Timothy M. Sasur et al.

Patent Trials and Appeals Board

Feb 28, 2020

13141347 - (D) (P.T.A.B. Feb. 28, 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.
13/141,347 07/28/2011 Timothy M. Sasur CEMS/432/PC/US 4706
2543 7590 02/28/2020
ALIX, YALE & RISTAS, LLP
150 TRUMBULL STREET
SIXTH FLOOR
HARTFORD, CT 06103
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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):
ip@pctlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TIMOTHY M. SASUR and JEREMIAH SAZAMA
____________________

Appeal 2018-005137
Application 13/141,347
Technology Center 1700
____________________

Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
JANE E. INGLESE, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
May 15, 2017 decision finally rejecting claims 1, 4–7, 24, 25, and 28 (“Final
Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Parker Hannifin Corporation as the
real party in interest (Appeal Br. 3).
Appeal 2018-005137
Application 13/141,347

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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a filter element for filtering fluid,
which includes a cylinder of pleated filter media 60 at least partially
surrounding a central axis A, as shown in FIG. 11:

FIG. 11 shows an end perspective view of the filter element as disclosed in
the application on appeal.
The cylinder extends between first and second ends and defines an
open central region (Appeal Br. 4). A first end cap 38 includes a plurality of
first indexing structures 40 and 42 which project radially beyond an outer
periphery of first end cap 38, as shown above (id.). The first indexing
structures include coplanar rigid supports 40 which extend outwardly from
the outer periphery of first end cap 38 and are angularly spaced from each
other around the periphery of the end cap. A closed second end cap 56 is
connected to the opposite end of pleated filter media 60, and has an outer
periphery interrupted by a second indexing structure comprising a notch 58
which extends inwardly from the periphery. The first and second indexing
structures have a predetermined angular relationship to each other about the
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Application 13/141,347

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central axis A. Details of the claimed structure are set forth in claim 1,
which is reproduced below from the Claims Appendix to the Appeal Brief
(emphasis added):
1. A filter element for filtering fluid comprising:
a cylinder of pleated filter media at least partially
surrounding a central axis with radially spaced outer and inner
circumferences, and extending between first and second
longitudinal ends to define an open central region for fluid
passing through the cylinder of pleated filter media in a radial
direction;
a first end cap connected to the first longitudinal end of
the cylinder of pleated filter media and defining a fluid flow
aperture opening into said open central region, said first end
cap including an outer periphery, a plurality of first indexing
structures projecting radially beyond said outer periphery, said
plurality of first indexing structures comprising a plurality of
coplanar rigid supports extending radially outwardly from said
outer periphery and angularly spaced from each other around
said outer periphery of said first end cap; and
a closed second end cap connected to the second
longitudinal end of the cylinder of pleated filter media, said
closed second end cap having a shape defined by an outer
periphery interrupted by at least one second indexing structure,
said at least one second indexing structure comprising a notch
extending inwardly from said outer periphery of said closed
second end cap past the outer circumference of said cylinder of
pleated filter media,
wherein said first and second indexing structures have a
predetermined angular relationship to each other about the
central axis and said cylinder of pleated filter media is exposed
to fluid flow at said outer circumference between said first and
second end caps.

Appeal 2018-005137
Application 13/141,347

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REJECTIONS
1. Claims 1, 4–7, 24, 25, and 28 are rejected under
35 U.S.C. § 112, second paragraph, as being indefinite because of the use of
the word “closed.”2
2. Claims 1, 4–7, 24, and 253 are rejected under 35 U.S.C. §
103(a) as unpatentable over Shannon4 in view of Tadlock.5

DISCUSSION
Rejection 1. The Examiner determines that the limitation “closed” as
used in claim 1 is indefinite because, according to the Examiner, “it is not
clear if the applicant is claiming that the end cap is in a closed position or
that the end cap is imperforate [i.e., does not have holes through it]” and
because “[t]he term is not disclosed in the specification” (Final Act. 3).
During examination, the relevant inquiry under 35 U.S.C. § 112,
second paragraph, “[is to] determine whether the claims do, in fact, set out
and circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (emphasis
added); see also In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (“[a]
claim is indefinite when it contains words or phrases whose meaning is

