Ex Parte Aitken et alDownload PDFPatent Trial and Appeal BoardJun 30, 201613596172 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/596,172 08/28/2012 Brian T. Aitken 28866 7590 07/01/2016 MACMILLAN, SOBANSKI & TODD, LLC - FORD ONE MARITIME PLAZA - FIFTH FLOOR 720 WATER STREET TOLEDO, OH 43604 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. 83237945 8582 EXAMINER HUSON, GREGORYL ART UNIT PAPER NUMBER 3749 MAILDATE DELIVERY MODE 07/01/2016 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 BRIANT. AITKEN and PAUL CHRETIEN Appeal2014-003986 Application 13/596, 172 Technology Center 3700 Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and MARK A. GEIER, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Brian T. Aitken and Paul Chretien (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C. § 103(a) claims 1-16 as unpatentable over Moore (US 5,071,018; iss. Dec. 10, 1991). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal2014-003986 Application 13/596, 172 CLAIMED SUBJECT MATTER The claimed subject matter relates to "a drain slot configuration for draining liquids away from the opening for receiving a refueling nozzle." Spec. 1:16-17, Figs. 6, 7. Claims 1, 7, and 13 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. Vehicle apparatus comprising: a fuel-filler housing component for mounting to a vehicle body, wherein the housing component has a central opening and at least one on-center vertical plumb feature; an insert for mounting to a fuel filler pipe of a fuel tank so that the insert is disposed in the central opening, the insert including an annular mouth with a hole for receiving a fuel transfer nozzle, wherein the annular mouth includes a drain slot for draining liquid away from the hole, wherein the drain slot is substantially aligned with the on-center vertical plumb feature, wherein the mounting of the insert to the fuel filler pipe determines a rotational alignment of the drain slot within the central opening, and \vherein the drain slot has a teardrop profile substantially free of visible straight lines pointing toward the on-center vertical plumb feature. ANALYSIS Independent claim 1 recites a vehicle apparatus that includes, in relevant part, "a drain slot for draining liquid away from the hole," "wherein the drain slot has a teardrop profile substantially free of visible straight lines pointing toward the on-center vertical plumb feature." Appeal Br. 8, Claims App. The Examiner finds that Moore discloses "a drain slot ( 40; see FIGS. 3 and 4) for draining liquid away from the hole." Final Act. 3; Ans. 3. Regarding the drain slot having a teardrop profile, the Examiner finds: [T]he chosen shape (teardrop profile) of the claimed drain slot [is] merely an aesthetic design feature relating to ornamentation 2 Appeal2014-003986 Application 13/596, 172 only. As will be readily appreciated by one of ordinary skill in the art, devices with differently shaped drain slots (for example, the prior art drain slot of Moore or the admitted prior art) will have the exact same mechanical function (the draining ofliquid). Ans. 10; see also id. at 3, 7-9; Final Act. 3--4, 6. Appellants contend: Apertures 40 [of Moore] do not drain liquid. As disclosed in col. 5, lines 12-28 [of Moore], apertures 40 are provided for allowing vapors from bypass passage 28 to exit to the ambient. Even without this explicit contrary description of the real functioning of aperture 40, it would be clear that the aperture would not drain liquid away from the hole beneath it. Liquid appearing at aperture 40 would instead fall toward and into the hole. Appeal Br. 3; see also Reply Br. 2-3. Appellants further contend that "[ t ]he drain slot is not ornamental." Appeal Br. 5. According to Appellants, "[t]he claimed drain slot with a teardrop profile clearly serves a mechanical function, which is to drain liquid away from the hole while masking any small misalignment between the drain hole and the on-center vertical plumb feature or the six o'clock position." Id. at 4; see also Reply Br. 2 ("A structural limitation is recited which performs two non-ornamental functions (i.e., draining liquid and masking misalignment), and is entitled to be considered in establishing patentability."). Appellants' arguments are persuasive. Moore discloses: Air from the ambient may enter vapor bypass passage 28 and vapors from the fuel flow passage may exit vapor bypass passage 28 by means of an opening 38 between the inner and outer housing members (around the flanged opening) or through apertures 40 shown in FIG. 4 . ... Apertures [ 40], according to this embodiment, provide additional exits for the vapors. When the tank is being fueled, vapors from within the tank may exit around the filler nozzle 12 and out past flanged opening 16 or 3 Appeal2014-003986 Application 13/596, 172 through apertures 40. Moore, 5:16-28 (italics added). We