Ex Parte Chiga

Patent Trial and Appeal BoardApr 14, 2016

12091950 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/091,950 04/29/2008 Antonio Chiga 33712 7590 04/18/2016 HAUPTMAN HAM, LLP (ITW) 2318 Mill Rd Suite 1400 ALEXANDRIA, VA 22314 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. 21774 (713-1849) 7041 EXAMINER FITZSIMMONS, ALLISON G ART UNIT PAPER NUMBER 1778 NOTIFICATION DATE DELIVERY MODE 04/18/2016 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): itw@ipfirm.com docketing@ipfirm.com pair_lhhb@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTONIO CHI GA 1 Appeal2014-005105 Application 12/091,950 Technology Center 1700 Before PETER F. KRATZ, MARK NAGUMO, and KAREN M. HASTINGS, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Antonio Chiga ("Chiga") timely appeals under 35 U.S.C. Â§ 134(a) from the Final Rejection2 of claims 1-17, which are all of the pending claims. We have jurisdiction. 35 U.S.C. Â§ 6. We reverse. 1 The real party in interest is listed as Filtertek S.A. (Appeal Brief, filed 16 October 2013 ("Br."), 2.) 2 Office action mailed 20 May 2013 ("Final Rejection"; cited as "FR"). Appeal2014-005105 Application 12/091,950 OPfNION A. Introduction 3 The subject matter on appeal relates to an annular filter in an annular housing. The '950 Specification teaches that in a conventional filter housing, a ring of plastic [a gasket] seals the top of the filter to the top of the housing, and the bottom of the filter to the bottom of the housing. (Spec. 1, 11. 17-27.) In the invention, the filter is joined directly to the end walls. (Id. at 2, 11. 2-5). The reduced number of housing parts (two instead of four) is said to permit the filter and housing to be manufactured "in a single step and in a corresponding mold since both weldings can be performed simultaneously." (Id. at 11. 16-19.) Claim 1 is representative of the dispositive issues and reads: A filter, comprising: an annular housing including an opening; a top part and a bottom part connected to the top part, wherein the top and bottom parts have end walls, respectively, and the opening extends through the annular housing along an axis of the housing; a filter element located in the housing and having end faces which face and are directly joined to the end walls of the top and bottom parts, respectively; an inlet; and an outlet which is separated from the inlet by the filter element. 3 Application 12/091,950, Filter, especially fuel filter, filed 29 April 2008 as the national phase of PCT/EP06/11248, filed 23 November 2006, claiming the benefit of GERMANY 20 2005 018 435.7, filed 23 November 2005. We refer to the '"950 Specification," which we cite as "Spec." 2 Appeal2014-005105 Application 12/091,950 (Claims App., Br. 19; some indentation, paragraphing, and emphasis added.) An embodiment of the claimed invention is illustrated in Figures 1 and 2 of the Specification, which are reproduced below. Fig. 1 shows an elevation cross section, while Fig. 2 shows a plan view cross section, both through the middle -1'1- of the filter and housing. The annular (ring-shaped) structure of housing 1O[4J is apparent, as is the hole passing through the housing along the axis of the filter, which is indicated by the central dashed line in Fig. 1 and the intersection of dashed lines in Fig. 2). (Figs. 1 and 2 show elevation and plan cross sections, respectively} 4 Throughout this Opinion, for clarity, labels to elements are presented in bold font, regardless of their presentation in the original document. 3 Appeal2014-005105 Application 12/091,950 The Examiner maintains the following grounds of rejection5' 6 : A. Claims 1, 7, 12, 15, and 1 7 stand rejected under 35 U.S.C. Â§ 102(b) in view ofLee. 7 Al. Claims 2-6, 13, and 14 stand rejected under 35 U.S.C. Â§ 103(a) in view of Lee. A2. Claims 8-11 and 16 stand rejected under 35 U.S.C. Â§ 103(a) in view of the combined teachings of Lee and Hedgepeth. 8 A3. Claim 14 stands rejected under 35 U.S.C. Â§ 103(a) in view of the combined teachings of Lee and Terhune. 9 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Chiga urges the Examiner erred in finding that Lee describes a filter having an annular housing. 5 Examiner's Answer mailed 21November2013 ("Ans."). 6 Rejections under 35 U.S.C. Â§ 112(1) (written description) andÂ§ 112(2) have been withdrawn. (Ans. 11.) 7 Wilbur W. Lee et al., Disposable filter unit, U.S. Patent No. 3,872,008 (1975). 8 Richard E. Hedgepeth and Theodore M. Bryson, Filter for liquid fuel, U.S. Patent No. 6, 171,492 B 1 (2001 ). 9 Ralph Terhune and Gerald Branchcomb, Oil filter, U.S. Patent No. 5.674.393 (1997). 4 Appeal2014-005105 Application 12/091,950 The Examiner finds that Lee, in Figures 1-3, reproduced to the right, describes a filter housing 10 having an annular top 21, and an annular bottom 22. (FR 5, 11. 9-11.) {Lee, Figs. 1, 2, and 3, show elevation, elevation cross section, and plan views of a filter housing, respectively} 5 Appeal2014-005105 Application 12/091,950 The Examiner has not directed our attention to any definition or disclosure in the '950 Specification indicating that Chiga intends to give the term "annular" a broader interpretation than the ordinary meaning, which is "ring-shaped." As Chiga insists, the filter housing described by Lee is not ring-shaped, because it lacks a central hole along the axis 35 (shown in Fig. 2). Independent claims 8 and 12 contain similar limitations regarding the annular shape of the filter housing. Because a limitation of the claimed subject matter has not been shown to be described by Lee, we reverse the rejection for anticipation. The Examiner makes no findings regarding further teachings of Lee or of the remaining references that cure this flaw. We therefore reverse the rejections for obviousness. C. Order It is ORDERED that the rejection of claims 1-17 is reversed. REVERSED 6