Ex Parte Sch¿tz

Patent Trial and Appeal Board

Mar 27, 2018

12460894 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/460,894 0712412009
23872 7590 03/27/2018
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
FIRST NAMED INVENTOR
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
74527RCE2 7575
EXAMINER
DO, HAILEY KYUNG AE
ART UNIT PAPER NUMBER
3753
MAILDATE DELIVERY MODE
03/27/2018 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 UDO SCHUTZ
Appeal 2016-001003
Application 12/460,894
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
SEAN P. O'HANLON, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Udo Schutz ("Appellant") appeal under 35 U.S.C. § 134(a) from a
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
An oral hearing was conducted on November 7, 2017, with Brian M.
Duncan, Esq., appearing on behalf of Appellant.
We AFFIRM.
Appeal2016-001003
Application 12/460,894
THE INVENTION
Appellant's invention is directed to a tapping valve with a plastic
valve housing. Claim 1, reproduced below, is illustrative:
1. A tapping valve with a plastic valve housing, for shipping
and storage tanks for liquids, wherein the shipping and storage
tanks are equipped with a plastic inner tank with a closable filling
socket and a drain socket for connecting the tapping valve, an
outer jacket of a metal cage or sheet metal, and a pallet-like
support frame of metal or an at least partially electrically
conductive plastic for supporting the inner tank, the tapping
valve comprising:
a plastic valve housing comprising an inlet socket;
a connecting flange, said connecting flange comprising a
threaded flange, the connecting flange being completely or
partially produced from electrically conductive plastic material,
said plastic valve housing being screwed on said connecting
flange via said inlet socket of the plastic valve housing, said
connecting flange being welded onto the drain socket of the inner
tank; and
a grounding conductor, wherein the tapping valve is
electrically grounded via said grounding conductor, said
grounding conductor electrically connecting the connecting
flange with the support frame or the outer jacket of the shipping
and storage tank.
REJECTIONS
The Examiner rejects:
(i) claims 1---6, 8, 9, 11-15, and 17-20 under 35 U.S.C. § 103(a) as
being unpatentable over Hamm (US 2003/0111465 Al, published June 19,
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Application 12/460,894
2003) in view ofButruille (US 7,762,528 B2, issued July 27, 2010), or,
according to the Examiner, vice versa;
(ii) claims 7 and 16 under 35 U.S.C. § 103(a) as being unpatentable
over Hamm and Butruille, and further in view of Farnworth (US 6,841,883
Bl, issued Jan. 11, 2005); and
(iii) claims 9 and 10 under 35 U.S.C. § 103(a) as being unpatentable
over Hamm in view of Schutz (US 2004/0124387 Al, published July 1,
2004) and Butruille.
ANALYSIS
Claims 1-6, 8, 9, 11-15, and 17-20--§ 103(a)--Hamm/Butruille
Appellant presents arguments under separate headings for each of the
rejected claims. Each claim will therefore be separately addressed.
Claim 1
The Examiner finds that Hamm discloses the subject matter of claim
1, with the exception of ( 1) a valve housing which is screwed on a
connecting flange via an inlet socket of the plastic valve housing, and (2) the
tapping valve being electrically grounded via a grounding conductor
connecting the connecting flange with an outer jacket of the shipping and
storage tank. Final Act. 4. In particular, with respect to certain of
Appellant's arguments addressed below, the Examiner finds that at least
elements 3 and 6 in Hamm correspond to the claimed connecting flange,
with portion 6 being completely or partially produced from electrically
conductive plastic material. Id.
The Examiner relies on Butruille as teaching a plastic valve housing 1
that is screwed onto a connecting flange of container 21, as seen in Figure 2,
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via an inlet socket included on the plastic valve housing. Final Act. 5. The
Examiner further finds that Butruille teaches electrically grounding its
tapping valve to an outer jacket of the shipping and storage tank, using a
grounding conductor extending between those components. Id. (referencing
Butruille 5:6-10).
