Deborah Bryan et al.

Patent Trials and Appeals Board

Sep 21, 2020

2019006623 (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.
14/343,631 03/07/2014 Deborah M. Bryan 67870US007 6966
32692 7590 09/21/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
OLIVERA, ANGEL J
ART UNIT PAPER NUMBER
1773
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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBORAH M. BRYAN, MARTIN J. BLAZE, and GOKHAN
KURUC

Appeal 2019-006623
Application 14/343,631
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, 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, 4, 6, 8, 10, 11, 13–24, 38, and 40.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

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
3M Company (formerly known as Minnesota Mining and Manufacturing
Company). Appeal Br. 3.
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Application 14/343,631

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a filter element that
seeks to reduce internal upstream and residual volumes (to avoid waste)
while providing adequate pressure rating and without requiring too much
space. Spec. ¶¶ 1–5. The filter could be used in a bioprocess application. Id.
¶ 6. Claim 1 is the only independent claim on appeal and is illustrative. We
reproduce claim 1 below while adding emphasis to certain key recitations:
1. A filtration capsule comprising:
a single use filtration capsule having a first shell and a second
shell that are sealably attached to each other by a weld, wherein both
shells each comprise a sidewall and a curved, domed exterior surface
that intersects with the sidewall and a substantially flat interior wall
that is integral to the shell;
the curved, domed exterior surface on the first shell and the
second shell each formed by a ribbing structure that is integral to
each shell; the ribbing structure extending from an exterior wall
and forming the curved, domed exterior surface; the ribbing
structure comprising a plurality of domed axial lengths and a
plurality of peripheral support rings intersecting with the domed
axial lengths;
an inlet and an outlet that are substantially parallel to the
substantially flat interior walls;
and
one or more filter elements contained in the filtration capsule,
each filter element comprising an outer surface in fluid
communication with the inlet and an inner surface in fluid
communication with the outlet.

2 In this Decision, we refer to the Final Office Action dated October 4, 2018
(“Final Act.”), the Appeal Brief filed March 21, 2019 (“Appeal Br.”), the
Examiner’s Answer dated July 9, 2019 (“Ans.”), and the Reply Brief filed
September 9, 2019 (“Reply Br.”).
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Application 14/343,631

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Appeal Br. 12 (Claims App.) (emphasis added).

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Winzen US 3,681,562 Aug. 1, 1972
Cooper US 4,126,559 Nov. 21, 1978
Southall US 4,347,208 Aug. 31, 1982
Olsen et al.
(“Olsen”)
US 5,965,019 Oct. 12, 1999
Bryan et al.
(“Bryan”)
US 2011/0297604 A1 Dec. 8, 2011
Hutto GB 1,544,475 Apr. 19, 1979

REJECTIONS
The Examiner maintains (Ans. 2) the following rejections on appeal:
A. Claim 20 under 35 U.S.C. § 112 as indefinite. Final Act. 5.
B. Claims 1, 4, 6, 8, 11, 13, 16–19, 21–24, 38, and 403 under 35 U.S.C.
§ 103 as obvious over Bryan or Bryan in view of Olsen. Id. at 6.
C. Claims 4, 14, 15, 17, and 19 under 35 U.S.C. § 103 as obvious over
Bryan or Bryan in view of Olsen in further view of Hutto. Id. at 12.
D. Claim 8 under 35 U.S.C. § 103 as obvious over Bryan or Bryan in
view of Olsen in further view of Winzen. Id. at 14.
E. Claims 10 under 35 U.S.C. § 103 as obvious over Bryan or Bryan in
view of Olsen in further view of Cooper. Id. at 15.

3 The Final Office Action references additional claims that have been
canceled. Id. at 6.
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F. Claims 20 under 35 U.S.C. § 103 as obvious over Bryan or Bryan in
view of Olsen in further view of Southall. Id. at 15.

OPINION
Rejection A, indefiniteness. The Examiner rejects claim 20 as
indefinite. Final Act. 5. In particular, the Examiner determines that the term
“inner overmold” is unclear because “overmold” relates to a process of
manufacture rather than structure. Id.
Appellant argues that “inner overmold” is not unclear because the
Specification uses the term “inner overmold” to describe structure. Appeal
Br. 7–8 (citing, e.g., Spec. Figs. 1–3, ¶¶ 43, 48); see also Reply Br. 1
(explaining that “overmold” may be defined as a “part or material that is
molded over and around another part”). We agree with Appellant that, in
view of the Specification, the Examiner has not adequately established that
the term “inner overmold” is unclear. We, thus, do not sustain this rejection.
Rejections B–E, obviousness. The Examiner rejects claim 1 as
obvious over Bryan in view of Olsen. Final Act. 6.4
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. 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)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the

