Akimasa Ichikawa et al.

Patent Trials and Appeals Board

Jul 8, 2020

2019002302 (P.T.A.B. Jul. 8, 2020)

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.
14/813,641 07/30/2015 Akimasa ICHIKAWA 791_734 3898
25191 7590 07/08/2020
BURR & BROWN, PLLC
PO BOX 869
FAYETTEVILLE, NY 13066
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
07/08/2020 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):
tpreston@burrandbrown.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AKIMASA ICHIKAWA and MASAHIRO FURUKAWA1
____________

Appeal 2019-002302
Application 14/813,641
Technology Center 1700
____________

Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 10–20. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to ceramic filter devices. E.g.,
Spec. ¶ 1; Claim 10. Claim 10 is reproduced below from page 17 (Claims
Appendix) of the Appeal Brief:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as NGK
Insulators, Ltd. Appeal Br. 1.
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10. A filter device comprising:
a ceramic filter that includes a pillar-shaped porous body having
a plurality of through channels extending through the porous
body from a first end face to a second end face and formed in
rows and having a circumferential surface, and a separation
membrane disposed on each of inner wall surfaces of at least part
of the plurality of through channels, wherein one or some of the
plurality of through channels are water collecting cells whose
open ends in the first end face and the second end face are
plugged by plugging members, and further wherein water
collecting slits are disposed to open in the circumferential
surface of the porous body so that the water collecting cells
communicate with an external space; and
a casing which receives the ceramic filter and forms an
introduction path to introduce a mixed fluid into the first end face
of the ceramic filter, an intermediate path to return and
reintroduce, into the second end face of the ceramic filter, the
mixed fluid which is being treated, and a discharge path to
discharge the treated fluid from the first end face of the ceramic
filter, wherein the introduction path and the discharge path
extend parallel to one another,
wherein the plurality of through channels have at least one set of
an outward path in which the mixed fluid flows from the first end
face to the second end face and a return path in which the mixed
fluid returns and flows from the second end face to the first end
face,
the water collecting cells are arranged to form at least one row in
the first end face and the second end face of the porous body,
through channel division means is disposed along the row in
which the water collecting cells are arranged in at least one of
the end faces of the porous body in a state where the through
channel division means is in contact with the row, and
the outward path and the return path are divided by the through
channel division means.
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REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 10, 13–17, 19, and 20 over Sugiura (WO2007/004263 A1,
dated Jan. 11, 2007) (machine translation of record) and Townson
(US 2009/0008341, published Jan. 8, 2009);
2. Claim 11, 12, and 18 over Sugiura, Townson, and Ichikawa
(WO 2012/147534 A1, dated Nov. 1, 2012) (machine translation of record).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action dated March 28, 2018, and in the Examiner’s Answer.
The Appellant presents arguments only as to claim 10. We address
those arguments below. The remaining claims will stand or fall with claim
10, from which they depend.
The Examiner’s statement of the rejection appears at pages 3–7 of the
Final Action and is repeated at pages 4–8 of the Examiner’s Answer. Of
particular relevance to the issues raised by the Appellant in this appeal, the
Examiner finds that Sugiura teaches a filter device similar to that of
claim 10, and that Sugiura’s filter device comprises through channels that
fall within the scope of the terms “outward path” and “return path” because
Sugiura’s through channels are structurally “capable of allowing the mixed
fluid” to flow in both an outward direction and a return direction. See
Ans. 4–5, 7. The Examiner also finds that Sugiura’s disclosure of
“backwashing” “reads on a return path.” Id. at 7. Moreover, the Examiner
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finds that Townson discloses a filter similar to that of claim 10, and that
Townson “teaches the plurality of through channels have at least one set of
an outward path in which the mixed fluid flows from the first end face to the
second end face and a return path in which the mixed fluid returns and flows
from the second end face to the fist end face.” Id. at 6. Thus, the Examiner
finds that the prior art teaches or suggests through channels that constitute
outward paths and return paths as recited by claim 10.
The Examiner acknowledges that “Sugiura does not teach that the
intermediate path returns and reintroduces into the second end face of the
ceramic filter the mixed fluid and a discharge path on the first end face of
the ceramic filter.” Id. at 5. However, the Examiner determines that
Townson teaches a filter that comprises those features, that Townson teaches
that such a filter structure “significantly increased filter efficiency in
comparison with a filter apparatus that is merely configured to pass a
flowable mixture through a filter element in only a single direction,” and that
a person of ordinary skill in the art would have been motivated to use
Townson’s path structure in the filter of Sugiura “as it is a known alternative
configuration, to merely single flow through, with added benefits of
increased filtering efficiency.” Id. at 6–7.
As to the “through channel division means” recited by claim 10, the
Examiner finds that Sugiura’s partition walls and glass seals located on the
filter end faces fall within the scope of that term. See id. at 5 (“both ends are
sealed”), 7.
In view of those and other findings less pertinent to the issues raised
by the Appellant, the Examiner concludes that the subject matter of claim 10
would have been obvious to a person of ordinary skill in the art.
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The Appellant first argues that the “backwashing” disclosed by
Sugiura does not imply the presence of a “return path” as recited by
claim 10. Appeal Br. 7–8.
That argument is not persuasive at least because it attacks Sugiura
individually and does not meaningfully address the Examiner’s combination
rationale. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”). As noted above,
the Examiner finds that Townson teaches a filter in which the fluid flows in
