Hydac Filtertechnik GmbH

Patent Trials and Appeals BoardJan 14, 2021

2020001483 (P.T.A.B. Jan. 14, 2021)

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. 14/418,154 01/29/2015 Timo Lang 62367 6223 513 7590 01/14/2021 WENDEROTH, LIND & PONACK, L.L.P. 1025 Connecticut Avenue, NW Suite 500 Washington, DC 20036 EXAMINER ALI, WAQAAS A ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 01/14/2021 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): eoa@wenderoth.com kmiller@wenderoth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMO LANG Appeal 2020-001483 Application 14/418,154 Technology Center 1700 Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and AVELYN M. ROSS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 15–21 and 26. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Hydac Filtertechnik GmbH (Appeal Br. 1). Appeal 2020-001483 Application 14/418,154 2 CLAIMED SUBJECT MATTER The claims are directed to a filter element. Claim 15, reproduced below, is illustrative of the claimed subject matter: 15. A filter element, comprising: a tubular and pleated filter medium with a multi-layer structure configured for fluid to be filtered to flow between inner and outer sides of said filter medium; first pleats in said filter medium having a first pleat height; second pleats in said filter medium having a second pleat height, said second pleat height being approximately two-thirds of said first pleat height, each said second pleat being bounded by adjacent ones of said first pleats defining an M-pleat configuration as viewed from a top of the filter medium and as viewed from the at least one of said inner side or said outer side; a support tube supporting said first and second pleats at said inner side; inner transitions of all of said first and second pleats being adjacent said inner side and being along a circular cylinder extending through said filter medium coaxially to a longitudinal axis of said filter medium, each of said first and second pleats being separated from an adjacent one of said first and second pleats by a tapered space tapering toward a respective one of said inner transitions of said first and second pleats along said circular cylinder extending through said filter medium, said tapered spaces extending along entire radial extents of said first and second pleats, each of said first and second pleats having inner planar surfaces lying directly against one another, said inner planar surfaces of each of said first and second pleats directly contacting one another along entire lengths thereof between said inner transitions and outer transitions between said inner planar surfaces, said inner and outer transitions extending along a same bend radius; and an open holding space being between each pair of adjacent ones of said first pleats bounding one of said second pleats therebetween and being defined by the respective M-pleat Appeal 2020-001483 Application 14/418,154 3 configuration, said open holding space being on said outer side of said filter medium configured for standardizing and reducing flow velocity of fluid through said filter medium during filtering operation; whereby, during filtering operation, fluid contaminated with particles electrostatically charges said filter medium upon passing through said filter medium and reduced electrostatic charges are a result of the flow velocity of fluid induced by said holding spaces. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Briggs US 2,395,449 Feb. 26, 1946 Kuwabara US 2007/0278149 A1 Dec. 6, 2007 Hamlin US 2010/0089819 A1 Apr. 15, 2020 Ptak US 2010/0247404 A1 Sept. 30, 2010 Robinson GB 725,066 Mar. 2, 1955 Shinichi JP 7-243356 A Sept. 19, 1995 Philippe FR 2 791 579 Oct. 6, 2000 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 15–21, 26 103(a) Robinson, Ptak, Hamlin, Kuwabara, Phillipe, Briggs 15–21, 26 103(a) Shinichi, Ptak, Hamlin, Kuwabara, Robinson, Phillipe Briggs OPINION We need address only the sole independent claim, i.e., claim 15. Rejection over Robinson in view of Ptak or Hamlin, Kuwabara, Philippe, and Briggs Appeal 2020-001483 Application 14/418,154 4 Robinson discloses a filter element comprising permeable filtering medium (13) pleated to provide alternating deep pleats (14) and shallow pleats (15) arranged annularly radiating from a central tube (11) such that spaces (16) exist between the deep pleats and outwardly of the shallow pleats sufficiently large to receive a substantial amount of solid contaminant (p. 1, ll. 43–48; p. 1, l. 81 – p. 2, l. 5; Fig. 2). Ptak discloses a pleated filtration media (50) comprising, laminated together, a support layer (12), a first filtration media layer (10) on one side of the support layer, and a second filtration media layer (14) on the other side of the support layer (¶ 21; Figs. 5, 9). Hamlin discloses a filter element (10a) comprising, between a cylindrical central core (20) and a cylindrical outer cage (30), primary pleats (14P) which touch each other near the central core and extend radially outwardly therefrom, and secondary pleats (14S) which extend radially inwardly from the outer cage, with at least one secondary pleat between two adjacent primary pleats (¶ 41; Figs. 2, 4). Kuwabara discloses pleated filtration media having high and low fold lines (¶ 21, Fig. 1). Philippe discloses M-shaped pleated filtration media that provides, relative to V-section pleated filtration media, a filter surface increase of at least 50% and longer service life before being replaced (p. 8, Figs. 3, 4). Briggs discloses a filter element made by folding filtration media into a zig-zag formation, compressing the formation to cause adjacent stretches (12) of each fold (10, 11) to lie close to each other throughout their extent, adhesively bonding a net-like strip (13) to one side of the folds, and Appeal 2020-001483 Application 14/418,154 5 bending the bonded zig-zag formation into a tubular body such that the bonded side of the folds is within the tubular body’s inner peripheral surface (p. 1, left