4 Because, as explained herein, the Examiner’s rejection based on Bryan in
view of Olsen is sufficient to affirm this rejection, we do not address the
Examiner’s rejection based upon Bryan alone.
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evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm
these rejections for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
As to rejections B through E, Appellant does not present substantively
distinct arguments for any dependent claims. See Appeal Br. 8–10.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv)
(2013), we limit our discussion to claim 1, and claims 4, 6, 8, 10, 11, 13–19,
21–24, 38, and 40 stand or fall together with claim 1.
The Examiner finds that Bryan teaches much of the structure recited
in claim 1. Final Act. 6–7 (citing Bryan). The Examiner finds that Bryan
teaches ribbing structure extending across the exterior surface of its top and
bottom shells. Id. The Examiner finds that Bryan “is silent as to where both
shells each comprise a sidewall and a curved, domed exterior surface that
intersects with the sidewall; and axial lengths, of the ribbing structure
integral to the shells, are also domed.” Id. at 7. The Examiner finds,
however, that Olsen teaches a filter unit where exterior surfaces are domed.
Id. (citing Olsen). The Examiner determines that it would have been obvious
to substitute the exterior surface of Bryan’s shells with the domed surfaces
of Olsen “to yield the predictable results of encapsulating the filter cartridges
within the filter unit.” Id. at 8.
Appellant argues that the references do not teach or suggest a
filtration capsule having a domed exterior surface with an integral ribbing
structure. Appeal Br. 8. We disagree. The Examiner finds that Bryan
provides ribbed structure and Olsen suggests a domed shape. Appellant does
not persuasively dispute the Examiner’s findings with regard to either
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reference and does not persuasively dispute the Examiner’s stated reason
why a person of skill in the art would have combined the teachings of these
references. Final Act. 7–8. Use of Olsen’s domed shape along with Bryan’s
structure is no more than “predictable use of prior art elements according to
their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Appellant also argues that claim 1’s recited domed and ribbed
structure gives advantages over other structures. Appeal Br. 8; Reply Br. 2–
3. Superiority alone, however, is not sufficient to show that a result is
unexpected. 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)). As the Examiner
explains, Appellant has not presented evidence that the argued advantage is
unexpected. Ans. 5–6.
Appellant further argues that Bryan teaches away from a domed
surface and does not suggest any advantages of a dome. Appeal Br. 8–9;
Reply Br. 3. The evidence, however, supports the Examiner’s finding that
Bryan does not disparage use of a domed shape. Ans. 6. Moreover, no
evidence indicates that Bryan’s stacking is incompatible with a domed
shape; just to the contrary, Olsen suggests that a stacked configuration is
compatible with such a shape. Olsen Figs. 1–3.
Because Appellant’s arguments do not identify error, we sustain the
Examiner’s rejections.
Rejection F, obviousness. The Examiner rejects claim 20 under
35 U.S.C. § 103 as obvious over Bryan in view of Olsen in further view of
Southall. Final Act. 15. Claim 20 recites:
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[t]he filtration capsule of claim 1, wherein the filter element
comprises a separator to direct flow and an inner overmold, the
inner overmold integral with the separator and formed from a
thermoplastic elastomer, an o-ring seal between a protrusion of
the second shell and the inner overmold of the filter element.

Appeal Br. 14 (Claims App.).
The Examiner finds that Bryan and Olsen are silent as to an o-ring
between a protrusion of the second shell and an inner overmold of the filter
element. Final Act. 16. The Examiner finds, however, that Bryan teaches
that a seal may be formed by an o-ring and an overmolded seal. Id. The
Examiner determines that it would have been obvious to combine an o-ring
and overmolded seal as taught by Bryan with its protrusion and filter
elements to predictably provide sealing. Id. at 16–17. The Examiner relies
on Southall as teaching that the inner overmold may be a thermoplastic
elastomer. Id. at 17.
To the extent Appellant raises the same arguments we address above
in connection with claim 1 (Appeal Br. 10–11), the arguments are
unpersuasive.
Appellant also argues that Bryan does not teach an o-ring located in
the manner recited by claim 20. Appeal Br. 10–11. Appellant’s argument in
unpersuasive because it only addresses Bryan’s explicit teachings. The
Examiner’s rejection is based on obviousness rather than anticipation, and
Appellant does not persuasively dispute the Examiner’s stated reasons why
it would have been obvious to position an o-ring as claim 20 recites based on
the teachings of Bryan. Ans. 9–11.
Because Appellant does not identify reversible error, we sustain this
rejection.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
20 112 Indefiniteness 20
1, 4, 6, 8,
11, 13, 16–
19, 21–24,
38, 40
103 Bryan, Olsen 1, 4, 6, 8,
11, 13, 16–
19, 21–24,
38, 40

4, 14, 15,
17, 19
103 Bryan, Olsen, Hutto 4, 14, 15,
17, 19

8 103 Bryan, Olsen, Winzen 8
10 103 Bryan, Olsen, Cooper 10
20 103 Bryan, Olsen, Southall 20
Overall
Outcome
1, 4, 6, 8,
10, 11, 13–
24, 38, 40

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