Cummins Filtration IP, Inc.

Patent Trials and Appeals Board

Dec 17, 2021

2021000505 (P.T.A.B. Dec. 17, 2021)

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.
16/178,096 11/01/2018 Charles W. Hawkins 106389-5263 2539
116387 7590 12/17/2021
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
EXAMINER
OLIVERA, ANGEL J
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
12/17/2021 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 CHARLES W. HAWKINS, ISMAIL C. BAGCI, and
HENDRIK N. AMIRKHANIAN
Appeal 2021-000505
Application 16/178,096
Technology Center 1700
Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Cummins Filtration IP, Inc. Appeal Br.
2.
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Application 16/178,096

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CLAIMED SUBJECT MATTER
The claims are directed to a spin-on filter, which is said to have
improved attachment and sealing with a filter head (Spec. 1:4–5, 15–18).
The Specification describes that the filter includes a gasket positioned at the
end of threads, which are used to connect the filter to a filter head (Abstract;
Figs. 1–3). Independent claim 1, reproduced below, illustrates the claimed
subject matter (italics added):
1. A fluid filter, comprising:
a housing shell having a closed end and an open end and
defining an interior space; a filtration media disposed within the
interior space of the housing shell and configured to filter a
fluid;
a nutplate secured to the open end of the housing shell,
the nutplate including an axially extending continuous rim on a
radial outer edge thereof, the axially extending continuous rim
including interior facing threads formed on an internal surface
thereof, the interior facing threads configured to secure the
fluid filter to a filter head, the nutplate further including a
groove formed therein adjacent to and radially inward of a
base of the internal surface, the nutplate further including a
radial groove defined on an outer surface of the rim that is
opposite the internal surface, wherein the open end of the
housing shell is deformed into the radial groove to secure the
open end of housing shell to the nut plate such that the open end
does not extend axially beyond the rim of the nut plate in a
direction axially away from the closed end of the housing shell;
and
a first circumferential gasket disposed on the nutplate
adjacent to the base of the internal surface and radially inward
of the internal surface, the first circumferential gasket
configured to form a seal with the filter head such that, when
the fluid filter is secured to the filter head and the seal is
formed with the filter head, the first circumferential gasket
prevents leakage of fluid to an outside of the fluid filter,
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wherein the first circumferential gasket is disposed in the
groove and faces axially upward away from the closed end of
the housing.
REJECTIONS
The Examiner maintains the following rejections2 on appeal:
I. Claims 1–5, 7, 9, 10, 12, and 13 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hacker et al. (US 2002/0125188 A1,
published Sept. 12, 2002, “Hacker”) in view of Hawkins et al. (US
2010/0126924 A1, published May 27, 2010, “Hawkins”), and further in
view of Oelschlaegel (US 6,146,527, issued Nov. 14, 2000) (Final Act. 3–
11).
II. Claims 6, 8, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hacker in view of Hawkins, Oelschlaegel, and further in
view of Tyler (US 3,610,666, issued Oct. 5, 1971) (Final Act. 11–13).
DISCUSSION
We review the appealed rejections for reversible error based on the
arguments and evidence presented by Appellant. 37 C.F.R.
§ 41.37(c)(1)(iv); Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that even if the Examiner had failed to make a prima

