Ex Parte Backes et al

Patent Trial and Appeal Board

Nov 25, 2015

13215800 (P.T.A.B. Nov. 25, 2015)

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.
13/215,800 08/23/2011 Kari A. Backes MCA-631-2 US 2901
25182 7590 11/25/2015
EMD Millipore Corporation
290 CONCORD ROAD
BILLERICA, MA 01821
EXAMINER
CECIL, TERRY K
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
11/25/2015 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 KARI A. BACKES, GREGORY S. STRAEFFER,
and STEPHEN J. DZENGELESKI
____________

Appeal 2014-001797
Application 13/215,800
Technology Center 1700
____________

Before GEORGE C. BEST, MICHELLE N. ANKENBRAND, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–6. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Appellants’ invention relates to a filtration device comprising serially-
arranged filter layers, the upper filter layer (i.e., the filter layer nearest the
fluid inlet) of which includes a pressure-breachable seal that permits fluid to

1 Appellants identify EMD Millipore Corporation as the real party in
interest. App. Br. 2.
Appeal 2014-001797
Application 13/215,800

2
bypass the filter layer upon reaching a predetermined pressure differential.
Spec. 3:19–22, 4:21–24, and Abstract. Claim 1, the sole independent claim,
is representative of the claims on appeal, and is reproduced below from the
Claims Appendix to the Appeal Brief:
1. A serial-flow filtration device comprising:
a housing,
a fluid inlet,
a fluid outlet, and
a stack of serially-arranged filter layers including at least an
upper filter layer located nearest the fluid inlet and a rearmost
filter layer located nearest the fluid outlet, and an additional
filter layer or layers between the upper and rearmost layers,
each filter layer comprised of a filter medium being made from
the same or different selectively-permeable filtration material,
each adjacent filter layer being separated proximately either by
an air space or by a spacer comprising a screen capable of
allowing substantially non-selective passage of fluid
therethrough and laterally;
the upper filter layer dividing the interior of the housing into an
upstream zone and a downstream zone, the fluid inlet capable
of introducing fluid into the upstream zone, the fluid outlet
capable of releasing fluid from the downstream zone out of the
housing;
the upper filter layer located nearest the fluid inlet and being
held by a substantially rigid framework, the upper filter layer
and the substantially rigid framework combining to form an
upper filter component, wherein the upper filter layer abuts the
housing to form a seal therewith, the seal being breachable
upon attainment of a predetermined pressure differential,
thereby allowing the substantially non-selective passage of
fluid; and
the rearmost filter layer located nearest the fluid outlet being
positioned in the downstream zone and configured such that,
upon attainment of the same aforementioned pressure
differential across the rearmost filter layer, the rearmost filter
Appeal 2014-001797
Application 13/215,800

3
layer will not allow non-selective passage of fluid therethrough
or beyond.
The References
Swanson US 2,151,538 Mar. 21, 1939
Doyle US 2003/0178351 A1 Sept. 25, 2003
Dockery US 6,638,423 B2 Oct. 28, 2003
The Rejections
1. Claims 1, 2 and 4–6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Swanson in view of Dockery;
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Swanson in view of Dockery and Doyle; and
3. Claims 1, 2, and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Swanson.2
OPINION
After having considered the evidence presented in this Appeal and
each of Appellants’ contentions, we are not persuaded that Appellants
identify reversible error in the appealed rejection, and we affirm the
Examiner’s § 103 rejections for the reasons expressed in the Final Action,
the Answer, and below.
Rejections 1 and 2
Appellants argue the claims of Rejection 1 as a group and do not
present any separate arguments for the patentability of the dependent claims.
App. Br. 6–10. In addition, although the Examiner applies an additional

2 The Examiner’s Answer, dated September 9, 2013, includes this new
ground of rejection. Appellants filed a Reply Brief on November 6, 2013,
which responds to, inter alia, the new ground of rejection. Reply Br. 10–12.
Appeal 2014-001797
Application 13/215,800

4
reference to Rejection 2, Appellants contend only that the additional
reference does not overcome the deficiencies in the Rejection 1 combination.
Id. at 10. We, therefore, limit our discussion to representative claim 1,
which controls our rulings as to both grounds of rejection.
The Examiner finds that Swanson teaches all of the limitations of
claim 1, except that Swanson fails to teach a rearmost filter layer (i.e., the
layer located nearest the outlet) that will not allow a non-selective passage of
fluid therethrough (i.e., is not bypassable) upon reaching the predetermined
pressure differential that unseals the other filter layers. Final Act. (mailed
Sept. 6, 2012) 3 (citing Swanson Figs. 1–3); Ans. 3–4. Regarding this
deficiency, the Examiner finds that Dockery teaches a rearmost filter layer
(36) that is not bypassable upon reaching a predetermined pressure
differential. Final Act. 3; Ans. 3; Dockery 3:30–52, Figs. 2 and 3. The
Examiner concludes that it would have been obvious to modify Swanson’s
filtration device to include a rearmost filter layer that is not bypassable
because Dockery teaches the benefit of using such a filter layer to remove
coarse contaminants from the fluid when the filtration device is in bypass
mode. Final Act. 3–4; Ans. 3.
Appellants argue that modifying Swanson’s filter such that the
rearmost filter layer is not bypassable would render it unsatisfactory for its
intended purpose. App. Br. 9–10 (citing In re Gordon, 733 F.2d 900 (Fed.
Cir. 1984)). That purpose, according to Appellants, is “to insure a constant
supply of oil to the bearings or other parts of the vehicle, notwithstanding
the pads (16) are clogged with debris.” Id. at 9 (emphasis omitted; citing
Swanson 3:19–53).
Appeal 2014-001797
Application 13/215,800

