13586768 (P.T.A.B. Oct. 31, 2018)

Ex Parte Crowder et al

Patent Trial and Appeal BoardOct 31, 2018

13586768 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/586,768 08/15/2012 26710 7590 11/02/2018 QUARLES & BRADYLLP Attn: IP Docket 411 E. WISCONSIN A VENUE SUITE 2350 MILWAUKEE, WI 53202-4426 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Robert 0. Crowder 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 144063.00277 7083 EXAMINER VARMA, AKASH K ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 11/02/2018 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): pat-dept@quarles.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT 0. CROWDER, JOHN H. BURBAN, ANDREW J. OHOTTO, ABBEY M. V ADOS, MICHAEL M. DIMOVSKI, and DAVID S. KOLSTAD Appeal2018-000140 Application 13/586,768 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellants 1 seek our review of the Examiner's decision finally rejecting claims 1-3, 5-13, and 20-31. Claims 14--19, the other claims pending in this application, stand withdrawn from 1 Appellants identify the real party in interest as Porous Media Corporation. Br. 2. Appeal2018-000140 Application 13/586,768 consideration by the Examiner. Claim 4 is canceled. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM. CLAIMED SUBJECT MATTER Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. An apparatus for removing contaminants from used lubricating or hydraulic oil, the apparatus comprising: a fluid transfer unit including an inlet port and an outlet port, the inlet port being in fluid communication with a source of the used lubricating or hydraulic oil, the fluid transfer unit defining a fluid path; a cut structure of cellulose media in the fluid path, the cut structure of cellulose media including cellulose; and a silica bed in the fluid path, the silica bed including silica gel. Appellants request review of the following rejections from the Examiner's Final Action (see Appeal Brief, generally): I. Claims 1-3, 5, 8-10, 20-26, and 29 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Brownawell et al. (US 5,069,799, issued Dec. 3, 1991) ("Brownawell") in view of Lynn et al. (US 2,756,197, issued July 24, 1956) ("Lynn"). II. Claims 6, 7, 11, 27, and 28 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Brownawell in view of Lynn, and further in view of Tabler (US 4,502,948, issued Mar. 5, 1985). III. Claims 12, 13, 30, and 31 rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Brownawell in view of Lynn and further in view of Spearman et al. (US 2002/0063087 Al, published May 30, 2002) ("Spearman"). 2 Appeal2018-000140 Application 13/586,768 FINDINGS OF FACT & ANALYSIS After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner's prior art rejections under35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and add the following for emphasis. Appellants do not argue any claim separately. See generally Br. Accordingly, we select independent claim 1 as representative of the subject matter before us on appeal. Claims 2, 3, 5-13, and 20-31 stand or fall with claim 1. Claim 1 is directed to an apparatus for the regeneration of used hydraulic or lubricating oil by removal of oxidation byproducts and other polar contaminants. Spec. ,r 2. We refer to the Examiner's Final Action for a statement of the rejection with respect to claim 1. Final Act. 3---6. Appellants argue that modifying Brownawell' s filters to include Lynn's adsorbent "would render Brownawell unsatisfactory for its intended purpose" and change its principle of operation. Br. 9. Appellants assert that the Examiner's proposed modification would have required changing Brownawell's continuous filtering process because Lynn requires "adsorbing oil onto an adsorbent, eluting the oil, then distilling the resulting mixture to remove the eluent in a batch process." Id. at 10. Appellants further argue that Lynn's adsorbent to oil ratio would have required "increasing the amount of adsorbent by at least 400 times the amount of filter media that is disclosed in Brownawell," but "[t]he resulting diameter of the oil filter would be large and would raise concerns that the larger filter might be 3 Appeal2018-000140 Application 13/586,768 'virtually unusable in the confined underhood space of modem automotive vehicles."' Id. ( citing Brownawell 6:23-28); see also Br. at 8. 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 bane); 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 modifying Brownawell with Lynn's adsorbent to oil ratio or batch process. Ans. 3-6. Rather, the Examiner cites Lynn because [ t ]he primary reference Brownawell already discloses a [cellulose] filter [media] and a size, just not a different type of filter media [than cellulose]; therefore, the 103(a) rejection of using Lynn as a secondary reference is made solely for altering the media (incorporating silica gel adsorbent of Lynn into the filter device of Brownawell). Id. at 38. 2 Thus, Appellants' arguments have not identified reversible error in the Examiner's conclusion that it would have been obvious to combine Brownawell' s cellulose substrate for removing used lubricating oil contaminants with Lynn's silica gel adsorbent because silica gel exhibits a 2 Appellants' argument that "modifying the process of Lynn for use in the oil filter of Brownawell would render Lynn unsatisfactory for its intended purpose" (Br. 10) is similarly unpersuasive because the Examiner does not propose modifying Lynn. 4 Appeal2018-000140 Application 13/586,768 high adsorption capacity and a high degree of selectivity between the components of the lubricating oil to thereby produce high quality lubricating oil. Id. at 6; Brownawell Fig. 2, 5:15-20, 5:47-57, 1:55-2:7; Lynn 1:15-71, 3:27-73, 4:4--13. See also In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). The Examiner finds that Brownawell and Lynn are analogous inventions in the art of teaching lubricating oil and adsorbents. Id. Appellants, however, argue that Lynn is non-analogous art