agree with Appellants that "[i]tems 40 in Moore are apertures for passing air or vapors." Reply Br. 2. The Examiner does not provide a sufficient factual basis to support a determination that apertures 40 of Moore "drain liquid away from hole (opening) 16." Final Act. 3; Ans. 3. Even assuming arguendo that aperture (drain slot) 40 of Moore "is capable of' draining liquid away from hole (opening) 16, as the Examiner posits (see Final Act. 5; Ans. 6), the Examiner fails to establish that modifying aperture (drain slot) 40 of Moore to have a "teardrop profile" is merely a "design choice." Initially, we note that Appellants' Specification expressly defines the term "teardrop" to mean "any profile of a drain slot with a curved bottom and upper side edges that are substantially devoid of straight lines pointing radially outward from the fuel insert." Spec. 5 :21-23, Figs. 6, 7. \\There an explicit definition is provided by the applicant for a term, [the] definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999). The Specification further describes that "each teardrop profile avoids straight line cues [misalignment] while still meeting the requirements of providing an effective drain path for liquids." Spec. 5 :27-28, Figs. 6, 7. In this case, the drain slot having a "teardrop profile [being] substantially free of visible straight lines pointing toward the on-center vertical plumb feature" constitutes positively recited structure in claim 1 because it specifies the arrangement/alignment of the drain slot relative to the on-center vertical plumb feature (i.e., the drain slot must be substantially 4 Appeal2014-003986 Application 13/596, 172 free of visible straight lines pointing toward the on-center vertical plumb feature). See Reply Br. 2. We disagree with the Examiner that the "chosen [drain slot] shape (teardrop profile) is an ornamental design choice." Ans. 10. Jurisprudence when used in this manner amounts to a per se rule of obviousness, and such rules are disdained by our reviewing court. See In re Ochiai, 71F.3d1565, 1572 (Fed. Cir. 1995). Per se rules used in this manner short circuit the Graham inquiry. These rejections, instead of being based on reasoning with rational underpinnings, are based on this per se rule. Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection, the Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Here, the Examiner acknowledges that drain slots can have various profiles (shapes). See Ans. 10. The Examiner provides no factual evidence to show why a skilled artisan would have chosen, from a variety of drain slot profiles (shapes), to make drain slot (aperture) 40 of Moore a teardrop profile (shape) as opposed to any other profile (shape). In other words, the Examiner's statement that "the chosen shape for the claimed drain slot (teardrop profile) is merely an aesthetic design feature" (see Ans. 7) is not supported in the record by underlying factual evidence, and thus, cannot properly serve as a basis for concluding that it would have been obvious to a person of ordinary skill in the art to specifically make drain slot (aperture) 40 of Moore a teardrop profile (shape) as opposed to any other profile (shape). Moreover, as pointed out by Appellants, "the drain slot as recited in 5 Appeal2014-003986 Application 13/596, 172 [claim 1] is substantially aligned with the on-center vertical plumb feature. Aperture 40 [of Moore] is not on-center." Appeal Br. 4; see also Moore, Fig. 4. The Examiner fails to provide any evidence or technical reasoning to establish that modifying drain slot (aperture) 40 of Moore merely by "design choice," as the Examiner proposes, would necessarily result in drain slot (aperture) 40 of Moore being "substantially free of visible straight lines pointing toward the on-center vertical plumb feature" (i.e., any misalignment between the drain slot and the on-center vertical plumb feature would be masked). See Appeal Br. 4--5. Consequently, based on the foregoing reasons, the Examiner fails to establish by a preponderance of the evidence that a modified Moore device is obvious over the apparatus of claim 1. Independent claims 7 and 13 call for devices including limitations to a "teardrop profile" similar to those discussed for claim 1. See Appeal Br. 9, 10, Claims App. The Examiner relies on the same unsupported findings and conclusions for claims 7 and 13 as discussed above in claim 1. See Final Act. 3--4; see also Ans. 2-3. Thus, the Examiner's findings and conclusions with respect to Moore are deficient for claims 7 and 13 as well. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of independent claims 1, 7, and 13 and their respective dependent claims 2---6, 8-12, and 14--16 as unpatentable over Moore. DECISION We REVERSE the decision of the Examiner to reject claims 1-16 as unpatentable over Moore. REVERSED 6 Copy with citationCopy as parenthetical citation