Ex Parte Smith et al

Patent Trial and Appeal Board

Dec 31, 2014

12897457 (P.T.A.B. Dec. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL B. SMITH, KEVIN J. RUCINSKI,
ALFRED TONDREAU, and KEN CONTI
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Appeal 2013-002572
Application 12/897,457
Technology Center 1700
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Before CHARLES F. WARREN, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1–14, 16–19, 21,
and 22 under 35 U.S.C. § 103(a) over Bauch (DE 195 41 962 A1)1 and
Baldwin (US 2,226,045). App. Br. 12; Ans. 2. We have jurisdiction.
35 U.S.C. § 6(b).
We reverse the decision of the Primary Examiner.
Claim 1, as illustrated by Specification Figure 2, illustrates
Appellants’ invention of a replaceable filter cartridge for filtering liquids
comprising among other things, a divider extending a majority of the
distance from the first to the second end of a filter media which allows

1 We refer to the translation of Bauch prepared for the USPTO by FLS, Inc.
(PTO 09-7943 September 2009) of record.
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Application 12/897,457
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liquids to rise in between the divider and the filter media, and is
representative of the claims on appeal:
1. A replaceable filter cartridge (10) for filtering liquids, comprising:
a filter media (20) adapted to allow liquids (19) to pass from an
exterior of said filter media to an interior of said filter media, said filter
media (20) having a first end and a second end, wherein said filter media
(20) has a corrugated structure formed by a continuous sheet of filter media;
said second end of said filter media (20) having a bottom cap (26)
sealingly connected to said filter media and having an opening extending
therethrough and adaptable to receive a fluid outlet for allowing liquid to
pass through said second end; and
a divider (30) adjacent to said exterior of said filter media (20), said
divider (30) having a closed end connected to said first end of said filter
media (20) and an open end that is longitudinally-spaced from said second
end of the filter media (20) such that at least a portion of said filter media
(20) located adjacent to said second end of said filter media (20) is not
directly adjacent to said divider (30), and said divider (30) extending a
majority of the distance from said first end to said second end of a filter
media (20) for allowing the liquids (19) to rise in between the divider (30)
and the filter media (20).
Appeal Br. 18 (Claims App’x) (numerals supplied). Spec. 5:4–6:19, 10:19–
11:6.
OPINION
We find that Bauch would have disclosed to one of ordinary skill in
the art a hydraulic fluid filter that, as illustrated in Bauch’s Figures 1 and 2,
has a hollow cylindrical filter element which comprises filter bellows or
media 5, hollow cylindrical grating support element 6, and unnumbered end
disks or caps at each end of filter media 5. The lower and upper end caps
are respectively shown abutting filter pot 1 at the lower end of filter media 5
and sealingly placed abutting downwardly directed or extending hollow
cylindrical skirt 7 at the upper end of filter media 5. Skirt 7 surrounds and
covers the upper region of filter media 5, leaving a gap extending from skirt
Appeal 2013-002572
Application 12/897,457
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7 to the top of filter pot 1 which is part of fluid inlet space 8 that surrounds
filter elements 5, 6. Bauch 5.
We find Baldwin would have disclosed to one of ordinary skill in the
art an air filter that removes water, oil, and other impurities from air, and, as
illustrated in Baldwin’s Figure 1, has filter element 32 engaged with mount
or head portion 31, wherein head portion 31 carries annular protecting skirt
35 which is spaced apart from filter element 32 and housing 8. Annular
protecting skirt 35 extends slightly more than half way down filter element
32 and has a flared lower end 35' to provide limited clearance 44 with
housing 8 for the purpose of deflecting and thus preventing any water, oil, or
other foreign substances from directly impinging filter element 32. Baldwin
p.1 col.2 ll.4-8, p.1 col.2 l.40–p.2 col.2 l.18.
We agree with Appellants, for the reasons in the Briefs, that the
Examiner erred in concluding that one of ordinary skill in the art would have
combined Bauch and Baldwin and thence would have been led to modify
Bauch’s hydraulic fluid filter by extending skirt 7 slightly more than half
way down filter media 5 to “prevent[] direct impingement of fluid on [filter
media 5] that may result in damage thereof” as taught by Baldwin with
respect to skirt 35 and filter element 32 of an air filter. Ans. 2–3; App. Br.
13–16; Reply Br. 2–4.
We are of the opinion that, as Appellants point out, Bauch’s skirt 7
surrounds, covers, and sealingly abuts fluid filter media 5, while Baldwin’s
skirt 35 protects air filter element 32 from direct impingement by liquids in
the air which are different functions. Indeed, Bauch extends skirt 7 only to
the extent that a gap is left between skirt 7 and the top of filter pot 1 for
entry of fluid into fluid inlet space 8 that surrounds filter elements 5, 6. We
thus fail to find in the Examiner’s position, that the modification to Bauch’s
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Application 12/897,457
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skirt 7 is for the purpose of protecting filter element 5 in similar manner to
Baldwin’s skirt 35, any technical reasoning or evidence explaining why one
of ordinary skill in the art would extend Bauch’s skirt 7 which is necessary
since the extension would result in obstructing the gap between skirt 7 and
the top of filter pot 1 and thus the entry of fluids to be filtered into fluid inlet
space 8. See, e.g., KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(“[I]t can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.”); 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.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior
art may be modified in the manner suggested by the Examiner does not
make the modification obvious unless the prior art suggested the desirability
of the modification.” (citation omitted)).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claims 1–14, 16–19, 21, and 22 under 35
U.S.C. § 103(a) over Bauch and Baldwin.
The Primary Examiner’s decision is reversed.
REVERSED