Ex Parte Hintenlang et al

Board of Patent Appeals and Interferences

Jul 23, 2007

10013123 (B.P.A.I. Jul. 23, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DIETER HINTENLANG,
DIETER UNRATH AND
HANS WIEGAND
____________

Appeal 2007-1399
Application 10/013,123
Technology Center 1700
____________

Decided: July 23, 2007
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Before EDWARD C. KIMLIN, CHARLES F. WARREN, and JEFFREY T.
SMITH, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-10. Claim 1 is
illustrative:
1. A method of producing a filter having radial pleats comprising:

pleating a starter filter sheet to form folds in the starter filter sheet,

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Application 10/013,123

the starter filter sheet having a first surface and a second
surface,

wrapping the pleated starter filter sheet around a core,

the core and the starter filter sheet interfaced with one another
in a flow-proof manner; and

joining a first fold and a second fold of the started filter sheet to create
a joined filter sheet,

wherein wrapping the pleated starter filter sheet positions the first fold
and the second fold along a radial axis of the core.

The Examiner relies upon the following references as evidence of
obviousness:
Bauer US 2,599,604 Jun. 10, 1952
Bauer US 3,025,963 Mar. 20, 1962
Jackson US 3,076,555 Feb. 5, 1963
McKinlay US 3,293,830 Dec. 27, 1966
Shikaya US 3,908,523 Sep. 30, 1975
Henschel, Jr. US 4,186,099 Jan. 29, 1980
Naruo US 4,876,007 Oct. 24, 1989
Olsen US 6,135,130 Nov. 13, 2001

Appellants' claimed invention is directed to a method of producing a
filter having radial pleats. The method entails wrapping a pleated started
filter sheet around a core and adjoining first and second folds of the sheet to
create a joined filter sheet. The first and second folds are positioned along a
radial axis of the core.

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The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 1, 2, 4, 5, 8, 10-12, 14, and 18-20 over Jackson in view of
Shikaya and Bauer '604,
(b) claim 3 over the stated combination of references further in view
of Henschel, Jr.,
(c) claims 6 and 15 over the stated combination of references further
in view of Olsen,
(d) claims 7 and 17 over the stated combination of references further
in view of McKinlay, and
(e) claim 16 over the stated combination of references further in view
of Bauer '963.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in complete agreement with the Examiner's
reasoned analysis and application of the prior art, as well as her cogent and
thorough disposition of the arguments raised by Appellants. Accordingly,
we will adopt the Examiner's reasoning as our own in sustaining the
rejections of record, and we add the following for emphasis only.1

1 We note that Appellants have not presented separate arguments for any
particular claim on appeal. Also, Appellants have not submitted separate
substantive arguments for the Examiner's separate § 103 rejections of claims
3, 6 and 15, 7 and 17, and 16. Appellants only state that Henschel, Jr.,
Olsen, McKinlay, and Bauer '963 do not remedy the asserted deficiency of
the rejection of claim 1over Jackson in view of Shikaya and Bauer '604.
Accordingly, we will limit our consideration to the Examiner's rejection of
claim 1, with which all the appealed claims stand or fall together.
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Application 10/013,123

Appellants do not dispute the Examiner's factual determination that
Jackson, like Appellants, "discloses forming a filter by folding a piece of
filter with the pleats running perpendicular to the longitudinal direction,
forming it into an annulus with the pleats extending radially, and bonding
the ends of the filter together" (Answer 3, citing Jackson at col. 1, ll. 38-47,
and col. 3, ll. 36-40). As acknowledged by the Examiner, Jackson then
positions a core into the center of the formed filter and forms a seal to the
core, unlike the claimed method of first wrapping the filter around the core
and joining first and second folds of the filter sheet. However, we fully
concur with the Examiner that Shikaya and Bauer '604 evidence the
obviousness of employing Appellants' wrapping method as an alternative to
Jackson's placing a core into an already formed filter having a central
aperture.
Appellants do not contest the Examiner's finding that Shikaya
discloses alternative methods of joining a pleated or corrugated cover to a
central core comprising either inserting the core into a pre-made cover or
winding the cover around a central core. Nor do Appellants dispute the
Examiner's finding that Bauer '604 discloses wrapping a filter around a core
(see Fig. 2). It is Appellants' contention that Shikaya is directed to a method
of making a liquid-tight cup and not a filter and, therefore, "one skilled in
the art of filter manufacture would not have looked to the cup forming
teachings of Shikaya" (Principal Br. 7, second para.).
In essence, it is Appellants' position that Shikaya is not combinable
with Jackson since it is non-analogous art. However, it is well-settled that
prior art is analogous if the references are directed to the same field of
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endeavor, or, are reasonably pertinent to addressing the same particular
problem. In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA
1979). In the present case, Jackson and Shikaya are reasonably pertinent to
the problem of joining a pleated sheet of material around an inner core, and
we agree with the Examiner that one of ordinary skill in the art would have
readily recognized the alternative methods of forming the pleated sheet in an
annular shape before positioning it around the core or wrapping the pleated
sheet around a core before bonding. We also agree with the Examiner that
Bauer '604 provides additional evidence of the obviousness of wrapping a
pleated sheet around a core before bonding, notwithstanding that the pleats
of the sheet are not along the radial axis of the core.
Appellants repeatedly state in the Principal and Reply Briefs that
claims 1, 10, 11, and 20 require wrapping a filter around a core such that its
ends are connected end-to-end (for example, see page 8 of Principal Br.,
second para.). However, neither claim 1, nor claims 10, 11, and 20, recite
that the wrapped sheet is connected end-to-end. Claim 1, for instance,
recites "joining a first fold and a second fold of the started filter sheet," with
no requirement for end-to-end connection.
Appellants also contend that "if it was so obvious to wrap a filter
having radial folds or pleats around a core and connect it end-to-end, why is
it that a single reference in the relevant field of endeavor disclosing a filter
wrapped end-to-end around a core, as required by the present claims, could
not be uncovered?" (Principal Br. 10, penultimate para.). There are any
number of reasons, of course, why the Examiner did not cite a patent with
such a teaching. However, one reason may very well be that any attempt to
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patent a modification of the Jackson invention by wrapping the pleated sheet
around a core before bonding was rejected as unpatentable under 35 U.S.C.
§ 103.
Manifestly, we do not subscribe to Appellants' argument that "the
Examiner's general underlying proposition that wrapping an article around a
core is generally a well-known alternative to inserting a core into a pre-made
article is fundamentally flawed" (Principal Br. 11, first para., last sentence).
In our view, one of ordinary skill in the art would have found it obvious to
perform a typical cost-benefit analysis in weighing the advantages and
disadvantages of the known alternative methods of joining a pleated sheet to
a central core.
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the inference of obviousness established by the
Examiner.
In conclusion, based on the foregoing and the reasons well-stated by
the Examiner, the Examiner's decision rejecting the appealed claims is
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)(iv)(effective Sept.
13, 2004).
AFFIRMED

cam

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