Laurent Budzyk et al.

Patent Trials and Appeals Board

Aug 9, 2019

14548099 - (D) (P.T.A.B. Aug. 9, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/548,099 11/19/2014 Laurent BUDZYK 443353US41DIV 6930
22850 7590 08/09/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
ARNETT, NICOLAS ALLEN
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
08/09/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LAURENT BUDZYK and PAUL ELONG
____________

Appeal 2018-008093
Application 14/548,099
Technology Center 3700
_______________

Before WILLIAM A. CAPP, LISA M. GUIJT, and BRENT M. DOUGAL,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, and 4–20 on the ground of nonstatutory double
patenting as being unpatentable over claims 1–13 of Budzyk (US 8,919,393

1 INERGY AUTOMOTIVE SYSTEMS RESEARCH (“Appellant”), the
applicant as provided for under 37 C.F.R. § 1.46, is also identified as the real
party in interest. Br. 2.
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B2; issued Dec. 30, 2014) and Downing (US 3,187,936; issued June 8,
1965).2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1, 15, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A fitting for a filling opening of a fluid tank,
comprising:
a tubular main body having a first end for connection with
said tank and a second end to receive a spout, said main body
equipped with a magnet substantially spanning the
circumference of said main body to authorize a flow in said
spout, and tubular coupling section as said second end,
wherein said tubular coupling section is to detachably
couple to a bottle having a fluid outlet and an air intake,
a first ventilation conduit in fluid communication with a
volume of gas present at said first end, and
a second ventilation conduit,
wherein, when in use, an end of the second ventilation
conduit is present in said tubular main body on a tank side of said
magnet, said second ventilation conduit being in fluid
communication with said volume of gas present at said first end,
and
wherein at least one of the first and second ventilation
conduits passes on an outside of the tubular main body such that,
when in use, said air intake receives air and/or vapor from said
at least one conduit passing on the outside of the tubular main
body.

2 Appeal is taken from the Final Office Action dated April 19, 2017, as
supplemented by the Advisory Action dated Sept. 27, 2017. The Examiner
determines that claim 3 recites allowable subject matter, “if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims.” Final Act. 4.
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ANALYSIS
Independent claim 1
Regarding independent claim 1, the Examiner finds that claims 1–13
of Budzyk disclose all of the limitations of claims 1, 2, and 4–20, except for
“at least the second ventilation conduit passing on the outside of the tubular
main body,” as claimed. Final Act. 4. The Examiner relies on Downing for
teaching “a fitting for a fill opening of a fuel tank [5] . . . comprising a
ventilation conduit ([i.e., second conduit or vent tube] 11) which passes on
the outside of a tubular main body ([i.e., first conduit or filler pipe] 7) so that
the ventilation conduit does not interfere with the flow of fuel.” Id. The
Examiner reasons that it would have been obvious “to have formed the
fitting of [Downing] such that at least the second ventilation conduit passes
on the outside of the tubular main body as taught by Downing such that the
ventilation conduit does not interfere with liquid flow in the main body.” Id.
Claim 1 of Budzyk, which is claim 1 of the present application as
originally filed and prior to the December 14, 2016 Amendment amending
claim 1 of the present application into its current form, is reproduced below,
with additional claim language appearing in Budzyk’s claim 1 and omitted
from claim 1 of the present application underlined for emphasis.
A fitting for the filling opening of a fluid tank, comprising:
a tubular main body having a first end for connection with
said tank and a second end adapted to receive a spout, said main
body being adapted to be equipped with a magnet substantially
spanning the circumference of said main body for authorizing3 a
flow in said spout, and a tubular coupling section at said second
end,

3 Cf. Claim 1 of the present application: “to authorize.”
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wherein said tubular coupling section is adapted to
detachably couple to a bottle having a fluid outlet and an air
intake,
wherein said fitting comprises a chamber between said
second end and said magnet,
wherein, when in use, an end of a first ventilation conduit
is present in said chamber, said first ventilation conduit being in
fluid communication with a volume of gas present at said first
end for connection with said tank4, such that in the coupled
position of said bottle said air intake is located in said chamber
and said fluid outlet flow out in the direction of said first end,
and
wherein, when in use, an end of a5 second ventilation
conduit is present in said tubular main body at said first end for
connection with said tank6, said second ventilation conduit being
in fluid communication with said volume of gas present at said
first end for connection with said tank7.

Claim 1 of the present application also recites an additional limitation that is
not recited in Budzyk’s claims 1–13: “wherein at least one of the first and
second ventilation conduits passes on an outside of the tubular main body
such that, when in use, said air intake receives air and/or vapor from said at
least one conduit passing on the outside of the tubular main body.”
First, Appellant argues that independent claim 1 is “patentably
distinct” from Budzyk’s claim 1, in view of Downing. Br. 7. In particular,
Appellant submits that, unlike claim 1, Budzyk requires (i) a chamber
between the second end of the main tubular body and the magnet (i.e.,

