Ex Parte Schondorf et al

Board of Patent Appeals and Interferences

Oct 22, 2009

11160672 (B.P.A.I. Oct. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN SCHONDORF, SCOTT GABOURY
and CRAIG STEPHAN
____________________

Appeal 2009-002674
Application 11/160,672
Technology Center 3700
____________________

Decided: October 22, 2009
____________________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Steven Schondorf et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-3, 5-13, 18-20 and 27-32. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellants’ claimed invention is directed to reducing the rate of
fuel vapor formation within a fuel storage tank via a plurality of discrete
floating particles (Spec. 2: [Para 4]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for managing fuel vapor in a fuel
system having a fuel storage tank, the method
comprising:
reducing exposed evaporative surface area
of fuel in the fuel storage tank using a plurality of
floating particles each having a geometry with at
least a portion shaped to facilitate tessellation with
other particles.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Nirei (as translated1) JP 6286482 A Oct. 11, 1994

The following rejection by the Examiner is before us for review:
Claims 1-3, 5-13, 18-20 and 27-32 are rejected under 35 U.S.C. §
102(b) as being anticipated by Nirei.

1 The translation submitted by Appellants on October 3, 2006, appears to be
uncertified. The Examiner has relied on the translation and no other
translation has been submitted. Accordingly, we will also rely on the
translation submitted by Appellants on October 3, 2006.
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ISSUE
The issue before us is whether the Examiner erred in finding that Nirei
describes floating particles having the properties called for in the claimed
invention (Reply Br. 2, App. Br. 4). Specifically, has the Examiner erred in
finding that Nirei describes:
(1) tessellating particles having at least a portion to facilitate
tessellation with other particles as called for in claim 1 (App. Br. 6),
(2) adding the particles to the tank through the fuel filling port as
called for in claim 5 (App. Br. 6),
(3) three-dimensionally tessellating particles as called for in claims 6
and 27 (App. Br. 6-7),
(4) particles comprising a material having a low surface energy to
reduce fuel wetting as called for in claim 9 (Reply Br. 4, App. Br. 6),
(5) particles exhibiting a supplementary attractive force as called for
in claims 12 and 31 (Reply Br. 4; App. Br. 6, 8),
(6) self-tessellating particles as called for in claim 19 (App. Br. 7),
(7) particles having a stellated geometry as called for in claims 28 and
29 (App. Br. 7), and
(8) particles having two different geometries as called for in claim 30
(Reply Br. 4, App. Br. 7).

