Ex Parte Foley et alDownload PDFPatent Trial and Appeal BoardAug 14, 201712692100 (P.T.A.B. Aug. 14, 2017) 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. 12/692,100 01/22/2010 Michael Foley PARC/0003 1129 24045 7590 08/16/2017 PARKER-HANNIFIN CORPORATION HUNTER MOLNAR CLARK FISTEK 6035 PARKLAND BOULEVARD CLEVELAND, OH 44124-4141 EXAMINER ANDERSON, DENISE R ART UNIT PAPER NUMBER 1779 NOTIFICATION DATE DELIVERY MODE 08/16/2017 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): patents @ parker. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL FOLEY, SYLVAIN CHAMPOUX, STEVE LEDUC, JONATHAN GEORGE, and ILKO PAUNOV Appeal 2016-002622 Application 12/692,1001 Technology Center 1700 Before PETER F. KRATZ, JEFFERY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from a non-final rejection of claims 1, 2, 4—11, and 13—19. We have jurisdiction under 35 U.S.C. § 6. Claim 1 illustrates the subject matter on appeal and is reproduced from the Appeal Brief below: 1. A filter housing comprising: a body having a first plenum defined therein; a cover plate coupled to the body and openable to allow main access to the first plenum; 1 The real party in interest is Parker Filtration Canada LLC. (App. Br. 3). Appeal 2016-002622 Application 12/692,100 an inlet port in fluid communication with the first plenum, the inlet port defined through one of the body or cover plate; and an outlet fluid manifold assembly coupled to the body, the outlet fluid manifold assembly comprising: a manifold block having a recess defining a second plenum, wherein surfaces of the recess have been machined to provide smooth clean surfaces for cleaning and inspection, and wherein the body is secured to the manifold block by a metal weld, wherein the metal weld is isolated from the second plenum; and a manifold cover enclosing the recess, the manifold cover removable to expose the second plenum for inspection from an exterior of the filter housing; a plurality of index tubes having a first end coupled to the manifold block and a second end extending into the first plenum, the second end of each index tube configured to engage with a filter element; and an outlet port in fluid communication with the second plenum, the outlet port defined through one of the manifold block or manifold cover. Appellants (see App. Br., generally) request review of the rejections under 35 U.S.C. § 103(a) of claims 1, 4, 5, and 15 as unpatentable over the combination of Minichello et al. (US 2007/0095746 Al, May 3, 2007), in view of Pett (US 4,319,997, March 16, 1982); claims 2, 6, 16, and 17 as unpatentable over the combination of Minichello, Pett, in further view of Fouarge et al. (US 2007/0066770 Al, Mar. 22, 2007); claims 7—11, 13, and 14 as unpatentable over the combination of Minichello, Pett, in further view of Fouarge; and claims 18 and 19 as unpatentable over the combination of Porter et al. (US 2002/0124961 Al, Sept. 12, 2002) and Pett, Appellants also request review of the rejection of claims 4, 5, and 8—10 under 35 U.S.C. § 112, second paragraph. (App. Br. 19-20). 2 Appeal 2016-002622 Application 12/692,100 OPINION REJECTION under § 112, second paragraph The Examiner asserts claims 4, 5, and 8—10 are indefinite because the location of the weld in claim 4 and the location of the outlet fluid plenum in claim 8 is unclear. (Non-Final Act. 9). We do not find the Examiner’s reasons for the rejection persuasive. We agree with Appellants that claims 4, 5 and 8—10 comply with 35 U.S.C. 112, second paragraph. Regarding claims 4 and 5 Appellants argue: Figure 4A illustrates the metal weld 436 “between the index tube and manifold block” as recited in claim 4. Here the “metal weld” in claim 4 particularly points out that it is “between the index tube and manifold block” such as metal weld 436 is located. Therefore, the “metal weld” of claim 4 is easily distinguished from the “metal weld” of claim 1. (Reply Br. 3; see also App. Br. 20). Appellants argue claims 8—10 comply with 35 U.S.C. § 112, second paragraph because: The term “output fluid plenum” was originally filed in the specification as “clean fluid plenum”. The clean fluid plenum is label 220 in Figures 8 and 9, and can be found in at least paragraphs [0059] and [0068] of the instant application. The term “clean fluid plenum” denotes direction of fluid flow through the housing. That is, fluid entering the “clean fluid plenum” 220 is “the filtered fluid”. (Reply Br. 3; see also App. Br. 21). A person of ordinary skill in the art would understand the claimed invention when viewed in the context of the Specification as explained by Appellants. 