Ex Parte Arita et al

Patent Trial and Appeal Board

Jun 28, 2018

13812606 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/812,606 01/28/2013 Keizou Arita
22850 7590 07/02/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
410317US41PCT 6488
EXAMINER
KURTZ, BENJAMIN M
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
patentdocket@oblon.com
oblonpat@oblon.com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEIZOU ARITA, KAZUO IRIT ANI,
YOSHIAKI NAKATA, and HIROKO MORINO
Appeal2017-000111
Application 13/812,606
Technology Center 1700
Before TERRY J. OWENS, JENNIFERR. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 2, and 4--13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In this Decision, we refer to the Specification filed January 28, 2013
("Spec."), the Final Office Action dated December 18, 2015 ("Final Act."),
the Advisory Action dated February 5, 2016 ("Adv. Act."), the Appeal Brief
filed March 7, 2016 ("Appeal Br."), the Examiner's Answer dated July 27,
2016 ("Ans."), and the Reply Brief filed September 27, 2016 ("Reply Br.").
2 Appellants identify the real party in interest as Kabushiki Kaisha Kobe
Seiko Sho. Appeal Br. 1.
Appeal 2017-000111
Application 13/812,606
The subject matter on appeal relates to a screen unit for removing
foreign matter from material kneaded by a kneading machine. Spec. ,r 1.
Independent claim 1, reproduced below from the Claims Appendix of the
Appeal Brief with emphasis added to highlight disputed limitations, is
illustrative of the claims on appeal.
1. A screen unit to be mounted to a housing, for
removing foreign matter from material, comprising:
a cartridge including a cylindrical cartridge body,
threaded base end side to be inserted into a housing, and a
cartridge bottom opposite said base end side, which cartridge
bottom closes an opening at a tip end side of the cartridge body;
and
a cylindrical screen pack capable of externally fitting
from the tip end side of the cartridge body and capable of
filtering the material, wherein
the cartridge body includes a hole-formed portion having a
plurality of through holes through which the material filtered by
the screen pack is allowed to pass, and a contacted outer surface
which is provided closer to said base end side than is the hole-
formed portion and is inclined so as to progressively expand
radially outwardly with decreasing distance to the base end,
wherein an inner diameter of the cartridge body is constant over
an entirety of the length of the hole-formed portion, and
wherein the cartridge body further includes a relief part that is
continuously tapered outward when viewed in a direction
toward the base end, to permit movement of the screen pack
onto the relief part, the tapered relief part being provided
between the contacted outer surface and the threaded base end
side and having a diameter larger than that of the base end side
to define a radially extending step between the larger diameter
relief part and the base end side, wherein the radially
extending step is directly connected to both the tapered relief
part and the base end side, wherein said step is hidden behind
the most expanded portion of the contacted outer surface when
viewed from the tip end side, and
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Application 13/812,606
the screen pack has a contacting inner surface which can
closely contact with the contacted outer surface of the cartridge
when being pressed from the tip end side toward the base end
with the hole-formed portion covered from outside,
wherein the screen pack has a length such that the screen
pack externally fitting from the tip end side of the cartridge
body covers at least a portion of the relief part.
Appeal Br. 11-12 (Claims App.) (emphasis added).
DISCUSSION
The Examiner maintains the rejection of claims 1, 2, 4, and 5 under
35 U.S.C. § I02(b) as anticipated by Leonard et al. 3 (WO 2009/109435 Al,
published September 11, 2009) ("Leonard"). Ans. 2. The Examiner also
maintains the rejections under 35 U.S.C. I03(a) of claims 6-9 and 13 over
Leonard in view ofHeymans (US 5,279,733, issued January 18, 1994), and
claims 10-12 over Leonard in view of JP 47-039160 (published December
6, 1972) ("JP '160"). Ans. 4, 8.
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections."). After considering
the evidence presented in this Appeal and each of Appellants' arguments, we
are not persuaded that Appellants identify reversible error. Thus, we affirm
3 The Examiner and Appellants cite to the U.S. equivalent, US 8,465,654
B2, issued June 18, 2013. See Final Act. 2--4; Appeal Br. 6-9. We do the
same in this Decision.
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Application 13/812,606
the Examiner's rejections for the reasons expressed in the Final Office
Action, Answer, and below.
Appellants present separate patentability arguments for claims 1 and
13. See Appeal Br. 6-9. Accordingly, we will limit our discussion in this
Decision to those claims.
