Ex Parte Wilkendorf et al

Patent Trial and Appeal Board

Mar 29, 2017

13261344 (P.T.A.B. Mar. 29, 2017)

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.
13/261,344 09/18/2012 Werner Wilkendorf 59533 2475
513 7590 03/31/2017
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
EXAMINER
GURTOWSKI, RICHARD C
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
ddalecki@wenderoth.com
eoa@ wenderoth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WERNER WILKENDORF and VOLKER BACKES
Appeal 2016-001908
Application 13/261,3441
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
1 Appellants identify Hydac Filtertechnik GmbH as the real party in interest.
Appeal Brief 1.
2 In our Opinion, we refer to the Specification filed June 29, 2012 (“Spec.”);
the Final Action electronically delivered December 26, 2014 (“Final Act.”);
the Appeal Brief filed July 22, 2015 (“Appeal Br.”); the Examiner’s Answer
electrically delivered November 3, 2015 (“Ans.”); and the Reply Brief filed
November 24, 2015 (“Reply Br.”).
Appeal 2016-001908
Application 13/261,344
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
15 and 18—30. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to a filtering device and filtering element.
Claim 15, reproduced below with key terms highlighted, is illustrative of the
claimed subject matter:
15. A filtering device for fluids; comprising: a filter housing
defining a longitudinal axis and having a bottom part
interacting with an element receiver:
at least one filter element formed of a filter cartridge with
filter material received in said filter housing and having an end
cap on at least one end of said filter cartridge, said end cap
forming an enclosure of an end edge of said filter material and
fixable on said element receiver to fix said filter element in an
operational position and to form a fluid path for cleaned fluid
emerging from a filter cavity of said filter element, said filter
cavity forming a clean side of said filter element, said element
receiver including a seating connection projecting axially from
said bottom part of said filter housing in a direction of said
filter element in the operating position, forming said fluid path
and having threads thereon, said end cap having a threaded
connection with end cap threads on said end cap, said
threaded connection forming a fluid outlet from said filter
cavity of said filter element and being threadable with said
threads of said seating connection -,
a valve arrangement contained in said seating connection
blocking said fluid path; and
a control body having a control device on said end cap
acting on and unblocking said valve arrangement during
movement of said end cap to an operating position of said end
cap when said end cap is threaded on said seating connection.
Appeal Br. App’x A, i.
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Appeal 2016-001908
Application 13/261,344
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Godin US 3,990,853
Pappas US 4,477,352
Baumann et al. US 4,948,503
(“Baumann”)
Rosaen US 5,176,826
Kawashima et al. US 5,666,915
(“Kawashima”)
Roesgen US 2008/0047891 Al
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a): (1) claims 15, 18—21, 24, and 28—30 over Roesgen in view of
Pappas; (2) claims 22 and 23 over Roesgen in view of Pappas and further in
view of Kawashima; (3) claim 25 over Roesgen in view of Pappas and
further in view of Godin; (4) claim 26 over Roesgen in view of Pappas and
further in view of Baumann; and (5) claim 27 over Roesgen in view of
Pappas and further in view of Rosaen. Final Act. 3 and 8—10.
Nov. 9, 1976
Oct. 16, 1984
Aug. 14, 1990
Jan. 5, 1993
Sept. 16, 1997
Feb. 28, 2008
OPINION
The Examiner finds that Roesgen teaches the limitations of claim 15
except for end cap threads on said end caps that connect with the threads on
the seating connection. Id. at 4. The other independent claim, claim 28, also
requires threads on said end cap, with said threaded connection being
threadable to the element receiver. Appeal Br. App’x, iv.
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Appeal 2016-001908
Application 13/261,344
According to the Examiner, Pappas discloses a filter element with end
cap that comprises complementary mating threads that allow it to be
sealingly engaged to the housing, creating a sealed interface. Id.
An annotated version of Figure 3 of Appellants’ application is
reproduced below, with selected elements highlighted in colors to assist in
discussion of claim 15’s limitations in relation to the prior art:
Figure 3 is a longitudinal section of the bottom-side region of the
exemplary embodiment of the filter device according to the invention. Spec.
6. The orange- and purple-colored segments are portions of the end cap.
The green- and blue-colored segments are portions of the element receiver.
An annotated version of Figure 1 of Roesgen is reproduced below
with features to which the Examiner cites as analogous to those of the
element receiver and end cap highlighted in the same colors as in
Appellants’ Figure 3:
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Appeal 2016-001908
Application 13/261,344
Figure 1 of Roesgen is a sectional view of a liquid filter constructed in
