Ex Parte Stamey et al

Patent Trial and Appeal Board

Jul 9, 2018

12139800 (P.T.A.B. Jul. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/139,800 06/16/2008 Willie L. Stamey JR.
44200 7590 07/09/2018
HONIGMAN MILLER SCHWARTZ & COHN LLP
650 Trade Centre Way
Suite 200
Kalamazoo, MI 49002-0402
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.
215407-117646 2261
EXAMINER
KIM, VICKIE Y
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
07/09/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIE L. ST AMEY JR., MARK A. ROLL, and
ROBERT H. FERGUSON
Appeal 2016-006537
Application 12/139,800
Technology Center 1700
Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
AVEL YN M. ROSS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-5, 7-10, 13-17, and 19-26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 This Decision includes citations to the following documents: Specification
filed June 16, 2008 ("Spec."); Final Office Action dated May 19, 2014
("Final"); Appeal Brief filed Jan. 9, 2015 ("Br."); and Examiner's Answer
dated July 7, 2015 ("Ans.").
2 Appellants identify the real party in interest as Wix Filtration Corp. LLC.
Br. 3.
Appeal 2016-006537
Application 12/139,800
The invention relates to filter elements for removing impurities from a
fluid. Spec. ,r,r 3--4. Figure 9, reproduced below, illustrates a filter element
in accordance with an embodiment of the invention. Id. ,r 15 .
.. ,.,....,J 1,6&4J ,,.1662
UJ7G,.,'
Figure 9, above, is a cross-sectional view of assembled, replaceable filter
element 1600. Id. n 19, 33. "[F]ilter element 1600 includes an upper, first
end cap 1602, a lower, second end cap 1610, filter media 1604, and a central
tube 1608 extending from the second end cap 1610." Id. ,r 33. In the Figure
9 embodiment, central tube 1608 and lower end cap 1610 are unitary, and
define a subcomponent of replaceable filter element 1600. Id. ,r 34. This
subcomponent is illustrated in greater detail in Figure 8, the relevant portion
of which is reproduced below.
2
Appeal 2016-006537
Application 12/139,800
The portion of Figure 8 shown above illustrates a cross-sectional view
of central tube 1608 and lower end cap 1610 of replaceable filter element
1600. Id. n 19, 33. Inner surface 1620 includes first surface 1626 having
first diameter Cl, and second surface 1628 having second diameter C2. Id.
,r 36. Cl is greater than C2. Id. First and second surfaces 1626, 1628 are
demarcated by shoulder portion 1630 that projects radially inwardly toward
central axis A-A. Id. Shoulder portion 1630 includes shoulder surface 1632,
defined by angle 8 (shown in Figure 6) that is approximately equal to, for
example, 135°. Id. ,r 38. Inner surface 1620 is sized and shaped to
correspondingly engage a standpipe (see, e.g., standpipe 1575 in Figure 5).
Id. ,r 41. "Functionally, the shoulder portion 1630 acts as a projectionless
standpipe actuator as the shoulder surface 1632 contacts and engages the
axial surface portion 1577 of the valve." Id.; see Figure 5 (illustrating axial
surface portion 1577).
Of the appealed claims, claims 1 and 13 are independent. Claim 1
recites "[a] sub-assembly of a replaceable filter element." Claim 13 recites
"[a] filter element" and includes limitations similar to those recited in claim
1, but also requires an additional end cap and filter media extending between
the end caps. For reference, claim 1 is reproduced below.
1. A sub-assembly of a replaceable filter element interfaceable
with a standpipe, comprising:
an end cap defining a first central opening;
a central tube integrally connected to the end cap and
circumscribing the central opening, wherein the central tube
includes: a proximal end that is integrally connected to the end
cap, a distal end opposite the proximal end, wherein the distal
end forms a second central opening, an outer side surface
extending between the proximal end and the distal end, wherein
the outer side surface extends substantially perpendicularly
3
Appeal 2016-006537
Application 12/139,800
with respect to an upper swf ace of the end cap for an entire
length of the central tube from the proximal end to the distal
end, and an inner side surface extending between the proximal
end and the distal end, wherein the inner side surface forms a
central passage that extends through the central tube from the
proximal end to the distal end, wherein access to the central
passage is permitted by each of the first central opening and the
second central opening, wherein the inner side surface includes:
a first segment extending from the proximal end, an
intermediate shoulder segment extending from the first
segment, and a second segment extending from the intermediate
shoulder segment, wherein the first segment forms the central
passage to include a first constant diameter, wherein the second
segment forms the central passage to include a second constant
diameter, wherein the second diameter is less than the first
diameter, wherein the intermediate shoulder segment forms the
central passage to include a non-constant diameter; and
a seal disposed at least proximate a top surface of the
distal end of the central tube.
Br. 20, Claims Appendix ( emphasis added).
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
1. claims 1, 2, 7-10, 13, 14, 22, and 26 over Cooper (US Re.
