Ex Parte Lauer

Patent Trial and Appeal BoardApr 24, 2013

11990929 (P.T.A.B. Apr. 24, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/990,929 02/25/2008 Viktor Lauer 54367 2416 7590 04/25/2013 Roylance Abrams Berdo & Goodman 1300 19th Street NW Suite 600 Washington, DC 20036 EXAMINER KURTZ, BENJAMIN M ART UNIT PAPER NUMBER 1778 MAIL DATE DELIVERY MODE 04/25/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HYDAC FILTERTECHNIK GMBH (Application 11/990,929) ____________ Appeal 2011-011937 from Technology Center 1700 Benjamin Kurtz, Examiner ____________ Before TERRY J. OWENS, RICHARD TORCZON and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. TORCZON, Administrative Patent Judge. DECISION ON APPEAL The appellant (Hydac) seeks relief from the final rejection of claims 11-21. We AFFIRM. OPINION INTRODUCTION The claimed invention Hydac discloses an invention that relates to a filter device having a housing having at least two housing parts detachably connected to one another, in which the housing holds a filter element having a support tube and a filter material surrounding the support tube, and in which the ends of the support tube and the Appeal 2011-011937 Application 11/990,929 2 filter material discharge into at least one holding part.1 Claim 11, the sole independent claim, defines the invention as:2 A filter device, comprising: a filter housing having first and second housing parts detachably connected to one another; a filter element within said housing and including a support tube surrounded by filter material, said filter material being withdrawable in a withdrawal direction from said support tube, said support tube and said filter material being equally tapered along said withdrawal direction; first and second material holding parts on first and second opposite ends of said filter material, respectively, each said material holding part having inner and outer ring segments bordering inner and outer peripheral sides of said filter material, respectively, said filter material with said first and second material holding parts being axially longer than said support tube in said withdrawal direction; first and second tube holding parts on first and second opposite ends of said support tube, respectively, said ends of said support tube being joined flush with annular broadenings on said first and second tube holding parts; and an annular flange extension extending from each said tube holding part and supporting free end areas on a peripheral inside surface of said support tube. Regarding the "withdrawal direction", Hydac explains that the object of the invention is achieved:3 where the filter material can be withdrawn in the direction separating it from the support tube and where in this withdrawal direction both the support tube and equally the filter material are provided with a definable taper. The fouled filter material can then be easily withdrawn from the support tube. In conjunction with a newly 1 Spec. 1 (Field of Invention). 2 Br. 11. This opinion relies on the claims as they appear in the claims appendix A of the brief. Ans. 4, item 7. 3 Spec. 2. Appeal 2011-011937 Application 11/990,929 3 inserted filter material, the support tube together with its holding parts can be reused. The correspondingly conical configuration of the support tube and filter material facilitate this separation. Consistent with this object, "said support tube and said filter material being equally tapered along said withdrawal direction" means that the tube and filter material are tapered in parallel with the taper becoming narrower in the direction in which the filter material moves as it is removed. The final rejections The examiner has rejected the claims as follows: Claims 11-14 and 16-21 as having been obvious (35 U.S.C. 103) from the combined disclosures of a patent to Sandford4 and a published application of Lang,5 and Claim 15 as having been obvious from the combined disclosures of Sandford, Lang and a patent to Wilkes.6 Both Hydac and the examiner treat the United States Lang patent as a translation of the German-language Lang published application. We will follow their example because the U.S. patent is the only English language version before us.7 4 M.S. Sandford, Multi-media filtration system with reusable and demountable filter cartridge, U.S. Pat. 6,006,924 (1999). 5 N. Lang, J. Hausdorf & R. Wnuk, Filter Device, WO 01/52966 A1 (2001), issued in the United States as US 7,681,739 B2 (2010). The named assignee for the US Lang patent is Hydac Process Technology GmbH. 6 R.D. Wilkes, A.H. Peters & V.J. Jacuzzi, Cartridge Filter, U.S. Pat. 4,108,775 (1978). 