Ex Parte Assion

Patent Trial and Appeal Board

May 31, 2016

12586042 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/586,042 09/15/2009
29683 7590 06/01/2016
HARRINGTON & SMITH
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
FIRST NAMED INVENTOR
Norbert M. Assion
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.
016A.0006.Ul(US) 6317
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1779
MAILDATE DELIVERY MODE
06/01/2016 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 NO RB ER T M. AS SI ON
Appeal2014-000670
Application 12/586,042
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1-24. Claims 25 and 26 are also pending but have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Representative claim 1 is reproduced below. 1 The limitation at issue is
italicized.
1 Claim 1 is reproduced from the Claims Appendix in the "Response to
Notification of Non-Compliant Appeal Brief' dated March 25, 2013 ("Claims
App.").
Appeal2014-000670
Application 12/586,042
1. An assembly comprising:
a first filter element; and
a filter element sub-assembly connected to the first filter
element as a pre-assembled unitary assembly, wherein the filter
element sub-assembly comprises a second filter element located
between a first plate and a second plate, wherein the second plate
comprises a liquid outlet into a center open area of the first filter
element, where the second filter element comprises a rigid disk
shaped member, where the second plate comprises spacer ribs to
space the second filter element at a predetermined location on the
second plate, wherein the first and second plates are directly fixedly
connected to each other to retain the second filter element
therebetween as the pre-assembled unitary assembly, and wherein the
second plate is located at an end of the first filter element.
Claims App. 2.
The Examiner relies on three embodiments described in Assion, either alone
or in combination with other prior art of record, to reject the claims on appeal. For
purposes of this appeal, we group the rejections on appeal based on those three
embodiments identified by the Examiner. See Ans. 5.2
1. Embodiment A - Assion Figure 2
(a) claims 1, 3-10, 12, and 13 under 35 U.S.C. § 102(b) as
anticipated by Assion; 3
(b) claim 11under35 U.S.C. § 103(a) as unpatentable over Assion;
(c) claim 2 under 35 U.S.C. § 103(a) as unpatentable over Assion
in view of Dye et al.; 4
(d) claim 14 under 35 U.S.C. § 103(a) as unpatentable over Assion
in view of Elsegood;5
2 Examiner's Answer dated August 9, 2013.
3 US 2006/0037906 Al, published February 23, 2006 ("Assion").
4 US 5,667,678, issued September 16, 1997 ("Dye").
5 US 6,846,411 B2, issued January 25, 2005 ("Elsegood").
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Application 12/586,042
(e) claims 15 and 17-23 under 35 U.S.C. § 103(a) as unpatentable
over Assion in view of Else good;
(f) claim 16 under 35 U.S.C. § 103(a) as unpatentable over Assion
in view of Else good, and further in view of Dye;
(g) claim 24 under 35 U.S.C. § 103(a) as unpatentable over Assion
in view of Elsegood, and further in view of Romanco. 6
2. Embodiment B - Assion Figure 28
(a) claims 1and6-11under35 U.S.C. § 102(b) as anticipated by
Assion;
(b) claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Assion;
(c) claim 2 under 35 U.S.C. § 102(a) as unpatentable over Assion
in view of Dye;
(d) claims 3-5 and 14 under 35 U.S.C. § 103(a) as unpatentable
over Assion in view of Else good;
(e) claims 15 and 17-23 under 35 U.S.C. § 103(a) as unpatentable
over Assion in view of Else good;
(f) claim 16 under 35 U.S.C. § 103(a) as unpatentable over Assion
in view of Elsegood, and further in view of Dye; and
(g) claim 24 under 35 U.S.C. § 103(a) as unpatentable over Assion
in view of Elsegood, and further in view of Romanco.
