Ex Parte McElroy et al

Patent Trial and Appeal Board

Jun 29, 2016

13776134 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131776,134 02/25/2013 Mark Andrew McElroy
58982 7590 07/01/2016
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York A venue, NW
WASHINGTON, DC 20001-4413
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.
08350.0393-00000 2530
EXAMINER
GURTOWSKI, RICHARD C
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
regional-desk@finnegan.com
us_docket_clerk@cat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ANDREW MCELROY and MARK TAYLOR ALLOTT
Appeal2015-001638
Application 13/776,134
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3, 5-17 and 20. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Claims 1 and 8 are illustrative of the subject matter on appeal and is
reproduced below:
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Application 13/776,134
1. A filter element, comprising:
filter media extending circumferentially around and
longitudinally along a longitudinal axis of the filter element;
and
pilot structure attached to the filter media and configured
to locate the filter element, the pilot structure including an axial
cross-section that includes at least one of a noncircular feature
or an asymmetrical feature relative to the longitudinal axis,
wherein the axial cross-section includes a first pilot
surface offset in a radial direction relative to the longitudinal
axis,
wherein the pilot structure further includes a second pilot
surface offset in a radial direction relative to the first pilot
surface, and
wherein the axial cross-section includes a noncircular
pilot surface extending around the longitudinal axis.
8. A filter element, comprising:
filter media extending circumferentially around and
longitudinally along a longitudinal axis of the filter element;
and pilot structure attached to the filter media and configured to
locate the filter element,
the pilot structure including
a first projection or recess extending radially
relative to the longitudinal axis, and
a second projection or recess extending radially
relative to the longitudinal axis, the second projection or
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Application 13/776,134
recess being spaced circumferentially about the
longitudinal axis from the first projection or recess.
Appellants request review of the following rejections from the
Examiner's Final Action:
I. Claims 8-11, 13-17, and 20 rejected under 35 U.S.C. § 102(b)
as anticipated by Sann (DE 10 2009 050 587 Al, published April 28, 2011
and relying on US 2012/0223006 Al, published September 6, 2012, as the
corresponding English equivalent).
II. Claims 1-3 and 5-7 rejected under 35 U.S.C. § 103(a) as
unpatentable over Spencer and Sann.
III. Claim 12 rejected under 35 U.S.C. § 103(a) as unpatentable
over Sann and Spencer (US 5,190,651, issued March 2, 1993).
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Application 13/776,134
Rejection J1
OPINION
Prior Art Rejections
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's prior art rejection under 35
U.S.C. § 102(b) for the reasons presented by the Examiner and add the
following for emphasis.
Independent claim 8 is directed to a filter element comprising a pilot
structure attached to a filter media, where the pilot structure includes at least
two radially extending projections or recesses. Independent claim 14, in
addition to requiring a filter element comprising a first pilot structure
attached to a filter media, as described in claim 8, requires a second pilot
structure on the filter element mounting structure, where the second pilot
structure includes at least two radially extending projections or recesses that
match or mate with the at least two radially extending projections or recesses
of the first pilot structure.
We refer to the Examiner's Final Action for the statement of the
rejection. Final Act. 3-5.
With respect to independent claim 8, the Examiner found Sann's
structure 1 7 of filter element end cap 19 describes the claimed pilot
structure. Ans. 9; Sann Figure 3.
1 For Rejection I, Appellants present arguments only for independent claims
8 and 9 and dependent claim 15 and rely on these arguments to address
dependent claims 9-11, 13, 16, 17, and 20 and 18. See Appeal Brief,
generally. Accordingly, we limit our discussion to claims 8, 14 and 15 and
claims 9-11, 13, 16, 17, and 20 stand or fall with their respective
independent claim.
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Application 13/776,134
Appellants argue the structure 1 7 of Sann does not describe the
projections or recesses recited in claim 8 because inner filter cavity 21 of
Sann does not include a projection or recess that "extend[s] radially relative
to the longitudinal axis" of the filter element 11. App. Br. 11-12.
We are unpersuaded by this argument. Sann discloses the use of
irregularities of shape (asymmetrical non-circular contours) on an end cap of
a filter element for the purposes of aligning the filter element in a functional
position when mounted on complementary shaped features of a mounting
structure. Sann Figures 1-3; i-fi-16-9. As illustrated in Figure 3 of Sann,
structure 17 comprises an asymmetrical shape having circular and non-
circular portions, where the non-circular portion includes two projections
and a recess that are circumferentially spaced and where each projection and
recess extends radially relative to the longitudinal axis of the filter element
11. This structure is a pilot structure that anticipates the subject matter of
independent claim 8. Appellants do not adequately explain a patentable
distinction between Sann' s pilot structure 1 7 and the pilot structure recited in
claim 8.
With respect to independent claim 14, which requires complementary
first and second pilot structures having projections and recesses that match
or mate the corresponding projections and recesses of the first and second
pilot structures, the Examiner found Sann' s structure 17 of filter element end
cap 19 and structure 15 of element receiver 13 describe the claimed pilot
structures. Ans. 9; Sann Figures 2 and 3.
We have also considered Appellants' arguments with respect to this