30,779, issued Oct. 20, 1981) in view of Thomas (US 6,571,962 B2, issued
June 3, 2003);
2. claims 3, 4, 15, and 16 over Cooper in view of Thomas and
Rampen (US 2005/0133433 Al, published June 23, 2005);
3. claims 5 and 1 7 over Cooper in view of Thomas and J okschas
(US 2003/0010707 Al, published Jan. 16, 2003);
4. claims 19, 20, 23, and 24 over Cooper in view of Thomas and
Marshall (US 2008/0053886 Al, published Mar. 6, 2008); and
5. claims 21 and 25 over Cooper in view of Thomas and Fick (US
6,607,665 B2, issued Aug. 19, 2003). Final 2-10.
4
Appeal 2016-006537
Application 12/139,800
With respect to the first ground of rejection, Appellants present
arguments in support of patentability of the following groups of claims: (1)
claims 1 and 13; (2) claims 22 and 26; and (3) claim 8. See Br. 8-17. The
remaining claims subject to this ground of rejection will stand or fall with
claim 1 or claim 13. 37 C.F.R. § 4I.37(c)(iv) (2014). Appellants' traversal
of grounds of rejection 2-5 relies on the same arguments presented in
support of patentability of claims 1 and 13. See Br. 18.
Claims 1 and 13
The Examiner finds Cooper discloses the invention as claimed in
claims 1 and 13 with the exception of an outer side surface extending
substantially perpendicularly with respect to an upper surface of the end cap
for an entire length of the central tube from the proximal end to the distal
end. See claim 1 (italicized language) supra p. 4; Br. 22 ( claim 13). In
support of these findings, the Examiner provides Figure A, reproduced
below, which is a portion of Cooper Figure 4 with annotations added by the
Examiner. See Final 2.
Fig. A
8.4' ' 85
86 89
rn.,....-.::a....~.
/ )
80
. Ftrs.t
Segrnerit
Sewnd
Segment
Figure A is a longitudinal sectional view of upper end cap 80 and
upper weir follower 82, attached thereto, in the filter assembly of Cooper
Figure 4. See Cooper 4:36-38. Figure A includes the Examiner's
annotations identifying the structure that corresponds to the claimed central
5
Appeal 2016-006537
Application 12/139,800
tube, first segment, intermediate shoulder segment, and second segment.
See Final 2--4. The Examiner finds the outer surface of Cooper's central
tube extends substantially perpendicularly with respect to the upper surface
of end cap 80 along the first and second segments. Id. at 3. The Examiner
finds, however, that the outer surface along the intermediate shoulder
segment is not substantially perpendicular as claimed, but at an angle of
approximately 45 degrees with respect to the upper surface of end cap 80.
Id.
The Examiner finds Thomas teaches a filter element that includes an
end cap and integral central tube 66 having an inner side surface with first
and second segments and an intermediate shoulder segment as claimed.
Final 3 ( citing Figs. 9 and 11 ). The Examiner finds the entire length of
central tube 66's outer surface is perpendicular to the end cap. Id. The
Examiner relies on Thomas as evidence that filter elements having central
tubes with varying thicknesses in different portions were known in the art at
the time of the invention. Id. at 4. The Examiner finds that one of ordinary
skill in the art would have modified Cooper's central tube by increasing its
thickness along various portions of the outer surface in order to make those
portions stronger than others. Id. The Examiner further finds making such
modifications in a manner that resulted in a central tube having an outer
surface that was perpendicular to the end cap would have been an obvious
design choice, e.g., to provide an easy fit with other components of the filter
element. Id.
Appellants request reversal of the Examiner's rejection on the basis
that the Examiner has not met the burden to show the prior art teaches or
suggests every limitation of claims 1 and 13. Br. 10-11. Specifically,
6
Appeal 2016-006537
Application 12/139,800
Appellants contend the Examiner has not identified the disclosure in Cooper
that corresponds to the claimed first, second, and intermediate shoulder
segments with sufficient clarity. Id. at 11. We are not persuaded by this
argument because Appellants have not explained, with any degree of
specificity, why the Examiner's findings with respect to the three claimed
segments is unclear from the Examiner's annotated Figure A. Nor have
Appellants identified error in the Examiner's findings that Cooper discloses
three segments as claimed, for the reasons explained in the Answer. See
Ans. 2.
Appellants argue Cooper explicitly teaches that end cap 80 and weir
follower 82 must be identically-shaped in order to properly fit together. Br.
12-13. Appellants contend that if Cooper's end cap were modified as
proposed by the Examiner, the end cap would no longer have the shape of
the weir follower, rendering the end cap unsatisfactory for its intended
purpose. Id. at 13-14.