2 Contrary to the Examiner’s statement on page 3 of the Answer maintaining
“[e]very ground of rejection set forth in the Office action,” the obviousness-
type double patenting rejections of claims 1–13 over claims 1–8 of US
10,118,114 B2, issued Nov. 6, 2018, are moot. Final Act. 14–15. A
terminal disclaimer dated May 1, 2020 and approved May 4, 2020, has been
filed in Application 16/178,096 disclaiming any term beyond any patent that
may issue in the present application. Appeal Br. 6.
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facie case, “it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”).
Appellant argues the subject matter of claim 1 only (Appeal Br. 6–24;
Reply Br. 2–13). Appellant’s arguments regarding the dependent claims
merely refer to arguments made regarding claim 1 (Appeal Br. 24; Reply Br.
13). Accordingly, any claim not argued separately will stand or fall with
claim 1.
Specifically, Appellant argues that the Examiner has not established
that the combination of the cited references teaches or would have suggested
a: (i) “nutplate further including a groove formed therein adjacent to and
radially inward of a base of the internal surface” and (ii) “first
circumferential gasket disposed on the nutplate adjacent to the base of the
internal surface and radially inward of the internal surface” (Appeal Br. 8).
The Examiner’s findings and conclusions regarding Hacker and
Oelschlaegel, with respect to the disputed limitations recited in claim 1, are
located on pages 3–5 of the Final Action.3
The Examiner finds Hacker discloses a fluid filter having the
limitations of claim 1, including: (i) a groove formed in a nutplate adjacent
to and radially inward of the internal surface’s base and (ii) a circumferential
gasket disposed in the groove and adjacent to the internal surface’s base
(Final Act. 3–4). A portion of Hacker’s Figure 4 below illustrates a filter
assembly including a canister filter, which is spun onto a filter head:

3 Although Appellant contends that the Examiner has not established that
Hawkins teaches or would have suggested the disputed limitations (Appeal
Br. 8), the Examiner does not rely on Hawkins for teaching or suggesting the
claimed groove and gasket (Final Act. 3–6).
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Hacker’s Figure 4, in pertinent part above, illustrates a cross-sectional
view of spin-on canister 46 assembled and connected with filter head 44
(Hacker ¶ 54). Continuous wall surface 120, which is defined by filter
housing 50 and baffle plate 52, defines second mechanical connection
structure 124 depicted as threads 126 (id.). Spin-on canister 46 is connected
with filter head 44 through the engagement of threads 126 with threads 74
on filter head 44 to form threaded region 125 (id.). Hacker discloses the use
of “a seal at 145 to prevent leakage between the filter head 44 and the filter
40” (id. ¶ 57).

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The Examiner finds Hacker does not teach, inter alia, that the gasket
faces axially upward away from the closed end of the housing (Final Act. 4).
The Examiner finds that Oelschlaegel teaches a spin-on filter having
circumferential gasket 39, which is disposed radially inward of an internal
surface having interior facing threads (Final Act. 4). The Examiner finds
that Oelschlaegel’s gasket 39 faces axially upward away from the closed end
of a filter’s housing (id.). Oelschlaegel’s Figure 2 below illustrates an end
view of a mounting hub for a filter cartridge:

