Ex Parte Merritt et al

Patent Trial and Appeal Board

Aug 16, 2016

11933904 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111933,904 11/01/2007
53609 7590 08/18/2016
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Steven J. Merritt
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.
506322 4591
EXAMINER
ORME, PATRICK JAMES
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN J. MERRITT and KYLE SW ANSON
Appeal2015-002386
Application 11/933,904
Technology Center 1700
Before JAMES C. HOUSEL, ELIZABETH M. ROESEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 2-15 and 24--26 under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify Baldwin Filters Inc. as the real party in interest. App.
Br. 2.
Appeal2015-002386
Application 11/933,904
STATEMENT OF THE CASE
Claimed Invention
Appellants claim a filter element. App. Br. 14, Claims App'x 1 (claim
2). Embodiments are illustrated in Figures 1 and 15, which are reproduced
below:
FIG.1
.i//
.·''
'· . ~ ~};,
FIG, 15
Figure 1 shows filter element 100 having fluted filter media 110 wrapped
about winding frame 108, and Figure 15 shows winding frame 308 that can
be used to construct the filter element. Spec. i-fi-f 18, 26, 32, 58. As shown in
Figure 15, winding frame 308 has axis 128, first and second axial ends 130
and 132, first and second side rails 134 and 136, and opposing faces 400 and
402. Id. i-fi-137, 38, 58, 59. Relief notches 300 are formed in side rails 134
and 136 and extend entirely through opposing faces 400 and 402 of frame
308. Id. i1 59. During construction of filter element 100, adhesive is
dispensed into a reservoir formed in part by relief notch 300 and onto filter
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Application 11/933,904
media 110 along a line transverse to side rail 134 and in alignment with
relief notch 300. Id. Figs. 16 and 18, i-fi-164, 65.
Claims 2, 4, 6, and 25 are the independent claims on appeal. Claim 2
is reproduced below from Appellants' Claims Appendix, with bold added for
emphasis:
2. A filter element comprising:
a winding core having a pair of ends spaced apart from
each other and extending laterally between a pair of opposed
sides;
a sheet of fluted filter media wound around the sides of
the winding core;
a relief notch formed in at least one of the sides of the
winding core;
adhesive received at least partially in the relief notch, the
adhesive securing the fluted filter media to the winding core;
wherein the winding core has a pair of opposed faces defined
between the opposed ends and the opposed sides, wherein the
relief notch extends entirely through both opposed faces and
into the at least one of the sides of the winding core.
App. Br. 14, Claims App. 1. Independent claims 4, 6, and 25 similarly recite
a relief notch formed in at least one of the sides of the winding core, where
the relief notch extends entirely through both opposed faces. Id. at 1, 2, 4.
Wasielewski et al.
Jones
Gieseke et al.
Krisko et al.
References
us 4,227 ,953
us 4,961,974
US 6,547,857 B2
US 6,966,940 B2
3
Oct. 14, 1980
Oct. 9, 1990
Apr. 15, 2003
Nov. 22, 2005
Appeal2015-002386
Application 11/933,904
The Rejections
1. Claims 2--4, 6, 8, 10-12, and 24--26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gieseke. Final Action 5-14, 19-23.2
2. Claims 7 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gieseke in view of Wasielewski. Id. at 14--15.
3. Claims 9, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gieseke in view ofKrisko. Id. at 15-19.
4. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gieseke in view of Jones. Id. at 21-22.
ANALYSIS
The Examiner finds that Gieseke discloses filter element 52
comprising winding core 232 having a pair of ends, a pair of opposed sides,
and a pair of opposed faces, and a sheet of fluted filter media 122/ 130/13 2
wound around the sides of the winding core. Final Action 7 (citing Gieseke
Figs. 4, 6, 8, and 9). The Examiner finds that Gieseke discloses relief
notches in the form of troughs 324 in corrugations 312 of corrugation region
310. Id. (citing Gieseke Figs. 8 and 9).
In the Final Action, the Examiner finds that Gieseke' s relief notches
are located on the faces of the winding core and not on the sides. Final
Action 7. The Examiner concludes that it would have been obvious to have
located corrugations (relief notches) in the opposed sides, as well as the
opposed faces, finding that such a modification would aid in adhering the
fluted media to the corrugations. Id. at 8 (addressing claim 2). To this
2 Final Action dated February 28, 2014.
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Appeal2015-002386
Application 11/933,904
extent, the Examiner relies on the same analysis for claims 4, 6, and 24 as
for claim 2. Id. at 20-21, 23-25.
In the Answer, the Examiner provides an alternative interpretation,
finding that Gieseke discloses a relief notch formed in the sides of the
winding core. Ans. 3. Both of the Examiner's interpretations are shown by
annotations of Gieseke Figures 8 and 9 below:
FlG. 8
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Application 11/933,904
Figure 8 shows a top plan view of center board (winding core) 232, and
