Ex Parte Eckhardt

Patent Trial and Appeal Board

Jun 2, 2017

13582540 (P.T.A.B. Jun. 2, 2017)

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.
13/582,540 09/27/2012 Arnold Eckhardt 2155-0118PUS1 6966
127226 7590 06/06/2017
BIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
NIESZ, JASON KAROL
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
06/06/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARNOLD ECKHARDT
Appeal 2016-000169
Application 13/582,540
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Arnold Eckhardt (“Appellant”)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 16—34.2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant indicates that the real party in interest is Sumitomo Rubber
Industries, Ltd. Appeal Br. 1.
2 Claims 1—15 are cancelled. Appeal Br. 12 (Claims App.); Resp. to
Notification of Non-Compliant Appeal Br. 5 (Claims App.).
Appeal 2016-000169
Application 13/582,540
THE CLAIMED SUBJECT MATTER
Claims 16 and 25 are independent. Claim 16, reproduced below, is
illustrative of the claimed subject matter on appeal.
16. An apparatus for the introduction of air and/or sealant into a
tire, said apparatus comprising;
a container for the sealant which has an inlet and an outlet,
wherein the outlet can be connected to the inlet end of a hose
having an outlet side that can be connected to the tire to be filled;
and
a pressure generation means which can be selectively
connected to the inlet of the container or to the inlet end of a hose
having an outlet end that can be connected to the tire to be filled,
wherein the hose can be connected between the pressure
generation means and the tire to be filled, as well as between the
outlet of the container and the tire to be filled,
wherein couplings are provided (i) at the pressure
generation means, (ii) at the inlet of the container, (iii) at the
outlet of the container, and (iv) at the inlet end of the hose, which
couplings selectively (a) allow the inlet end of the hose to be
connected directly to the pressure generation means or (b) allow
the inlet of the container to be connected to the pressure
generation means and simultaneously the inlet end of the hose to
be connected to the outlet of the container, and
wherein said apparatus contains no switch valve.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Scott US 4,765,367 Aug. 23, 1988
Sowry US 5,906,227 May 25, 1999
Kanenari US 2011/0192492 A1 Aug. 11,2011
Heiko DE 10 2004 060 662 A1 July 6, 2006
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Application 13/582,540
REJECTIONS
I. Claims 16—18 and 25—33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanenari. Final Act. 2-4.
II. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kanenari and Scott. Id. at 4.
III. Claims 20-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kanenari and So wry. Id. at 4—5.
IV. Claim 34 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kanenari and Heiko. Id. at 5.
OPINION
Rejection I
Claims 16^18 and 26—33
Appellant presents argument for the patentability of independent
claim 16, and does not separately argue dependent claims 17, 18, and 26—33.
Appeal Br. 8—9; Reply Br. 1—3. We select claim 16 as the representative
claim, and claims 17, 18, and 26—33 stand or fall therewith. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Kanenari teaches “an apparatus for the
introduction of air or sealant into a tire[,] said apparatus comprising a
container (2) having an inlet (9) and an outlet (9), [a] pressure generation
means (C), and a hose (12b).” Final Act. 2; Ans. 2. The Examiner
acknowledges that “Kanenari does not disclose connecting the hose (12b)
directly to the compressor.” Final Act. 2; Ans. 2. However, the Examiner
finds that “[t]he use of an air hose to channel fluid from a compressor was
old and well known in the art at the time the invention was made.” Ans. 3.
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Application 13/582,540
The Examiner determines that it would have been obvious to modify
Kanenari’s apparatus so “that the output hose from (12b) could be attached
directly to the output of the compressor without the intermediate sealant
container, in order to provide a user with the well[-]known configuration of
a compressor and an outlet hose for use [in] inflating a tire.” Id. With
respect to the “couplings” element recited in claim 16, the Examiner finds
that “[t]he Kanenari apparatus makes use of a friction fit between an end
portion of a hose and a nipple on a fluid source,” and “[t]he friction fit
portions of the hose meet[] the limitation of couplings.” Id.', see id. at 2—3
(explaining that “the broadest reasonable interpretation of a coupling is any
portion of a fluid transmitting device which joins two components together
to permit fluid flow between them”). The Examiner also determines that
“the selection of an appropriate coupling mechanism to join the hose and the
output of either the container or the compressor would fall within the realm
of obvious design choice, since fluid transmitting couplings were old and
well known in the art at the time of invention.” Id. at 3.
