Ex Parte Pranger et al

Patent Trial and Appeal Board

Jan 11, 2019

14234062 (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/234,062 01/21/2014
151860 7590 01/15/2019
The Small Patent Law Group, LLC
225 S. Meramec Ave.
Suite 725
St. Louis, MO 63105
FIRST NAMED INVENTOR
Jason R. Pranger
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.
60750 (500-0373) 6790
EXAMINER
GONZALEZ, MADELINE
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
01/15/2019 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):
docket@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON R. PRANGER and RICHARD D. GJERDE
Appeal2018-003087 1
Application 14/234,062
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-202 under 35 U.S.C. § 103(a) as unpatenable over at
least the combined prior art of Kempa (US 4,250,037 issued February 10,
1981) and Rosenberg (US 3,696,932 issued October 10, 1972). We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
1 The real party in interest is stated to be Illinois Tool Works Inc. (Appeal
Br. 3).
2 Numerous other references were applied to various claims (Final Act. 7-
10). A discussion of these references is not necessary for the disposition of
this appeal
Appeal2018-003087
Application 14/234,062
Claim 1 is illustrative ( emphasis added to highlight key limitation in
dispute):
Claim 1. A filter assembly comprising: a hollow body
defining
a flow passage between its ends;
a porous filter element extending across said flow path
disposed obliquely in said hollow body between its ends, said
filter element integrated into said body, such that no other
element is found in said flow passage other than said filter
element, wherein said filter assembly is configured for filtration
regardless of direction of flow.
Claim 8 is similar to claim 1, reciting a "coupling filter" and "wherein
said coupling filter is configured for filtration regardless of the direction of
flow" (Appeal Br. 18; Claims Appendix). Claim 19 is directed to a method
of making a coupling filter, "said method of making enabling filtration by
said filter element regardless of direction of flow" (Appeal Br. 19, Claims
Appendix).
Appellants only present arguments directed to this common feature of
independent claims 1, 8 and 19 (Appeal Br. 4--6).
ANALYSIS
Upon consideration of the evidence in this appeal and each of
Appellants' contentions as set forth in the Appeal Brief filed Sept. 15, 2017,
as well as the Reply Brief filed Jan. 30, 2018, we determine that Appellants
have not demonstrated reversible error in the Examiner's rejection (e.g.,
Ans. 2-14 (mailed Dec. 18, 2017)). In re Jung, 637 F.3d 1356, 1365---66
(Fed. Cir. 2011) (explaining the Board's long-held practice of requiring
Appellants to identify the alleged error in the Examiner's rejection). We
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Appeal2018-003087
Application 14/234,062
sustain the rejection for the reasons expressed by the Examiner in the Final
Office Action and the Answer. We add the following for emphasis.
In assessing whether a claim to a combination of prior art elements or
steps would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,417 (2007). "[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." Id. at 418.
As found by the Examiner, there is no doubt that a skilled artisan
knew how to construct a filter element so as to enable fluid flow in either
direction, as exemplified in Rosenberg (col. 9, 11.40-42; Ans. 3, 12).
Appellants' argument that reversing the flow of the filter of Kempa
would have made the plumbing coupler of Kempa unsatisfactory for its
intended purpose is not persuasive of error in the Examiner's rejection
because it fails to adequately consider the prior art as a whole, and the
inferences that one of ordinary skill would have drawn therefrom, and thus
do not adequately address the Examiner's obviousness position (generally
Ans.). Specifically, the Examiner finds that Kempa teaches that its drainage
trap 140 is optional (Ans. 12, 13; Kempa col. 4, 1. 65 to col. 5, 1. 3). See In
re Keller, 642 F.2d 413, 425-26 (CCPA 1981) ("The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference .... Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art."); see also e.g., In re Fritch, 972 F.2d 1260,
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Appeal2018-003087
Application 14/234,062
1264---65 (Fed. Cir. 1992) (it is well established that in evaluating references
it is proper to take into account not only the specific teachings of the
references but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom).
As aptly pointed out by the Examiner, one of ordinary skill in the art
would have readily inferred that without the associated drainage trap, Kempa
teaches a structure that is indistinguishable from that claimed ( e.g., Ans. 12,
13; compare e.g. Fig 2 of Kempa to Appellants' Figs. 5, 8).
Claims directed to an apparatus must be distinguished from the prior
art in terms of structure. See In re Danly, 263 F.2d 844, 848 (CCPA 1959)
("Claims drawn to an apparatus must distinguish from the prior art in terms
of structure rather than function."); In re Gardiner, 171 F.2d 313, 315-16
(CCP A 1948) ("It is trite to state that the patentability of apparatus claims
must be shown in the structure claimed and not merely upon a use, function,
or result thereof."). Choosing to define an element functionally, i.e., by
what it does, carries with it a risk. Where there is reason to conclude that the
structure of the prior art is inherently capable of performing the claimed
function, the burden shifts to the applicant to show that the claimed function
patentably distinguishes the claimed structure from the prior art structure.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Appellants provide no convincing evidence that their "porous filter
element" has a structure different than Kempa's filter. In fact, Appellants'
"porous filter element" is situated within the flow path in a manner similar to
the filter element of Kempa, even more so when the drainage trap of Kempa
is eliminated as taught to be an option by Kempa, as discussed above.
Because the evidence supports the finding of the Examiner, the burden
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Appeal2018-003087
Application 14/234,062
shifted to Appellants to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure. Schreiber,
128 F.3d at 1478. Appellants provide no convincing evidence of such a
difference.
Accordingly, Appellants have not provided persuasive technical
rationale or any credible evidence to refute the Examiner's obviousness
determination (generally Ans.; Appeal Br.; Reply Br.). KSR, 550 U.S. at
416 (the predictable use of prior art elements according to known methods
for their established functions is likely to be obvious when it does no more
than yield predictable results). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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