col., ll. 33–47; Fig. 9). The Examiner states (Ans. 14–15): Robinson is relied upon to teach a general filter element with alternating pleats. Briggs teaches the pleat inner surfaces are planar and lie against one another to form a tapering space and to have the same bend radius (figs. 8-9). Kuwabara is shown to teach the claimed height ratio between the tallest and shortest pleat and the filter being multi-layered. Now, Philippe is relied upon as a supplementary reference with its motivation to show alternating pleats can have tapering space, to increase filter service life. And Ptak and Hamlin are used to show and supplement Kuwabara to emphasize a multi-layer filter structure in a filter is well-known and obvious. The Examiner “takes official notice that having a multi-layer filter structure is well-known an obvious the filter pleat technology. See at least Ptak, Hamlin, or Kuwabara (double cloth) which teach multi-layer filter structure to enhance structural rigidity and improve filtration” (Final Rej. 4), and concludes that “[i]t would have been obvious to have used a well-known to technique of making the pleated filter of many layers to improve supporting and filtering functions” (id.). The Examiner further concludes that “one of ordinary skill would have found it obvious to have modified the filter and pleat arrangement (including the bend radius, angles of the pleats) with the tapered spacing between alternating pleats as taught by Phillipe to increase filter service life” (Final Rej. 5), “[i]t would have been obvious to have combined teachings of Briggs with modified Robinson for the purpose of achieving a predictable result in enhancing filtration of immiscible fluids” (Final Rej. 7), and “it would have been obvious to have selected height ratio of pleats in Robinson as claimed since it would have allowed for increase in Appeal 2020-001483 Application 14/418,154 6 filter service life without reducing the filtration efficiency as suggested by Kuwabara” (Final Rej. 8). Setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner does not establish that the applied references would have provided one of ordinary skill in the art with an apparent reason to combine their disclosures in a way that produces the Appellant’s claimed filter element. The Examiner points out disclosed benefits for different filter element structures and concludes that combining those structures to obtain their benefits would produce the Appellant’s claimed filter element, but the Examiner does not explain how the references would have led one of ordinary skill in the art to combine their disclosures in a way that produces the particular filter element claimed by the Appellant. Thus, the record indicates that the Examiner’s rejection is based upon impermissible hindsight in view of the Appellant’s disclosure. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we reverse the rejection. Rejection over Shinichi in view of Ptak or Hamlin, Kuwabara, Robinson, Philippe, and Briggs Shinichi discloses a filter element (1) comprising a filtration section (2) having pleats which radially extend from a porous inner cylinder (11) to a porous outer cylinder (12) and are separated by pleats Appeal 2020-001483 Application 14/418,154 7 which extend from the porous inner cylinder only partially toward the outer porous cylinder such that their ends are separated from the porous outer cylinder by a gap (3) (¶ 6; Fig. 1). The Examiner concludes (Ans. 17): Claim 15 does not require short and long pleats to be alternating. Further, nowhere in the claims does it state that the long pleats and short pleats must alternate one after another. The claim merely requires an alternation of the first and second pleats, in which can [sic] encompass a breadth [of] alternating patterns. In this case Shinichi has an alternating pattern wherein the reference has a group of four short pleats in which one of the short pleat[s] adjacent to the long pleat is considered to be mapped as the second pleat. The four short pleats are then separated by a long pleat (first pleat). Therefore, Shinichi teaches the short and long pleats alternate (in a 1-2-2-2--1- 2-2-2 pattern). That claim interpretation is incorrect. Claim 15 requires “each said second pleat being bounded by adjacent ones of said first pleats defining an M-pleat configuration as viewed from a top of the filter medium and as viewed from the at least one of said inner side or said outer side. Thus, claim 15 excludes Shinichi’s multiple short pleats between long pleats. The Examiner finds (Final Rej. 10): Shinichi differs from disclosing a multi-layer filter medium having second pleats in said filter medium having a second pleat height, said second pleat height being lower than approximately two thirds of said first pleat height, each of said first and second pleats having inner planar surfaces lying directly against one another, said inner planar surfaces of each of said first and second pleats directly contacting one another along entire lengths thereof between said inner transitions and outer transitions between said planar inner planar surfaces, said inner and outer transitions extending along a same bend radius[.] Appeal 2020-001483 Application 14/418,154 8 To remedy those deficiencies in Shinichi, the Examiner relies upon the disclosures in Ptak, Hamlin, Kuwabara, Robinson, Philippe, and Briggs relied upon in the above-discussed rejection over those references (Final Rej. 10–12). The Examiner’s reliance upon those references is not well taken as explained above with respect to that rejection. Hence, we reverse the rejection over Shinichi in view of Ptak or Hamlin, Kuwabara, Robinson, Philippe, and Briggs. CONCLUSION The Examiner’s decision to reject claims 15-21 and 26 is REVERSED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 15–21, 26 103(a) Robinson, Ptak, Hamlin, Kuwabara, Phillipe, Briggs 15–21, 26 15–21, 26 103(a) Shinichi, Ptak, Hamlin, Kuwabara, Robinson, Phillipe Briggs 15–21, 26 Overall Outcome 15–21, 26 REVERSED