Ex Parte Schmitz et al

Board of Patent Appeals and Interferences

Mar 12, 2012

11880603 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/880,603 07/23/2007 Kelly R Schmitz 20069.0135US01 6875
52835 7590 03/13/2012
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
P.O. BOX 2902
MINNEAPOLIS, MN 55402-0902
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
03/13/2012 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 KELLY R. SCHMITZ
and GERARD MALGORN
____________

Appeal 2011-001415
Application 11/880,603
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-6, 8-12, 14-21, and 23-25. We have jurisdiction
under 35 U.S.C. § 6.
We REVERSE.
Appellants claim a filter cartridge 30 comprising a plurality of stacked
disks 70 between a first endplate 60 and a second endplate 50 and a
compression assembly 250 including a compression endplate 270 between
the first endplate and the plurality of stacked disks, wherein "the first
Appeal 2011-001415
Application 11/880,603

2
endplate and the compression endplate are devoid of a fluid passageway"
(independent claims 1 and 111; Figs. 1-2). Appellants also claim a similar
filter cartridge comprising a plurality of stacked disks 70, a first endcap 50,
and a second endcap 1900 having a recess 1960, "wherein the second endcap
is a spring endcap operable to flex and/or compress into and out of the recess
to impart a compression force on said plurality of stacked disks"
(independent claim 20; Figs. 1-2 and 8-9).
Representative claims 1 and 20 reads as follows:
1. A replaceable filter cartridge for use with an outer shell
comprising:

a plurality of stacked disks of filter media extending between a first
endplate and a second endplate;

a plurality of frame members extending axially between and
connected to the first endplate and the second endplate;

a compression assembly between the first endplate and the plurality of
stacked disks, the compression assembly including at least one compression
member and a compression endplate acted on by the compression member
and engaged with the plurality of stacked disks of filter media, the
compression endplate is movable relative to the plurality of frame members
in a direction toward the second endplate, and the compression member
being positioned and configured to impart a compression force on said
plurality of stacked disks of filter media via the compression endplate
thereby biasing said plurality of stacked disks of filter media in an axial
direction toward the second endplate; and

the first endplate and the compression endplate are devoid of a fluid
passageway.

1 The claim 11 phrase "the compression endplate" appears to lack antecedent
basis.
Appeal 2011-001415
Application 11/880,603

3

20. An incinerable filter cartridge comprising:

a plurality of stacked disks of filter media extending between a first
end and a second end;

a first endcap positioned adjacent the first end;

a second endcap positioned adjacent the second end, the second
endcap being integrally formed with at least once compression member, the
second endcap including a first surface operable to support the plurality of
stacked disks of filter media and a second surface having a recess;

a plurality of frame members connected to the first endcap and the
second endcap,

the second endcap includes a boss portion extending from the first
surface in an axial direction toward the plurality of stacked disks of filter
media and positioned within a center opening of at least one of the plurality
of stacked disks,

wherein the second endcap is a spring endcap operable to flex and/or
compress into and out of the recess to impart a compression force on said
plurality of stacked disks of filter media thereby biasing said plurality of
stacked disks of filter media in an axial direction toward the first end.

The Examiner rejects the appealed claims under 35 U.S.C. § 103(a) as
unpatentable over Whipple (US 2,856,076, patented Oct. 14, 1958) in view
of Connors (US 5,435,915, patented Jul. 25, 1995) and/or other references of
record.
The Examiner finds that Whipple's filter cartridge does not include the
feature of independent claims 1 and 11 wherein "the first endplate and the
compression endplate are devoid of a fluid passageway" but concludes that it
Appeal 2011-001415
Application 11/880,603

4
would have been obvious to provide the filter cartridge of Whipple with this
feature in view of Connors (Ans. para. bridging 6-7 and 13-15).
We agree with Appellants that the Examiner has failed to provide a
reasonable basis for modifying Whipple in view of Connors so as to obtain
this claim feature (App. Br. 4-7 and 17-21; Reply Br. 4-7). The record
reflects that the Examiner's proposed modification would somehow
restructure Whipple's filter cartridge in such a way that plates 22 and 23
would no longer contain a passageway for sleeve 30 and tube 39 (Fig. 4).
However, the Examiner has not articulated reasoning with rational
underpinning as to specifically how and why such restructuring would have
been made by an artisan in view of Connors. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness") quoted with approval in KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 417-18 (2007).
The rejection of remaining independent claim 20 is based on the
Examiner's finding that "Whipple's Fig. 4 discloses that the second endcap
(Fig. 4, backing plate 23, coiled spring 29, and top plate 22) is a spring
endcap operable to flex and/or compress into and out of a recess (where
spring 29 sits in backing plate 23) to impart a compression force on the
stacked disks" (Ans. 26).
However, we share Appellants' position that the Examiner has failed
to establish that the above mentioned plates and spring of Whipple constitute
a spring endcap operable to flex and/or compress into and out of the endcap
recess to impart a compression force on the stacked disks as required by
Appeal 2011-001415
Application 11/880,603

5
claim 20 (App. Br. 24-25). On this record, the Examiner's finding is
conclusory and unsupported by evidence.
For these reasons, we cannot sustain any of the § 103 rejections
advanced by the Examiner in this appeal.
The decision of the Examiner is reversed.
REVERSED

cam