both directions (i.e., an outward path and a return path), and that a person of
ordinary skill in the art would have been motivated to modify Sugiura to
allow fluid to flow in both directions to improve efficiency. The Appellant
has not shown how the proposed combination fails to result in a structure
comprising outward and return paths that fall within the scope of claim 10.
The Appellant also argues that Sugiura does not teach the “through
channel division means” of claim 10. Appeal Br. 8–9. In particular, the
Appellant describes the structure of Sugiura as comprising “a glass seal that
covers all of the exposed ends of the partition walls of the porous body filter
device,” and the Appellant argues that Sugiura’s structure “is not the same as
the claimed through channel division means disposed along a row in which
water collecting cells are arranged, and which divides the outward path and
the return path.” Id. at 8.
That argument is not persuasive. As the Examiner explains, e.g.,
Ans. 15, the Appellant’s Specification describes the “through channel
division means” as a “seal means” for preventing fluid flow. Spec. ¶ 15.
The Specification goes on to state that “[t]here is not any special restriction
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on the through channel division means 15 as long as the through channel
division means is seal means for cutting off the penetration of the fluid from
divided positions of the first end face 2 and the second end face 3, but it is
possible to use a packing or a seal jig made of a material such as a hard
rubber or a fluororesin.” Id. ¶ 44. The Specification also describes “glass
seal[s]” and “metal seal[s],” and does not indicate that such seals are
unsuitable for use as the “through channel division means.” Id. ¶ 37.
Additionally, claim 14 depends from claim 10 and recites that “the through
channel division means is a seal means disposed in each of the first end face
and the second end face.”
In view of those disclosures, and particularly under the claim
construction standard applicable to this proceeding (broadest reasonable
construction consistent with the specification, see In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)), the Appellant has not
shown reversible error in the Examiner’s determination that “glass seals that
cover[] all of the exposed ends of the partition walls” of Sugiura’s filter, as
the Appellant describes Sugiura’s structure, see Appeal Br. 8, fall within the
scope of the term “through channel division means.” By the Appellant’s
characterization of Sugiura, the structure identified by the Examiner appears
to be “a seal means disposed in each of the first end face and the second end
face,” which claim 14 establishes as falling within the scope of the term
“through channel division means.” The Appellant fails to persuasively argue
otherwise.
As to whether Sugiura’s glass seals are “disposed along a row in
which water collecting cells are arranged, and which divides the outward
path and the return path,” Appeal Br. 8, the Appellant does not explain how
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a glass seal that covers the exposed ends of Sugiura’s filter would fail to
meet those requirements. It appears that Sugiura’s glass seal, which the
Appellant describes as “cover[ing] all of the exposed ends” of Sugiura’s
partition walls, id. (emphasis added), is disposed along and in contact with
each row, including the rows in which the water collecting cells are
arranged. See, e.g., Sugiura Figs. 1, 3.
On this record, we are not persuaded of reversible error in the
Examiner’s determination that Sugiura teaches or suggests “through channel
division means” that fall within the scope of claim 10. See In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections . . . .”).
The Appellant also argues that the combination of Sugiura and
Townson would have resulted in a filter device that has “the introduction
path . . . in the first end face of the filter of Townson, but not a discharge
path to discharge the treated fluid from the first end face.” Appeal Br. 10.
That argument is not persuasive. Consistent with the Examiner’s
findings, at least Figure 5 of Townson teaches or suggests a filter in which
both the introduction path (128) and the discharge path (130) are in the same
end face. See Townson Fig. 5. The fact that Townson describes its filter
elements as concentrically arranged first and second filters, see Appeal
Br. 10, fails to show error in the Examiner’s rationale, and the Appellant
fails to persuasively argue that it would have been beyond the ordinary level
of skill in the art to combine the structures of Sugiura and Townson as
proposed by the Examiner. Cf. Keller, 642 F.2d at 425 (“The test for
obviousness is not whether the features of a secondary reference may be
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bodily incorporated into the structure of the primary reference.”).
Additionally, and contrary to the Appellant’s argument, see id. at 11, we
agree with the Examiner’s finding that Townson attributes improved filter
efficiency to flowing a fluid through a filter in both directions, i.e., both
down and back through separate paths, see, e.g., Townson ¶ 39 (describing
improved efficiency relative to “a filter apparatus that is merely configured
to pass a flowable mixture through a filter element or a set of filter tubes in
only a single direction”). The Appellant has not persuasively shown why
describing the filter as one filter or two filters is material to the Examiner’s
analysis.
The Appellant also argues that the filter device of the combined prior
art “would not have provided the attendant advantages associated with the
claimed filter device” because “some of the open ends of the through
channels” would allegedly be “blocked.” Appeal Br. 11–12.
That argument is unpersuasive because the Appellant does not
identify a claim limitation that precludes blockage of some open ends of
through channels, and because, even assuming the Appellant is correct that
the claimed structure has “advantages,” the Appellant has not shown that
any such advantages would have been unexpected. See Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior
property must be unexpected to be considered as evidence of non-
obviousness.” (emphasis in original)).
On this record, we are not persuaded of reversible error in the
Examiner’s rejection of claim 10. See Jung, 637 F.3d at 1365.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ References Affirmed Reversed
10, 13–17,
19, 20 103
Sugiura,
Townson
10, 13–17, 19,
20
11, 12, 18 103
Sugiura,
Townson,
Ichikawa
11, 12, 18
Overall
Outcome 10–20
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