Ex Parte Basham

Patent Trial and Appeal Board

Mar 17, 2017

11406582 (P.T.A.B. Mar. 17, 2017)

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.
11/406,582 04/17/2006 Daniel Basham MI/270 5421
28596 7590 03/20/2017
W. L. GORE & ASSOCIATES, INC.
551 PAPER MILL ROAD
P. O. BOX 9206
NEWARK, DE 19714-9206
EXAMINER
CHAU, TERRY C
ART UNIT PAPER NUMBER
3655
MAIL DATE DELIVERY MODE
03/20/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL BASHAM
Appeal 2015-004343
Application 11/406,582
Technology Center 3600
Before LINDA E. HORNER, JEFFREY A. STEPHENS, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel Basham (Appellant)1 seeks our review under 35 U.S.C. § 134
of the Examiner’s decision, as set forth in the Final Office Action, dated
January 29, 2014 (“Final Act.”), rejecting claims 1-3, 6-12, 14-21, 24-28,
30-39, 42^46, and 48-59. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies W.L. Gore & Associates, Inc. as the real party in
interest. Appeal Br. 2.
Appeal 2015-004343
Application 11/406,582
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to a “vent for an enclosure
containing lubricated machinery.” Spec. 1,11. 7-8. Claims 1, 19, 37, 55,
and 56 are independent. Claim 55 is illustrative of the subject matter on
appeal and is reproduced below.
55. An improved vent for a machinery enclosure of the
type containing a passageway for the passage of a gas between
an interior of the enclosure and the ambient air and a porous, gas
permeable membrane covering the passageway, the
improvement comprising fibrous sorbent comprising natural
fibers disposed within the passageway between the membrane
and the interior of the enclosure for at least sorption by
absorption of lubricant aerosols into the natural fibers of the
fibrous sorbent and gas passage therebetween.
EVIDENCE
The Examiner relied upon the following evidence in the Final Action:
Till US 3,251,475
Sprang US 5,571,604
Lamon US 6,521,012 B2
Thompson US 7,156,890 B1
May 17, 1966
Nov. 5, 1996
Feb. 18, 2003
Jan. 2, 2007
Hyung-Min Choi and Jerry P. Moreau, Oil Sorption Behavior of
Various Sorbents Studied by Sorption Capacity Measurement and
Environmental Scanning Electron, Microscopy Research and
Technique, 25:447-455 (1993) (hereinafter “Choi”).
Donaldson marketing material, Micro-Environmental Venting,
Tetratex membranes (hereinafter “Donaldson”)2.
Appellant’s Admitted Prior Art (hereinafter “AAPA”).3
2 There is no date of publication for this document in the Record.
3 The Examiner identifies AAPA as the disclosure in Appellant’s
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Application 11/406,582
REJECTIONS
The Final Action included the following grounds of rejection:
1. Claims 55 and 56 under 35 U.S.C. § 103(a) as unpatentable over
Thompson, Till, Choi, and AAPA.
2. Claims 1-3, 6-12, 14-21, 24-28, 30-39, 42^16, 48-54, and 57-59
under 35 U.S.C. § 103(a) as unpatentable over Thompson, Till,
Choi, AAPA, and either Lamon or Donaldson.
3. Claims 8, 26, and 44 under 35 U.S.C. § 103(a) as unpatentable
over Thompson, Till, Choi, AAPA, either Lamon or Donaldson,
and Sprang.
ANALYSIS
First Ground of Rejection
The “improved vent” of independent apparatus claim 55 and the
“improved method of venting a machinery space” of independent method
claim 56 call for “fibrous sorbent comprising natural fibers” provided within
a passageway between a porous, gas permeable membrane and the interior
of a machinery enclosure. Appeal Br. 56-57 (Claims App.). The recited
function of the fibrous sorbent is to absorb lubricant aerosols. Id.
The Examiner finds that Thompson teaches “a sorbent (94 inboard of
92) . . . disposed within the passageway between the membrane and the
interior of the enclosure” but “does not disclose that the sorbent is fibrous
Specification that “kapok, cotton, milkweed and/or other nature [sic] fibers
absorb lubricant into the fiber due to void spaces formed during cellular
growth (see page 8, lines 6-29).” Final Act. 5.
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Application 11/406,582
and comprises natural fibers; and is for at least sorption by absorption of
lubricant aerosols into the natural fibers of the fibrous sorbent and gas
passage therebetween.” Final Act. 4. The Examiner finds that “Till
discloses a fibrous sorbent for the filtration of oil and gas . . . comprising
plastic fibers . . . and natural fibers . . . .” Id. (citing Till, col. 1,1. 18, col. 2,
1. 44 and col. 5,11. 50-61). The Examiner determines that it would have
been obvious to one having ordinary skill in the art at the time the invention
was made “to replace the sorbent of Thompson with a fibrous sorbent having
plastic and natural fibers in view of the teachings of Till that natural fibers
can give the sorbent a more open structure and reduce back pressure.” Id. at
5 (citing Till, col. 5,11. 50-61).
Appellant contends the combination of Thompson and Till would not
have been obvious to one having ordinary skill in the art. Appeal Br. 39—41
(referring to the arguments presented against the rejection of claims 1 and 19
on Appeal Br. 23—33). Appellant asserts Thompson discloses that the
bidirectional flow of air through filter 28 during a heat cycle flushes out
entrapped water and particulate matter for some amount of self-cleaning of
the filter. Id. at 27. Appellant argues that, unlike Thompson, “Till’s filter
would be recognized by a skilled artisan as being unidirectional” and if the
flow through Till’s filter were to be reversed, “the benefits of the Till filter