Claims 1, 2, and 4-12
The Examiner finds that Leonard teaches claim 1 's screen unit
including a cartridge with core tube 300 ( corresponding to claim 1 's
"cartridge body") and a threaded coupling means 350 ( corresponding to
claim 1 's "threaded base end side"), as shown in Figure 3 reproduced below.
Final Act. 2-3 (citing Leonard 10:60-63, 11:20-28, 62---65, Figs. 1--4) .
...... ~- -- ·- ........................... ._. ..... ~~ . ..._-... _ .... ~~-....... '-'-'-'·'-'-'-''-'-'-"
Leonard's Figure 3 provides a detailed depiction of core tube 300.
The Examiner finds that Leonard teaches that outer end surface 312 of
core tube 300 comprises beveled section 307 ( corresponding to claim 1 's
"tapered relief part") that has a higher thickness towards axial opening 308
than towards fluid permeable section 315, and teaches that beveled
section 307 optionally contacts end flange 340 ( corresponding to claim 1 's
"radially extending step") fixed to outer end surface 312. Final Act. 2-3
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Appeal 2017-000111
Application 13/812,606
(citing Leonard 10:60-63, 11:20-28, Fig. 3). The Examiner also finds that
Leonard teaches that the maximum diameter (Dmax) of core tube 300 at
extremity outer surface 312, comprising beveled section 307, may be in the
range of 10.4 mm to 50.5 mm, and the diameter of end flange 340 is about
50 mm. Final Act. 3 (citing Leonard 11:29-31, 12:1-3). Although not
depicted in Leonard's Figure 3, based on Leonard's teachings, the Examiner
finds that one of ordinary skill in the art would reasonably infer that beveled
section 307 (tapered relief part) is
continuously tapered outward when viewed in a direction toward
the base end [(350)], the tapered relief part [(307)] being
provided between the contacted outer surface [ (312)] and having
a diameter larger than that of the base end side [(350)] to define
a radially extending step [(340)] between the diameter relief part
[(307)] and the base end side [(350)], wherein the radially
extending step [(340)] is directly connected to both the tapered
relief part [(307)] and the base end side [(350)].
Final Act. 3--4 ( emphasis and bracketed labels to elements shown in
Leonard's Figure 3 added). The Examiner's provides an annotated
Figure illustrating this structure in the Answer, which is reproduced below.
Ans. 10.
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Appeal 2017-000111
Application 13/812,606
Rar.!laH·t
step
340 307
I
/ 300
\
-..,. ..
FlangJ
/ BeveHed
The Examiner's annotated Figure above depicts an embodiment of
Leonard's structure with end flange 340 between the larger diameter beveled
section 307 ( tapered relief part) and base end side 350.
The Examiner takes the position that Leonard's entire end flange 340,
as shown in the annotated Figure above, corresponds to the "radially
extending step" of claim 1 's screen unit. Ans. 10.
Appellants argue that Leonard does not anticipate claim 1 because
Leonard's "radially extending step," which Appellants contend is only the
left radial side surface of Leonard's end flange 340, identified as "A" in
Appellants' annotated Figure reproduced below, is not "directly connected
to both the tapered relief part and the base end side." Appeal Br. 7; Reply
Br. 2-3. To the contrary, Appellants argue that the axially extending part
"B" of Leonard's flange 340 intervenes between tapered relief part 307 and
the base end side 350. Appeal Br. 7; Reply Br. 3.
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Application 13/812,606
Appellants' annotated Figure above illustrates Appellants'
interpretation of Leonard's structure depicted in the Examiner's annotated
Figure shown above.
As Appellants correctly point out, the dispute underlying the rejection
of claim 1 in the present appeal lies in the interpretation of the term "radially
extending step." Reply Br. 2. As such, we begin our analysis with claim
construction.
During prosecution, the PTO gives the language of the proposed
claims "the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Paragraph 7 6 of Appellants' Specification describes that in one
embodiment, as shown in Figures 6( a) and 6(b) of the present application,
reproduced below, "the outer diameter of the mounting portion 35 of the
cartridge 13 is smaller than the outer diameter of the contacted portion 34.
Thereby, between the contacted portion 34 and the mounting portion [35], a
step is formed." ( emphasis added). Paragraph 7 6 further discloses that "an
annular abutting surface 34a facing the base end side is formed." See
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Application 13/812,606
Spec. ,r 36 (describing mounting portion 35 at "the base end side"); see also
Spec. ,r 24 (describing the right side of the screen unit depicted in Fig. 2(a)
as "a base end side").
FIG.6
(a)
36a
1----1 s------...,,._,
i---36-..--------;-
(b)
\ )
i i 3Sa-·-
21 i4 ~
~18(16)
10(4)
Figures 6( a) and 6(b) of the present application depict the mounting
procedure of Appellants' screen unit. Figure 6(a) depicts the screen unit
before mounting and Figure 6(b) shows the screen unit after mounting.
