Ex Parte Grass et al

Patent Trial and Appeal Board

Jun 28, 2016

12809198 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/809, 198 12/22/2010
10291 7590 06/30/2016
FISHMAN STEW ART PLLC
39533 WOODWARD A VENUE
SUITE 140
BLOOMFIELD HILLS, MI 48304-0610
FIRST NAMED INVENTOR
Uwe Grass
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.
66814-0109 7657
EXAMINER
BASS,DIRKR
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
patentmail@fishstewip.com
bhrec@fishstewip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UWE GRASS, MIKE SCHMID, and ANDREAS WIDMAIER
Appeal2015-000775
Application 12/809,198
Technology Center 1700
Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
October 4, 2013 decision finally rejecting claims 1-20 ("Final Act."). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify the Real Party in Interest as Mahle International GmbH.
(Appeal Br. 3).
Appeal2015-000775
Application 12/809,198
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a liquid filter device with a filter
element received in a filter housing (Abstract). The filter element has an
axially and eccentrically projected plug, which in an inserted state is plugged
into a plug receptacle formed in the filter plug (id.). The filter device has a
signal generator which recognizes the presence and/or absence of the plug,
and which is disposed within the plug receptacle (id.). Details of the
claimed invention are shown in independent claim 1, which is reproduced
below from the Claims Appendix:
1. A liquid filter device, comprising:
a filter housing having a plug receptacle formed therein,
at least one signal generator disposed in the plug receptacle, and
a filter element received in the filter housing,
wherein the filter housing has an inlet on a crude side and an
outlet on a pure side,
wherein the filter element separates a crude chamber that
communicates with the inlet from a pure chamber that
communicates with the outlet,
wherein the filter element has an axially and eccentrically
projecting plug which in an inserted state, is plugged into the
plug receptacle formed within the filter housing, and wherein
the at least one signal generator recognizes at least one of a
presence and an absence of the plug in the plug receptacle,
generating at least one signal.
2
Appeal2015-000775
Application 12/809,198
REJECTIONS
I. Claims 1, 2, 4, 5, 8-12, 14--16, and 18-20 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Baumann2 in view of
Hacker. 3
II. Claims 3 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baumann in view of Hacker, and further in view of
Okamoto.4
III. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baumann, Hacker, and Okamoto, and further in view of
Astle. 5
DISCUSSION
Because we decide this appeal based on limitations common to
independent claims 1 and 12, and each of the dependent claims, we limit our
discussion to the rejection of claim 1 over Baumann in view of Hacker.
The Examiner finds that Baumann discloses each element of claim 1,
except that Baumann does not teach the presence of a signal generator which
recognizes either the presence or absence (or both) of the plug in the plug
receptacle, generating at least one signal (Final Act. 2-3, citing Baumann,
Abstract, FIG. 1 ). The Examiner further finds that Hacker discloses a filter
assembly which comprises a filter element having a signal generator, where
the signal generator recognizes the presence or absence of a filter element
2 Baumann et al., U.S. Patent No. 6,936, 169 B2, issued August 30, 2005.
3 Hacker et al., WO 2005/113112 Al, published December 1, 2005.
4 Okamoto, JP 2006-007140, published January 12, 2001.
5 Astle et al., U.S. Patent Pub. 2006/0060512 Al, published March 23, 2006.
3
Appeal2015-000775
Application 12/809,198
contained within the filter housing (Final Act. 3, citing Hacker, Abstract,
FIG. 3, 8:3-10). The Examiner concludes that it would have been obvious
"to modify the plug of the filter device in Baumann to include the signal
generator as described in Hacker in order to provide a means to indicate and
disable equipment in response to a failure to detect a filter cartridge within
the housing" (id.).
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability"). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
In this instance, Appellants argue that the Examiner has not shown
that the art would have made obvious the limitation "at least one signal
generator is disposed in the plug receptacle" (Appeal Br. 7). Appellants'
argument is persuasive. The Examiner finds that Hacker's FIG. 3 discloses
a filter apparatus comprising a signal generator 121 disposed within a
receptacle, as shown below:
4
Appeal2015-000775
Application 12/809,198
Hacker's FIG. 3 shmvs a cross-sectional vie\v of a filter apparatus according
to its invention.
The Examiner construes the term "plug receptacle" as a structure
which allows the insertion of another, smaller structure (Ans. 5). Therefore,
according to the Examiner, as shown in FIG. 3, Hacker discloses a signal
generator disposed with a plug receptacle (id.).
However, as noted by Appellants (Reply Br. 2-3), the "plug
receptacle" in which the signal generator is located is the same as the plug
receptacle into which the projecting plug is plugged, not simply any void
into which a small structure may be inserted. This construction is consistent
with the language of claim 1, which recites the presence of the signal
5
Appeal2015-000775
Application 12/809,198
generator in "the plug receptacle," and also that the projecting plug "is
plugged into the plug receptacle" (emphasis added). 6
On the present record, we determine that the Examiner has not shown
that the cited art would have made obvious the presence of a signal generator
within the plug receptacle as recited in the claims, because this structure is
not taught in either reference, and the Examiner has not explained why such
a structure would have been obvious.
Accordingly, we reverse the rejection of independent claims 1 and 12,
as well as the rejection of each of the dependent claims.
CONCLUSION
We REVERSE the rejections of claims 1, 2, 4, 5, 8-12, 14--16, and
18-20 under 35 U.S.C. § 103(a) as being unpatentable over Baumann in
view of Hacker.
We REVERSE the rejections of claims 3 and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Baumann in view of Hacker, and further
in view of Okamoto.
We REVERSE the rejections of claims 6 and 7 under 35 U.S.C.
§ 103(a) as being unpatentable over Baumann, Hacker, and Okamoto, and
further in view of Astle.
REVERSED
6 Independent claim 12 has similar language, and is also construed to require
that the signal generator is disposed within the plug receptacle which
receives the projecting plug.
6