3. Embodiment C-Assion Figure 50
(a) claims 1and6-13 under 35 U.S.C. § 102(b) as anticipated by
Assion;
(b) claim 2 under 35 U.S.C. § 103(a) as unpatentable over Assion
in view of Dye;
(c) claims 3-5 and 14 under 35 U.S.C. § 103(a) as unpatentable
over Assion in view of Else good;
(d) claims 15 and 17-23 under 35 U.S.C. § 103(a) as unpatentable
over Assion in view of Else good;
6 US 5,643,467, issued July 1, 1997 ("Romanco").
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(e) claim 16 under 35 U.S.C. § 103(a) as unpatentable over Assion
in view of Elsegood, and further in view of Dye; and
(f) claim 24 under 35 U.S.C. § 103(a) as unpatentable over Assion
in view of Elsegood, and further in view of Romanco.
B. DISCUSSION
1. Assion Figures 2 and 50 - Embodiments A and C
Claim 1 recites, inter alia, a filter element sub-assembly "comprising a
second filter element located between a first plate and a second plate ... wherein
the first and second plates are directly fixedly connected to each other to retain the
second filter element therebetween as the pre-assembled unitary assembly."
Claims App. 2 (emphasis added). Similarly, claim 15 recites an assembly
comprising "a frame comprising first and second frame members directly fixedly
connected to each other with the filter element therebetween as a pre-assembled
unitary assembly." Claims App. 4 (emphasis added).
Referring to Assion Figure 2, the Examiner finds Assion discloses a filter
element sub-assembly comprising filter element 30 (corresponding to the claimed
second filter element) located between first collar 33 (corresponding to the claimed
first plate) at the top end of filter element 30 and second collar 33 (corresponding
to the claimed second plate) at the bottom of filter element 33. Ans. 8. The
Examiner finds that first and second collars 33 "are directly fixedly connected to
each other (via tube 28)." Ans. 9 (emphasis added).
Similarly, referring to Assion Figure 50, the Examiner finds Assion
discloses that first plate (spring 376) and second plate (holder 374) "are directly
fixedly connected to each other (via filter element 372)." Ans. 26 (emphasis
added).
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The Appellants argue that the two plates in Assion Figures 2 and 50 are
indirectly connected to each other by an additional element (i.e., a tube or a second
filter element), not directly fixedly connected to each other as recited in the claims
on appeal. App. Br. 5, 15-16.
The Appellant's argument is supported by the record. Therefore, the
§ 102(b) rejections based on Assion Figures 2 and 50 are not sustained. The
Examiner does not explain why it would have been obvious to one of ordinary skill
in the art to directly fixedly connect the plates in Assion Figure 2 or 50 based on
the teachings in Assion either alone or in combination with the remaining prior art
of record. Therefore, the§ 103(a) rejections based on Assion Figures 2 and 50
either alone or in combination with the remaining prior art of record are not
sustained.
3. Assion Figure 28 - Embodiment B
a. Claim 1
Referring to Assion Figure 28, the Examiner finds Assion discloses a filter
element sub-assembly comprising a first plate (spring 146) and a second plate
(holder 118) directly fixedly connected to each other to retain a second filter
element (filter element 142 and support plate 144) therebetween and to form a pre-
assembled unitary assembly (holder 118, support plate 144, filter element 142,
spring 146). Ans. 18.
According to the Appellant:
At first glance Fig. 28 appears to show the cover plate 118 having a
top side with a lip extending over the perimeter section 152 of the
spring 146. However, this is not the case. FIG. 29 shows the filter
assembly with the exterior cover 112 and a spring 146 removed. The
top side of the cover plate 118 is open and does not have an inward
projecting lip. As explained in paragraph [0135], the four members
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120, 142, 144, 146 are merely placed in the open top receiving area of
the cover plate 118.
App. Br. 6.
The Appellant's argument is not persuasive of reversible error for several
reasons. First, Assion Figure 29 does not conclusively show that plate 118 does
not have an inwardly projecting lip. Second, although Assion discloses that
"spring 146 is able to press the components 144, 142, 128, 118 and 104 in a
downward direction towards the base plate 108," Assion does not disclose that
plate 118 does not have an inwardly projecting lip as alleged by the Appellant.
