Ex Parte Green

Patent Trial and Appeal Board

Jun 30, 2014

11271378 (P.T.A.B. Jun. 30, 2014)

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.
11/271,378 11/10/2005 Michael Philip Green 8755.007.US0000 8700
77176 7590 07/01/2014
Novak Druce Connolly Bove + Quigg LLP
1875 Eye Street, NW
Eleventh Floor
WASHINGTON, DC 20006
EXAMINER
ELOSHWAY, NIKI MARINA
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
07/01/2014 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 MICHAEL PHILIP GREEN
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Appeal 2012-005789
Application 11/271,378
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Michael Philip Green (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims
6, 7 and 9 as unpatentable over Fujita (US 4,231,240; iss. Nov. 4, 1980) and
Kerr (US 3,320,783; iss. May 23, 1967); (2) claims 6, 7 and 9 as
unpatentable over Fujita and Greenwald (US 5,586,670; iss. Dec. 24, 1996);
and (3) claim 8 as unpatentable over Fujita, Kerr and Abe
(US 2004/0079756 A1; pub. Apr. 29, 2004). Claims 1-5 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was
conducted on June 19, 2014.
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates to watercraft of all types and
having the ability to lock the fuel cap to the fuel filler receiver to prevent the
possibility of theft of a vessel’s gasoline or diesel fuel.” Spec. 11; fig. 2.
Claim 6, the sole independent claim, is representative of the claimed
subject matter and recites:
6. A fuel cap comprising:
a) a round flat surface cover in combination with an
engaging means configured to engage into a fuel filler receiver
for securing the fuel cap to the fuel filler receiver;
b) the round flat surface cover defining an exterior face, the
exterior face defining a uniquely shaped downwardly directed
aperture arranged in a pattern on the exterior face of the round
flat surface cover of the fuel cap which uniquely shaped
aperture will only accept the same downwardly directed pattern

1 Appellant’s Specification does not provide line or paragraph numbering.
Accordingly, reference is made to the page number.
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of protrusions of a key for removing or installing the fuel cap to
the fuel filler receiver; and,
c) a key having a downward directed pattern of protrusions
to be only accepted by the uniquely shaped aperture.

ANALYSIS

Obviousness over Fujita and Kerr - Claims 6, 7 and 9
Independent claim 6 calls for a fuel cap including a round flat surface
cover defining an exterior face, the exterior face defining a uniquely shaped
downwardly directed aperture arranged in a pattern on the exterior face of
the round flat surface cover of the fuel cap. App. Br. 11, Clms. App’x. The
Examiner initially found that Fujita discloses a fuel cap including “a round
flat surface cover at 1.” Ans. 6. Then, the Examiner went on to find that
“the round flat surface cover is comprised of elements 1 and 6.” Id. The
Examiner further found that “[t]he round flat surface cover defines an
exterior face, which is the outer surface of element 1 and element 6,
excluding flap 2. The exterior face defines a uniquely shaped (as it receives
a unique key) downwardly directed (shown in figures 3-5) aperture in
element 6.” Id. The Examiner also found that
the limitation “round flat surface cover” has
multiple possible interpretations. The limitation
can be interpreted as a cover for a round flat
surface, wherein the cover is capable of covering a
round flat surface having an opening. The
limitation could also be interpreted as a surface
cover with a round and flat area, wherein the cover
has a round and flat portion which can be the upper
surface of element 6 of Fujita et al. Finally, the
limitation can be interpreted as the cover having a
central portion, excluding the leaf extensions,
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which is round and substantially flat, such as
element 1 of Fujita et al.
Ans. 6.
Appellant contends that the Examiner has failed to meet the initial
burden of establishing a case of prima facie obviousness. See Br. 3-5.
Specifically, Appellant contends that (1) “the Examiner is not free to
recharacterize [Appellant’s] claims but rather the claims themselves are clear
and unambiguous”; and (2) “[i]f the Examiner can merely redefine
[Appellant’s] invention, there is no point in using the claimed terms to
define the invention. Rather, the invention is whatever the Examiner wants
it to be.” Id. at 4.
Appellant’s argument is persuasive. At the outset, claim 6
structurally requires a round flat surface cover. App. Br. 11, Clms. App’x.
As such, we disagree with the Examiner that the limitation “a round flat
surface cover” has multiple possible interpretations.2 Ans. 6. The Examiner
has failed to clearly establish in the record what particular component(s) of
Fujita the Examiner considers to constitute the round flat surface cover (i.e.,
cover 1, cover 1 and cylinder lock 6, or cover 1 and lock 6 without flap 2).
See Id. Without a clear identification of where each limitation of the
rejected claims is shown in the prior art reference, we cannot provide any
meaningful appellate review nor can we conclude that Appellant has had a
fair opportunity to react to the thrust of the Examiner’s rejection. In re Jung,
637 F. 3d 1356, 1363 (Fed. Cir. 2011) (discussing 35 U.S.C. § 132).
Further, the Examiner considers both the outer/exterior surface of cover 1

