Ex Parte Koch et al

Patent Trial and Appeal Board

Dec 12, 2018

13809849 (P.T.A.B. Dec. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/809,849 02/22/2013 Edwin Koch
86528 7590 12/14/2018
Slayden Grubert Beard PLLC
401 Congress Avenue
Suite 1650
Austin, TX 78701
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
50006.120550US 4647
EXAMINER
OLIVERA, ANGEL J
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
12/14/2018 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):
trosson@sgbfirm.com
patent@sgbfirm.com
dallen@sgbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWIN KOCH,
MATTHIAS SCHWENDER, and ANDREAS SCHMITZ
Appeal2018-000019
Application 13/809,849
Technology Center 1700
Before GEORGE C. BEST, A VEL YN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 7, 8, 11, 12, 16, and 17 of
Application 13/809,849 under 35 U.S.C. § 102(b) as anticipated and claims
4, 9, 10, and 13-15 under 35 U.S.C. § 103(a) as obvious. Final Act.
(January 20, 2017). Appellants 1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
1 Hydac Filtertechnik GmbH is identified as the real party in interest.
Appeal Br. 2.
Appeal2018-000019
Application 13/809,849
BACKGROUND
The '849 Application describes a filtering element comprising a
filtering material intended for the filtration of fluids such as hydraulic fluid.
Spec. 1. The filtering element further comprises at least one water indicator
that is provided at a location that comes into contact with the fluid during
filtration mode and that indicates the presence of water in the fluid in a
visually recognizable manner. Id.
Claim 1 is representative of the '849 Application's claims and is
reproduced below from the Claims Appendix:
1. A filtering element for filtering devices comprising:
a cylindrical filtering material for the filtration of fluids
defining an internal filtering cavity within the filtering
material;
a top and a bottom end cap as terminal encasements of said
filtering material; and at least one water indicator which
displays the presence of water in the fluid in a visually
recognizable manner, wherein
said at least one water indicator is provided on an outside of
one of said top and bottom end caps at a location coming
into contact with fluid during filtration mode.
Appeal Br. 18.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 7, 8, 11, 12, 16, and 17 are rejected under 35 U.S.C.
§ I02(b) as anticipated by Freeman. 2 Final Act. 4; Answer 2.
2 US 2005/0193623 Al, published September 8, 2005.
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Application 13/809,849
2. Claims 4, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Freeman and Levy. 3 Final
Act. 8; Answer 5.
3. Claims 13-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Freeman and Pall. 4 Final
Act. 1 O; Answer 7.
DISCUSSION
Rejection 1. The Examiner rejected the independent claims 1 and 17,
the only independent claims before us on appeal, as anticipated by Freeman.
Final Act. 4, Answer 2. Appellants present substantive arguments for the
reversal of the rejection of independent claim 1. See Appeal Br. 7-12.
Independent claim 1 7 is alleged to be patentable for at least the same reasons
that independent claim 1 is patentable. Id. at 13-14. For the purpose of this
opinion, therefore, we need only consider whether the Examiner properly
rejected claim 1 as anticipated by Freeman.
Appellants argue, inter alia, that the Examiner erred by finding that
Freeman describes a filtering element having at least one water indicator on
the outside of either the top or bottom end caps at a location coming into
contact with fluid during the filtration mode. Id. at 8-12. We agree that the
Examiner committed reversible error by so finding.
The resolution of this appeal depends upon the proper construction of
claim 1 of the '849 Application. See In re Paulsen, 30 F.3d 1475, 1479
3 GB 345,672 A, effective date March 23, 1931. Notice of References Cited
(June 5, 2015).
4 US 4,033,881, issued July 5, 1977.
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Application 13/809,849
(Fed. Cir. 1997) ("[T]o properly compare [the prior art] with the claims at
issue, we must construe the term [ in dispute] to ascertain its scope and
meaning."); see also Oakley and will, Inc. v. Sunglass Hut Int 'l, 316 F.3d
1331, 1339 (Fed. Cir. 2003) (explaining that anticipation and obviousness
require comparison of the properly construed claims to the available prior
art).
During prosecution, an application's claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been interpreted
by one of ordinary skill in the art at the time of the invention. Id. as the
Federal Circuit has explained:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is consistent with the
specification.
In re Smith Int'!, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (internal
quotation omitted); see also In re Baker Hughes, Inc., 215 F.3d 1297, 1303
(Fed. Cir. 2000) (the PTO cannot adopt a construction that is "beyond that