because it: (i) "makes no mention at all of being suitable for use with used lubricating and/or hydraulic oil" and (ii) "relates to improving viscosity characteristics of new oil ( fresh distillates/fractions of lubricating oil)." Br. 11. Appellants' arguments are not persuasive. A reference is reasonably pertinent if it, as a result of its subject matter, 'logically would have commended itself to an inventor's attention in considering his problem."' K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (quoting Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011)). In this instance, Appellants' analysis does not explain why Lynn is not reasonably pertinent to the problem faced by Appellants, namely removing contaminants from oil. As explained by the Examiner, Lynn discloses the benefits of using a silica gel adsorbent to treat oil. Ans. 42. We agree with the Examiner that "[t]he ability of silica gel to remove contaminants, regardless of whether it is new or used oil, does not change." Id. Accordingly, we find that Lynn is reasonably pertinent to Appellants' problem, and thus is analogous art. Appellants argue that the Examiner's rationale for rejecting the claims as obvious "is insufficient and scientifically unconvincing" for three reasons. 5 Appeal2018-000140 Application 13/586,768 Br. 14. First, Appellants assert that Lynn "teaches nothing about the adsorption capacity of contaminants or of the degree of selectivity between contaminants and oil." Id. ( emphasis added). Second, Appellants contend that "Brownawell's only mention of the term 'silica' is 'suitable substrates include alumina, activated clay, cellulose, cement binder, silica-alumina, polymer matrices, activated carbon, and the like.' ... [thus] Brownawell' s exclusion of silica from its list of suitable substrates is explicit and intentional. Id. at 14 (citing Brownawell 2: 1-3). Third, Appellants further argue that the Examiner has failed to establish a reasonable expectation of success because Lynn's oil to adsorbent ratio and oil eluting and distilling steps are incompatible with Brownawell' s apparatus. Br. 16-17. We are unpersuaded by these arguments. First, the present claims merely recite "[ a ]n apparatus for removing contaminants from used lubricating or hydraulic oil." The body of the claim includes recitation of used lubricating or hydraulic oil, but the components that comprise the apparatus are understood without reference to the preamble. In other words, the preamble is not necessary in the present appeal to give life or meaning to the claims. Therefore, we agree with the Examiner that "the preamble limitations 'for removing contaminants from used lubricating or hydraulic oil' [ describes an] intended use and [the] material worked upon, [and] therefore has no patentable weight." Ans. 42. Second, Appellants' argument regarding Brownawell' s alleged exclusion of silica is unpersuasive because the language 'and the like' means that Brownawell's list of possible substrates is open-ended and does not exclude silica. Appellants do not dispute this finding. Br. 15. Furthermore, Appellants' assertion that Brownawell's "inclusion of silica-alumina and 6 Appeal2018-000140 Application 13/586,768 alumina is a clear indication that ... Brownawell is aware that silica exists" is merely speculative. Id. Third, as set forth above, Appellants' arguments regarding an alleged incompatibility between Lynn and Brownawell are premised on bodily incorporation and are not, for the reasons outline above, persuasive. Therefore, Appellants' arguments have not identified reversible error in the Examiner's rationale for rejecting the claims as obvious over the applied prior art. Appellants also assert that the rejection of claim 1 should be reversed because Brownawell fails to "teach or suggest an apparatus comprising a cut structure of cellulose media including cellulose." Id. at 17. Appellants' argument, however, fails to identify reversible error in the Examiner's findings that Brownawell teaches the chemically active filter media may be supported on a substrate, such as cellulose, wherein the substrate may be formed into various shapes such as pellets, cylinders, or spheres (see Brownawell [1:66-2:7] ... ). The specific design and construction of the shape of the media and whether the shape is a cut structure or a pellet or a sphere does not alter the overall function of the chemically active filter media, does not add novelty or provide any technical advantage and is merely a design choice by the author. Ans. 48 (citing MPEP Â§ 2144.04(VI)(C)). Appellants contend that the Examiner's findings contravene MPEP Â§ 2144.04(VI)(C) because "Brownawell is silent regarding a motivation or reason ... to make the necessary changes in its device to arrive at the claimed cut structure of cellulose media." Br. 6. However, Brownawell is not limited to solely pellets, cylinders or spheres as the form of the cellulose substrate. Rather, Brownawell lists 7 Appeal2018-000140 Application 13/586,768 these shapes as examples of the substrate support shapes. The Specification describes the cut structure in the claim as merely having a substrate shape cut from a cellulose (i.e., the cellulose is cut into annular discs) (Spec. ,r 32). Because Brownawell is not limited to the recited examples of substrate shapes, it would have been reasonable to form the cellulose into any desired shape including a cut shape. Appellants do not allege any criticality in the particular cut shape. We, therefore, discern no reversible error in the Examiner's determination that it would have been obvious to one of ordinary skill in the art to use a cellulose cut structure as Brownawell' s substrate. On this record, we affirm the Examiner's prior art rejections of claims 1-3, 5-13, and 20-31 under 35 U.S.C. Â§ 103(a). 37 C.F.R. Â§ 4I.37(c)(l)(iv). ORDER The Examiner's prior rejections under 35 U.S.C. Â§ 103(a) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6( a )(1 )(iv). AFFIRMED 8