Ex Parte Jensen

Patent Trial and Appeal Board

Oct 3, 2017

12922815 (P.T.A.B. Oct. 3, 2017)

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.
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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
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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
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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).
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