would not be realized given the express benefits are tied to the progressive
filtration relative to the flow of the fluid passing through the filter.” Id. at
30. Appellant contends that one having ordinary skill in the art would not
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Application 11/406,582
have been led to replace Thompson’s filter, which experiences bi-directional
flow, with Till’s filter, which is only unidirectional in application. Id.
For the reasons that follow, we agree with Appellant that the
Examiner has failed to provide adequate reasoning based on rational
underpinnings to explain why a person having ordinary skill in the art would
have been led to modify Thompson with the teachings of Till in the manner
called for in claims 55 and 56. Thompson discloses a hubcap breather
assembly and filtration arrangement that prevents lubricant for the wheel
bearings from being contaminated by dust, dirt, water, and other
contaminants flowing in through the breather assembly. Thompson, col. 1,
11. 39-67. Thompson’s filter includes a hydrophobic layer 92 to prevent
water from reaching the lubricant chamber. Id. at col. 2,11. 41—43.
Thompson discloses porous layers 90, 94 outboard and inboard,
respectively, of hydrophobic layer 92 for screening particulate matter that
flows in through the assembly. Id. at col. 2,11. 38^11, 47^19. Thompson
discloses that the porous layers 90, 94 are preferably made from sintered
polypropylene plastic. Id. at col. 6,11. 65-66 and col. 7,11. 1-2. Thompson
describes that when the air flows in through filter 28, “[mjoisture and
particulate matter are entrapped on the outboard side of the hydrophobic
filter layer 92” and when air flows out through filter 28, “the entrapped
water and particulate matter are[,] to[] at least to some extent, flushed out of
the hubcap breather assembly 20.” Id. at col. 7,11. 11-17; see also id., Figs.
3, 4 (showing, respectively, direction of airflow when internal pressure
within the bearing chamber is less than, and greater than, the external
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Application 11/406,582
ambient air pressure). Thompson does not recognize any problem with
lubricant reaching the inboard surface of the hydrophobic, gas-permeable
particulate matter filter 28 and does not disclose that a purpose of layer 94 is
to trap lubricant. Instead, the purpose of Thompson’s filter 28 is to “ensure
that dirt, particulate matter, and moisture that normally exist in the ambient
atmosphere do not pass through the breather port 48.” Id. at col. 6,11. 58-61.
Till is directed to filters used in filtration of oils, water, and gases to
reduce clogging due to large particles lodging on the surface layers of the
filter that cause a build-up of back pressure within an undesirably short
period of time. Till, col. 1,11. 18-34. Till solves this problem by providing
a fiber filter having different fiber diameters at different strata of the filter so
that “the average fiber diameter in the stratas [sic] varies and increase[s]
progressively from the top to the bottom of the layer.” Till, col. 3,11. 30-33,
Fig. 2. In this way, the larger particles are selectively retained by the first
stratum, medium-sized particles are selectively retained by the middle
stratum, and finer particles are retained by the final layer. Id. at col. 3,
11. 33-41. Till explains that “filtration in depth has been attained without
clogging of the front surface of the filter and without generation of high back
pressures.” Id. at col. 3,11. 41—43. Till further discloses that its filter may
include an additive uniform dispersion of textile fibers of substantially
uniform diameter to “give the filter a more open structure” and reduce back
pressure. Id. at col. 7,11. 49-61. We understand Till to be discussing the
problem of generation of high back pressures that occur in unidirectional
filters, in which air flows through the filter in only one direction, i.e., top to
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Application 11/406,582
bottom, when the filter becomes clogged with particles lodged on the surface
of the filter.
We agree with Appellant that one having ordinary skill in the art
would have not been led to replace Thompson’s sintered plastic layer 94
with a fibrous layer having plastic and natural fibers to give the layer a more
open structure and reduce back pressure because Thompson discloses that
entrapped water and particulate matter are to some extent flushed out of the
breather assembly due to the bi-directional flow therethrough. Appeal
Br. 27; Till, col. 7,11. 21-27. The Examiner has not adequately explained
why a person having ordinary skill in the art would have been concerned
with back pressure building at the sintered plastic layer 94 of Thompson that
would have led to the proposed modification. For these reasons, we do not
sustain the Examiner’s rejection of claims 55 and 56 under 35 U.S.C.
§ 103(a) as unpatentable over Thompson, Till, Choi, and AAPA.
Second and Third Grounds of Rejection
The remaining grounds of rejection rely on the same proposed
modification of Thompson with the teaching of Till as discussed above in
the first ground of rejection. Final Act. 6, 9. For the same reasons discussed
above, we do not sustain these additional grounds of rejection.
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DECISION
The decision of the Examiner to reject claims 1-3, 6-12, 14-21, 24-
28, 30-39, 42^16, and 48-59 is REVERSED.
REVERSED
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