Ex Parte JensenDownload PDFPatent Trial and Appeal BoardOct 3, 201712922815 (P.T.A.B. Oct. 3, 2017) Copy Citation 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. 12/922,815 09/16/2010 S0ren Hallberg Jensen 31050U 3600 20529 7590 10/05/2017 NATH, GOLDBERG & MEYER Joshua Goldberg 112 South West Street Alexandria, VA 22314 EXAMINER KEYWORTH, PETER ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 10/05/2017 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): USPTO@nathlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte S0REN HALLBERG JENSEN Appeal 2016-004208 Application 12/922,815 Technology Center 1700 Before TERRY J. OWENS, ROMULO H. DELMENDO, and MICHAEL G. McMANUS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—7 and 12—17. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims a method for removing solid contaminants from air-containing lubrication oil. Claim 1 is illustrative: 1. A method for removal of solid contaminants from air- containing, contaminated gear lubrication oil, the method comprising: leading the oil to the inlet of a pump and pumping it further to the inlet of a filter separating the contaminated oil into a solid phase, for retention by the filter, and a liquid phase, Appeal 2016-004208 Application 12/922,815 which passes the filter and leaves as a filtrate through the outlet of the filter; maintaining the filtrate in the outlet of the filter immediately after the filter at a back pressure of at least 0.3 bar (0.03 MPa) with a device configured to provide hydraulic resistance at the outlet of the filter, thereby maintaining incorporated air in the air-containing oil in dissolved form in the oil and hindering liberation of air from the oil during the passage of the oil through the filter; and returning the oil to the gearbox after passing through the valve. The References Nussbaumer US 6,294,090 B1 Sep. 25,2001 Smolong US 2006/0137939 A1 June 29, 2006 The Rejection Claims 1—7 and 12—17 stand rejected as follows: under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention, and under 35 U.S.C. § 103 over Smolong in view of Nussbaumer. OPINION We affirm the rejection under 35 U.S.C. § 112, second paragraph and reverse the rejection under 35 U.S.C. § 103. Rejection under 35 U.S.C. § 112, second paragraph The Appellant does not challenge the rejection under 35 U.S.C. § 112, second paragraph (App. Br. 6—11). Accordingly, we summarily affirm that rejection. Rejection under 35 U.S.C. §103 We need address only the broadest independent claim, i.e., claim 1. 2 Appeal 2016-004208 Application 12/922,815 Smolong discloses a wind power station gear train lubrication circuit (20) wherein filtered lubricant (38) from a filter unit (26) sprays onto a planet gear (16), excess lubricant collects in a bath area (32) and overflows a subdivision (30) into a spur gear (18) immersion lubrication bath (28), and lubricant from the immersion lubrication bath (28) flows via a motor pump unit (22) through the filter unit (26) to produce the filtered lubricant (38) that sprays onto the planet gear (16) flflf 12—14; Fig.)- “By a combination of suction from the oil sump on the spur wheel area and injection of lubricant into the planet stage after cleaning by way of the filter unit 26, lubricant supply for the gear train parts of wind power stations is achieved which ensures reliable and long-lasting, trouble-free operation even under harsh ambient conditions and with hard use” (118). Nussbaumer discloses “apparatus for separation of substances by permeation of liquids through porous adsorption membranes” (col. 1,11. 10- 12). The apparatus includes a feed inlet (12), a permeate outlet (13) and, downstream of the permeate outlet (13), a back pressure valve “which ensures that the medium in the device is always under a certain excess pressure (preferably 0.2 to 0.7 bar) under operating conditions” (col. 18, 11. 1—6; Fig. 1). “Without excess pressure of the liquid medium in the device, there is a hazard that in cases where the medium has a supersaturation of dissolved gases, these gases can accumulate in the pores of the membrane(s) and ultimately adversely affect both flux and adsorption capacity of the device” (col. 18,11. 7—12). The Examiner finds that “Nussbaumer provides clear motivation to combine the maintaining of back pressure step with Smolong as it will prevent gases within the fluid from accumulating and being trapped in the 3 Appeal 2016-004208 Application 12/922,815 filtration media thereby adversely affecting both the flux and filtration efficiency” (Ans. 2), and concludes that “it would have been obvious to provide a back pressure valve in Smolong to ensure a back pressure of the filtrate in the outlet of the filter is maintained at a pressure of at least 0.3 bar (or any excess pressure) in order to prevent the air bubbles from interfering with the filtration process and to better control fluid feeding to the downstream components” (Final Act.3^4). Establishing a prima facie case of obviousness requires an apparent reason to modify the prior art as proposed by the Examiner. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Smolong discloses a device for filtering solids from wind power station gear train lubricating oil flflf 12—14) whereas Nussbaumer discloses a device for adsorptive separation of liquids wherein permeate outlet back pressure is used to prevent gas from accumulating in adsorption membrane pores and thereby adversely affecting the device’s flux and adsorption capacity (col. 2,11. 60—62; col. 18,11. 1—12). The Examiner does not address the difference between those devices and establish that, regardless of those differences, one of ordinary skill in the art would have had an apparent reason to use Nussbaumer’s back pressure for preventing gas accumulation in adsorptive liquid separation membrane pores in Smolong’s device for filtering solids from lubricating oil.1 1 Nor does the Examiner establish that such an apparent reason would have been provided to one of ordinary skill in the art by other relied-upon references’ back pressure disclosures, i.e., Ford’s disclosure of using a back pressure regulator to prevent significant beverage degassing (US 4,204,962, col. 2,11. 31—35) or Gershon’s disclosure of using back pressure valves to 4 Appeal 2016-004208 Application 12/922,815 Accordingly, we reverse the rejection under 35 U.S.C. § 103. DECISION/ORDER The rejection of claims 1—7 and 12—17 under 35 U.S.C. § 112, second paragraph is affirmed. The rejection of claims 1—7 and 12—17 under 35 U.S.C. § 103 over Smolong in view ofNussbaumer is reversed. It is ordered that the Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED balance flow in parallel-piped filtration cartridges (US 5,427,683, col. 6, 11. 51-54). 5 Copy with citationCopy as parenthetical citation