A portion of Oelschlaegel’s Figure 2 above illustrates a cross-
sectional end view of filter housing 12, which includes a cylindrical main
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housing portion 32 and a bowl-shaped removable end closure 34
(Oelschlaegel 4:6–7). The main housing portion 32 includes open end 37
having outwardly-projecting threads which mate with inwardly-projecting
threads on open end 38 of cylindrical side wall 36 (id. at 4:10–13). The
main housing portion can be tightened down within the end closure 34 until
an annular stop flange 40 engages the open end 38 of the end closure 34 (id.
at 4:13–16).
The Examiner concludes that it would have been obvious to substitute
Hacker’s first circumferential gasket and groove for Oelschlaegel’s gasket
and groove, which is disposed radially inward of the internal surface and
faces axially upward away from the closed end of the housing, because
doing so would have yielded the predictable results of forming a fluid seal
between the nutplate and a filter head (Final Act. 5).
Appellant argues that the Examiner has not established that Hacker’s
nutplate includes a groove, which is formed adjacent to and radially inward
of a base of the internal surface (Appeal Br. 11–12). Appellant argues that
Hacker’s groove “is located ‘axially downwards’ but []not ‘radially inwards’
of the continuous wall surface 126 of Hacker” (id. at 12).
We are not persuaded by Appellant’s argument.
The Examiner’s rejection is based on findings that the claimed
“nutplate,” “groove formed therein,” and “interior facing threads formed on
an internal surface” are read to correspond to Hacker’s plate 52, groove
holding seal at 145, and threads 126 on continuous wall surface 120,
respectively (Final Act. 3–4). As the Examiner finds (id. at 4), Hacker’s
groove holding seal (i.e., the claimed “gasket”) at 145 is depicted adjacent to
the base from which threads 126 extend on continuous wall surface 120
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(Hacker ¶¶ 54, 55; Fig. 4). Contrary to Appellant’s arguments (Appeal Br.
11–12; Reply Br. 4), Figure 4 of Hacker shows that the groove holding seal
145 extends radially inward of the base from which threads 126 extend on
continuous wall surface 120 (see Ans. 4–5). Therefore, Appellant’s
argument does not show reversible error in the Examiner’s finding that
Hacker discloses a nutplate that includes a groove, which is formed adjacent
to and radially inward of a base of the internal surface, as recited in claim 1.
Appellant argues that the Examiner improperly combined Hacker with
Oelschlaegel “because substitution of the seal 145 of Hacker with the gasket
39 of Oelschlaegel involves more than the mere substitution of one known
element with another” (Appeal Br. 12) (emphases omitted). Appellant
argues that one of ordinary skill in the art would not have considered
Oelschlaegel’s end closure 34 as the structural equivalent of a nutplate
“because it is merely a housing portion” and “not configured to be coupled
to a filter head” (id. at 16; Reply Br. 5–6).
We are unpersuaded by these arguments because they are premised on
bodily incorporation and are not focused on the Examiner’s reason for
combining the cited art. It is well established that the obviousness inquiry
does not ask “whether the references could be physically combined but
whether the claimed inventions are rendered obvious by the teachings of the
prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en
banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.”). In this
instance, the Examiner does not propose substituting Hacker’s nutplate 52
with Oelschlaegel’s end closure 34 (Final Act. 3–5).
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Furthermore, it has been held that the simple substitution of one
known element for another to obtain predictable results is obvious. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Although Hacker’s and
Oelschlaegel’s respective gaskets and grooves are both disposed radially
inward of an internal surface, the sealing gaskets are different with respect to
the direction in which the sealing gasket forms a fluid-tight seal (compare
Hacker Fig. 4, with Oelschlaegel Fig. 2). Appellant does not dispute that
Hacker’s and Oelschlaegel’s groove and gasket structures both perform the
same function of preventing fluid from leaking to an outside of the fluid
filter as claimed. We, therefore, agree with the Examiner that Hacker and
Oelschlaegel both evince simple and equivalent variations on the known use
of threads, a groove, and a gasket to form a fluid tight seal (Ans. 3).
Appellant argues that Hacker’s seal 145 “already provides sufficient
sealing such that Oelschlaegel provides a redundant advantage not needed
by Hacker” (Appeal Br. 18; Reply Br. 9) (emphases omitted). Appellant
argues this redundancy supports that “a person of ordinary skill in the art
would have no motivation to make the substitution” (Appeal Br. 18).
Appellant argues that the Examiner’s rejection is based on impermissible
hindsight because there is no “rationale or reasoning on why a person of
ordinary skill in the art” would have been motivated to replace Hacker’s seal
145 and corresponding groove with Oelschlaegel’s gasket 39 and
corresponding groove (id. at 23; Reply Br. 7–9).