4 Cf. Claim 1 of the present application: “said first end.”
5 Cf. Claim 1 of the present application, which separately recites, “a second
ventilation conduit.”
6 Cf. Claim 1 of the present application: “on a tank side of said magnet.”
7 Cf. Claim 1 of the present application: “said first end.”
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chamber 307 (see, e.g., Budzyk, Fig. 4; Spec. Fig. 4); (ii) that, in use, the end
of the first ventilation conduit is present in the chamber; and (iii) that, in use,
in the coupled position of the bottle, the air intake of the bottle is located in
the chamber. Id. at 6.
The Examiner responds that “the rejection of the claims on the ground
of non-statutory obvious-type double patenting is proper even though
claim 1 of Budzyk includes additional limitation[s] which are not recited in
claims 1, 15 and 18.” Ans. 3.
The judicial doctrine of obviousness-type double patenting precludes
an applicant from extending the term of protection for a patented invention
by claiming an obvious variant of the patented invention in a subsequent
patent application. See In re Longi, 759 F.2d 887 892 (Fed. Cir. 1985).
Generally, an obviousness-type double patenting analysis entails
two steps. First, as a matter of law, a court construes the claim
in the earlier patent and the claim in the later patent and
determines the differences. Second, the court determines
whether the differences in subject matter between the two claims
render the claims patentably distinct. A later claim that is not
patentably distinct from an earlier claim in a commonly owned
patent is invalid for obvious-type double patenting.
Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001)
(internal citations and footnote omitted).
First, the recitation in Budzyk’s claim 1 of a chamber between the
second end of the main tubular body and the magnet, which is a difference
between Budzyk’s claim 1 and claim 1 of the present application, does not
render the claims patentably distinct, because claim 1 of the present
invention defines a tubular main body with first and second ends, and a
magnet substantially spanning the circumference of the main body, wherein
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such a construction inherently defines a chamber (or portion of the tubular
main body) between the second end of the tubular main body and the
magnet.
Second, Budzyk’s claim 1 recites that, in use, the end of the first
ventilation conduit is present in the chamber (i.e., the chamber discussed
supra), which is another difference between Budzyk’s claim 1 and claim 1
of the present application. Claim 1 of the present application is silent with
respect to the specific positioning of the end of the first ventilation conduit
relative to the tubular main body, except for requiring that (i) the first
ventilation conduit is in fluid communication with a volume of gas present at
the first end of the tubular main body (a limitation also recited in claim 1 of
Budzyk); and (ii) at least one of the first and second ventilation conduits
pass outside the tubular main body. Although Budzyk’s claim 1 is narrower
than claim 1 of the present application in this regard, claim 1 of the present
application does not exclude positioning the end of the first conduit in the
chamber, for example, as first ventilation conduit 306 is depicted as present
in chamber 307 in Figure 5 supra. In other words, first ventilation conduit
306 is depicted in Figure 5 as present in chamber 307 and also in fluid
communication with a volume of gas present at the first end of the tubular
main body (i.e., the tank-side end 302), as well as passing outside of the
tubular main body, as required by claim 1 of the present application.
Although claim 1 of the present application does not require the end
of the first ventilation conduit to be present in the chamber between the
second end of the main tubular body and the magnet, omitting an element
and its function in a combination where the remaining elements perform the
same functions as before involves only routine skill in the art. In re Karlson,
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311 F.2d 581, 584 (CCPA 1963). Thus, we are not persuaded by
Appellant’s argument that the recitation in Budzyk’s claim 1 of a first
ventilation conduit present in the chamber results in claim 1 of the pending
application being patentably distinct from Budzyk’s claim 1.
Finally, Budzyk’s claim 1 requires that, in use, in the coupled position
of the bottle, the air intake of the bottle is located in the chamber. Indeed,
both claim 1 of the pending application and Budzyk’s claim 1 recite “a bottle
having . . . an air intake.” Notably, the only disclosure in the Specification
regarding the location of the air intake of the bottle is that “in the coupled
position of the bottle the air intake is located in the chamber.” Spec. 3:21–
4:1 (emphasis added). Again, although claim 1 of the present application
does not require the bottle’s air intake to be located in the chamber between
the second end of the first ventilation conduit to be present in the chamber
between the second end of the main tubular body and the magnet, omitting
an element and its function in a combination where the remaining elements
perform the same functions as before involves only routine skill in the art.
Appellant also argues that “Downing is silent as to a bottle or an air
intake of the bottle, and does not disclose that the vent tube 11 of Downing
provides air/vapor to a bottle,” as required by claim 1. Br. 7. Appellant
submit that absent such a teaching, the Examiner’s rationale for modifying
Budzyk lacks factual underpinning. Id. at 7–8.
The Examiner correctly responds that Budzyk, not Downing, is relied
on for disclosing “ventilation conduits . . . in fluid communication with the
air intake of the bottle and the gas space of the tank during use.”8 Ans. 3.

8 Notably, Appellant’s Specification does not disclose or describe how the
air intake of the bottle receives air and/or vapor from a conduit passing on
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Accordingly, we sustain the Examiner’s rejection of independent
claim 1.
Independent claims 15 and 18, and all dependent claims
Appellant presents the same arguments for the patentability of
claims 15 and 18 as presented for claim 1 supra, and therefore, for
essentially the same reasons as stated supra, we sustain the Examiner’s
rejection of claims 15 and 18. Br. 5–8. Appellant does not present any
arguments for the patentability of dependent claims 2, 4–14, 16, 17, 19,
and 20 and, therefore, the Examiner’s rejection thereof is sustained. See 37
C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims). .
DECISION
The Examiner’s rejection of claims 1, 2, and 4–20 on the ground of
nonstatutory double patenting is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

the outside of the tubular main body, such that we assume that the receipt of
air and/or vapor to the air intake bottle from a conduit passing on the outside
of the tubular main body is within the knowledge of one of ordinary skill in
the art.