Based on paragraph 76 of the Specification and Figure 6(a) of the
application, Appellants interpret claim 1 's "radially extending step" as
including only a radially extending surface (i.e., annular abutting surface 34a
shown in Appellants' Figures 6(a) and 6(b)), and not including any surfaces
adjacent to the radially extending surface. Reply Br. 3. This narrow
interpretation of "radially extending step," however, is not supported by
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Appeal 2017-000111
Application 13/812,606
Appellants' Specification. Rather, in the context of Appellants'
Specification, the broadest reasonable interpretation of the term "radially
extending step" is a structure formed between a mounting portion (e.g.,
threaded base end side 17) and a contacted portion ( e.g., tapered relief
part 24) of a cartridge, and defined by the mounting portion having an outer
diameter smaller than the outer diameter of the contacted portion, but is not
limited to the annular abutting surface of the contacted portion
(e.g., Appellants' Fig. 6(a), item 34a), as Appellants contend. See also
Spec. ,r 38, and Figure 2(b) of the present application (depicting a "step"
formed in the radial direction between the inner circumferential surface of
mounted portion 40 and the inner circumferential surface of communication
passage 11 ).
Having interpreted the claim language in dispute, we tum to the issue
of whether the Examiner reversibly erred in finding that Leonard teaches a
"radially extending step ... directly connected to both the tapered relief part
and the [tapered] base end side," as recited in claim 1. On this record, we
are not persuaded that the Examiner erred reversibly in finding that the
entire structure of Leonard's end flange 340 corresponds to claim 1 's
"radially extending step," and is directly connected to both beveled
section 307 ( corresponding to claim 1 's "tapered relief part") and coupling
means 350 ( corresponding to claim 1 's "base end side"). Accordingly, we
sustain the rejection under 35 U.S.C. § I02(b) over Leonard.
Because Appellants do not present separate arguments for the
patentability of claims 2, 4, and 5 rejected under 35 U.S.C. § I02(b) over
Leonard, claims 6-9 rejected under 35 U.S.C. § I03(a) over Leonard and
Heyman, or claims 10-12 rejected under 35 U.S.C. § I03(a) over Leonard
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Application 13/812,606
and JP '160, and rely on the arguments discussed above with regard to
independent claim 1, we also sustain the rejections of those claims.
Claim 13
Claim 13 is reproduced from the Claims Appendix of the Appeal
Brief with emphasis added to highlight key disputed limitations.
13. A screen unit for removing foreign matter from
material, comprising:
a cartridge including a cylindrical cartridge body and a
cartridge bottom which closes an opening at a tip end side of
the cartridge body;
a cylindrical screen pack capable of externally fitting
from the tip end side to the cartridge body and capable of
filtering the material; and
a pressing mechanism for pressing the screen pack from
the tip end side toward the base end with respect to the
cartridge,
wherein the cartridge body includes a hole-formed
portion having a plurality of through holes through which the
material filtered by the screen pack is allowed to pass, and a
contacted outer surface which is provided closer to a base end
side than is the hole-formed portion and inclined so as to
expand radially outwardly with decreasing distance to the base
end, wherein an inner diameter of the cartridge body is constant
over an entirety of the length of the hole-formed portion, and
wherein the cartridge body further includes a relief part that
permits movement of the screen pack onto the relief part, the
relief part being provided between the contacted outer surface
and the base end side, and
the screen pack has a contacting inner surface which can
closely contact with the contacted outer surface of the cartridge
when being pressed from the tip end side toward the base end
with the hole-formed portion covered from outside,
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Application 13/812,606
wherein the screen pack has a length such that the screen
pack externally fitting from the tip end side of the cartridge
body covers at least a portion of the relief part,
wherein the screen pack includes a screen pack body
capable of externally fitting to the cartridge body, and a screen
pack bottom which closes an opening at a tip end side of the
screen pack body,
the pressing mechanism includes a bolt member and a nut
member, which are capable of screwing each other so as to
generate a force in a direction to press the screen pack bottom
toward the base end with respect to the cartridge bottom,
a washer is provided between a head of the bolt member
and the bottom of the screen pack,
wherein the washer has an outer diameter equal to or
larger than the outer diameter of the bottom of the cartridge
body.
Appeal Br. 14--15 (Claims App.) (emphasis added) ..
