Ex Parte Forrest et al

Patent Trial and Appeal Board

Mar 26, 2014

11854019 (P.T.A.B. Mar. 26, 2014)

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.
11/854,019 09/12/2007 Todd FORREST 106389-1826 4134
116387 7590 03/27/2014
Foley & Lardner LLP
3000 K Street NW
Suite 500
Washington, DC 20007
EXAMINER
FITZSIMMONS, ALLISON G
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
03/27/2014 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 TODD FORREST,1
J. Bruce Schelkopf, Ted S. Loftis, Barry Verdegan,
Wassem Abdalla, Mark Wieczorek, Gerard Malgorn,
Charles W. Hawkins, Chad Thomas, Joe Saxon, Mark Johnson,
and Naren Shaam
________________

Appeal 2012-010027
Application 11/854,019
Technology Center 1700
________________

Before JEFFREY T. SMITH, BEVERLEY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Todd Forrest, J. Bruce Schelkopf, Ted S. Loftis, Barry Verdegan,
Wassem Abdalla, Mark Wieczorek, Gerard Malgorn, Charles W. Hawkins,

1 The real party in interest is listed as Cummins Filtration IP, Inc., also
known as Cummins Filtration, Inc. (Appeal Brief, filed 22 February 2012
(“Br.”), 2.)
Appeal 2012-010027
Application 11/854,019

2
Chad Thomas, Joe Saxon, Mark Johnson, and Naren Shaam (“Forrest”)
timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of
claims 1-9, 12-17, 21-27, 29, and 30.3 We have jurisdiction. 35 U.S.C. § 6.
We reverse.
OPINION
A. Introduction4
The subject matter on appeal relates to a fuel filtration system,
especially a diesel fuel filtration system, that in the “fully closed position”
allows a certain amount of fuel to flow, but not enough to permit normal
operation of the engine. This is said to permit continued lubrication of one
or more downstream fuel system components, such as the fuel pump.
(Spec. 1, ll. 20-26.) This goal is accomplished by providing a “variable
restriction orifice” (“VRO”) or valve that does not close all the way when in
the “fully closed” position.

2 Office action mailed 27 July 2011 (“Final Rejection”; cited as “FR”).
3 Remaining copending claims 10 and 11 have been withdrawn from
consideration (FR 1 § 4a; Br. 4) and are not before us.
4 Application 11/854,019, Filtration system with a variable restriction
orifice, filed 12 September 2007. The specification is referred to as the
“019 Specification,” and is cited as “Spec.”
Appeal 2012-010027
Application 11/854,019

3
Claim 1 is representative and reads:
A fuel filtration system of an engine, comprising:
a fuel passageway that communicates fuel to the engine;
and
a variable restriction orifice controlling fuel flow through
the fuel passageway,
the variable restriction orifice is configured to be
movable between first and second extreme movement
positions,
the first extreme movement position is configured as
a fully open position at which a first non-zero fuel
flow rate through the fuel passageway is provided
and
the second extreme movement position is configured
as a fully closed position at which a second non-zero
fuel flow rate through the fuel passageway is
provided,
wherein the first flow rate is greater than the second
flow rate,
the second flow rate is an amount insufficient to
permit the engine to operate, and
the variable restriction orifice is configured to permit
fuel to flow through the fuel passageway at the
second non-zero fuel flow rate when the variable
restriction orifice is at the fully closed position.
(Claims App., Br. 14; some indentation, paragraphing, and emphasis added.)
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Appeal 2012-010027
Application 11/854,019

5
The Examiner maintains the following grounds of rejection:6
A. Claims 1, 2, 5, 12, 21, and 23-31 stand rejected under
35 U.S.C. § 102(b) in view of Jiang.7
A1. Claims 3, 4, and 22 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Jiang and Knight.8
A2. Claim 6 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Jiang and Halsall.9
A3. Claims 7-9 and 13-16 stand rejected under
35 U.S.C. § 102(b), alternatively under 35 U.S.C. § 103(a) in
view of Jiang.
A4. Claim 6 stands rejected under 35 U.S.C. § 103(a) in view of
Jiang.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Forrest urges that Jiang, on which the Examiner relies as evidence of
anticipation of independent claims 1, 12, and 21, does not disclose the
second extreme movement position required by the claims. (Br. 10.)
Although the arguments focusing on whether a few drops of fuel might flow
through the valve are somewhat misplaced, consideration of Jiang provides
no support for the Examiner’s findings of anticipation.

6 Examiner’s Answer mailed 30 April 2012 (“Ans.”).
7 Zemin Jiang, Oval centerpost and cooperating filter cartridge, U.S.
Patent 6,884,349 B1 (2005).
8 Steven R. Knight, U.S. Patent 6,555,000 B2 (2003).
9 Robert Halsall, U.S. Patent 6,792,918 B1 (2004).
Appeal 2012-010027
Application 11/854,019

6
Jiang Figure 1, reproduced below right, (color added), shows a
filter cartridge 21 mounted on a
centerpost assembly 20.
Fuel passes through the filter
and enters the centerpost
assembly through opening 32,
where the fuel encounters
plastic valve ball 36, which is
“designed to be light in weight
such that virtually any fuel flow
pressure is capable of moving
the valve ball in the direction of
flow opening 34.” (Jiang,
col. 3, ll. 15-18.) Ball 36 would
block central flow opening 34,
but is prevented from doing so
by pin 37, which projects down
the centerline 25 of centerpost
assembly 20. As a result, the
“first extreme movement position”
is configured as a fully open
position” in which a first non-zero fuel
flow rate is provided through {Jiang Fig. 1 shows a fuel filter}
passage 34 and on to the engine.
Appeal 2012-010027
Application 11/854,019

7
The difficulty with Jiang as an anticipatory reference is that there is no
“second extreme movement position” in which a second flow rate is
permitted in an amount insufficient to operate the engine. The condition
under which “a few drops of fuel might flow through” (Jiang, col. 4, l. 57)
occurs when an improper filter that does not have a blocking pin 37 has been
installed. When such an improper filter is installed, the fuel will push
ball 36 into flow opening 34, thereby preventing enough fuel to pass through
to the engine for normal operation. Thus, Jiang’s filter system creates a “no
filter-no run” condition. (Id. at col. 1, ll. 6-31.) The “trouble” with this
configuration is the absence of a first extreme movement condition in which
a larger non-zero fuel flow rate through the fuel passageway may be
obtained.
The Examiner does not rely on the additional references in any way
that cures the fundamental defects of Jiang as an anticipatory reference.
We therefore reverse the rejections of record.
C. Order
We reverse the rejection of claims 1-9, 12-17, 21-27, 29, and 30.
REVERSED
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