Ex Parte Oberli et al

Patent Trial and Appeal Board

Jul 2, 2018

14440665 (P.T.A.B. Jul. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/440,665 05/05/2015
513 7590 07/05/2018
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Frank Oberli
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.
62615 5115
EXAMINER
ALI, WAQAAS A
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
07/05/2018 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK OBERLI and DIRK SCHONFELD
Appeal2017-008346
Application 14/440,665
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and A VEL YN M. ROSS,
Administrative Patent Judges.
Opinion for the Board by OWENS, Administrative Patent Judge.
Dissenting opinion by NAGUMO, Administrative Patent Judge.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 14, 17, and 19--28. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a filter element and a hydraulic circuit
containing the filter element. Claim 14 is illustrative:
14. A filter element, comprising:
a tubular and pleated filter medium having a
central longitudinal axis;
Appeal2017-008346
Application 14/440,665
Kuwahara
Herrin
Soules
first filter pleats having a first pleat height;
second filter pleats having a second pleat height 85
to 95 percent of said first pleat height, said first and
second pleats being arranged in an alternating sequence
providing a greater effective filtering surface than if said
pleated filter medium had filter pleats having a uniform
pleat height of said first pleat height, providing a
corresponding flow-through of a fluid to be filtered
resulting in an overall lower surface load to said filter
medium and providing a lower flow-through velocity of
fluid during filtration, thereby resulting in a reduced
static charge of said filter medium during filter element
operation; and
planar sections of said filter pleats each extending
in a plane containing an entire length of said central
longitudinal axis.
The References
US 2007/0278149 Al
US 2010/0243554 Al
WO 87/01301 Al
Schunk (as translated)
Schmitz
WO 2004/041407 Al
WO 2009/089891 A8
DE 10 2010 025 215 Al
Dec. 6, 2007
Sept. 30, 2010
Mar. 12, 1987
May 21, 2004
July 23, 2009
Dec. 29, 2011 Koch (as translated)
The Rejections
The claims stand rejected as follows: claim 23 under
35 U.S.C. § l 12(b) as failing to particularly point out and distinctly claim
the subject matter which the inventors regard as the invention, claim 25
under 35 U.S.C. § l 12(d) as failing to further limit the subject matter of the
claim upon which it depends, claims 14, 17, 19, 20, 22, and 24--26 under
35 U.S.C. § 103 over Schunk, claim 21under35 U.S.C. § 103 over Schunk
in view of Koch, claim 23 under 35 U.S.C. § 103 over Schunk in view of
Kuwahara, claims 27 and 28 under 35 U.S.C. § 103 over Schunk in view of
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Application 14/440,665
Schmitz or Soules, claims 14, 17, 19, 20, 22, and 24--26 under
35 U.S.C. § 103 over Herrin, claim 21under35 U.S.C. § 103 over Herrin in
view of Koch, claim 23 under 35 U.S.C. § 103 over Herrin in view of
Kuwahara and claims 27 and 28 under 35 U.S.C. § 103 over Herrin in view
of Schmitz or Soules.
OPINION
We affirm the rejections under 35 U.S.C. §§ 112(b) and (d) and
reverse the rejections under 35 U.S.C. § 103.
Rejection under 35US.C.§l12(b)
"[T]he indefiniteness inquiry asks whether the claims 'circumscribe a
particular area with a reasonable degree of precision and particularity."'
Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed.
Cir. 2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)).
The Appellants' claim 23 requires that "first and second filter pleats
are disposed parallel to one another." 1
"'[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification."' In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)). The sole relevant disclosure
in the Specification is that "the aforementioned pleat spacings in alternating
sequence between the filter pleats 5 and the center filter pleats 7 of each and
every co-pleat structure are identical, and all side walls 28, 30, 32 extend
virtually parallel to one another" (Spec. 10-11). In view of that disclosure it
is unclear how the first and second filter pleats, rather than merely the side
1 In the Appellants' Figure 2 (shown below) the first pleats are pleats 5 and
the second pleats are pleats 7 (Spec. 9).
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Appeal2017-008346
Application 14/440,665
walls within each co-pleat structure, are disposed parallel to one another as
required by claim 23. That claim, therefore, fails to circumscribe a
particular area with a reasonable degree of precision and particularity.
The Appellants assert that according to Webster's New World
Dictionary, "'parallel' can be defined as ' ... closely similar or
corresponding as in purpose, tendency, time or essential parts ... "'
(App. Br. 4), and "for claim 23, the 'first and second pleats are disposed
parallel to one another' since those pleats are closely similar or
corresponding in purpose or essential parts, as would be understood by those
skilled in the pertinent art" (id.). The Appellants do not establish that their
interpretation of the claim term "parallel" is within the broadest reasonable
interpretation of that term consistent with the Appellants' Specification.
Accordingly, we affirm the rejection under 35 U.S.C. § 112(b).
Rejection under 35US.C.§l12(d)
35 U.S.C. § 112(d) requires that "a claim in dependent form shall
contain a reference to a claim previously set forth and then specify a further
limitation of the subject matter claimed."
The Appellants' claim 22 requires "pleats defining a co-shaped pleat
configuration," and claim 25, which indirectly depends from claim 22,
requires that "said co-shaped pleat configuration is configured to reduce
electrostatic charging."
The Appellants assert that claim 25 's "'configured to' recitation is a
structural characteristic limiting the claim 24 [from which claim 25 directly
depends] subject matter" (App. Br. 5), and claim 25 "further limits the
structure recited in the claim on which it depends by the capability of the
shape of the w[sic]-shaped pleat" (Reply Br. 2).
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Appeal2017-008346
Application 14/440,665
The Appellants' Specification states that "due to the co-type pleat
configuration, which under normal conditions is perfused with a fluid
contaminated with particles resulting in an electrostatic charging of the fiber
element, this charging is reduced during operation of the filter element as a
result of the reduction of the fluid flow velocity caused by the respective
holding space" (Spec. 7). Thus, the Specification indicates that the
"configured to reduce electrostatic charging" characteristic in claim 25 is
due to the co-shaped pleat configuration in claim 22. Claim 25's requirement
that "said co-shaped pleat configuration is configured to reduce electrostatic
charging," therefore, does not further limit claim 24 which depends from
claim 22. Hence, we affirm the rejection of under 35 U.S.C. § 112(d).
Rejections under 35 US.C. § 103
We need address only the independent claims (14 and 27), each of
which requires "planar sections of said filter pleats each extending in a plane
containing an entire length of said central longitudinal axis." Some of those
planes are indicated by the dashed lines in the Appellants' Figure 1:
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Appeal2017-008346
Application 14/440,665
Schunk and Herrin disclose filter pleats which do not meet that claim
requirement, as indicated by the Appellants' markup (filed Jan. 27, 2016) of
Schunk's Figure 2 and Herrin's Figure 22 (App. Br. 6, 10):
\
\
\
\
\
.•' i1 .,.,.,. .. ~....-.·····""···~ ......... ..,.,f ................
Fig. 2
6
l ,.
Appeal2017-008346
Application 14/440,665
The Examiner finds that Schunk "discloses in figure 1 a filter having a
tubular design and the straight sections of the filter pleats extend in the
central longitudinal axis" (Ans. 5).
The Schunk machine translation appears to state that Figure 2 is a
highly schematically simplified and broken partial plan view of the filter
cylinder of Figure 1 (p. 4). The close-up view in Figure 2 indicates that the
sides of the pleats are not parallel within each co-shaped pleat and do not
each extend in a plane containing an entire length of the central longitudinal
axis.
The Examiner states that "[i]t is unclear if Schunk [or Herrin] teaches
a planar sections [sic] of said filter pleats each extending in a plane
containing an entire length of said central longitudinal axis" (Ans. 6, 10).
The Examiner finds that 1) "[b ]ased on the desired surface area, the number
of pleats can be selected and packed together so that the planar sections of
said filter pleats of Schunk [or Herrin] each extend in a plane containing an
entire length of said central longitudinal axis" (Ans. 6, 12), 2) "[i]n the case
of fig. 2 of Schunk, by merely decreasing the number of pleats the
arrangement as claimed can be arrived since the pleats would radially spread
apart and provide an arrangement where the planar section of the filter pleats
extend towards the central longitudinal axis" (Ans. 20), and 3) "[i]n the case
of fig. 26 of Herrin, by increasing the number of pleats, the arrangement as
claimed can be arrived since the pleats would radially come closer and
provide an arrangement where the planar section of the filter pleats extend
towards the central longitudinal axis" (Ans. 23-24). The Examiner
concludes that "[b ]ased on the desired design choice and required surface
area/flow velocity one of ordinary skill would have found it obvious to have
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Appeal2017-008346
Application 14/440,665
arrived at the claimed invention since an obvious matter of design choice to
change the general shape or size of a known element in the absence of a
disclosed non-obvious advantage associated with the change" (Ans. 20, 24).
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner's findings that
Schunk's and Herrin's pleats can be selected and packed together as a matter
of design choice based upon required flow area and velocity such that the
pleats extend in a plane containing an entire length of said central
longitudinal axis do not establish that those references would have provided
one of ordinary skill in the art with an apparent reason to make that
modification. Thus, the record indicates that the rejection is based upon
impermissible hindsight in view of the Appellants' disclosure. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art."). We
therefore reverse the rejections under 35 U.S.C. § 103.
DECISION
The rejections of claim 23 under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the subject matter which the
inventors regard as the invention and claim 25 under 35 U.S.C. § 112(d) as
failing to further limit the subject matter of the claim upon which it depends
are affirmed. The rejections under 35 U.S.C. § 103 of claims 14, 17, 19, 20,
22, and 24--26 over Schunk, claim 21 over Schunk in view of Koch,
claim 23 over Schunk in view of Kuwahara, claims 27 and 28 over Schunk
in view of Schmitz or Soules, claims 14, 17, 19, 20, 22, and 24--26 over
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Appeal2017-008346
Application 14/440,665
Herrin, claim 21 over Herrin in view of Koch, claim 23 over Herrin in view
of Kuwahara and claims 27 and 28 over Herrin in view of Schmitz or Soules
are reversed.
The Examiner's decision is affirmed-in-part.
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-IN-PART
9
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK OBERLI and DIRK SCHONFELD
Appeal2017-008346
Application 14/440,665
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and A VEL YN M. ROSS,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge, dissenting in part.
I dissent, with respect, from the affirmances of the rejection of
claim 23 as indefinite under 35 U.S.C. § 112, second paragraph, and the
rejection of claim 25 as failing to further limit the claims (claims 14, 22,
and 24) from which it depends.
With regard to claim 23, the Examiner determined from Figure 1 that
"planes 13 which represent the orientation of the two pleats are not parallel
to another." (Final Act. 3, 11. 1-2.) On this basis, the Examiner concluded
that "it is unclear how pleats can be parallel in a tubular filter arrangement."
Appellants respond that a dictionary definition of the term "parallel"
includes "closely similar or corresponding as in purpose, tendency, time, or
essential parts," and urges that the pleats are closely similar "[i]n this
application for claim 23." (App. Br. 4.)
Appeal2017-008346
Application 14/440,665
As the Majority indicates (Op. 3), the Specification must be consulted
to determine how terms are used, and thus, what a person having ordinary
skill in the art would understand a term to mean, as it is used in the claims.
Mathematically, of course, the Examiner is correct: each differently
directed radius of a circle, except the two opposing radii on a diameter of the
circle, are angularly displaced from one another, and the distance between
two points of such radii that are equidistant from the center, changes as the
distance from the center changes. Thus, different radii are not parallel to one
another.
However, as the Majority finds (id.), the Specification teaches that
"the aforementioned pleat spacings in alternating sequence between the
filter pleats 5 and the center filter pleats 7 of each and every w-pleat
structure are identical, and all side walls 28, 30, 32 extend virtually parallel
to one another" (Spec. 11-12.) Strictly speaking, of course, there is no one
spacing between pleats, except at a given radius from the from the central
longitudinal axis of the tube, so the sides walls within each pleat structure
are not parallel, contrary to the conclusion of the Majority (Op., sentence
bridging 3--4, finding that the Specification indicates that "the side walls
within each co-pleat structure[] are disposed parallel to one another"). But,
of course, it is clear that the Specification does not mean to use the term
"parallel" in the mathematically precise sense. 2 (Further evidence of this is
the disclosure of "blocking," in which adjacent filter folds of the same
height, adjacent to one another, are "displaced toward one another due to
their flexibility or resilience, and thus come into direct contact with one
2 This issue could be avoided by amending claim 23 to recite that the co-pleat
structures are "virtually parallel to one another."
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Appeal2017-008346
Application 14/440,665
another along their effective filtering surface." (Spec. 2, 1st full para.) The
point of the invention is not that the dual height pleats do not flex, but that
they do not flex so much that blocking occurs. In this practical sense, the
folds remain "parallel" ("virtually parallel," for the hype-precise) in
operation.
Moreover, if, as the Majority finds, "merely the side walls ... are
disposed parallel to one another," it is difficult to argue that the pleats, which
contain the side walls, are not parallel to one another. Further in this regard,
the Examiner rejected claim 23 as obvious in view of Schunk, arguing that it
would have been obvious to decrease the number of pleats. But it cannot
have been obvious to obtain an impossible result, and the rejection was not
made in the alternative.
In conclusion, I would reverse the rejection of claim 23 as indefinite.
As for claim 25, while it certainly can be said that Appellants'
unelaborated assertion that the "configured to" recitation amounts to a
structural characteristic limiting the claim 24 subject matter is incomplete, it
cannot be said that the assertion does not find support in the Specification.
In particular, the Specification reveals that:
To equalize the charge transport within the filter medium, the
filter pleat transitions 9 are also equalized. In particular, they
form continuous return bends. In contrast to the acute-
angled pleat transition as shown in the prior art, the
transitions of this invention form no points having voltage
spikes. The charge could be abruptly passed to the hydraulic
fluid via the sharp-edged pleating.
(Spec. 11, 2d full para.)
Thus, contrary to the finding of the Majority, the Specification does
disclose further structural differences between embodiments of the claimed
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Application 14/440,665
filter element that result in further limitations to the claims from which
claim 25 depends.
Accordingly, I would also reverse the rejection of claim 25.
Thus, I dissent-in-part, with respect to the rejections under§ 112, with
respect.
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