Ex Parte Keller

Board of Patent Appeals and Interferences

Apr 21, 2004

09214663 (B.P.A.I. Apr. 21, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DIETER KELLER
____________
Appeal No. 2004-0118
Application No. 09/214,663
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-4 and
8-18 which are all of the claims pending in this application.
We AFFIRM-IN-PART.
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Application No. 09/214,663
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1A rejection of claims 1-4 and 8-18 as being anticipated by Bergesio U.S. Patent No. 4,453,564
was withdrawn in the Answer.
BACKGROUND
The appellant's invention relates to a plastic fuel tank. An understanding of the
invention can be derived from a reading of exemplary claim 1, which has been
reproduced below.
The single prior art reference of record relied upon by the examiner in rejecting
the appealed claims is:
Luigi European Patent Application 0 064 310 Nov. 10, 1982
Claims 1-4 and 8-18 stand rejected under 35 U.S.C. § 102(b) as being clearly
anticipated by Luigi.1
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the Answer
(Paper No. 29) for the examiner's complete reasoning in support of the rejection, and to
the Corrected Appeal Brief (Paper No. 28) and the Reply Brief (Paper No. 30) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art reference, and to the
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respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The appellant’s invention is directed to a plastic fuel tank that is produced by
welding together an upper plastic shell and a lower plastic shell which have been
produced by injection molding and are positioned an exact distance from one another
by the use of spacers placed within the tank, with the spacers coming into abutting
relationship with one another when the two portions of the tank are welded together.
The invention is recited in claim 1 in the following manner:
A plastic fuel tank with a bottom and with an upper
closing wall, defined in that it is produced by welding
together an upper plastic shell having the upper closing wall
and a lower plastic shell forming the bottom, in that the two
plastic shells have been produced by injection molding, and
in that, in order to adhere to an exact distance between the
upper closing wall and the bottom, spacers coming into
abutment during the welding operation are provided in the
fuel tank in the region of the weld seam.
All of the claims stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Luigi. Anticipation is established only when a single prior art reference discloses, either
expressly or under the principles of inherency, each and every element of the claimed
invention. See, for example, In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671,
1673 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990). Anticipation by a prior art reference does not require either the
inventive concept of the claimed subject matter or recognition of inherent properties that
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Application No. 09/214,663
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may be possessed by the reference. See Verdegaal Bros., Inc. v. Union Oil Co., 814
F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987).
Nor does it require that the reference teach what the applicant is claiming, but only that
the claim on appeal "read on" something disclosed in the reference, i.e., all limitations of
the claim are found in the reference. See Kalman v. Kimberly-Clark Corp, 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
With regard to claim 1, the examiner has taken the position that the claimed
“spacers” read on the baffles 13 shown on the right side of Luigi’s Figure 1, and that
these spacers are located “in the region of the weld seam” which is, according to Luigi,
at flanges 11 (see page 2, lines 17 and 18). We find ourselves in agreement with the
examiner that the subject matter recited in claim 1 is anticipated by Luigi.
The reference discloses at the right side of Figure 1 a baffle 13 comprising two
spacer parts that come together to establish an exact distance between the upper wall
and the bottom of the tank. We point out here that the appellant has not directed us to
any portion of the specification which would support a conclusion that “in the region of
the weld” (emphasis added) would be so defined or interpreted by one of ordinary skill
in the art as to exclude a baffle located such as that shown on the right side of Figure 1
from meeting this requirement of claim 1. Moreover, we further note that as depicted in
Figure 1 Luigi’s weld seam 11 extends around the entire circumference of the tank, and
since elements 13 have been defined as “baffles” (page 4), it is our view that one of
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ordinary skill in the art would consider them to extend across at least a substantial part
of the width of the tank in order to perform the designated function. Such being the
case, at least the ends of both baffles 13 also would appear to meet the limitation of
