Ex Parte Keefer et al

Patent Trial and Appeal Board

Sep 14, 2015

12590428 (P.T.A.B. Sep. 14, 2015)

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.
12/590,428 11/06/2009 Neal Keefer TEM664 1270
7590 09/15/2015
Ingrid McTaggart
3021 S.E. 56th Ave.
Portland, OR 97206
EXAMINER
RIPLEY, JAY R
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
09/15/2015 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 NEAL KEEFER, EVAN WAYMIRE,
KENNETH WATSON, and JOHN LOFFINK
____________

Appeal 2013-008381
Application 12/590,428
Technology Center 3600
____________

Before JOHN C. KERINS, EDWARD A. BROWN, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Neal Keefer et al. (Appellants) seek review, under 35 U.S.C. § 134(a),
of the Examiner’s decision to reject claims 1, 3–6, and 21–27. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a quick connect port at [a] fuel
tank flange which allows quick connection of fuel lines while reducing the
manufacturing time and costs of the flange.” Spec. 1, ll. 2123. Claims 1,
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22, and 24 are independent claims. Claim 1, shown below, is illustrative of
the claims on appeal:
1. A fuel delivery system, comprising:
a flange;
a fuel draw tube secured to said flange, said
fuel draw tube including an end region extending
upwardly above a first surface of said flange, said
end region including a connector receiving surface;
and
a fuel return tube secured to said flange, said
fuel return tube including an end region extending
upwardly above said first surface of said flange,
said end region including a connector receiving
surface;
wherein said connector receiving surfaces
each comprise a downwardly facing shoulder
positioned on an exterior of said first end region of
each tube.

EVIDENCE RELIED ON BY THE EXAMINER
Jonsson US 3,930,674 Jan. 6, 1976
Barton US 5,511,831 Apr. 30, 1996
Keefer US 6,273,123 B1 Aug. 14, 2001

REJECTIONS ON APPEAL
1. Claims 1, 3–6, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Keefer and Jonsson.
2. Claims 22–27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Keefer and Barton.

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ANALYSIS
Rejection 1 – The rejection of claims 1,
3–6, and 21 under 35 U.S.C. § 103(a)
For the claims in this group, Appellants argue the patentability of
independent claim 1 and do not separately argue the patentability of the
dependent claims. Appeal Br. 20. Accordingly, we address only claim 1,
with claims 3–6 and 21 standing or falling with claim 1. See 37 C.F.R.
§ 41.37 (c)(1)(iv) (2012).
First, Appellants contend that “Keefer does not teach or suggest an
end region of a fuel draw or return tube that extends upwardly above a
flange so that a downwardly extending lip may be formed on an exterior of
an end region of the tube.” Appeal Br. 17. In support of this argument,
Appellants highlight various alleged benefits of the disclosed forming
operation. See id. at 16–17. Appellants argue that “Keefer discloses in
F[igure] 8 that its connector surface of each tube is positioned on an interior
surface of its fuel draw and return tubes, within the plane of the flange 32.”
Id. at 18 (citing Keefer, col. 6, ll. 8–16 and Fig. 8). According to Appellants,
“the connectors 120 and 122 [shown in Keefer, Figure 8] fit inside draw and
return tubes 28 and 30 and downwardly into the flange 32.” Id.
In response, the Examiner states that “Claim 1 is drawn to the final
product of a fuel delivery system and does not contain any recitations drawn
to how the claimed fuel delivery system is formed.” Ans. 3. The Examiner
states that “[a]rguments drawn to unclaimed subject matter cannot be found
persuasive.” Id. In addition, the Examiner states that “a downwardly
extending lip” is not claimed. Id. at 4. The Examiner also states that, in
Keefer, “[t]he respective tubes clearly extend above the first surface of the
flange further than the welds attaching the tubes to the flange.” Id.
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(providing a marked-up version of Keefer, Fig. 8). According to the
Examiner, claim 1 “merely requires that the respective tubes include an end
region extending upwardly above a first surface of the flange and that the
end region include a connector receiving surface” and “does not require that
the respective tubes include the whole end region extend [sic] upwardly
above a first surface of the whole flange and that the end region include the
entire connector receiving surface.” Id. at 5.
We are not apprised of error based on Appellants’ first set of
arguments for the reasons set forth by the Examiner, with some additional
comments. We first turn to the two limitations in claim 1, each requiring
“an end region extending upwardly above a [or said] first surface of [the]
flange.” We agree with the Examiner that, under the broadest reasonable
construction, claim 1 does not require the recited “end region[s]” to be
located entirely (i.e., to both begin and end) above the first surface of the
flange. Instead, these limitations merely require end regions “extending
upwardly above” that surface. See Appeal Br. 32 (Claims App.) (emphasis
added). In other words, an “end region” satisfies the relevant limitation even
if it begins below a “first surface of [the]flange” and continues through the
“first surface of [the]flange,” as long as it then “extend[s] upwardly above”
that surface. And we see no error in the Examiner’s finding that Keefer
satisfies the relevant limitations under that construction. See Final Act. 3
(mailed Oct. 2, 1012); Ans. 4.
We turn now to the two limitations in claim 1, each reciting “said end
region including a connector receiving surface.” Under the broadest
reasonable construction, this claim language (read in light of the
construction of the related limitations discussed previously) does not require
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the recited “connector receiving surface[s]” to be located entirely (i.e., to
both begin and end) above the first surface of the flange. Thus, these
limitations do not distinguish over the structures identified by the Examiner
merely because the identified “connector receiving surface” in Keefer exists,
in part, within the plane of flange 32. See Keefer, Fig. 8.
Lastly, we turn to the final clause of claim 1. Although Appellants are
correct that the “connector receiving surface[s]” identified in Figure 8 of
Keefer are “positioned on an interior surface of its fuel draw and return
tubes” (Appeal Br. 18),1 nonobviousness cannot be established by attacking
references individually when the rejection is based on a combination of prior
art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). To the
extent Appellants argue that Keefer alone does not teach the final clause of
claim 1, Appellants do not address the rejection as articulated, in which the
Examiner relies on the combined teachings of Keefer and Jonsson. See Final
Act. 2–4. Here, the Examiner finds that Jonsson satisfies the final clause of
claim 1 (id. at 4), and identifies a “connector receiving surface” in Jonsson
that is on the exterior of each of the recited “tube[s]” (see Final Act.,
Attachment B (annotation on Jonsson, Fig. 8)).
Second, Appellants argue that “[a]ttempting to form a connector port
on the exterior of an end region of draw and return tubes 28 and 30 of
Keefer would not be possible” because the end regions of those tubes are
“positioned within, and not extending from, flange 32 and weld material
104.” Appeal Br. 18 (citing Keefer, Figs. 5, 8). In other words, Appellants

1 The Examiner identified certain “connector receiving surfaces” on
the interior of the “end region of each tube” in Keefer, i.e., the “interior
threads.” See Final Act. 3.
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argue that “there is just not enough extending tube for such a forming
operation or structure as disclosed in [Appellants’] specification.” Id. (citing
Keefer, Figs. 5, 8).
In response, the Examiner states that “the instantly claimed invention
is the final product of a fuel delivery system, not a method of forming a fuel
delivery system, and any discussion as to how the claimed invention may or
may not be made is not within the scope of the claimed invention.” Ans. 5.
The Examiner states that “it is well understood that any limitations from the
specification are not read into the claims.” Id. (citing In re Van Geuns, 988
F.2d 1181 (Fed. Cir. 1993)).
We are not apprised of error based on Appellants’ second set of
arguments for the reasons set forth by the Examiner. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (rejecting arguments “not based on limitations
appearing in the claims”).
Third, Appellants argue that the “method or structure of connecting
shown in Jonsson cannot physically be performed on the tubes of Keefer.”
Appeal Br. 18–19. Specifically, Appellants assert that “a downwardly
extending lip cannot be formed on the exterior of the end region of the tubes
of Keefer due to the positioning of the end regions of Keefer downwardly
within the flange 32 and weld material 104” and “that formation of an
exterior, downwardly extending lip would not be reliably accomplished in a
manufacturing setting.” Id. at 19 (citing Keefer, Fig. 8). Thus, argue
Appellants, “the coupling 138 of Jonsson would have no downwardly
extending lip to connect to if one attempted to use the coupling 138 of
Jonsson on the tubes of Keefer.” Id.
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In response, the Examiner states that Appellants “fail[] [to] provide
any evidence as to why Jonsson can make a downwardly facing shoulder
positioned on an exterior of a tube end region but such a structure cannot be
formed on any other tube.” Ans. 5–6. According to the Examiner, “[t]he
issue at hand is whether or not the claimed final product invention of a fuel
delivery system would have been obvious and not how such system is/was
arrived at.” Id. at 6.
We are not apprised of error based on Appellants’ third set of
arguments. “The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Id. (citations omitted). Thus,
the issue here is not whether the identified structure in Jonsson could be
bodily incorporated onto the identified structure shown in Figure 8 of
Keefer. In addition, Appellants do not provide evidence (rather than
attorney argument) that a person of ordinary skill in the art would not be
able to overcome these alleged technical issues within their level of skill.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”). Further, Appellants’ arguments do not address the
rejection as articulated. In the rejection, the Examiner does not rely on
Keefer to satisfy the final clause of claim 1 (which includes the
“downwardly facing shoulder” limitation). See Final Act. 4. Instead, the
Examiner relies on Jonsson to provide the recited features. See id.
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Fourth, Appellants contend that “one skilled in the art would not look
to Jonsson for a connection structure placed directly on a fuel tube because
Jonsson does not teach or suggest fuel tubes.” Appeal Br. 19. Appellants
continue as follows:
In other words, Jonsson does not teach or suggest fuel tubes
that extend downwardly from a flange into a lower region of a
fuel tank, wherein forming a connection surface directly on
such tubes is a manufacturing time saving advantage of
[Appellants’] invention and the reason the forming operation is
performed directly on the draw and return tubes themselves.
Id. Appellants also contend that “formation of the downwardly extending
lip of Jonsson on the exterior of the end region of the tubes of Keefer would
require remaking of the Keefer device to include tubes which extend
upwardly from flange 32 a distance sufficient to conduct the forming method
or structure [sic] of Jonsson.” Id. at 20.
The Examiner responds that Jonsson “is pertinent to the particular
problem of connecting tubulars together to form a fluid flow system, i.e.,
connecting one tube to another tube to form a flow path for fuel.” Ans. 8.
We are not apprised of error based on Appellants’ fourth set of
arguments. Appellants appear to contend that Jonsson is not analogous prior
art. “Two separate tests define the scope of analogous prior art: (1) whether
the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). In light of the rejection as made, we agree with the
Examiner’s statement of the relevant problem—“connecting tubulars
together to form a fluid flow system.” Ans. 8. We also agree with the
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Examiner’s finding that Jonsson is reasonably pertinent to that problem. See
id. In contrast, Appellants’ position focuses not on the problem at issue, but
on the specific application and setting identified in the Specification—“a
connection structure placed directly on a fuel tube.” Appeal Br. 19
(emphasis added). The analogous prior art should not be so limited. See
Graham v. John Deere Co., 383 U.S. 1, 35 (1966) (rejecting the argument
that the cited references were not “pertinent prior art” and stating that “[t]he
problems confronting [the patentee] and the insecticide industry were not
insecticide problems; they were mechanical closure problems”).
Further, because claim 1 does not recite either the process of forming
the recited “downwardly facing shoulder” or the alleged benefits from
performing that operation “directly on the draw and return tubes themselves”
(Appeal Br. 19), those aspects cannot be relied on for patentability. See Self,
671 F.2d at 1348. In addition, we are not apprised of error based on
Appellants’ argument regarding “remaking of the Keefer device” (Appeal
Br. 20) for the reasons discussed above in response to the third set of
arguments.
For the reasons set forth above, we sustain the decision to reject claim
1 as unpatentable over the combined teachings relied upon by the Examiner.
Claims 3–6 and 21 fall with claim 1.

Rejection 2 – The rejection of claims
22–27 under 35 U.S.C. § 103(a)
For the claims in this group, Appellants argue the patentability of
independent claims 22 and 24 and do not separately argue the patentability
of their dependent claims. Appeal Br. 25, 30. Accordingly, we address only
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claims 22 and 24, with claims 23 and 25–27 standing or falling with their
respective independent claims. See 37 C.F.R. § 41.37 (c)(1)(iv).
First, with regard to claim 22, Appellants contend that “Keefer does
not teach or suggest an end region of a fuel draw or return tube that extends
upwardly above a flange so that an enlarge[d] inner tube diameter may be
formed on an interior of an end region of the tube.” Appeal Br. 23.
Similarly, with regard to claim 24, Appellants contend that “Keefer does not
teach or suggest an end region of a fuel draw or return tube that extends
upwardly above a flange so that a larger inner tube diameter may be formed
on an interior of an end region of the tube.” Id. at 28. In support, Appellants
essentially repeat arguments from the first set of arguments regarding
Rejection 1. Compare id. at 16–18, with id. at 22–23, 26–28.
The Examiner responds with essentially the same positions as
provided for Rejection 1. Compare Ans. 3–5, with id. at 9–11, 14–16.
We are not apprised of error based on Appellants’ first set of
arguments for essentially the same reasons set forth above with regard to the
first set of arguments for Rejection 1. To the extent Appellants argue that
Keefer alone does not teach the “connector receiving surface” limitations in
claims 22 and 24, Appellants do not address the rejections as articulated, in
which the Examiner relies on the combined teachings of Keefer and Barton.
See Final Act. 5–8. Here, the Examiner finds that Barton satisfies the
limitations at issue (id. at 7), and identifies a “connector receiving surface”
in Barton (see id., Attachment D (annotation on Barton, Fig. 1)).
Second, Appellants argue that attempting to form either “an enlarged
inner diameter connector port” (with regard to claim 22) or a “larger inner
diameter connector port” (with regard to claim 24) “on the interior of an end
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region of draw and return tubes 28 and 30 of Keefer” would not be possible
because the end regions of those tubes are “positioned within, and not
extending from, flange 32 and weld material 104.” Appeal Br. 23–24 (claim
22), 28 (claim 24). In support of these arguments, Appellants contend that
“there is just not enough extending tube for such a forming operation or
structure as disclosed in [Appellants’] specification.” Id. at 24 (claim 22),
28–29 (claim 24) (both citing Keefer, Figs. 5, 8).
In response, the Examiner states that “the issue at hand is the
patentability of the final product of a fuel delivery system structure and not
some unclaimed method of forming a fuel delivery system.” Ans. 11.
We are not apprised of error based on Appellants’ arguments for the
reasons set forth by the Examiner. See Self, 671 F.2d at 1348.
Third, for both claims 22 and 24, Appellants argue that “the method or
structure of connecting shown in Barton cannot physically be performed on
the tubes of Keefer.” Appeal Br. 24 (claim 22), 29 (claim 24). Specifically,
Appellants assert that neither “an enlarged inner diameter” (with regard to
claim 22) nor “a larger inner diameter” (with regard to claim 24) can “be
formed on the interior of the end region of the tubes of Keefer due to the
positioning of the end regions of Keefer downwardly within the flange 32
and weld material 104” and that the formation of those structures “would not
be reliably accomplished in a manufacturing setting.” Id. at 24 (claim 22),
29 (claim 24).
In response, the Examiner states that Appellants’ arguments are
“drawn to how the claimed device is formed and not the obviousness of the
claimed structure.” Ans. 11 (claim 22), 16 (claim 24).
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We are not apprised of error based on Appellants’ third set of
arguments for essentially the same reasons set forth above with regard to the
third set of arguments for Rejection 1. To satisfy the relevant limitations,
the Examiner does not rely on Keefer, but rather Barton. See Final Act. 6–8.
Fourth, for both claims 22 and 24, Appellants contend that “one
skilled in the art would not look to Barton for a connection structure because
the end region of Keefer to which a connection structure would be formed
does not extend upwardly from the flange a distance which would allow the
forming technique or structure that Barton discloses.” Appeal Br. 24–25
(claim 22), 29 (claim 24). Specifically, Appellants assert that “neither
Barton no[r] Keefer teach[es] or suggest[s] fuel tubes that extend outwardly
from a flange far enough” to either “enlarge an inner diameter of the tubes”
(with regard to claim 22) or “create a larger inner diameter of the tubes”
(with regard to claim 24) “without damaging the flange or the weld that
secures the tubes to the flange.” Id. at 25 (claim 22), 29–30 (claim 24).
According to Appellants, either “use of an enlarged inner diameter of
Barton” (with regard to claim 22) or “use of a[] larger inner diameter of
Barton” (with regard to claim 24) “on the end region of the tubes of Keefer”
“would require remaking of the Keefer device to include tubes which extend
upwardly from flange 32 a distance sufficient to conduct the forming method
or [sic] structure of Barton.” Id. at 25 (claim 22), 30 (claim 24).
We are not apprised of error based on Appellants’ fourth set of
arguments for the reasons discussed above with regard to Appellants’ second
and third sets of arguments.
For the reasons set forth above, we sustain the decision to reject
independent claims 22 and 24 as unpatentable over the combined teachings
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relied upon by the Examiner. Claims 23 and 25–27 fall with their respective
independent claims.

CONCLUSION
For the reasons set forth above, we AFFIRM the decision to reject
claims 1, 3–6, and 21–27 under 35 U.S.C. § 103(a).
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

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