CUMMINS FILTRATION IP, INC.

Patent Trials and Appeals Board

Sep 21, 2020

15723843 - (D) (P.T.A.B. Sep. 21, 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.
15/723,843 10/03/2017 Chirag D. PARIKH 106389-4654 3506
116387 7590 09/21/2020
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
EXAMINER
KIM, JAMES JAY
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
09/21/2020 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIRAG D. PARIKH, ARUN JANAKIRAMAN,
SARU DAWAR, JERALD J. MOY, HIMANI DESHPANDE,
BRIAN W. SCHWANDT, BRIDGETTE L. MEYER, SHIMING FENG,
ANNA BALAZY, VINCIL A. VARGHESE, and
BENJAMIN L. SCHECKEL
Appeal 2019-004100
Application 15/723,843
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–13, and 15. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Cummins Filtration
IP, Inc., which is a subsidiary of Cummins Filtration Inc., which is a
subsidiary of Cummins International Finance LLC. Appeal Br. 2.
Appeal 2019-004100
Application 15/723,843
2
CLAIMED SUBJECT MATTER
The claims are directed to a rotating separator with housing
preventing separated liquid carryover. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A rotating separator for separating liquid from a fluid
mixture, the rotating separator comprising:
a housing including a sidewall with an inner surface;
an annular rotating separating filter element positioned
within the housing and rotatable about an axis extending along
an axial direction in the housing, the annular rotating separating
filter element having an inner periphery defining a hollow
interior, and having an outer periphery facing the inner surface
of the housing and spaced along a radial direction radially
outwardly from the inner surface thereby defining a plenum
therebetween; and
one or more fins extending into the plenum from the inner
surface of the housing, the one or more fins forming capture
grooves therebetween and helically winding downwardly around
an inner circumference of the inner surface of the housing, the
one or more fins comprising axially extending slots formed
therethrough;
wherein the housing comprises an inlet for supplying the
mixture to the hollow interior, an outlet for delivering a separated
component of the mixture from the plenum, and a drain
delivering separated liquid from the plenum.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Eliasson US 6,925,993 B1 Aug. 9, 2005
Lagerstedt US 7,396,373 B2 July 8, 2008
Feltz US 1,306,421 June 10, 1919
Hallgren US 6,183,407 B1 Feb. 6, 2001
Heim US 2007/0181043 A1 Aug. 9, 2007
Gronberg US 7,185,643 B2 Mar. 6, 2007
McDowell US 5,277,154 Jan. 11, 1994
Giannotti US 4,643,158 Feb. 17, 1987
Appeal 2019-004100
Application 15/723,843
3
REJECTIONS
Independent claims 1 and 9, and dependent claims 6 and 7, stand
rejected under 35 U.S.C. § 103(a) as being unpatentable in view of the
combination of Eliasson, Lagerstedt, and Feltz.
Dependent claims 3–5 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of the combination of Eliasson, Lagerstedt, and
Feltz as applied to claim 1 in further combination with Hallgren.
Dependent claims 8 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of the combination of Eliasson, Lagerstedt, and
Feltz as applied to claims 1 and 9 in further view of Heim.
Dependent claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Eliasson, Lagerstedt, and Feltz as
applied to claim 9 in further view of Gronberg.
Dependent claims 11 and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable in view of the combination of Eliasson, Lagerstedt,
Feltz, and Gronberg as applied to claims 9 and 10 in further view of
McDowell.
Dependent claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Eliasson, Lagerstedt, Feltz, and
Heim as applied to claims 9 and 13 in further view of Giannotti.
OPINION
Analysis
The Examiner cites Eliasson as disclosing most of claims 1 and 9,
including a rotating separator with a filter element that rotates about an axis
to separate oil from an air/oil gas mixture and to allow oil droplets to fall
into a drainage chamber. Final Act. 2–3; Ans. 3–4. The Examiner notes that
Appeal 2019-004100
Application 15/723,843
4
Eliasson does not teach fins extending into the plenum of its separator, but
the Examiner cites Lagerstedt for its teachings of the fin-related limitations
