Ex Parte Nicosia et al

Patent Trial and Appeal Board

Nov 30, 2012

11427813 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte TONY NICOSIA, CRAIG DERUYTER,
KEN DIETZLER, and JOERG LIENENKAMP
____________________
Appeal 2010-011946
Application 11/427,813
Technology Center 3700
____________________
Before: MICHAEL C. ASTORINO, WILLIAM A. CAPP, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tony Nicosia, Craig Deruyter, Ken Dietzler, and Joerg Lienenkamp
(“Appellants”) appeal under 35 U.S.C. § 134 from the decision of the
Examiner rejecting claims 1-24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appeal 2010-011946
Application 11/427,813
2
The claims are directed to a cap for the inlet of a fuel tank or a fuel
tank assembly. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A fuel cap adapted to close an inlet of a fuel
tank, the fuel cap comprising:
a body portion adapted to engage the inlet of the
fuel tank, the body portion defining a central axis;
a valve coupled to the body portion, the valve
selectively allowing an airflow through the body portion;
and
a cap cover coupled to the body portion and
movable along the central axis relative to the body
portion.
REFERENCES
The Examiner relies upon the following evidence:
MacMillan
Fujii
Harris
US 3,815,776
US 4,312,649
US 6,286,704 B1
Jun. 11, 1974
Jan. 26, 1982
Sep. 11, 2001
REJECTIONS
Appellants seek our review of the following rejections:1
1. Claims 1-9 and 20-24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over MacMillan and Harris. Ans. 4-8.
2. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over MacMillan and Fujii. Ans. 8-9.