Appellant argues that “Kanenari does not disclose any couplings
provided at the compressor, at the inlet of the container, at the outlet of the
container, and at the inlet end of the hose.” Appeal Br. 7 (emphasis
omitted). In particular, Appellant asserts that “Kanenari is completely silent
with regard to the type of connection between the hose ends 12a, 12b and the
respective inflow/outflow sections 3, 4,” and it is “mere speculation that
hose ends 12a, 12b are friction fit over the inlet and the outlet.” Id. The
burden of proof with respect to the Examiner’s findings is by a
preponderance of the evidence. In order to satisfy this standard, the
evidence must demonstrate that it is more likely than not that the alleged
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Application 13/582,540
facts are actually true. See Bosies v. Benedict, 27 F.3d 539, 542 (Fed. Cir.
1994) (the preponderance of the evidence standard requires the finder of fact
to believe that the existence of a fact is more probable than its nonexistence).
Although not described as a “friction fit,” the connections between hose
ends 12a, 12b and inflow/outflow sections 3, 4 illustrated in Figures 1 and 2,
for example, sufficiently show that it is more likely than not that these
connections are friction fit connections as found by the Examiner.
Appellant also asserts that “a friction fit cannot be regarded as a
coupling” because “[t]he term ‘coupling’ implies that the hose may be easily
and repeatedly detached from and attached to the corresponding
inlet/outlet.” Appeal Br. 7 (emphasis omitted). We are not persuaded by
Appellant’s argument. The Examiner’s interpretation that “the term
coupling merely refers to a component or components which form a fluid
connection between two parts of a fluid path” is reasonable, considering that
“coupling” is broadly defined as “[a] device that links or connects”
(American Heritage Dictionary of the English Language (4th ed. 2000,
2003)), and such a definition is not inconsistent with Appellant’s
Specification. See Spec. 3,1. 29-4,1. 10 (describing that couplings come in
a variety of forms, such as plug, socket, screw, and clamping connections).
Further, Appellant does not offer any evidence or persuasive technical
reasoning to explain why a friction fit could not be easily and repeatedly
detached and reattached. Thus, Appellant does not persuade us of error in
the Examiner’s finding that a friction fit connecting the end of a hose (i.e.,
Kanenari’s hoses 12a and 12b) to a nipple (i.e., air inflow section 3 and
sealant discharge section 4) constitutes a “coupling” under the broadest
reasonable interpretation of the term.
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Appellant argues that it would not have been obvious to one of
ordinary skill in the art to provide couplings at the compressor, container,
and hose. Appeal Br. 9. In particular, Appellant asserts that “[s]uch a
modification of a tire repair kit is not suggested by the Kanenari disclosure.”
Id. Appellant also argues that “Kanenari does not disclose a configuration
where the compressor is directly connected to the tire” (Appeal Br. 7
(emphasis omitted)), and “[t]here is no motivation to remove the front hose
12b (Fig. 12) from the container 1 and to use this hose for a direct
connection between the compressor and the tire” (id. at 8). According to
Appellant, “it is not readily foreseeable that the Kanenari device could be
reconfigured such that one of the hoses directly connects the compressor and
the tire” because “hose 12a is not specified as being detachable from the
compressor” and “hose 12b is not specified as being attachable to the
compressor.” Id. We are not persuaded by these arguments in that they
insist on an explicit teaching, suggestion, or motivation in Kanenari to
provide couplings at the compressor, container, and hose, and to directly
connect the compressor to the tire, whereas such an argument has been
foreclosed by the Supreme Court. KSR Ini7 Co. v. Teleflex Inc., 550 U.S.
398, 415, 419 (2007) (stating that a rigid insistence on teaching, suggestion,
or motivation is incompatible with its precedent concerning obviousness).
Rather, the Court requires that we look to whether the Examiner has
provided “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). In this
regard, Appellant’s arguments do not specifically address the Examiner’s
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Application 13/582,540
articulated reasoning for the proposed modifications of Kanenari or
persuasively explain why the reasoning lacks rational underpinnings.
