Ex parte YAP

Board of Patent Appeals and Interferences

Sep 16, 1998

08138456 (B.P.A.I. Sep. 16, 1998)

Application for patent filed October 15, 1993. 1
1
Paper No. 16
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ANTONIO DELEON YAP
______________
Appeal No. 97-2725
Application 08/138,4561
_______________
ON BRIEF
_______________
Before MCCANDLISH, Senior Administrative Patent Judge, and
COHEN and ABRAMS, Administrative Patent Judges.
MCCANDLISH, Senior Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 9 and 22. The only other claims
Appeal No. 97-2725
Application 08/138,456
Contrary to the examiner’s statement on page 3 of the answer, the copy2
of claim 1 in the appendix to appellant’s brief is incorrect in that it
recites that the inlet cover “obtrudes” the conduit, rather than
reciting that the cover obturates the conduit.
2
still pending in the application have been withdrawn from
consideration as not being directed to the elected invention.
The invention disclosed in appellant’s application
relates to an indicator plate structure 10 which is adopted to
be placed in the ground adjacent to the inlet I of a petroleum
storage tank T. The indicator plate structure comprises a
molded plate member 20 (defined as a molded primary mass in
the appealed claims) and a plurality of exposed indicator
elements 30 embedded in the plate member and arranged in a
coded pattern for identifying the particular petroleum product
to be stored in the associated tank. In appealed claim 1, the
indicator structure is defined as a “storage tank label,” and
in claim 22, the only other independent claim on appeal, the
indicator structure is defined as a “content identifier.”
A copy of the appealed claims is appended to
appellant’s brief.2
Appeal No. 97-2725
Application 08/138,456
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The following references are relied upon by the
examiner as evidence of obviousness in support of his
rejections under
35 U.S.C. § 103:
Matvey 3,758,999 Sep. 18, 1973
usuki et al. (Susuki) 3,908,055 Sep. 23, 1975
Ptashinski 4,915,055 Apr. 10, 1990
Turner 5,056,454 Oct. 15, 1991
Burns 5,420,797 May 30, 1995
Claims 1 through 4 and 22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Susuki in view of Turner and
Burns, claims 5 through 8 stand rejected under 35 U.S.C. § 103
as being unpatentable over Susuki in view of Turner, Burns and
Matvey, and claim 9 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Susuki in view of Turner, Burns and
Ptashinski. Claims 1 through 9 and 22 additionally stand
rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which appellant regards as
his invention. Reference is made to the examiner’s answer for
details of these rejections.
In traversing the final rejection of claim 1 under the
second paragraph of § 112, appellant unequivocally urges on
Appeal No. 97-2725
Application 08/138,456
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page 10 of the brief that the “label or indicator is recited
in combination with the inlet cover and the storage tank.”
Appellant also contends that the scope of the preamble of
claim 1 is consistent with the scope of body of the claim in
the sense that both the preamble and the body of the claim are
directed to the foregoing combination. Given this argument,
appellant is bound by this interpretation of the claim.
Indeed, the only reasonable interpretation which can placed on
the recitation that the label is “placed adjacent to an inlet
. . .” (emphasis added) in the preamble of the claim and
further that the primary mass is “placed adjacent an inlet
cover . . .” (emphasis added) in the body of the claim is that
claim 1 is directed to the combination of the label with the
inlet cover and the storage tank.
In his answer (see page 10), the examiner agrees with
the foregoing interpretation of claim 1 and expressly
withdraws his earlier criticism concerning the lack of
consistency between the preamble and the body of claim 1. The
only remaining criticisms of claim 1 concern the recitation of
“the surface” in lines 9 and 10 and the recitation of “a
conduit” in line 11 of the claim.
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Application 08/138,456
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As correctly pointed out by the examiner, three
different surfaces are recited in the portion of claim 1
preceding the recitation of “the surface” in lines 9 and 10.
However, it is apparent from the claim language, particularly
the context in which “the surface” is used, that “the surface”
refers back to the vehicle support surface and not to any
surfaces of the primary mass. Accordingly, the lack of strict
antecedent basis in this instance does not render the claim
indefinite.
With regard to the recitation of the term “a conduit”
in line 11 of claim 1, the examiner has confused
indefiniteness with breadth. The recitation of “a conduit” in
line 11 is broad enough to read on one of the conduits recited
