Ex Parte Cochran et al

Board of Patent Appeals and Interferences

Apr 27, 2010

11052155 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GARY D. COCHRAN, RUDOLPH BERGSMA,
and ROSEMARY BERGSMA
____________________

Appeal 2009-003364
Application 11/052,155
Technology Center 2800
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Decided: April 27, 2010
____________________

Before ALLEN R. MACDONALD, MAHSHID D. SAADAT, and
MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003364
Application 11/052,155

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 3-5, 7, 11-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to a fuel level sender disposed within a
fuel tank for signalling the level of volatile liquid fuel in the tank. A contact
arm and resistor card is disposed within a sealed enclosure (Spec. 5). The
contact arm is positioned by a movement within the enclosure which is
magnetically coupled to a movement actuating member, external to the
enclosure, which is operated by a fuel level float (Spec. 6). As the float
moves vertically with the changing fuel level in the tank, the movement
actuating member is correspondingly positioned in relation to the sealed
enclosure (Spec. 7).
Claim 3 is exemplary of the claims on appeal:
3. A fuel level sender that is disposed within a tank for holding volatile
liquid fuel to signal the level of volatile liquid fuel in the tank, the sender
comprising:
an enclosure providing an interior that is sealed against intrusion of
both liquid fuel and fuel vapor;
an actuator disposed external to the enclosure and positionable
relative to the enclosure in correlation with liquid fuel level;
a movement disposed within the interior of the enclosure for
following the positioning of the actuator through magnetic coupling between
the movement and the actuator; and
an electric circuit element disposed within the interior of the enclosure
and operated by the movement to electrically signal the liquid fuel level.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Rau US 4,532,491 Jul. 30, 1985
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Ross, Jr. US 6,564,632 B2 May 20, 2003
Bergsma US 2003/0159507 A1 Aug. 28, 2003
Weibler DE 3,627,116 A1 Feb. 11, 1988

Claims 14-19 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 3-5, 7, 11-17, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Weibler in view of Ross and Rau.
Claims 14-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bergsma in view of Ross.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed February 14, 2007), the Reply Brief (“Reply Br.,” filed
July 16, 2007) and the Examiner’s Answer (“Ans.,” mailed May 16, 2007)
for their respective details.

ISSUES
Appellants argue that the Examiner erred in rejecting claims 14-19
under § 112, first paragraph, because something that is shown as disposed
wholly within something else is inherently disposed at least in part within it
(App. Br. 10).
With respect to the prior art rejections of record, Appellants argue that
the teachings of Rau would not have motivated the skilled artisan to modify
Weibler, because Weibler allegedly already provides a solution to the
problem of corrosion (App. Br. 11); that Ross does not teach the complete
sender being disposed inside the tank, or hermetically sealing an enclosure
against liquid fuel and fuel vapor (App. Br. 14, 15); that the Examiner failed
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to give significance to Appellants’ alleged objective evidence of
nonobviousness (App. Br. 16-19); and that Bergsma (the parent application
to the application under appeal) is not available as a reference against the
application, because the subject matter of claims 14-18 is fully supported by
Bergsma (App. Br. 25, Reply Br. 11).
Appellants’ contentions present us with the following issues:
1. Did the Examiner err in finding that the originally filed
Specification lacks support for a wiper and contact assembly disposed at
least in part in the housing?
2. Did the Examiner err in concluding that the person having ordinary
skill in the art would have been motivated to modify Weibler in view of the
teachings of Ross and Rau to arrive at the instant invention?
3. Did the Examiner err in finding that the subject matter of claims 14-
18 is not fully supported by the disclosure of Bergsma?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, they have invented a fuel level sender
having a contact arm and resistor card disposed within a sealed enclosure
(Spec. 5). The contact arm is positioned by a movement within the enclosure
which is magnetically coupled to a movement actuating member, external to
the enclosure, which is operated by a fuel level float (Spec. 6).
2. Provisional Application No. 60/370,058 (from which Bergsma
and the instant application claim priority) discloses magnet return conductor
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84 as being a ferromagnetic part (Provisional App. No. 60/370,058, Spec.
13).
Weibler
3. Weibler teaches a shaft passing through a hole in the wall of the
housing, the hole being sealed with a flexible member in one embodiment
(Figure 6); in another embodiment, a magnetic sealing system is used
(Figure 8).
Ross
4. Ross teaches that cover 56 is ultrasonically welded to base 48 to
produce a hermetic seal (col. 4, ll. 35-36).
Rau
5. Rau teaches that modern carburetor fuels contain an increasing
amount of methyl alcohol, and that it has been found that parts in which
current flows corrode particularly easily due to this methyl alcohol (col. 1, ll.
16-20).