The Examiner concludes that it would have been obvious to modify
the Hamm structure such that the plastic valve housing thereof (element 1)
includes an inlet socket such that the housing may be screwed onto
connecting flange (elements 3, 6) via the inlet socket, so as to make the
tapping valve separable from the shipping container. Final Act. 5. The
Examiner further concludes that it would have been obvious, in view of
Butruille, to electrically ground the tapping valve to an outer jacket of the
shipping and storage container of Hamm, so as to have a shorter connecting
distance to an electrical grounding source. Id.
Appellant initially argues that Hamm does not disclose an electrical
connection between a connecting flange and a support frame or an outer
jacket of a shipping and storage tank, and that the connecting flange is
welded onto a drain socket of an inner tank, and includes a threaded flange.
Appeal Br. 12. Appellant additionally provides a description of the Butruille
structure, and maintains that Butruille does not contain any disclosure that
would direct a person of ordinary skill in the art to produce a device having
the claimed electrical connection between a connecting flange and a support
frame or an outer jacket of a shipping and storage tank, wherein the
connecting flange is welded onto a drain socket of an inner tank, and
includes a threaded flange. Id.
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Application 12/460,894
These assertions do not apprise us of Examiner error, in that they do
not address the manner in which the Examiner proposes to modify Hamm in
view of Butruille, nor the articulated reason for doing so, but rather amount
to nothing more than individual attacks on the cited references. See In re
Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed.
Cir. 1986) (nonobviousness cannot be established by attacking references
individually where rejections are based on combinations of references).
Appellant, in its Reply Brief, maintains that Hamm includes no
teaching or suggestion that "the conductor element 6 electrically connects
flange 3 to a support frame or an outer jacket of the container." Reply Br. 2.
Appellant posits that "[a]bsent a teaching or suggestion of the flange 3 being
electrically conductive, it is unclear to Appellant as to how Hamm could
provide any teaching or suggestion as to the conductor element 6 electrically
connecting the plastic material of the flange 3 to an electrical discharge
device," as indicated in the rejection. Id.
These arguments fail to acknowledge that the Examiner's rejection is
based on a finding that the combination of elements 3 and 6 in Hamm is
regarded as being responsive to the claimed connecting flange that is at least
in part electrically conductive. Final Act. 4; Ans. 21. Accordingly,
Appellant does not address the rejection as presented (which relies on
Butruille as disclosing a grounding conductor between a storage tank and its
outer shipping jacket (Final Act. 5; Butruille 5:3-12)). Further, Appellant
makes no argument as to any alleged impropriety in the Examiner's position
that elements 3 and 6 in Hamm collectively comprise the claimed connecting
flange that is, in part, electrically conductive.
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Appellant further argues that the disclosure in Butruille is in conflict
with the teachings of Hamm, in that the Butruille structure includes an
additional opening in its drainage fixture, whereas Hamm discloses that it is
advantageous to provide a discharging conductor element on a container
without the need for any additional openings in the container wall or the
drainage fixture. Reply Br. 3, citing Butruille, Fig. 2; Hamm, para. 7. The
argument does not point to Examiner error, in that the Examiner's proposed
modification to Hamm does not give rise to any additional openings being
required. Appellant's argument appears to be in the nature of arguing that a
bodily incorporation of an entire structure in Butruille would require an
additional opening, but the rejection is not based on any such modification.
Finally, Appellant argues that Butruille does not disclose electrically
connecting a connecting flange to an electrically conductive component of a
pallet container, but rather teaches electrically connecting a valve stem to the
container. Reply Br. 4. The Examiner, however, employs the teaching of
Hamm as providing an electrical connection between a connecting flange
and another conductive structure, with the teaching in Butruille that the
conductive structure may be an electrically conductive component of the
pallet container, in the proposed modification to Hamm. Accordingly, the
argument does not apprise us of Examiner error.
The rejection of claim 1 is sustained.
Claim 2
Appellant maintains that "Hamm only discloses a conductor element 6
that is arranged on [the] flange side of a drainage fixture," and that, "[ t ]here
is no connecting flange in Hamm that includes a threaded flange" as
claimed. Appeal Br. 13. These points fail to take into account that the
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Application 12/460,894
Examiner regards elements 3 and 6 collectively as making up the connecting
flange and, as to the latter, that Hamm is not relied on as disclosing a
threaded flange, rather the rejection is based on modifying Hamm to provide
a threaded connection.
Appellant additionally points to alleged shortcomings in Butruille in
terms of that structure not meeting all claim limitations. Appeal Br. 14. The
arguments fail to take into account the Examiner's proposed modification to
Hamm in view of Butruille that forms the basis of the rejection.
Appellant's arguments in the Reply Brief also do not take into account
nor address the Examiner's position that elements 3 and 6 in Hamm make up
the claimed connector flange. Reply Br. 4--5.
The rejection of claim 2 is sustained.
Claim 3
Appellant argues that "neither the discharge cable 19 of Hamm nor
the connector 12 of Butruille electrically connects a connecting flange ...
with a support or an outer jacket of a shipping and storage tank." Appeal Br.
14--15. The argument does not apprise us of Examiner error, in that it
addresses the references individually, and does not address the combination,
which does provide the claimed features.
The rejection of claim 3 is sustained.
Claim 4
Appellant makes the same argument for claim 4 as is made for claim
3. The argument does not apprise us of error.
The rejection of claim 4 is sustained.
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Claim 5
Appellant again argues that "Hamm only discloses a conductor
element that is arranged on a flange side of a drainage fixture." Appeal Br.
16. Once again, this fails to address the Examiner's finding that the
conductor element comprises a component of the connecting flange.
Based on the above argument, Appellant maintains that there is no
disclosure in Hamm of a "connecting flange ... made of plastic with an
electrically conductive additive and a remaining part that is formed
completely of plastic." Id. The Examiner finds that the conductor element
6, which, in the Examiner's findings, is a component of the connecting
flange, is made of a plastic with an electrically conductive additive, with the
remaining part of the flange being made completely of plastic. Final Act. 5.
As such, Appellant does not apprise us of Examiner error.
The rejection of claim 5 is sustained.
Claim 6
Appellant's arguments directed to claim 6 (Appeal Br. 17-18) are
essentially the same as those presented for claim 5, which, as discussed
above, are not indicative of error in the Examiner's rejection.
The rejection of claim 6 is sustained.
Claim 8
Appellant argues that neither Hamm nor Butruille discloses a
connecting flange having a threaded flange that is adjacent to a drain socket,
wherein the connecting flange is electrically connected to a shipping and
storage container. Appeal Br. 18-19. Appellant presents statements
directed to what each of Hamm and Butruille independently discloses, but
fails to address the Examiner's proposed modification that relies on a
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combination of the teachings of the references. Accordingly, the arguments
do not apprise us of error.
Appellant further argues that Hamm includes no mention of a
threaded flange and arranging a grounding conductor at a position adjacent
to a threaded flange end. Reply Br. 5. Appellant notes that Butruille
discloses a connector 12 that is connected to a grounding cable, but that the
connector is located away from a threaded flange on container 21. Id. The
Examiner's proposed modification, however, is to modify Hamm in view of
Butruille to have a threaded flange, and to employ the existing conductive
member 6, which the Examiner regards as being part of the connecting
flange in Hamm, as the element to which the grounding cable is connected.
That Butruille uses a different component, i.e., the valve stem, positioned
away from the threaded flange, is thus of no moment in the Examiner's
rejection.
The rejection of claim 8 is sustained.
Claim 9
Independent claim 9 is generally similar in scope to dependent claim
8, which depends from independent claim 1, and Appellant's arguments
directed to claim 9 are essentially the same as those presented for claims 1
and 8. Appeal Br. 19--22; Reply Br. 6-7. For the same reasons as noted
above with respect to claims 1 and 8, the arguments do not apprise us of
Examiner error.
The rejection of claim 9 is sustained.
Claim 11
Appellant argues that "Hamm clearly discloses a conductor element 6
that does not have any fastening tongue located adjacent to one or more of a
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plurality of threads of a connecting flange," as claimed. Appeal Br. 23.
This argument does not take into account the Examiner's proposed
modification to include a threaded connection on the Hamm device, and thus
is not responsive to the rejection as presented on appeal. Appellant's
separate and individual attack on the teachings of Butruille (id.) also is not
responsive to the rejection before us, and fails to take into account the
proposed modification to Hamm in view of Butruille.
To the extent that any change in verbiage present in the Reply Brief is
intended to present a new argument or arguments, we note that the same are
not timely, in that they are not in response to additional points made in the
Examiner's Answer. Reply Br. 7-8.
