Ex Parte Hunter et al

Patent Trial and Appeal Board

Mar 7, 2017

13217622 (P.T.A.B. Mar. 7, 2017)

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.
13/217,622 08/25/2011 Alastair J. Hunter 708676 6341
23548 7590 03/09/2017
LEYDIG VOIT & MAYER, LTD
700 THIRTEENTH ST. NW
SUITE 300
WASHINGTON, DC 20005-3960
EXAMINER
ORME, PATRICK JAMES
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
03/09/2017 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):
DCpatent@leydig.com
Chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL AST AIR J. HUNTER and
TIMOTHY J. WILKINSON1
Appeal 2016-000488
Application 13/217,622
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY,
and AVELYN M. ROSS, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 3—9, 11, and 13—18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
BACKGROUND
The subject matter on appeal relates to a sterilizing grade water filter
device and an outlet for a point of use faucet or shower, and associated
1 According to the Appellants, the real party in interest is Pall Corporation.
App. Br. 1.
Appeal 2016-000488
Application 13/217,622
methods. E.g., Claims 8, 11, 16, 17. Claims 8 and 11 are reproduced below
from pages 12—14 (Claims Appendix) of the Appeal Brief:
8. A sterilizing grade water filter device and an outlet for a point of
use faucet having an attachment head or for a point of use shower
having an attachment head; the sterilizing grade water filter
device being capable of fluid communication with, and
removable connection to, the point of use shower attachment
head or the point of use faucet attachment head, comprising:
a removable outlet; and,
a sterilizing grade water filter device comprising a sterilizing
grade water filter device housing, a porous sterilizing grade
water filter, a water effluent portion, and a sterilizing grade water
filter device housing side wall having an external surface
comprising threads;
wherein the removable outlet is removably attached to the
sterilizing grade water filter device, the removable outlet
comprising an outlet housing comprising a polymeric shell
comprising a shell side wall having a shell side wall inner surface
and a shell side wall outer surface, a shell bottom wall having a
shell inner face, a shell outer face, and a plurality of outlet ports,
each port comprising an opening allowing water flow from the
shell inner face through the shell outer face, and an outlet cavity
defined by the shell side wall inner surface and the shell bottom
wall shell inner face, the outlet cavity receiving at least a portion
of the sterilizing grade water filter device, wherein both the shell
side wall outer surface and the shell bottom wall shell outer face
contact environmental air surrounding the point of use shower
attachment head or the point of use faucet attachment head when
the sterilizing grade water filter device is attached to the
attachment head, and;
a hydrophobic porous disc contained in the outlet cavity of the
polymeric shell, the porous disc comprising a plurality of pores
and having an upstream surface and a downstream surface, the
downstream surface facing the shell bottom wall shell inner face;
and,
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Application 13/217,622
wherein the shell side wall inner surface includes threads
releasably engageable with the threads on the external surface of
the sterilizing grade water filter device housing side wall,
allowing the removable outlet to be removed from the sterilizing
grade water filter device.
11. A water sterilizing filter device comprising:
a porous water sterilizing filter comprising at least one porous
element, the porous sterilizing water filter having an outer
diameter; and,
a housing containing the porous sterilizing water filter and
providing a fluid flow path through the porous sterilizing water
filter, the housing comprising an inlet and a water effluent
portion and defining the fluid flow path between the inlet and the
water effluent portion, wherein the housing comprises a bottom
wall having an outer diameter ending with an outer edge, the
bottom wall outer diameter extending to the outer diameter of the
porous water sterilizing filter; a side wall having an internal
surface and the external surface comprising threads, and the
water effluent portion, wherein the water effluent portion
comprises an annulus between the outer edge of the bottom wall,
and the internal surface of the side wall.
REJECTIONS ON APPEAL2
1. Claims 3—9, 13, 16, and 17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Tsai (UK 2437279 A, published Oct. 24, 2007) in view
2 In the Examiner’s Answer, the Examiner (1) withdraws a provisional
statutory double patenting rejection of certain claims over U.S. Application
No. 12/877,300 (the “’300 application”), see Ans. 2, and (2) enters a new
provisional rejection of claims 3—9, 11, 13, 14, 16, and 17 for nonstatutory
double patenting over claims 15, 18, and 19 of the ’300 application, alone or
in view of Tsai, depending on the claim, see id. at 2—5. The new ground of
rejection, however, is now moot in view of the abandonment of the
’300 application. See Notice of Abandonment dated Nov. 28, 2016.
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Application 13/217,622
of GB 1499347 (published Feb. 1, 1978) (“Gelman”),3 and Kramer et al.
(US 4,463,880, issued Aug. 7, 1984).
2. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tsai in view of Gelman.
3. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tsai in view of Gelman and Kramer, further in view of Tanizaki et al.
(JP 11239740A2, issued Sept. 7, 1999).
4. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tsai in view of Gelman, Kramer, and Tanizaki, further in view of Isobe
et al. (JP 2004344888A2, issued Dec. 9, 2004).
5. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tsai in view of Gelman and Kramer, further in view of Isobe.
ANALYSIS
With the exception of claims 9 and 11, the Appellants argue the
claims as a group. We select claim 8 as representative of the claims argued
as a group, and we limit our discussion to claims 8, 9, and 11. Claims 3—7
and 13—18 will stand or fall with claim 8.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejection of claim 8. Accordingly, we affirm that rejection for reasons set
forth below, in the Final Action, and in the Examiner’s Answer. See