7 Br. 3 (explaining the patent is being used as the equivalent); see Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1331 n.5 (Fed. Cir. 2008) (relying on resulting patents rather than the prior art published applications in consonance with the district court's opinion). Appeal 2011-011937 Application 11/990,929 4 FACTS AND FINDINGS Scope and content of the art, including differences Sandford [1] Sandford discloses "a filtration system capable of using a wide-variety of filter elements ("multi-media"), and in particular, to a spin-on cartridge with a demountable and replaceable filter element capable of fine and coarse filtration."8 [2] Sandford Figures 1A and 1B (right) provide exploded perspective views of a filter cartridge 30 including a housing canister 40, a filter and a mounting head assembly 10.9 [3] The examiner found Sandford also taught a support tube 21 surrounded by filter material with a withdrawal direction, first and second holding parts 31, 32 and first and second tube holding parts 15, 24 as claimed.10 [4] The examiner finds that first and second tube holding parts have annular flanges.11 8 Sandford 1:6-10. 9 Id. at 2:40-42 & 2:50-57. 10 Final Rej. 3. 11 Id. Appeal 2011-011937 Application 11/990,929 5 [5] The examiner finds that "Sandford does not teach the support tube and the filter material being equally tapered along the withdrawal direction."12 [6] Sandford discloses that "[i]n the preferred embodiment, the center tube 21 tapers in a step-like fashion to form a concentric step 24", albeit for the purpose of mating the center tube with other elements when the filter is installed. We find no indication that Sandford's filter material tapers in parallel with the tapering of the center tube, but the center tube tapers in the direction in which the filter material is withdrawn. [7] In operation:13 When assembled, fluid or airâ€¦passes through the filter element 30, flows radially inwardly through the center tube's perforations 2, and up through the center tube 21, so as to flow out through the opening 17 in the hexagonal cap 16. It is important to note that by positioning the center tube 21 inwardly of the filter element 30 the material comprising the filter is reinforced and supported against the normal forces being applied by the pressurized fluid flow. This support minimizes the rises associated with pressurized fluid flow such as buckling, collapse or "blow-throw" [sic, blow-through?] and broadens the range of materials which can be used for the filter media so as to permit the use of the delicate media used in many micro-filtration applications. Lang [8] Lang discloses a filter device, which includes a filter housing 10, a filter inlet 12, a filter outlet 14 and a filter element 16. The filter element divides a filter area 18 into two partial areas 20, 22. One partial filter area is conical 12 Id., pointing to Sandford Figure 3. 13 Sandford 4:66-5:13 Appeal 2011-011937 Application 11/990,929 6 in form with the cross-section of that partial area 20 being tapered from the filter inlet 12 to the filter outlet 14.14 [9] Lang Figure 1 (right) provides an elevational side view, partly in section, of one embodiment of Lang's filter device.15 [10] The filter element 16 has meshed filter material 24, the inner circumference of which rests against a supporting tube 26 with fluid passages. The filter material 24 surrounds the outer circumference of the supporting tube 26 and is applied around the supporting tube 26 as a filter mesh.16 [11] The filter housing 10, on the other hand, is cylindrical in shape in the area into which the filter element 16 is introduced.17 [12] Lang teaches that the "filter element 16 and the filter material 24â€¦exhibit only slight conicity, for example, in the form of [an] inclination relative to the horizontal and/or in the transverse direction of the filter device of the order of magnitude of 1Â° to 5Â°."18 [13] The examiner found, based on the disclosure and figures in 14 Lang, Abstract. 15 Id. at 2:38-40. 16 Id. at 2:66-3:3. 17 Id. at 3:3-5. 18 Id. at 4:17-22. Appeal 2011-011937 Application 11/990,929 7 Lang that the support tube and filter material are tapered in the direction in which the filter would be removed and that the tapering was equal for the tube and the filter.19 [14] A screw 52 at the bottom permits the lower end 36 to be detached so the filter material 24 can be easily replaced.20 Wilkes [15] Wilkes "relates to filter units for use in a swimming pool water purification system and particularly to filter units which incorporate a disposable filter media in cartridge form."21 [16] Wilkes Figure 3 (right) is a fragmental, vertical, sectional, elevational view of an embodiment of Wilkes' cartridge filter.22 [17] Wilkes teaches that pleated filter material was known in the prior art.23 [18] Wilkes teaches that, in addition to a pleated filter,24 a cup 170 may be used to collect solids that collect at the bottom of filter or that do not adhere to the filter cartridge 184.25 19 Final Rej. 3-4. 20 Lang at 4:12-17. 21 Wilkes 1:6-9. 22 Id. at 4:27-31. 23 Id. at 1:43-2:2. 