Ex Parte Keefer et al

Patent Trial and Appeal Board

Feb 20, 2018

13753518 (P.T.A.B. Feb. 20, 2018)

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.
TEM676 7857
EXAMINER
CASTRIOTTA, JENNIFER
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
13/753,518 01/30/2013
7590 o:
Ingrid McTaggart
3021 SE 56th Avenue
Portland, OR 97206
Neal Keefer
02/20/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte NEAL KEEFER and
BRUCE BOSCH
Appeal 2017-003926
Application 13/753,518
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
THOMAS F. SMEGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—5 and 20—31. Br. 5. Claims 6—19 have been
cancelled. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2017-003926
Application 13/753,518
THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “a molded fuel tank [that]
includes a fuel tank molded from synthetic material, such as a composite
polymer.” Spec. 2:8—9. Claims 1, 23, and 25 are independent. Claim 25 is
illustrative of the claimed subject matter and is reproduced below.
25. A fuel tank, comprising:
a tank wall manufactured of a moldable material;
a component fastening structure secured within said
tank wall, said fastening structure manufactured as a single,
integral structure from a single piece of material, said
component fastening structure defining an outermost exterior
surface including a first region, a second region, and a central
region positioned there between, said component fastening
structure defining an elongate axis extending through said first,
second and central regions, said first, second and central
regions each arranged along said elongate axis in a non­
overlapping sequence and defining an outermost perimeter
measured perpendicular to said elongate axis and positioned
within said outermost exterior surface of said component
fastening structure wherein said central region outermost
perimeter is smaller than said outermost perimeter of said first
and said second regions; and
said tank wall defining a tank wall thickness measured
adjacent to said component fastening structure and parallel to
said elongate axis, said thickness extending along said elongate
axis completely along said central region of said fastening
structure and along at least part of each of said first and second
regions.
REFERENCES
Schwartz ’764
Schwartz ’241
Shimoda
US 1,554,764
US 1,656,241
US 8,033,415 B2
Sept. 22, 1925
Jan. 17, 1928
Oct. 11,2011
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Application 13/753,518
REJECTIONS ON APPEAL1
Claims 25—27 and 30 are rejected under 35 U.S.C. § 102(b) as
anticipated by Schwartz ’764.
Claims 25, 26, and 30 are rejected under 35 U.S.C. § 102(b) as
anticipated by Schwartz ’241.
Claims 1, 2, 4, 5, 20-24, 28, 29, and 31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Schwartz ’764 and Shimoda.
Claims 1—5, 20-24, 28, 29, and 31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Schwartz ’241 and Shimoda.
ANALYSIS
The rejection of claims 25—27 and 30
as anticipated by Schwartz ’764
Independent claim 25 (and hence dependent claims 26, 27, and 30)
includes the following four limitations: (a) a “component fastening structure
defining an outermost exterior surface” that includes a first region, a second
region, and a central region there between; (b) first, second, and central
regions “each arranged along said elongate axis in a non-overlapping
sequence;” (c) the outermost perimeter of the central region is “smaller than
said outermost perimeter of said first and said second regions;” and, (d) a
“tank wall thickness measured adjacent to said component fastening
1 Claim 21 is objected to because of duplicative listings of “nylons,
polypropylene, . . . Polypropylene, . . . Nylon, . . . .” Final Act. 3 (emphasis
omitted). The Examiner acknowledges an amendment that “eliminated
claim limitations that were repeated within’'’ claim 21. Advisory Action
dated August 22, 2016. As understood, the Examiner no longer objects to
claim 21, but the rejections of claim 21 under 35 U.S.C. § 103(a) are
maintained.
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Application 13/753,518
structure” extends “along said elongate axis completely along said central
region.” Appellants dispute that Schwartz ’764 discloses such limitations.
