Ex Parte HAWKINS et al

Patent Trial and Appeal Board

Jun 26, 2018

13774540 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131774,540 02/22/2013 Charles W. HAWKINS
116387 7590 06/28/2018
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
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.
106389-1944 6991
EXAMINER
OLIVERA, ANGEL J
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES W. HAWKINS, ISMAIL C. BAGCI, and
HENDRIK AMIRKHANIAN
Appeal2017-009281
Application 13/774,540
Technology Center 1700
Before MICHAEL P. COLAIANNI, A VEL YN M. ROSS, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 8-10, 13, 14, 17, 18, and 21.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
Claim 8, the sole pending independent claim, illustrates the subject
1 Appellant is the applicant, Cummins Filtration IP, Inc., which, according to
the Appeal Brief, is the real party in interest. Appeal Brief filed February 7,
2017 ("App. Br."), 2.
Appeal2017-009281
Application 13/774,540
matter on appeal and is reproduced below with contested language italicized:
8. A combination comprising:
a filter head; and
a fluid filter, the fluid filter having:
a housing shell having a closed end and an open
end and defining an interior space;
a filtration media disposed within the interior
space of the housing shell and configured to filter a fluid;
a nutplate secured to the open end of the housing
shell and closing the open end, the nutplate includes a surface
with interior facing threads that secure the fluid filter to the
filter head and an axially-extending continuous rim;
a first circumferential gasket disposed on the
nutplate adjacent to a base of the threaded surface and radially
inward of the threaded surface, the first circuniferential gasket
fluidly sealing with the filter head such that the first
circuniferential gasket prevents leakage of fluid to an outside of
the fluid filter,
the filter head having:
a circumferential recess,
an exterior threaded surface engaging the interior
threaded surface of the fluid filter, and a surface adjacent to the
exterior threaded surface that engages with an axially upward
facing surface of the first circumferential gasket,
wherein the rim of the nutplate is received within the
circumferential recess of the filter head such that a portion of
the filter head extends along an outer periphery of the nutplate;
wherein the nutplate includes a groove formed therein
adjacent to and radially inward of the base of the threaded
surface, wherein the first circumferential gasket is disposed in
the groove and faces axially upward away from the closed end,
and wherein the first circumferential gasket does not fill the
entire groove so that there is a space between a side of the
gasket and a surface forming the groove.
App. Br. 26-27 (Claims Appendix, emphasis added).
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Appeal2017-009281
Application 13/774,540
The Examiner sets forth the following rejections in the Final Office
Action entered September 14, 2016, and maintains the rejections in the
Examiner's Answer entered April 21, 2017 ("Ans."):
I. Claims 8-10, 13, 14, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Cooper (US 4,316,801, issued February 23, 1982) in view
of Bounnakhom et al. (US 5,906,736, issued May 25, 1999);
II. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Cooper
in view ofBounnakhom and Midkiff et al. (US 4,253,954, issued March 3,
1981 );
III. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Cooper
in view ofBounnakhom and Tyler (US 3,610,666, issued October 5, 1971);
and
IV. Claim 21under35 U.S.C. § 103(a) as unpatentable over Cooper
in view ofBounnakhom and Sims (US 5,209,845, issued May 11, 1993).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we reverse the Examiner's rejections of
claims 8-10, 13, 14, 17, 18, and 21under35 U.S.C. § 103(a) for the reasons
set forth below.
We need consider only claim 8, the sole independent claim on appeal,
which recites, inter alia, a combination comprising a filter head and a fluid
filter having a nutplate, in which a first circumferential gasket disposed on
the nutplate fluidly seals with the filter head such that the first
circumferential gasket prevents leakage of fluid outside the fluid filter.
The Examiner finds that Cooper discloses a combination comprising a
filter head and a filter bowl assembly (filter) including a filter bowl (housing
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Appeal2017-009281
Application 13/774,540
shell), filtration media within the filter bowl, jack ring 10 (nutplate) secured
to the filter bowl, and wire form ring 16 disposed on jack ring 10. Final Act.
3 (citing Cooper Fig. 2). The Examiner finds that wire form ring 16 is "fully
capable" of fluidly sealing with the filter head such that wire form ring 16
prevents leakage of fluid outside the filter bowl assembly (filter), and the
Examiner finds that wire form ring 16 thus corresponds to the first
circumferential gasket recited in claim 8. Final Act. 5; Ans. 9.