PRINCIPLES OF LAW
Under the written description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to one of
ordinary skill in the art that, as of the filing date of the application, the
inventor had possession of the later-claimed subject matter. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). "One shows that one is 'in
possession' of the invention by describing the invention, with all its claimed
limitations, not that which makes it obvious." Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis in original).
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On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
“[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
An applicant in a continuation-in-part application is entitled to the
benefit of the parent application’s filing date only for those claims supported
by the disclosure of the parent application. See In re Chu, 66 F.3d 292, 297
(Fed. Cir. 1995).
It is well settled that unexpected results must be established by factual
evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

ANALYSIS
REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
Appellants argue that the Examiner erred in finding that claims 14-19
are not supported by the Specification, because something that is shown as
disposed wholly within something else is inherently disposed “at least in
part” within it (App. Br. 10). Appellants further argue that the claims
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correspond to the claims of the Brzozowski patent (with which Appellants
attempted to provoke an interference) and if this rejection is applicable to
claims 14-19, it should also have been applicable to Brzozowski (App. Br.
9).
In rejecting claims 14-19 under § 112, the Examiner found that the
disclosure and drawings make clear that the wiper and contact assembly is
completely within the housing (Ans. 6). Thus, the originally filed application
does not support a wiper and contact assembly that is not wholly contained
within the sealed enclosure (Ans. 14). Further, the prosecution history of
Brzozowski is not relevant to the prosecution of this application.
Because claim 14’s recitation of a wiper and contact assembly
disposed “at least in part” in the housing is not supported by the originally
filed Specification, Appellants have not demonstrated error in the
Examiner’s rejection of claims 14-19 under § 112, first paragraph. We
therefore sustain the rejection.
SECTION 103 REJECTION OF CLAIMS 3-5, 7, 11-17, AND 19
We select claim 3 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue error in the Examiner’s rejection because: (a) Rau
would not have provided motivation to modify Weibler, because Weibler
would have been understood to provide a solution to the problem of
corrosion (App. Br. 11); (b) the appealed claims require the complete sender
to be inside the tank, whereas Ross teaches that parts of its assembly are
outside the tank (App. Br. 14); (c) Ross does not teach hermetically sealing
an enclosure against liquid fuel and fuel vapor (App. Br. 15); (d) Rau
“disparage[s]” a liquid-tight housing with a sealed shaft penetrating the
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enclosure (App. Br. 15); (e) the Examiner has failed to give significance to
the failure of others to solve the corrosion problem by using a magnet drive
system completely inside a tank (App. Br. 15), and failed to consider how
others in the field have been trying to solve the corrosion problem (App. Br.
18); and (f) the USPTO previously issued a patent on the same invention,
with a later priority date (App. Br. 19).
Appellants’ arguments have not shown that the Examiner erred in
rejecting representative claim 3.
We do not agree with Appellants that the teachings of Weibler obviate
the teaching value of Rau. Rather, we agree with the Examiner (Ans. 16)
that Weibler teaches a shaft passing through a hole in the wall of the
housing, the hole being sealed with a flexible member in one embodiment
(FF 3); in another embodiment, a magnetic sealing system is used (FF 3). As
the Examiner found, in either case a hole exists that must be sealed (Ans.
16). We agree with the Examiner’s finding that Rau teaches that fuels can be
corrosive (Ans. 8; FF 5), and agree with the Examiner’s conclusion that it
would have been obvious to modify Weibler in view of Ross’s teaching of a
sealed, magnetically coupled system (Ans. 7, 8).
With respect to the particular teachings of Ross, Appellants’
arguments are not persuasive because we agree with the Examiner’s finding
that Weibler, rather than Ross, teaches that the complete sender is located
inside the tank; the Examiner’s rejection states that Weibler teaches all the
claim limitations except for following the position of the float arm through
magnetic coupling (Ans. 7). Appellants’ individual attacks on the references