Assion i-f 135. Third, Assion Figure 28 clearly shows that plate 118 has a lip on its
top side that directly engages the top surface of spring or plate 146 to maintain
element 146 in contact with filter element 142. See In re Eager, 4 7 F .2d 951, 953
(CCP A 1931) ("Description for the purposes of anticipation can be by drawings
alone as well as by words."). Thus, a preponderance of the evidence supports the
Examiner's finding that the first plate (spring 146) and the second plate (holder
118) are "directly fixedly connected to each other" as recited in claim 1.7
The Appellant also argues that Assion does not disclose a filter element sub-
assembly connected to a first filter element as a pre-assembled unitary assembly as
recited in claim 1. App. Br. 9. The Appellant argues that the claimed sub-
assembly is structurally different from the sub-assembly described in Assion
Figure 28 for the following reasons:
7 In the Reply Brief, the Appellant argues for the first time on appeal that the
Examiner "has been ignoring the patentable weight of the term 'fixedly"' and
provides a definition of the term "fixedly" (i.e., "definitely and permanently
placed"). Reply Brief dated October 4, 2013 ("Reply Br."), at 6-7. The Appellant
does not provide a citation for the definition. Nonetheless, the argument was not
timely raised and will not be considered on appeal. 37 C.F.R. § 41.41 (a)(2)
(2014).
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[1] With a pre-assembled unitary assembly, the components (first
frame member, second frame member, and filter element) can be pre-
assembled with better tolerances and quality control than non-
preassembled components.
[2] With a pre-assembled unitary assembly, the components (first
frame member, second frame member, and filter element) can be pre-
assembled to insure precise placement of the second filter element
between the two other members to insure there is no excess "leaking"
of fluid around the second filter element.
[3] With a pre-assembled unitary assembly, the components (first
frame member 46, second frame member 48, and filter element 50)
can be pre-assembled and subsequently connected to the different
filter element when manufacturing a multi-element filter. This can
speed up manufacturing of the multi-element filter and reduce
manufacturing problems.
App. Br. 9-10 (formatting added).
The Examiner correctly finds that the items enumerated above are not
structural differences. Ans. 56. The Examiner also correctly concludes that the
term "pre-assembled" is a functional (or process) limitation in the apparatus claims
on appeal. Ans. 17. In that regard, the Appellant has failed to show that the sub-
assembly described in Assion Figure 28, comprising spring 146, plate or holder
118, filter element 142, and support plate 144, is not capable of being pre-
assembled and providing the benefits described above. Therefore, the Appellant
has failed to show that the phrase "pre-assembled unitary assembly" recited in
claim 1 structurally distinguishes the claimed filter element sub-assembly from the
filter element sub-assembly described in Assion Figure 28.
For the reasons set forth above, the § 102(b) rejection of claim 1 based on
the embodiment described in Assion Figure 28 is sustained. The Appellant does
not present arguments in support of the separate patentability of any of claims 9-11
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based on Assion Figure 28. Therefore, the § 102(b) rejection of claims 9-11 based
on the embodiment described in Assion Figure 28 also is sustained.
b. Claim 6
Claim 6 depends from claim 1 and recites "wherein the first and second
plates are sealingly connected to each other to limit flow of a liquid from an inlet
at the first plate, through the second filter element, to the outlet through the second
plate." Claims App. 3 (emphasis added).
The Examiner finds that "the first plate (spring 146) and second plate
(holder 118) are sealingly connected to each other. This arrangement limits the
flow of liquid from an inlet at the first plate (spring 146), through the second filter
element (filter element 142 and plate 144), to the outlet (hole 122) through the
second plate (holder 118)." Ans. 18.
