Ex Parte Janikowski et al

Patent Trial and Appeal Board

Jan 28, 2014

11821894 (P.T.A.B. Jan. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT AND TRIAL APPEAL BOARD
____________

Ex parte ERIC JANIKOWSKI, KEVIN C. SOUTH, BARRY VERDEGAN,
ISMAIL BAGCI, HENDRIK AMIRKHANIAN,
MELVIN D. MCCORMICK and CHAD THOMAS

____________

Appeal 2013-000450
Application 11/821,894
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-000450
Application 11/821,894

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the Examiner’s decision
twice rejecting claim 1, the only pending claim.1 We have jurisdiction under
35 U.S.C. § 6.
According to the Specification, p. 2, the present invention relates to
dampening of vibrations in fluid filters, such as fuel filters, to improve the
efficiency of the filter. Claim 1 is reproduced below:
1. An apparatus, comprising: a fluid filter including:
a housing defining an interior space and extending from a mounting
interface to a dome, the mounting interface defining at least one inlet
for receiving fluid to be filtered and at least one outlet for discharging
filtered fluid, the dome defining an free end wall of the fluid filter
when the fluid filter is mounted at the mounting interface;

a filter element positioned in the interior space, the filter element
being structured to convert the liquid to be filtered to the filtered fluid
by passage therethrough; and

a vibration dampener positioned in the interior space between the free
end wall and the filter element, the vibration dampener including an
elastomeric element compressibly contacting the end wall, the
elastomeric element being configured to reduce vibration energy,

wherein the vibration dampener further includes at least one spring
connecting the filter element and the elastomeric element,

the at least one spring includes an upper spring portion that contacts a
lower end of the filter element, and

the elastomeric element includes an upper engagement end contacting
a lower spring portion of the at least one spring, a lower engagement

1 Appellants appeal from the Non-Final Office Action Mailed March 13,
2012.
Appeal 2013-000450
Application 11/821,894

3
end contacting the end wall, and a body defined between the upper
engagement end and the lower engagement end.

Appellants, App. Br. 9, request review of the following rejection from
the Examiner’s non-final Office action:2
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shaltis (U.S. 3,695,437) and Yang (Yang, 2005, Elsevier, 475-476).
OPINION
After review of the positions of the Appellants and the Examiner, we
REVERSE the Examiner's rejection for the reasons presented by Appellants.
We add the following.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “Rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also,
Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (“[T]he analysis that ‘should be made explicit’
refers not to the teachings in the prior art of a motivation to combine, but to
the court’s analysis.”).
Appellants have persuasively argued that the Examiner’s proposed
motivation for combining the applied prior art is not supported by the

2 The Examiner withdrew the rejections of claim 1 over Shaltis in view of
Vibrostop and the rejection of claim 1 over Shaltis in view of Vibrostop and
Yang. (Ans. 5).
Appeal 2013-000450
Application 11/821,894

4
evidence of record. The Examiner acknowledged that Shaltis does not
disclose a vibration dampener including an elastomeric element. The
Examiner found that Yang teaches damping is a technique used to control
vibration via energy dissipation and suggests two finite possible
combinations in the dynamic vibration adsorption system, i.e., Mass-Spring
or Spring-Mass. (Ans. 5-6; Non-final Office Action 4-6). From this
evidence the Examiner asserts that the claimed invention would have been
obvious. However, the Examiner has not provided a specific explanation or
directed us evidence that would have suggested the claimed apparatus
comprising a vibration dampener including an elastomeric element as
required by the claimed invention.
For the foregoing reasons and those presented by Appellants, we do
not sustain the Examiner’s rejection.

ORDER
The decision of the Examiner to reject claim 1 is:

REVERSED

lp