Ex Parte Tueshaus et al

Board of Patent Appeals and Interferences

Feb 3, 2009

10157537 (B.P.A.I. Feb. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RUDIGER TUESHAUS
and PATRICK MCGRENERA
____________

Appeal 2009-0666
Application 10/157,537
Technology Center 1700
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Decided: February 3, 2009
____________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1, 3-5, 8, 13, 15,
16, and 19-21. Claims 6, 7, 17, and 18 stand withdrawn from consideration.
Claim 1 is illustrative:
1. A screen assembly for filtering media, said screen assembly
comprising:

Appeal 2009-0666
Application 10/157,537

a first plurality of planar wires, said first plurality of planar wires
being formed so as to have a cross-section with at least one planar surface,
said at least one planar surface extending substantially along the length of
said first plurality of planar wires prior to being woven;

a second plurality of wires, said first plurality of planar wires being
interwoven with a second plurality of wires to form a first screen, said at
least one planar surface being continuous along each of said first plurality of
planar wires; and

at least one additional screen secured to but not interwoven with said
first screen.

The Examiner relies upon the following references as evidence of
obviousness:
Gisler US 2,723,032 Nov. 8, 1955
Sander US 2,926,785 Mar. 1, 1960
Malmendier US 4,749,007 Jun. 7, 1988
Johnson US 4,815,499 Mar. 28, 1989

Appellants' claimed invention is directed to a screen assembly
comprising a first screen formed from a first plurality of planar wires
interwoven with a second plurality of wires, and an additional screen
secured to the first screen. The additional screen is not interwoven with the
first screen. The screen assembly finds utility as a filtering median.
Appealed claims 1, 3-5, 8, 13, 15, 16, and 19-21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Sander in view of Gisler.
Claims 1, 3-5, 8, 13, 15, 16, and 19-21 also stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Malmendier or Johnson in view of the
admitted prior art.
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Appellants provided separate arguments for claims 15 and 19, as a
group, and claim 21. Accordingly, claims 1, 3-5, 8, 13, 16, and 20 stand or
fall together.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejections for essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.
We consider first the Examiner's rejection of the appealed claims over
Sander in view of Gisler. There is no dispute that Sander discloses a screen
assembly comprising a first plurality of planar wires interwoven with a
second plurality of wires that is used to filter media. As acknowledged by
the Examiner, Sander does not disclose an additional screen secured to the
interwoven screen. However, Gisler evidences that it was known in the art
to secure an additional screen to a woven screen wherein the additional
screen is not interwoven with the woven screen. Also, Appellants
acknowledge that it was known in the art to secure multiple screens that are
not interwoven together. Consequently, we fully concur with the Examiner
that it would have been obvious for one of ordinary skill in the art to secure
an additional screen to the woven screen of Sander in such a way that it is
not interwoven with the woven screen for the purpose of providing enhanced
filtration, stability and resistance to tearing.
Appellants maintain that "[i]t is not obvious to one of skill to modify
the Gisler device with an inherently weaker screen [of Sander]" (Principal
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Br. 12, last para.). However, Appellants' argument misses the thrust of the
Examiner's rejection, which is not to modify the screens of Gisler in
accordance with Sander. Rather, the rejection is based on the obviousness of
securing an additional screen to the woven screen of Sander.
Appellants also submit that "[t]he Sander slotted or slit screen in a
vibratory screen assembly will quickly wear and tear" (Principal Br. 13,
second para.). However, this argument is not germane to the appealed
claims, which are not limited by durability or to vibratory screens. As
pointed out by the Examiner, the appealed claims are sufficiently broad to
embrace a myriad of screen assemblies. Indeed, the appealed claims do not
recite a vibratory screen.
Separately argued claim 21 recites that "said first plurality of planar
wires each have an identical cross-sectional shape as compared to said
second plurality of wires." Appellants point out that "Sander requires that
the cross-sectional shape of his undulated transverse wires 2 be different
from that of the non-undulated transverse wires" (Principal Br. 15, fourth
para.). However, we find that it would have been obvious for one of
ordinary skill in the art to have the transverse wires 2 and 3 of Sander to be
of the same cross-section if willing to forego the advantage of using a larger
cross-section for the non-undulated wires 3, namely, to impart greater
resistance capacity in the transverse direction. It is well settled that the
omission of a feature disclosed by the prior art along with its attendant
function is a matter of obviousness for one of ordinary skill in the art. In re
Thompson, 545 F.2d 1290, 1294 (CCPA 1976); In re Kuhle, 526 F.2d 553,
555 (CCPA 1975). Moreover, as for the requirement of claims 5 and 19 that
the second plurality of wires have a cross-section with a second planar
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surface, it is a matter of obviousness for one with ordinary skill in the art to
modify the size, shape, or configuration of a known article or element in the
absence of unexpected results. See In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellants
have proffered no argument, let alone the requisite objective evidence,
pertaining to the criticality of the features recited in claims 5, 19, and 21.
Turning to the rejection of the appealed claims over either
Malmendier or Johnson in view of the admitted prior art, our reasoning is
essentially the same as that set forth above. Like Sander, both Malmendier
and Johnson disclose multiple screens interwoven together without the
securement of an additional screen that is not interwoven with the woven
screens. However, as discussed above, it was notoriously well known in the
art of making screens to secure an additional screen to woven screens
without weaving the additional screen with the woven screens.
Consequently, we find no error in the Examiner's determination that it would
have been prima facie obvious for one with ordinary skill in the art to
modify the screens of Malmendier and Johnson such that one of the screens
is secured to the assembly without interweaving it with another screen.
Appellants make the argument that "there is no evidence that vibratory
screens for oil wells have ever been interwoven together" (Principal Br. 17,
penultimate para.). However, as noted by the Examiner, the claims presently
on appeal do not define vibratory screens, or any screens for oil wells.
Appellants also contend that "[c]laims 1 and 13 specifically exclude
screens that are interwoven together, such as Malmendier and Johnson"
(Reply Br. 2, last para.). This is simply not the case. Although the claims
recite that the additional screen is not interwoven with the first screen, the
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"comprising" language of the claims "opens" the claims to other additional
screens that are either interwoven with the first screen, the additional screen
or each other.
Appellants also misconstrue the rejection by arguing that there is no
teaching that "Malmendier and Johnson may be constructed without
interweaving" (Reply Br. 3, first para.). The rejection is not based on
modifying the references such that there is no interweaving but, rather, the
obviousness of providing an additional screen that is secured to the woven
screen without interweaving.
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results, which
might serve to rebut the inference of obviousness established by the applied
prior art.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner's decision rejecting the appealed claims 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)(1)(iv)(effective
Sept. 13, 2004).
AFFIRMED

cam

KENNETH L. NASH
P O BOX 680106
HOUSTON, TX 77268-0106
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