Ex Parte Foley et al

Patent Trial and Appeal Board

Aug 14, 2017

12692100 (P.T.A.B. Aug. 14, 2017)

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).
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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.
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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.
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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-
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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
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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).
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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.
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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
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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.
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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
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