However, Cooper explains that many filter assemblies used in
industrial filtering operations include a head portion and a removable bowl
portion containing a filter element that is subjected to very high pressure.
Col. 1, 11. 5-10. Cooper further explains that the head portion of the filter
assembly must be very tightly and securely held to the bowl portion to
prevent internal and external leaks, and indicates that compressions seals or
other gasket-type sealing members such as 0-rings are utilized between
mating portions of the filter head and bowl. Col. 1, 11. 8-18. Cooper teaches
that 0-ring seals are very difficult to break, however, especially after being
subjected to high pressures for extended periods of time, making it
"extremely difficult to remove the head portion from the bowl portion to
replace the filter element." Col. 1, 11. 18-20.
Cooper's inventive filter assembly addresses this problem by allowing
a filter bowl to be easy separated from a filter head to which the filter bowl
is sealingly engaged. Col. 3, 11. 10-14; col. 8, 11. 12-17. Specifically,
Cooper discloses a filter assembly that comprises a filter head, a filter bowl,
and a jack ring removably attached to the filter head. Col. 3, 11. 10-21.
Cooper discloses that top side wall portion 5 of filter bowl 3 and side groove
9 of filter head 2 are sealed with 0-ring seal 8, which retains fluid in the
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Appeal2017-009281
Application 13/774,540
filter bowl against leakage. Col. 4, 11. 33-39, 50-51; Fig. 2. Cooper
discloses that a lower portion of jack ring 10 retains the bowl against the
head, and the inner wall of jack ring 10 includes groove 15 that receives and
retains wire form ring 16, which projects inwardly from the recess to engage
top surface 18 of the filter bowl. Col. 4, 11. 43-56; Fig. 2. Cooper discloses
that the filter bowl can be easily removed from the filter head by rotating
jack ring 10 from the filter head, which engages wire form ring 16 against
top surface 18 of the bowl, and 'jacks the bowl downwardly, away from the
head, breaking the seal between the bowl and the head at the 0-ring 8." Col.
8, ll. 12-17.
As Appellant correctly argues (App. Br. 13-17), the Examiner does
not identify any disclosure in Cooper, or provide any other objective
evidence, establishing that wire form ring 16 fluidly seals with the filter head
such that wire form ring 16 prevents leakage of fluid outside the fluid filter,
as required by claim 8. Rather, as discussed above, the Examiner merely
provides the conclusory statement that Cooper's wire form ring 16 is fully
capable of fluidly sealing with the filter head to prevent leakage of fluid
outside the filter bowl assembly (filter), and the Examiner cites only Figure
2 of Cooper in support of this assertion. Final Act. 5; Ans. 9.
However, Figure 2 of Cooper provides no indication that wire form
ring 16 fluidly seals with filter head 2. Rather, as discussed above, Cooper
discloses that 0-ring seal 8 seals filter bowl 3 and filter head 2, causing fluid
to be retained in the filter bowl and preventing leakage. As Appellant points
out (App. Br. 11-12), and as discussed above, Cooper discloses that wire
form ring 16 functions to engage top surface 18 of filter bowl 3 when jack
ring 10 is rotated from the filter head, breaking the seal between the filter
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Appeal2017-009281
Application 13/774,540
bowl 3 and filter head 2 at 0-ring 8, and allowing filter bowl 3 to be easily
separated from filter head 2. Accordingly, rather than disclosing that wire
form ring 16 fluidly seals with the filter head, Cooper discloses that wire
form ring 16 breaks the seal created by 0-ring 8 between filter bowl 3 and
filter head 2 by engaging top surface 18 of filter bowl 3 when jack ring 10 is
rotated from the filter head.
Therefore, on this appeal record, the Examiner does not provide a
sufficient factual basis to establish the Cooper's wire form ring 16 is capable
of fluidly sealing with Cooper's filter head such that wire form ring 16
prevents leakage of fluid outside the filter bowl assembly (filter), as required
by claim 8. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997)
(Although claims directed to an apparatus must be distinguished from the
applied prior art in terms of structure rather than function, in order to satisfy
the functional limitations in such apparatus claims, the Examiner has the
burden of showing that the apparatus taught or suggested by the applied
prior art is capable of performing the claimed function.); 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")
Accordingly, consistent with Appellant's arguments, we do not
sustain the Examiner's rejections of claims 8-10, 13, 14, 17, 18, and 21
under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's rejections of claims 8-10, 13, 14, 1 7, 18,
and 21under35 U.S.C. § 103(a)
REVERSED
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