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
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The Appellants’ Invention
1. The Appellants’ Specification describes that “[s]imilarly, particles
50 may be made of or coated with a low surface energy material
that the liquid fuel does not wet or degrade, such as a highly
fluorinated polymer like polytetrafluoroethylene (also known as
Teflon).” (Spec. 5: [Para 18]) (emphasis added).
2. The Appellants’ Specification describes that:
Similarly, while floating particles have a
tendency to cluster and exhibit some
small attractive force, likely related to
the surface tension of the liquid and/or
surface adhesion of the wetted floating
elements, some or all of the particles may
include one or more properties or
features to provide a supplemental
attractive (or repulsive) force to improve
the efficiency of the barrier formation
and subsequent integrity of the barrier
under varying operating conditions. . . .
Appropriate selection of material
properties can be used to make the
floating particles slightly attractive to
each other and slightly repelled from the
tank walls or other fuel system
components, for example. As one
example, some or all of the particles may
be lightly magnetized to facilitate barrier
formation, retention, and noise reduction
particularly during mild fuel rippling or
sloshing.
(Spec. 5-6: [Para 18]) (emphasis added).
3. The Appellants’ Specification describes “[a]s used herein,
tessellating or self-tessellating particles or elements have shapes
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that fit together to substantially fill available space in two or three
dimensions with few or no gaps.” (Spec. 6: [Para 19]).
The Examiner’s Findings
4. The Examiner finds that in giving claim 1 its broadest reasonable
interpretation consistent with the Specification, claim 1 only calls
for a portion of the particles to be shaped to prevent gaps between
the particles (Ans. 6-8).
5. The Examiner finds that Nirei describes all of the limitations called
for in the claimed invention (Ans. 3).
6. The Examiner finds that Nirei describes floating particles 2 having
a polyhedral shape, which are shapes having multiple surfaces,
such as cubes and pyramids (Translation, ¶ [0009]) (Ans. 7).
7. The Examiner finds that “NEREI [sic, Nirei] discloses polyhedral
particles that at least a portion of them, such as pyramids and
cubes, will inherently tessellate or cover a plane without any gaps.”
(Ans. 8).
8. The Examiner finds that one skilled in the art would readily
understand that in Nirei, the granular substances 2 would be added
through the fueling port of the fueling tank (Ans. 8).
9. The Examiner finds that it is inherently known that two particles
adjacent each other exhibit an attractive force without having
magnetic characteristics, and that some of the particles exhibit
more attractive forces than others (Ans. 9).
10. The Examiner found that (1) a fluorine resin is an organic polymer
containing fluorine, (2) a typical form of a fluorine resin is
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polytetrafluoroethylene, and (3) polytetrafluoroethylene is
commercially known as Teflon. (Ans. 4-5).
11. The Examiner finds that since Nirei describes polyhedral particles,
Nirei describes particles having a stellated geometry (Ans. 9).
12. The Examiner finds that Nirei describes particles having different
geometries, as called for in claim 30, since polyhedral particles
include different solids (Ans. 9).
The Board’s Findings
13. Nirei describes a fuel tank 1 capable of restricting generation of
vaporized gas (Translation, ¶ [0006], fig. 1) including plural
granular substances 2 having a lower specific gravity than the fuel
stored in the fuel tank (Translation, ¶ [0007], fig. 1).
14. Nirei describes that
even though the cross-sectional area of
the fuel tank changes in the vertical
direction, plural numbers of granular
substances can change locations freely so
that at least a portion of the fuel surface
is covered with granular substances to be
able to reduce the contact area between
the liquid phase and the gaseous phrase
(Translation, ¶ [0008]).
15. Nirei further describes that the granular substances 2 are spherical
or polyhedral particles produced using a material that is lighter
than the fuel, e.g., a solid three-dimensional fluorine resin or
hollow metal (Translation, ¶ [0009], fig. 1).
16. Nirei still further describes that (1) the granular substances 2
overlap when the granular substances 2 consist of two or more
kinds of granular substances having different diameters 21, 22, and
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(2) the granular particles 22 having a smaller diameter are
incorporated into the spaces among the granular particles 21
having a larger diameter to be able to further shut down the contact
between the liquid phase and the gaseous phase (Translation, ¶
[0011], fig. 3).
17. The ordinary meaning of the word “facilitate” includes “to make
easier, help bring about.” MERRIAM-WEBSTER’S COLLEGIATE
DICTIONARY (10th ed. 1996)
18. The ordinary meaning of the word “tessellate” includes “to form
into or adorn with a mosaic.” MERRIAM-WEBSTER’S COLLEGIATE
DICTIONARY (10th ed. 1996).
19. The ordinary meaning of the word “stellate” includes “resembling
a star (as in shape).” MERRIAM-WEBSTER’S COLLEGIATE
DICTIONARY (10th ed. 1996).
20. The ordinary meaning of the word “geometry” includes
“configuration, surface shape, or an arrangement of objects or parts
that suggests geometric figures.” MERRIAM-WEBSTER’S
COLLEGIATE DICTIONARY (10th ed. 1996).
21. The ordinary meaning of the word “polyhedron” includes “a solid
formed by plane faces.” MERRIAM-WEBSTER’S COLLEGIATE
DICTIONARY (10th ed. 1996).
22. Additional findings as necessary appear in the Analysis portion of
this opinion.

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PRINCIPLES OF LAW
Appellants’ Burden
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). See also Ex parte Yamaguchi, 88 USPQ2d 1606, 1614
(BPAI 2008) [burden on appeal] (on appeal, applicant must show examiner
erred); Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan,
83 USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d
1509, 1519 (BPAI 2007).

Anticipation
“Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). It is not necessary that the
reference teach what the subject application teaches, but only that the claim
read on something disclosed in the reference, i.e., that all of the limitations
in the claim be found in or fully met by the reference. Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).

Inherency
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The express, implicit, and inherent disclosures of a prior art reference
may be relied upon in the rejection of claims under 35 U.S.C. §§ 102 or 103.
“The inherent teaching of a prior art reference, a question of fact, arises both
in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610,
613 (Fed. Cir. 1995). The fact that a certain result or characteristic may
occur or be present in the prior art is not sufficient to establish the inherency
of that result or characteristic. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed.
Cir. 1993) (rejection reversed because alleged inherency was based on what
would result due to optimization of conditions, not what was necessarily
present in the prior art).
Under principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the missing descriptive
matter is necessarily present in the thing described in the reference, and that
it would be so recognized by persons of ordinary skill. Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)).
When relying on the theory of inherency, the examiner has the initial
burden of providing a basis in fact and/or technical reasoning to reasonably
support the determination that the allegedly inherent characteristic
reasonably flows from the teachings of the applied prior art. In re King,
801 F.2d 1324, 1327 (Fed. Cir. 1986).

Claim Interpretation
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When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).

ANALYSIS
Appellants argue claims 1-3 as a group (App. Br. 6). As such, we
select claim 1 as representative of the group, and claims 2 and 3 will stand or
fall with claim 1. Appellants argue claims 6-8 as a group (App. Br. 6), but
we group claims 7 and 8 with claims 28 and 29, because they contain the
separately argued “stellated” limitation contained in claims 28 and 29.
Appellants argue claims 28 and 29 together as a group. As set forth above,
we group claims 7 and 8 along with claims 28 and 29. As such, we select
claim 28 as representative of the group, and claims 7, 8 and 29 will stand or
fall with claim 28. 37 C.F.R. § 41.37(c)(1)(vii) (2007). Appellants argue
claims 5, 9, 12, 13, 18, 19, 27, 30-32 separately (App. Br. 6-8). Claims 10,
11 and 20 have not been separately argued. Therefore, claims 10, 11 and 20
will stand or fall with the claims from which they depend, that is, claims 1
and 19, respectively.

Regarding claims 1-3, 6, 10, 11, 19, 20 and 27
Appellants contend that Nirei does not describe (1) tessellating
particles having at least a portion to facilitate tessellation with other particles
as called for in claim 1 (App. Br. 6), (2) self-tessellating particles as called
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for in claim 19 (App. Br. 7), and (3) three-dimensionally tessellating
particles as called for in claims 6 and 27 (App. Br. 6-7).
The Examiner found that in giving claim 1 its broadest reasonable
interpretation consistent with the Specification, claim 1 only calls for a
portion of the particles to be shaped to prevent gaps between the particles
(Fact 4). The Examiner further found that Nirei describes floating particles
2 having a polyhedral shape, which are shapes having multiple surfaces,
such as cubes and pyramids (Fact 6). The Examiner still further found that
Nirei describes polyhedral particles (e.g., pyramids and cubes), and that at
least a portion of them will inherently tessellate or cover a plane without any
gaps (Fact 7).
The Examiner has interpreted the word polyhedral as described by
Nirei to include cubes and pyramids (Facts 6-7).
The Appellants’ Specification describes “[a]s used herein, tessellating
or self-tessellating particles or elements have shapes that fit together to
substantially fill available space in two or three dimensions with few or no
gaps.” (Fact 3). The Appellants’ definition of “tessellating or self-
tessellating particles or elements” is consistent with this ordinary meaning of
tessellate (Fact 18). Therefore, we will rely on Appellants’ definition for
“tessellating or self-tessellating particles or elements.”
The ordinary meaning of the word “facilitate” includes “to make
easier, help bring about.” (Fact 17).
Therefore, a person having ordinary skill in the art would understand
the phrase “particles . . . with at least a portion shaped to facilitate
tesselation,” as called for in claim 1 and in light of the ordinary meanings of
the words used in the phrase, to refer to particles having a configuration that
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makes it easier to fit particles together so that there are no gaps between the
particles.
The ordinary meaning of the word polyhedron includes “a solid
formed by plane faces.” (Fact 21).
Claims 1 and 19 are silent as to the specific geometric shape of the
particles, other than that the particles have at least a portion shaped to
facilitate tessellation with other particles.
Nirei describes (1) that at least a portion of the fuel surface is covered
with granular substances 2 to be able to reduce the contact area between the
liquid phase and the gaseous phrase (Fact 14), and (2) that the granular
substances 2 overlap when the granular substances 2 consist of two or more
kinds of granular substances having different diameters 21, 22, wherein the
granular particles 22 having a smaller diameter are incorporated into the
spaces among the granular particles 21 having a larger diameter to be able to
further shut down the contact between the liquid phase and the gaseous
phase (Fact 16). Further, Nirei shows in figure 3, overlapping granular
substances. Therefore, we find that Nirei describes that the granular
substances (particles) 2 fit together to reduce the gaps between the granular
substances 2.
Further, Nirei describes that the granular substances are “solid three-
dimensional” polyhedral particles (Fact 15), but is silent as to the particular
shapes that comprise the polyhedral particles. However, a person having
ordinary skill in the art would understand that a polyhedral particle, a solid
formed by plane faces, has a configuration that makes it easier to fit particles
together so that there are no gaps between the particles. See Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (When a
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reference is silent about an asserted inherent characteristic, it must be clear
that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill.).
We find that since Nirei describes that the granular substances
(particles) 2 fit together to reduce the gaps between the granular substances
2, Nirei’s granular substances (particles) 2 are tessellating particles. We find
that since Nirei’s granular substances are polyhedral particles that have a
configuration making it easier to fit the particles together so that there are no
gaps between the particles, Nirei describes particles that facilitate
tessellation.
Therefore, Nirei describes particles having “at least a portion shaped
to facilitate tessellation with other particles” as called for in claim 1.
Since Nirei’s particles are floating in fuel (Fact 6) and since in Nirei,
“plural numbers of granular substances can change locations freely” (Fact
14), we find that Nirei’s particles by themselves would move around in the
fuel. When Nirei’s particles move around in the fuel, the particles, on their
own, would move into contact with each other to thereby fit together. Thus,
Nirei’s particles would be self-tessellating as called for in claim 19.
Since Nirei’s particles are three dimensional (Fact 15), Nirei’s
polyhedral particles are three-dimensionally tessellating particles as called
for in claims 6 and 27. Appellants’ argument that Nirei does not disclose
stellated particles does not demonstrate error in the rejection of claims 6 and
27, because claims 6 and 27 do not require stellated particles.
Therefore, we conclude that Appellants have not demonstrated that
the Examiner erred in rejecting claims 1, 6, 19 and 27 over Nirei.
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Appellants have likewise not demonstrated error in the Examiner’s rejection
of claims 2, 3, 10, 11 and 20, which fall with claims 1, 6 and 19,
respectively.

Regarding claim 5
Appellants contend that Nirei does not describe how the particles are
placed in the tank, and therefore does not describe adding the particles to the
tank through the fuel filling port as called for in claim 5 (App. Br. 6).
Appellants further contend that since Nirei is silent as to how the particles
are added to the tank, the particles could be added to the tank during
manufacturing (Reply Br. 3).
The Examiner found that one skilled in the art would readily
understand that in Nirei, the granular substances 2 would be added through
the fueling port of the fueling tank (Fact 8).
We agree with Appellants that (1) Nirei is silent as to how the
particles are added to the fuel tank, and (2) that Nirei’s particles could be
added to the tank during manufacturing (Reply Br. 3). As a result, it is not
clear how the particles in Nirei are added to the fuel tank. See id.
Therefore, it is speculative, at best, whether Nirei’s particles are added
to the tank through a fuel filling port, as found by the Examiner. See In re
Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer,
102 F.2d 212, 214 (CCPA 1939)) (“Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”). See
also In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (When relying on the
theory of inherency, the examiner has the initial burden of providing a basis
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in fact and/or technical reasoning to reasonably support the determination
that the allegedly inherent characteristic reasonably flows from the teachings
of the applied prior art.).
Accordingly, since the step of adding Nirei’s particles to the fuel tank
appears to be based upon speculation, we conclude that Appellants have
demonstrated that the Examiner erred in rejecting claim 5 over Nirei.

Regarding claim 9
Appellants contend that Nirei does not describe the particles
comprising a material having a low surface energy to reduce fuel wetting as
called for in claim 9 (Reply Br. 4, App. Br. 6).
The Appellants’ Specification describes that “[s]imilarly, particles 50
may be made of or coated with a low surface energy material that the liquid
fuel does not wet or degrade, such as a highly fluorinated polymer like
polytetrafluoroethylene (also known as Teflon).” (Fact 1).
Nirei describes that the granular substances 2 are spherical or
polyhedral particles produced using a material that is lighter than the fuel,
e.g., a solid three-dimensional fluorine resin or hollow metal (Fact 15).
The Examiner found that (1) a fluorine resin is an organic polymer
containing fluorine, (2) a typical form of a fluorine resin is
polytetrafluoroethylene, and (3) polytetrafluoroethylene is commercially
known as Teflon. (Fact 10). Appellants have not contested that finding.
Therefore, we will rely on the Examiner’s finding regarding a fluorine resin.
Since Appellants’ Specification describes that particles made out of
polytetrafluoroethylene have a low surface energy and since Nirei’s particles
are made out a fluorine resin, which typically is polytetrafluoroethylene, we
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find that Nirei describes particles comprising a material having a low surface
energy as called for in claim 9.
Therefore, we conclude that Appellants have not demonstrated that
the Examiner erred in rejecting claim 9 over Nirei.

Regarding claims 12, 13, 18, 31 and 32
Appellants contend that Appellants’ Specification distinguishes
inherent forces that may tend to attract adjacent particles from a
supplementary attractive force, and that Nirei does not describe particles
exhibiting a supplementary attractive force as called for in claims 12 and 31
(Reply Br. 4; App. Br. 6, 8).
Claims 12 and 31 call for, inter alia, at least some of the particles
exhibiting “a supplementary attractive force.”
The Examiner found that it is inherently known that two particles
adjacent each other exhibit an attractive force without having magnetic
characteristics, and that some of the particles exhibit more attractive forces
than others (Fact 9).
The Examiner is relying on the attractive force between the particles
as the supplementary attractive force as called for in claims 12 and 31 (Ans.
5, 9).
Appellants’ Specification describes that while floating particles have a
tendency to cluster and exhibit some small attractive force, likely related to
the surface tension of the liquid and/or surface adhesion of the wetted
floating elements, some or all of the particles may include one or more
properties or features to provide a supplemental attractive (or repulsive)
force to improve the efficiency of the barrier formation (Fact 2).
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Giving the claims their broadest reasonable interpretation consistent
with the specification, we find the particles called for in claims 12 and 31
must exhibit a supplemental attractive force in addition to the small
attractive force that is exhibited between adjacent particles, wherein the
small attractive force is a first force and the supplemental attractive force is a
second force.
Therefore, we find that the Examiner erred in relying on the attractive
force that is exhibited between adjacent particles as the supplementary
attractive force called for in claims 12 and 31.
Further, we find that Nirei is silent as to any such second force, that is,
a supplemental attractive force.
Therefore, we conclude that Appellants have demonstrated that the
Examiner erred in rejecting claims 12 and 31 over Nirei. Appellants have
likewise demonstrated error in the Examiner’s rejection of claims 13, 18 and
32, which depend from claims 12 and 31, respectively.

Regarding claims 7, 8, 28 and 29
Appellants contend that while Nirei describes particles as being
spherical or polyhedral, Nirei does not describe particles having a stellated
geometry as called for in claims 7, 8, 28 and 29 (App. Br. 6 and 7).
The Examiner found that since Nirei describes polyhedral particles,
Nirei’s particles have a stellated geometry (Fact 11).
The ordinary meaning of the word “stellate” includes “resembling a
star (as in shape)” (Fact 19), and the ordinary meaning of the word
“geometry” includes “configuration, surface shape, or an arrangement of
objects or parts that suggests geometric figures” (Fact 20). Therefore, in
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order for a particle to have a stellated geometry, the particle must have a
shape or configuration resembling a star.
Nirei describes that the granular substances 2 are spherical or
polyhedral particles (Fact 15). However, Nirei is silent as to the particular
polyhedral shape of the particles. See Continental Can Co., 948 F.2d at
1268.
Therefore, it is speculative, at best, whether Nirei’s particles have a
stellated geometry, as found by the Examiner. See In re Oelrich, 666 F.2d at
581. See also In re King, 801 F.2d at 1327.
Accordingly, since whether Nirei describes particles as having a
stellated geometry appears to be based upon speculation, we conclude that
Appellants have demonstrated that the Examiner erred in rejecting claims 7,
8, 28 and 29 over Nirei.

Regarding claim 30
Appellants contend that Nirei does not describe particles having two
different geometries as called for in claim 30 (Reply Br. 4, App. Br. 7).
The Examiner found that Nirei describes particles having different
geometries as called for in claim 30 since polyhedral particles include
different solids (Fact 12).
Nirei describes that the granular substances 2 consist of two or more
kinds of granular substances having different diameters 21, 22, wherein the
granular particles 22 having a smaller diameter are incorporated into the
spaces among the granular particles 21 having a larger diameter to be able to
further shut down the contact between the liquid phase and the gaseous
phase (Fact 16). See also fig. 3 of Nirei.
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The ordinary meaning of the word “geometry” includes
“configuration, surface shape, or an arrangement of objects or parts that
suggests geometric figures.” (Fact 20).
Therefore, in order for particles to have two different geometries, the
particles must have two different surface configurations or shapes.
We find that Nirei describes particles having different sizes (Fact 15),
but is silent as to whether the particles have different surface configurations
or shapes. See Continental Can Co., 948 F.2d at 1268.
Therefore, it is speculative, at best, whether Nirei’s particles have two
different geometries, as found by the Examiner. See In re Oelrich, 666 F.2d
at 581. See also In re King, 801 F.2d at 1327.
Accordingly, since whether Nirei describes the step of covering the
fuel surface with particles having two different geometries appears to be
based upon speculation, we conclude that Appellants have demonstrated that
the Examiner erred in rejecting claim 30 over Nirei.

CONCLUSIONS OF LAW
Appellants have not established that the Examiner erred in finding that
Nirei describes tessellating particles having at least a portion to facilitate
tessellation with other particles as called for in claim 1.
Appellants have established that the Examiner erred in finding that
Nirei describes adding the particles to the tank through the fuel filling port as
called for in claim 5.
Appellants have not established that the Examiner erred in finding that
Nirei describes three-dimensionally tessellating particles as called for in
claims 6 and 27.
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Appellants have not established that the Examiner erred in finding that
Nirei describes particles comprising a material having a low surface energy
to reduce fuel wetting as called for in claim 9.
Appellants have established that the Examiner erred in finding that
Nirei describes particles exhibiting a supplementary attractive force as called
for in claims 12 and 31.
Appellants have not established that the Examiner erred in finding that
Nirei describes self-tessellating particles as called for in claim 19.
Appellants have established that the Examiner erred in finding that
Nirei describes particles having a stellated geometry as called for in claims
7, 8, 28 and 29.
Appellants have established that the Examiner erred in finding that
Nirei describes particles having two different geometries as called for in
claim 30.

DECISION
The decision of the Examiner to reject claims 1-3, 6, 9-11, 19, 20 and
27 over Nirei is affirmed. The decision of the Examiner to reject claims 5,
7, 8, 12, 13, 18 and 28-32 over Nirei 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)(1)(iv) (2007).

AFFIRMED-IN-PART

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Application 11/160,672

21

mls

BROOKS KUSHMAN P.C./FGTL/DSB
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075