Ex Parte Zhang et al

Patent Trial and Appeal Board

Mar 20, 2014

12288159 (P.T.A.B. Mar. 20, 2014)

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.
12/288,159 10/15/2008 Nan Zhang 130-000610US 1926
22798 7590 03/20/2014
QUINE INTELLECTUAL PROPERTY LAW GROUP, P.C.
P O BOX 458
ALAMEDA, CA 94501
EXAMINER
BASS, DIRK R
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
03/20/2014 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 NAN ZHANG, ZHILIANG WAN
and HARSHAL SURANGALIKAR
____________________

Appeal 2012-011240
Application 12/288,159
Technology Center 1700
____________________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE,
and MICHAEL P. COLAIANNI, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1 through 25. We have jurisdiction under 35 U.S.C.
§ 6(b).
The claims are directed to filter systems comprising a second filter
element with a fluid application surface and disposed upon (but not
Appeal 2012-011240
Application 12/288,159

2
coextensive with) a first filter element. App. Br. 2. Claim 1 illustrates the
subject matter on appeal and is reproduced below:
1. A filter system for separating particles from an aqueous fluid,
the system comprising:
a first filter element configured for capillary flow of the aqueous fluid
and comprising a fluid egress surface;
a second filter element disposed upon the first filter element but not
coextensive with the first filter element, and wherein the fluid egress surface
is at a region of the first filter which is not coextensive with the second filter,
which second filter element comprises a fluid application surface; and,
a lateral fluid flow path from the application surface to the fluid egress
surface;
wherein the filters and egress surface are arranged so that a fluid
applied to the application surface flows into the second filter and laterally
through the first filter and out from the fluid egress surface.

The Examiner relied on the following references in rejecting the
appealed subject matter:

Rapkin US 4,678,757 Jul. 7, 1987
Aunet US 4,933,092 Jun. 12, 1990
McGeehan US 5,234,813 Aug. 10, 1993
Tyrrell US 6,465,202 BI Oct. 15, 2002
Davis US 2007/0031283 Al Feb. 8, 2007

Appellants, App. Br. 3, request review of the following rejections
from the Examiner’s final office action:
Appeal 2012-011240
Application 12/288,159

3
I. Claims 1, 5-6 and 8 rejected under 35 U.S.C. § 102(b) as
anticipated by Rapkin.

II. Claims 1, 6 and 8 rejected under 35 U.S.C. § 102(b) as
anticipated by Aunet.

III. Claims 1, 3-6, 8-9, 12 and 15-25 rejected under 35 U.S.C. §
102(b) as anticipated by Tyrrell.

IV. Claims 2 and 11 rejected under 35 U.S.C. § 103(a) as
unpatentable over Tyrrell.
V. Claims 7, 13 and 14 rejected under 35 U.S.C. § 103(a) as
unpatentable over Tyrrell and Davis.
VI. Claim 10 rejected under 35 U.S.C. § 103(a) as unpatentable
over Tyrrell and McGeehan.

OPINION
The dispositive issue for this appeal is: Did the Examiner err in
determining that each of Rapkin, Aunet and Tyrrell describes a filter system
having a first filter element comprising a fluid egress surface, wherein fluid
flows through the first filter and out from the fluid egress surface as required
by the subject matter of independent claims 1, 9 and 17?1, 2
We answer the question in the positive and REVERSE for the reasons
presented by Appellants.

1 We limit our discussion to independent claim 1.
2 A discussion of Davis and McGeehan, relied upon by the Examiner in the
separate rejections of claims 7, 10, 13 and 14 under 35 U.S.C. § 103 (Ans.
11-12), is unnecessary for disposition of the present appeal. The Examiner
relied upon this reference for features not related to the dispositive issue.
Appeal 2012-011240
Application 12/288,159

4
We refer to the Examiner’s Answer for a statement of the prior art
rejections (Ans. 4-12).
The subject matter of independent claim 1 requires a first filter
element having an egress surface for a fluid to flow out of the filter.
Appellants’ principal argument is that none of the filter systems of Rapkin,
Aunet or Tyrrell includes a first filter element having a surface that functions
as an egress surface as required by the subject matter of independent claim
1. App. Br. 4-7.
We agree. While the Examiner found that an “egress surface” is a
surface (Ans. 4-12), the Examiner does not adequately explain how the prior
art filter systems have an egress surface for a fluid to flow out of the filter.
The Examiner has not adequately explained how the prior art filter systems
are capable of providing an egress surface for the fluid to flow out of the
filter.
Accordingly, we reverse the Examiner’s prior art rejections of claims
1-25 for the reasons presented by the Appellants and given above.

ORDER
The Examiner’s prior art rejections of claims 1-25 are reversed.

REVERSED
tc