Ex Parte Janikowski et alDownload PDFPatent Trial and Appeal BoardJan 28, 201411821894 (P.T.A.B. Jan. 28, 2014) Copy Citation 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 Copy with citationCopy as parenthetical citation