Appeal No. 2005-2646
Application No. 09/948,377
increasing in diameter to the outer top edge,” we understand this language to mean that
the circular fins on the top of the oil filter as seen in Figures 1 and 2 are concentrically
arranged beginning with a smaller diameter fin near the center of the top and with each
additional circular fin being of increasing diameter as the fins progress outwardly to the
outer top edge.
Given the foregoing discussion, we consider that claim 1 on appeal makes it clear as
to what subject matter is encompassed and is therefore definite within the meaning of
35 U.S.C. § 112, second paragraph. Thus, the examiner’s rejection of claim 1 under 35
U.S.C. § 112, second paragraph, will not be sustained.
In rejecting claim 1 under 35 U.S.C. § 103(a) the examiner contends that the
cooler/reservoir and filter holder (100) seen in Figures 10 and 11 of Bartalone is used
for cooling oil (see, e.g., col. 9, lines 47-61) and comprises fins (332) permanently
incorporated and disposed on top of an oil filter wherein the fins are rectangular in
shape from bottom to top. The examiner recognizes that Bartalone fails to show the fins
on the housing cover or top (110) being 360 degrees circular and increasing in diameter
from the center to the outer edge, as defined in claim 1 on appeal. To account for this
difference, the examiner looks to the Mitterer patent, urging that Mitterer shows, in
Figure 8, a cooler comprising circular fins (17) “permanently incorporated to the tip [sic]
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