The rejection of claim 11 is sustained.
Claim 12
Appellant makes no arguments specific to the limitation presented in
claim 12. Appeal Br. 23-24. Accordingly, Appellant appears to be relying
on the arguments advanced for claim 9, from which claim 12 depends. As
noted above, the arguments do not apprise us of error in the rejection.
The rejection of claim 12 is sustained.
Claim 13
Appellant raises the same arguments for claim 13 as for claim 12.
Appeal Br. 24--25. The arguments do not apprise us of error.
The rejection of claim 13 is sustained.
Claim 14
Appellant raises essentially the same arguments for claim 14 as are
raised with respect to claim 5, which includes basically the same limitations.
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Appeal Br. 25-26. For the reasons discussed above with respect to claim 5,
the arguments do not apprise us of error.
The rejection of claim 14 is sustained.
Claim 15
Appellant raises essentially the same arguments for claim 15 as are
raised with respect to claim 6, which includes basically the same limitations.
Appeal Br. 26-27. For the reasons discussed above with respect to claim 6,
the arguments do not apprise us of error.
The rejection of claim 15 is sustained.
Claim 17
Appellant presents a number of arguments directed to independent
claim 1 7 that are similar in nature to arguments presented with respect to
similar limitations found in other claims discussed above. Appeal Br. 27-
29. The arguments are seen as attacks on the teachings of the references
individually, and not directed to the proposed modification of the Hamm
device in view of the teachings of Butruille. Accordingly, the arguments do
not apprise us of error in the rejection.
The rejection of claim 17 is sustained.
Claim 18
Appellant's arguments for claim 18 mainly describe various features
found in the Hamm and Butruille references, and amount essentially to an
attack on the teachings of the references individually, and do not address the
modification to Hamm proposed by the Examiner. Appeal Br. 29-31.
Appellant also repeats arguments to the effect that a portion of Hamm's
connecting flange is not conductive, in that Hamm teaches a separate
conductor element 6. Id. at 30. Appellant again does not address the
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propriety of the Examiner regarding conductor element 6 as a component of
the connecting flange. These arguments do not apprise us of Examiner
error.
The rejection of claim 18 is sustained.
Claim 19
Appellant's arguments for claim 19 center on the position that
conductor element 6 is not part of the connecting flange, a position that is
contrary to that taken by the Examiner. Appeal Br. 32. Appellant again
does not challenge the propriety of the Examiner's position.
The rejection of claim 19 is sustained.
Claim 20
Appellant's arguments for claim 20, in part, share the same premise as
those presented for claim 19. Appeal Br. 32-35. For the reasons noted
above, the arguments do not apprise us of Examiner error. Appellant also
argues that the grounding wire in Butruille is connected to a valve stem and
not to a connecting flange, which argument was made in connection with the
rejection of claim 1, discussed above. For the same reasons appearing there,
the argument is not indicative of Examiner error.
The rejection of claim 20 is sustained.
Claims 7 and 16--§ 103(a)-Hamm/Butruille/Farnworth
Aside from statements that amount to nothing more than individual
attacks on the teachings of each of the references, Appellant argues only that
Farnworth is not directed to an electrically conductive flange, and, as such,
constitutes nonanalogous art. Appeal Br. 36-37. The Examiner responds
that Farnworth is reasonably pertinent to a problem faced by Appellant, i.e.,
how to produce an electrically conductive polymer, and is thus properly
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considered in the combination of teachings. Ans. 31-32. Appellant does not
contest this position advanced by the Examiner. See Reply Br. 12-13.
Claims 9 and 10--§ 103 (a)-Hamm/Schutz/Butruille
Appellant advances many of the same arguments raised with respect
to claims 1 and 9 discussed above. Appeal Br. 38--43. For the reasons
noted, the arguments do not apprise us of Examiner error. Appellant also
presents arguments that attack the Schutz reference individually, and that do
not address the Examiner's application of the Schutz teachings in
combination with those of Hamm and Butruille. Id. Once again, because
the arguments do not address the rejection as articulated by the Examiner,
the arguments are not indicative of Examiner error.
DECISION
The rejections of claims 1-20 under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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