and Feltz for its teachings of an axially extending slot to allow oil drainage.
Final Act. 3. In support of the combination, the Examiner contends it would
have been obvious to one of ordinary skill in the art “to have one or more
fins in order to guide the oil downwardly towards the drain and it would
have been obvious to one of ordinary skill in the art to add a slot or breakage
in the continuous fin to allow oil to drain at a plurality of spots along the
fin.” Final Act. 3.
Appellant contends Lagerstedt discloses a centrifugal separator with
guide rails having specific shape and placement that are indispensable to the
purpose of Lagerstedt’s “controlled helical direction of flow” in which
“liquid can be fed out of the housing (20) in a relatively quiet lower region
in the housing.” Appeal Br. 11 (quoting Lagerstedt 3:48–4:5). More
specifically, Appellant quotes Lagerstedt’s statement that the arrangement of
guide rails give solid and/or liquid particles “a controlled helical direction of
flow downward along the inner side of the housing . . . thereby reducing the
risk of liquid which has been separated out evaporating or being
reincorporated into the cleaned gas flow.” Appeal Br. 11 (quoting
Lagerstedt 3:58–4:5).
Appellant also describes Feltz as disclosing a breather for an engine
crankcase having oppositely disposed rows of inclined deflector wings
extending inwardly and upwardly inside a breather tube with “oil-receiving
pockets” open at the top to receive oil. Appeal Br. 12. Appellant argues
Feltz’s breather is a different type of component that would experience
varying fluid flow characteristics unlike the rotating separators of Eliasson
and Lagerstedt, and Appellant argues the Examiner provides no actual
Appeal 2019-004100
Application 15/723,843
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reason for combining the references’ teachings regarding the breather with
the rotating separators. Appeal Br. 13; Reply Br. 4.
The Examiner states that combining Feltz’s ports with Lagerstedt’s
guide rails would allow oil to drain from one fin to a fin or port beneath it by
gravity to eventually reach the drain of the oil separator. Final Act. 7–8.
Further, the Examiner states that such breaks in the guide rails “prevents
buildup of coalesced oil due to more efficient draining” and that it therefore
would have been obvious to combine Eliasson, Lagerstedt, and Feltz to
arrive at the claimed invention. Ans. 5.
Having considered the arguments and evidence of record, we
determine the Examiner has not sufficiently articulated a rationale for
combining the references. Although the Examiner’s proposed combination
may be a simple combination of known elements in known ways, the
Examiner does not explain, or provide evidence to support, how adding
drainage ports to Lagerstedt’s guide rails would be more efficient. To the
contrary, Lagerstedt’s statements regarding the guide rail’s role in reducing
evaporation or reincorporation of liquid into cleaned gas flow provides at
least some evidence that it would not be more effective, and would be
potentially less efficient, to add drain ports to the guide rails. Although we
disagree with Appellant that the Examiner’s proposed combination would
render Lagerstedt inoperable for its intended purpose or change its principle
of operation (Appeal Br. 14–15; Reply Br. 4–6), we determine the Examiner
has not provided an adequate rationale for combining the references to arrive
at the claimed invention. Accordingly, we do not sustain the Examiner’s
rejection of independent claims 1 and 9, nor the rejections of dependent
claims 3–8, 10–13, and 15, each of which relies on the Examiner’s rejection
of claims 1 and 9.
Appeal 2019-004100
Application 15/723,843
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CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 7, 9 103(a) Eliasson,
Lagerstedt, Feltz
1, 6, 7, 9
3–5 103(a) Eliasson,
Lagerstedt, Feltz,
Hallgren
3–5
8, 13 103(a) Eliasson,
Lagerstedt, Feltz,
Heim
8, 13
10 103(a) Eliasson,
Lagerstedt, Feltz,
Gronberg
10
11, 12 103(a) Eliasson,
Lagerstedt, Feltz,
Gronberg,
McDowell
11, 12
15 103(a) Eliasson,
Lagerstedt, Feltz,
Heim, Giannotti
15
Overall
Outcome
103(a) 1, 3–13, 15

REVERSED