Ex Parte Slayter et al

Patent Trial and Appeal Board

May 9, 2016

12824862 (P.T.A.B. May. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/824,862 06/28/2010
87521 7590 05/11/2016
Cantor Colburn LLP - Hamilton Sundstrand
20 Church Street, 22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Mathew Slayter
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.
56209US01 1644
EXAMINER
AMICK, JACOB M
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
05/11/2016 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):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHEW SLAYTER and JEFFREY M. MAKULEC
Appeal2014-003449
Application 12/824,862
Technology Center 3700
Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-8 and 12-20. 2 We have jurisdiction over this appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appellants identify the real party in interest as "Hamilton Sundstrand
Corporation." (Appeal Br. 2.)
2 The Examiner withdrew the rejections of claims 9-11. (See Answer 8-9.)
Appeal2014-003449
Application 12/824,862
STATEMENT OF THE CASE
The Appellants' invention "relates to a single point lube service port
component." (Spec. i-f 1.)
Illustrative Claim3
1. A single point lube service port component, comprising:
an elongate annular body, which is formed to define a
hollow through which fluid is gravitationally drainable in a first
direction from an uppermost end of the hollow to a lowermost
end of the hollow and first and second apertures, the first aperture
being proximate to but displaced from the lowermost end and the
second aperture being proximate to but displaced from the
uppermost end;
a seal biased to move from a non-seal position toward a
seal position at which fluid communication in a second direction
opposite the first direction from the first aperture to the second
aperture is prevented; and
a chip collector body removably insertable into the hollow
to prevent the gravitational fluid drainage and to urge the seal
into the non-seal position.
Rejections
The Examiner rejects claims 1-7 and 12-19 under 35 U.S.C. § 103(a)
as unpatentable over Kapur. 4 (Final Action 2.)
The Examiner rejects claims 8 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Kapur and Leo. 5 (Id.)
3 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 8-12 of the Appeal Brief.
4 US 2003/0127384 Al, published July 10, 2003.
5 US 5,814,211, issued September 29, 1998.
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Application 12/824,862
ANALYSIS
Independent claims 1 and 12 each requires "an elongate annular body"
to define a "hollow" having an "uppermost end" and a "lowermost end."
(Claims App.) The Examiner finds Kapur discloses a device comprising an
elongate annular body (housing 2) that defines such a hollow. (See Final
Action 3.) In Kapur's disclosed device, housing 2 defines an upper
chamber 11, a lower chamber 17, and an intermediate chamber (i.e., the
chamber surrounding valve 8) therebetween. (See Kapur, i-fi-f 19--21,
Figs. 1, 3.) The Examiner considers the upper portion of chamber 11 to be
the uppermost end ofKapur's hollow, and the lower portion of chamber 17
to be the lowermost end of Kapur's hollow. (See Answer 10.)
Independent claims 1 and 12 also each requires the elongate annular
body to define a "first aperture" that is "proximate to but displaced from the
lowermost end [of the hollow]." (Claims App.) The Examiner finds that
Kapur's housing 2 defines a first aperture (inlet 3) that is "generally in the
vicinity of a lower portion of Kapur's hollow (chamber 17)." (Answer 10.)
In Kapur's disclosed component, fluid flowing through inlet 3 first enters the
intermediate chamber. (See Kapur Fig. 1.) The Examiner considers inlet 3
to be "not positively proximate" to the lowermost end of Kapur's hollow.
(Answer 10.)
The Examiner determines that it would have been obvious to
configure Kapur's device "such that the first aperture was proximate to the
lowermost end of the hollow, as such a configuration is simply a
rearrangement of parts." (Final Action 3). In other words, the Examiner
proposes shifting the position of Kapur's inlet 3 so that fluid flowing
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Application 12/824,862
therethrough first enters lower chamber 1 7, rather than first entering the
intermediate chamber.