24 Id. at 6:32-41; Fig. 5 Appeal 2011-011937 Application 11/990,929 8 [19] The cup may be removed for cleaning.26 Level of skill in the art The record lacks an express teaching of the educational level or years of experience of a person having ordinary skill in the art. [20] Sandford indicates that a person having ordinary skill in the art would have known of the need for disposable filters in filter cartridges, with the use of supporting tubes for the filters and with need for axial filter support.27 [21] Lang indicates that a person having ordinary skill in the art would have been familiar with the diversity of filter configurations in the prior art, with the use of supporting structures for filter material, with the desirability of avoiding dead spaces in the filter (particularly as fluid viscosity increases) and with the use of conical elements in addressing these problems.28 We find that removing one congruent cone from another in the direction of the taper (to avoid pushing the narrower cross-section of the outer cone over the broader cross-section of the inner cone) would suggest itself to any observer. In such a case the taper, conversely, could be described as being in the withdrawal direction. [22] Hydac's specification states that the "configuration of a filter element [where a support tube is surrounded by a filter material, which consists preferably of 25 Id. at 6:42-56. 26 Id. 27 Sandford 1:13-22 & 1:48-59. 28 Lang 1:11-45, citing, e.g., U.S. Pat. 3,817,377, Figs. 4 & 5. Appeal 2011-011937 Application 11/990,929 9 several layers, which yield a pleated, filter mat structure] can be ascertained in the prior art and will not be described further."29 ANALYSIS Claim 11 Hydac argues that the combined teachings of Sandford and Lang fail to have rendered obvious "the tapering of the filter material and the support tube in the withdrawal direction".30 Both Sandford and Lang teach removable filters with support tubes. Both teach that the support tube may be tapered or conical. Lang teaches the use of conical filters and emphasizes the desirability of avoiding dead spaces and of supporting the filter material axially. If a conical filter is to be removed from a congruently conical support, the easiest way to do so would be to remove it in the direction of the taper. Hydac argues that Sandford teaches withdrawable filter material, while Lang does not.31 This argument misses the rationale of the final rejection. The examiner does not argue that the filter elements of Lang and Sandford are directly combinable without modification; rather, Lang provides reasons for modifying Sandford in a way that is compatible with Sandford's goals and that would fall within the scope of claim 11. Similarly, Hydac argues that modifying Sandford to taper the filter material and support toward Sandford's inlet would render the modification inoperative.32 29 Spec. 4; see Ex parte Jud, 85 USPQ2d 1280, 1282 (BPAI 2007) (explaining that the application disclosure is often one of the few available sources of information about the level of skill in the art during patent examination). 30 Br. 5. 31 Id. at 5-6. 32 Id. at 6, but see Reply 2 ("The issue is not whether the Lang filter material and supporting tube must taper toward the inlet of the housing. The issue is the tapering relative to the withdrawal direction."). Appeal 2011-011937 Application 11/990,929 10 The argument answers itself: a person having ordinary skill in the art would not make that modification. Sandford's filter material is removed away from the inlet. A person having ordinary skill in the art would taper the filter material and support in the direction that the filter is removed rather than into the inlet, which would satisfy claim 11. The reply contends that Lang functions differently than the claimed invention, but does not address the modifications that Lang would suggest regarding conical filters for Sandford's device. Hydac has not shown prejudicial error in the final rejection of claim 11. Dependent claims For convenience of proximity, additional claim-specific facts and findings for this rejection are incorporated into the analysis for the dependent claims. Claim 12 Claim 12 depends from claim 11, with the further limitation "said ring segments of said material holding parts encompass and clamp said filter material." Hydac contends that "[n]o such ring segments are disclosed or rendered obvious by the Sandford patent."33 The examiner relied34 on the end caps 31, 32 holding the filter material 30 as shown in Sandford's Figure 3 (right), which provides a partial cross-sectional view of an assembled filter.35 The examiner's position is 33 Br. 7 34 Final Rej. 4. Appeal facially claim 12 C "inner r thicknes part." H not disc final rej Lang,37 an enlar which p view, pa left corn figure d ring thic H and oute final rej 35 Sandf 36 Br. 7. 37 Final 38 Lang 39 Reply 2011-0119 reasonabl . Claim laim 13 de ing segme s compare ydac argu lose ring s ection, the particularl ged detail rovides an rtly in sec er of a filt oes appear ker than a ydac argu r ring seg ection. Al ord 2:45-4 Rej. 4, cit 2:41-42. 