Jonathan Richard. Fiello et al.

Patent Trials and Appeals Board

Sep 6, 2019

13953294 - (D) (P.T.A.B. Sep. 6, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/953,294 07/29/2013 Jonathan Richard Fiello 101525-0007P5 7901
34284 7590 09/06/2019
RUTAN & TUCKER, LLP
611 ANTON BLVD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
BUI, DUNG H
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
09/06/2019 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):
patents@rutan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JONATHAN RICHARD FIELLO
and STEVE WILLIAMS
________________

Appeal 2018-007845
Application 13/953,294
Technology Center 1700
________________

Before CATHERINE Q. TIMM, BRIAN D. RANGE, and
SHELDON M. MCGEE, Administrative Patent Judges.

MCGEE, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks our review of the
Examiner’s decision to reject claims 21–40. App. Br. 3.
We have jurisdiction. 35 U.S.C. § 6.
We affirm-in-part.

1 Appellant is the Applicant, K&N Engineering, Inc., which is identified as
the real party in interest. App. Br. 3.
Appeal 2018-007845
Application 13/953,294

2
SUBJECT MATTER
The subject matter on appeal relates to a vehicular “hood scoop.”
Spec. 1:4–5.
Independent claim 21 is illustrative of the claimed subject matter and
is copied below with a limitation at issue in this appeal italicized:
21. An apparatus for filtering and reducing turbulence of
intake air flow to an engine of a vehicle, the apparatus
comprising:
an air scoop configured to be incorporated onto an exterior
surface of the vehicle, the air scoop comprising a front opening
and an internal cavity in fluid communication with an air intake
system of the engine, and further wherein the opening is utilized
to accommodate intake of air into the engine of the vehicle, the
internal cavity being partially enclosed by an exterior wall of the
air scoop wherein a proximal lip is formed around the outside
edge of the front opening;
an air filter medium disposed within the internal cavity of
the air scoop, such that the intake air flow to the engine is drawn
through the air filter medium, the air filter medium being
configured to remove particulate matter from the intake air flow;
the air scoop having a convex top portion that tapers from the
front opening towards a back portion; and
an air flow director disposed in front of the air filter
medium configured to cooperate and smooth air flow prior to the
air filter medium to reduce turbulence of the intake air flow,
thereby contributing to a substantially laminar air flow through
the internal cavity and into the air intake system of the engine.
App. Br. 13 (emphasis added).

REJECTIONS
I. Claims 28 and 29 are rejected under 35 U.S.C. § 112, first
paragraph, as lacking written descriptive support for the term
“structural lattice portion” (Final Act. 4); and
Appeal 2018-007845
Application 13/953,294

3
II. Claims 21–40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Kidd,2 Smith,3 and
Young4 (id. at 5–13).

OPINION
Rejection I
Claim 28 depends indirectly from independent claim 21, and requires
the air flow director to comprise “a structural lattice portion.” App. Br. 14.
Claim 29 depends from claim 28 and requires the structural lattice portion to
comprise a layer of aluminum powder coated screen. Id.
The Examiner finds that these claims lack written description support
for their recitation of the phrase “structural lattice portion.” Final Act. 3.
In response, Appellant points to several paragraphs of the
Specification that, according to Appellant, support “Claims 26–30 and
36–38,” and refers to an amendment that was made to claim 28 “in the
interest of compact prosecution.”
These assertions are unpersuasive for several reasons. As an initial
matter, Appellant quotes a rejection that does not appear in the Office Action
from which this appeal is taken. Compare App. Br. 6, with Final Act. 4.
Indeed, Appellant’s argument appears to be copied verbatim from the
Response to the Non-Final Office Action dated January 6, 2017 addressing a
different rejection.

2 US 5,147,430; issued Sept. 15, 1992.
3 US 2008/0083575 A1; published Apr. 10, 2008.
4 US 3,458,977; issued Aug. 5, 1969.
Appeal 2018-007845
Application 13/953,294

4
Moreover, Appellant fails to explain sufficiently why the particular
disputed limitation at issue, i.e., a “structural lattice portion,” has written
description support in the referenced paragraphs. Nevertheless, we have
consulted the Specification passages identified by Appellant and find no
disclosure therein that evinces possession of “a structural lattice portion.”
Spec. 3:25–26, 4:22–24, 5:1–6, 5:12–15, 9:7–10, and 13:11–24.
In sum, because Appellant’s argument fails to identify error in this
rejection, we sustain it.

