Greenwood, George et al.

Patent Trials and Appeals Board

Feb 21, 2020

12407204 - (D) (P.T.A.B. Feb. 21, 2020)

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.
12/407,204 03/19/2009 George Greenwood ACS-059C US 6896
23520 7590 02/21/2020
MAURICE M KLEE
1951 BURR STREET
FAIRFIELD, CT 06824
EXAMINER
FRISBY, KEITH J
ART UNIT PAPER NUMBER
3616
NOTIFICATION DATE DELIVERY MODE
02/21/2020 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):
burr500@gmail.com
mk@maurieklee.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE GREENWOOD, MICHAEL MCCARTHY,
and RICHARD PFEFFERLE
____________

Appeal 2018-006775
Application 12/407,204
Technology Center 3600
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/407,204

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 4, 29, 34, 48, 49, 53–58, and 60–62. An oral
hearing was held on February 11, 2020. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED INVENTION
The claimed invention relates to “expanded metal sheets having
variable sized openings, variable opening pitches, or both . . . so that the
openings are less likely to align and nest when the sheet is rolled on itself,
methods for making the sheets, filters made from the sheets, and methods for
making the filters” (Spec. ¶ 2).
Claims 1, 29, 48, and 60–62 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal:
1. A tubular filter comprising an expanded metal
sheet, the expanded metal sheet having a multiplicity of rows of
openings arranged to reduce nesting when the sheet is rolled on
itself, the sheet rolled into a tube, and welded to fix the tubular
orientation, wherein:
(i) the expanded metal sheet is formed as one piece
rather than being formed from multiple pieces of expanded metal
that have been welded together at overlap regions;

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed March 5, 2018) and Reply Brief (“Reply Br.,” filed June 19, 2018), and
the Examiner’s Answer (“Ans.,” mailed April 20, 2018) and Final Office
Action (“Final Act.,” mailed September 28, 2017). Appellant identifies
ACS Industries, Inc. of Lincoln, Rhode Island as the real party in interest.
Appeal Br. 5.
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(ii) the rolled up expanded metal sheet comprises layers
of expanded metal that are in an overlying relation with contact
between the layers; and
(iii) the pitch of the rows of openings is varied as a
function of the circumference defined by a given portion of the
expanded metal sheet in the rolled up filter so that radially
adjacent openings do not nest.
REJECTIONS
Claims 1, 4, 29, 34, 48, 49 and 53–55 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Nagahashi et al. (EP 1008497 Al, published
June 14, 2000) (“Nagahashi”) or, in the alternative, under 35 U.S.C.
§ 103{a) as obvious over Nagahashi, Lindsey et al. (WO 03/057347 Al,
published July 17, 2003) (“Lindsey”), and Appellant’s admitted prior art (the
prior art multi-piece filter (Exhibit C) disclosed in the documents filed on
May 9, 2011) (“AAPA”).
Claims 1, 4, 29, 34, 48, 49 and 53–55 are rejected under 35 U.S.C.
§ 103(a) as obvious over Lindsey, AAPA, Nagahashi, and Rice
(US 5,855,635, issued Jan. 5, 1999).
Claims 56–58 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nagahashi or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Nagahashi, Lindsey, AAPA, and Goda et al. (US 6,202,271 B1,
issued Mar. 20, 2001) (“Goda”).
Claims 56–58 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lindsey, AAPA, Nagahashi, Rice, and Goda.
Claims 60–62 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nagahashi or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Nagahashi, Lindsey, AAPA, and Greenwood (US 2006/0037298 A1,
published Feb. 23, 2006).
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Claims 60–62 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lindsey, AAPA, Nagahashi, Rice, and Greenwood.
ANALYSIS
Anticipation
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1, 29, and 48 as anticipated by Nagahashi at
least because Nagahashi does not disclose that “the pitch of the rows of
openings is varied as a function of the circumference defined by a given
portion of the expanded metal sheet in the rolled up filter so that radially
adjacent openings do not nest,” as recited in claim 1, and similarly recited in
claims 29 and 48 (Appeal Br. 16–27).
The Examiner cites Figures 5 and 6 of Nagahashi as disclosing the
argued feature (Final Act. 2). The Examiner, thus, asserts at page 7 of the
Final Office that
[t]he pitch between rows of openings [in Nagahashi] is varied as
a function of the circumference defined by a given portion of the
expanded metal sheet in the rolled up filter (Fig. 5) so that
radially adjacent openings do not nest (Fig. 6)[,]
and further asserts at pages 9–10 that
Fig. 5 of Nagahashi clearly shows that the pitch of the rows of
openings increases from left to right. Rolling a sheet having rows
of openings that increase in pitch from one end of the sheet to the
other as shown in Fig. 5 would clearly produce a filter in which
the pitch of the rows of openings varies as a function of the
circumference defined by a given portion of the sheet.
* * *
Fig. 6 of Nagahashi clearly shows that radially adjacent openings
do not nest. Thus, the drawings of Nagahashi clearly show the
claimed structure.
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The difficulty with the Examiner’s findings is that the only discussion
of Figures 5 and 6 appears in paragraphs 9, 15, and 16 of Nagahashi. And,
as Appellant observes, there is no mention there of varying pitch as a
function of circumference; nor is there any mention of nesting (Appeal
Br. 17–21).2
Responding to Appellant’s arguments, the Examiner asserts in the
Answer that “Fig. 5 of Nagahashi clearly shows that the pitch of the rows of
openings increases from left to right” and that “[r]olling a sheet having rows
of openings that increase in pitch from one end of the sheet to the other as
shown in Fig. 5 would clearly produce a filter in which the pitch of the rows
of openings varies as a function of the circumference defined by a given
portion of the sheet” (Ans. 10). The Examiner also opines that “Fig. 6 of
Nagahashi clearly shows radially adjacent openings that do not nest” (id.
at 11). Yet, the law is well-established that “patent drawings do not define
the precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”
Hockerson–Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956

