Ex Parte Verschaeve et al

Patent Trial and Appeal Board

Feb 28, 2017

12302837 (P.T.A.B. Feb. 28, 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.
12/302,837 11/28/2008 Frank Verschaeve 509968-PCT-US 1671
53609 7590 03/02/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK VERSCHAEVE
and FRANK VANACKER
Appeal 2016-001042
Application 12/302,837
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
December 23, 2014 decision finally rejecting claims 26—28, 30-40, 42-47,
and 60—63 as unpatentable under 35 U.S.C. § 103(a). We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Purolator Advanced
Filtration. (Appeal Br. 2).
Appeal 2016-001042
Application 12/302,837
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to methods for providing disc-shaped
filter elements (Spec. 1:6). Claim 26 is representative and is reproduced
below from the Claims Appendix of the Brief:
26. A method for making a disc-shaped filter element having
a diameter K, said method comprising the steps of
providing a first and a second substantially identical, ring-
shaped, substantially flat liquid permeable support member
having an outer edge having a diameter Ds and an inner central
edge, said inner central edge having a width Ws, said first
support member and said second support member each having a
first surface and a second surface;
providing a first and a second substantially identical, ring-
shaped, substantially flat filter membrane having an outer edge
and an inner central edge;
providing a hub having a central void space, an outer wall,
at least one channel extending from said void space through said
outer wall and a coupling means for coupling said inner central
edges of said support members and said inner central edges of
said filter membranes to said hub;
bringing said first filter membrane into contact with a first
surface of said first support member;
bringing said second filter membrane into contact with a
first surface of said second support member;
coupling said inner central edge of said first membrane
and said inner central edge of said first support member liquid-
tight to said coupling means of said hub to define a first region
of connection;
coupling said inner central edge of said second membrane
and said inner central edge of said second support member
liquid-tight to said coupling means of said hub to define a second
region of connection and in such a way that the second surface
of said first support member and the second surface of the second
support member are facing to each other and are separated from
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Appeal 2016-001042
Application 12/302,837
each other over a distance H being different from zero at the outer
wall of said hub, and having the at least one channel extending
between said second surface of said first support member and the
second surface of the second support member; and
bending and liquid-tight fixing said outer edge of said first
filter membrane, said outer edge of said second filter membrane,
said outer edge of said first support member and said outer edge
of said second support member to each other to define a third
region of connection;
wherein by said bending of said outer edges of said first
and second filter membranes and said outer edges of said first
and second support members, said first and second support
members become pre-tensioned so that said first filter membrane
is on said first surface of said first support member and said
second filter membrane is on said first surface of said second
support member;
wherein for each of said first support member and said
second support member, said support member has a radius of
curvature r smaller than or equal to (K2/4H)+H/4 along at least a
zone of said support member, which zone is delimited by a first
imaginary circle along said support member having a diameter
of 0.9*Ds and a second imaginary circle along the support
member having a diameter of 1.1 *Ws, said first imaginary circle
and said second imaginary circle being concentric with said disc­
like support member;
wherein the first and second support members are
unsupported along their respective second surfaces except at and
adjacent the first, second, and third regions of connection.
Appeal Br. 13—14 (Claims App.).
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Appeal 2016-001042
Application 12/302,837
REJECTION
Claims 26—28, 30-40, 42-47, and 60-63 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pall2 in view of Muller,3 as evidenced by
Artinyan,4 Siwak,5 and Hartmann.6
Appellants do not offer separate arguments in support of any of the
dependent claims; arguments are directed to limitations recited in
independent claim 26 (see generally Appeal Br. 8—12; Reply Br. 8—14).
Accordingly, our discussion will focus on claim 26.
DISCUSSION
The Examiner finds that the recitation in claim 26 of “coupling means
for coupling” invokes 35 U.S.C. § 112, | 6. The Examiner, therefore,
determines that the claim, in part, reads on Pall’s filter structure, in which
the inner edges of porous metal membrane 5, metal fiber membrane 6, and
support screen 4 are welded to hub 9 (Final Act. 3, citing Pall Fig. 1; 5:50-
61). The Examiner finds that Pall is silent as to: (i) the method of making
the disclosed filter as claimed, (ii) the claimed radius of curvature equation,
and (iii) the limitation requiring that the first and second support members
are unsupported along their respective second surfaces inside the disc. Final
Act. 3, 6.
2 Pall et al., U.S. Patent No. 4,902,420, issued February 20, 1990.
3 Muller et al., U.S. Patent No. 2,813,632, issued November 19, 1957.
4 Artinyan et al., U.S. Patent No. 5,055,192, issued October 8, 1991.