accordance with Roesgen’s invention. Roesgen 111.
The Examiner finds that upper disk 253 of Roesgen serves as the end
cap and filter head 11 of Roesgen acts as the element receiver of claim 15.
Final Act. 3^4. The Examiner further finds that Pappas’s Figure 4 discloses
a filter element with an end cap that comprises complementary mating
threads that allow it to be sealingly engaged to the filter housing. Id. at 4.
An annotated version of Figure 4 of Pappas is reproduced below:
3 Figure element numbers are bolded throughout this Opinion, irrespective of
their treatment in the Specification or cited art.
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Appeal 2016-001908
Application 13/261,344
Figure 4 of Pappas illustrates an embodiment of the fuel filter of the
reference showing threads on the housing that engage the threads of the end
cap. Pappas col. 3, In. 62— col. 4, In. 9.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify the threaded
joint (13) of Roesgen by placing internal threads on the end caps as taught
by Pappas. Id. at 5.
Appellants argue that the combination of Roesgen and Pappas does
not render claim 15 obvious. Appeal Br. 5. Appellants argue, inter alia, that
Roesgen does not show or disclose a threaded joint to connect the end cap of
the filter element to filter head 11, and that Roesgen’s filter element is held
within vessel 12 (filter housing) by a form fit rather than a threaded
connection. Id. Appellants further point out that the threaded joint 13 of
Roesgen attaches the filter vessel 12 to filter head 11 and that Roesgen’s end
disk 25 (end cap) does not have any threads and does not engage the threads
on vessel 12 or on filter head 11. Id. Appellants contend that Pappas does
not cure the deficiencies in the Roesgen filter because the Examiner’s
proposed modification would render the Roesgen filter inoperative for its
intended purpose. Id. at 6—7. Specifically, Appellants contend that the
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Appeal 2016-001908
Application 13/261,344
Examiner’s modification of Roesgen would require Roesgen’s filter element
16 to be threaded to filter head 11 without vessel 12, in which case the valve
23 would open and leak fluid before vessel 12 could be secured to filter head
11. Id. at 7.
The Examiner responds that (1) filter element 16 is connected to the
filter vessel 12, and filter vessel 12 is connected to filter head/element
receiver 11 via the threaded connection 13, and, therefore, “it is understood
the filter element 16 is also connected to the filter head/element receiver 11
via the threaded connection 13.” Ans. 9 (emphasis in original). The
Examiner also indicates that Roesgen’s “upper disk 25 (end cap) is
connected physically to the threaded joint 13 by being connected by contact
to the threaded joint 13.” Id. at 9—10.
During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad, of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been interpreted
by one of ordinary skill in the art at the time of the invention. Id. The
Examiner’s determination that “it is understood that the filter element 16 is
also connected to the filter head/element receiver 11 via the threaded
connection 13” is inconsistent with the broadest reasonable interpretation of
claim 15, which requires the “seating connection [to] hav[e] threads thereon”
and the “end cap [to] hav[e] a threaded connection with end cap threads . . .
being threadable with said threads of said seating connection.” In the same
fashion, the Examiner incorrectly determines that Roesgen discloses an end
cap that meets the claim limitation of “threaded connection” merely because
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Application 13/261,344
the end cap physically contacts vessel 12, and vessel 12 comprises a
threaded joint.
Moreover, Appellants argue that Roesgen’s threaded joint 13 is in a
different location and used for a different purpose than that of claim 15, and
therefore Roesgen does not support the Examiner’s position. Reply Br. 2.
Appellants also argue that one of ordinary skill in the art at the time of the
invention would not have moved Roesgen’s threaded joint 13 from the edge
of the filter vessel 12 to the upper end disk 25, as suggested by the
Examiner, because there would then be no secure connection between
Roesgen’s filter head 11 and vessel 12. Id. at 4. Appellants contend that the
Examiner provides no explanation for how the proposed modifications
would result in an operative device. Id.
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Only if the Examiner meets
that burden does the applicant bear the burden of coming forward with
evidence or argument. Id.
Here, we are persuaded by Appellants’ arguments that the Examiner
has failed to make a prima facie case of obviousness in rejecting claim 15.
We, therefore, do not sustain the rejection of claim 15. For the same
reasons, we also do not sustain the rejection of claims 18—30.
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Appeal 2016-001908
Application 13/261,344
DECISION
For the above reasons, the Examiner’s rejection of claims 15 and 18
30 is reversed.
REVERSED
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