Ex parte Unrath et al.

Board of Patent Appeals and Interferences

Mar 30, 2001

08591857 (B.P.A.I. Mar. 30, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DIETER UNRATH
and
MARGIT HOFMANN
_____________
Appeal No. 1999-1332
Application No. 08/591,857
______________
ON BRIEF
_______________
Before COHEN, STAAB, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1-14, all the claims pending in the application.
Appellants’ invention relates to cassette filters, and in
particular to cassette filters comprising a case surrounding a
dimensionally stable filter pack in a dust-tight manner
(specification, page 1). As further explained on page 2 of
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appellants’ specification:
The present invention is based on the
realization that the dimensional stability
of conventional filter packs and the adhesive
layers required in any event for affixing
the filter pack to the case in a dust-tight
manner obviates the need to use a case which
itself is dimensionally stable. Consequently,
according to the present invention, the case
obtains dimensional stability only by being
cemented to the filter pack by means of
secondary adhesive layers. This, surprisingly,
provides good overall stability even though,
considered by themselves alone, neither the
filter pack nor the case is particularly
dimensionally stable. In this manner, the
cost of producing a cassette filter according
to the invention is considerably reduced.
Claim 1 is exemplary of the appealed subject matter and
reads as follows:
1. A cassette filter comprising:
a dimensionally stable filter pack; and
a cylindrical case that surrounds the filter pack in
a dust-tight manner, said case comprising flat sheets
that are cemented to one another and to the filter pack
via adhesive layers, said sheets alone not having enough
mechanical strength to provide a cassette that is
dimensionally stable, but having in combination with the
adhesive layers and filter pack sufficient strength for
this purpose;
wherein the sheets are fixed in position via their
connection to the filter pack.
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Application No. 08/591,857
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Appeal No. 1999-1332
Application No. 08/591,857
Our understanding of this German language patent document1
is derived from a translation thereof prepared in the Patent
and Trademark Office. A copy of the translation is attached
to this decision.
4
The references applied by the examiner in the final
rejection are:
Rogers 3,397,518 Aug. 20, 1968
Wasielewski et al. (Wasielewski) 4,227,953 Oct. 14, 1980
Allan et al. (Allan) 4,685,944 Aug. 11, 1987
Bub et al. (Bub) 790,181 Feb. 5, 1958
(published British Patent Application)
Withrington GB 2 103 106 A Feb. 16,
1983
(published United Kingdom Patent Application)
Lippold EP 0 382 329 A1 Aug. 16, 19901
(published European Patent Application)
The following rejections under 35 U.S.C. § 103(a) are
before us for review:
(a) claim 1, unpatentable over Allan in view of
Wasielewski and Lippold;
(b) claims 2 and 3, unpatentable over Allan in view of
Wasielewski, Lippold, and Rogers;
(c) claims 4 and 6-10, unpatentable over Allan in view of
Wasielewski, Lippold, and Bub;
(d) claim 5, unpatentable over Allan in view of
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Application No. 08/591,857
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Wasielewski, Lippold, Rogers, and Bub; and
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(e) claims 11-14, unpatentable over Allan in view of
Wasielewski, Lippold, and Withrington.
Reference is made to appellants’ brief (Paper No. 13) and
to the examiner’s answer (Paper No. 14) for the respective
positions of appellants and the examiner regarding the merits
of these rejections.
Opinion
Upon review of the teachings of the applied references
and the respective positions of the examiner and appellants,
it is our opinion that the standing rejections are not
sustainable. Our reasons follow.
Allan, the primary reference in each of the rejections,
pertains to an air filter comprising a filter pack 22
surrounded by a relatively thin and lightweight frame 32
comprising four sides 34-37. The frame is composed of a
relatively hard, air impermeable molded material, such as
plastic or fiberglass (column 4, lines 34-40). The method of
fabricating the frame is described at column 4, line 60,
through column 5, line 45. Briefly, a mold 45 containing a
moldable liquid 44 which is adapted to set and form the
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relatively hard, air impermeable frame is provided, and an
edge of the filter pack 22 is immersed in the liquid (see, for
example, Figure 3). The liquid is permitted to set to thereby
form a relatively hard, air impermeable frame side. The
filter pack is then turned and the process repeated to form
the other sides of the frame.
Wasielewski, the secondary reference in each of the
rejections, is directed to a method of fabricating an air
filter comprising a filter core and a box-like frame usually
made of plywood, heavy cardboard, or sheet metal (column 1,
lines 25-27). The method of fabricating is described at
column 3, line 19, through column 4, line 36. In Wasielewski,
strips 34 and 36 are secured to end plate 24 by convenient
means such as staples (column 3, lines 22-27), whereafter
temporary walls are then formed along the front and rear edges
of the end plate with convenient, expendable materials such as
two strips of pressure-sensitive tape to form a shallow pan-
like structure (column 3, lines 33-44). A liquid adhesive 48
is then poured into the pan-like structure (column 3, lines
44-48). A core subassembly comprising a filter core 12 having
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frame side plates 58 and 60 adhesively attached thereto
(column 4, lines 6-9) is then immersed in the adhesive 48 and
when the adhesive hardens, the tapes are removed, leaving the
pleated edge of the filter core encapsulated in the adhesive