2 Referencing Figure 5, which Nagahashi describes as “a plan view showing
[an] example of the expanded metal used in the present invention”
(Nagahashi ¶ 9), Nagahashi notes that, as shown in Figure 5, aperture size
successively increases from left to right, and that the expanded metal is
laminated spirally so that the smaller apertures are located in the inside
layer, to form the filter — a filter construction that Nagahashi explains
prevents the apertures from being clogged by slag particles, which may be
formed when high temperature gas collides with the metallic surface to be
cooled down (id. ¶ 15). Figure 6 is “a conceptual view in section of another
example of the filter of the present invention” (id. ¶ 9) in which an
“additional expanded metal 4 having larger apertures is interposed between
the inner layers and the outer layers” of the filter (id. ¶ 16).
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(Fed. Cir. 2000) (citing In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)
(“Absent any written description in the specification of quantitative values,
arguments based on measurement of a drawing are of little value.”)). Thus,
for example, in In re Wright, where the reference did not disclose that the
drawings are to scale, the court rejected the solicitor’s argument that the
reference disclosed the use of a chime length of roughly ½ to 1 inch for a
whiskey barrel. See Wright, 569 F.2d at 1127.
Similarly here, there is no indication in Nagahashi that Figures 5 and
6 are to scale. And, as described above, there is no mention in the
Nagahashi specification of “nesting” or of varying pitch as a function of
circumference. As such, no meaningful measurements can be taken from the
drawings.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 29, and 48 under 35 U.S.C. § 102(b). For the same
reasons, we also do not sustain the Examiner’s rejection of dependent
claims 4, 34, 49 and 53–55.
Obviousness
Independent Claims 1, 29, and 48 and Dependent Claims 4, 34, 49 and 53–
55 as unpatentable over Nagahashi, Lindsey, and AAPA
Independent Claims 1, 29, and 48 and Dependent Claims 4, 34, 49 and 53–
55 as unpatentable over Lindsey, AAPA, Nagahashi, and Rice
The Examiner takes the position that even if claims 1, 29, and 48 are
not anticipated by Nagahashi, the claims are nonetheless obvious over a
combination of Nagahashi, Lindsey, and AAPA.3 In this regard, the