Rejection II
In deciding the appeal of Rejection II, we need only address
independent claims 21 and 33.
Appellant advances two main arguments against this rejection.
App. Br. 7–11. Namely, Appellant argues that the Examiner has provided
insufficient evidence to establish that the skilled artisan would have been
motivated to modify the teachings of Kidd with those of Young. Id. at 7–8.
Appellant also argues that the cited references do not teach the “taper”
feature recited in each independent claim. Id. at 9–11. We find each of
these arguments persuasive for the following reasons.

Motivation to modify the teachings of Kidd with those of Young
The Examiner finds that Kidd discloses most of the limitations recited
in claims 21 and 33, including the “air filter medium,” but does not disclose
“an air flow director disposed in front of the air filter medium.”
Final Act. 5–6. To address this difference, the Examiner relies on the
disclosure of Young, which the Examiner finds teaches such an air flow
Appeal 2018-007845
Application 13/953,294

5
director in the form of a honeycomb filter medium.5 Id. at 7. The Examiner
finds further that, at the time of the invention, it was known in the art to have
“at least two screens or grills [] at the inlet of the air scoop . . . for better air
scoop performance.” Id. at 6 (citing Smith ¶ 31) (emphasis omitted). Based
on the combined teachings of the cited references, the Examiner concludes
that it would have been obvious to modify the teachings of Kidd to include
the air flow director disclosed by Young “in order to enhance apparatus
filtering performance.” Id. at 7.
Appellant asserts that the Examiner’s proffered motivation to modify
the references lacks evidentiary support. App. Br. 7–8. We agree. We find
no disclosure in the cited paragraph of Smith that supports the Examiner’s
determination that multiple screens or grills leads to “better air scoop
performance.” Final Act. 6; Ans. 4; Smith ¶ 31. Rather, paragraph 31 of
Smith focuses on proper positioning and dimensions of an air scoop.
Smith ¶ 31. Although the last sentence of paragraph 31 notes that “[k]nown
inlet guards, screens or grills can also be used with the present system,”
there is no mention of any performance benefit associated with using
multiple screens or grills. Id.
The Examiner’s reference to Young’s honeycomb filter medium being
used as a replacement or substitute of Kidd’s filtering unit “to enhance
apparatus filtering performance” fares no better because the Examiner
provides no evidence to support this assertion. Final Act. 7; Ans. 4. It is
furthermore unclear how replacing Kidd’s filtering unit with that of Young

5 The Examiner construes an “air flow director” as including a plurality of
honeycomb shaped openings of an air filter medium. Final Act. 3. The
Examiner’s construction is not contested by Appellant. App. Br., generally.
Appeal 2018-007845
Application 13/953,294

6
would satisfy both independent claim limitations of “an air filter medium”
and “an air flow director.” Thus, the Examiner’s obviousness conclusion
lacks the necessary underlying factual evidentiary support.

The claimed “taper” feature
We are also persuaded of reversible error in the Examiner’s finding
that Kidd discloses an air scoop that tapers from the front or proximal
opening towards a back portion as recited in independent claims 21 and 33.
Final Act. 6.
Here, the Examiner relies on Kidd’s Figure 1 which, as Appellant
correctly argues (App. Br. 9–11), does not clearly show the size of the air
scoop’s back portion relative to that of the front or proximal opening. Final
Act. 6; Ans. 5; Kidd, Fig. 1. Furthermore, the Examiner points to no
disclosure within Kidd that describes relative sizes of the front or back
portions of the air scoop. Final Act., generally; Ans., generally.
Because Figure 1 is ambiguous, reliance on Kidd’s Figure 1 alone is
insufficient to establish the presence of the recited taper. Hockerson-
Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir.
2000) (explaining how “HHI’s argument thus hinges on an inference drawn
from certain figures about the quantitative relationship between the
respective widths of the groove and fins” and how, under governing
precedent, “it is well established that patent drawings do not define the
precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”).

Appeal 2018-007845
Application 13/953,294

7
Because the obviousness rejection lacks evidentiary support for this
additional reason, we do not sustain the Examiner’s obviousness rejection of
claims 21–40.

DECISION
Rejection I is affirmed.
Rejection II is reversed.
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-IN-PART