Ex Parte McRae

Board of Patent Appeals and Interferences

Mar 22, 2011

10807217 (B.P.A.I. Mar. 22, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GREG E. MCRAE
____________________

Appeal 2009-011614
Application 10/807,217
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/807,217
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
12, 15, 16, and 19-36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to underground tank shroud assembly. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. An underground tank shroud assembly, comprising:
a shroud comprising a top region and a base region, the
shroud configured to circumferentially enclose a riser of an
underground tank; and
a shroud lid configured to cover the top region of the
shroud, the shroud lid coupled to the shroud at both a first hinge
coupling and a second hinge coupling, when the shroud lid is in
a closed position.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brewer
Palazzo
Anderson
US 5,713,388
US 6,024,243
US 6,296,135 B1
Feb. 3, 1998
Feb. 15, 2000
Oct. 2, 2001
Fuchs US 2004/0247389 A1 Dec. 9, 2004

Kewitz DE 20004612 Mar. 13, 20002
Poillucci EP 0 752 555 A1 Jul. 7, 1995

2 Further reference to Kewitz is made to the translation entered May 20,
2009.

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REJECTIONS
Claims 1-12, 15, 16, 19-34 and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kewitz, Fuchs, and Anderson. Ans. 4.
Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kewitz, Fuchs, Anderson, and Palazzo. Ans. 7.

OPINION
Claims 1-3, 5-7, 9-12, 15, 20-26, 28-30, 32-34, and 36
Appellant argues claims 1-3, 5-7, 9-12, 15, 20-26, 28-30, 32-34, and
36 as a group. App. Br. 10. We select claim 1 as the representative claim,
and claims 2, 3, 5-7, 9-12, 15, 20-26, 28-30, 32-34, and 36 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Kewitz discloses the basic device of claim 1 including a tank 20, a
plastic cylindrical dome 11 (a “shroud”) and a dome cover 12 coupled at a
hinge 13. 3:1-3, 4:12-15, Fig. 1. Kewitz depicts only a single hinge and does
not elaborate on the details of that hinge. Fuchs demonstrates that it was
known in the art to replicate hinges on access covers to enable a user to
select the safest direction to open the cover in light of wind, gradient or
traffic conditions. P. 1, paras. [0009]-[0010]. Anderson demonstrates that
using a nut and bolt to serve as a hinge was known in the art. 2:55-67, fig. 1.
The subject matter of claim 1 amounts to nothing more than applying
the known technique of Fuchs to the known device of Kewitz in order to
achieve the predictable result of improving the safety of Kewitz’s device,
and, therefore, would have been obvious to one of ordinary skill in the art.
The teachings of Kewitz and Fuchs alone are sufficient to meet all the
limitations of claim 1. The Examiner’s reliance on Anderson (Fig. 1)
amounts to demonstrating a technique by which the Kewitz hinge could be
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modified, if necessary, in order to implement the teachings of Fuchs, since
Kewitz is silent regarding the details of its hinge structure.
Appellant contends that “Kewitz appears to show element 13 that
secures element 12 to element 11 when element 12 is in a closed position,”
concluding “[m]odifying Kewitz to include the ‘rotation and fixation
devices’ of Fuchs would change the principle of operation of Kewitz and
cause Kewitz to be unsatisfactory for its intended purpose.” App. Br. 11;
Reply Br. 2-3. Appellant bases this conclusion on his own supposition.
Appellant has not pointed to any evidence in Kewitz to indicate that it is
essential that hinge 13 provide some level of securement that Fuchs cannot.
While we agree with the Examiner that a hinge having a removable pin is a
common arrangement (Ans. 6), the fact is, Kewitz is silent regarding the
specifics of the hinge. See App. Br. 4. No such detail is required to meet the
limitations of claim 1. The Examiner is not proposing to combine the hinge
structures of Kewitz and Fuchs, as Appellant suggests. App. Br. 12. Rather,
the Examiner concludes it would have been obvious to apply the teaching of
Fuchs to provide multiple hinges to the device of Kewitz by, for example,
using the hinge structure of Anderson. Appellant has not provided sufficient
evidence or reasoning to demonstrate that the Examiner erred in reaching
this conclusion.
For these reasons, the Examiner’s rejection of claims 1-3, 5-7, 9-12,
15, 20-26, 28-30, 32-34, and 36 as being unpatentable over Kewitz, Fuchs,
and Anderson is affirmed.
Claims 4, 16 and 27
Claims 4, 16 and 27 contain similar limitations - a nut and bolt - and
are argued as a group. App. Br. 12-14. Appellant contends that it was
improper for the Examiner to extract the concept of two couplings, but not
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the actual fixation/rotation devices of Fuchs itself. App. Br. 13; Reply Br. 4.
Appellant further contends that “[b]ecause Fuchs teaches away from the use
of hinges, there is no indication that Fuchs would suggest, to a person of
ordinary skill in the art, to modify the hinges of Kewitz in any way.” App.
Br. 13. These arguments are not persuasive.
“The use of patents as references is not limited to what the patentees
describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they
contain.” In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). Fuchs discusses the
advantages of both a multiple hinge arrangement and an arrangement
wherein no hinge is permanently coupled to the frame. P. 1, paras. [0009]-
[0010], [0014]. The advantages of a multiple hinge arrangement have been
discussed above. Due to the lack of permanent coupling, by lifting in a
direction perpendicular to the frame, “the user also has the option of
removing the cover completely.” P. 1, para. [0014]. Complete removal of the
cover is an advantage enabled by the specific structure of Fuchs’s hinge.
However, there is no requirement that the Examiner incorporate the specific
structure that enables this capability in order to rely on Fuchs to demonstrate
that it was known in the art to provide multiple hinges. The relevant inquiry
is whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Combining
the teachings of references does not require combination of their specific
structures. In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Thus, we cannot
agree with Appellant that the Examiner erred by relying upon Fuchs’s
teaching of using multiple hinges without relying on Fuchs’s hinge itself.
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Furthermore, combination with a hinge of the type shown in Anderson,
while it may delay cover removal, would not destroy this capability. Thus
we cannot agree with Appellant that Fuchs would have led one of ordinary
skill in the art away from using a nut and bolt of the type described in
Anderson.
For these reasons the Examiner’s rejection of claims 4, 16 and 27 is
affirmed.
Claims 8, 19 and 31
Regarding claims 8, 19, and 31 Appellant contends the Examiner
failed to point to the portion of Fuchs which discloses a “generally conical
shape.” App. Br. 15. The Examiner contends that Fuchs’s frame 10, shown
tapered in cross section in figures 1 and 2 and circular in plan view in figure
5, is evidence that Fuchs teaches a generally conical shape. Ans. 6. From
this, the Examiner concludes that it would have been obvious to provide the
cylindrical dome of Kewitz with a generally conical shape in order to
facilitate access. Id. Appellant has not provided sufficient evidence or
reasoning to demonstrate that the Examiner’s finding or conclusion of
obviousness is in error. Reply Br. 5.
Claim 35
Claim 35 is argued based upon dependency on claim 24. App. Br. 15;
Reply Br. 5-6. For the same reasons discussed supra, we affirm the
Examiner’s rejection of claim 35.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-12, 15,
16, and 19-36 are affirmed.

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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

nlk

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