The Examiner finds, and Appellants do not dispute, that Heyman
teaches a washer provided between a head of the bolt member and the
bottom of the screen pack as recited in claim 13. Compare Final Act. 7
(citing Heyman's Figs. 1-3), with Appeal Br. 9-10. The Examiner,
however, acknowledges that Heymans does not teach the washer having an
outer diameter equal to or larger than the outer diameter of the bottom of the
cartridge body, but finds that the recitation of the washer with the recited
outer diameter "is merely a recitation of a change in the size of the washer of
Heymans." Final Act. 8.
The Examiner takes the position that
where the only difference between the prior art and the claims
was a recitation of relative dimensions of the claimed device and
a device having the claimed relative dimensions would not
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Application 13/812,606
perform differently than the prior art device, the claimed device
is not patentably distinct from the prior art device.
Id. (citing Gardner v. TEC Systems, Inc., 725 F.2d 1338 (1984)). The
Examiner finds that the washer in Appellants' screen unit "merely holds the
screen pack from the tip end side." Final Act. 8. The Examiner finds that
Appellants have not provided a sufficient showing that a washer with the
recited dimensions "would perform any differently as the washer would still
be able to hold the screen pack from the tip end side to prevent the screen
pack from coming out of the cartridge." Id. at 8-9.
Appellants argue that their Specification provides a functional purpose
to the claimed dimensions of the washer-"the washer 27 can prevent the
screen pack 14 from coming out of the cartridge 13 to the tip end side
thereof." Appeal Br. 9 ( citing Spec. ,r 48) ( emphasis added). Thus,
Appellants contend that the recited diameter of the washer is significant and
represents an unobvious modification. Id.
Appellants' argument is not persuasive of reversible error. The
Examiner finds, and Appellants do not dispute, that one of ordinary skill in
the art would readily recognize that the washer is necessary to hold the
screen pack in place and prevent it from coming out of the cartridge, which
would be detrimental to the operation of the filter. Compare Adv. Act. 4,
with Appeal Br. 9-10. On this record, Appellants do not direct us to
sufficient evidence that indicates that a washer with a larger outer diameter
would perform better or differently than ( e.g., would not prevent the screen
pack from coming out of the cartridge) a washer with a smaller outer
diameter. In fact, as the Examiner explains, Appellants' Specification
discloses an embodiment where its washer 27 has an outer diameter smaller
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Application 13/812,606
than the outer diameter of the cartridge, which appears similar to Heyman' s
washer diameter. Final Act. 13; compare Spec. ,r 57, Figs. 3b, with Heyman
Figs. 1, 3.
Appellants argue that "due to the small size of the washer in Fig. 3 (b ),
the screen cannot be well gripped by the washer and the screen pack cannot
be prevented from coming out of the cartridge." Appeal Br. 10. This
argument is not supported by factual evidence. Arguments of counsel
cannot take the place of evidence in the record. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) ("An assertion of what seems to follow from
common experience is just attorney argument and not the kind of factual
evidence that is required to rebut a prima facie case of obviousness.").
For the reasons above, we are not persuaded that the Examiner erred
in concluding that it would have been an obvious matter of design choice to
have modified the outer diameter of Heyman's washer, and that such
modification would have been a mere change in size, which is generally
recognized as being within the level of ordinary skill in the art. See Final
Act. 8. Likewise, we are not persuaded that Heyman's washer is incapable
of performing as claim 13 'swasher, or that the dimensions of the outer
diameter of the washer of claim 13 are critical or achieve an unexpected
result when compared to washers with other outer diameters. See In re Chu,
66 F.3d 292, 298-9 (Fed. Cir. 1995) ("design choice" is appropriate where
the applicant fails "to set forth any reasons why the differences between the
claimed invention and the prior art would result in a different function or
give unexpected results.") (citing In re Rice, 341 F.2d 309 (CCPA 1965)
("Appellants have failed to show that the change [in the claimed invention]
as compared to [the reference], result in a difference in function or give
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Application 13/812,606
unexpected results."); In re Kuhle, 526 F.2d 553,555 (CCPA 1975) ("Use of
such means of electrical connection in lieu of those used in the references
solves no stated problem and would be an obvious matter of design choice
within the skill in the art." ( citations omitted)). Consequently, we sustain
Examiner's§ 103(a) rejection of claim 13 over Leonard in view of Heyman.
DECISION
The rejection under 35 U.S.C. § 102(b) of claims 1, 2, 4, and 5 over
Leonard is affirmed.
The rejections under 35 U.S.C. § 103(a) of claims 6-9 and 13 over
Leonard in view of Heymans, and of claims 10-12 over Leonard in view of
JP ' 160 are affirmed.
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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