Jonathan Richard. Fiello et al.Download PDFPatent Trials and Appeals BoardSep 6, 201913953294 - (D) (P.T.A.B. Sep. 6, 2019) Copy Citation 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 Copy with citationCopy as parenthetical citation