generally Final Act. 6—15; Ans. 5—9. However, as set forth below, we
3 Consistent with the nomenclature used by the Examiner, we refer to this
reference as “Gelman.”
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Application 13/217,622
determine that the Examiner fails to establish the unpatentability of claims 9
and 11 by a preponderance of the evidence. Accordingly, we reverse the
Examiner’s rejection of those claims.
The Examiner finds that Tsai discloses a device comprising each
element of claim 8 except that (1) Tsai does not disclose that its outlet
housing comprises a polymeric shell, and (2) Tsai does not disclose that its
porous disc is hydrophobic. Final Act. 7. Concerning the outlet housing,
the Examiner finds that Gelman discloses an outlet housing comprising a
polymeric shell, and the Examiner concludes that it would have been
obvious “to combine the outlet device disclosed by Tsai with the polymeric
shell disclosed by Gelman because, according to Gelman, use of the
polymeric shell allows sealing of the housing.” Id. Concerning the
hydrophobic porous disc, the Examiner finds that Kramer discloses a
hydrophobic porous disc, and the Examiner concludes that it would have
been obvious “to substitute the hydrophobic porous disc disclosed by
Kramer in the device disclosed in the combination of Tsai and Gelman
because, according to Kramer, a hydrophobic disc overcomes problems with
bacterial and particulate contamination . . . while eliminating the need for
chemical[s] or preservatives.” Id. at 7—8. Thus, the Examiner concludes
that the device of claim 8 would have been obvious in view of the applied
prior art. Id.
Similar to their arguments in a related case, see Ex Parte Hunter,
Appeal No. 2015-005790, at 5—6 (PTAB Sept. 20, 2016) (application
no. 12/877,300) (Examiner affirmed), the Appellants argue that, in contrast
to Tsai and Gelman, the claimed invention “allows the water filter housing
to remain attached to the faucet or shower attachment head, while the outlet
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can be removed and replaced without water accumulating.” App. Br. 6.
That argument fails for the same reason in this case that it failed in the
related case. Namely, the Appellants do not identify where the allegedly
distinguishing features are recited in claim 8. Nor do the Appellants make
an effort to explain how or why the structure of the claimed device
necessarily would result in those features, or how the claimed structure is
patentably distinct from the structure of the Examiner’s proposed
combination. Cf. In re Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant. . . .”).
Moreover, we note that the Appellants’ argument appears to rest on a
misinterpretation of the Examiner’s rejection. The Appellants apparently
equate Tsai’s bottom cover shell 3 with the claimed “outlet,” and they argue
that “the bottom cover shell 3 cannot be removed without bringing the filter
elements 5 and 11 with it.” App. Br. 6. The Examiner, however, appears to
equate Tsai’s element 6, see, e.g., Tsai Figs. 6, 7, with the claimed “outlet.”
See Final Act. 6—7. The Appellants do not argue that Tsai’s element 6 could
not be removed without bringing filter 11 with it. It appears that Tsai’s
element 6 could be removed from the filter housing (i.e., elements 3 and 4)
without bringing filter 11 with it. See, e.g., Tsai Figs. 6, 7.
The Examiner finds that the device of the combined prior art is
structurally the same as the claimed device, and the Appellants do not
meaningfully identify reversible error in the specific findings of fact relied
on by the Examiner in support of that determination. See In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that, even if the examiner had
failed to make a prima facie case, the Board would not have erred in framing
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the issue as one of reversible error because “it has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections”) ; see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(rejecting the appellant’s nonobviousness argument as based on limitation
not expressly recited in claim, stating “limitations are not to be read into the
claims from the specification”); In re Golen, 352 F.2d 385, 389 (CCPA
1965) (affirming obviousness rejection and dismissing argument
distinguishing prior art based on feature that “is not supported by any
limitation in his claims”); In re Helgason, 136 F.2d 260, 263 (CCPA 1943)
(limitations not in the claims need not be considered in determining
patentability).
With respect to claim 8, the Appellants also argue, with no
explanation, that the Examiner failed to identify a reason to combine the
references. See App. Br. 8. That argument, however, fails to acknowledge
or show error in the Examiner’s express findings concerning motivation to
combine. See Final Act. 7—8; see also Jung, 637 F.3d at 1365; cf. also In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“naked assertions” without
meaningful argument typically are not persuasive).
We are unpersuaded of reversible error in the Examiner’s rejection of
claim 8. Accordingly, we affirm the rejection.
Claims 9 and 11 each require a “water effluent portion [that]
comprises an annulus” between the outer edge of the bottom wall and the
internal surface of the side wall. In determining that Gelman discloses that
limitation, the Examiner cites Gelman page 4, and Figs. 5 and 6, with
specific reference to Figure elements 40, 42, 58, 60, and 66. E.g., Final Act.
8—9. As the Appellants point out, see App. Br. 8—9; Reply Br. 3—6, it is
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unclear where or how the cited portions of Gelman teach, suggest, or
otherwise render obvious the recited annulus. The Examiner’s citation to
Gelman is not accompanied by a persuasive explanation. E.g., Final Act. 8—
9. On this record, the Examiner has not shown by a preponderance of the
evidence that the annulus limitation of claims 9 and 11 is taught or suggested
by the prior art. Accordingly, we must reverse the Examiner’s rejection of
claims 9 and 11.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 3—8 and 13—18.
We REVERSE the Examiner’s rejections of claims 9 and 11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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