3 Appeal 2016-002622 Application 12/692,100 Accordingly, we do not sustain the rejection of claims 4, 5, and 8—10 under 35U.S.C. § 112, second paragraph. Prior Art Rejections I. Claims 1, 4, 5, and 15 are rejected under 35 U.S.C. § 103(a) as obvious over the combination of Minichello and Pett.2 Upon consideration of the evidence in this appeal record in light of the respective positions advanced by the Examiner and Appellants, we determine that Appellants have not identified reversible error in the Examiner’s determination that the subject matter recited in claims 1, 4, 5, and 15 would have been obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s § 103(a) rejection of the above claims. Appellants argue Minichello fails to teach or suggest “a manifold block . . . wherein the body is secured to the manifold block by a metal weld, wherein the metal weld is isolated from the second plenum,” as recited by claim 1. (App. Br. 13). Appellants argue Pett does not teach or disclose “a manifold block . . . wherein the body is secured to the manifold block by a metal weld, wherein the metal weld is isolated from the second plenum,” as recited by claim 1. (App. Br. 14). The Examiner found Minichello describes a filter housing comprising all the elements required by the claimed invention including a manifold block that is secured to the body utilizing a metal weld. (Non-Final Act. 10— 12). The Examiner recognizes Minichello does not disclose whether the 2 We limit our initial discussion to independent claim 1. 4 Appeal 2016-002622 Application 12/692,100 metal weld is isolated from the second plenum. The Examiner found Pett teaches various metal welds inclusive therein are welds which are isolated and exposed to various surfaces. (Non-Final Act. 12; Pett col. 2,11. 15—19 and Fig. 1). The Examiner concluded that a person of ordinary skill in the art would have found it obvious to utilize known welding techniques, including isolated welds, to join a body to a manifold block. (Non-Final Act. 12-13). Appellants’ arguments are not persuasive of reversible error. Appellants assert the Examiner is deconstructing the inventions of Minichello and Pett to remove the welds of the individual devices. This is not the case. The Examiner has identified prior art that evidences that welding techniques were known to produce welds which are isolated and exposed to various surfaces. A person of ordinary skill in the art would have reasonably expected that the welds which are isolated from the flow path, such as isolated from the second plenum, would not interfere with the flow of the material through the plenum. A person of ordinary skill in the art would have sufficient skill to form a filter housing comprising a manifold wherein the welds are isolated from the flow path including the second plenum so as to not have interference with the flow of the material through the plenum. See, e.g., KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”); In re Siebentritt, 'ill F.2d 566, 567-68 (CCPA 1967) (express suggestion to interchange methods which achieve the same or similar results is not necessary to establish obviousness); see also In re Kahn, 441 F.3d 977, 985- 5 Appeal 2016-002622 Application 12/692,100 88 (Fed. Cir. 2006); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.” (citations omitted)); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“ [T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. ’”). Appellants argue Minichello also fails to teach or suggest a manifold cover removable to expose the second plenum for inspection from an exterior of the filter housing and Pett does not cure this deficiency because Pett does not teach a manifold cover to be removable; rather, it discloses that the assembly can be completely deconstructed if clamping means 14 is removed. (App. Br. 15—16). Appellants’ arguments are not persuasive of reversible error. As expressed by the Examiner, Answer 26, a person of ordinary skill in the art would have recognized how to make a manifold cover removable. A person of ordinary skill in the art would have recognized if the cover of Minichello was made removable it would allow exposure of the second plenum for inspection. Accordingly, we are of the opinion that one of ordinary skill in this art following the combined teachings of Minichello, and Pett would have reasonably arrived at placing a removable coverto provide access to the 6 Appeal 2016-002622 Application 12/692,100 second plenum without recourse to Appellants’ Specification. See, e.g., KSR supra. Appellants have not directed us to evidence that the removable cover provides unexpected results. It is noted that Appellants’ arguments presented in the Briefs are directed to a filter housing comprising a manifold block. The subject matter of claim 15 does not specify the filter housing comprising a manifold block. Thus, Appellants’ arguments are not directed to the subject matter of claim 15. II. Claims 2, 6, 16, and 17 are rejected under 35 U.S.C. § 103(a) as obvious over the combination of Minichello, Pett, and Fouarge. Appellants argue Fouarge fails to cure the deficiencies of Minichello in view of Pett with respect to independent claims 1 and 15. (App. Br. 16). Because we are unpersuaded of reversible error in the Examiner’s rejection of claim 1, Appellants’ position as to this rejection is also without merit. Accordingly, we sustain the rejections of claims 2, 6, 16, and 17 under 35 U.S.C. § 103(a). 