2 The Examiner did not reject the phrase “a round flat surface cover” under
35 U.S.C. § 112, second paragraph, as indefinite. See Final Rej., generally;
Ans., generally; Br. 4-5.
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and the upper face of cylinder lock 6 of Fujita to constitute the “exterior
face” of the round flat surface cover. Ans. 6. As far as we understand, the
Examiner is proposing to modify the slot 6b of the upper face of cylinder
lock 6 of Fujita to include the downwardly directed slots 44, as taught by
Kerr. See Ans. 4, 6; See also Kerr, fig. 6. However, as discussed above, the
Examiner also considers the outer/exterior surface of cover 1 of Fujita to
constitute the “exterior face” of the round flat surface cover. Id. at 6. The
Examiner has not established how the outer/exterior surface of cover 1 of
Fujita would be modified by the teachings of Kerr. See Ans., generally.
Consequently, the Examiner has failed to establish by a preponderance of
the evidence that the combined teachings of Fujita and Kerr would disclose a
fuel cap including a round flat surface cover defining an exterior face, the
exterior face defining a uniquely shaped downwardly directed aperture
arranged in a pattern on the exterior face of the round flat surface cover of
the fuel cap, as required by claim 6.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 6 and its respective dependent claims 7 and 9 as
unpatentable over Fujita and Kerr cannot be sustained.
Obviousness over Fujita and Greenwald - Claims 6, 7 and 9
The Examiner’s rejection of claims 6, 7 and 9 as unpatentable over
Fujita and Greenwald relies on the same erroneous findings discussed above
with respect to the disclosure of Fujita. See Ans. 4-6. Without a clear
identification of where each limitation of the rejected claims is shown in
Fujita, we cannot provide any meaningful appellate review nor can we
conclude that Appellant has had a fair opportunity to react to the thrust of
the Examiner’s rejection. In addition, the Examiner relied on Greenwald for
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disclosing that “it is known to provide a cap with key slot having a pattern
on the exterior surface of the cover.” Id. at 5. The Examiner further found
that the key lock of Greenwald “is considered uniquely shaped because, it
has a size and shape designed for a particular key and Greenwald also
specifically states that the closure ‘requires a key having a prescribed end
structure so as to permit only such key to release said system’ in col. 3 lines
15-17.” Ans. 7; see also id. at 5.
In this case, although we appreciate that Greenwald discloses that the
key has a prescribed end structure such that only that particular key releases
the security system of Greenwald, the Examiner has failed to establish that
the prescribed end structure of Greenwald’s key is “a downward directed
pattern of protrusions,” as required by claim 6.3 See Ans. 4-5, 7; See also
Br. 6.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 6 and its respective dependent claims 7 and 9 as
unpatentable over Fujita and Greenwald cannot be sustained.
Obviousness over Fujita, Kerr and Abe - Claim 8
Claim 8 depends directly from claim 6. The Examiner’s rejection of
claim 8 as unpatentable over Fujita, Kerr and Abe (see Ans. 5) is based on
the same unsupported findings discussed above with respect to independent

3 Fujita discloses that (1) “the inside 1b [of depending collar 1a of cover 1],
FIGS. 3 and 5(A), being perforated for insertion of a key, not shown” (Fujita,
col 2, ll. 32-34 (emphasis added)); and (2) “[c]ylinder lock 6 is formed with
a key insertion hole 6b. See, FIG 1 and FIG. 5 (B). The lock 6 is provided
as conventional with a plurality, preferably six in number, of disc tumblers
100, FIG. 5 (B), corresponding to the key ways of the key, not shown”
(Fujita, col 2, ll. 52-56 (emphasis added)). Fujita is silent as to the shape of
the key.
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claim 6. The Examiner’s application of Abe does not remedy the
deficiencies of Fujita and Kerr. Accordingly, for similar reasons as
discussed above, we do not sustain the Examiner’s rejection of claim 8 as
unpatentable over Fujita, Kerr and Abe.
DECISION
We REVERSE the decision of the Examiner to reject claims 6-9.

REVERSED

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