The Appellants argue that "the suggested modifications clearly require
more than the simple modification of making the first aperture in Kapur
proximate to the lowermost end of the hollow." (Reply Br. 2; see also
Appeal Br. 5---6.) According to the Appellants, "moving the fluid inlet 3 to
that area would require an entirely new structure for the valve 8 and the filter
assembly 9 (among others)." (Id.)
We are not persuaded by this argument because the valve-filter
interaction, the primary fluid flow path, and the bypass fluid flow path
would seemingly remain substantially the same if the position ofKapur's
inlet 3 is shifted as proposed by the Examiner. As such, the Appellants do
not sufficiently show that the Examiner's proposed rearrangement of parts
would modify the operation of Kapur's device so as to require drastic
reconfigurations of its valve 8, filter assembly 9, and other components. 6
In Kapur's disclosed component, a filter assembly 9 is removably
insertable into a threaded bore 16 of lower chamber 17. (See Kapur i-f 20,
Figs. 1, 3.) When filter assembly 9 is screwed into bore 16, a valve 8 is
pushed upwardly to an open position by a filter cap 20. (See id. i-f 22,
Fig. 1.) When filter assembly 9 is unscrewed from bore 16, a spring 18
within the intermediate chamber urges valve 8 into seated engagement with
a valve seat 19. (See id. i-f 21, Fig. 3.) Hence, Kapur's inlet 3 does not
participate in the opening or closing of valve 8.
6 See In re Kuhle, 526 F.2d 553, 555(CCPA1975); In reJapikse, 181 F.2d
1091(CCPA1950); see also MPEP § 2144.04.
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Application 12/824,862
With the Examiner's proposed shifting of the position of inlet 3, the
interaction among valve 8, filter assembly 9, spring 18, seat 19, and filter
cap 20 (which has a central hub portion 22 surrounded by an 0-ring seal 23)
would seemingly remain the same. The Appellants do not adequately
address why a reconfiguration of these interacting parts would be necessary
to accomplish the opening and closing of valve 8. (See Reply Br. 2.)
In Kapur' s disclosed primary flow path, fluid from inlet 3 first enters
the intermediate chamber; and then flows sideways to surround valve 8 (in
its open position) and downward to surround filter element 12 in lower
chamber 17. (Kapur i-f 19, Fig. 1.) Fluid in lower chamber 17 flows radially
inward through filter element 12 and then upward through the filter's core to
a central passage 10 through valve 8. (Id.) Hence, in Kapur's disclosed
primary flow path, pre-filter fluid surrounds valve 8 (in its open position) in
the intermediate chamber, fluid passes radially inward through a filter
element 12 in lower chamber 17, and post-filter fluid passes upwardly
through central passage 10.
With the Examiner's proposed shifting of the position of inlet 3, fluid
from inlet 3 would first enter lower chamber 1 7, and then flow sideways to
surround filter element 12 and upwardly to the intermediate chamber to
surround valve 8 (in its open position). Fluid in lower chamber 17 would
still flow radially inward through filter element 12 and then upward through
the filter's core to central passage 10. Hence, with the Examiner's proposed
shifting of the position of Kapur's inlet 3, pre-filter fluid would still
surround valve 8 in the intermediate chamber, fluid would still flow radially
inward through filter element 12, and post-filter fluid would still pass
upwardly through central passage 10. Thus, we disagree with the
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Appeal2014-003449
Application 12/824,862
Appellants' contention that "the fluid inlet 3 in the proximity of the filter
chamber 17 would no longer communicate with the shut off valve 8."
(Appeal Br. 6.) And the Appellants do not adequately explain why
substantial restructuring or reconfiguring of valve 8, central passage 10,
and/ or filter element 12 would be necessary to accommodate the primary
flow path if fluid from inlet 3 first enters lower chamber 17, rather than the
intermediate chamber. (See id. 5---6; Reply Br. 2.)