Br. 19-29. We address each limitation as follows:
“an outermost exterior surface’’’
The Examiner identifies the three corresponding regions in Schwartz
’764 by providing two annotations of Figure 3 of Schwartz ’764. Final Act.
5; Ans. 3. Such annotations are replicated below:
In the above annotations of a portion of Figure 3 of Schwartz ’764, the
Examiner identifies corresponding first, central, and second regions, as well
as their respective outermost exterior surface.
Appellants submit, “the three regions circled by the Examiner on page
5 of the Office Action are not included within an ‘outermost exterior
surface’ of the Schwartz [’764] bushing structure, as is required by
[Appellants’] claim 25.” Br. 20. “These three regions circled by the
Examiner on page 5 are on the interior portion of the U-shaped bushing,
adjacent to the interior threads of the bushing.” Br. 21. Instead, as per
Appellants, “the outermost exterior surface of the bushing[ is] namely the
left-most surface of the bushing from which the body 1 extends.” Br. 21. In
short, “these regions circled by the Examiner cannot disclose Applicants’]
‘outermost exterior surface’” and that by doing so, the Examiner “twists and
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contorts the plain meaning of the terms ‘outermost exterior surface’ in a way
that defies common sense” and “would not be recognized as an ‘outermost
exterior surface’ by one skilled in the art.”2 Br. 21, 26.
The description provided by Schwartz ’764 with respect to “bushing 3
assembled with the body 1” supports Appellants’ arguments. Schwartz
’764, 1:72—73. Schwartz ’764 describes the Examiner’s encircled portions
above as that part of the U-shaped bushing 3 which “is inwardly returned
upon itself.” Schwartz ’764, 1:74—75. Schwartz ’764 also discloses “the
bushing being interiorly threaded” and that there is an “outer side 6 of the
bushing” and an inner side that contains flange 7. Schwartz ’764, 1:78—96,
2:24—25.
A full depiction of Figure 3 of Schwartz ’764 is provided below.
Above Figure 3 of Schwartz ’764 is a sectional view
of the interconnection between bushing 3 and body 1
In view of the above, the Examiner does not explain how the
encircled portions in the Examiner’s annotated figure (which includes
interior threading but excludes “outer side 6”) can reasonably be said to
2 Appellants further state, “[t]o call this interior surface an ‘outermost
exterior surface’ completely ignores the meaning of the term ‘outermost.’”
Br. 26.
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disclose the recited “outermost exterior surface” of the component fastening
structure.
We are instructed that “[a]n examiner’s belief, however, must be
tethered to or grounded in some rationale so as to establish a prima facie
case of anticipation.” In re Chudik, 674 Fed. App’x 1011, 1015 (Fed. Cir.
2017) (referencing In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)).
Accordingly, and based on the record presented, the Examiner has not
reasonably established by a preponderance of the evidence that Schwartz
’764 anticipates this limitation.
“non-overlapping sequence'1'’
The Examiner again relies on an annotation of Figure 3 of Schwartz
’764 for disclosing the limitation of first, second, and central regions each
“arranged along an elongate axis in a non-overlapping sequence.” Ans. 4.
Appellants disagree stating, “[t]he lowest, ‘second region’ circled by the
Examiner on page 5 of the [Final] Office Action, turns upwardly along the
left side of the bushing and overlaps with the ‘first’ and ‘central’ regions
circled by the Examiner.” Br. 28. Here, Appellants are focusing on the un­
circled portion of the bushing (identified by Schwartz ’764 as “outer side
6”). This un-circled portion is located above the identified “Second region”
and to the left of the identified “First region” and “Central region.” See also
Schwartz ’764, Fig. 3. The Examiner states that this un-circled region “is
not part of the outlined first, second, or central regions. As such, it does not
contradict the claim limitation.” Ans. 4.
The Examiner has masterfully drawn the three encirclements so as to
avoid any overlapping (see above), but the Examiner, in doing so, has failed
to take into account the entirety of what Schwartz ’764 would have taught to
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one skilled in the art. The Examiner does not explain how one skilled in the
art, upon a reading of Schwartz ’764, would not be aware that the correlated
second region continues upwardly as Appellants state. It is further noted
that any elimination of this non-circled “outer side 6” would deprive tank
wall 1 of the ability to engage and be secured to bushing 3. See Schwartz
’764, 1:69-83. We are instructed that “rejections under 35 U.S.C. § 102 are
proper only when the claimed subject matter is identically disclosed or
described in ‘the prior art’” and that “picking and choosing may be entirely
proper in the making of a 103, obviousness rejection,. . . but it has no place
in the making of a 102, anticipation rejection.” In re Arkley, 455 F.2d 586,
587—88 (CCPA 1972). Accordingly, and based on the record presented, the
Examiner has not established by a preponderance of the evidence that
Schwartz ’764 anticipates this limitation.
central perimeter “smaller than ’’first and said second perimeters
The claim limitation in dispute reads: “said central region outermost
perimeter is smaller than said outermost perimeter of said first and said
second regions.” As above, an investigation into an “outermost perimeter”
region is necessary. See also Ans. 5.
Appellants repeat their contention that the “outermost exterior
surface” is, in reality, “the leftmost surface.” Br. 29. This region
encompasses that which was not encircled by the Examiner in the above
annotation (i.e., “outer side 6”). Under this premise, and as per Appellants,
“[t]he outermost exterior surface of Schwartz ’764 does not include a central
region having a smaller outermost perimeter tha[n] the first and second
regions.” Br. 29. The Examiner, on the other hand, contends that the
encircled and identified “central region clearly has an outermost perimeter
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that is smaller than the outermost perimeter of the first and second regions.”
Ans. 5. Regarding the non-encircled region referenced by Appellants, the
Examiner repeats, “that is not part of the outlined first, second, or central
regions. As such, it does not contradict the claim limitation.” Ans. 5.
As above, the Examiner has masterfully drawn the three encirclements
with the first and central encirclements excluding any “outer side 6 of the
bushing” as described by Schwartz ’764. Schwartz ’764, 1:78—79. For
similar reasons already expressed, we agree with Appellants that the
Examiner’s description of the identified first and central regions being an
“outermost” region is in error. Accordingly, and based on the record
presented, we are not persuaded the Examiner has established that Schwartz
’764 anticipates this limitation.
“tank wall thickness ”
The limitation in question defines “a tank wall thickness” as being
“measured adjacent to said component fastening structure” in an axial
direction, and further, “said thickness extending along said elongate axis
completely along said central region.” The Examiner provides yet another
annotation of a portion of Figure 3 of Schwartz ’764 depicting what the
Examiner identifies as “[t]ank wall thickness.” Ans. 4. This additional
annotation is replicated below.
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The above Figure 3 of Schwartz ’764 has been annotated
by the Examiner to identify “[t]ank wall thickness.”
Based on the Examiner’s identification of a tank wall thickness, the
Examiner concludes that this limitation is taught by Schwartz ’764 since
such thickness extends “completely along said central region of said
fastening structure.” Ans. 3^4; see also Final Act. 4.
Appellants dispute the Examiner’s identification above as being a
“tank wall thickness.” Instead, as per Appellants, Schwartz ’764 “discloses
a body wall 1 that is very thin when compared to a height of its bushing 3.”
Br. 27 (referencing Schwartz ’764, Figs. 3, 6). Appellants acknowledge that
this tank wall thickness has been “bent into a U-shape that meshes with the
U-shape of the bushing” but that the tank wall being folded back on itself as
illustrated above “cannot be considered a thickness of the body wall.” Br.
27.