As discussed above, the Examiner articulates adequate reasoning
supported by rational underpinnings as to why it would have been obvious to
provide couplings to join the compressor, container, and hose. See Ans. 3
(reasoning that “the selection of an appropriate coupling mechanism to join
the hose and the output of either the container or the compressor would fall
within the realm of obvious design choice, since fluid transmitting couplings
were old and well known in the art at the time of invention”). The Examiner
also articulates adequate reasoning to support the determination that it would
have been obvious to modify Kanenari’s apparatus to connect the tire
inflation hose directly to the compressor output. See id. (reasoning that such
a modification would “provide a user with the well[-]known configuration of
a compressor and an outlet hose for use [in] inflating a tire”).
We agree with the Examiner that one of ordinary skill in the art
“would recognize that the device could be easily reconfigured to provide a
flow of pressurized air directly to the tire by merely connecting the hose
(12b) directly to the compressor outlet.” Id. at 6. A conclusion of
obviousness must be supported by explicit findings and analysis establishing
an apparent reason to combine the known elements in the manner required in
the claim at issue, but “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for [the PTO]
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. We
determine that the Examiner has adequately explained how Kanenari’s
friction fit couplings between hose ends 12a, 12b and inflow/outflow
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Application 13/582,540
sections 3, 4 selectively allow the inlet end of the hose to be connected
directly to the pressure generation means in that one of ordinary skill in the
art would know how to do so within his or her level of skill, considering it is
a well-known configuration for inflating a tire.
Appellant also argues that, “the Kanenari reference assumes that the
air from the compressor is always to be directed through the sealant
container, [and, therefore,] it teaches away from a direct connection between
the compressor and the tire.” Appeal Br. 8. According to Appellant, “the
disclosure in the Kanenari reference that air from the compressor is always
to be directed through a sealant container would lead persons of ordinary
skill in the art away from the direct connection between the compressor and
the tire.” Reply Br. 2. This argument is not persuasive, however, because
“[a] reference does not teach away ... if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.” DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Although Kanenari generally discloses a sealant container between the
compressor and tire, Appellant has not identified any passage in Kanenari
that actually criticizes, discredits, or discourages directly connecting the
compressor to the tire, as proposed by the Examiner.
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that subject matter of independent claim 16 would have
been obvious. Accordingly, we sustain the rejection of claim 16 under
35 U.S.C. § 103(a) as unpatentable over Kanenari. We also sustain the
rejection of claims 17, 18, and 26—33 which fall with claim 16.
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Application 13/582,540
Claim 25
Appellant separately argues the patentability of independent claim 25,
which is substantially similar to independent claim 16, but further recites
that “a safety valve or a pierceable membrane is provided at the outlet of the
container to close the outlet when no hose is connected.” Appeal Br. 7
(Claims App.). The Examiner finds that “Kanenari discloses a membrane
(8).” Final Act. 3; Ans. 3.
Appellant argues that Kanenari teaches that a “sealing film 8 is
provided at an opening 2a of the sealant container 2,” but “this opening
cannot be interpreted as an outlet of the container.” Appeal Br. 9. In
particular, Appellant asserts that the sealant “container [2] comprises an air
inflow section 3 and a sealant discharge section 4, which form the inlet and
outlet, respectively.” Id. at 9—10 (citing Kanenari | 67). The Examiner
responds that “the neck of the container of the Kanenari apparatus serves as
both inlet and outlet, [and] the membrane which covers the neck of the
container therefore meets the limitation.” Ans. 8. Although Kanenari
teaches a pierceable membrane (sealing film 8) on the neck of the sealant
container (Kanenari | 54), we do not agree with the Examiner’s position that
the neck of the container constitutes the outlet because it is inconsistent with
findings made by the Examiner in the rejection. As discussed above, the
Examiner relies on Kanenari’s sealant discharge section 4 as representing
the container outlet, to which hose 12b is coupled by friction fit. See Ans.