The Appellant argues "[t]here is no disclosure or suggestion of the perimeter
section 152 [of spring 146] being sealingly connected to the cover 118 as the
examiner has stated." App. Br. 11 (citing Assion lf 135).
The Appellant appears to be of the opinion that there is no sealing
connection between first plate (spring 146) and second plate (cover 118) because
the top side of cover 118 does not have an inwardly projecting lip. For the reasons
set forth above in section "a.," discussing the rejection of claim 1, the Appellant's
argument is not persuasive of reversible error. Therefore, the § 102(b) rejection of
claim 6 based on the embodiment described in Assion Figure 28 is sustained.
The Appellant does not present arguments in support of the separate
patentability of claim 7 based Assion Figure 28. Therefore, the § 102(b) rejection
of claim 7 based on the embodiment described in Assion Figure 28 also is
sustained.
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c. Claim 8
Claim 8 depends from claim 7. Claim 8 recites that "the inlet is located
between outer perimeters of the first and second plates." Claims App. 3.
Referring to Figure 28, the Examiner finds Assion describes an inlet located
between the outer perimeters of the first plate (spring 146) and the second plate
(holder 118). Ans. 18. The Appellant disagrees. According to the Appellant,
"[t]he inlet at the spring 146 is located above the cover plate 118; not located
between an outer perimeter of the spring 146 and an outer perimeter of the cover
plate 118" as found by the Examiner. App. Br. 12.
Assion Figure 28 does not show an inlet located between the outer
perimeters of the spring 146 and the holder or plate 118. 8 Thus, a preponderance
of the evidence does not support the Examiner's finding. For this reason, the
§ 102(b) rejection of claim 8 based on the embodiment described in Assion
Figure 28 is not sustained.
d. Claim 3
Claim 3 depends from claim 1 and recites "wherein the first and second
plates comprise center holes with portions of the plates sealingly connected to each
other at the center holes." Claims App. 2 (emphasis added).
The Examiner finds Assion does not disclose that the first plate (spring 146)
and the second plate (holder 118) are sealingly connected to each other at their
center holes. Nonetheless, the Examiner finds Elsegood discloses this limitation
and concludes that it would have been obvious to one of ordinary skill in the art to
8 In the rejection of claim 4 based on the embodiment described in Assion Figure
28, the Examiner finds Assion teaches that "the first plate (spring 146) and the
second plate (holder 118 ... ) are sealingly connected to each other at their outer
perimeters." Ans. 22.
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seal the first and second plates of Assion at their center holes based on the
teachings of Elsegood. Ans. 22-23.
The Appellants argue that the embodiment depicted in Assion Figure 28 has
a movable flutter valve 120 which moves up and down to open and close the center
hole 122 in plate 118. The Appellants argue that the Examiner's proposed
modification of Assion would destroy the ability of the flutter valve 120 to
function as intended. App. Br. 15.
The Appellant's argument is persuasive of reversible error. Indeed, if the
first plate (spring 146) and the second plate (holder 118) were sealingly connected
to each other at their center holes, as proposed by the Examiner, the center hole
122 in plate 118 could not be opened and closed by flutter valve 120. See Assion
ii 130.
The Examiner finds Assion discloses that "'[i]in an alternate embodiment
the flutter valve might not be provided."' Ans. 16 (citing Assion ii 127). However,
the Examiner has failed to explain, in any detail, why it would have been obvious
to one of ordinary skill in the art to omit the flutter valve 120 from the embodiment
illustrated in Assion Figure 28.
For the reasons set forth above, the§ 103(a) rejection of claim 3 based on
the embodiment described in Assion Figure 28 in combination with Elsegood is
not sustained. Claims 4 and 5 depend from claim 3. Therefore, the§ 103(a)
rejection of claims 4 and 5 based on the embodiment described in Assion Figure 28
in combination with Elsegood also is not sustained.
e. Claim 15
Independent claim 15 recites an assembly comprising, inter alia, "a filter
element having a center hole ... ; a frame comprising first and second frame
members ... wherein the first and second frame members have center holes ...
