Ex Parte Lesan et al

Patent Trial and Appeal Board

Nov 18, 2016

12902477 (P.T.A.B. Nov. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/902,477 10/12/2010 Frederick K. LESAN
27500 7590 11/22/2016
PILLSBURY WINTHROP SHAW PITTMAN LLP (CV)
ATTENTION: DOCKETING DEPARTMENT
P.O BOX 10500
McLean, VA 22102
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.
075298-0389350 2140
EXAMINER
PATEL,PRANAVN
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
11/22/2016 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):
Docket_IP@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK K. LESAN and CURTIS J. ELWELL
Appeal2015-000016 1
Application 12/902,477
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY W. ABRAHAM, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the "Appellants")2 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1, 2,
7-13, 16, 17, 22, and 23. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We heard oral arguments from the Appellants' representative on
November 10, 2016. A written transcript will be entered into the record
when it is made available.
2 The Appellants state that the real party in interest is Toray Industries, Inc.
Appeal Brief filed February 26, 2014 (hereinafter "Appeal Br."), 2.
3 Appeal Br. 2; Final Office Action delivered electronically on
September 30, 2013 (hereinafter "Final Act."), 2-11; Examiner's Answer
delivered electronically on July 18, 2014 (hereinafter "Ans."), 2-11.
Appeal2015-000016
Application 12/902,477
BACKGROlH~D
According to the Appellants' Specification (hereinafter "Spec.," i-f 2),
the "invention relates generally to membrane filtration systems and more
particularly to seals used in spiral membrane elements of filtration systems"
(emphasis added). The Appellants explain that the faces of two seal plates,
which may be used to couple adjacent spiral membrane filter elements,
typically have complementary profiles that yield an intermeshed contact of
the seal plates to create a tortuous, labyrinthine flow path from inside a filter
element to the outside, thereby sealing the filter element at the point of
coupling with the adjacent element (id. i-f 7). An exemplary pair of seal
plates is illustrated in the Appellants' Figure 3, which we reproduce as
follows:
FIG. 3
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Application 12/902,477
Figure 3 above depicts a seal plate with, inter alia, a surface 3 8 or 39 and an
enlarged partial view of two seal plates 32 and 36 with respective
intenneshing surfaces 38 and 39 to create a tortuous, labyrinthine flow path
(id. iii! 13, 24).
Representative claim 1 is reproduced from page 21 of the Appeal
Brief (Claims Appendix), with the disputed limitations highlighted in italics,
as follows:
1. A seal plate operative to seal a spiral membrane
element of a filtration system, comprising a rim supported
around a central channel and defining a second channel located
between the central channel and the rim, wherein:
the rim has an axial surface substantially aligned with a
plane perpendicular to an axis of the central channel;
a portion of the axial surface has a texture, the texture
having a pattern that is complementary to a texture pattern of a
portion of a corresponding axial surface of a second seal plate;
wherein the textures of the axial swfaces of the seal plate
and the second seal plate are configured to intermesh when the
seal plates are in contact; and
wherein, responsive to being in contact, the intermeshed
textures of the seal plate and the second seal plate create a
tortuous path such that a labyrinth seal is formed between
fluids in the second channel and a space external to the rim.
REJECTION ON APPEAL
The Examiner rejected claims 1, 2, 7-13, 16, 17, 22, and 23 under
35 U.S.C. § 103(a) as unpatentable over Hallan et al. (hereinafter "Hallan")4
in view of Clary5 (Ans. 2-11; Final Act. 2-11).
4 US 2003/0024868 Al, published February 6, 2003.
5 US 2004/0200770 Al, published October 14, 2004.
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Application 12/902,477
DISCUSSION
A. Grouping of Claims
The Appellants do not provide any arguments for the separate
patentability of any particular claim (Appeal Br. 5-19). Therefore, we
confine our discussion to claim 1, which we select as representative pursuant
to 37 C.F.R. § 41.37(c)(l)(iv). By rule, claims 2, 7-13, 16, 17, 22, and 23
stand or fall with claim 1.
B. The Examiner's Rejection
The Examiner found that Hallan describes a seal plate including every
limitation recited in claim 1 except it "does not specifically teach that the
intermeshed textures of the seals['] plates form a labyrinth seal" (Ans. 3).
