the
openings contained within the circumference of Wolf s collar 30.
In the Reply Brief, Appellant also continues to assert that the Examiner has
not met the burden to show that the latching structures of Bassett and Wolf are
capable of latching and unlatching their respective filter cartridges into
engagement with a manifold assembly by linear translation of the filter cartridge
toward the manifold assembly. See Reply Br. 5—8. As explained by the Examiner
(see Ans. 8, 10), the claims recite a “filter cartridge” as well as language relating to
its intended use in a manifold assembly. The claims, however, do not require a
manifold assembly and, therefore, cannot be construed as limited to a particular
manifold assembly structure. Rather, the claims only limit the latching structure of
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Appeal 2016-001492
Application 14/186,882
the filter cartridge itself, i.e., to a structure that is capable of latching and
unlatching the filter cartridge with a manifold assembly by linear translation. The
Examiner found the latching structures of Bassett and Wolf would be capable of
performing these functions with a manifold assembly having a suitable structure.
See Final Act. 5—6. Where the Examiner establishes a reasonable assertion of
inherency and thereby evinces that products claimed by the applicant and disclosed
in the prior art appear to be the same, the burden is properly shifted to the applicant
to show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In
re Best, 562 F.2d 1252, 1254—56 (CCPA 1977). The Examiner’s findings that the
filter cartridge latching structures of Bassett and Wolf are capable of engagement
with a suitable manifold assembly in the manner recited in the claims is
reasonable. Appellant has not provided persuasive argument or evidence to the
contrary. “[W]hen the prior art evidence reasonably allows the PTO to conclude
that a claimed feature is present in the prior art, the evidence ‘compels such a
conclusion if the applicant produces no evidence or argument to rebut it.’” In re
Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (quoting In re Spada, 911 F.2d at 708
n.3).
In sum, for the reasons stated in the Final Office Action, the Answer, and
above, Appellant has not persuaded us of reversible error in the Examiner’s
findings that claims 1—15 are anticipated under pre-AIA 35 U.S.C. § 102(b) by
Bassett, and under pre-AIA 35 U.S.C. § 102(e) by Wolf.
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)(iv).
AFFIRMED
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