are not persuasive to overcome a rejection based on the combination thereof.
See In re Keller, supra.
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Appellants’ argument that Ross does not teach hermetically sealing
the enclosure against both liquid fuel and fuel vapor is not considered
persuasive. Ross teaches that cover 56 is ultrasonically welded to base 48 to
produce a hermetic seal (FF 4). As a hermetic seal is an airtight seal, we
agree with the Examiner’s finding that Ross inherently teaches a seal that
protects against intrusion by both liquids and vapors (Ans. 7).
Appellants’ argument that Rau “disparages” a liquid-tight housing
with a sealed shaft penetrating the enclosure is not persuasive to show that
the Examiner erred. The Examiner, however, relies on Weibler rather than
Rau to teach the details of the housing, further relying on Ross for a teaching
of magnetic coupling (Ans. 6-7). Appellant’s individual attacks on the
references are not persuasive to overcome a rejection based on the
combination thereof. See In re Keller, supra.
Appellants’ arguments that the Examiner did not consider Appellants’
alleged objective evidence of nonobviousness are not persuasive, for the
simple reason that Appellants have proffered no evidence of
nonobviousness. Appellants’ discussion of “evidence” at pages 16-19 of the
Brief consists entirely of attorney argument concerning various patents and
publications. Mere attorney arguments and conclusory statements that are
unsupported by factual evidence, however, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see In re De
Blauwe, supra.
Lastly, Appellants’ arguments at pages 19-25 of the Brief concerning
the prosecution history of the Brzozowski patent are wholly irrelevant to the
prosecution of the instant application. Appellants properly concede that the
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issued patent to Brzozowski is entitled to the statutory presumption of
validity (App. Br. 21).
Thus, because Appellants have not established that the Examiner erred
in rejecting representative claim 3, we will sustain the Examiner’s rejection
of claim 3-5, 7, 11-17, and 19 under § 103 as unpatentable over Weibler in
view of Ross and Rau.
SECTION 103 REJECTION OF CLAIMS 14-18
The Examiner finds that claim 14 is interpreted as having a first body
and a second body each comprising a magnet, and that “the first body being
a magnet is a portion of the subject matter added to this Continuation-in-Part
application that is not disclosed, either expressly or implicitly, in Bergsma”
(Ans. 10). According to the Examiner, Bergsma’s magnet return conductor
122 “is not a magnet by Bergsma et al.’s own statement” (Ans. 22).
In response, Appellants asserts that the embodiment referred to by the
Examiner at page 10 of the Answer may not be expressly disclosed in
Bergsman but is disclosed in the two provisional applications to which the
application is entitled to priority under 35 U.S.C. § 120, and therefore is
implicitly disclosed (Reply Br. 10-11).
We agree with Appellants’ position. Claim 14 recites “a first body
comprising one of a ferromagnetic material and a magnet and the first body
being associated with one of the float lever and the wiper and contact
assembly.” Appellants and the Examiner agree that the first body
corresponds to magnet return conductor 122 (see Figs. 1, 3, 16). Provisional
Application No. 60/370,058 (from which Bergsma and thus the instant
application claim priority) discloses magnet return conductor 84 as being a
ferromagnetic part (FF 2). The ‘058 application thus provides implicit
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disclosure that the “first body” of claim 14 is made of a ferromagnetic
material. As a result, the subject matter of claim 14 is implicitly disclosed in
Bergsma, making Bergsma unavailable as a reference.
We therefore find that the Examiner has not made out a prima facie
case of obviousness for claims 14-18 over Bergsma in view of Ross, and we
will not sustain the rejection.

CONCLUSIONS
1. The Examiner did not err in finding that the originally filed
Specification lacks support for a wiper and contact assembly disposed at
least in part in the housing.
2. The Examiner did not err in concluding that the person having
ordinary skill in the art would have been motivated to modify Weibler in
view of the teachings of Ross and Rau to arrive at the instant invention.
3. The Examiner erred in finding that the subject matter of claims 14-
18 is not fully supported by the disclosure of Bergsma.

ORDER
The Examiner’s rejection of claims 3-5, 7, and 11-19 is affirmed.
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).
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AFFIRMED

ELD

GEORGE LAWRENCE BOLLER
SUITE 316
17199 N LAUREL PARK DR
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