"It is well-established that a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Appellants have not shown persuasively that the
Examiner erred in finding one of ordinary skill would have possessed the
requisite skills to modify Cooper's filter element, including the outer surface
of the central tube and any parts that connect thereto, such as the weir
follower. See Ans. 4 ("[O]ne skilled in the art would immediately recognize
that if you change the shape of one element, an element that is supposed to
be identical would also have to change, otherwise it would cease to
identical."); KSRint'l Co. v. Teleflex Inc., 550 U.S. 398,421 (2007) ("A
7
Appeal 2016-006537
Application 12/139,800
person of ordinary skill is also a person of ordinary creativity, not an
automaton."); In re Hanlon, 285 F.2d 829,831 (CCPA 1961) ("[A] mere
change in shape or form is not patentable unless the changed element
performs a new function"). Further, Appellants have not persuasively
refuted the Examiner's finding that the ordinary artisan would have made
such modification to achieve the benefits of increased strength and improved
fit (see Final 4). More specifically, we are not persuaded by Appellants'
arguments because they are not supported by evidence. See In re Geisler,
116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that argument by counsel
cannot take the place of evidence); In re Fox, 471 F.2d 1405, 1407 (CCPA
1973) (affirming the Board's decision and stating "[i]n this court appellant
has not denied the existence of the facts on which the examiner rested his
obviousness rejection nor the added facts of which the board took judicial
notice").
We also agree with the Examiner's alternative finding that Cooper,
alone, discloses a central tube having an outer side surface extending
substantially perpendicularly with respect to an upper surface of the end cap
for an entire length of the central tube from the proximal end to the distal
end, as recited in claims 1 and 13. See Ans. 3--4. As noted by the Examiner,
the term "substantially" is a broad term. Id. at 3. We find no indication in
the specification that "substantially perpendicularly" requires an exact angle
of 90 degrees between the central tube's outer side surface and upper surface
of the end cap. Cooper does not specify the angle of the outer side surface
of the segment identified by the Examiner as corresponding the claimed
shoulder segment. Accordingly, it was reasonable for the Examiner to find
8
Appeal 2016-006537
Application 12/139,800
that Cooper's central tube has an outer surface that extends substantially
perpendicularly as claimed.
Claims 22 and 26
Claims 22 and 26 depend from claims 1 and 13, respectively, and
recite "wherein the first segment forms a first constant thickness of the
central tube, wherein the second segment forms a second constant thickness
of the central tube, wherein the intermediate shoulder segment forms a non-
constant thickness of the central tube, wherein the first thickness is less than
the second thickness." Br. 24--25, Claims Appendix. Appellants contend
the Examiner erred in finding that filter elements having central tubes with
varying thicknesses in different portions were known in the art at the time of
the invention. Br. 15-16. Appellants argue both Cooper and Thomas are
silent with respect to varying thickness of the central tube. Id. at 16.
Appellants further assert that "both ... Cooper and Thomas appear to
include a constant thickness throughout the length of their respective alleged
central tube structures." Id.
Appellants' arguments are not persuasive because they are not
consistent with Figures 9 and 11 of Thomas which illustrate differences in
wall thickness along the length of Thomas' s central tube, including a
thickness of a second segment that is greater than a thickness of the first
segment. Ans. 5.
Claim 8
Claim 8, by virtue of its dependency from claim 7, requires that the
inner surfaces of the first and second segments of the central tube are
substantially perpendicular with respect to the upper surface of the end cap,
and that the inner surface of the shoulder segment is not substantially
9
Appeal 2016-006537
Application 12/139,800
perpendicular with respect to the upper surface of the end cap. Br. 21,
Claims Appendix. Claim 8 further recites "wherein the inner shoulder
surface portion is a standpipe actuator." Id.
Appellants argue the Examiner has not identified sufficient evidence
to support a finding that Cooper's shoulder segment is inherently a standpipe
actuator. Br. 17. As noted by the Examiner, Appellants' argument is based
on a misapprehension of the Examiner's rejection as based on inherency.
Ans. 5. Rather, the Examiner's rejection is based on the correct
interpretation of claim 8 as reciting a functional limitation. Id.
"[P]atentability of apparatus claims must be shown in the structure claimed
and not merely upon a use, function, or result thereof." In re Gardiner, 171
F.2d 313, 315-16 (CCPA 1948). Courts have interpreted functional
language in an apparatus claim as requiring that the apparatus possess the
capability of performing the recited function. See Intel Corp. v. US. Int'!
Trade Comm 'n, 946 F.2d 821, 832 (Fed. Cir. 1991).
As discussed above, the Examiner has shown persuasively that
Cooper discloses a central tube having the same three segments recited in
claim 1, from which claim 8 depends indirectly. Therefore, it was
reasonable for the Examiner to find that the shoulder segment of Cooper's
central tube ( as illustrated in Figure A, above) likewise would have been
capable of functioning as a standpipe actuator. See Final 4.
In sum, Appellants have failed to persuade us of reversible error in the
Examiner's conclusion of obviousness as to claims 1, 8, 13, 22, and 26.
Accordingly, we sustain the first ground of rejection as to claims 1, 2, 7-10,
13, 14, 22, and 26. We have considered Appellants' arguments in support of
patentability of claims 1, 8, 13, 22, and 26 to the extent applicable to the
10
Appeal 2016-006537
Application 12/139,800
claims subject to grounds of rejection 2-5, but are not persuaded of
reversible error on the part of the Examiner. Accordingly, we likewise
sustain these grounds of rejection.
The Examiner's decision to reject claims 1-5, 7-10, 13-17, and 19-
26 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED
11