2—3 (explaining that the “apparatus makes use of a friction fit between an
end portion of a hose and a nipple on a fluid source”); see Kanenari, Figs. 1,
4A, 4B (depicting the connection between hose 12b and sealant discharge
section 4). Appellant points out that “[t]he sealant discharge section 4 ... is
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Application 13/582,540
not protected by a sealing film.” Appeal Br. 10. As such, the Examiner’s
finding that Kanenari teaches a pierceable membrane that “is provided at the
outlet of the container” is not supported by a preponderance of the evidence,
and the Examiner’s conclusion of obviousness is based on an erroneous
finding as to the scope and content of Kanenari.3
For the foregoing reasons, we do not sustain the Examiner’s rejection
of independent claim 25 under 35 U.S.C. § 103(a) as unpatentable of
Kanenari.
Rejection II
Appellant argues that “Scott discloses a tire repair kit which is based
on the use of a switch valve,” “does not disclose a container having an inlet
and an outlet,” and “uses a pre-pressurized container without any inlet.”
Appeal Br. 7. We are not persuaded by Appellant’s arguments in that they
address Scott individually, rather than the rejection as articulated by the
Examiner, which is based on the combination of Kanenari and Scott. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981) (one cannot show
nonobviousness by attacking references individually when the rejection is
3 The Examiner’s rejection does not address whether one of ordinary skill in
the art might be led to provide a safety valve or pierceable membrane at
Kanenari’s sealant discharge section 4, so as to be consistent with other
findings made by the Examiner regarding the outlet of the container, or
alternatively whether the neck of Kanenari’s sealant container might meet
the other claim limitations relating to the outlet. We note that the Patent
Trial and Appeal Board is a review body, rather than a place of initial
examination, and wTe therefore decline to make a determination of what one
of ordinary skill in the art may deem obvious; rather, we leave it to the
Examiner to determine the appropri ateness of any further course of action
based on such a conclusion should there be further prosecution of this
application.
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based on a combination of the references). Accordingly, we sustain the
rejection of dependent claim 19 under 35 U.S.C. § 103(a) as unpatentable
over Kanenari and Scott.
Rejection III
In contesting the rejection of dependent claims 20—24, Appellant
argues that “Sowry does not disclose any sealant container,” and “the
apparatus according to Sowry relies on the control valve.” Appeal Br. 7.
Appellant also argues that “there is no motivation for a person of ordinary
skill in the art to extract the principle of directly connecting a compressor to
a tire [from] Sowry and to transfer it to a tire repair kit according to
Kanenari.” Id. at 7—8. We are not persuaded of Examiner error in that these
arguments address Sowry individually, rather than the rejection as
articulated by the Examiner, which is based on the combined teachings of
Kanenari and Sowry. The Examiner relies on Sowry only “to teach plug in
connector couplings for use in a tire inflation operation” (Ans. 7), not to
teach a direct connection between the compressor and the tire (see id. at 2—3
(the Examiner determining that Kanenari renders obvious such a feature)).
Appellant also argues that Sowry is non-analogous art because the
reference “is related neither to tire repair kits nor to sealant containers,” but,
instead, “is concerned with the problem of finding a suitable filling gas for
tires in order to reduce rubber deterioration.” Appeal Br. 9 (citing Sowry,
col. 1,11. 34^42) (emphasis omitted). The established precedent of our
reviewing Court sets up a two-fold test for determining whether art is
analogous: “[‘](1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
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pertinent to the particular problem with which the inventor is involved.”’ In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004)). Here, Sowry and Appellant’s invention
both are in the field of tire inflation apparatuses, and, as such, Sowry is
analogous art. See Sowry, col. 1,11. 5—6 (stating that the “invention relates
to tire inflation and evacuation methods and apparatus”); Spec. 1,11. 6—7
(stating that “[t]he present invention relates to an apparatus for the
introduction of air and/or sealant into a tire”).
For the foregoing reasons, we sustain the rejection of dependent
claims 20-24 under 35 U.S.C. § 103(a) as unpatentable over Kanenari and
Sowry.
Rejection IV
Because Appellant relies on the same arguments and reasoning we
found unpersuasive in connection with independent claim 16, we also
sustain the rejection of claim 34 under 35 U.S.C. § 103(a) as unpatentable
over Kanenari and Heiko. See Appeal Br. 8—10 (presenting arguments only
for independent claim 16, from which claim 34 depends).
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DECISION
The Examiner’s decision to reject claims 16—24 and 26—34 under
35 U.S.C. § 103(a) is affirmed.
The Examiner’s decision to reject claim 25 under 35 U.S.C. § 103(a)
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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