Appellant acknowledges KSR, but argues that “courts have held that,
even post-KSR, ‘some kind of motivation must be shown from some source,
so that the jury can understand why a person of ordinary skill would have
thought of either combining two or more references or modifying one to
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achieve the patented [invention]” (Reply Br. 9–10 (citing Innogenetics, N.V.
v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008)). Appellant also cites
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed.
Cir. 2012) for holding that there was no motivation to combine features of
two devices into a single device “because both devices effectively and
independently” performed its function. Reply Br. 10. Appellant points to
TQ Delta, LLC v. Cisco Sys. Inc., 942 F.3d 1352, 1369 (Fed. Cir. 2019) for
the proposition that “[a] person of ordinary skill in the art needs to have a
motivation to select and combine references to render a claimed invention
obvious.” Appeal Br. 18; see also id. at 19 (citing In re Fine, 837 F.2d
1071, 1074 (Fed. Cir. 1988) for a similar proposition requiring motivation or
rationale to combine or substitute elements serving the same purpose).
However, the Supreme Court explicitly rejected a strict adherence to a
suggestion or motivation theory of obviousness. KSR, 550 U.S. at 415 (“We
begin by rejecting the rigid approach of the Court of Appeals.”). Contrary to
Appellant’s argument, a suggestion or motivation is not required in every
obviousness rejection. The MPEP states that, should an Examiner rely upon
simple substitution as a motivation to reject a claim, the Examiner must
provide:
(1) a finding that the prior art contained a device (method,
product, etc.) which differed from the claimed device by the
substitution of some components (step, element, etc.) with other
components;
(2) a finding that the substituted components and their functions
were known in the art;
(3) a finding that one of ordinary skill in the art could have
substituted one known element for another, and the results of
the substitution would have been predictable; and
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(4) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case
under consideration, to explain a conclusion of obviousness.
See MPEP § 2143(I)(B) (9th ed. Rev. 10.2019, rev. June 2020) (emphases
added). See also Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1273–74 (Fed.
Cir. 2004) (finding that a concrete haunch substitute for a metal bracket
provided a predictable result of underpinning an unstable foundation);
Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008)
(finding that a mechanical pressure switch was an obvious simple
substitution for a resistive electrical switch).
Here, we find that the Examiner has correctly applied a simple
substitution motivation to find that it would have been obvious to substitute
Hacker’s gasket and groove for Oelschlaegel’s gasket and groove (Ans. 6–
8). The Examiner has provided evidence that the results of the substitution
would have been predictable as required by the MPEP. See MPEP
§ 2143(I)(B) (emphasis added). Namely, the Examiner has provided
evidence to show that circumferential gaskets and grooves and their
functions of preventing the leakage of fluid to an outside of the fluid filter
were well-known in the art at the time of Appellant’s invention.
We conclude that the substitution of gasket and groove taught by
Hacker for the same components taught by Oelschlaegel is such a “simple
substitution” and requires no further articulated reasoning by the Examiner
in order to set forth a proper prima facie case of obviousness. We are not
persuaded by Appellant that such a simple substitution rationale is in error.
Appellant does not provide any evidence in the principal Brief to support the
argument that the proposed substitution would have been incapable
preventing leakage of fluid.
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Appellant proffers additional arguments regarding the combined
teachings of Hacker and Oelschlaegel on pages 6–7 of the Reply Brief. We
find that these arguments were not prompted by any additional argument
provided by the Examiner. Indeed, on page 7 of the Reply Brief, Appellant
attacks the proposed substitution made in the Final Action with regard to
Hacker and Oelschlaegel (Final Act. 5). Accordingly, we find no reason
why these new arguments regarding Hacker and Oelschlaegel could not have
been made in the principal Brief. We decline to consider these untimely
arguments presented in the Reply Brief. See 37 C.F.R. § 41.41(b)(1)(2); cf.
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative).
On this record, we affirm the Examiner’s §103(a) rejection of claims
1–5, 7, 9, 10, 12, and 13 over Hacker, Hawkins, and Oelschlaegel. For the
same reasons noted above, we affirm the § 103(a) rejection of claims 6, 8,
and 11 over Hacker, Hawkins, Oelschlaegel, and Tyler.
CONCLUSION
The Examiner’s decision is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7, 9,
10, 12, 13
103(a) Hacker, Hawkins,
Oelschlaegel
1–5, 7, 9,
10, 12, 13

6, 8, 11 103(a) Hacker, Hawkins,
Oelschlaegel, Tyler
6, 8, 11
Overall
Outcome
1–13

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED