Ex parte Pazik

Board of Patent Appeals and Interferences

May 29, 1998

08081858 (B.P.A.I. May. 29, 1998)

Application for patent filed June 22, 1993. According to the applicant, the1
application is a continuation of Application 07/761,714, filed September 17, 1991.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN A. PAZIK
__________
Appeal No. 95-4002
Application 08/081,8581
___________
ON BRIEF
___________
Before ABRAMS, STAAB and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of claims 8-22, all the
claims remaining in the application.
Appeal No. 95-4002
Application 08/081,858
In independent claim 22, seventh to the last line, “the pocket” lacks a clear2
antecedent and should apparently be --the baffle--. Appellant may wish to correct this
error in the event of further prosecution.
2
Appellant’s invention pertains to an integrally molded plastic fuel tank with an
internal baffle. Independent claim 8, a copy of which is appended to appellant’s brief,
is representative of the claimed subject matter.2
The single reference of record relied upon by the examiner as evidence of
obviousness is:
Durrett et al. (Durett) 3,595,422 July 27, 1991
Claims 8-22 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Durrett.
The rejections are explained in the examiner’s answer (Paper No. 28, mailed
August 13, 1997).
The opposing viewpoints of appellant are set forth in the brief (Paper No. 23,
filed February 1, 1995) and the reply brief (Paper No. 25, filed June 5, 1995).
Appellant also relies on affidavits under 37 C.F.R. § 1.132 filed May 27, 1993 and
March 3, 1994, in support of his position that the claimed subject matter would not have
been obvious.
OPINION
In rejecting claims 8-22 under 35 U.S.C. § 103, the examiner bears the initial
Appeal No. 95-4002
Application 08/081,858
3
burden of presenting a prima facie case of obviousness. In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993), In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). A conclusion that the claimed subject matter is
obvious must be supported by evidence, as shown by some objective teaching in the
prior art or that knowledge generally available to one of ordinary skill in the art would
have led that individual to combine the relevant teachings of the references to arrive at
the claimed invention. In re Fine, 837 F.2d 1071, 1073-74, 5 USPQ2d 1596, 1598-99
(Fed. Cir. 1988).
Independent claim 8 calls for a vehicle tank integrally molded out of a plastic
material having a length along a longitudinal axis and a width along a transverse axis,
with the length of the tank being greater than the width. The tank is provided with
means for mounting the tank such that the longitudinal axis is disposed transverse to a
forward direction of motion of the vehicle. Further, the tank is provided with a single,
integrally molded pocket extending between the top and bottom walls of the tank, the
pocket being at right angles to the longitudinal axis and being positioned approximately
midway between the left and right sides of the tank to form a transverse baffle to
minimize sloshing of fuel between the left and right side walls of the tank during turns of
the vehicle. Claim 8 additionally requires that the hollow interior of the tank is
otherwise unobstructed by any other baffle forming walls except for the walls forming
the single, integrally molded pocket.
Appeal No. 95-4002
Application 08/081,858
4
Durrett discloses a plastic fuel tank “constructed so as to resist impact loading
failure by forming said tank from a plurality of containers and adapting said tank to
distribute the energy of impact loading relatively equally throughout the container by
adapting the tank to communicate fluid between the containers” (abstract). Several
embodiments are disclosed. In Figures 1-2, a rectangular tank comprising containers 1
and 2 is formed by joining upper and lower parts along a horizontal seam. A vertical
seam could also be used, or the entire tank molded without seams as one unit (column
3, lines 14-16). The containers are separated by a centrally located pocket (not
numbered) extending between the top and bottom walls of the tank along the length of
the tank. Figure 3 illustrates a rectangular tank comprising three compartments
separated by pockets that extend transverse to the length of the tank. In Figure 4, a
tank comprising four containers is shown, with the containers collectively forming a
cross-like pocket. Figure 5 shows a further embodiment made up of identical
containers 50 joined along vertical seams 53. Although not expressly stated, the
pockets of the various embodiments of Durrett reasonably appear to be capable of
acting, at least to some degree, as baffles to restrict sloshing of fuel contained in the
tank.
The examiner concedes that Durrett does not disclose, among other things, a
pocket forming a baffle positioned in accordance with the requirements of claim 8. The
examiner deals with this deficiency as follows:
Appeal No. 95-4002
Application 08/081,858
5
The particular mounting orientation [of the tank] . . . would have been an
obvious matter of engineering design choice determined by the space
available in the particular vehicle. Attention is directed to Durrett, Jr. et.
al., fig. 3 which discloses a pocket orientation that is transverse to the
long axis of the tank. To have employed such teaching with a single
pocket would have been obvoius [sic, obvious] to one of ordinary skill in
the art in light of the cost savings to be realized. It is widely accepted in
the field to employ baffles that restrict the flow of fluids. These baffles are
placed across the path of the fluid flow. [answer, page 4]
We cannot accept this position. First, it is not clear that providing the Figure 3
embodiment of Durrett with only a single pocket would result in any significant cost
savings. Second, the examiner has not explained, and it is not clear to us, why the