3 The Examiner entered two obviousness rejections of claims 1, 4, 29, 34,
48, 49 and 53–55 based on a combination of Nagahashi, Lindsey, and AAPA
(Final Act. 2–3, 5–6). In the first of these rejections, the Examiner uses
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Examiner finds that Lindsey discloses substantially all of the limitations of
claim 1, including a filter comprising an expanded metal sheet in which a
multiplicity of openings are formed.4 The Examiner, however,
acknowledges that Lindsey does not explicitly teach that the openings are
arranged in rows or that the pitch between rows of openings is varied as a
function of the circumference defined by a given portion of the expanded
metal sheet in the rolled up filter, i.e., as recited in limitation (iii) of claim 1
(id. at 6).5

Nagahashi as the primary reference; in the other rejection, the Examiner uses
Lindsey as the primary reference and modifies Lindsey based on Nagahashi
and AAPA. In the latter rejection, the Examiner additionally cites Rice as
disclosing the use of welds to fix the final tubular orientation of a filter (id.
at 6). For convenience, we consider these obviousness rejections together.
4 Specifically, the Examiner finds that Lindsey discloses a filter (for use in
an airbag inflator) comprising a cylindrical body, wherein expanded metal,
in which a multiplicity of openings is formed, is rolled into a cylindrical
shape having multiple layers (Final Act. 3 (citing Lindsey 2:22–25, 5:5–6:4);
see also id. at 5); that the filter is characterized in that: (i) for adjacent layers,
the sizes of the openings are different (id. at 3 (citing Lindsey Abstract,
5:20–23, claims 5, 6, and 15); see also id. at 5) and (ii) the expanded metal is
formed as one piece (id. at 3 (citing Lindsey 2:22–3:9; 4:10–14, 4:21–22;
5:5–10; Abstract, claims 1 and 18); see also id. at 5); and that the sizes and
shapes of the openings are varied so as to reduce nesting of radially adjacent
openings in the rolled up filter (id. at 3 (citing Lindsey, Abstract); see also
id. at 5–6).
5 For the reasons outlined above, we agree with Appellant that Figures 5 and
6 of Nagahashi also may not be relied on as disclosing or suggesting the “no
nesting” feature, i.e., that “the pitch of the rows of openings is varied as a
function of the circumference defined by a given portion of the expanded
metal sheet in the rolled up filter so that radially adjacent openings do not
nest,” as recited in claim 1, and similarly recited in claims 29 and 48.
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The Examiner relies on AAPA as disclosing that a known prior art
filter comprises
expanded metal that has been rolled to form a multi-layered tube
wherein the expanded metal comprises a multiplicity of openings
that are arranged in rows wherein the pitch of rows of openings
in some sections differs from the pitch of rows of openings in
other sections such that the pitch between rows of openings is
varied as a function of the circumference defined by a given
portion of the expanded metal sheet in the rolled up filter[,]
and the Examiner observes that Appellant explained during the March 28,
2011 interview that this arrangement is intended to minimize nesting
between adjacent layers of the rolled filter (id. at 3–4; see also id. at 6). The
Examiner, thus, concludes that it would have been obvious to a person of
ordinary skill in the art at the time the present invention was made to
“substitute a known arrangement of openings (rows of openings having
sections with different pitches) as in the admitted prior art for another known
arrangement of openings,” i.e., openings that at least vary in size as in
Nagahashi or openings that vary in size or shape as in Lindsey, “in order to
provide the predictable result of likewise minimizing nesting” (id. at 4; see
also id. at 6).
Appellant argues that AAPA, i.e., the prior art multi-piece filter
disclosed in the documents filed on May 9, 2011, is not part of the prior art
but instead is a simplified demonstrative prepared by Appellant to illustrate
the more complicated structure of a prior art filter used by Takata
Corporation in its airbag inflators (Appeal Br. 36). Appellant’s
representative, thus, explains that he learned that the filter was not actually
prior art during a meeting in January 2017, and that this error was explained
to the Examiner in an Amendment filed April 12, 2017, and in
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accompanying declarations of Messrs. Steven Buckler, George Greenwood,
and Steven Huntsman (id. at 39).
The Examiner asserts in the Answer that “Appellant cannot disavow
admitted prior art” (Ans. 13). We agree. Yet, rather than disavowing
admitted prior art, Appellant’s April 12, 2017 Amendment clearly appears to
have been an effort by Appellant to correct and, thereby, clarify the record
so that the claims are properly judged against actual prior art.
The Examiner, in the Answer, does not challenge or otherwise dispute
the factual statements set forth in the April 2017 Amendment and in the
accompanying declarations. And we find no such challenge by the
Examiner elsewhere in the record.
In the absence of any showing that the multi-piece filter disclosed in
the May 9, 2011 submission is, in fact, prior art, we do not sustain the
Examiner’s rejections under 35 US.C. § 103(a) of independent claims 1, 29,
and 48, and claims 4, 34, 49 and 53–55, which depend therefrom, as obvious
over Nagahashi, Lindsey, and AAPA or obvious over Lindsey, AAPA,
Nagahashi, and Rice.
Dependent Claims 56–58 as unpatentable over Nagahashi or, in the
alternative, unpatentable over Nagahashi, Lindsey, AAPA, and Goda
Dependent Claims 56–58 as unpatentable over Lindsey, AAPA, Nagahashi,
Rice, and Goda
Claims 56–58 depend from independent claims 1, 29, and 48,
respectively. The rejections of these claims do not cure the deficiency in the
rejections of independent claims 1, 29, and 48. Therefore, we do not sustain
the Examiner’s rejections of claims 56–58 for the same reasons outlined
above with respect to the independent claims.
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Independent Claims 60–62 as unpatentable over Nagahashi or, in the
alternative, unpatentable over Nagahashi, Lindsey, AAPA, and Greenwood
Independent Claims 60–62 as unpatentable over Lindsey, AAPA, Nagahashi,
Rice, and Greenwood
Each of claims 60–62 recites a filter assembly comprising a tubular
filter. Claim 60 recites that the filter assembly comprises the tubular filter of
claim 1; claim 61 recites that the filter assembly comprises the tubular filter
of claim 29; and claim 63 recites that the filter assembly comprises the
tubular filter of claim 48. As such, claims 60–62 include language identical
to the language of claims 1, 29, and 48.
Claims 60–62 stand rejected based on the same rationale applied with
respect to claims 1, 29, and 48. Therefore, we do not sustain the rejections
of claims 60–62 for the same reasons outlined above with respect to
claims 1, 29, and 48.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 29, 34,
48, 49, 53–
55
102(b) Nagahashi 1, 4, 29,
34, 48, 49,
53–55
1, 4, 29, 34,
48, 49, 53–
55
103(a) Nagahashi,
Lindsey, AAPA
1, 4, 29,
34, 48, 49,
53–55
1, 4, 29, 34,
48, 49, 53–
55
103(a) Lindsey, AAPA,
Nagahashi, Rice
1, 4, 29,
34, 48, 49,
53–55
56–58 103(a) Nagahashi 56–58
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
56–58 103(a) Nagahashi,
Lindsey, AAPA,
Goda
56–58
56–58 103(a) Lindsey, AAPA,
Nagahashi, Rice,
Goda
56–58
60–62 103(a) Nagahashi 60–62
60–62 103(a) Nagahashi,
Lindsey, AAPA,
Greenwood
60–62
60–62 103(a) Lindsey, AAPA,
Nagahashi, Rice,
Greenwood
60–62
Overall
Outcome
1, 4, 29,
34, 48, 49,
53–58, 60–
62
REVERSED