The Examiner found, however, that Clary teaches the implementation of
teeth and grooves to mate disc members (i.e., plates) in a filtration device,
thereby creating a labyrinth seal to prevent water from flowing into the
bearing (id. at 3--4 ). Based on these findings, the Examiner concluded that a
person having ordinary skill in the art would have found it obvious to
provide Hallan's seal plates with Clary's labyrinth seal in order to provide a
water-tight seal (id. at 4).
C. The Appellants ' Contentions
As a threshold matter, the Appellants contend that Clary is non-
analogous art and, therefore, "Clary cannot be properly considered in an
obviousness analysis" (Appeal Br. 5, 16-19). The Appellants also argue that
"Hallan does not teach or suggest the formation of any seal whatsoever
(labyrinth or otherwise) on the axial surfaces of the filter elements" (id. at 5,
13). According to the Appellants, an axial labyrinth seal, as specified in
claim 1, reduces or eliminates the need for radial seals at the ends of the
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Application 12/902,477
JOmed filter elements, such as the 0-rings disclosed in Hallan (Appeal Br. 7,
9-10, 13). In addition, the Appellants argue that the Examiner failed to
articulate "why a person of ordinary skill in the art would have imported
structural features of the [swimming] pool filter of Clary into the water
delivery filtration system of Hallan" (id. at 6). Specifically, the Appellants
contend that Clary's labyrinth seal is designed for creating a seal between
two rotating bearing plates in a device designed to spray water through and
rotate a single filter cartridge (for cartridge cleaning purposes) rather than a
seal for connecting a plurality of filter elements end-to-end as in the current
invention (id. at 10-11 ). Furthermore, the Appellants argue that the
combination of Hallan and Clary would have resulted in a labyrinth seal on a
radial surface of the seal plates-not an axial surface (id. at 14--15).
D. Opinion
The Appellants' arguments fail to identify a reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
1. Whether Clary Is Analogous Art
We start with the Appellants' argument that Clary constitutes non-
analogous art. The non-analogous art test considers the threshold question
whether a prior art reference is "'too remote to be treated as prior art."' In re
Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d
738, 741 (Fed. Cir. 1985)).
The two separate tests for determining whether a prior art reference is
analogous are as follows: (i) whether the art is from the same field of
endeavor, regardless of the problem addressed; and (ii) if the reference is not
within the inventor's field of endeavor, whether the reference is reasonably
pertinent to the particular problem with which the inventor is involved. Id.
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at 658---659. The same field of endeavor test "for analogous art requires the
PTO to determine the appropriate field of endeavor by reference to
explanations of the invention's subject matter in the patent application,
including the embodiments, function, and structure of the claimed
invention." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004) (reference
describing a toothbrush found to be in the same field of endeavor as a claim
to a hairbrush based on findings regarding function and structural similarity).
With respect to the second test, a reference is reasonably pertinent to the
particular problem with which the inventor is involved if it addresses the
same or similar problem. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
13 80-81 (Fed. Cir. 2007) (prior art disclosing springs as part of a
counterbalancing mechanism in a folding bed is reasonably pertinent to an
application describing a gas spring used as part of a lift assist assembly in a
claimed treadmill).
Applying each of these tests, we agree with the Examiner's
determination (Ans. 9-11) that Clary is analogous art. As we pointed out
above, the Appellants define their field of endeavor broadly by stating that
the "invention relates generally to membrane filtration systems" (Spec. i-f 2).
Although Clary discloses a filter system that is suitable for use in swimming
pools (Clary i-fi-16, 40), Clary's system is nonetheless a membrane filtration
system that falls within the scope of the Appellants' field of endeavor, as
broadly defined in the Specification. Therefore, Clary's teachings
concerning the filter system (including components thereof) are in the same
field of endeavor as defined in the current application. In this regard, our
reviewing court has explained that KSR Int'! Co. v. Teleflex, Inc., 550 U.S.
398, 420 (2007) "directs us to construe the scope of analogous art broadly."
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JiVyers v. Ji;faster Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). See also
id. ("[T]he '649 patent itself defines its scope broadly, and makes clear that
the claims are directed to 'locking device[s]' generally.").
