11235035 (B.P.A.I. Jan. 17, 2012)

Ex Parte Da Silva et al

Board of Patent Appeals and InterferencesJan 17, 2012

11235035 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JADER MATOS DA SILVA and RAINER IMMEL ____________ Appeal 2009-013509 Application 11/235,035 Technology Center 3700 ____________ Before JENNIFER D. BAHR, KEN B. BARRETT, and GAY ANN SPAHN, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jader Matos Da Silva and Rainer Immel (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-6, 23, 24, and 27-30 under 35 U.S.C. § 103(a) as unpatentable over Preston (US 5,651,473, issued Jul. 29, 1997) and Stafford (US 3,429,128, issued Feb. 25, 1969). Appellants cancelled claims 7-22, 25, and 26. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2009-013509 Application 11/235,035 2 The Claimed Subject Matter Independent claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A cryogenic storage tank comprising: a fluid-tight outer vessel; a fluid-tight inner vessel disposed within the outer vessel; a vacuum between the inner and outer vessels; a tube communicating with the vacuum and extending into an interior of the inner vessel, a first portion of the tube within the interior of the inner vessel having a first radial cross-sectional area of a first value, a second portion of the tube within the interior of the inner vessel having a second radial cross-sectional area of a second value, the second value being greater than the first value, the second portion being an end portion, and the first and second portions being axially aligned; a plate attached to the tube; and a plurality of fluid lines extending from an exterior of the inner vessel to an interior of the inner vessel through the tube and the plate. Br. 20 Independent claim 2 is substantially identical to independent claim 1, except that: (1) instead of the second value being greater than the first value as in claim 1, claim 2 calls for the second value to be different than the first value; (2) claim 2 calls for the second portion of the tube to be a flared end portion; and (3) claim 2 does not call for the first and second portions to be axially aligned. Br. 21 OPINION The Examiner finds that Preston discloses the subject matter of independent claims 1 and 2 substantially as claimed, except that Preston fails Appeal 2009-013509 Application 11/235,035 3 to disclose “what Stafford et al. teach, first (fig. 1, 17) and second (16) portions of the tube wherein said first portion is straight, first and second portions are axially aligned and said second portion is flared in order to accommodate multiple conduits extending in separate directions.” Ans. 3-4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to “modify Preston by the aforementioned structural features [of Stafford] in order to better accommodate fluid lines extending in different directions into an interior of said inner vessel.” Ans. 4. Appellants contend that the Examiner failed to set forth a “proper rationale to make the suggested change” (App. Br. 17-19 and Reply Br. 8- 10) as one of ordinary skill in the art “would not find any rational reason to modify the Preston tube to have differing cross-sectional areas” (Reply Br. 9). Indeed, Appellants argue that since all of Preston’s fluid flow lines 22, 26, and 30 extend in the same direction, i.e., out of the tube 14 and downwardly into the vessel, Preston has no need to enlarge or flare the end of the tube 14 to better accommodate fluid flow lines extending in different directions. App. Br. 17. Appellants also argue that the Examiner’s reasoning utilizes the same rationale as presented in Appellants’ Specification (see Spec. 15, ll. 3-8 of para. [0040]) and thus, the Examiner’s modification of Preston in view of Stafford amounts to an impermissible hindsight reconstruction. App. Br. 18 and Reply Br. 9. We agree with Appellants. The Examiner’s articulated reason as to why it would have been obvious to a person of ordinary skill in the art to modify Preston by Stafford does not have a rational basis. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; Appeal 2009-013509 Application 11/235,035 4 instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Preston discloses a cryogenic storage vessel 1 including an inner tank 2, an outer jacket 4, and a support assembly 10 for supporting pipes 22, 26, and 30 which penetrate the vessel 1 to allow communication between the interior and exterior. See Preston, col. 2, ll. 21-32, 33-36 and 49-56 and Figs. 2 and 3. Preston’s pipes 22, 26, and 30 all enter and exit the ends of the support assembly 10 through collars 12 and 18 in the same direction, i.e., approximately perpendicular to the collars 12 and 18 and parallel to the longitudinal axes of inner and outer cylindrical members 14, 23 of support assembly 10. See Preston, Figs. 2 and 3. Consequently, the simple, single- diameter cylindrical shape of Preston’s cylindrical member 14 appears adequate and appropriate to accommodate the passage of the pipes. In contrast, Stafford discloses an underwater offshore liquid storage tank, for oil and liquid hydrocarbon byproducts, which is floatable to a site for positioning on the floor of a body of water. Stafford, col. 1, ll. 25-26 and 61-65 and col. 2, ll. 23-25. The tank has an enclosed hollow first vessel 10 including, inter alia, a conical sectional shell 16 and a standpipe 17 which both house vent lines 40 used to submerge or lower the tank to the floor of the body of water by removal of air. See Stafford, col. 3, ll. 29-40 and col. 4, ll. 46-51. Stafford’s vent lines 40 extend parallel to each other in the standpipe 17 and diverge in direction from each another in the conical sectional shell 16 of the hollow vessel 10. See Stafford, Fig. 1. Given the vastly different structures of Preston and Stafford, as discussed above, absent hindsight, we see no reason, and the Examiner has not provided an adequate articulation of a reason, why it would have been Appeal 2009-013509 Application 11/235,035 5 obvious to a person of ordinary skill in the art to modify Preston’s common access tube to have a flared end portion by the teaching of Stafford. As such, we do not sustain the Examiner’s rejection of claims 1-6, 23, 24, and 27-30 under 35 U.S.C. § 103(a) as unpatentable over Preston and Stafford. DECISION We reverse the Examiner’s decision to reject claims 1-6, 23, 24, and 27-30. REVERSED Klh