Ex Parte Tharp et al

Patent Trial and Appeal Board

Aug 16, 2016

13194401 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/194,401 07 /29/2011
23409 7590 08/18/2016
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Robert Daniel Tharp
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.
053196-9021-03 9826
EXAMINER
OMGBA, ESSAMA
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
08/18/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DANIEL THARP, MICHAEL JOSEPH HOLZ, and
THOMAS JOHN GRAHAM
Appeal2014-007730
Application 13/194,401
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Daniel Tharp et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134 from the Examiner's decision rejecting, under 35 U.S.C. § 103(a),
claims 1, 3-7, 21, and 23 -35 as unpatentable over Shaw (US 6,364,145 Bl,
iss. Apr. 2, 2002) and Feenick (US 4,638,919, iss. Jan. 27, 1987), and
claim 22 as unpatentable over Shaw, Feenick, and Dillon
(US 2005/0000589 Al, pub. Jan. 6, 2005). The Board has jurisdiction over
the appeal under 35 U.S.C. § 6(b).
1 The Appeal Brief identifies Bemis Manufacturing Company as the real
party in interest. Appeal Br. 3.
Appeal2014-007730
Application 13/194,401
SUMMARY OF DECISION
We AFFIRM and designate the affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
Claims 1, 21, and 29 are independent. Claim 1 illustrates the subject
matter on appeal, and it recites:
1. A method of assembling selected cap assemblies, the
method comprising the acts of:
providing a first outer cover adapted for manual
manipulation by a user, the first outer cover having a first
characteristic formed as a part of the first outer cover;
providing a second outer cover adapted for manual
manipulation by a user, the second outer cover having a second
characteristic different from the first characteristic, the second
characteristic being formed as a part of the second outer cover;
providing identical inner members, each having engaging
threads formed thereon;
coupling the first outer cover with a first one of the
identical inner members of a first cap assembly by snap
engagement; and
coupling the second outer cover with a second one of the
identical inner members of a second cap assembly by snap
engagement;
wherein the first characteristic includes at least one of a
color, a symbol, and printed indicia individualized for a first
particular application to which the first cap assembly mounts,
and wherein the second characteristic includes at least one of a
color, a symbol, and printed indicia individualized for a second
particular application to which the second cap assembly mounts.
Appeal Br. 13 (Claims App.).
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Appeal2014-007730
Application 13/194,401
ANALYSIS
A. Obviousness based on Shaw and F eenick
Claims 1 and 3-7
In rejecting independent claim 1, the Examiner finds Shaw discloses
most of the claimed method of assembling cap assemblies, including
providing first and second outer covers (fuel cap tops 1) coupled,
respectively, to first and second "identical" inner members (fuel cap
bodies 5) by snap engagement. Final Act. 2 (citing Shaw, Figs. 1-2). The
Examiner finds inner members 5 have threads 30 formed thereon. Id. The
Examiner finds, because Shaw's outer covers 1 are "identical," Shaw does
not disclose outer covers 1 having different characteristics, as required by
claim 1. Id.
The Examiner finds "it is known to provide different characteristics
on outer covers wherein the different characteristics are formed as part of the
outer covers as attested by Feenick." Id. (citing Feenick, l :9-19, Figs. 1-2).
In particular, the Examiner finds Feenick discloses "indices indicating the
type of fuel contained in a tank are provided on the outer covers." Id. The
Examiner determines it would have been obvious to provide different
characteristics on Shaw's outer covers 1, in light of Feenick, "to provide
desired correlated information." Id. at 2-3.
Appellants argue the Examiner errs in finding Shaw discloses
"identical" inner members 5. Appeal Br. 7. Appellants contend Shaw
discloses "different fuel cap bodies 5," one shown in Shaw's Figure 19 as
having post 19 for mounting umbrella vent valve 4, and another shown in
Shaw's Figure 21 as having flat top 27 for mounting reed valve 13. Id.
(citing Shaw, 3:38---67, 4:4--20). According to Appellants, Shaw provides
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Application 13/194,401
fuel caps having, alternately, umbrella valves or reed valves, so Shaw
teaches away from any modification of its fuel caps to provide "identical"
inner members as claimed. Id. (citing Shaw, 1:27--47). Appellant also
contends such a modification would render Shaw unsatisfactory for its
intended purpose of accommodating different types of valves. Id.
In answer, the Examiner maintains Shaw "discloses different cap
bodies, however the rejection is based on any one of the disclosed
embodiments of the fuel cap bodies." Ans. 4. The Examiner finds "the
outer covers [1] and mating inner members [5] of a particular embodiment
would be mass-produced for a given model of a vehicle ... thereby
providing a multitude of' outer covers 1 and inner members 5 "for that
particular model of vehicle, whether the embodiment is the umbrella valve
type or the one with a flat top for reed valves." Id. at 4--5.2
We are not persuaded of Examiner error in finding Shaw discloses
multiple "identical" inner members 5 to be attached to outer covers 1. We
agree with the Examiner that a person of ordinary skill in the art would
understand the two inner member structures 5 respectively shown in Shaw's
Figures 19 and 21 are both meant for mass production, leading to several
fuel cap assemblies incorporating the inner member 5 of Figure 19, and/or
several fuel cap assemblies incorporating the inner member 5 of Figure 21.
In this way, Shaw discloses several identical inner members 5 with umbrella
valves, and several identical inner members 5 with reed valves. 3
2 Appellants' Reply Brief does not address these findings.
3 Due to that disclosure, we need not address Appellants' argument that
Feenick does not cure the deficiency of Shaw in failing to disclose identical
inner members (Appeal Br. 7-8), because there is no deficiency to cure.
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Application 13/194,401
Appellants also argue Feenick discloses its fuel tank caps "must have"