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wherein the center holes are sized, shaped and located to receive a post of a
mounting assembly therethrough to removably mount to the post .... " Claims
App. 4 (emphasis added).
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art "to construct the Assion assembly where the center holes of the first
frame member [and] the second frame member [i.e., spring 146 and holder 118,
respectively] ... are sized, shaped and located to removably receive and mount the
post of a mounting assembly, as taught by Elsegood .... " Ans. 42.
The Appellant argues that "it does not appear obvious to add tube 70 of
Elsegood to fig. 28 of Assion because this would then destroy the ability of the
flutter valve 120 to move up and down to close the center hole 122 in the cover
plate 118." App. Br. 20-21.
The Appellant's argument is not persuasive of reversible error. Claim 15
does not recite a post (or a tube) positioned in the center holes of the first and
second frame members. Claim 15 merely recites that the center holes of the first
and second frame members are "sized, shaped and located to receive a post."
Claims App. 4 (emphasis added). The Appellant has failed to show that it would
not have been obvious to one of ordinary skill in the art to modify the center holes
of Assion's first and second frame members so as to be "sized, shaped and located"
to receive a post as recited in claim 15.
The Appellant's remaining arguments as to claim 15 based on the
embodiment described in Assion Figure 28 are not persuasive of reversible error
for the reasons set forth above in section "a." discussing the rejection of claim 1.
The Appellant does not present arguments in support of the separate
patentability of any of claims 19-23 based on Assion Figure 28. Therefore, the
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§ 103(a) rejection of claims 15 and 19-23 based on the embodiment described in
Assion Figure 28 in combination with Elsegood is sustained.
f. Claim 17
Claim 17 depends from claim 15 and recites "wherein the first and second
frame members comprise portions at the center holes which are sealingly
connected to each other at the center holes." Claims App. 5.
The Appellant argues that "it does not appear obvious to sealingly connect
center holes of 146 and 118 because this would then destroy the ability of the
flutter valve 120 to move up and down to close the center hole 122 in the cover
plate 118." App. Br. 22.
The Appellant's argument is persuasive of reversible error for the reasons
we did not sustain the rejection of claim 3. See Section "d.," supra. Claim 18
depends from claim 17. Therefore, the§ 103(a) rejection of claims 17 and 18
based on the embodiment described in Assion Figure 28 in combination with
Elsegood is not sustained.
g. Claims 2, 12-14, 16, and 24
The Appellant does not present arguments in support of the separate
patentability of any of claims 2, 12-14, 16, and 24 in the§ 103(a) rejections based
on the embodiment described in Assion Figure 28 either alone or in combination
with Elsegood, Dye, and/or Romanco. Therefore, those rejections are sustained.
C. DECISION
The Examiner's decision to reject claims 1, 6, 7, and 9-11under35 U.S.C.
§ 102(b) as anticipated by Assion is affirmed.
The Examiner's decision to reject claim 8 under 35 U.S.C. § 102(b) as
anticipated by Assion is reversed.
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The Examiner's decision to reject claims 12 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Assion is affirmed.
The Examiner's decision to reject claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Assion in view of Dye is affirmed.
The Examiner's decision to reject claims 3-5 under 35 U.S.C. § 103(a) as
unpatentable over Assion in view of Else good is reversed.
The Examiner's decision to reject claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Assion in view of Else good is affirmed.
The Examiner's decision to reject claims 15 and 19-23 under 35 U.S.C.
§ 103(a) as unpatentable over Assion in view of Elsegood is affirmed.
The Examiner's decision to reject claims 17 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Assion in view of Elsegood is reversed.
The Examiner's decision to reject claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Assion in view of Else good, and further in view of Dye is
affirmed.
The Examiner's decision to reject claim 24 under 35 U.S.C. § 103(a) as
unpatentable over Assion in view of Else good, and further in view of Romanco is
affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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