Figure 9 shows a cross-sectional view of the center board taken along line 9-
9 of Figure 8. Gieseke 2:50-54.
The Examiner agrees that Gieseke does not explicitly disclose a relief
notch that extends through both opposed faces, but nevertheless finds that
this claim element results from Gieseke' s disclosure that the corrugations
can extend the entire length of the winding core. Final Action 2 (citing
Gieseke 10:48-50); Ans. 2 (same).
Appellants argue that; regardless of which of the Examiner's
interpretations is adopted, Gieseke' s corrugations 310 with troughs 3 24
(asserted relief notches) do not extend entirely through the opposed faces of
the winding core. App. Br. 8; Reply Br. 8-9. Appellants further argue that
modification of Gieseke's disclosed winding core such that troughs 324
extend entirely through the opposed faces of the winding core would be
contrary to Gieseke' s intended purpose of having the corrugations mate with
the fluted filter media. App. Br. 8-9; Reply Br. 12-13.
We are persuaded that the Examiner errs in finding, as a matter of
fact, that Gieseke discloses a winding core having a pair of ends, a pair of
opposed sides, and a pair of opposed faces and a relief notch formed in at
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Appeal2015-002386
Application 11/933,904
least one of the sides of the winding core, where the relief notch extends
entirely through both opposed faces.
The Examiner relies on Gieseke' s disclosure that, in Figure 8, the
region of corrugations 310 extends only partially along the length of the
center board 232, but that "[i]n other embodiments, the region of
corrugations 310 can extend the entire length between the edge 300 and an
opposite edge 314." Gieseke, 10:44--50; see also id. at 10:54--57 ("the
region of corrugations 310 can also extend the entire length between the
edge 300 and edge 314, because the corrugations 312 provide a bearing
surface for winding the fluted sheet 130 around the center board 232").
We agree with Appellants that, even if corrugations 310 extend the
entire length of center board 232, as disclosed by Gieseke, 10:44--50, 10:54--
57, they do not result in a relief notch that extends entirely through both
opposed faces, as recited in Appellants' claims. App. Br. 8; Reply Br. 8-9.
Gieseke;s corrugations 310 with troughs 324 do not extend entirely through
the opposed faces of the winding core, regardless of which of the
Examiner's interpretations of Gieseke Figures 8 and 9 is adopted. (See
annotated Geiseke Figures 8 and 9 above.)
We further agree with Appellants that modification of Gieseke' s
winding core, such that corrugations 310 and troughs 324 run face to face or
side to side (instead of end to end, as disclosed in Gieseke) would not have
been obvious. App. Br. 8-9; Reply Br. 12-13.
A central purpose of Gieseke' s corrugations is to mate with fluted
media of a filter element during construction and assembly of the filter
element. Gieseke, Abstract, 1:52-54, 1:59---60, 10:15-18. 10:24--27, 10:61-
63, 10:67-11: 1. According to Gieseke, mating engagement between the
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Appeal2015-002386
Application 11/933,904
fluted filter media and the corrugated center board (winding core) helps to
create a secure, tight seal between the two, id. at 10:18-27, and prevents
slippage of the fluted sheet relative to the center board by providing a
bearing surface to help hold and secure the fluted sheet to the center board
during winding, id. at 10:38--43.
In order for Gieseke' s corrugations to mate with the fluted sheet, the
corrugations and the flutes must run in the same direction. If the flutes run
end to end, then the corrugations (and troughs) must also run end to end. It
fo Hows that modification of Gieseke' s corrugations 310 and troughs 3 24 so
that they run face to face or side to side (instead of end to end) would
prevent the corrugations from mating with the fluted sheet, absent a
corresponding change in the direction of the flutes. Changing the direction
of the flutes would be counter to Gieseke' s intended purpose of providing
coiled fluted filter media with flute openings at each end of the coil to
provide an inlet for unfiltered fluid and an outlet for filtered fluid. Gieseke
Abstract, Figs. 4--6, 1:38--45, 1:48-50, 3:18-24, 4:65-5:3, 5:32-55.
Accordingly, we agree with Appellants that the Examiner's proposed
modification of Gieseke would have been contrary to Gieseke' s intended
purpose of having the corrugations mate with the fluted filter media.
The foregoing deficiencies in the Examiner's findings and conclusions
regarding Gieseke are not remedied by the Examiner's findings and
conclusions regarding Wasielewski, Krisko, and Jones, which are cited in
support of the second, third and fourth grounds of rejection, respectively.
For all of the foregoing reasons, we do not sustain the rejections of
claims 2-15 and 24--26 under 35 U.S.C. § 103(a) as unpatentable over
Gieseke, Wasielewski, Krisko, and Jones.
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Appeal2015-002386
Application 11/933,904
CONCLUSION OF LAW AND DECISION
The decision of the Examiner is reversed.
REVERSED
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