1 The Examiner expressly withdrew the rejection of claims 1, 5, 8, 10,
11, 15, 17, 20, and 24 under 35 U.S.C. § 112, first paragraph, for failing to
comply with the enablement requirement. Ans. 3. Therefore, this rejection
is not before us on appeal.
Appeal 2010-011946
Application 11/427,813
3
3. Claims 11-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over MacMillan, Fujii, and Harris. Ans. 9-13.
OPINION
Obviousness of claims 1-9 and 20-24 over MacMillan and Harris
1. Claims 1-9
Appellants offer two arguments for reversal of the rejection of claims
1-9. First, Appellants contend that the combination of MacMillan and Harris
does not disclose the cap cover that is “movable along the central axis
relative to the body portion.” App. Br. 12. Second, Appellants contend that
MacMillan teaches away from modifying its fuel cap to incorporate the
movable member of Harris. Id. at 12-13. We find both arguments
unpersuasive for the reasons expressed below.
Appellants contend that the Examiner “mischaracterizes Harris by
stating that the cylindrical member 56 and the ejector spring 24 disclosed in
Harris aid in the opening of Harris’ lid.” App. Br. 12. Based on this
mischaracterization, Appellants contend that Harris fails to disclose an “aid
in the opening of the handle 13, in the manner of claim 1.” Id. Claim 1
recites no limitation that requires aiding the opening of the cap. Any alleged
mischaracterization of Harris in this respect is therefore not relevant to the
patentability of claim 1.
The Examiner cites Harris as disclosing a fuel cap having a portion
(member 56) that is “movable along a filler neck” (Ans. 14), which is
essentially a finding that the cap is or “movable along the central axis
relative to the body portion” as recited in claim 1. We agree with the
Examiner. We note for example that Harris describes a fuel cap having an
Appeal 2010-011946
Application 11/427,813
4
upper and lower housing in which “[t]he upper housing and lower housing
are cooperatively configured to allow both rotational and axial relative
movement with respect to one another.” Harris, col. 1, ll. 17-22. Therefore,
we reject Appellants’ first argument for reversing the rejection of claims 1-9.
Appellants also contend that MacMillan teaches away from permitting
its control member 16 (i.e., cap cover) to move axially away from closure
member 12 (i.e., body portion). App. Br. 12-13 (citing MacMillan, col. 4,
ll. 8-11; col. 3, ll. 10-34; figs. 1 and 3). Appellants argue that preventing
such relative movement between control member 16 and closure member 12
is necessary to preserve the ratcheting operation between these two
structures. Id. at 13. Permitting relative axial movement between
MacMillan’s control member 16 and closure member 12 would allegedly
require such a “complete redesign of MacMillan’s fuel cap” that a skilled
artisan would not have been motivated to incorporate Harris’s teachings into
MacMillan’s structure. Id.
We are not persuaded by Appellants’ argument. First, the test for
obviousness is what the combined teachings of the references would have
suggested to a skilled artisan and not whether the features of a secondary
reference may be bodily incorporated into, or physically combined with, a
primary reference. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); see
also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
Second, none of the passages in MacMillan that Appellants cite directly
criticizes, discredits, or otherwise discourages permitting axial movement
between a cap cover and a cap body. Instead, the passages merely establish
that MacMillan’s cap cover does not move axially relative to the body
Appeal 2010-011946
Application 11/427,813
5
portion. Thus, Appellants have not established that MacMillan teaches away
from the claimed relationship between the cap cover and body portion. See
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (If a prior art reference
discloses a different solution to a similar problem, it does not teach away
from the claimed subject matter unless the prior art reference also criticizes,
discredits or otherwise discourages the solution claimed). Therefore, we
reject Appellants’ second argument for reversing the rejection of claims 1-9.
For the reasons expressed above, we affirm the rejection of claims 1-9
under § 103(a) over MacMillan and Harris.
2. Claims 20-24
Appellants contend that the Examiner has not identified which
structure in MacMillan corresponds to the “movable portion” in claim 20.
App. Br. 13. However, the Examiner relies upon Harris, not MacMillan, as
disclosing the “movable portion” of claim 20. Ans. 15-16. Because
Appellants do not address the Examiner’s findings with respect to the
rejection of claims 20-24, we affirm the rejection.
Obviousness of claim 10 over MacMillan and Fujii
Appellants contend that neither MacMillan nor Fujii alone or in
combination disclose that “an upper portion of the fuel cap is substantially
aligned with the upper surface of the fuel tank when the fuel cap is engaged
with the fuel inlet” as recited in claim 10. App. Br. 15. The Examiner
determines that Fujii discloses a fuel cap having an upper portion that is
substantially aligned with the upper surface of the fuel tank. Ans. 16 (citing
Fujii, fig. 1). The Specification describes “substantially aligned” as
including a condition in which upper surface 88 of cap cover 86 follows the
contour of a bezel 70 that sits atop fuel tank 42. Spec., para. [0018]. Figure
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Appeal 2010-011946
Application 11/427,813
7
fuel cap and fuel tank. Despite Appellants’ contention otherwise, the
Specification does not disclose any embodiment in which the top of the cap
cover follows the contour of the top surface of the fuel tank without the
presence of a bezel. Second, the argument impermissibly equates “is
substantially aligned with” recited in claim 10 to “follows the contour of.”
When Fujii’s Figure 2 and Appellants’ Figure 7 are compared and
Appellants’ unclaimed bezel is ignored, the alignment between the
respective caps and tanks of Fujii and the Specification is substantially the
same. Therefore, we agree with the Examiner’s finding that Fujii discloses
the claimed alignment between the upper portion of the fuel cap and the
upper surface of the fuel tank, and we affirm the rejection of claim 10.
Obviousness of claims 11-19 over MacMillan, Harris, and Fujii
Appellants argue that claim 11 is patentable for the same reasons
argued in connection with claim 1. App. Br. 16. Appellants argue that
claims 12-19 are patentable for the same reasons argued in connection with
claim 10. Id. at 17. As explained above, we affirm the rejections of claims
1 and 10. For the same reasons, we affirm the rejections of claims 11-19.
DECISION
For the reasons stated above, we AFFIRM the Examiner’s rejections
of claims 1-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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