in line 2 or, alternatively, a conduit that is separate from
the conduits recited in line 2.
Given the foregoing analysis of the claim language, claim
1 is definite to comply with the requirements of § 112, second
paragraph, in that it defines the metes and bounds of the
invention with a reasonable degree of precision. See In re
Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
Accordingly, we cannot not sustain the examiner’s rejection of
claims 1 through 9 under the second paragraph of § 112.
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Application 08/138,456
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With regard to the rejection of claim 22 under the second
paragraph of § 112, we agree with the examiner that the
preamble of this claim is directed to the “content identifier”
per se in that the subject matter claimed as appellant’s
invention is recited to be “[a] content identifier,” not the
combination of the content identifier with other elements,
such as the storage tank or the storage tank inlet. However,
the examiner’s cropped quotation of the claim language as set
forth on page 4 of the answer conveys the erroneous impression
that the body of the claim is directed to the combination of
the content identifier and the storage tank. In this regard,
claim 22 does not positively recite that the storage tank is
located adjacent to the indicator means. Instead, the claim
merely calls for an indicator means for “unequivocally [sic,
uniquely?] identifying the specific type of petroleum product
to be delivered to an adjacently located storage tank.” This
limitation does not positively define the tank as being in
combination with the content identifier.
Accordingly, we cannot agree with the examiner that the
scope of the body of claim 22 is inconsistent with the scope
of the preamble of the claim. As compared with claim 1, claim
22 is directed to the content identifier per se, not the
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Application 08/138,456
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combination of the identifier with the storage tank. This
interpretation of the claim language is supported by the
recitation in line 6 that the primary mass is merely
“attachable” (emphasis added), not actually attached, adjacent
to the inlet cover.
As for the examiner’s additional ground supporting his
rejection of claim 22 under the second paragraph of § 112 (see
page 5 of the answer), his remarks concerning the placement of
the indicators in the primary mass confuses indefiniteness
with breadth. Obviously, the pattern for identifying a
particular petroleum product is arbitrarily selected. However,
the claim is not rendered indefinite simply because it does
not define that particular pattern.
Based on the foregoing analysis of the claim language, we
conclude that claim 22 is also definite in that it defines the
metes and bounds of the invention with a reasonable degree of
precision. See Venezia, supra. Accordingly, we cannot not
sustain the examiner’s rejection of claim 22 under the second
paragraph of § 112.
With regard to the examiner’s § 103 rejections of claims
1 through 9, the applied references are devoid of any
suggestion of placing Susuki’s road-embedded block-shaped sign
Appeal No. 97-2725
Application 08/138,456
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adjacent to an inlet cover which obturates the conduit leading
to a petroleum storage tank. In the final analysis, the only
way the examiner could have arrived at his conclusion of
obviousness with regard to the combination claims 1 through 9
is through hindsight based on appellant’s teachings. Hindsight
analysis, however, is clearly improper. In re Deminski, 796
F.2d 436, 443, 230 USPQ 313, 316 (Fed. Cir. 1986). As a
consequence, we also cannot sustain the examiner’s § 103
rejections of claims 1 through 9.
We will, however, sustain the examiner’s § 103 rejection
of claim 22. Unlike claim 1, claim 22 is not directed to the
combination of the content identifier with other elements such
as the removable inlet cover; nor does claim 22 require the
primary mass to actually be placed or attached adjacent to the
inlet cover. Instead, claim 22, merely requires the primary
mass to be “attachable” (emphasis added) to the inlet cover as
discussed supra. When this language is given its broadest
reasonable interpretation (See In re Zletz, 893 F.2d 319, 321-
22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)), it merely requires
the primary mass to be capable of being attached adjacent to
the inlet cover. As such, this claim limitation does not
Appeal No. 97-2725
Application 08/138,456
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distinguish from Susuki inasmuch as the block-shaped sign
shown in Figure 2 of the Susuki drawings is also inherently
capable of being attached adjacent to an inlet cover
particularly since the patentee discloses that the block-
shaped sign is intended to be embedded in a vehicle-supporting
