Ex Parte Johnson

Board of Patent Appeals and Interferences

Apr 17, 2009

10960482 (B.P.A.I. Apr. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER M. JOHNSON
____________

Appeal 2009-2236
Application 10/960,482
Technology Center 1700
____________

Decided:1 January 17, 2009
____________

Before TERRY J. OWENS, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/960,482

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Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
I. STATEMENT OF THE CASE
The invention relates to a filter assembly for an electronic enclosure in
which gas travels from an interior of the enclosure to a filter media or vice
versa, along a diffusion channel disposed intermediate the electronic
enclosure and the filter media. (Spec. 1, ll. 11-14). Claim 1 is illustrative of
the subject matter on appeal:
1. A filter assembly for use in an electric enclosure, the filter
assembly comprising:

a body configured for receiving an adsorbent material;

an opening in the body configured to receive the adsorbent material,
the opening containing a flange for securing an impermeable material over
the opening;

a diffusion channel positioned within the flange; said diffusion
channel configured to provide a gaseous communication between the interior
of the electronic enclosure and adsorbent material positioned within the
body.

Appellant requests review of the sole rejection maintained by the
Examiner, namely the rejection of claims 1-3 under 35 U.S.C. § 102(e) as
being anticipated by U.S. Patent No. 6,709,498 B2, issued March 23, 2004,
to Tuma.
II. ISSUE ON APPEAL
The dispositive issue on appeal arising from the contentions of
Appellant and the Examiner is: has the Appellant shown that the Examiner
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reversibly erred in finding that diffusion channel 30a, as taught by Tuma, is
a “diffusion channel configured to provide gaseous communication between
the interior of the electronic enclosure and adsorbent material positioned
within the body,” as recited in claim 1?
III. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the issue
on appeal:
1. In rejecting the claims, the Examiner states that “the flange has
diffusion channels (30a & 36a in Figs 3 & 4, col. 5, lines 25-44) configured
to provide gaseous communication between the interior of the electronic
enclosure and adsorbent material positioned within the body (see Abstract).”
(Ans. 3; see also, Response to Argument, Ans. 3-4).
2. The Examiner relies on adsorbent element 50a to teach the
“adsorbent material” recited in claim 1. (Ans. 3).
3. Diffusion channel 30a, as taught by Tuma, draws air via inlet
36a from a port from the exterior atmosphere into a disk drive enclosure.
The air travels the tortuous path of diffusion channel 30a and leaves
diffusion channel 30a via outlet 38a into air chamber 39a. From air chamber
39a, the air moves freely into the disk drive enclosure via mouth 33a.
(Tuma, col. 4, ll. 46-48, col. 5, l. 66 to col. 6, l. 16; Figure 3).
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Figure 3 is reproduced below:

Figure 3 depicts a bottom perspective view of a filter construction. (Tuma,
col. 3, ll. 38-41) (dashed arrows illustrating direction of air flow out of
diffusion channel 30a added).
4. The air in diffusion channel 30a does not come into contact
with adsorbent material 50a. (See Tuma, col. 5, l. 66 to col. 6, l. 16, Figure
3).
5. Instead, air flows to and through adsorbent element 50a via air
permeable membrane 60a positioned on the top side of the filter body.
(Tuma, col. 8, ll. 22-24; Figure 4).
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Figure 4 is reproduced below:

Figure 4 depicts an exploded top perspective view of the filter construction
of Figure 3. (Tuma, col. 3, ll. 42-43).
6. Tuma’s Abstract does not disclose any information regarding
the communication of diffusion channel 30a. (See generally, Tuma,
Abstract).
IV. PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In order to anticipate, the
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reference “must clearly and unequivocally disclose the claimed [invention]
or direct those skilled in the art to the [invention] without any need for
picking, choosing, and combining various disclosures not directly related to
each other by the teachings of the cited reference.” In re Arkley, 455 F.2d
586, 587 (CCPA 1972).
V. ANALYSIS
The Examiner has limited his findings to Tuma’s first embodiment,
particularly relying on Figures 3 and 4, and the teachings of Tuma’s
Abstract. (FF 1). However, in the first embodiment, diffusion channel 30a
does not provide communication between the adsorbent material 50a and the
interior of the enclosure 12. (FF 3-5). To the contrary, diffusion channel
30a communicates air from outside the disk drive enclosure to inside the
disk drive enclosure without coming into contact with the adsorbent
material. (FF 3-4). Further, Tuma’s Abstract does not disclose any
information regarding the communication of diffusion channel 30a. (FF 6)
The Examiner has not established that the structure of Tuma’s first
embodiment or a structure described in the Abstract of Tuma includes the
diffusion channel claimed. Instead, the Examiner has improperly attempted
to pick and choose disclosures from the Abstract and the first embodiment
that are not directly related to each other to support an anticipation rejection
under 35 U.S.C. § 102. Arkley, 455 F.2d at 587.
Accordingly, we agree with the Appellant that the Examiner
reversibly erred in finding that Tuma describes a “diffusion channel
configured to provide gaseous communication between the interior of the
electronic enclosure and adsorbent material positioned within the body,” as
recited in claim 1. As is apparent from the record, the Examiner has not
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shown that Tuma describes a structure including each and every element as
set forth in the claim. Schreiber, 128 F.3d at 1477.
VI. CONCLUSION
For the reasons discussed above and provided by the Examiner, we do
not sustain the Examiner’s rejection of claims 1-3 under 35 U.S.C. § 102(e)
as being anticipated by Tuma.
VII. DECISION
We reverse the Examiner’s decision.

REVERSED

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