claim and find them unavailing. App. Br. 14--16. As noted above, Sann
describes using two pilot structures having complementary shapes to align a
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Application 13/776,134
filter element in a functional position. Sann iii! 6-9. Figures 1-3 of Sann
illustrate structures 17 and 15 as having complementary asymmetrical
shapes having a non-circular portion including corresponding projections
and recesses. These structures are two separate pilot structures that together
anticipate the subject matter of independent claim 14. Appellants again do
not adequately explain patentable distinction between Sann's pilot structures
and the pilot structures recited in claim 14.
Dependent claim 15 requires the second pilot structure includes at
least a portion of a center tube that extends circumferentially around and
longitudinally along the longitudinal axis inside of the filter media.
We have also considered Appellants' arguments with respect to claim
15 and are unpersuaded by them. Figure 2 of Sann shows structure 15 as a
tube socket that, when inserted into structure 1 7, is a center tube that extends
circumferentially around and longitudinally along the longitudinal axis
inside of the filter media. Appellants' argument do not adequately explain a
patentable distinction between Sann's structure (center tube) 15 and the
center tube recited in claim 15.
Accordingly, we sustain the Examiner's prior art rejection under 35
U.S.C. § 102(b) for the reasons presented by the Examiner and given above.
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Application 13/776,134
Rejection 112
Claim 1 is directed to a filter element comprising a pilot structure
having a non-circular or asymmetric cross-section with at least two pilot
surfaces radially offset from each other.
We refer to the Examiner's Final Action for a statement of the
rejection. Final Act. 6-8.
Appellants argue the ribs 67 are not radially offset with respect to one
another but are at the same radial distance relative to the longitudinal axis of
a filter element. App. Br. 22. That is, Appellants argue Spencer does not
describe the ribs 67 as being at different radial locations with respect to a
longitudinal axis of a filter element. Id. We are unpersuaded by this
argument. As discussed above, Sann discloses projections and recesses on a
non-circular portion of an asymmetric pilot structure 17 where the surfaces
of the projections and recesses are not at the same radial distance relative to
the longitudinal axis of a filter element. Sann Figure 3. The non-circular
portion also extends around the longitudinal axis of the filter element. Id.
Appellants have not adequately explained why one skilled in the art would
not have been capable of modifying the pilot surfaces of Spencer in view of
the teachings of Sann to ensure that the filter is located in the proper
functional position, depending on the design of the filter housing. Sann i-fi-1
6-9; Spencer col. 4, 11. 25-29, col. 5, 11. 51-59.
2 For Rejection II, Appellants present arguments only for independent claim
1 and rely on these arguments to address dependent claims 2, 3 and 5-7. See
Appeal Brief, generally. Accordingly, we limit our discussion to claim 1
and claims 2, 3 and 5-7 stand or fall with independent claim 1.
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Application 13/776,134
Accordingly, we sustain the Examiner's prior art rejection of claims
1-3 and 5-7 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
Rejection III
Claim 12 is directed to a family of filter elements having different
pilot structures. According to Appellants,
Spec. i-f 68.
[ o ]ne or more of the components of filter
assembly 10 may be part of a family of filter
components that have some common features and
some different features. For example, each of
filter element 12, center tube 18, and canister 20
may be part of a family of components that have
similar cross-sections but different lengths. In
such embodiments, the different center tubes 18 of
the family may, for example, have walls 44 with
substantially the same general cross-sectional size
but different lengths. Similarly, the different
canisters 20 of the family may have sidev,ralls 58
with substantially the same cross-sectional
dimensions but different lengths. Likewise, filter
elements 12 in the family may, for example, have
endcaps 28, 30 with substantially the same outer
diameter and filter media 22 with substantially the
same cross-section, but they may have different
axial spacing between the endcaps 28, 30 and
different lengths of filter media 22. Filter elements
12, center tubes 18, and canisters 20 may have
various other combinations of commonalities and
differences.
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Application 13/776,134
The Examiner found Sann discloses that the filter device and filter
element can comprise a family of different embodiments that would share
similar dimensions. Ans. 10; Sann i1i18-10.
Appellants argue that the cited portions of Sann do not disclose what
the Examiner alleges. App. Br. 24.
We are unpersuaded by this argument. Appellants have not
adequately explained why the cited portions of Sann do not teach "a family
of filter elements." Moreover, Appellants do not adequately explain why
one skilled in the art would not have been capable of modifying the
dimensions of the filter element, pilot structure or other associated filter
components to address a need for a desired filter assembly design. See In re
Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of
one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969).
Accordingly, we sustain the Examiner's separate prior art rejection of
claim 12 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner's prior art rejection of claims 8-11, 13-17 and 20
under 35 U.S.C. § 102(b) is affirmed.
The Examiner's prior art rejections of claims 1-3, 5-7 and 12 under
35 U.S.C. § 103(a) are affirmed.
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Application 13/776,134
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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