7 Appeal 2016-002622 Application 12/692,100 III. Claims 7—11, 13, and 14 are rejected under 35 U.S.C. § 103(a) as obvious over the combination of Minichello, Pett, and Fouarge. Appellants argue Minichello fails to teach or suggest that the Figure 1 embodiment could be operated in either direction, nor did it replicate the figure with the inlet and outlet arrows reversed. (App. Br. 17). We agree with the Examiner that Appellants’ arguments directed to operation of the inlet port and outlet port are not directed to a structural difference between the claimed invention and Minichello. (Ans. 29—30). Appellants have not explained a difference in the structural elements. Language in an apparatus claim directed to the function, operation, intent-of- use, and materials upon which these apparatus components work that does not structurally limit the apparatus components or patentably differentiate the claimed apparatus from an otherwise identical prior art apparatus will not support patentability. See, e.g., In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 940 (CCPA 1963); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971). Appellants repeat the argument above that Minichello also fails to teach or suggest a manifold cover removable to expose the second plenum for inspection from an exterior of the filter housing and Pett does not cure this deficiency. (App. Br. 17—18). Appellants’ arguments are not persuasive of reversible error for the reasons presented above. 8 Appeal 2016-002622 Application 12/692,100 IV. Claims 8—11, 13, and 14 rejected under 35 U.S.C. § 103(a) as obvious over Minichello in view of Pett, in further in view of Fouarge, as evidenced by the 2007 ASME Boiler and Pressure Vessel Code. Appellants argue Fouarge fails to cure the deficiencies of Minichello in view of Pett with respect to independent claim 7. (App. Br. 19). Because we are unpersuaded of reversible error in the Examiner’s rejection of claim 1, Appellants’ position as to this rejection is also without merit. Accordingly, we sustain the rejections of claims 8—11, 13, and 14 under 35 U.S.C. § 103(a). V. Claims 18 and 19 rejected under 35 U.S.C. § 103(a) as obvious over the combination of Porter and Pett. Appellants argue Porter in view of Pett fails to teach or suggest a “wherein any metal welds that can come into contact with fluid within an outlet fluid plenum have surface material removed to make an exposed surface of the metal weld topographically consistent with adjoining surfaces of the outlet fluid plenum” or “plurality of separate filter housings coupled to an outlet fluid manifold through a plurality of index tubes,” as recited by claims 18 and 19. (App. Br. 19-20). Appellants argue Porter is directed to manifold fluid delivery systems for plasma processing chambers which is different from filters used in engine oil systems and, therefore, is non- analogous to a filter assembly. (App. Br. 19). Appellants’ arguments are not persuasive of reversible error. The Examiner found Porter describes a housing of flow processing devices (filter housing) comprising all the elements required by the claimed invention 9 Appeal 2016-002622 Application 12/692,100 including a manifold block that is secured to the body utilizing a metal weld. (Non-Final Act. 26—28). The Examiner recognizes Porter does not disclose an outlet fluid plenum having surface material removed to make an exposed surface of the metal weld topographically consistent with adjoining surfaces of the outlet fluid plenum. The Examiner found Pett teaches various metal welds inclusive therein are welds which “have surface material removed to make an exposed surface of the metal weld topographically consistent with adjoining surfaces.” (Non-Final Act. 27; Pett col. 2,11. 15—19 and Fig. 1). The Examiner concluded that a person of ordinary skill in the art would have found it obvious to utilize the known technique of polishing outlet fluid manifolds to have surface finishes of 16 rms in order to avoid particulate entrapment, as taught by Porter. (Non-Final Act. 27). Appellants’ analogous art arguments are not persuasive of reversible error. We agree with the Examiner Porter is analogous art to the present invention. (Ans. 33). According to the present Specification || 1 and 2, the general field for the present invention is directed to filter systems generally not specifically for engines. Consequently, prior art which describes filtering systems and associated devices would be within the same field of endeavor as the present invention. Porter is directed to integrated fluid delivery systems inclusive therein are filters. (Porter 112). Thus, contrary to Appellants’ argument, the teachings of Porter are relevant to filter assemblies. Appellants have not adequately disputed the Examiner’s position that Porter describes including a manifold block that is secured to the body utilizing a metal welds. 10 Appeal 2016-002622 Application 12/692,100 Accordingly, for the foregoing reasons, and those presented by the Examiner, we sustain the Examiner’s prior art rejections of claims 1,2, 4— 11, and 13-19 under 35 U.S.C. § 103(a). CONCLUSION The obviousness rejections of claims 4, 5, and 8—10 under 35 U.S.C. §112, second paragraph are reversed. The obviousness rejections of claims 1, 2, 4—11, and 13—19 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)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation