Ex Parte Ottesen et alDownload PDFPatent Trial and Appeal BoardMar 23, 201613385240 (P.T.A.B. Mar. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/385,240 7590 John E. Menear FILING DATE 02/09/2012 03/23/2016 1200 Capitola Road, #4 Santa Cruz, CA 95062 FIRST NAMED INVENTOR Larry M. Ottesen 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. JM013l12TES 5633 EXAMINER ORLANDO, AMBER ROSE ART UNIT PAPER NUMBER 1776 MAILDATE DELIVERY MODE 03/23/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LARRY M. OTTESEN and JAMES M. HARRIS Appeal2014-005143 Application 13/385,240 Technology Center 1700 Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's Final Action mailed August 14, 2013 ("Final Act."), finally rejecting claims 1-14, 16, 17 and 19. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, they are the real parties in interest (Appeal Br. 1 ). Appeal2014-005143 Application 13/385,240 CLAHvIED SUBJECT ivIATTER Appellants' invention is directed to an illuminating filter which provides both clean air and light to a particle controlled environment (Abstract). According to Appellants, integration of filtration and lighting simplifies the design of cleanrooms, mini-environments and clean zones (id.). Details of the claimed invention are set forth in representative claim 1, which is reproduced below from the Claims Appendix of the Appeal Brief: 1. An illuminating filter comprising: (1) one or more sections of filter media, (a) which remove particles from a gas flowing through said filter media; (2) a filter frame, (a) which has an inlet plane through which unfiltered air or gas enters, (b) which has an outlet plane through which filtered air is delivered, ( c) which supports said filter media, and ( d) which joins to said filter media with adhesive seals; (3) one or more illumination segments (a) which are disposed within the volume of said illuminating filter, (b) which include light emitters, (i) wherein said light emitters are also disposed within said volume of said illuminating filter, (ii) wherein no portion of said light emitters extends outward beyond said inlet plane or said outlet plane of said illuminating filter, and ( c) which direct light to a filtered work space; ( 4) electrical wiring to power said light emitters (a) which is partly disposed within said illumination segment; and (5) adhesive seals for connecting said one or more illumination segments to said filter media. (indenting and reference numerals added). 2 Appeal2014-005143 Application 13/385,240 REJECTIONS I. Claims 1-12, 14, 16, 17, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ludwig2 in view ofWelch. 3 II. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Ludwig in view of Welch and Gagas. 4 DISCUSSION Appellants' arguments are all directed to claim 1 (see, e.g. Appeal Brief 5). Accordingly, our analysis will focus on the rejection of claim 1 over Ludwig in view of Welch. The Examiner finds that Ludwig discloses each element of claim 1, except that Ludwig does not disclose a filter frame which joins to the filter media with adhesive seals (Final Act. 3, citing Ludwig, FIG. 13). The Examiner further finds that Welch discloses a filter frame which joins to filter media with adhesive seals (Welch, 17: 12-24), and that it would have been obvious to have modified Ludwig to include a filter frame which joins to the filter media with adhesive seals so as to secure the filter within the filter frame and prevent air leakage while in use (Final Act. 3--4). Appellants challenge several of the Examiner's factual findings regarding Ludwig's disclosure. In particular, Appellants contend that Ludwig 2 Ludwig et al., U.S. Patent No. 5,613,759, issued March 25, 1997. 3 Welch et al., U.S. Patent No. 6,932,850 Bl, issued August 23, 2005. 4 Gagas et al., U.S. Patent Pub. 2006/0278215 Al, published December 14, 2006. (Both the Final Action and the Answer mistakenly identify Gagas as 2008/0278215 Al. That document, however, is not the document referenced by the Examiner. The correct publication number is shown in the list of references considered by the Examiner in the Non Final Office Action, and dated March 19, 2013. 3 Appeal2014-005143 Application 13/385,240 does not disclose the following elements from claim 1: (1) adhesive seals for connecting said one or more illumination segments to said filter media (Appeal Br. 9--11 ); (2) illumination segments which are disposed within the volume of said illuminating filter (Appeal Br. 12-16); and (3) electrical wiring which is partly disposed within the volume of a filter (Appeal Br. 16-17). With regards to the first limitation ("adhesive seals for connecting one or more illumination segments to said filter media"), the Examiner finds: The Ludwig et al. reference discloses adhesive seals for connecting said one or more illumination segments to said filter media (figure 13, object 224). The adhesive seal (224) connects the illumination segment (270) to filter panel (12) and therefore also to the filter obviously depicted within the filter panel. A filter media is clearly shown (by the zig zag line) to be located within the confines of the filter panel (12). (Ans. 7). An annotated version of Ludwig's FIG. 13, which is cited by the Examiner as supporting these findings, is reproduced below: FIG. i3 12 4 Appeal2014-005143 Application 13/385,240 An annotated version of Ludwig's FIG. 13 shows is a sectional end view of an interior rail of the Ludwig's apparatus with an enclosed light fixture. As may be seen in Ludwig's FIG. 13, illumination segment 270 is located adjacent to filter panel 12. The Examiner identifies seal 224 as the claimed adhesive seal. 5 Claim 1 recites "adhesive seals for connecting said one or more illumination segments to said filter media." Appellants accurately note (Appeal Br. 10) that Ludwig's seal 224 does not contact the filter media6 in Ludwig's device as illustrated in FIG. 13. Instead, seal 224 is connected to peripheral blade edge 222. The Examiner takes the position that seal 224 is "connected" to the filter media, even though the filter media is not directly joined to the seal because the claim does not explicitly recite the word "directly" in association with the word "connecting" (Ans. 7). Appellants argue that the correct construction of the phrase "for connecting" requires a direct bond between the filter media and the illumination segment (Reply Br. 7). Thus, the dispositive issue is whether the claim limitation "adhesive seals for connecting said one or more illumination segments to said filter media" requires that the adhesive seal contact both the filter media and the illumination segment. "The PTO must give claims their broadest reasonable construction consistent with the specification .... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise 5 As will be addressed below, Appellants contend that seal 224 is a gel seal, not an adhesive seal (Appeal Br. 10, citing Ludwig, 7: 8-9). 6 Ludwig does not specifically identify the filter media (which forms part of filter panel 12) in FIG. 13. However, Appellants state- and the Examiner agrees (Ans. 7)-that the filter media in Ludwig's apparatus is the portion with the zig-zag lines: 5 Appeal2014-005143 Application 13/385,240 apply a broad interpretation." In re IC01V Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)(emphasis added). In this instance, the Specification does not explicitly define the meaning of the term "connecting." A dictionary definition for "connect" recites "to join or fasten together usually by something intervening. "7 This definition does not require a direct joining (i.e., with nothing intervening between the connected parts), and suggests that intervening parts are included within the definition. Thus, we conclude that the broadest reasonable interpretation of the claim phrase "adhesive seals for connecting said one or more illumination segments to said filter media" would not require a direct joining between the adhesive seal and the filter media. 8 With regards to Appellants' argument that Ludwig's seal 224 is gel seal, as distinguished from an adhesive seal. However, as noted by the Examiner, '7 -. .- • TTT -t , /""I , , I I • -t , I -t • , • I , '>,. ' lVlernam- w ebster.com ~http:; 1www.mernam-webster.co1ll/ 01ct10nary1 connect). 8 The Specification makes a number of references to attaching the filter media directly to the illumination segment: i-f 32 - "the illumination segment is attached to the filter media with an adhesive seal; i-f 45 - "An adhesive seal 17 A exists at both interfaces between the illumination segment 16 and filter media 17"; i-f 46 - "illumination segment 16 ... attaches directly to the filter media 17 with an adhesive seal 17 A"; i-f 49 -"When an illumination segment 19 divides filter media 23 into pieces, adhesive seals 24 at each interface are needed. The same adhesive normally used for attaching filter media to a filter frame may be used. Adhesive seals 24 may occur on the cut end or the pleat end of the filter media 23, depending on orientation." However, limitations appearing in the specification but not recited in the claim are not read into the claim. See E- Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). If prosecution continues, Appellants may wish to consider amending claim 1 to limit the claimed structure to one in which the adhesive seals are directly attached to the illumination segments and the filter media in order to try to distinguish the claimed structure from Ludwig. 