road surface.
The fact that Susuki may not expressly disclose the
attachment of his block- shaped sign at such a location is of
no moment as long as it is inherently capable of being
attached at such a location. See, inter alia, Standard Havens
Prods. Inc.
v. Gencor Indus. Inc., 953 F.2d 1360, 1369, 212 USPQ2d 1321,
1328 (Fed. Cir. 1991).
With further regard to claim 22, appellant does not
appear to challenge the examiner’s findings on page 5 of the
answer that Susuki’s block-shaped sign is in the form of an
indicator comprising a primary molded mass 11 (see column 2,
lines 3-4 of the Susuki specification) having a top surface.
Appellant also does not appear to challenge the examiner’s
findings on page 5 of the answer that Susuki has visible
indicator means in the form of elements 10 embedded in the
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Application 08/138,456
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primary mass and having a top wall. Appellant also does not
take issue with the examiner’s implicit findings that the top
surface of the block-shaped sign is defined by the top
surfaces of the primary mass and the indicator means in the
position shown in Figure 2 of the patent drawings. Instead,
the only reference to claim 22 in the argument section
concerning the § 103 rejections is found on page 20 of the
brief where the only argument regarding claim 22 itself, as
distinguished from claim 1 (which, as noted supra, is of
distinctly different scope), is that the content identifier
“is mounted adjacent to the inlet conduit cover and that it
supports vehicular traffic and is wear resistant.” These
arguments are without merit.
In the first place, claim 22 merely recites that the
primary mass is “attachable” adjacent to the inlet cover. It
does not, however, recite that the identifier “is mounted
adjacent to the inlet conduit cover” as argued by appellant.
Claim 22 also does not recite that the identifier is “wear
resistant.” Since these features have not been claimed in
claim 22, they may not be relied upon to support patentability
of that claim. See In re Self, 671 f.2d 1344, 1348, 231 USPQ
Appeal No. 97-2725
Application 08/138,456
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1, 5 (CCPA 1982) and In re Richards, 187 F.2d 643, 645, 89
USPQ 64, 66 (CCPA 1951).
Furthermore, contrary to the implications of appellant’s
arguments on page 20 of the brief, Susuki’s block-shaped sign
is not only capable of supporting vehicular traffic but is
obviously intended to support such traffic for the embodiment
shown in Figure 2 of the patent drawings. Also, it is apparent
from Figure 2 of Susuki’s patent drawings that the identifier
elements 10 maintain an indicating capability after the top
surface of the block has worn away. It is also apparent that
the illustrated number of elements 10 in Figure 2 of Susuki’s
patent is inherently capable of arbitrarily identifying a
specific type of petroleum product, which is all that is
required to meet this limitation in claim 22. Standard Havens
Prods., Inc. v. Gencor Indus., Inc., 953 F.2d at 1369, 212
USPQ2d at 1328 (Fed. Cir. 1991).
Finally, the intended use statement in the preamble of
claim 22 is not germane to the patentability of the identifier
itself. See Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861,
868, 228 USPQ 90, 94 (Fed. Cir. 1985), In re Casey, 370 F.2d
576, 580, 152 USPQ 235, 238 (CCPA 1967) and In re Lemin, 326
Appeal No. 97-2725
Application 08/138,456
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F.2d 437, 440, 140 USPQ 273, 276 (CCPA 1964). In any event,
Susuki’s block-shaped sign clearly is inherently capable of
being used to identify a specific type of petroleum product in
the manner stated in the preamble of claim 22.
Based on the foregoing analysis, we are satisfied that
this Susuki expressly or inherently discloses all of the
limitations in claim 22 to thus anticipate the subject matter
of claim 22. See RCA Corp. v. Applied Digital Data Sys.,
Inc.,730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
The rejection of this claim under § 103 is nonetheless proper
since anticipation is the epitome of obviousness. See In re
May, 574 F.2d 1082, 1099,
197 USPQ 601, 607 (CCPA 1978).
In summary, the examiner’s decision rejecting claims 1
through 9 and 22 under the second paragraph of § 112 is
reversed, the examiner’s decision rejecting claims 1 though 9
under § 103 is also reversed, and the examiner’s decision
rejecting claim 22 under § 103 is affirmed.
AFFIRMED-IN-PART
Appeal No. 97-2725
Application 08/138,456
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HARRISON E. MCCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
IRWIN CHARLES COHEN ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )

Bernhard Kreten
77 Cadillac Drive
Suite 245
Sacramento, CA 95825
Appeal No. 97-2725
Application 08/138,456
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MCC/cam