Ex Parte Iannizzaro et al

Patent Trial and Appeal BoardMay 6, 2013

11760981 (P.T.A.B. May. 6, 2013)

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. 11/760,981 06/11/2007 Frank R. Iannizzaro P123P0008USB 9159 49458 7590 05/06/2013 DON W. BULSON (PARK) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE / 19TH FLOOR CLEVELAND, OH 44115 EXAMINER DAVIS, MARY ALICE ART UNIT PAPER NUMBER 3748 MAIL DATE DELIVERY MODE 05/06/2013 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 FRANK R. IANNIZZARO, LORI A. MARTINELLI, JOSEPH A. KOVACH and LISA K. FURCHES ____________ Appeal 2011-003157 Application 11/760,981 Technology Center 3700 ____________ Before JOHN C. KERINS, WILLIAM A. CAPP and JILL D. HILL, Administrative Patent Judges. CAPP, Administrative Patent Judge DECISION ON APPEAL Appeal 2011-003157 Application 11/760,981 - 2 - STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-16 and 18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ invention is a hydraulic gear motor with an integrated filter. Spec. 3. Claim 1, reproduced below with paragraph indentation added, is illustrative of the subject matter on appeal. 1. A drive apparatus comprising a housing having a fluid inlet and outlet for hydraulic fluid; an output shaft journalled in said housing for rotation; and at least one gear rotatable within the housing by hydraulic fluid flowing from the inlet to the outlet, the rotatable gear being operatively coupled to the output shaft such that rotation of the rotatable gear effects rotation of the output shaft; and the housing including a main body part having interior passages through which passes the hydraulic fluid flowing from the fluid inlet to the fluid outlet, said interior passages opening to a filter element interface at filter inlet and outlet openings, and a removable filter bowl removably attached to the main body part and forming therewith a filter element chamber for housing a replaceable filter element. Appeal 2011-003157 Application 11/760,981 - 3 - THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: The following rejections are before us for review: 1. Claims 1, 4 and 6-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Christensen, Gulick and Dieterich. 2. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Christensen, Gulick, Dieterich and Hansen. 3. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Christensen, Gulick, Dieterich and Desjardins. 4. Claim 18 is rejected under 35 U.S.C. § 102(b) as being anticipated by Gulick. 5. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Gulick and either Smith or Berg. OPINION Unpatentability of Claims 1, 4 and 6-16 Appellants argue claims 1, 4 and 6-16 as a group. App. Br. 6-13. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Christensen discloses all of the elements of claim 1 except that it lacks: (1) a filter element interface; and (2) a filter bowl that is removably attached to the main body part. Ans. 3-4. The Gulick Berg Hansen Smith Christensen Desjardins Dieterich US 3,322,281 US 4,126,553 US 4,432,710 US 2004/0164008 A1 US 6,902,382 B2 US 7,155,907 B2 US 7,547,203 B2 May 30, 1967 Nov. 21, 1978 Feb. 21, 1984 Aug. 26, 2004 Jun. 7, 2005 Jan. 2, 2007 Jun. 16, 2009 Appeal 2011-003157 Application 11/760,981 - 4 - Examiner relies on Gulick as disclosing a filter element interface and a removable filter bowl. Ans. 5. The Examiner relies on Dieterich as disclosing a filter element interface and a filter bowl that is removably attached to the main body part. Ans. 6. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine Christensen, Gulick and Dieterich to achieve the claimed invention. Ans. 7. According to the Examiner, a person of ordinary skill in the art would have been motivated to add a filter to Christensen to protect the hydraulic motor from contaminants in the hydraulic fluid. Id. Furthermore, a person of ordinary skill in the art would have found it obvious to integrate a filter assembly with a housing as such is a well-known technique that requires only routine skill and produces predictable results. Id. Appellants’ initial challenge to the Examiner’s rejection is that Gulick teaches away from the invention because it discloses a separate filter instead of a filter that is integrated into a housing. App. Br. 10-11. However, a reference does not teach away if it merely discloses an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir. 2004). Appellants have not directed us to any language in Gulick that criticizes, discredits or otherwise discourages investigation into integrating a filter element into a motor housing. Next, Appellants argue that the Examiner’s rejection is improper because Dieterich is non-analogous art that is not properly combinable with Christensen and/or Gulick. App. Br. 11-12. A reference qualifies as prior art for an obviousness determination when it is analogous to the claimed Appeal 2011-003157 Application 11/760,981 - 5 - invention. Innovention Toys, LLC. v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed.Cir. 2004). The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of similarity to the structure and function of the claimed invention as disclosed in the application.” Id. at 1325-26. “A reference is reasonably pertinent . . . if it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id. Whether a prior art reference is “analogous” is a question of fact. Id. at 658. Appellants argue that Dieterich relates to a screw compressor and thus has little to do with the working fluid of a hydraulic motor drive. App. Br. 11-13. Appellants also argue that Dieterich’s working fluid is a refrigerant that is not passed through a filter and that Dieterich just filters lubricant for the internal components of the refrigerant circuit. App. Br. 11. Appellants’ invention and Dieterich both filter a fluid