oppositely threaded connections for, respectively, gasoline and diesel tanks.
Appeal Br. 7-8 (citing Feenick, Fig. 1-3, 1 :66-2:2, 2:22-28, 2:55-3 :2);
Reply Br. 2-3. In Appellants' view, Feenick thereby teaches away from
having the claimed "identical" inner threaded members, and modifying
Feenick to use identical inner threaded members would render Feenick
unsatisfactory for its intended purpose. Appeal Br. 8; Reply Br. 3.
Appellants similarly assert the Examiner's rejection is a "piece-meal ...
cherry-picking [of] certain disclosure[ s] in [Feenick] while ignoring contrary
teachings - which represents an improper hindsight reconstruction of'
claim 1. Appeal Br. 8. Appellants assert the Examiner fails to consider
claim 1 as a whole, in that the rejection "improperly limit[ s] the focus of the
obviousness analysis to a structural difference between the claimed
invention and Shaw (i.e., providing different characteristics on outer covers
formed as part of the outer cover)." Id. at 8-9. For the following reasons,
these arguments are not persuasive.
Feenick is directed to resolving the "ever increasing amount of
confusion whereby car owners and/or station attendants will inadvertantly
[sic] fill a diesel fuel tank with gasoline, rather than diesel fuel." Feenick,
1:11-15. Feenick states this problem arises "because the fuel inlet of a tank,
whether filled with gasoline or diesel fuel, are all similar in construction."
Id. at 1:15-17. Feenick proposes solving this problem with "a fuel tank for
diesel powered vehicles in which the fuel inlet to the fuel tank is provided
with an external thread which is constructed with a thread design of opposite
hand to that used in a fuel tank for gasoline powered vehicles." Id. at 1 :44--
49, 2:16-41. Feenick further proposes, "in conjunction with such thread
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Application 13/194,401
construction," providing differently-shaped (polygon or round) and
differently marked ("DIESEL" or "GAS") fuel caps to differentiate between
diesel and gasoline tanks. Id. at 1:49-52, 2:41--46, Figs. 1-2. In these ways,
"a fuel attendant will be alerted to the fact that the opposite rotation
necessary to effect the removal of the tank cap 25 alerts him that diesel fuel
is required," with further indication coming from "the odd configuration of
the tank cap" and the printed indicia. Id. at 2:47-54, Figs. 1-2.
We are not persuaded of Examiner error in determining it would have
been obvious from Feenick to modify Shaw's outer covers 1 so that some
outer covers 1 bear "DIESEL" indicia, while other outer covers 1 bear
"GAS" indicia, to notify users of the appropriate fuel for filling the tank. A
person of ordinary skill in the art would understand F eenick discloses three
alternative ways of notifying the user of the appropriate fuel for filling the
tank: opposite threading, different indicia, and different shape. A person of
ordinary skill in the art would further appreciate, from F eenick, that any one
of such methods, or any combination thereof, would be useful for the same
purpose. Appellants' argument that Feenick requires the use of opposite
threading is not supported by the Feenick disclosure.
Further, the "mere disclosure of alternative designs does not teach
away" and "just because better alternatives exist in the prior art does not
mean that an inferior combination is inapt for obviousness purposes." In re
Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted); see also
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (obviousness does not require
all of the features of a secondary reference to be bodily incorporated into a
primary reference). Thus, even ifFeenick expresses a preference for using
opposite threading, such does not negate the obviousness of using different
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Application 13/194,401
indicia, without using opposite threading. Additionally, regarding
Appellants' contention that the Examiner's proposed modification would
render Feenick unsatisfactory for its intended purpose (Appeal Br. 8; Reply
Br. 3), we note the Examiner proposes to modify Shaw, and not Feenick, to
include different characteristics on outer covers. See Final Act. 2-3.
Appellants argue for the patentability of claims 3-7 based solely on
their common dependency from claim 1. Appeal Br. 10. For the reasons
provided in connection with claim 1, we sustain the rejection of claims 1 and
3-7 as unpatentable over Shaw and Feenick. We denominate our affirmance
as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b),
because our analysis relies upon reasoning the Examiner did not express in
the rejection.
Claims 21 and 23-35
Appellants argue for the patentability of independent claims 21 and 29
based on the same arguments presented for claim 1, which have been
considered above. Appeal Br. 10-12. Appellants further argue for the
patentability of dependent claims 23-28 and 30-35 on the same bases. Id.
For the reasons provided in connection with claim 1, we sustain the rejection
of claims 21 and 23-35 as unpatentable over Shaw and Feenick, and
denominate our affirmance as a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b).
B. Obviousness based on Shaw, Feenick, and Dillon
Appellants argue for the patentability of claim 22 over Shaw, Feenick,
and Dillon based on the same arguments presented for claim 21, which have
been considered above. Appeal Br. 11 ("Claims 22-28 depend from
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Application 13/194,401
claim 21 and are allowable for at least the same and other independent
reasons."). For the reasons provided in connection with claim 21, we sustain
the rejection of claim 22 as unpatentable over Shaw, Feenick, and Dillon,
and denominate our affirmance as a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
DECISION
The Examiner's decision to reject claims 1, 3-7, and 21-35 is
affirmed.
For the reasons discussed above, we designate our affirmance as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
Section 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
37 C.F.R. § 41.50(b)(l}-(2). Further guidance on responding to a new
ground of rejection can be found in the Manual of Patent Examining
Procedure§ 1214.01.
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Application 13/194,401
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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