being “in the region of the weld seam.”
The rejection of claim 1 is sustained. In view of the fact that the appellant has
chosen to have claims 4, 8, 9, 12 and 15 stand or fall with claim 1 (Corrected Appeal
Brief, page 5), we also will sustain the rejection of these claims.
Claim 2 adds to claim 1 the requirement that the spacers “are integrally formed
on the upper plastic shell and/or the lower plastic shell.” As the appellant has argued,
Luigi does not disclose that the spacers are so formed, and we therefore find Luigi not
to be anticipatory of the subject matter recited in claim 2. This being the case, the
rejection of claim 2 cannot be sustained. We are not persuaded otherwise by the
reasoning presented by the examiner on page 3 of the Answer.
We reach the same conclusion with regard to claim 3, which states that the
spacers “are designed as separate components which can be inserted into the plastic
shells before these are welded together,” for while it would appear from the explanation
on page 5 that the spacers are in place before the shells are welded together, Luigi is
silent as to whether the spacers are separate components. We further note that the
examiner has not commented on the appellant’s argument on this matter in the Answer.
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2See, for example, Merriam Webster’s Collegiate Dictionary, p. 1150 (10th Ed., 1996).
Claims 10 and 11 depend from independent claim 9. They add, respectively, the
integral and separate limitations regarding the relationship between the spacers and the
shells that are added to independent claim 1 by claims 2 and 3. On the basis of the
same reasoning that we set forth above regarding claims 2 and 3, we also will not
sustain the rejection of claims 10 and 11. Nor, it follows, will we sustain the rejection of
claims 13 and 14, which depend from claims 10 and 11.
Independent claim 16 recites, inter alia, “multiple lower stays” and “multiple upper
stays . . . wherein the lower stays and upper stays engage one another . . . to form
spacers in the region of the weld seam.” Thus, this claim requires the presence of
multiple stays, all of which are in the “region” of the weld seam. The common applicable
definition of “stay” is “one that serves as a prop.”2 The appellant would have us
consider “stay” to be limited to a “columnar-type support,” but has provided no evidence
in support of this definition. From our perspective, therefore, each of Luigi’s baffles 13,
which serve as “props” between the top and bottom of the tank, thus satisfy the
limitation that there be “multiple” lower and upper stays. For the reasons set forth in our
discussion of claim 1, we also take the position here that both of Luigi’s baffles 13 are
“in the region of the weld seam.”
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From our perspective, Luigi anticipates the subject matter recited in claim 16, and
we will sustain the rejection. The like rejection of claims 17 and 18 also is sustained,
since the appellant has chosen to group them with claim 16.
In arriving at the above conclusions, we have carefully considered all of the
appellant’s arguments, as they pertain to the claims whose rejections we have
sustained. However, with regard to these claims, the arguments have not convinced us
that the decision of the examiner was in error. It is true that the examiner did not
specify - element by element - each and every limitation recited in each of the claims.
However, the appellant did not argue the separate patentability of each of the fifteen
claims on appeal, but in fact provided arguments only with regard to “in the region of the
weld seam,” which appears in claims 1 and 15 of Group I, “integrally formed,” which
appears in claims 2 and 10 of Group II, “separate components,” which appears in claims
3 and 11, and the structure of the stays, which is recited in claim 16 of Group IV
(Corrected Brief, pages 6-11; Reply Brief, pages 3-5). It is our view that the examiner’s
position regarding where the limitations are found in Luigi is readily discernible from the
statement of the rejection and the responses to the appellant’s arguments which appear
in the final rejection (Paper No. 24) and the Answer, considered with Luigi’s disclosure
and drawings. With regard to the allegations in the Reply Brief regarding the examiner’s
failure to point out the “recess” of claims 12-14 or the “tenon” of claims
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17 and 18, we note that the appellant has grouped these claims with other claims,
rather than urge that they are separately patentable based upon these limitations.
CONCLUSION
The rejection of claims 1, 4, 8, 9, 12 and 15-18 is sustained.
The rejection of claims 2, 3, 10, 11, 13 and 14 is not sustained.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA/hh
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Application No. 09/214,663
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STEVEN G. STEGER
MAYER, BROWN & PLATT
P.O. BOX 2828
CHICAGO, IL 60690-2828