GRUBER, Egon Download PDFPatent Trials and Appeals BoardOct 29, 20212020005556 (P.T.A.B. Oct. 29, 2021) Copy Citation 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. 15/559,316 09/18/2017 Egon GRUBER P53404 3071 7055 7590 10/29/2021 GREENBLUM & BERNSTEIN, P.L.C. 1950 ROLAND CLARKE PLACE RESTON, VA 20191 EXAMINER SAVAGE, MATTHEW O ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 10/29/2021 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): gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EGON GRUBER and RENE ORGEL-ZECHNER Appeal 2020-005556 Application 15/559,316 Technology Center 1700 Before CATHERINE Q. TIMM, DONNA M. PRAISS, and LILAN REN, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Egon GRUBER and Rene ORGEL-ZECHNER. Appeal Br. 2. Appeal 2020-005556 Application 15/559,316 2 CLAIMED SUBJECT MATTER The claims are directed to a filter device. Claim 1, reproduced below with the limitations of most interest italicized, is illustrative of the claimed subject matter: 1. A filter device comprising: a filter housing for a filter medium, the filter medium being formed from fibrous material, wherein the filter housing has an inlet for liquid to be filtered and a suction opening for the filtered liquid, and is divided by an internal partition plate, which is provided with passage openings for the liquid, into a suction-side prechamber and an inlet-side filter chamber, wherein the prechamber has a cross section which is one of widened in comparison to the suction opening or widens from the suction opening to the partition plate, wherein the filter chamber is filled with the filter medium and the suction opening is connectable to a pump ensuring a suction in the suction opening, and wherein a liquid flow from the inlet to the suction opening is ensured by the suction spreading over the prechamber and the passage openings of the partition plate into the filter chamber and from there to the inlet of the filter chamber for suctioning the liquid to be filtered from the exterior of the filter housing. Appeal Br. 25 (Claims Appendix). REJECTIONS Claim 1 is rejected under 35 U.S.C. § 103 as obvious over Fujita et al. (JP 2013078713A, May 2, 2013) (“Fujita”) in view of Baker (US 4,627,118, Dec. 9, 1986). Final Act. 2. Appeal 2020-005556 Application 15/559,316 3 Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over Fujita in view of Baker as applied to claim 1 above and further in view of Portyrata (US 4,102,790, July 25, 1978). Final Act. 3. Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Fujita in view of Baker as applied to claim 1 above, and further in view of Diamond (US 2,874,847, Feb. 24, 1959). Final Act. 3. OPINION Claim 1 The Examiner rejects claim 1 as obvious over Fujita in view of Baker. Final Act. 2. In doing so, the Examiner finds that Fujita’s Figure 2 discloses the filter device structure required by claim 1 and relies on Baker as evidence that it was known in the art to connect a discharge pipe, such as Fujita’s discharge pipe 9, to a pump to ensure a suction in the suction opening of the discharge pipe. Id. In the Appeal Brief, Appellant’s arguments focus on the portions of the claim requiring suction and the Examiner’s combination of Fujita’s Figure 2 filter device with Baker’s pump to support a reason for connecting a pump to Fujita’s discharge pipe 9. Appeal Br. 10–18. We do not find Appellant’s arguments persuasive because the evidence does not support a determination that the suction aspects of the claim structurally distinguish Fujita’s filter device from Appellant’s claimed filter device. Nor do we determine that the phrase “connectable to a pump” provides a structural distinction for the filter device. It has long been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Patentability of the structure cannot turn Appeal 2020-005556 Application 15/559,316 4 on the use or function of the structure. In re Michlin, 256 F.2d 317, 320 (CCPA 1958) (“It is well settled that patentability of apparatus claims must depend upon structural limitations and not upon statements of function.”). Here, there is no real dispute that Fujita’s Figure 2 filter device has: (1) an inlet 7 through which liquid enters filtration tank 2; (2) an internal partition plate (filter medium outflow prevention screen 6) that divides the tank into a lower prechamber and an upper inlet-side filter chamber; and (3) a discharge pipe 9. There is no persuasive evidence that the word “suction” structurally distinguishes the opening recited in claim 1 from the opening of Fujita’s discharge pipe 9. A pipe has an opening whether it is used to suck the liquid out or uses gravity flow to convey the liquid. Thus, we determine that the word “suction” added before apparatus terms “suction opening” and “suction-side prechamber” does not structurally distinguish Appellant’s device from that of Fujita. Nor has Appellant provided persuasive evidence that a pipe connectable to a pump is different in structure from any other discharge pipe. In fact, Appellant admits that “structure exists for FUJITA’s outlet 9 to be connectable to a pump.” Reply Br. 12. Thus, we also determine that the pipe opening structure does not change based on whether it is “connectable to a pump.” A preponderance of the evidence supports the Examiner’s finding that Fujita’s filter device has the structure required by claim 1 and Appellant has provided no persuasive evidence otherwise. As to Appellant’s argument that Fujita’s cleaning device 8, which introduces air into the filter medium during a cleaning operation, renders Fujita’s filter device incapable of operating under suction, we determine that argument is unpersuasive for two reasons. First, we note that cleaning takes Appeal 2020-005556 Application 15/559,316 5 place between filtration operations and thus the capability of operating under suction would still exist during filtration. Second, the presence of a separate cleaning device 8 does not change the structure of Fujita’s opening and lower chamber function and does not distinguish the opening and chamber structures from the “suction opening” and “suction-side prechamber” of claim 1 no matter how the filter device is operated. We are cognizant that, in the Reply Brief, Appellant adds arguments directed to the Examiner’s findings as to other limitations in claim 1. We do not review these new arguments. See 37 C.F.R. § 41.41; Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). Appellant has not identified a reversible error in the Examiner’s rejection of claim 1. Claim 2 To reject claim 2, the Examiner adds Portyrata. Final Act. 3. The Examiner acknowledges that neither Fujita nor Baker discloses a pipe piece that “opens into the suction opening and traverses the prechamber, and which is supported on the bottom plate, and the lateral surface of which has apertures opening into the prechamber,” but finds that Portyrata teaches such a pipe piece as shown at 14 in Figures 1 and 5. Final Act. 3. Here we only address Appellant’s arguments that relate to the Examiner’s rejection of claim 2. The other arguments do not identify a reversible error in the Examiner’s rejection of claim 2. In the argument that is relevant, Appellant contends that none of the references “would have been arguably understood to have arguably suggested at least the recited pipe Appeal 2020-005556 Application 15/559,316 6 piece,” but Appellant does not specifically point out any error in the Examiner’s finding that Portyrata’s liquid return 14 has the necessary pipe piece structure. Appeal Br. 20. Thus, Appellant has not identified a reversible error in the Examiner’s rejection. Claim 3 To reject claim 3, the Examiner relies on Fujita, Baker, and Diamond. Final Act. 3. Appellant makes no relevant arguments against this rejection. Appeal Br. 22. Neither Appellant’s arguments against the rejection of claim 1 nor Appellant’s argument that the ordinary artisan would not have used Diamond’s ion exchange resin address the Examiner’s findings and conclusion relying on Diamond. The Examiner does not propose to include Diamond’s ion exchange resin in the filter device of Fujita or Fujita as modified by Baker. Appellant has not identified a reversible error in the Examiner’s rejection of claim 3. CONCLUSION The Examiner’s decision to reject claims 1–3 is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Fujita, Baker 1 2 103 Fujita, Baker, Portyrata 2 3 103 Fujita, Baker, Diamond 3 Appeal 2020-005556 Application 15/559,316 7 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Overall Outcome 1–3 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation