Ex parte Hall et al.

Board of Patent Appeals and Interferences

Jun 29, 2000

08348744 (B.P.A.I. Jun. 29, 2000)

1
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(2) is not binding precedent of the Board.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. 60
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM Y. HALL and WILLIAM A. HALL
_____________
Appeal No. 1998-1357
Application No. 08/348,744
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT, and GONZALES, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 89 through 156, which are all of the
claims pending in this application. Claims 1 through 88 have
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2
been canceled.
We AFFIRM-IN-PART.
BACKGROUND
The appellants' invention relates to an above-ground
storage tank for storing a flammable liquid and a method of
making a storage tank for above-ground storage of a flammable
liquid. An understanding of the invention can be derived from
a reading of exemplary claims 93, 108, 118, 123, 126, 127, 128
and 152, which appear in the appendix to the appellants'
brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Searle 1,024,527 Apr. 30,
1912
Pritchard 1,864,931
Jun. 28, 1932
Kettlewell 2,254,964 Sep. 2,
1941
Mapes 2,402,175 Jun. 18,
1946
Johnston 2,863,297 Dec.
9, 1958
Setzekorn et al. 2,963,191 Dec. 6,
Appeal No. 1998-1357
Application No. 08/348,744
This rejection based on undue multiplicity has not been1
expressly restated by the examiner in the final rejection
(Paper No. 54, mailed April 15, 1997), or in his answer (Paper
No. 57, mailed September 3, 1997). However, we note that in
his answer the examiner indicates that [t]he appellants[’]
statement of the issues in the brief is correct” (Paper No.
57, page 2) and that “[t]he question of undo [sic, undue]
multiplicity has been addressed in papers #49 and #51" (Paper
No. 57, page 7). Thus, it is apparent that the examiner has
maintained this rejection and that appellants are seeking our
review of the examiner’s position in this appeal.
Accordingly, we will treat claims 89 through 156 as standing
rejected for being unduly multiplied, as indicated.
3
1960
(Setzekorn)
Lindquist et al. 4,826,644 May 2,
1989
(Lindquist)
Claims 89 through 156 stand rejected as being unduly
multiplied.1
Claims 93, 107, 108, 111, 112, 119, 127, 133 and 134
stand rejected under 35 U.S.C. § 102(b) as being clearly
anticipated by Lindquist.
Claims 93, 108, 111 and 127 stand rejected under 35
U.S.C.
§ 102(b) as being clearly anticipated by Searle.
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Claim 108 additionally stands rejected under 35 U.S.C.
§ 102(b) as being clearly anticipated by Kettlewell.
Claim 108 also stands rejected under 35 U.S.C. § 102(b)
as being clearly anticipated by Johnston.
Claims 109, 110, 114, 118, 122, 126, 128, 132, 138 and
139
stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lindquist.
Claims 110, 118, 132 and 139 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Searle.
Claims 110, 118 and 132 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kettlewell.
Claims 110, 118 and 132 also stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Johnston.
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5
Claims 89, 92, 93, 107 through 112, 114, 115, 118, 119,
122, 123, 126 through 128, 130, 132 through 135 and 138
through 141 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lindquist in view of Kettlewell, Pritchard,
Setzekorn and Mapes.
Claims 123, 135, 137 and 140 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Lindquist in view
of Kettlewell.
Claim 137 additionally stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lindquist in view of
Johnston.
Claims 152 and 154 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Lindquist in view of Searle.
Claims 109, 115, 128, 130 and 141 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kettlewell in
view of Lindquist.
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Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 57, mailed September 3, 1997) and the supplemental
examiner's answer (Paper No. 59, mailed November 12, 1997) for
the examiner's complete reasoning in support of the
rejections, and to the appellants' brief (Paper No. 56, filed
May 22, 1997) and reply brief (Paper No. 58, filed November 3,
1997) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Initially, we turn our attention to the examiner's
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rejection of claims 89 through 156 as being unduly multiplied.
For the examiner's entire reasoning in this matter, we look to
Paper
No. 51, page 2 wherein he states:
Applicant is limited to no more than thirty (30)
claims. [Attention] is directed to MPEP 2173.05(n).
It is the Examiner's position that, in view of the
nature and scope of the invention and state of the
art, 68 claims is an unreasonable number.
The appellants argue that:
[i]n the present application the claims differ
substantially from one another and are not unduly
multiplied. The Office Action makes no showing to
the contrary (brief, page 13).
Appellants argue further that:
a rejection may be made if the number of claims is
unreasonable in view of the nature and scope of
appellants’ invention and the state of the art. In
this case there has been no showing that the number
of claims is unreasonable and . . . the claims
differ substantially from one another (brief, page
14).
Like the appellants, we are of the view that the
examination of one more independent claim (claim 136) and 37
dependent claims in the present application is not
unreasonable. Since the
examiner has made no showing that the claims do not differ
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substantially from one another and thereby in any manner
obscure appellants’ scope of protection, or, to use the
language of the Court of Customs and Patent Appeals in In re
Chandler, 319 F.2d 211, 225, 138 USPQ 138, 148 (1963), that
appellants’ claims provide a "degree of repetition and
multiplicity which beclouds definition in a maze of
confusion," we are constrained to reverse the examiner's
rejection of claims 89 through 156 as being unduly multiplied.
While it may be true that examination of 68 claims in
this application would have been tedious work for the
examiner, this fact alone provides no reason for saying that
the subject matter claimed by appellants' is obscured by the
large number of claims. In light of our determination above,
it is now incumbent upon the examiner to examine those claims
which he previously refused to consider.
We now turn to the first of the examiner's rejections
based on prior art, wherein claims 93, 107, 108, 111, 112,
119, 127, 133 and 134 are rejected under 35 U.S.C. § 102(b) as
being clearly anticipated by Lindquist. The patent to
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Lindquist shows an above ground storage tank 2 having a steel
inner tank 4 entombed within a concrete outer shell 8. The
storage tank 2 is formed by erecting side wall form 51
comprised of a pair of wall forms 48, 50 on a base plate 44,
which creates an open top enclosure or form assembly 42. A
layer of concrete 56 is poured onto the base plate 44 and the
inner tank 4 is lowered onto the layer of concrete. Concrete
is poured in the enclosure to entomb the inner tank while the
bottom layer is still wet. After the concrete cures, the wall
forms 48, 50 and base plate 44 are removed from the tank 2
created within the form assembly 42. In its final form,
storage tank 2 is comprised of inner steel tank 4 and outer
concrete shell 8. Appellants argue that each of the rejected
claims "recite an inner tank, an outer shell and an insulating
layer between the inner tank and outer shell. Lindquist et
al. do not provide the claimed outer shell" (brief, page 16).
We agree. In this regard, the examiner has interpreted the
Lindquist reference as showing an inner tank
#4, an insulating material #120, and an outer shell #42
(answer, page 8).
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However, it is clear to us that what the examiner refers
to as an "outer shell #42" in Lindquist, is merely a form
assembly to support the concrete outer shell 8 as it is poured
and while it is curing. Form assembly 42 is ultimately
removed, and becomes no portion of the above ground storage
tank 2. Thus, Lindquist does not show each and every feature
of appellants' claimed invention, namely an above-ground
storage tank comprised of three parts or component layers,
i.e., "an inner tank," "an outer shell" and "an insulating
layer" therebetween. In this regard, we must point out that
anticipation under 35 U.S.C. § 102 is established only when a
single prior art reference discloses, either expressly or
under the principles of inherency, each and every element of a
claimed invention. See RCA Corp. V. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984). Therefore, we will not sustain the examiner's
rejection of claims 93, 107, 108, 111, 112, 119, 127, 133 and
134 under 35 U.S.C. § 102(b) as being clearly anticipated by
Lindquist.
We will now look to the examiner's rejection of claims
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109, 110, 114, 118, 122, 126, 128, 132, 138 and 139 under 35
U.S.C.
§ 103(a) as being unpatentable over Lindquist. Having already
discussed Lindquist, we, like the appellants, are of the view
that:
[e]ach of the rejected claims patentably
distinguishes over Lindquist et al. by reciting an
inner tank, an outer shell spaced apart from the
inner tank and insulating material filling the space
between the inner tank and the outer shell. Since
the Lindquist et al. patent does not teach or
suggest the recited outer shell, it does not render
obvious the claimed invention (brief, pages 20-21;
our emphasis).
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established when the teachings of the prior art
itself would appear to have suggested the claimed subject
matter to one of ordinary skill in the art. See In re Bell,
991 F.2d 781, 783,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993). As previously
determined, Lindquist clearly does not show a storage tank
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having an inner tank, an outer shell and insulating material
located between the inner tank and the outer shell, and we see
no incentive or motivation in the teachings of Lindquist, to
provide such a three-part or three-layer storage tank. We,
therefore, will not sustain the examiner's rejection of claims
109, 110, 114, 118,
122, 126, 128, 132, 138 and 139 under 35 U.S.C. § 103(a) as
being unpatentable over Lindquist.
Next, we turn to the examiner's rejection of claims 123,
135, 137 and 140 under 35 U.S.C. § 103(a) as being
unpatentable over Lindquist in view of Kettlewell. The patent
to Kettlewell shows a heated body, such as a tank, furnace or
boiler comprised of a cylindrical metal body 10, a casing 11
constructed around the body 10 and secured in spaced relation
thereto. An insulating space 12 is located between body 10
and casing 11 into which a quantity of loose expanded mica 13
is poured for insulation. The examiner's basic position is
that it would have been obvious to one of ordinary skill in
the art to have employed the inner cylindrical tank teaching
of Kettlewell in the construction of the storage tank of
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Lindquist, motivated by the efficient space/volume
relationship provided by a cylindrical tank. However, even if
this modification were made in Lindquist the resulting storage
tank would not be that set forth in appellants' claims 123,
135, 137 and 140 on appeal. To modify the two layer above-
ground storage tank of Lindquist by using a cylindrical inner
tank entombed within the outer concrete tank 8, would clearly
not provide appellants' claimed three layer tank. Thus, we
will not sustain the examiner's rejection of claims 123, 135,
137 and 140 under 35 U.S.C. § 103(a) as being unpatentable
over Lindquist in view of Kettlewell.
In looking at the examiner's rejection of claim 137 under
35 U.S.C. § 103(a) as being unpatentable over Lindquist in
view of Johnston, we see that Johnston discloses an apparatus
for storing liquefied gases at temperatures materially below
273º Kelvin comprising an inner container 40, an insulating
means 38, a radiation shield 22 and an outer jacket 12.
According to the examiner, it would have been obvious to one
of ordinary skill in the art to have employed the double
walled cylindrical tank teaching set forth in Johnston in the
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construction of the gasoline storage tank in the basic
reference to Lindquist, motivated by the added insulation
achieved by such a construction and the efficient space/volume
relationship provided by a cylindrical tank. Again, we note
that even if the combination posited by the examiner were to
be made, a point in some doubt given the totally disparate
construction and uses of the tanks in Lindquist and Johnston,
the resulting storage tank would not be that specifically
defined in appellants' claim 137 on appeal. Replacing the
inner tank 4 of Lindquist with a double walled cylindrical
tank as in Johnston and then encasing the cylindrical tank in
the outer concrete tank 8 of Lindquist would not provide
appellants' recited three layer tank. Therefore, we will not
sustain the examiner's rejection of claim 137 under 35 U.S.C.
§ 103(a) as being unpatentable over Lindquist in view of
Johnston.
We now review the examiner's rejection of claims 152 and
154 under 35 U.S.C. § 103(a) as being unpatentable over
Lindquist in view of Searle. Claims 152 and 154 on appeal
each recite a process or method of forming an above ground
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storage tank, wherein the storage tank is formed by providing
an outer metal shell, an inner tank placed within and spaced
from the outer shell via spacers or supports placed between
the inner tank and the outer shell, and insulating material
placed within and filling the space between the inner tank and
outer shell. The Searle patent shows a burial vault comprised
of an outer metal shell or mold box 1, a metal casket 2 or
inner tank placed within the outer shell and spaced therefrom
by supports or spacers 3, and insulating material comprising
cement or concrete poured into and filling the space between
the outer shell and casket. The examiner reasoned that:
[i]t would have been obvious to one of ordinary
skill in the art to have employed the spacer and on
site filling teachings set forth in Searle in the
construction of the device of Lindquist, et. al.,
motivated by the secure spacing and ease of
transport achieved by such construction (answer,
page 7).
We do not agree. Since, at the outset, Lindquist fails
to show a storage tank comprised of three parts (i.e., an
inner tank, an outer shell, and a space between the inner tank
and outer shell filled with insulating material), like
appellants (brief, pages 37-39), we see no teaching,
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suggestion or incentive in either Lindquist or Searle which
would have led one of ordinary skill in the art to form the
above ground storage tank of Lindquist as a tank with three,
rather than two layers. Thus, we will not sustain the
examiner's rejection of claims 152 and
154 under 35 U.S.C. § 103(a) as being unpatentable over
Lindquist in view of Searle.
Next for our consideration is the examiner's rejection of
claims 89, 92, 93, 107 through 112, 114, 115, 118, 119, 122,
123, 126 through 128, 130, 132 through 135 and 138 through 141
under 35 U.S.C. § 103(a) as being unpatentable over Lindquist
in view of Kettlewell, Pritchard, Setzekorn and Mapes. Having
previously discussed the teachings of Lindquist and
Kettlewell, we will now review the teachings of Pritchard,
Setzekorn and Mapes. We see that Pritchard shows a single
walled tank construction having horizontal top supports 22',
31'. Setzekorn shows a fermentation tank having bottom
supporting beams 24 mounted underneath the base surface for
added strength. And, Mapes shows a tank to be used for the
storage of gases, and having feet 13 adapted to be secured to
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a supporting means or structure 14 by bolts 15 placed through
apertures in the feet. The examiner concluded that:
[i]t would have been obvious to one of ordinary
skill in the art to have employed the steel outer
shell and spacer teaching set forth in Kettlewell,
motivated by the weather protection afforded
thereby, and horizontal top support teaching set
forth in Pritchard, motivated by the strength
achieved thereby, and the bottom support teaching
set forth in Setzekorn, et. al., motivated by the
spacing above ground level of the outer shell bottom
achieved thereby, and the mounting aperture teaching
set forth in Mapes, motivated by the ability to
securely mount the structure achieved
thereby, in the construction of the encased tank of
Lindquist, et. al.” (answer, pages 3-4).
We are not in agreement with the examiner's reasoning.
Since it is clear to us that Lindquist shows a two layer,
above ground storage tank, we agree with appellants that
[a]lthough the Lindquist et al. tank had two of the
three layers of the present invention (inner tank
and concrete insulation), the transition to the
three layer structure as presently claimed was
nonobvious and involved far more complexity than
simply adding an
outer shell to the existing Lindquist et al. tank
(answer, page 26).
And,
[a] skilled artisan reading Kettlewell would not be
motivated to place an outer shell around the
concrete of the Lindquist et al. gasoline storage
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tank in order to provide protection from the weather
(answer, page 29).
Rejections based on 35 U.S.C. § 103(a) must rest on a
factual basis with these facts being interpreted without
hindsight reconstruction of the invention from the prior art.
The examiner may not, because of doubt that the invention is
patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual
basis for the rejection. See In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968). The use of such hindsight knowledge to support
an obviousness rejection under 35 U.S.C. § 103(a) is, of
course, impermissible. See, for example, W. L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). In our view, the only suggestion for modifying the
two layer storage tank of Lindquist in the manner proposed by
the examiner based on the teachings of the various secondary
references applied to meet the above-noted limitations stems
from impermissible hindsight knowledge derived from the
appellants' own disclosure. It follows that we cannot sustain
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the examiner's rejection of claims 89, 92, 93, 107 through
112, 114, 115, 118, 119, 122, 123, 126 through 128, 130, 132
through 135 and 138 through 141 under
35 U.S.C. § 103(a) as being unpatentable over Lindquist in
view of Kettlewell, Pritchard, Setzekorn and Mapes.
We now look at the examiner's rejection of claim 108
under 35 U.S.C. § 102(b) as being clearly anticipated by
Johnston. While Johnston does show three layer tanks, as
discussed above, we note that claim 108 on appeal requires
that the insulating material filling the space between the
inner tank and the outer shell be "sufficient to at least meet
a two-hour fire wall rating." To support a rejection of a
claim under 35 U.S.C.
§ 102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Johnston fails to disclose each and every element of claim 108
on appeal, namely insulating material filling the space
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between the inner tank and the outer shell being sufficient to
at least meet a two-hour fire wall rating. In this regard, we
note that the examiner has not treated this limitation at all,
and that we have no basis to conclude that the insulating
material in the storage space 13 of Johnston necessarily
(inherently) has the required two-hour fire wall rating.
Therefore, we will not sustain the examiner's rejection of
claim 108 under 35 U.S.C. § 102(b) as being clearly
anticipated by Johnston.
We turn to the examiner's rejection of claims 118 and 132
under 35 U.S.C. § 103(a) as being unpatentable over Johnston.
As with claim 108 on appeal, each of claims 118 and 132 on
appeal recite a three layer storage tank and the specific
limitation that there be fire resistant insulating material
disposed within and filling the space between the inner tank
and the outer shell, the space having sufficient thickness to
enable the storage tank to at least meet a two hour fire wall
rating. The examiner concludes that:
[t]he wall spacings and fire rating would have been
obvious matters of choice in the above set forth
devices, motivated by the intended use and code
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standards intended to be met (answer, page 5).
Essentially, it is the examiner's position that one of
ordinary skill in the art would have found it prima facie
obvious to modify the cryogenic liquid storage tank of
Johnston to meet the claimed fire wall rating, without
evidence or prior art in support thereof. In the absence of
evidence or compelling argument in support thereof, however,
we are not persuaded that this would have been the case. The
mere fact that the prior art structure could be modified does
not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Like the
appellants, we see no teaching or suggestion in Johnston, of
insulation filling a space of sufficient thickness, between
the inner tank and outer shell, to enable the tank to meet a
two hour fire wall rating and no rationale by the examiner as
to exactly why any such modification of Johnston would have
been necessary or desirable. Therefore, we will not sustain
the examiner's rejection of claims 118 and 132 under 35 U.S.C.
§ 103(a) as being unpatentable over Johnston.
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Now we consider the examiner's rejection of claim 110
under 35 U.S.C. § 103(a) as being unpatentable over Johnston.
Appellants’ claim 110 on appeal recites an above ground, three
layer storage tank for gasoline wherein the bottom of the
inner tank is spaced substantially six inches from the bottom
of the outer shell, the side walls of the inner tank are
spaced substantially six inches from the side walls of the
outer shell, and insulating material is disposed within and
fills the space between the inner tank and the outer shell.
As previously discussed, in Johnston we see a tank for storing
liquified gases. The storage tank comprises an outer shell 12
and an inner tank 40 which is spaced from the outer shell by
the combination of spaces 13, 36 and 75. The material which
fills each of spaces 13, 36 and 75 is insulating material
which, in its entirety, fills the space between the inner tank
40 and the outer shell 12. Thus, Johnston shows all of
appellants' claimed subject matter except for the intended use
of the tank (i.e., for storing gasoline), and the
"substantially six inch" space between the inner tank and the
outer shell. In our view, the storage tank of Johnston is
certainly capable of storing gasoline, however, we see no
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reason why the inner tank 40 and outer shell 12 in Johnston's
cryogenic liquid storage tank would have been merely the
"substantially six inches" required in appellants' claim 110
on appeal. If anything, it would seem that the multiple
spaces 13, 36, and 75 between the inner tank 40 and outer
shell 12 in Johnston would be individually, as well as
collectively, significantly more than the "substantially six
inches" claimed by appellants. Thus, we will not sustain the
examiner's rejection of claim 110 under
35 U.S.C. § 103(a) as being unpatentable over Johnston.
We now look at the examiner's rejection of claim 108
under 35 U.S.C. § 102(b) as being clearly anticipated by
Kettlewell. As previously discussed, Kettlewell shows a three
layered tank which uses expanded mica as the insulating
material disposed within and filling the space between the
inner tank and the outer shell. The examiner indicated that
the claim recitations "for storing a flammable liquid," "for
storing a liquid" and "for storing gasoline" are directed to
intended use and "thus not awarded patentable weight" (answer,
page 4). Since the prior art is capable of performing the
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functions claimed by the appellants, we agree with the
examiner and therefore will affirm his rejection of claim 108.
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., supra.
The structural limitations recited in appellants' claim 108
are all found in the Kettlewell reference, upon which the
examiner relied. Appellants' only argument is that there has
been no showing as to where Kettlewell teaches "[a]n above-
ground storage tank for storing gasoline," "an inner tank for
storing gasoline" and "the insulating material being
sufficient to at least meet a two-hour fire wall rating"
(brief, page 16).
We are not persuaded by this argument. In our view the
functional limitations set forth in appellants' claim 108
would have been inherent in the Kettlewell tank structure.
The storage tank of Kettlewell is used for storing liquids and
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Application No. 08/348,744
To merely establish the level of knowledge in the art2
with regard to the properties of mica, we note GMS Industrial
Pty Ltd article "What is Mica" at
http://www.generalmica.com.au/info.html which states, under
the subheading Useful properties of Mica, "[Mica] is fireproof
and noninflammable, unaffected by temperatures up to 1200 to
1600 degrees F." Also, U.S. Patent 4,015,393 "Panel with Core
and Method of Constructing" discloses mica and cement as known
materials selected by artisans for their property of
noncombustibility in the fabrication of fireproof doors which
are required to meet different fire codes and regulations.
See particularly, column 1, lines 9-17. Copies are attached
to this decision.
25
is certainly capable of storing gasoline. It is also our view
that one of ordinary skill in the art would have recognized
that mica has the inherent property to at least meet a two-
hour fire wall rating, as required by claim 108 on appeal.
Mica is a rock-forming mineral having as one of its properties
noninflammability, thus making it inherently fireproof. 2
Moreover, Kettlewell infers that mica is necessarily fireproof
since the expanded mica is produced from ground mica in a
direct fire furnace at an expanding heat of 2200 degrees F
(page 1, column 1, lines 7-13). It is our view, that a person
of ordinary skill in the art would have known all the inherent
properties of mica and not just those properties which make
mica a highly efficient insulator taught in Kettlewell.
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Therefore, we will affirm the examiner's rejection of claim
108 under 35 U.S.C. § 102(b) as being unpatentable over
Kettlewell.

We now look at the examiner's rejection of claim 110
under 35 U.S.C. § 103(a) as being unpatentable over
Kettlewell. We have already seen that Kettlewell does show a
three layer tank which can be, at least for some period of
time, a storage tank for whatever liquid is contained therein.
Kettlewell discloses an inner tank 10, an outer shell 11
spaced from the inner tank and insulation 13 filling the space
between the inner tank and outer shell. Kettlewell uses
spacing lugs 16 to space the inner tank from the outer shell.
Thus, it is our view that Kettlewell shows all of appellants'
subject matter recited in claim 110 on appeal except for the
intended use of the tank (i.e., for storing gasoline), and the
"substantially six inch" space between the inner tank and the
outer shell. While certainly not disclosed for any such use,
the storage tank of Kettlewell is certainly capable of storing
gasoline. And, while we believe that the space between the
inner tank and outer shell of Kettlewell falls within the
Appeal No. 1998-1357
Application No. 08/348,744
27
"substantially six inch" range claimed by appellants, or would
have at the very least have been obvious to one of ordinary
skill in the art based on the disclosure at page 1,
col. 2, lines 17-19, of Kettlewell concerning desired sizing
of the installation therein, we also note that a change in
dimension is generally considered to be a modification that
would have been obvious to one with ordinary skill in the art
where the disclosure is silent as to the significance of the
particular dimension claimed (i.e., substantially six inches).
Therefore, we will affirm the examiner's rejection of claim
110 under
35 U.S.C. § 103(a) as being unpatentable over Kettlewell.
We now look at the examiner's rejection of claims 118 and
132 under 35 U.S.C. § 103(a) as being unpatentable over
Kettelewell. As with claim 108 on appeal, each of claims 118
and 132 on appeal recite a three layer storage tank and the
specific limitation that there be fire resistant insulating
material disposed within and filling the space between the
inner tank and the outer shell, the space having sufficient
thickness to enable the storage tank to at least meet a two
Appeal No. 1998-1357
Application No. 08/348,744
28
hour fire wall rating. The examiner concludes that:
[t]he wall spacings and fire rating would have been
obvious matters of choice in the above set forth
devices, motivated by the intended use and code
standards intended to be met (answer, page 5).
Essentially, it is the examiner's position that one of
ordinary skill in the art would have known that the thickness
of the insulation of the heated tank or boiler of Kettlewell
is dependent upon the specific use of the tank and the
required fire wall rating.
For our reasons discussed with regard to claim 108, we
are convinced that a person of ordinary skill in the art would
have known that mica has beneficial fireproof properties
absent any specific teaching in the reference. Furthermore,
artisans must be presumed to know something about the art
apart from what the references discloses (In re Jacoby, 309
F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962)) and the
conclusion of obviousness may be made from "common knowledge
and common sense" of the person of ordinary skill in the art
(In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
1969)). Moreover, skill is presumed on the part of those
Appeal No. 1998-1357
Application No. 08/348,744
29
practicing in the art. See In re Sovish, 769 F.2d 738, 743,
226 USPQ 771, 744 (Fed. Cir. 1985). This being the case, we
are of the opinion that the artisan would have been well aware
that mica is fireproof and that the space, as discussed with
respect to claim 110, between the inner tank and the outer
shell may be sized such that the insulating medium (mica) is
of a sufficient thickness to enable the storage tank to at
least meet a two hour fire wall rating. Therefore, we will
affirm the examiner's rejection of claims 118 and 132 under 35
U.S.C.
§ 103(a) as being unpatentable over Kettlewell.

Next, we examine the rejection of claims 109, 115, 128,
130 and 141 under 35 U.S.C. § 103(a) as being unpatentable
over Kettlewell in view of Lindquist. As we have determined
above, Kettlewell discloses a three layer storage tank which
is capable of storing gasoline or other flammable liquids. We
additionally note that outer shell 11 of Kettlewell is, at its
upper portion, preferably open, thereby forming an open-topped
container
(page 1, col. 2, lines 51-53), a limitation which is recited
Appeal No. 1998-1357
Application No. 08/348,744
30
in appellants' claim 141 on appeal. Since Kettlewell "relates
to insulating means for heated bodies, such as tanks,
furnaces, boilers and other heated surfaces" (page 1, col. 1,
lines 1-3), we are of the view that one of ordinary skill in
this art would have recognized that "pipe fittings" secured to
the inner tank would have been necessary for the entry and
removal of liquid material into and out of the cylindrical
metal body or inner
tank 10. We have seen that Lindquist discloses a two layer,
above ground storage tank for storing flammable liquids, and
also note that Lindquist shows various pipe fittings 16
secured to inner tank 4 which provide access to the inside of
the inner
tank 4.
In this instance, we agree with the examiner when he
concludes that:
[i]t would have been obvious to one of ordinary
skill in the art to have employed the pipe fitting
teaching set forth in Lindquist, et. al. in the
construction of the device of Kettlewell, motivated
by the intended use. Note col. 1, first paragraph
of Kettlewell (answer, page 5).
Appeal No. 1998-1357
Application No. 08/348,744
31
We have previously indicated that we view the Kettlewell
device as being capable of storing gasoline or flammable
liquids, and that the six inch spacing between appellants'
inner tank and the outer shell would have been obvious to the
ordinarily skill artisan based on the teaching at page 1, col.
2, lines 17-19 of Kettlewell, and is a dimension which is not
indicated by appellants' disclosure as being critical. Thus,
we will affirm the examiner's rejection of claims 109, 115,
128, 130 and 141 under 35 U.S.C. § 103(a) as being
unpatentable over Kettlewell in view of Lindquist.
We turn now to the examiner's rejection of claims 93,
108, 111 and 127 under 35 U.S.C. § 102(b) as being clearly
anticipated by Searle. As noted before, Searle discloses a
burial vault comprised of a mold box 1 or outer shell strongly
constructed of suitable sheet metal, and a casket box 2 also
strongly constructed, preferably of sheet metal, placed within
the mold box and spaced therefrom by rests or spacers 3.
Searle states:
This casket box has closed or imperforate walls and
Appeal No. 1998-1357
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32
the cover is also imperforate and the entire
interior surfaces of the box and cover are
preferably enameled or provided with any suitable
impervious coating 23, to render the box absolutely
tight (page 1, column 2, lines 61-67).
Once the casket box 2 is placed within the mold box 1, on
supports 3;
the mold box is then completely filled with suitable
grouting, cement, concrete or other suitable plastic
material so as to entirely and completely inclose the
casket box and form a seamless continuous sealing and
inclosing wall between the bottom, sides and ends of
the casket box and the corresponding walls of the
mold
box and entirely covering the casket box to the level
of the top edges of the mold box (page 2, column 1,
lines 12-22).
The examiner concluded that the Searle reference clearly
anticipates claims 93, 108, 111 and 127. The examiner
indicates that the claim portions "for storing a flammable
liquid," "for storing a liquid" and "for storing gasoline" are
directed to intended use and "thus not awarded patentable
weight" (answer, page 4). We agree with the examiner and thus
will affirm his rejection of claims 93, 108, 111 and 127 under
35 U.S.C. § 102(b) as being clearly anticipated by Searle. To
support a rejection of a claim under 35 U.S.C. § 102(b), it
Appeal No. 1998-1357
Application No. 08/348,744
33
must be shown that each element of the claim is found, either
expressly described or under principles of inherency, in a
single prior art reference. See Kalman v. Kimberly-Clark
Corp., supra. The structural limitations recited in
appellants' claims are all found in the Searle reference, upon
which the examiner relied. Appellants argue that "the Searle
burial vault is completely unsuitable for use as an above
ground gasoline storage tank" (brief, page 16). Although
appellants are correct that Searle does not address the use of
the disclosed structure to store gasoline or flammable
liquids, the absence of a disclosure relating to function does
not defeat the finding of anticipation. It is well settled
that the recitation of a new intended use for an old product
does not make a claim to that old product patentable. See In
re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.
Cir. 1997). Accordingly, appellants' contention that their
structure will be used to store gasoline or flammable liquids
above ground does not have patentable weight if the structure
is already known, as it is in Searle, regardless of whether
the Searle structure (vault) has ever been used for the
storage of gasoline or flammable liquids above ground.
Appeal No. 1998-1357
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Appellants have not argued or otherwise demonstrated that the
vault structure of Searle is not capable of storing a liquid
such as gasoline above ground.
Appellants' additionally argue that "[c]laim 108 not only
recites 'an inner tank for storing gasoline' but further
recites 'the insulating material being sufficient to at least
meet a two-hour fire wall rating.' Searle discloses neither
of these features" (brief, page 17). We are not persuaded by
this argument. In our view, the functional limitations set
forth in appellants' claim 108 do not serve to patentably
distinguish appellants invention from Searle because those
limitations would be inherent in the prior art vault
structure. Furthermore, it is our view that it would have
been an inherent property of the cement or concrete filling
the space between the inner box 2 and outer mold 1 of Searle
to at least meet a two-hour fire wall rating, as required by
claim 108 on appeal. A reference may be from an entirely
different field of endeavor than that of the claimed invention
or may be directed to an entirely different problem from the
one addressed by the inventor, yet the reference will still
Appeal No. 1998-1357
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35
anticipate if it explicitly or inherently discloses every
limitation recited in the claims. See In re Schreiber,
at 1477, 44 USPQ2d at 1431. As a result, we will sustain the
examiner's rejection of claims 93, 108, 111 and 127 under
35 U.S.C. § 102(b) as being clearly anticipated by Searle.
The last of the examiner's rejections for our review is
that of claims 110, 118, 132 and 139 under 35 U.S.C. § 103(a)
as being unpatentable over Searle. In looking at these
claims, we see that claim 110 includes the limitations that
"the bottom of the inner tank spaced substantially six inches
from the bottom of the outer shell" and "the side walls of the
inner tank spaced substantially six inches from the side walls
of the outer shell." It is clear to us that such sizing and
spacing would have been obvious to one of ordinary skill in
the art when the mold and casket of Searle are sized to
receive a small adult or a child. As for the use limitation
regarding the storage of gasoline above ground and the fire
wall rating set forth in those claims, we refer to our
comments above concerning claims 93, 108, 111 and 127. Thus,
we sustain the examiner's rejection of appealed claims 110,
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Application No. 08/348,744
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118 and 132 under 35 U.S.C. § 103(a) as being unpatentable
over Searle.
However, we also note that claim 139 includes the
limitation that the inner tank has "a capacity of at least
1000 gallons." The box 2 of Searle clearly does not have a
capacity of 1000 gallons, as required by claim 139 on appeal.
In our view there is no suggestion, incentive or motivation in
the applied reference to have modified the inner box 2 of
Searle to have a capacity of 1000 gallons. Accordingly, we
will not sustain the examiner's rejection of claim 139 under
35 U.S.C. § 103(a) as being unpatentable over Searle.
We see that in their reply brief (Paper No. 58)
appellants refer to the Declaration of William Y. Hall, filed
"on or about" December 27, 1996. Mr. Hall’s declaration
states:
26. As far as I am aware, the tank of the present
invention was the first tank ever to be certified by
a national testing agency as being capable of
meeting or exceeding a two hour fire wall rating. I
do not know of any prior tank that was capable of
meeting a two hour fire wall rating (Paper No. 52,
pages 4-5).
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Application No. 08/348,744
37
Appellants' arguments concerning secondary considerations
(reply brief, page 4), (i.e., the declaration of William Y.
Hall) are of no moment with respect to the rejections under 35
U.S.C.
§ 102(b) and have not been considered with respect thereto.
The only claims in which we have sustained rejections under 35
U.S.C.
§ 103(a), which include a limitation that the tank be capable
of meeting a two hour fire wall rating, are claims 118 and 132
which stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Searle or Kettlewell. However, we are not
persuaded by appellants' secondary evidence with respect to
the above noted rejections of these claims. In that regard,
while it may be true that Mr. Hall was not aware of any other
prior tank that was capable of meeting a two hour fire wall
rating, as we have indicated above, we are of the view that
the construction of the Searle device having concrete between
the inner metal tank 2 and the outer metal shell 1, exactly as
appellants' tank does, would inherently provide a tank having
such a rating. Furthermore, mica, like concrete, is an
Appeal No. 1998-1357
Application No. 08/348,744
38
inorganic fireproof insulating material and we are of the
opinion that one of ordinary skill in the art would have known
that, given the desired thickness of the insulating material
(about 6 inches), the tank of Kettlewell would inherently
provide a tank having such a fire wall rating.
In view of the foregoing, we are satisfied that when all
the evidence is considered, the totality of the evidence
submitted by the appellants cannot be accorded substantial
weight, so that, on balance, the evidence of nonobviousness
fails to outweigh the evidence of obviousness relied upon by
the examiner. Accordingly, we conclude that the subject
matter of claims 118 and 132 on appeal would have been obvious
to one of ordinary skill in the art, and we sustain the
rejection of those claims under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
(1) the decision of the examiner to reject claims 89
through 156 as being unduly multiplied is reversed;
Appeal No. 1998-1357
Application No. 08/348,744
39
(2) the decision of the examiner to reject claims 93, 107,
108, 111, 112, 119, 127, 133 and 134 under U.S.C. § 102(b) as
being clearly anticipated by Lindquist is reversed;
(3) the decision of the examiner to reject claims 93, 108,
111, and 127 under 35 U.S.C. § 102(b) as being anticipated by
Searle is affirmed;
(4) the decision of the examiner to reject claim 108 under
35 U.S.C. § 102(b) as being clearly anticipated by Kettlewell
is affirmed;
(5) the decision of the examiner to reject claim 108 under
35 U.S.C. § 102(b) as being clearly anticipated Johnston is
reversed;
(6) the decision of the examiner to reject claims 109,
110, 114, 118, 122, 126, 132, 138 and 139 under 35 U.S.C. §
103(a) as being unpatentable over Lindquist is reversed;
(7) the decision of the examiner to reject claims 110,
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Application No. 08/348,744
40
118, and 132 under 35 U.S.C. § 103(a) as being unpatentable
over Searle is affirmed;
(8) the decision of the examiner to reject claim 139 under
35 U.S.C. § 103(a) as being unpatentable over Searle is
reversed;

(9) the decision of the examiner to reject claims 110, 118
and 132 under 35 U.S.C. § 103(a) as being unpatentable over
Kettlewell is affirmed;

(10) the decision of the examiner to reject claims 110,
118 and 132 under 35 U.S.C. § 103(a) as being unpatentable over
Johnston is reversed;

(11) the decision of the examiner to reject claims 89, 92,
93, 107 through 112, 114, 115, 118, 119, 122, 123, 126 through
128, 130, 132 through 135 and 138 through 141 under 35 U.S.C.
§ 103(a) as being unpatentable over Lindquist in view of
Kettlewell, Pritchard, Setzekorn and Mapes is reversed;
Appeal No. 1998-1357
Application No. 08/348,744
41
(12) the decision of the examiner to reject claims 123,
135, 137 and 140 under 35 U.S.C. § 103(a) as being unpatentable
over Lindquist in view of Kettlewell is reversed;
(13) the decision of the examiner to reject claim 137
under 35 U.S.C. § 103(a) as being unpatentable over Lindquist
in view of Johnston is reversed;

(14) the decision of the examiner to reject claims 152 and
154 under 35 U.S.C. § 103(a) as being unpatentable over
Lindquist in view of Searle is reversed; and finally,

(15) the decision of the examiner to reject claims 109,
115, 128, 130 and 141 under 35 U.S.C. § 103(a) as being
unpatentable over Kettlewell in view of Lindquist is affirmed.
Appeal No. 1998-1357
Application No. 08/348,744
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
CEF:lmb
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LAW OFFICES OF GREGORY L. ROTH
6 CENTERPOINTE DRIVE
SUITE 780
LA PALMA, CA 90623
Appeal No. 1998-1357
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