and the end plate 24 secured to the core subassembly (column
4, lines 24-28). The unit is then inverted and end plate 66
is secured to the core subassembly in the same manner (column
4, lines 28-36). In the completed air filter, the notched
ends of the side plates 58 and 60 receive the strips of the
end plates (column 4, lines 15-20; Figure 5).
Lippold, the tertiary reference in each of the
rejections, is mentioned in appellants’ specification (page 7,
lines 17-18) and is representative of the type of
dimensionally stable filter pack that may be used in the
practice of the present invention. Lippold contains no
details concerning the frame of a cassette filter utilizing
the filter pack disclosed therein.
Considering first the standing rejection of claim 1, the
examiner concedes (answer, page 4) that Allan does not meet
the requirements of the third paragraph of claim 1 regarding
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the case surrounding the filter pack. The examiner has taken
the position, however, that
[i]t would have been obvious to someone
of ordinary skill in the art at the time
of the invention to substitute flat sheets
adhesively attached to the sides of a filter
pack as disclosed by Wasielewski et al[.]
for the frame sides molded in situ to a filter
pack as disclosed by Allen et al [sic, Allan
et al.] so that the filter pack is structurally
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supported by flat sheets attached to themselves
and to the filter pack by adhesive and so
that an equivalent thin, lightweight frame is
formed around the filter pack. [Answer, page 4.]
Although not expressly stated, it appears to be the examiner’s
view that the case of the above modified Allan filter would
correspond to the case of the claimed device in all respects.
We cannot support the examiner’s proposed combination of
Allan and Wasielewski. It is crystal clear to us from a
reading of the introductory section of Allan’s specification
(column 1, line 16, through column 2, line 16) that
Wasielewski’s method of fabricating air filters embodies the
very problems Allan hopes to avoid. For example, at column 1,
lines 20-29, Allan describes a “significant problem”
associated with the disposal of filters that include
relatively heavy and rigid wooden or metal frame components,
which frame components, in our view, would correspond
precisely to the frame components 24, 58, 60, 66 of
Wasielewski. Further, at column 1, line 38, through column 2,
line 2, Allan describes a “further problem” associated with a
method of manufacturing filters that very closely tracks the
method employed by Wasielewski, i.e., a method that involves
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“building” a rigid frame around a rectangular filter pack by
separately adhering each of the four sides of the frame to the
edges of the filter pack in a sequential manner. Allan uses
words such as “slow,” “labor intensive,” and “expensive”
(column 1, line 40) and “very laborious” and “time consuming”
(column 1, line 65) to describe this “building” method. It is
a stated objective of Allan to alleviate these problems
(column 7, lines 17-21).
The above disclosure in Allan of the disadvantages, for
example, of a filter fabricating method that involves
“building” a rigid frame around the filter pack, and Allan’s
stated objective to alleviate these problems, would have acted
as a powerful disincentive to an artisan to employ the
techniques of Wasielewski in Allan. Accordingly, we believe
that one of ordinary skill would not have made the sort of
substitution proposed by the examiner in combining the
teachings of Allan and Wasielewski in the absence of
appellants’ disclosure. For this reason alone, the standing
rejection of claim 1 cannot be sustained.
Concerning the rejections of claims 2-14 that depend
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Application No. 08/591,857
According to appellants’ disclosure (specification, page2
3, lines 1-3), the sheets of the present invention “can
consist of any pliable sheeting, for example wood, metal,
cardboard and/or plastic.”
12
either directly or indirectly from claim 1, we have reviewed
the additional references applied by the examiner in these
rejections. While these additional references may disclose
certain features required by the claims against which they
were cited, they do not make up for the basic deficiency in
the examiner’s combination of Allan and Wasielewski, which is
the linchpin of all the standing rejections. Accordingly, the
standing rejections of claims 2-14 also cannot be sustained.
Remand
This case is remanded to the examiner for consideration
of the following matter.
Claim 1 does not require any particular material, or
thickness, or mechanical strength, for the flat sheets of the
case. Claim 1 requires, inter alia, that “said sheets alone[2]
[do] not hav[e] enough mechanical strength to provide a
cassette that is dimensionally stable, but hav[e] in
combination with the adhesive layers and filter pack
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sufficient strength for this purpose.” The examiner should
determine what the differences are between the subject matter
of claim 1 and Wasielewski. If the examiner determines that
the only difference between the subject matter of claim 1 and
Wasielewski is the requirement that the filter pack is
“dimensionally stable,” the examiner should
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consider whether this difference would have been obvious to
one
of ordinary skill in the art in view of Lippold, and if so
take whatever action is considered appropriate under the
circumstances.
Summary
The standing rejections of claims 1-14 under 35 U.S.C.
§ 103(a) are reversed.
This case is remanded to the examiner for the reasons
noted above.
The decision of the examiner is reversed.
REVERSED and REMANDED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 1999-1332
Application No. 08/591,857
15
JEFFREY V. NASE )
Administrative Patent Judge )
LJS:hh
RICHARD L. MAYER
KENYON & KENYON
ONE BROADWAY
NEW YORK, NY 10004