that is circulated within a closed circuit. We do not agree with the Appellants that the scope of analogous art should be limited to just hydraulic gear motors or to Appeal 2011-003157 Application 11/760,981 - 6 - systems that filter a “working fluid.” Dieterich is reasonably pertinent to the particular problem with which the Appellants are involved, namely creating an interface for a removable filter for a fluid circulated within a closed circuit. The Examiner correctly relied on Dieterich as analogous art. Appellants next argue that the Examiner exercised impermissible hindsight in rejecting claim 1. App. Br. 12-13. Appellants argue that prior art filters were always supplied as a separate component in cooling fan systems. App. Br. 12. Appellants argue that the prior art did not teach the integration of a filter in a gear motor housing since known systems that featured filtration did not recognize any problem with the attachment interface between the filter and the hydraulic motor. Id. Appellants contend that the Examiner’s reasoning behind the proposed combination was improperly gleaned from Appellants’ own specification. Id. We do not find Appellants’ hindsight argument persuasive. Appellants readily concede that the prior art taught filtration in a hydraulic gear motor. App. Br. 13. Thus, Appellants’ argument for patentability rests solely on the manner of attachment of the filter to the motor housing. Appellants concede that Dieterich’s filter is integrated with a motor housing. Id. Thus, the issue comes down to whether a person of ordinary skill in the art would have found it obvious to adapt Dieterich’s means of filter attachment to a hydraulic gear motor. The Examiner resolved this issue correctly. “It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007). We agree with the Appeal 2011-003157 Application 11/760,981 - 7 - Examiner that taking a known technique for attaching a filter to a motor housing, i.e., Dieterich, and adapting it to attach a filter to the housing of a hydraulic gear motor would have required no more than routine skill. KSR at 416 (The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results). We sustain the Examiner’s unpatentability rejection of claims 1, 4 and 6-16. Unpatentability of Claims 2 and 3 Appellants cite only to the arguments presented for the patentability of claim 1 as conferring patentability on claims 2 and 3, which stand rejected as being unpatentable over the combination recited in the rejection of claim 1 and one additional reference. App. Br. 13-14. For the reasons discussed with respect to claim 1, we are not apprised of error in the Examiner’s rejection of claims 2 and 3. Accordingly, the rejection of claims 2 and 3 are sustained. Unpatentability of Claim 5 Appellants cite only to the arguments presented for the patentability of claim 1 as conferring patentability on claim 5, which stand rejected as being unpatentable over the combination recited in the rejection of claim 1 and one additional reference. App. Br. 14. For the reasons discussed with respect to claim 1, we are not apprised of error in the Examiner’s rejection of claim 5. Accordingly, the rejection of claim 5 is sustained. Unpatentability of Claim 18 Claim 18 is an independent claim directed to a filter element for use in a hydraulic gear drive apparatus. Clms. App'x. The Examiner finds that Gulick teaches all of the limitations of claim 18 with the possible exception of a bypass valve located interiorly of the ring filter media. Ans. 10-11. To the extent that Gulick may not locate the bypass valve as claimed, the Appeal 2011-003157 Application 11/760,981 - 8 - Examiner alternatively relies on each of Smith and Berg as disclosing such limitation. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to locate the bypass valve in the interior of the filter media ring. According to the Examiner, a person of ordinary skill in the art would have been motivated to accomplish this modification to reduce the overall packaging size of the filter element. Ans. 11-12. The Examiner also concludes that such a modification to relocate the valve would have required only routine skill in the art and would have produced predictable results. Ans. 12. Appellants traverse the Examiner’s rejection by arguing that the Examiner’s reasoning for combining Gulick and either Smith or Berg is unsound, because relocating Gulick’s bypass valve to the interior of the filter media ring will not reduce the size or change the configuration of Gulick’s cap. App. Br. 17-18. Appellants argue that, if anything, modifying Gulick with either Smith or Berg would increase, not decrease, the overall packaging size of Gulick. App. Br. 18. We do not find Appellants’ argument persuasive. A person of ordinary skill in the art would not have been restricted to the shape and size of Gulick’s structure when combining the teachings of Gulick and either Smith or Berg. In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).1 Appellants have not persuaded us of error in the 1 Appellants do not challenge the Examiner’s alternative rationale for combining the prior art, namely, that relocating the valve requires only routine skill and produces predictable results. Ans. 12. Appeal 2011-003157 Application 11/760,981 - 9 - Examiner’s decision to reject claim 18. We sustain the rejection of claim 18 over Gulick in combination with either Smith or Berg. Anticipation of Claim 18 by Gulick In light of our decision to sustain the rejection of claim 18 as unpatentable over the combination of Gulick and Smith and also over the combination of Gulick and Berg, we do not reach the issue of whether claim 18 is also anticipated by Gulick. DECISION The decision of the Examiner to reject claims 1-16 and 18 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)(1)(iv). AFFIRMED Klh