3 (empha 37 e. Hydac h 13 pends fro nt of said s d to said o es that San egments.36 examiner y Lang Fi of which ( elevation tion, of a l er elemen to show a n inner rin es in reply ments",39 b though the 6. ing "WO", sis added) as not sho m claim 1 econd ma uter ring s dford sho In the relies on gure 2, right), al side ower, t.38 The n outer g on a par that "the L ut Lang w reply stat i.e., the L . 11 wn prejud 1, with fur terial hold egment of ws uniform t 30 holdin ang publi as the bas es that the ang WO p icial error ther limita ing partsâ€¦ said seco thicknes g the filte cation is n is of the e se feature ublication Applicati in the fina tions inclu has a red nd materia ses, while r material ow relied xaminer's s are not sh . on 11/990 l rejection ding that e uced wall l holding Lang doe . upon for i analysis in own in ,929 of ach s nner the Appeal 2011-011937 Application 11/990,929 12 Figure 2, the reply does not explain why not.40 Hydac has not shown prejudicial error regarding this limitation. Hydac also argues in the reply that the ring must be slidable on the support tube.41 As an initial matter, we note that this argument is new in the reply and does not respond to an argument in the examiner's answer; hence, it is not properly before us.42 Alternatively, the examiner stated that the inner ring does slide on the support tube. The examiner's position appears facially likely because Lang teaches that the end caps 28, 30 may be pulled away from the support tube 26,43 which implies that it would slide on and off the support tube. We do not have the benefit of the examiner's views on Hydac's new argument, so further development of this issue must be left to future examination of this claim, if any. Hydac has not shown prejudicial error in the rejection of claim 13. Claim 14 Claim 14 depends from claim 13, with further limitations including "said second tube holding part being detachably connected to said housing." Hydac argues that "[n]o such detachable connection exists on the larger end in the Lang publication as alleged."44 In the final rejection, the examiner relied on the same disclosure in Lang cited for claim 13, teaching that the end caps are removable.45 Removal implies a connection. Hydac has not pointed to a basis in Hydac's disclosure that would require a narrower interpretation of "connected". The examiner's characterization of Lang's teaching is facially reasonable. 40 In re Thrift, 298 F.3d 1357, 1360 (Fed. Cir. 2002) (conclusory argument does not raise a separate issue). 41 Reply 3. 42 Carbino v. West, 168 F.3d 32, 34 (Fed. Cir. 1999); 37 C.F.R. Â§ 41.41(b)(2). 43 Lang 3:22-25. 44 Br. 7. 45 Final Rej. 4. Appeal 2011-011937 Application 11/990,929 13 Hydac has not shown prejudicial error in the rejection of claim 14. Claim 16 Claim 16 depends from claim 11, with further limitations including "said first tube holding part having a bypass valve." Hydac argues that the combination of a bypass valve with tapering distinguishes claim 16 from the prior art.46 In the final rejection, the examiner noted Sandford's teaching of the advantages of a bypass valve for pressure relief.47 Hydac has not explained why this teaching would be incompatible with the tapering suggested by the combined disclosures of Sandford and Lang (as discussed for claim 11). Hydac has not shown prejudicial error in the rejection of claim 16. Claim 17 Claim 17 depends from claim 11, with the further limitation that the "filter material comprise a pleated filter mat of constant wall thickness." Hydac argues that no evidence shows this material.48 In the final rejection, the examiner stated that "[s]uch pleated filter media is very well known in the filter art and would have recognized as an obvious choice of filter material to one of ordinary skill in the art."49 The examiner's finding is facially reasonable.50 It is also consistent with Hydac's disclosure that such knowledge was in the prior art.51 Hydac's contention falls short of placing the examiner's finding at issue. Simply saying that there is no evidence is unhelpful because the examiner did not purport to rely on any evidence. We decline to read into Hydac's minimal 46 Br. 7. 47 Final Rej. 4, citing Sandford 3:47-58. 48 Br. 7. 49 Final Rej. 5. 50 See, e.g., Sandford Figs. 1A & 1B, supra at 4, which appear to have pleats; Sandford 1:50 (discussing pleated filter in the relevant prior art). 