Ex Parte Cochran et al

Board of Patent Appeals and Interferences

Nov 17, 2010

11052155 (B.P.A.I. Nov. 17, 2010)

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.
11/052,155 02/07/2005 Gary D. Cochran RB01CIP 5455
25287 7590 11/18/2010
GEORGE LAWRENCE BOLLER
SUITE 316
17199 N LAUREL PARK DR
LIVONIA, MI 48152
EXAMINER
ROGERS, DAVID A
ART UNIT PAPER NUMBER
2856
MAIL DATE DELIVERY MODE
11/18/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

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

____________________

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

HOFF, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2009-003364
Application 11/052,155

INTRODUCTION
Appellants’ Request for Rehearing, filed June 28, 2010, contends that
we erred in our Decision on Appeal entered April 27, 2010, in which we
affirmed the rejection of claims 3-5, 7, and 11-19. Appellants seek rehearing
of our decision to sustain the 35 U.S.C. § 112, first paragraph rejection of
claims 14-19, and the 35 U.S.C. § 103(a) rejection of claims 3-5, 7, 11-17,
and 19.
OPINION
We will maintain the rejections under §§ 112 and 103.
REJECTION OF CLAIMS 14-18 UNDER § 112
With respect to the § 112 rejection, Appellants argue that the
affirmance is clearly erroneous because the USPTO allowed U.S. Patent
6,868,724 (hereinafter, “Brzozowski”) to issue, although the Brzozowski
disclosure and drawings describe and show only an embodiment in which a
wiper and contact assembly is completely contained within the housing
(Req. for Reh’g 3). Appellants’ argument is not persuasive because each
patent application is examined on its own merits. In reviewing specific
rejections of specific claims, we do not consider allowed claims in other
applications. In re Gyurik, 596 F.2d 1012, 1016 n. 15 (CCPA 1979).
Because Appellants have made no other argument concerning points the
Board may have misapprehended or overlooked, we decline to modify the
affirmance of the § 112 rejection.
REJECTION OF CLAIMS 3-5, 7, 11-17, AND 19
Appellants argue that affirmance of this rejection (over Weibler in
view of Rau and Ross) was in error because (a) the person having ordinary
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Application 11/052,155

skill in the art would perceive no need to modify Weibler’s sender to have a
magnetic drive because Weibler inherently provides a solution to Rau’s
stated corrosion problem (Req. for Reh’g 4); (b) because Ross’s hermetically
sealed enclosure is external to the propane tank, the person of ordinary skill
would understand Ross’s enclosure to be sealed only against air, whereas
Appellants’ hermetic seal, being contained inside a fuel tank, provides a seal
against liquid fuel and fuel vapor as the claims require (Req. for Reh’g 4, 5);
(c) the lapse of sixteen years between Weibler and the instant application
(and the span of twenty years since Rau issued) is evidence that Appellants’
solution of the corrosion problem by a sealed enclosure containing a
movement operated by a magnetic drive is unobvious (Req. for Reh’g 5); (d)
the combined teachings of the references taken as a whole indicates the non-
obviousness of the combination, and the Examiner and Board failed to
explain why one of ordinary skill in the art would make the combination
(Req. for Reh’g 5-6); (e) the Board failed to properly consider the patents to
Weibler, Rau, and Ross as (documentary) objective indicia of the non-
obviousness of the claimed subject matter, allegedly illustrating the failure
of others to recognize the benefit of providing an in-tank sender with a
magnetic drive operating a movement contained within a housing
hermetically sealed against both liquid fuel and fuel vapor (Req. for Reh’g
6-7); and (f) the Decision cites no authority for the proposition that the
prosecution history of Brzozowski is irrelevant to the prosecution of this
application (Req. for Reh’g 7-9).
Argument (a) is a repetition of an argument made by Appellants in the
Brief (App. Br. 11). As we stated in the Decision on Appeal, we agree with
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Application 11/052,155