2 Indefiniteness rejections in the Final Action based on the phrases “said
filter media” and “angularly spaced” were withdrawn (Ans. 3).
3 Although the statement of the rejection indicates that claim 26 is covered
by this rejection (Final Act. 3), this appears to have been a mistake, as claim
26 was previously withdrawn from consideration (Final Act. 1). Claim 26 is
not, therefore, before us on appeal.
4 Shannon, US 6,238,552 B1, issued May 29, 2001.
5 Tadlock, US 2005/0045552 A1, published March 3, 2005.
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unclear”). “[T]he definiteness of the language employed must be
analyzed—not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art.” Moore, 439
F.2d at 1235.
In this instance, Appellant argues that a person of skill in the art
would understand, upon looking at the drawings, that the second end cap
spans or “closes” the lower end of the cylinder of pleated filter media, and
that it must close that end of the cylinder so that fluid can be filtered by the
filter media (Appeal Br. 7). Moreover, according to Appellant, nothing in
the Specification suggests that the lower cap is movable or has another
position other than closing the lower end of the cylinder (id.). These
arguments are persuasive, essentially for the reasons set forth by Appellant
at page 7 of the Appeal Brief. Additionally, none of the drawings show a
second end cap with any holes through it (i.e., the cap is closed).
Accordingly, we determine that Appellant has shown reversible error
in the rejection under § 112, second paragraph.
Rejection 2. We decide this rejection on the basis of limitations found
in claim 1 and common to each of the claims. Accordingly, we focus our
analysis on the rejection of claim 1 over Shannon in view of Tadlock.
Claim 1 recites, in part:
said first end cap including an outer periphery, a plurality of
first indexing structures projecting radially beyond said outer
periphery, said plurality of first indexing structures comprising
a plurality of coplanar rigid supports extending radially
outwardly from said outer periphery and angularly spaced from
each other around said outer periphery of said first end cap.
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The Examiner finds that these structural limitations are disclosed in
Shannon’s FIG. 3, as demonstrated by the following annotated version:

An annotated version of Shannon’s FIG. 3 shows which structures
correspond to the claimed limitations.
As illustrated in the Figure above, the Examiner finds that the bottom-
most cover 36A corresponds to the claimed first cap, while edges 38B and
38C correspond to the plurality of first indexing structures (Final Act. 5–6).
The Examiner further finds that edges 38B and 38C “are coplanar along the
plane extending vertically through the filter element” (Final Act. 6).
It is well established that during prosecution, “the PTO must give
claims their broadest reasonable construction consistent with the
specification. . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(emphasis added). In this instance, the Specification and drawings show that
the claimed “outer periphery” of the first end cap runs perpendicular to the
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Application 13/141,347

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central axis of the cylinder of pleated filter media (see, e.g., FIG. 11), and
the first indexing structures are co-planar with the outer periphery. The
language of the claim supports this interpretation: “said plurality of first
indexing structures comprising a plurality of coplanar rigid supports
extending radially outwardly from said outer periphery and angularly spaced
from each other around said outer periphery of said first end cap.” If the
rigid supports are coplanar and extend “outwardly” from the outer periphery,
this would suggest that they are coplanar with the first end cap.
Accordingly, we conclude that the broadest reasonable construction of
the claim consistent with the Specification and the drawings is that the first
indexing structures have to be coplanar with the first end cap (i.e.,
perpendicular to the central axis of the cylinder of pleated filter media). The
Examiner’s construction of the term co-planar, which permits the first
indexing structures to be co-planar in a vertical plane, is overly broad.
Based on this construction of the claim, Appellant’s argument (Appeal
Br. 9–12) that Shannon does not teach or suggest the claimed structure (in
particular the presence of the coplanar indexing structures angularly spaced
from each other around the periphery) is persuasive. That is, Shannon does
not disclose or suggest the claimed indexing structures in the positions
recited in the claim.
Moreover, as argued by Appellant (Appeal Br. 12) and not contested
by the Examiner (see, Ans. 12–18), the second end cap in Shannon is not
closed, but contains apertures which pass through the end cap. Shannon’s
end cap is not, therefore, “closed” as that term is used in the claim. The
Examiner has not established why a person of ordinary skill in the art would
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Application 13/141,347

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have modified Shannon’s second end cap to make it closed as recited in the
claim.
Accordingly, we determine that Appellant has demonstrated reversible
error in the obviousness rejection over Shannon in view of Tadlock.

CONCLUSION

In summary:

Claims
Rejected
35 U.S.C.
§
References(s)/Basis Affirmed Reversed
1, 4–7, 24,
25, 28
112,
second
paragraph
Indefiniteness 1, 4–7, 24, 25,
28
1, 4–7, 24, 25 103(a) Shannon, Tadlock 1, 4–7, 24, 25
Overall
Outcome
1, 4–7, 24, 25,
28

REVERSED