Ex Parte Schutz

Board of Patent Appeals and Interferences

Jan 30, 2009

10664181 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte UDO SCHÜTZ
__________

Appeal 2008-3538
Application 10/664,181
Technology Center 3700
__________

Decided: January 30, 2009
__________

Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ and
FRANCISCO C. PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2008-3538
Application 10/664,181

STATEMENT OF CASE
The following claims are representative.
1. A transport and storage container for liquids comprising:
- a pallet-shaped support frame of metal or of an electrically
conducting plastic material;

- an exchangeable inner container of plastic material supported
on the support frame and having four sidewalls, a bottom, and a
top;

wherein the inner container further comprises an upper closable fill socket
and a lower outlet socket with a tapping fixture or an upper closable tapping
socket;

- an outer jacket surrounding the inner container and being
comprised of grade bars of metal or sheet metal;

wherein the inner container is produced by extrusion blow molding and has
a single-layer or multi-layer body;

wherein the inner container has integral electrically conducting sections
comprised of an electrically conducting plastic material, wherein the
electrically conducting sections form electrical connections between
an inner surface and an outer surface of the inner container;

wherein the electrically conducting sections are strips having a thickness
matching a wall thickness of the inner container;

wherein the electrically conducting strips extend across at least one of the
sidewalls and/or the corner areas between the sidewalls of the inner
container.

7. The container according to claim 1, wherein the inner container
comprises a permanently antistatic outer layer.
2
Appeal 2008-3538
Application 10/664,181

Cited References
Schütz US 6,050,437 Apr. 18, 2000
Lucke US 2002/0110658 A1 Aug. 15, 2002
BASF AG DE 7341620 (DE '620) Mar. 07, 1974
(translation)

Grounds of Rejection
1. Claims 1, 3 and 5 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schütz in view of DE ‘620.
2. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schütz in view of DE ‘620 and Lucke.

ISSUE
The Examiner finds that it would have been obvious to one of
ordinary skill in the art at the time of the invention to replace the inner
container and conduction strip of Schütz with the integrally formed
conduction strips within the sidewall of the inner container as taught by DE
'620 so as to reduce labor costs. (Ans. 5).
Appellant contends that there is no teaching in Schütz that the
electrically conductive strips should have a thickness that is equal to the total
thickness of the wall from the outer side to the inner side. (Reply Br. 3.)
The issue is whether the cited prior art teaches the electrically
conductive strips should have a thickness that is equal to the total thickness
of the wall from the outer side to the inner side.

3

Appeal 2008-3538
Application 10/664,181

FINDINGS OF FACT
1. Schütz discloses a pallet-shaped support frame of metal or of an
electrically conducting plastic material (col, 2, ll. 47-50);
2. According to the Examiner, Schütz discloses an exchangeable inner
container of plastic material (polyethylene) supported on the support frame
and having four sidewalls, a bottom, and a top (col. 2, ll. 40-47); wherein the
inner container further comprises an upper closable fill socket (Fig. 1, item
5) and a lower outlet socket with a tapping fixture or an upper closable
tapping socket (Fig. 1, item 7). (Ans. 4.)
3. The Examiner finds that Schütz discloses an outer jacket surrounding
the inner container and being comprised of grade bars of metal or sheet
metal (Fig. 1, item 9); wherein the inner container is a multi-layer body,
comprising an exchangeable inner container of synthetic material and a
lattice-like sheathing; wherein the inner container has integral electrically
conducting sections comprised of an electrically conducting plastic material,
wherein said conducting section extends across at least one of the sidewalls
(Figs. 1 and 3, item 4). (Ans. 4-5.) The sheathing is wound around or pulled
over the inner container. (Schütz, col. 3, ll. 1-5.)
4. The Examiner acknowledges that Schütz fails to teach the electrically
conducting plastic material with conducting sections being integral and also
forming connections between an inner and outer surface of the inner
container, and the conducting strips being the same thickness as the inner
wall of the container 5. (Ans. 5.)
5. The Examiner finds that DE '620 teaches a tank with electrically
conducting plastic material wherein conducting strips are integral to the tank

4

Appeal 2008-3538
Application 10/664,181

sidewalls, and form connections from the inside to the outside of the edge
zones of the tank walls so as to transfer internally generated static charge
(see translated Abstract), wherein the conducting material is molded into the
tank; thus, reducing extraneous labor costs associated with connecting a
separate conducting strip, as well as simplifying the design. (Ans. 5.)
However, DE’620 does not teach a strip having a thickness matching a wall
thickness of the inner container.
6. The conductive grating of ‘620 is at a distance of 0.2mm to a maximum
of 2mm from the inner surface of the container and embedded at a maximum
depth of 0.25 mm. (Translation 5, 6, and 7.)
7. The Examiner concludes that:
[I]t would have been obvious to one of ordinary skill in the art
at the time of the invention to replace the inner container and
separate, all-encompassing conduction strip of Schutz with
integrally formed conduction strips within the sidewalls of the
inner container as taught by DE 7341620 so as to reduce labor
costs, as well as provide design simplification. In addition,
with respect to the conducting strip thickness, it would have
been obvious to one having ordinary skill in the art at the time
the invention was made to configure the conducting strip
thickness as such since it has been held that discovering an
optimum value of a result-effective variable involves only
routine skill in the art.

(Ans. 5-6.)

5

Appeal 2008-3538
Application 10/664,181

8. Figures 1 and 3 of the present Specification are reproduced below.

Fig. 3.
Fig. 1 is a perspective illustration of a transport and storage container. Fig. 3
shows a partial cross section of an inner container of six-layer configuration.
Element 24 depicts the electrically conducting strips matching a wall
thickness of the inner container.

6

Appeal 2008-3538
Application 10/664,181

9. Shutz, Figure 1 is reproduced below.

Schütz, Fig. 1 shows a perspective view of a storage container.

PRINCIPLES OF LAW
When determining whether a claim is obvious, an examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995) (emphasis added). Thus, “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d
981, 985 (CCPA 1974)). Moreover, as the Supreme Court recently stated,
“there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” KSR Int'l v. Teleflex Inc.,

7

Appeal 2008-3538
Application 10/664,181

127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (emphasis added)).

ANALYSIS
Appellant contends that “the type and manner of the electrical
grounding of DE 7341620 and the type and manner of grounding in the
presently claimed invention are completely different.” (App. Br. 8.)
Appellant argues that a sidewall construction having electrically conducting
strips having a thickness matching a wall thickness of the inner container is
not taught or suggested by the combination of references cited by the
Examiner. (App. Br. 8-9.)
The Examiner argues that the lattice sheathing of Schütz provides an
electrically conducting section or strip. (Ans. 7.) However, the sheathing is
wound around or pulled over the inner container and is not a thickness of the
inner container. (Schütz, col. 3, ll. 1-5.) (FF 3.) The Examiner
acknowledges that Schütz fails to teach the electrically conducting plastic
material with conducting sections being integral and also forming
connections between an inner and outer surface of the inner container, and
the conducting strips being the same thickness as the inner wall of the
container 5. (FF4.) The Examiner finds that DE '620 teaches a tank with
electrically conducting plastic material wherein conducting strips are
integral to the tank sidewalls. (FF6.) The conductive grating of ‘620 is at a
distance of 0.2mm to a maximum of 2mm from the inner surface and
embedded at a maximum depth of 0.25 mm. (FF 5.) The Examiner has not
indicated and we do not find either prior reference discloses electrically

8

Appeal 2008-3538
Application 10/664,181

conducting strips having a thickness matching a wall thickness of the inner
container as shown in Specification, Figure 3, element 24 and, thus, as
claimed.
The Examiner has not provided evidence in the prior art of each
element claimed and the obviousness rejection is reversed.
Moreover, with respect to the rejection of claim 7, we do not find that
Lucke overcomes the deficiency of the primary combination of references
and the rejection of claim 7 is reversed.

CONCLUSION OF LAW
In view of the above, we find the cited references in combination fail
to teach the electrically conductive strips and should have a thickness that is
equal to the total thickness of the wall, as claimed.
The obviousness rejections are reversed.

SUMMARY

The obviousness rejections are 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).

REVERSED

clj
FRIEDRICH KUEFFNER
SUITE 910
317 MADISON AVENUE
NEW YORK, NY 10017

9