skilled artisan would carry out such a modification of the Figure 3 embodiment in a way
that would necessarily result in the tank of claim 8. In this regard, Durrett’s Figure 1
embodiment is a “single pocket” tank of the type generally proposed by the examiner,
yet it is clearly does not correspond to that which is called for in claim 8. Also, when
only two modular containers of Durrett’s Figure 5 embodiment are employed, a “single
pocket” container results, however, it too clearly does not correspond to that which is
called for in claim 8. The mere fact that the prior art structure could be modified in a
manner which would result in the claimed subject does not make such a modification
obvious unless the prior art suggests the desirability of doing so. In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the present instance, we fail
to perceive any teaching, suggestion or incentive in Durrett which would have led one
of ordinary skill in the art to modify the fuel tank thereof in a manner which would result
Appeal No. 95-4002
Application 08/081,858
6
in the subject matter of claim 8.
Therefore, we will not sustain the standing § 103 rejection of claim 8, or claims
9-16 and 21 which depend either directly or indirectly therefrom.
Independent claims 17 and 22 are broader than independent claim 8 in the
specifics of the baffle. Claims 17 and 22, however, recite a fuel sender means for
sensing and reporting the level of fuel in the tank, and specify a particular location for
the float of the sender means relative to the baffle. In particular, claim 17 requires that
the float of the sender means “is spaced from one side of the baffle by a distance which
is approximately equal to or less than the width of the float as it moves vertically up and
down.” Claim 22 calls for the float to be mounted on a pivot arm of the sender means
and for the sender means to be located such that “the float [is] spaced from the one
side wall [of the baffle] by a distance which is substantially less that the length of the
support arm.”
The examiner contends, and appellant has not disputed, that “[t]he employment
of fluid level sensors that operate via a pivoted arm mounted float . . . are standard
construction in fuel tanks and would have been obvious in the construction of the
above set forth device [of Durrett]” (answer, pages 4-5). As for the particular location of
the fuel sensor, the examiner further contends:
The placing of the float adjacent the baffle wall in order to lessen the float
movement due to fluid movement (sloshing) would have been obvious to
one of ordinary skill in the art motivated by the desire to have accurate
Appeal No. 95-4002
Application 08/081,858
7
fuel level sensing. The particular spacing of the float in relation to the
pocket provides no novel or unexpected result and solves no stated
problem and thus would have been a mere matter of choice and therefor
obvious. See In re Kuhle, 526 F.2d 553, 118 USPQ 7 (CCPA 1975).
The examiner’s position in not well taken. Of course, if Durrett were to be
provided with a conventional fuel level sensor having a pivoted arm mounted float, and
if the sensor were to be located such that the float is positioned closely adjacent the
baffle wall, as proposed by the examiner, the resulting structure would lessen the float
movement due to fluid movement (sloshing). This fact, however, does not provide the
proper motivation for combining the teachings of these references. It is the teachings
of the prior art taken as a whole which must provide the motivation or suggestion to
combine the references. See Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, USPQ2d 1434, 1438 (Fed. Cir. 1988); Interconnect Planning Corp. v. Feil, 774
F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985) and In re Deminski, 796 F.2d
436, 442-43, 230 USPQ 313, 315-16 (Fed. Cir. 1986). Here, only appellant has
suggested the fuel level sensor location called for in claims 17 and 22, and the benefit
to be derived therefrom. As the court stated in Uniroyal, 837 F.2d at 1051, 5 USPQ at
1438, “it is impermissible to use the claims as a frame and the prior art references as a
mosaic to piece together a facsimile of the claimed invention.”
The examiner’s reliance on In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA
1975), in an attempt to dismiss the particular claimed location for the fuel sender
Appeal No. 95-4002
Application 08/081,858
See page 10 of the specification of the present application, wherein it is stated:3
“Float 60 is desirably located closely adjacent one side wall of the pocket 40 as shown
in Fig. 3. This allows fuel sender unit to more accurately sense the fuel level within the
tank 2 unaffected by fuel movement within the tank.”
8
means as an obvious matter of choice and design is also not well taken. In contrast to
the situation in Kuhle, here the location of the fuel sender such that the float is situated
closely adjacent the baffle is disclosed in appellant’s specification as solving a problem
of accurately sensing fuel level within the tank. Thus, the claimed fuel sender3
locations cannot be dismissed as obvious matters of design choice without supporting
evidence.
In light of the foregoing, we also will not sustain the standing § 103 rejection of
claims 17 and 22, or claims 18-20 which depend either directly or indirectly from claim
17.
Appeal No. 95-4002
Application 08/081,858
9
In that the examiner has not met his initial burden of presenting a prima facie
case of obviousness of the subject matter of the appealed claims, it is unnecessary for
us to consider appellant’s evidence of nonobviousness, i.e., the affidavits submitted
under 37 C.F.R. § 1.132.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-4002
Application 08/081,858
10
James W. Miller, Esq.
Suite 1005
Foshay Tower
821 Marquette Avenue
Minneapolis, MN 55402