Ex parte DALHART et al.

Board of Patent Appeals and Interferences

Feb 25, 1998

07986521 (B.P.A.I. Feb. 25, 1998)

Application for patent filed December 7, 1992.1
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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journal and (2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MARK D. DALHART, PAUL B. ANDERSON
and DAVID A. DAMICO
________________
Appeal No. 97-2244
Application 07/986,5211
________________
ON BRIEF
________________
Before FRANKFORT, McQUADE and NASE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal, filed in response to the final rejection dated
February 15, 1996 (Paper No. 17), involves rejected claims 28,
29, 31 and 51. Claims 27 and 34 stand allowed. Claims 30 and 53
through 56, the only other claims pending in the application,
have been indicated as containing allowable subject matter but
Appeal No. 97-2244
Application 07/986,521
Our review of the claims on appeal indicates that the2
following terms lack a proper antecedent basis (line numbers
correspond to those appearing in the appendix to the brief):
“said shut off means” (claim 51, line 17); “the vapor return
passage” (claim 51, line 25); “the venting passage” (claim 51,
line 26); and “the conical portion” (claim 31, line 5). These
informalities are deserving of correction in any further
prosecution before the examiner.
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stand objected to as depending from a rejected base claim.
The subject matter on appeal relates to “vacuum assisted,
vapor recovery fuel nozzles” (specification, page 1). Copies of
claims 28, 29, 31 and 51 appear in the appendix attached to the
appellants’ brief (Paper No. 26). 2
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Monticup, Jr. et al. (Monticup) 5,004,023 Apr. 2, 1991
Fink, Jr. et al. (Fink) 5,197,523 Mar. 30, 1993
(filed Aug. 5, 1991)
The claims on appeal stand rejected as follows:
a) 28, 29 and 51 under 35 U.S.C. § 102(e) as being
anticipated by Fink; and
b) claim 31 under 35 U.S.C. § 103(a) as being unpatentable
over Fink in view of Monticup.
Reference is made to the appellants’ brief (Paper No. 26)
Appeal No. 97-2244
Application 07/986,521
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and to the examiner’s answer (Paper No. 27) for the respective
positions of the appellants and the examiner with regard to the
propriety of these rejections.
Turning first to the standing 35 U.S.C. § 102(e) rejection,
anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
Independent claim 51 recites a vapor recovery, automatic
shut off, fuel dispensing nozzle comprising, inter alia, a nozzle
body having a hand grip portion, a spout, vapor return passageway
means extending between an inlet end of the nozzle body through
the hand grip portion to a discharge end of the spout, a vapor
valve interposed in the vapor return passageway means, and an
adapter disposed in a bore in the nozzle body. Claim 51 also
requires that “the adapter, in combination with said nozzle body
defines portions of said vapor return passageway means leading to
the vapor valve and from the vapor valve to an entrance to the
vapor return passageway means in said hand grip portion.”
Appeal No. 97-2244
Application 07/986,521
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It is not disputed that Fink discloses a vapor recovery,
automatic shut off, fuel dispensing nozzle comprising, inter
alia, a nozzle body having a hand grip portion, a spout, vapor
return passageway means extending between an inlet end of the
nozzle body through the hand grip portion to a discharge end of
the spout, and a vapor valve interposed in the vapor return
passageway means. The appellants do contend, however, that
Fink’s nozzle does not include an adapter as recited in claim 51.
The examiner submits, on the other hand, that the structure
disposed within the circular housing 56 of Fink’s nozzle
constitutes such an adapter and refers to the Fink specification
at column 4, lines 35 through 49 for a discussion of vapor flow
through the nozzle.
Fink’s disclosure of the portions of the vapor return
passageway means leading to vapor valve 140 and from this valve
to the entrance of the vapor return passageway means in the hand
grip portion is very short on detail and reasonably can be
characterized as being sketchy and ambiguous. It is well
established that an anticipation rejection cannot be predicated
on an ambiguous reference. In re Turlay, 304 F.2d 893, 899, 134
Appeal No. 97-2244
Application 07/986,521
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USPQ 355, 360 (CCPA 1962). In short, the relevant disclosure in
the Fink reference is too ambiguous to support a finding that the
elements disposed within the circular housing 56 embody an
adapter which in combination with the nozzle body defines
portions of the vapor return passageway means leading to the
vapor valve and from the vapor valve to an entrance to the vapor
return passageway means in the hand grip portion as recited in
claim 51. Indeed and to the contrary, the little relevant
disclosure that Fink does make would seem to indicate that the
nozzle has no such “adapter.” In this light, we shall not
sustain the standing 35 U.S.C. § 102(e) rejection of independent
claim 51, or of claims 28 and 29 which depend therefrom, as being
anticipated by Fink.
In addition to not teaching a nozzle having an adapter as
recited in claim 51, Fink would not have suggested such a nozzle
to one of ordinary skill in the art. Since Monticup, cited by
the examiner for its disclosure of a fuel nozzle having a spout-
mounting breakaway nut means, does not cure these deficiencies in
Fink, we shall not sustain the standing 35 U.S.C. § 103(a)
rejection of claim 31 as being unpatentable over Fink in view of
Monticup.
Appeal No. 97-2244
Application 07/986,521
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The decision of the examiner is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2244
Application 07/986,521
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