In Kapur' s disclosed bypass flow path, pre-filter fluid surrounding
valve 8 (in its open position) in the intermediate chamber flows directly to
central passage 10 via radial ports 31 in the sidewalls of valve 8. (See Kapur
i124, Figs. 1, 2.) These radial ports 31 are opened when filter element 12
becomes plugged and the resulting differential pressure acts on a valve 30
within central passage 10. (Id.)
As indicated above, with the Examiner's proposed shifting of the
position of Kapur's inlet 3, pre-filter fluid would still surround valve 8 in the
intermediate chamber, fluid would still pass radially inward through filter
element 12 in lower chamber 1 7, and post-filter fluid would still pass
upwardly through central passage 10. As such, the differential pressure
resulting from filter element 12 being plugged would seemingly act on
valve 30 in the same manner. Also, pre-filter fluid surrounding valve 8 in
the intermediate chamber would still seemingly flow through radial ports 31
to central passage 10. The Appellants do not adequately explain why
substantial restructuring or reconfiguration of valve 8 (e.g., its radial ports
31), central passage 10, spring 18, and/or valve 30 would be necessary to
accommodate the bypass flow path when fluid from inlet 3 first enters lower
chamber 17, rather than first entering the intermediate chamber. (See
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Appeal Br. 5---6; Reply Br. 2.) And the Appellants do not adequately explain
why the interaction among the fluid surrounding valve 8, the fluid in central
passage 10, the plugged filter element 13, valve 30, and ports 31 would not
remain the same without any restructuring of the interacting parts. (Id.)
Accordingly, we are not persuaded by the Appellants' position that
the Examiner's proposed shifting of the position of inlet 3 substantially
modifies the operation of Kapur' s device.
As pointed out by the Appellants, even if the Examiner's suggested
modification is considered a mere rearrangement of parts, the Examiner
must also provide an explanation as to why one of ordinary skill in the art
would have reason to make this modification. (See Appeal Br. 6.)7 Here,
the Examiner explains that "arranging the component of Kapur such that the
first aperture was proximate to the lowermost end of the hollow would
provide advantages" such as "allowing for resizing other components" and
"providing a large pressure head difference from the second to the first
aperture." (Answer 10.)
The Appellants argue that the Examiner's explanation "is not
consistent with the notion that the suggested modification is a 'mere
rearrangement of parts"' and that "it is clear from the Examiner's own
remarks that the modification is a substantial one that would be undertaken
7 See Ex Parte Chicago Rawhide Mfg. Co. 89 USPQ (BPAI 1984); see also
MPEP § 2144.04. This is not to say that the Examiner must seek out precise
teachings in the prior art (as the inferences and creative steps a person of
ordinary skill in the art would employ can be taken into account), but rather
that the Examiner must articulate reasoning with some rational underpinning
as to why one of ordinary skill in the art would have rearranged the parts as
proposed. See KSR Int'! Co. v. Teleflex, Inc. 550 U.S. 398, 418--419 (2007).
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Application 12/824,862
in concert with the resizing of other components or the provision of large
pressure head differences." (Reply Br. 2-3.)
We are not persuaded by this argument because the Examiner does
not maintain that the proposed rearrangement of parts requires a resizing of
components and/or the provision of a large pressure head difference. Rather,
the Examiner explains that the advantages of having such design options
would have prompted one of ordinary skill in the art to rearrange the parts as
proposed. The Appellants do not contend that this explanation is
unreasonable and/or does not have rational underpinnings. (See Reply
Br. 2-3.) Thus, the Examiner's articulated reasoning for shifting the position
of Kapur's inlet 3 goes unchallenged by the Appellants.
Accordingly, we are not persuaded by the Appellants' position that
the Examiner does not provide an appropriate explanation as to why one of
ordinary skill in the art would have been prompted to rearrange the parts as
proposed.
Thus, we sustain the Examiner's rejection of independent claims 1
and 12. The Appellants do not argue the dependent claims 2-8 and 13-20
separately, so they fall with the independent claims.
DECISION
We AFFIRM the Examiner's rejections of claims 1-8 and 12-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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