Bayerische Motoren Werke Aktiengesellschaft

Patent Trials and Appeals Board

Sep 24, 2021

2021001538 (P.T.A.B. Sep. 24, 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.
14/757,454 12/23/2015 Lorenz Ernst 080437.68465US 3682
23911 7590 09/24/2021
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
POON, ROBERT
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
09/24/2021 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):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LORENZ ERNST
Appeal 2021-001538
Application 14/757,454
Technology Center 3700
Before JILL D. HILL, CARL M. DEFRANCO, and ARTHUR M. PESLAK,
Administrative Patent Judges.
DEFRANCO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5, 6, 8–10, 13–15, 19, and 20. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Bayerische
Motoren Werke Aktiengesellschaft. Appeal Br. 1.
Appeal 2021-001538
Application 14/757,454

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to a component for filling a liquid into a
liquid container. Claims 1 and 15 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A filler component through which liquid is filled into a
liquid container, the filler component comprising:
a straight filler neck having an outer filler opening;
an outlet section having an outlet opening, the outlet
section being connectable to the liquid container;
at least one intermediate section arranged between the
filler neck and the outlet section, the filler neck extending from
the outer filling opening to the at least one intermediate section,
wherein
the at least one intermediate section is configured to form
at least one widened portion of the component compared to the
filler neck at least in a region of the intermediate section
adjoining the filler neck,
the at least one widened portion is configured to calm a
liquid filled into the component,
the widened portion forms a chamber having a lower wall
with a planar surface, and
the chamber is arranged relative to the filler neck such that
the liquid filled into the component through the filler opening is
directed against the lower wall of the chamber, said lower wall
being arranged opposite the filler neck, wherein
a projection of a cross-sectional face of the filler neck onto
the planar surface of the lower wall is surrounded over at least a
majority of a circumference of the projection by an edge section
of the planar surface of the lower wall of the chamber.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Reinelt US 6,530,393 B2 Mar. 11, 2003
Vulkan US 2016/0222923 A1 Aug. 4, 2016

Appeal 2021-001538
Application 14/757,454

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EXAMINER’S REJECTIONS
1. Claims 1, 5, 6, 8, 15, 19, and 20 stand rejected under 35 U.S.C.
§ 102(a)(2) as being anticipated by Vulkan.
2. Claim 9, 10, 13, and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Vulkan and Reinelt.
ANALYSIS
A. Anticipation
In determining that claim 1 is anticipated by Vulkan, the Examiner
finds, inter alia, that element 60 of Vulkan is a filler opening and element 40
is an outlet opening. Final Act. 2.
Appellant argues that, because Vulkan’s element 60 is a vapor outlet
port and because Vulkan’s element 40 is an inlet port, the Examiner
impermissibly relabels these elements in a manner that “disregards Vulkan’s
express disclosure.” Appeal Br. 12. According to Appellant, Vulkan
requires the disclosed arrangement of elements in order to create cyclonic
separation, “not calm a liquid poured into it.” Id. at 11.
The Examiner responds that there is no structural difference between
the claimed invention and the prior art that patentably distinguishes the
claimed invention from the prior art. Ans. 5. According to the Examiner,
Vulkan’s structure is capable of performing the claimed functions. Id. In
particular, the Examiner asserts that “simply using the Vulkan device
differently as suggested would allow the Vulkan device to function as the
claimed device functions,” including “calming a liquid.” Id.
In reply, Appellant argues that the Examiner’s assertion is based on
speculation given that the device of Vulkan is specifically configured to
enable gas to exit port 60 without any liquid exiting. Reply Br. 1–2.
Appeal 2021-001538
Application 14/757,454

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According to Appellant, the Examiner attempts to reconfigure the device of
Vulcan “with no rational technical reasoning for doing so.” Id. at 2. We
agree.
“[U]nless a prior art reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008). Here, Vulkan is not arranged in the same
way, and, as a result, requires the Examiner to rearrange the disclosed ports
of Vulkan in an attempt to meet the claimed arrangement. Specifically,
Vulkan is directed to a “liquid vapor separator” that is “configured to allow a
cyclonic separation or the fuel fluid flow such that the fuel liquid drops are
separated from the fuel vapor through vortex separation.” Vulkan ¶¶ 1, 56.
To illustrate, we reproduce below Figure 3A of Vulkan.

Figure 3A is a sectional view of an exemplary embodiment.
Appeal 2021-001538
Application 14/757,454

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As disclosed, Vulkan operates as follows:
fluid vapor flows into the confined space 38 through the inlet port
40, and is imparted a cyclonical flow pattern along the inside
surface 46 of the side walls 28, resulting in increasing liquid
condensation over the inside surface 46, whereby any fuel liquid
droplets drain along the side walls towards the base 24 and then
drain out through the liquid drain port 70, and where fuel fluid in
gas state is free to egress thorough the fluid outlet port 60,
substantially without any liquid droplets.
Vulkan ¶ 65.
That disclosed operation by Vulkan is how the device is intended to
be used. Specifically, Vulkan’s device is arranged to separate gas from
liquid by enabling the liquid to condense on a side wall, and is not arranged
in the same way as recited in the claim. Nor do we agree that Vulkan’s
device is capable of operating as claimed, if operated other than intended.
The Examiner asserts that by pouring liquid through Vulkan’s top port 60,
“wall (24) arranged opposite the filler neck . . . can serve as an impact
surface such that when liquid flow is deflected and is allowed to slowly
build up until it can leave an outlet such as (40),” and “can also perform the
recited function, in the instant case, of calming a liquid.” Ans. 5. Vulkan
discloses, however, that element 70 is a “liquid drain port,” i.e., outlet
(Vulkan ¶ 62), and based on the relative locations of drain port 70 and port
40, the liquid would flow out of drain port 70 before flowing out of port 40.
That is, only if liquid being poured into the chamber is poured at a faster rate
than it flows out of drain port 70 would the liquid build up enough to come
out of port 40. Thus, we agree with Appellant that Vulkan’s device would
not necessarily operate as the Examiner suggests. See Reply Br. 2.
In addition, because some, if not all, the liquid would immediately
flow out of Vulkan’s drain port 70 before enough fluid builds up to flow out
Appeal 2021-001538
Application 14/757,454

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of port 40, this immediate outflow would appear to cause turbulence and
“the formation of foam,” which is the antithesis of calming. See Spec. ¶ 11.
Thus, the Examiner’s assertion that “the Vulkan device [would] function as
the claimed device functions” (Ans. 5), to “calm a liquid,” is based on
speculation, as Appellant asserts.
In sum, because Vulcan is not arranged the same way as recited in the
claim, and because using Vulkan’s device, as suggested by the Examiner, to
calm a liquid, as claimed, is based on speculation, we do not sustain the
anticipation rejection of claims 1, 5, 6, 8, 15, 19, and 20.
B. Obviousness
Claims 9, 10, 13, and 14 depend directly or indirectly from claim 1.
In rejecting these dependent claim, the Examiner continues to rely on
Vulkan, while adding Reinelt to address the specific limitations of these
claims. See Final Act. 4. But, in doing so, the Examiner does not cure the
deficiency in his findings as to Vulkan’s device. Thus, for the same reasons
discussed above with respect to the Examiner's rejection of claim 1, we do
not sustain the rejection of claims 9, 10, 13, and 14 depending therefrom.
CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 5, 6, 8,
15, 19, 20
102(a)(2) Vulkan 1, 5, 6, 8, 15, 19,
20
9, 10, 13,
14
103 Vulkan, Reinelt 9, 10, 13, 14
Overall
Outcome
1, 5, 6, 8–10, 13–
15, 19, 20
REVERSED