5 Siwak, U.S. Patent Pub. No. 2005/0205489 Al, published September 22,
2005.
6 Hartmann et al., U.S. Patent No. 4,637,877, issued January 20, 1987.
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Application 12/302,837
With respect to (i), the Examiner finds that Artinyan teaches “bending
and liquid-tight fixing” the outer circumferential edge of the filter media 44
(id. at 5). The Examiner determines that it would have been obvious to the
ordinary skilled artisan to combine the teachings of Pall and Artinyan “to
improve the integrity and mechanical strength of the filter” (id. ).
Regarding (ii), the Examiner determines that “the actual degree of
convexity required [by] Pall could be optimized” because “Pall teaches
optimizing for maximum performance” (id. at 3, citing Pall 6:43—61).
With regard to (iii), the Examiner relies on Muller’s Figure 4
depicting a stack of disk filters (Final Act. 6). The Examiner finds that
Muller’s “second or inner side of the grill 19 is not supported other than at
around the hub 18 and outer periphery 21” (id. at 7). The Examiner
determines that it would have been obvious for the ordinary skilled artisan to
combine the teachings of Pall and Muller to arrive at Appellants’ design
(id.). The Examiner further finds that Pall’s support and drainage plate 2 is
not necessary in filtration applications not requiring high pressures (id. at 6,
citing Pall 2:42-3:32; 8:20-24).
Appellants make the following principal arguments urging reversal of
the Examiner’s § 103(a) rejection: (1) “Pall does not disclose teach or
suggest that [JPall’s support plate is only for high pressure applications and
not necessary in low pressure applications,” (Appeal Br. 9); (2) Pall’s
alleged silence regarding use of support plates only for such high pressure
applications teaches away from the Examiner’s proposed combination with
Muller (id. at 10); (3) “the Examiner’s evidentiary references do not teach
limitations of 26 . . .” (id.); and (4) “the particular radius of curvature
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Appeal 2016-001042
Application 12/302,837
claimed ... is not disclosed, taught or suggested by the cited combination of
references” {id. at 10).
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). For a
reference to “teach away,” it must criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
Appellants’ arguments (1) and (2) are not persuasive because they fail
to identify any teaching in the applied prior art that criticizes, discredits, or
discourages removing a support plate in a filter structure. Rather, Pall
teaches that designs without support core plate 2 are standard in the prior art
(Ans. 6). As the Examiner found, Pall teaches that filters with supporting
structures are “superior over the standard design without such a core support
plate 2” {id., citing Pall 10:60-11:23; Fig. 1, emphasis in original).
Appellants’ argument (3) is not persuasive because Artinyan provides
further evidence that designs without a central core plate, depending on the
filtration pressure applied, are well known in the filtration art {see Artinyan
7:53; Fig. 9).
Appellants’ argument (4) is not persuasive for the reasons set forth
below.
It is well established that when claimed and prior art products are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. In re Best, 562
F.2d 1252, 1255 (CCPA 1977). This is true whether the rejection is under
35 U.S.C. § 102 (anticipation) or 35 U.S.C. § 103 (obviousness), and is
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Application 12/302,837
based on the fact that the PTO is not in a position to manufacture products or
to obtain and compare prior art products. Id.
In this instance, the Examiner has explained that Pall’s filter structure
is substantially similar to the product derived by the process described in
Appellants’ claims (Final Act. 3, citing Pall Fig. 1; 5:50-61). While the
claimed radius of curvature equation is broad, we do not see persuasive
support for the Examiner’s finding “that the curvature is insignificant” (see
Ans. 7). Nevertheless, we agree with the Examiner that “[i]t is . . . not
realistically possible for the office to determine if the teachings of Pall
would meet the radius of curvature as defined in the claims” (Final Act. 3).
Placing the burden on Appellants to show that Pall’s filtration structure does
not meet the claimed radius of curvature equation is appropriate under these
circumstances. Best, 562 F.2d at 1255.
Appellants have not met this burden. The record evidence is silent as
to any persuasive technical reasoning or evidence that the claimed disc­
shaped filter element, with support member having the requisite radius of
curvature r smaller than or equal to (K2/4H)+H/4 along at least a defined
zone of said support member, would be substantially different from a
modified Pall’s filter structure.
Therefore, Appellants have not persuasively argued that the facts and
reasons relied on by the Examiner are insufficient to establish a prima facie
case of obviousness as to independent claims 26 or 36. Dependent claims
25—28, 30-35, 37-40, 42-47, and 60-63 will fall with each of their
respective independent claims. 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/302,837
Accordingly, we affirm the rejection of claims 26—28, 30-40, 42-47,
and 60-63 for the reasons set forth above and explained in the Final Office
Action, and the Examiner’s Answer.
CONCLUSION
We AFFIRM the rejection of claims 26—28, 30-40, 42-47, and 60—63
under 35 U.S.C. § 103(a) as obvious over Pall in view of Muller, as
evidenced by Artinyan, Siwak, and Hartmann.
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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