which was reasonable in light of the totality of the written description").
For the purpose of this appeal, we need only consider the proper
interpretation of the claim language "on an outside of one of said top and
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Application 13/809,849
bottom end caps" in claim 1. 5 We begin, as we must, by considering the
language of the claim itself.
In relevant part, claim 1 's filtering element comprises "a top and a
bottom end cap as terminal encasements of said filtering material." In
context, a person of ordinary skill in the art would understand that the term
"end cap" refers to a fitting that covers or closes the end of a tube. See, e.g.,
Webster's Ninth New Collegiate Dictionary 203 (1989) (defining cap as
"something that serves as a cover or protection esp. for a tip, knob, or and"
and "a fitting for closing the end of a tube"); Shorter Oxford English
Dictionary 341 ( 6th ed. 2007) ( defining cap as "A cap like part fitting over or
forming the top or end of an object; a caplike case; a device sealing the
opening of a bottle etc."). As part of that understanding, a person of
ordinary skill in the art would understand that an end cap typically has a
convex shape. This understanding is reinforced by claim 1 's description of
the top and bottom end caps as "terminal encasements." This is because the
person of ordinary a skill in the art would have understood that the use of the
term "encasements" means that the top and bottom end caps are part of a
structure that surrounds the filtering material. See, e.g., Webster's Ninth
New Collegiate Dictionary 409 (defining "encase" and "encasement");
Shorter OED 825 (same).
5 We are aware that the Examiner construed the claim term "water indicator"
by applying 35 U.S.C. § 112,, 6. Final Act. 2--4. We are also mindful that
Appellants dispute this claim interpretation. Appeal Br. 6. We, however,
need not resolve this dispute to decide the case before us. Thus, we express
no opinion regarding the proper interpretation of the claim term "water
indicator" or regarding whether this claim term should be interpreted by
application of§ 112,, 6.
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Application 13/809,849
A person of ordinary skill in the art would have interpreted the phrase
"on an outside" of a convex end cap as referring to a location on the
convex-rather than the concave-surface of the end cap. This is because
the end caps form terminal "encasements" of the filtering materials in this
context, a person having ordinary skill in the art would understand the term
outside as meaning on the exterior of the space defined by the end cap. See,
e.g., Shorter OED 2044 ( defining outside as "the outermost side or surface
of something; the exterior" ( emphasis added)).
The reasonableness of this interpretation is confirmed by reviewing
the '849 Application's Specification which describes the water indicator in
embodiments of the claimed invention as being located on the convex
surface of the end caps. See, e.g., Spec. 3-5; Figs. 1, 3, 4.
In view of the foregoing, we determine that the Examiner's claim
interpretation is not reasonable in view of Appellants' Specification. When
the proper claim interpretation is applied the Examiner's finding that
Freeman describes at least one water indicator "provided on an outside of
one of said top and bottom end caps" is erroneous. Accordingly we cannot
sustain the Examiner's rejection of claim 1.
For the reasons set forth above, we reverse the rejection of claim 1 as
anticipated by Freeman. Accordingly, we also reverse the rejection of
claims 2, 7, 8, 11, 12, and 16 as anticipated by Freeman because these claims
depend, either directly or indirectly, from claim 1. Furthermore, we reverse
the rejection of independent claim 17 as anticipated by Freeman for the same
reasons that we have reversed the rejection of independent claim 1.
Rejection 2. The Examiner rejected claims 4, 9, and 10 as
unpatentable over the combination of Freeman and Levy. Answer 5. These
claims depend, directly or indirectly, from claim 1. Because the Examiner
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Application 13/809,849
has not found that Levy describes the claim element whose absence from
Freeman led us to reverse the rejection of claim 1, we also reverse the
Examiner's rejection of claims 4, 9, and 10.
Rejection 3. The Examiner rejected claims 13-15 as unpatentable
over the combination of Freeman and Levy. Answer 7. These claims
depend, directly or indirectly, from claim 1. Because the Examiner has not
found that Levy describes the claim element whose absence from Freeman
led us to reverse the rejection of claim 1, we also reverse the Examiner's
rejection of claims 13-15.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1, 2,
4, and 7-17 of the '849 Application.
REVERSED
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