Ex Parte Monk et al

Patent Trial and Appeal Board

Mar 18, 2013

11637591 (P.T.A.B. Mar. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/637,591 12/11/2006 INV001Russell A. Monk J-HITT.1029 2026
56703 7590 03/18/2013
JON M. DICKINSON, P.C.
8015 S.E. 31st Ave
PORTLAND, OR 97202
EXAMINER
KASHNIKOW, ERIK
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
03/18/2013 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 RUSSELL A. MONK
and THOMAS S. OHNSTAD
____________

Appeal 2012-000705
Application 11/637,591
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 2 and 4-6 under 35 U.S.C. § 103(a) as unpatentable
over Baker (US 3,698,587, issued Oct. 17, 1972) in view of Haigh (US 4,529,626,
issued Jul. 16, 1985), Detoumay (US 6,294,235 B1, issued Sep. 25, 2001), and
Hayashi (US 6,884,482 B2, issued Apr. 26, 2005).2 We have jurisdiction under
35 U.S.C. § 6(b).

1 Final Office Action mailed Apr. 29, 2011 (“Final”)
2 Appeal Brief filed Jul. 16, 2011 (“App. Br.”)
Appeal 2012-000705
Application 11/637,591

2
We REVERSE.
The invention relates to a “protective, liquid-reaction, elastomeric, self-
sealing, anti-leak coating structure” for a petroleum fuel container such as a fuel
tank. (Spec.3 1:9-11.) The coating is capable of “seal[ing] quickly against fuel
leakage from a puncture wound, such as a bullet wound, in the wall of such a
container/tank.” (Id. at 13-15.) Claim 4 is representative of the invention and is
reproduced below from the Claims Appendix to the Appeal Brief:
4. A self-sealing, anti-liquid-leak, all-over layer-based coating for a liquid
petroleum fuel container having an outer wall which defines lateral, bottom and top
sides of the container each with an outer surface formed of HDPE plastic material,
said layer-based coating having, for different, respective ones of the mentioned
sides in the container, different overall thickness, and respectively associated,
different numbers of layers, said coating comprising
for each of the lateral and bottom sides, a first common-thickness coating
portion possessing three, liquid-petroleum-reactive, sealing layers including
(a) an inner, liquid-petroleum-reactive, high-elastomers material layer
applied substantially directly to the side and mechanically bonded thereto,
(b) an intermediate layer formed over said inner layer including a
combination of substantially the same, liquid-petroleum-reactive, high- elastomeric
material employed in said inner layer, and additionally a population of embedded,
liquid-fuel imbiber beads, and
(c) an outer layer applied over said intermediate layer and formed of
substantially the same, liquid-petroleum-reactive, high-elastomeric material which
is employed in said inner layer, and
for the top side, a single, second-coating- portion, top-side layer formed of
substantially the same, liquid-petroleum-reactive, high-elastomeric material
employed in said inner and outer layers in said first coating portion, joining with
each of said inner, intermediate and outer layers in said first coating portion, and
together with said first coating portion’s said outer layer forming an elastomer,
liquid-petroleum-reactive, shrink-wrap continuum fully and effectively enveloping
the container.

3 Specification filed Dec. 11, 2006.
Appeal 2012-000705
Application 11/637,591

3
The Examiner relies on Baker for a teaching of a fuel container coated with
self-sealing layers. (Ans. 4 4.) The Examiner concedes Baker discloses using the
same multi-layered construction to coat the entire container, but maintains it would
have been obvious to delete layers on less vulnerable portions of the container for
the purpose of lessening production costs and reducing the weight of the fuel tank.
(Id. at 4-5.) The Examiner cites Detoumay to establish “it [was] known in the art
that using less materials and a smaller wall thickness is beneficial in the fuel tank
art.” (Id. at 5.) The Examiner further concedes Baker is “silent regarding the
imbiber beads,” but determines it would have been “obvious to one of ordinary
skill in the art at the time of the invention to include the imbiber beads of Haigh []
into the foam absorbing layer of Baker [] because the increased absorption of the
oil, would decrease the amount of oil lost due to a puncture.” (Id. at 6.)
Appellants argue the facts and reasons relied on by the Examiner are
insufficient to support findings that one of ordinary skill in the art would have been
motivated to modify Baker’s coating (1) to eliminate layers on only the portion
designed to cover the top of a fuel container, and (2) to include oil imbibing
particles in the coating’s foam absorbing layer. (See App. Br. 15-16.)
As correctly pointed out by Appellants, Detoumay relates to an uncoated
plastic fuel tank. (See id. at 16.) Detoumay is said to have discovered it is possible
to reduce the thickness of HDPE fuel container walls while maintaining the
container’s structural integrity. (Detoumay col. 2, l. 62-col. 3, l. 7.) According to
Detoumay, the invention reduces the amount of HDPE required to construct the
container, providing a reduction in weight, reduced material costs, etc. (See
generally, id. at col. 3, ll. 11-27.) We agree with Appellants that the Examiner has
failed to identify sufficient evidence to support a finding that the ordinary artisan

4 Examiner’s Answer mailed Sep. 8, 2011.
Appeal 2012-000705
Application 11/637,591

4
would have reasonably expected eliminating layers from only portions of the
polyurethane coating which covers Baker’s fuel container would provide benefits
similar to those disclosed by Detoumay in reducing container wall thickness, while
still retaining the coating’s requisite level of puncture resistance. (See App. Br. 14-
15.)
With respect to Haigh, we likewise agree with Appellants that the Examiner
failed to identify sufficient evidence to support a finding that the ordinary artisan
would have reasonably expected imbiber particles of the type disclosed by Haigh
could be successfully embedded into Baker’s polyurethane layers to absorb oil.
(Id. at 15-16; cf. Haigh col. 4, ll. 22-45 (discussing the addition of the particles to a
body of water contaminated with oil).)
In sum, Appellants have persuasively argued the Examiner relied on
improper hindsight reasoning in determining it would have been obvious to modify
Baker’s coating to eliminate layers on only the portion designed to cover the top of
a fuel container, and to include oil imbibing particles in the coating’s foam
absorbing layer. Accordingly, we do not sustain the Examiner’s rejection of
claims 2 and 4-6 under 35 U.S.C. § 103(a) as unpatentable over Baker in view of
Haigh, Detoumay, and Hayashi.
REVERSED

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