Ex Parte Pranger et al

Patent Trials and Appeals BoardJan 11, 2019

14234062 - (D) (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/234,062 01/21/2014 151860 7590 01/15/2019 The Small Patent Law Group, LLC 225 S. Meramec Ave. Suite 725 St. Louis, MO 63105 FIRST NAMED INVENTOR Jason R. Pranger 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. 60750 (500-0373) 6790 EXAMINER GONZALEZ, MADELINE ART UNIT PAPER NUMBER 1778 NOTIFICATION DATE DELIVERY MODE 01/15/2019 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@splglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON R. PRANGER and RICHARD D. GJERDE Appeal2018-003087 1 Application 14/234,062 Technology Center 1700 Before KAREN M. HASTINGS, N. WHITNEY WILSON, and JENNIFER R. GUPTA, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's rejections of claims 1-202 under 35 U.S.C. Â§ 103(a) as unpatenable over at least the combined prior art of Kempa (US 4,250,037 issued February 10, 1981) and Rosenberg (US 3,696,932 issued October 10, 1972). We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b ). 1 The real party in interest is stated to be Illinois Tool Works Inc. (Appeal Br. 3). 2 Numerous other references were applied to various claims (Final Act. 7- 10). A discussion of these references is not necessary for the disposition of this appeal Appeal2018-003087 Application 14/234,062 Claim 1 is illustrative ( emphasis added to highlight key limitation in dispute): Claim 1. A filter assembly comprising: a hollow body defining a flow passage between its ends; a porous filter element extending across said flow path disposed obliquely in said hollow body between its ends, said filter element integrated into said body, such that no other element is found in said flow passage other than said filter element, wherein said filter assembly is configured for filtration regardless of direction of flow. Claim 8 is similar to claim 1, reciting a "coupling filter" and "wherein said coupling filter is configured for filtration regardless of the direction of flow" (Appeal Br. 18; Claims Appendix). Claim 19 is directed to a method of making a coupling filter, "said method of making enabling filtration by said filter element regardless of direction of flow" (Appeal Br. 19, Claims Appendix). Appellants only present arguments directed to this common feature of independent claims 1, 8 and 19 (Appeal Br. 4--6). ANALYSIS Upon consideration of the evidence in this appeal and each of Appellants' contentions as set forth in the Appeal Brief filed Sept. 15, 2017, as well as the Reply Brief filed Jan. 30, 2018, we determine that Appellants have not demonstrated reversible error in the Examiner's rejection (e.g., Ans. 2-14 (mailed Dec. 18, 2017)). In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011) (explaining the Board's long-held practice of requiring Appellants to identify the alleged error in the Examiner's rejection). We 2 Appeal2018-003087 Application 14/234,062 sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following for emphasis. In assessing whether a claim to a combination of prior art elements or steps would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements or steps according to their established functions. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). "[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. As found by the Examiner, there is no doubt that a skilled artisan knew how to construct a filter element so as to enable fluid flow in either direction, as exemplified in Rosenberg (col. 9, 11.40-42; Ans. 3, 12). Appellants' argument that reversing the flow of the filter of Kempa would have made the plumbing coupler of Kempa unsatisfactory for its intended purpose is not persuasive of error in the Examiner's rejection because it fails to adequately consider the prior art as a whole, and the inferences that one of ordinary skill would have drawn therefrom, and thus do not adequately address the Examiner's obviousness position (generally Ans.). Specifically, the Examiner finds that Kempa teaches that its drainage trap 140 is optional (Ans. 12, 13; Kempa col. 4, 1. 65 to col. 5, 1. 3). See In re Keller, 642 F.2d 413, 425-26 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art."); see also e.g., In re Fritch, 972 F.2d 1260, 3 Appeal2018-003087 Application 14/234,062 1264---65 (Fed. Cir. 1992) (it is well established that in evaluating references it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom). As aptly pointed out by the Examiner, one of ordinary skill in the art would have readily inferred that without the associated drainage trap, Kempa teaches a structure that is indistinguishable from that claimed ( e.g., Ans. 12, 13; compare e.g. Fig 2 of Kempa to Appellants' Figs. 5, 8). Claims directed to an apparatus must be distinguished from the prior art in terms of structure. See In re Danly, 263 F.2d 844, 848 (CCPA 1959) ("Claims drawn to an apparatus must distinguish from the prior art in terms of structure rather than function."); In re Gardiner, 171 F.2d 313, 315-16 (CCP A 1948) ("It is trite to state that the patentability of apparatus claims must be shown in the structure claimed and not merely upon a use, function, or result thereof."). Choosing to define an element functionally, i.e., by what it does, carries with it a risk. Where there is reason to conclude that the structure of the prior art is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellants provide no convincing evidence that their "porous filter element" has a structure different than Kempa's filter. In fact, Appellants' "porous filter element" is situated within the flow path in a manner similar to the filter element of Kempa, even more so when the drainage trap of Kempa is eliminated as taught to be an option by Kempa, as discussed above. Because the evidence supports the finding of the Examiner, the burden 4 Appeal2018-003087 Application 14/234,062 shifted to Appellants to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. Schreiber, 128 F.3d at 1478. Appellants provide no convincing evidence of such a difference. Accordingly, Appellants have not provided persuasive technical rationale or any credible evidence to refute the Examiner's obviousness determination (generally Ans.; Appeal Br.; Reply Br.). KSR, 550 U.S. at 416 (the predictable use of prior art elements according to known methods for their established functions is likely to be obvious when it does no more than yield predictable results). "A person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 5