6 Appeal2014-005143 Application 13/385,240 Ludwig's seal 224 is adhering to the filter frame and the illumination segment, and, therefore, may be considered to be an adhesive (Ans. 8). Moreover, Appellants have offered only attorney argument, not evidentiary support, in support of their contention that a person of skill in the art would have distinguished between a gel seal and an adhesive seal (see, Appeal Br. 10). Attorney argument cannot take the place of evidence in the record needed to support Appellants' argument. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Thus, on the present record, Appellants' have not shown error in the Examiner's finding that Ludwig's seal 224 corresponds to the claimed adhesive seal. Appellants also contend that Ludwig does not disclose "one or more illumination segments which are disclosed within the volume of said illuminating filter" (Appeal Br. 12-16, Reply Br. 8-9). Appellants argue that Ludwig's illumination segment is located "beside - not inside - the volume of the filter panel 12," while in a fully assembled version of Ludwig's "Light and Filter Support Structure" multiple filter panels 12 are present, and illumination segments are located between filter panels (Appeal Br. 12). However, claim 1 requires that the illumination segment be "disposed within the volume of said illuminating filter" and does not refer to a "filter panel." Appellants' repeated - and not incorrect - assertions that Ludwig's light fixture assembly is located separate and apart from the filter panel 12 (e.g. Reply Br. 8-9) is not pertinent to the question of whether Ludwig's structure meets the limitations of claim 1. The Specification describes what is meant by the volume of the illuminating filter: "the volume of space located within the filter's height, width, and length. Height is the distance between the filter's inlet and 7 Appeal2014-005143 Application 13/385,240 outlet planes. The inlet plane of the filter includes that outside surface of the filter which faces toward the inlet air. The outlet plane of the filter includes that outside surface of the filter which faces toward the outlet air. Width and length correspond to the perimeter. (Spec. i-f 22). Using this definition, the Examiner's position that the entire light and filter support structure as illustrated in Ludwig's FIG. 1 corresponds to the claimed illuminating filter (Ans. 8-9) is reasonable. As shown in Ludwig's FIG. 13, the bottom 270 of the light fixture does not extend below the bottom of the filter panel 12, which appears to be the outlet plane of the filter. Nor does the top of the light fixture extend above the top of the filter panel (i.e. the inlet plane of the filter). As shown in Ludwig's FIG. 1, the interior rails 16a (which correspond to the claimed illumination segments) are located within the perimeter 14 of the filter support structure (i.e. the illuminated filter). Accordingly, we determine that Appellants have not shown error in the Examiner's finding that the limitation "one or more illumination segments which are disclosed within the volume of said illuminating filter" is described by Ludwig. Finally, Appellants argue that Ludwig does not "disclose electrical wiring for the lights which is partly disposed within the volume of a filter" (Appeal Br. 16-17). However, claim 1 recites that the electrical wiring must be disposed "within said illumination segment," not "within the volume of a filter." Claim 1 does not recite the wiring being partly disposed within the volume of the filter. Thus, Appellants' arguments are not directed to the claimed structure. The Examiner has found, and Appellants' have not persuasively disputed, that Ludwig describes that the wiring 266 for its light 8 Appeal2014-005143 Application 13/385,240 fixture runs inside the illumination segment via channel 264 as shown in Ludwig's FIG. 13. Thus, we conclude that Appellants have not shown error in the Examiner's findings or conclusions that claim 1 would have been obvious over Ludwig in view of Welch. CONCLUSION We AFFIRM the rejection under 35 U.S.C. § 103(a) of claims 1-14, 16, 17, and 19. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation