Ex Parte Reder et al

Board of Patent Appeals and Interferences

Aug 29, 2012

10520733 (B.P.A.I. Aug. 29, 2012)

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.
10/520,733 01/10/2005 Ernst Reder fmw-cq-pct-us 9733
28862 7590 08/30/2012
HUDAK, SHUNK & FARINE, CO., L.P.A.
2020 FRONT STREET
SUITE 307
CUYAHOGA FALLS, OH 44221
EXAMINER
KURTZ, BENJAMIN M
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
08/30/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERNST REDER, INGO MOHR, KLAUS-PETER WEBER, and
JORG LINDLOFF

____________

Appeal 2011-006949
Application 10/520,733
Technology Center 1700
____________

Before PETER F. KRATZ, ROMULO H. DELMENDO, and
DEBORAH KATZ, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
App
App

134(
juris
parti
to th
into
is rep

1 The
App
2 Br.
mail
eal 2011-0
lication 10
Ernst Re
a) of a fina
diction un
We REV

The inve
cular wate
e inventor
a pressure
roduced b

Appellan
eal Brief fi
1-2, 5; Fin
ed Decemb
06949
/520,733
der, et al.,
l rejection
der 35 U.S
ERSE.
ST
ntion relat
r filters. S
s, the filter
-proof oute
elow:

ts state tha
led Octob
al Office
er 7, 2010
the Appel
of claims
.C. § 6(b)
ATEMEN
es to a filt
ubstitute S
cartridge
r containe

t the real p
er 18, 201
Action ma
(“Ans.”)
2
lants,1 see
1-10, 15-
.
T OF TH
er cartridg
pecificati
is inserted
r. Id. Fig
arty in in
0 (“Br.”) a
iled June
at 2.
k our revie
19, 21, and
E CASE
e for use i
on (“Spec
as a repla
ure 1 of th

terest is “B
t 1.
7, 2010; E
w under 3
25-28.2 W
n filter dev
.”) at 3. A
ceable com
e subject
RITA Gm
xaminer’s
5 U.S.C.
e have
ices, in
ccording
ponent
application
bH.”
Answer
§

App
App

Figu
wher
6, a p
botto
14. I
Figu
1, wh
perip
inter
wall
the p
and t
eal 2011-0
lication 10
re 1 above
ein the ca
eripheral
m 11 incl
d. at 8.
Figure 2
re 2b abov
erein the
heral wall
ior of the f
16 in the c
ressures w
he curved
06949
/520,733
depicts a
rtridge inc
wall 3, a l
uding a ho
b of the su
e shows a
horizontal
3 with the
ilter cartri
ommon w
ithin the f
edge secti
perspectiv
ludes, amo
ateral wall
rizontal m
bject appl
magnified
middle pa
curved ed
dge and jo
all section
ilter cartri
on 14 bein
3
e sectiona
ng other e
16, and a
iddle part
ication is r
view of d
rt 12 merg
ge section
ins its ver
15. Id. at
dge result
g pressed
l view of t
lements, a
cartridge l
12 and a c
eproduced

etail “X” a
es in the d
14, whic
tical sectio
9. Accor
in the hori
upward, w
he filter ca
cartridge
id 10 that
urved edg
below:
s indicate
irection o
h extends
n with the
ding to the
zontal mid
hich then
rtridge 1,
container
has a lid
e section

d in Figur
f the
into the
lateral
inventors
dle part 1
assume
e
,
2
Appeal 2011-006949
Application 10/520,733

4
positions 12’ and 14’, which in turn lead to tensile forces FZ, which have
their main components FZH in the common wall section 15 parallel to the
lateral wall 16. Id. at 10. This is said to result in “only a small, inward
oriented force act[ing] on the welded section 19, which reduces the risk of
shear fracture under the action of pressure impacts.” Id.
Claim is reproduced below:
1. A filter cartridge with a filter material, comprising: a
cartridge container with a bottom wall and a peripheral wall and
a lid, which shuts the cartridge container, comprised of a lid
bottom and a strip-shaped lateral wall having a length measured
parallel to the peripheral wall and having a linear vertical cross
section along the entire length of the lateral wall, wherein the
lateral wall is fitted at the inner side of the peripheral wall and
the lateral wall is in contact with the peripheral wall along the
entire length of the lateral wall, wherein the lid bottom merges
with the lateral wall in the direction of the peripheral wall along
a first end of an inward curved edge section, wherein the first
end of the curved edge section and the lateral wall join in a
common wall section, tapering inwards, in a forming region,
wherein a lower end of the common wall section is parallel to
the cartridge container peripheral wall adjacent thereto, and
wherein the lateral wall has an upper wall section which is
connected to and extends upward from the common wall
section that is parallel to the common wall section lower end
and cartridge container peripheral wall adjacent thereto,
wherein glue or a weld connects at least one section of the
common wall section to the peripheral wall, and wherein the
curved edge section has a second end that merges into an
essentially horizontal lid bottom middle section.
Br. 20 (Claims App’x).
The Examiner rejected claims 1-10, 15-19, 21, and 25-28 under 35
U.S.C. § 103(a) as follows:
Appeal 2011-006949
Application 10/520,733