There is merit to Appellants’ contentions. Claim 25 recites that the
measurement is taken “adjacent to said component fastening structure”
whereas the Examiner identifies this measurement being taken within such
structure. Even presuming the Examiner identifies “tank wall thickness” as
the vertical run abutting the outer region of bushing 3 (i.e., exterior of “outer
side 6 of the bushing”), the Examiner does not explain how one skilled in the
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art would understand the vertical extent of this run as being a tank wall
thickness. Further, because claim 25 recites that this measurement is taken
“adjacent to” the bushing, the understanding of one skilled in the art that the
tank wall thickness of Schwartz ’764 is actually a material thickness (as
compared to a vertical extent) finds support in the claim language itself.
Furthermore, and as is well-known, “[a] claim is anticipated only if
each and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference” (emphasis added).
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
1987). Accordingly, and based on the record presented, we are not
persuaded the Examiner has established that Schwartz ’764 anticipates this
limitation.
In summation, we are not persuaded that Schwartz ’764 anticipates
claim 25. We reverse the Examiner’s anticipation rejection of claims 25—27
and 30.
The rejection of claims 25, 26, and 30
as anticipated by Schwartz ’241
Appellants state, “[t]he bushing disclosed by Schwartz ’241 is
identical to the bushing disclosed by Schwartz ’764, discussed above” and
that the difference between the two “is the shape of the body 1 secured
within the cavity of the U-shaped bushing.” Br. 30. Accordingly,
“Applicants] hereby incorporates into Applicants’] arguments under the
Schwartz ’241 rejection, each and every one of the arguments discussed
above with respect to the rejection of independent claim 25 under Schwartz
’764.” Br. 30.
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The Examiner does not dispute such similarity in structure between
the two references. The Examiner likewise replicates the same arguments as
above and relies on annotated figures of Schwartz ’241 that highlight
similarly located structure disclosed in Schwartz ’241. Final Act. 6—8; Ans.
5—7. For reasons analogous to those expressed above, we are not persuaded
that Schwartz ’241 anticipates claim 25. We reverse the Examiner’s
anticipation rejection of claims 25, 26, and 30.
The rejection of claims 1, 2, 4, 5, 20—24, 28, 29, and 31
as unpatentable over Schwartz ’764 and Shimoda
Regarding independent claims 1 and 23, the Examiner relies on the
additional reference to Shimoda for teaching “a fuel tank made of a synthetic
material.” Final Act. 10, 14. The Examiner relies on Schwartz ’764 for
their remaining limitations. Final Act. 9—10, 13—14. Appellants dispute the
rejection of these independent claims by employing the arguments addressed
above with respect to Schwartz ’764. Br. 31—45. The Examiner also repeats
the reasoning expressed above regarding Schwartz ’764 while employing
like annotations. Ans. 7—9. For similar reasons, we are not persuaded that
independent claims 1 and 23 (and their dependent claims 2, 4, 5, 20—22, 24,
28, 29, and 31) are unpatentable over Schwartz ’764 and Shimoda.
The rejection of claims 1—5, 20—24, 28, 29, and 31
as unpatentable over Schwartz ’241 and Shimoda
Similar to the above, the Examiner relies on the additional reference
to Shimoda for teaching “a fuel tank made of a synthetic material” with
respect to independent claims 1 and 23. Final Act. 16, 20. The Examiner
relies on Schwartz ’241 for their remaining limitations. Final Act. 15—16,
19-20. Appellants dispute the rejection of these independent claims by
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employing the arguments addressed above with respect to Schwartz ’241
(i.e., which rely on arguments presented with respect to Schwartz ’764 due
to similar structure). Br. 45—47. The Examiner also repeats the reasoning
expressed above regarding Schwartz ’241 while employing like annotations.
Ans. 10-12. For similar reasons, we are not persuaded that independent
claims 1 and 23 (and their dependent claims 2—5, 20-22, 24, 28, 29, and 31)
are unpatentable over Schwartz ’241 and Shimoda.
DECISION
The Examiner’s rejections of claims 1—5 and 20—31 are reversed.
REVERSED
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