the Examiner’s findings that in either embodiment of Weibler, a hole exists
that must be sealed; that Rau teaches that fuels can be corrosive; and that
Ross teaches a magnet-to-magnet coupling solution that does not create a
hole in a hermetically sealed enclosure (Dec. 8). We further agree with the
Examiner’s conclusion that it would have been obvious to combine the
teachings of Weibler, Rau, and Ross in order to achieve the benefit of further
ensuring the integrity of the sealed housing (Dec. 8; Ans. 17).
Argument (b) is a repetition of an argument made by Appellants in the
Brief (App. Br. 14-15). We agree with the Examiner’s finding that
Appellants disclose a hermetic fuel level sender and Ross teaches a
hermetically sealed sender (Ans. 19). As Appellants have not established
that their use of “hermetic” or “hermetically sealed” differs from that of
Ross, we are not persuaded by Appellants’ argument that Ross’s
hermetically sealed sender is only sealed against ambient air, whereas
Appellants’ hermetically sealed sender is sealed against air and liquid (i.e.,
fuel and fuel vapor). As a result, we agree with the Examiner’s finding that
Ross’s teaching of a hermetic seal is a teaching of a seal that protects against
intrusion by both liquids and vapors (Ans. 7; Dec. 9).
We are not persuaded of error in our Decision by Appellants’
argument (c) that the sixteen years elapsed between Weibler and the
application under appeal is evidence of the non-obviousness of the claimed
invention. First, we agree with the Examiner that Appellants’ statement in
the Brief that “nobody pursued a sealed chamber inside a fuel tank for
solving the corrosion problem after Weibler until Applicant” is mere
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Application 11/052,155

speculation, absent proof. Second, the record is devoid of any such proof, in
the form of an affidavit or declaration setting forth pertinent facts.
We are not persuaded of error in our Decision by argument (d) that
the combined teachings of the references indicate the non-obviousness of the
combination and that the Examiner and Board failed to articulate reasons
why one of ordinary skill in the art would combine the references. As
discussed supra, we agree with the Examiner’s finding that Weibler’s
purported solution to the corrosion problem stated by Rau still produces a
hole in an enclosure that must be sealed against fuel and fuel vapor. We
further agree with the Examiner’s reasoning that it would have been obvious
to combine Weibler with Rau and Ross, using a sender having magnet to
magnet coupling through a hermetically sealed housing, because the use of
such coupling eliminates the need for a hole through which a shaft passes,
achieving the benefit of further ensuring the integrity of the sealed housing
(Ans. 17).
Appellants’ argument (e) is a repetition of an argument made by
Appellants in the Brief (App. Br. 16-19). Appellants’ arguments concerning
long-felt need and failure of others are not considered persuasive. First, as
stated by the Examiner (Ans. 20) and the Board (Dec. 9), Appellants have
not submitted objective evidence factually supported by an appropriate
affidavit or declaration. MPEP 716.01(c). The record of this application is
devoid of any such affidavit or declaration setting forth appropriate facts.
Second, in order to establish long-felt need as a secondary consideration of
nonobviousness, an applicant must submit objective evidence that an art
recognized problem existed in the art for a long period of time without
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solution. This requires, inter alia, a showing that the need was a persistent
one that was recognized by those of ordinary skill in the art. MPEP 716.04.
Appellants have made no factual showing of any such persistent, recognized
need. Third, mere arguments of counsel, such as those contained in the Brief
(App. Br. 16-19), the Reply Brief (Reply Br. 9), and the Request for
Rehearing (Req. for Reh’g 6-7), cannot take the place of evidence in the
record. See MPEP 716.01(c); In re Schulze, 346 F.2d 600, 602 (CCPA
1965).
Appellants’ argument (f) that the Decision cites no authority for the
proposition that the prosecution history of Brzozowski is not relevant to the
prosecution of this application is not persuasive to show any point that the
Board misapprehended or overlooked. The Court of Customs and Patent
Appeals, predecessor court to the Court of Appeals for the Federal Circuit,
held that “[e]ach case is determined on its own merits. In reviewing specific
rejections of specific claims, this court does not consider allowed claims in
other applications or patents.” In re Gyurik, 596 F.2d 1012, 1016 n. 15
(CCPA 1979). As our reviewing court directs, then, we will not consider the
allowed claims in Brzozowski in determining the patentability of the claims
under appeal.1
Therefore, Appellants have not shown any points which we
misapprehended or overlooked in our Decision with respect to the § 103
rejection of claims 3-5, 7, 11-17, and 19.

1 While Appellants are correct that claims 14-19 were copied from
Brzozowski for the purpose of invoking an interference (Req. for Reh’g 7),
the presence of allowed claims is a prerequisite to the declaration of an
interference, and no such allowance has occurred in this application.
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Application 11/052,155

CONCLUSION
In summary, we have granted Appellants’ request for rehearing to the
extent that we have reconsidered our decision rejecting claims 14-18 under
35 U.S.C. § 112, first paragraph, and rejecting claims 3-5, 7, 11-17, and 19
under § 103(a), but we decline to modify the decision in any way.

REHEARING DENIED

ELD

GEORGE LAWRENCE BOLLER
SUITE 316
17199 N LAUREL PARK DR
LIVONIA, MI 48152
7