5
I. Claims 1-8, 16-18, and 25-28 as unpatentable over Vannoy,3
Verlinden,4 and Wagner;5
II. Claims 9, 10, 19, and 21 as unpatentable over Vannoy,
Verlinden, Wagner, and Stifano;6
III. Claim 15 as unpatentable over Vannoy, Verlinden, Wagner, and
Gizowski.7
Ans. 4-14.

DISCUSSION
The Examiner acknowledges that Vannoy does not describe the
limitation “the first end of the curved edge section and the lateral wall join in
a common wall section, tapering inwards, in a forming region,” as recited in
claim 1 (see also claims 25 and 26). Ans. 4. To account for this difference,
the Examiner relies on Verlinden. Id. at 4-5. The Examiner further asserts
that “Wagner also demonstrates that . . . a second end of the curved edge
section merg[ing] into a horizontal lid bottom was recognized as part of the
ordinary capabilities of one skilled in the art and therefore the claim would
have been obvious.” Id. at 6.
The Appellants argue that the combination of Vannoy and Verlinden
constitutes “impermissible hindsight picking and choosing of the isolated
features from the cited references.” Br. 6. Emphasizing that the claimed

3 U.S. Patent 5,830,348 issued November 3, 1998.
4 U.S. Patent 3,952,904 issued April 27, 1976.
5 U.S. Patent 1,371,530 issued March 15, 1921.
6 U.S. Patent 4,109,820 issued August 29, 1978.
7 U.S. Patent Application Publication 2001/0000894 A1 published May 10,
2001.
Appeal 2011-006949
Application 10/520,733

6
filter cartridge is specifically designed to withstand the forces and pressure
conditions to which a filter cartridge can be subjected, the Appellants urge
that a person of ordinary skill in the art would not have considered any of the
teachings of Wagner, which relates to ice cream cans or containers for milk.
Br. 6, 7.
Thus, the issue arising from these contentions is:
Did the Examiner err in concluding that a person of ordinary skill in
the art would have combined the prior art references in the manner claimed?
We agree with the Appellants that the Examiner’s rejections are not
well founded. Our reasons follow.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The Supreme Court of the United States explained that “a patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“Although common sense directs one to look with care at a patent
application that claims . . . the combination of two known devices according
to their established functions, it can be important to identify a reason that
would have prompted a person of ordinary skill . . . to combine the elements
in the way the claimed new invention does.” Id. While the Supreme Court
warned against “[r]igid preventative rules that deny factfinders recourse to
common sense,” it stated that the “factfinder should be aware . . . of the
distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning.” Id. at 421.
Appeal 2011-006949
Application 10/520,733

7
Vannoy describes a fuel filter and regulator combined into a single
assembly mounted to a vehicle for fuel pressure filtration and regulation.
Col. 1, ll. 6-11.
Verlinden, by contrast, relates to fluid-tight containers, such as beer
barrels. Col. 1, ll. 5-9. The Examiner did not direct us to any portion of
Verlinden’s teachings that the containers disclosed therein would be subject
to the types of pressures contemplated in Vannoy or the claimed invention.
Wagner, like Verlinden, does not describe containers designed for
pressurized fluids. Instead, as pointed out by the Appellants, Wagner relates
to receptacles for items such as ice cream or milk. P. 1, ll. 10-14.
These facts reveal that the Examiner’s relied-upon evidence falls short
of demonstrating that the elements disclosed in Verlinden or Wagner would
be suitable in Vannoy’s device. Absent some rational underpinning or a
showing that the teachings of these patents are sufficiently interrelated to
support a conclusion that a person of ordinary skill in the art would have
combined them in the manner claimed, we must agree with the Appellants
that the rejections are based on impermissible hindsight reconstruction. KSR
at 418 (“Often, it will be necessary . . . to look to interrelated teachings of
multiple patents; the effects of demands known to the design community or
present in the marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.”) (emphasis added).

Appeal 2011-006949
Application 10/520,733

8
ORDER
The Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1-10,
15-19, 21, and 25-28 are reversed.

REVERSED

tc