5
We are not persuaded of reversible error in the Examiner’s rejection.
Although including a non-bypassable filter layer as the rearmost layer may
prevent unfiltered fluid from flowing through the layer continuously under
certain circumstances (i.e., when the layer becomes clogged), such a layer
will filter the fluid while allowing flow to continue, thereby providing the
benefit of removing contaminants and increasing the life of the fuel pump or
other pressure system used to circulate the fluid. See Dockery 3:63–4:5; see
also Ans. 5. A person of ordinary skill in the art would have understood and
weighed this tradeoff in benefits. Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit
comes at the expense of another benefit, . . . should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.
Cir. 2006) (“a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate the motivation to
combine”). Thus, we are not persuaded that modifying Swanson to make
the rearmost filter layer non-bypassable would have rendered the resulting
filter inoperable or unsatisfactory for its intended purpose (i.e., the modified
device would have functioned as a filter to remove foreign matter and
contaminants from the fluid). Swanson 1:15–19 (“One of the objects of the
invention is to provide a construction and arrangement wherein foreign
matter may be efficiently filtered out of the oil”). Accordingly, we affirm
the rejections of claims 1–6 under 35 U.S.C. § 103(a).
Appeal 2014-001797
Application 13/215,800

6
Rejection 3
Appellants argue the claims of Rejection 3 as a group and do not
present any separate arguments for the patentability of the dependent claims.
Reply Br. 10–12. We, therefore, limit our discussion to representative claim
1, and claims 2 and 4 stand or fall with claim 1.
As noted previously, the Examiner’s Answer includes a new ground
of rejection, rejecting the subject matter of claims 1, 2, and 4 as obvious over
Swanson. Ans. 4. The Examiner acknowledges that Swanson does not
specify a rearmost filter layer as recited in the claims. Id. The Examiner
concludes, however, that such a filter layer would have been obvious to one
of ordinary skill in the art given Swanson’s teaching that an additional
resistor can support the rearmost filter layer, thereby rendering the layer
non-bypassable upon reaching the predetermined pressure that unseals the
other filter layers. Id. (citing Swanson 2:42–44). The Examiner explains
that having the rearmost filter layer unseal at a higher pressure than the
pressure at which the upstream filter layers unseal (due to the presence of the
extra resistor) would have provided the benefit of allowing more time for
filter maintenance before unfiltered fluid flows into, and possibly damages,
the engine. Id.
Appellants argue that the rejection should be reversed because the
Examiner misapplies Swanson’s teachings. Reply Br. 11. In particular,
Appellants argue that Swanson’s filter is designed such that fluid bypass will
occur regardless of the number of resistors present, whereas the rearmost
filter as claimed “will not allow non-selective passage of fluid
therethrough or beyond.” Id. at 12.
Appeal 2014-001797
Application 13/215,800

7
We are not persuaded of error in the Examiner’s rejection because
Appellants’ argument is not commensurate in scope with the claim. Claim 1
recites “upon attainment of the same aforementioned pressure differential
across the rearmost filter layer, the rearmost filter will not allow non-
selective passage of fluid therethrough or beyond,” and not, as Appellants
contend, that the rearmost filter will never allow non-selective passage of
fluid therethrough or beyond. App. Br. 12 (emphasis added). Appellants do
not dispute that Swanson teaches using an additional resistor to support the
rearmost filter layer. Nor do Appellants challenge the Examiner’s finding
that a skilled artisan would have understood that using an additional resistor
to support the rearmost filter layer results in the rearmost filter layer
unsealing at a higher pressure than the upstream filter layers (i.e., 2 resistors
provide more resistance to unsealing than 1 resistor). Thus, contrary to
Appellants’ argument, the Examiner reasonably finds that the additional
resistor supporting Swanson’s rearmost filter layer will not allow non-
selective passage of fluid through the filter upon reaching the same pressure
differential that causes the upstream filter layers to unseal, as recited in
claim 1. Accordingly, we affirm the rejection of claims 1, 2, and 4 under
35 U.S.C. § 103(a).

DECISION/ORDER
The Examiner’s rejections of claims 1–6 under 35 U.S.C. § 103(a) 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