51 See finding [22] , supra. Appeal 2011-011937 Application 11/990,929 14 argument that Hydac thinks the examiner is wrong or, at least, that Hydac is unaware of any reason why the examiner could be right, particularly given Hydac's assertion of knowledge in the art to enable this very limitation. Hydac has not shown prejudicial error in the rejection of claim 17. Claims 18 and 19 Claims 18 and 19 depend from claim 11, with the further limitations that the taper is "between 2Â° and 10Â°" and "approximately 5Â°", respectively. Hydac argues that these specific tapers are not shown, particularly in combination with a replaceable filter element.52 In the final rejection, the examiner pointed to Lang's teaching of a taper with a magnitude of 1Â° to 5Â°.53 Overlapping ranges have long been considered sufficient for a facial case of obviousness.54 Hydac has not shown prejudicial error in the rejection of claims 18 and 19. Claims 20 and 21 Claims 20 and 21 depend from claim 11, with the further limitation that the "said filter material comprises a [pleated for claim 20] filter mat directly engaging said support tube." The pleated limitation has been already been discussed in the context of claim 17. Hydac argues that "[t]he Sandford filter material 30 does not directly engage the support tubeâ€¦due to the space therebetween clearly illustrated in Figure 3. Nothing in the cited portion of column 3, lines 60-65 specifically discloses the claimed direct engagement."55 In the final rejection, the examiner had found that Sandford taught such direct support.56 52 Br. 8. 53 Final Rej. 4, citing Lang 4:12-27. 54 In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). 55 Br. 8. 56 Final Rej. 4 & 5. Appeal 2011-011937 Application 11/990,929 15 We find that Figure 357 does show a space between the filter element 30 and the support tube 21. We find that the passage in Sandford that the examiner cites only says the filter element slips over the support tube. The examiner also explains that, in use, fluid flowing through the filter element 30 into the center tube 21 would exert inward pressure on the filter element, which direct contact with the center tube would counteract.58 The examiner's inference of physical contact is consistent with Sandford's teaching that in use the center tube supports the filter material to minimize buckling, collapse or blow-through.59 In reply, Hydac argues that the examiner's finding is conjecture.60 The claims do not identify when the engagement must occur. The examiner's finding, although conjecture, is based on the clear teaching in Sandford that the center tube provides support to the filter material under operating pressures such that relatively delicate filter material may be used. Alternatively, Lang teaches direct engagement between the filter material 24 and the support tube 26.61 Hydac has not shown prejudicial error in the rejection of claims 20 and 21. Claim 15 Claim 15 depends from claim 13, with the further limitation that: in said sections of largest free cross-sectional areas of said filter material and said support tube, said second material holding part has 57 At 8, supra. 58 Ans. 11-12. 59 See Finding [7] , supra. 60 Reply 3. 61 See Finding [10] , supra. Appeal 2011-011937 Application 11/990,929 16 an annular space forming a dirt catching basket spaced radially from said filter material. The examiner relied on the Wilkes patent for the teaching of a filter element with a material holding part 170 having an annular space 194 forming a dirt catching basket spaced radially from the filter material, finding that a person having ordinary skill in the art would have known of the option to use such a collection basket for collecting larger solids for removal when the filter material is removed.62 Hydac argues that, because Wilkes does not teach tapered filter material, the cup is not on the largest end of the tapered filer element.63 The examiner relied on the combined disclosures of Sandford and Lang for a filter housing with a tapered center tube and filter material, but notes that these references do not imply an orientation for the housing. The examiner explained that in Wilkes, the cup is on the end with the inlet so it would make sense to invert Sandford so that the inlet was on the bottom as well, which is where the taper would have the widest cross section.64 In reply, Hydac contends that inverting Sandford as the examiner proposes would interfere with the withdrawal of the filter material, thus rendering the combination inoperative.65 It is not clear why placing the basket below the filter material, when the filter material is being withdrawn upward, would interfere with the withdrawal. In any case, Wilkes' cup works by gravity (solids settling), so its placement is driven by the orientation of the housing rather than the location of the inlet or the direction of the filter-material withdrawal: a person having ordinary skill in the art would have placed the cup toward the bottom of the housing regardless. Wilkes 62 Final Rej. 5, citing Wilkes 6:42-56 and Fig. 3. 63 Br. 9. 64 Ans. 12-13. 65 Reply at 4. Appeal 2011-011937 Application 11/990,929 17 and Sandford open at the top, but Lang opens at the bottom (where Lang's taper is widest). Of the finite orientations (2) in the record, one of them would naturally place the cup where the taper is widest. Hydac has not shown prejudicial error in the rejection of claim 15. HOLDING Final rejection of claims 11-21 isâ€” AFFIRMED For the appellant: MARK S. BICKS, Roylance, Abrams, Berdo & Goodman, LLP, of Washington, D.C. kmm