Even assuming that Clary is not in the same field of endeavor as that
defined in the Appellants' Specification, Clary constitutes analogous art
under the second test. The Appellants' claim 1 recites that the "intermeshed
textures of the seal plate and the second seal plate create a tortuous path such
that a labyrinth seal is formed" (Appeal Br. 21 (Claims App'x)). Thus, the
purpose of the Appellants' intermeshed textures, which forms a labyrinth
seal, is to increase resistance to flow through the seal and, consequently,
reduce the degree of leakage through the seal (Spec. i-f 7). Clary teaches the
same or similar purpose-i.e., to create a water-tight seal-for cooperating
teeth on respective faces of two discs that intermesh with each other to
create a labyrinth seal (Clary i-f 16, Fig. 5). Therefore, Clary's teachings
concerning the cooperating teeth that form a labyrinth seal are reasonably
pertinent to the Appellants' invention. ICON Health, 496 F.3d at 1380-
1381 ("[A]n inventor considering a hinge and latch mechanism for portable
computers would naturally look to references employing other 'housings,
hinges, latches, springs, etc.,' which in that case came from areas such as 'a
desktop telephone directory, a piano lid, a kitchen cabinet, a washing
machine cabinet, a wooden furniture cabinet, or a two-part housing for
storing audio cassettes."') (quoting In re Paulsen, 30 F.3d 1475, 1481-82
(Fed. Cir. 1994)).
For these reasons, we hold that Clary is analogous art.
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2. Reason to Combine Hallan and Clary
Having determined that Clary is analogous art, we next consider
whether the Examiner articulated a sufficient reason with some rational
underpinning to support a conclusion that a person having ordinary skill in
the art would have combined the references in the manner claimed by the
Appellants. We answer this question in the affirmative.
Hallan's Figures 2 and 3 are reproduced below:
Hallan's Figures 2 and 3 above depict first and second end caps 34 for
connecting two adjacent separation elements 12 (one of which is shown in,
e.g., Figure 7), wherein the end caps 34 include, inter alia, locking structure
52 comprising a plurality of projections (spades 54) and receptacles
(openings 60) disposed about an outer hub surface 50 (Hallan i-fi-145--47).
Hallan teaches that when locked together, a seal structure or sealing force is
created (id. i153). Referring to an embodiment (Fig. 1 ), Hallan teaches that
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Application 12/902,477
the "end caps may also include an outer 0-ring groove ... for rece1vmg an
0-ring" (id. i-f 54 (emphasis added)). Thus, a person having ordinary skill in
the art would have understood from Hallan's disclosure that a fluid-tight seal
is required between mated end caps 34---with or without an optional 0-ring.
Although directed to a self-cleaning filter assembly for use in, e.g., a
swimming pool, Clary teaches providing cooperating teeth on respective
faces of two rotating bearing discs that form a labyrinth seal when the teeth
are intermeshed (Clary, Fig. 5; i-fi-11, 16, 53, 57). Given Hallan's need to
create a sealing structure between two end caps 34, a person having ordinary
skill in the art would have been prompted to implement Clary's cooperating,
intermeshing teeth to provide a water-tight seal without the need for an 0-
ring. KSR, 550 U.S. at 417 ("[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.").
3. Whether the Prior Art Suggests Sealing Axial Surfaces
Lastly, we discern no merit in the Appellants' argument that "the
sections of Clary relied on by the Examiner, at best, teach the inclusion of a
labyrinth seal on a radial surface of a seal plate, not an axial surface" and
that "Hallan describes a water tight seal only between the radial surface of a
filter element near an end cap and the inside diameter of a pipe" (Appeal Br.
14--15). As pointed out by the Examiner (Ans. 10), Hallan is concerned with
providing a seal between surfaces 50 as shown in, e.g., Figures 2 and 3
(Hallan i-f 54). No difference is seen between the orientation of surfaces 50
in Hallan and the Appellants' intermeshing surfaces 38 and 39 as shown in
Figure 3 of the current application.
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Application 12/902,477
For these reasons, we uphold the Examiner's rejection.
SUMMARY
The Examiner's final decision to reject claims 1, 2, 7-13, 16, 17, 22,
and 23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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