Ex Parte Ontjes et al

Patent Trial and Appeal Board

Aug 28, 2013

12757643 (P.T.A.B. Aug. 28, 2013)

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.
12/757,643 04/09/2010 Jason Ontjes 41315-CIP1 3134
23589 7590 08/30/2013
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
EDWARDS, BRETT J
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
08/30/2013 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 JASON ONTJES and JOEL ALDERSON
____________________

Appeal 2011-010529
Application 12/757,643
Technology Center 3700
____________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1, 6-9, 15, and 17-21. App. Br. 2. Claims 3-5 and 10-13
have been withdrawn from consideration as being drawn to non-elected
subject matter, and claims 2, 14, and 16 have been canceled. Id. at 6. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1 and 15 are independent. Claim 1 reads:
1. A sports-related cover assembly for a
propane tank, said tank including an upper wall
and a valve extending upwardly from the upper
wall, said cover assembly comprising a decorative
body having wall structure configured to be placed
about a propane tank and presenting an upper and
a lower margin, said wall structure including a
substantially rigid outer wall shaped and
configured to present a three-dimensional likeness
of a sports-related item, said valve extending
above said cover assembly upper margin, said
decorative body formed of metal, permanently
secured to said tank, presenting a concavo-convex
wall segment, and having a portion thereof spaced
at least one-half inch from the tank.

REJECTIONS
Claims 1, 6-9, 15, and 17-201 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nunlist (US 4,473,171; issued Sep. 25, 1984), Tullio (US

1 Appellants incorrectly indicate that claim 21 is also included in this ground
of rejection. App. Br. 11.
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2009/0057325 A1; pub. Mar. 5, 2009), and Kalb (US D577,791 S; issued
Sep. 30, 2008).
Claims 15 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Flanigen (US 4,765,458; issued Aug. 23, 1988), Tullio,
and Kalb.

ANALYSIS
Rejection of claims 1, 6-9, 15, and 17-20 – Nunlist, Tullio, and Kalb
Appellants indicate that “[c]laims 1 and 6-9 are argued as a group, and
similarly claims 15 and 17-21 are argued as a group.” App. Br. 10. We
note, however, that Appellants do not present separate arguments for both
groups of claims, but argue all of the claims 1, 6-9, 15, and 17-20 as a single
group. Id. at 15-22. We select claim 1 as representative, and claims 6-9, 15,
and 17-20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 is directed to a “sports-related cover assembly for a propane
tank,” and recites “said decorative body . . . [is] permanently secured to said
tank.” The Examiner construed this language, as follows:
It is noted that while the preamble of claim 1
recites ‘A sports-related cover assembly for a
propane tank,’ indicating an intended use of the
cover, the independent claim 1 as well as the
claims dependent on claim 1 were examined as
requiring the combination of the tank and cover
due to the limitation of ‘said decorative body
formed of metal, permanently secured to said
tank’ (emphasis added) in lines 6 and 7 of claim 1.
However, the recitation of ‘propane’ is still an
intended use of the tank and as such the tank
simply has to be capable of containing propane.
Ans. 9.
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The Examiner found that Nunlist discloses a cover assembly for a
pressurized tank “capable of storing propane,” wherein the cover assembly
comprises a decorative body (jacket 18) having wall structure configured to
be placed about a propane tank (steel wall 12), and which is permanently
secured to the tank. Ans. 4 (citing Nunlist, col. 2, l. 35 – col. 3, l. 39; figs. 1-
4). The Examiner also found that Nunlist does not expressly disclose that
the outer wall of the wall structure is shaped and configured to present a
three-dimensional likeness of a sports-related item, or that the decorative
body has a portion spaced at least one-half inch from the tank. Id.
The Examiner relied on Tullio for disclosure of a decorative cover for
a pressurized container, comprising a decorative body (replica helmet body
12) having wall structure configured to be placed around a pressurized
container (can/bottle 22), and which includes an outer wall shaped and
configured to present a three-dimensional likeness of a sports-related item.
Ans. 5 (citing Tullio, paras. [0001]-[0006]; figs. 1-3).2 The Examiner relied
on Kalb for disclosure of a tank cover with the ornamental design of a sports
related item. Id. The Examiner concluded that it would have been obvious
to one of ordinary skill in the art to modify Nunlist’s cover to have the outer
wall shaped and configured to present a three-dimensional likeness of a
sports-related item, as taught by Tullio, and motivated by the ability for a
user to show enthusiasm for sports while covering the tank, as taught by
Kalb. Id.

2 We note that Tullio discloses that the replica football helmet “provid[es]
insulating properties for beverage consumption to individuals interested in
representing their team loyalty while consuming said beverage.” See Tullio,
para. [0001].
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Appellants contend that none of Nunlist, Tullio, and Kalb is related to
propane tanks. App. Br. 15-17. Regarding the Examiner’s claim
construction discussed supra, Appellants state “[i]f as asserted the claims
properly require the combination of a propane tank and cover, the ‘propane’
limitation cannot be ignored.” Reply Br. 6. We do not agree with
Appellants that the Examiner has ignored the “propane” limitation. Claim 1
does not recite that the propane tank contains propane. Claim 1 recites “said
[propane] tank including an upper wall and a valve extending upwardly from
the upper wall.” The Examiner found that Nunlist’s pressure vessel includes
these claimed structural features of the propane tank. Appellants have not
apprised us of any error in these findings.
The Patent and Trademark Office (PTO) determines the scope of
claims "not solely on the basis of the claim language, but upon giving claims
their broadest reasonable construction 'in light of the specification as it
would be interpreted by one of ordinary skill in the art.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1316-17 (Fed. Cir. 2005) (citation omitted).
Appellants do not direct us to a definition of “propane tank” in the
Specification. We note, however, that the Specification states the following
regarding propane tanks that can be used in the invention:
Furthermore, while the invention has been
illustrated in the context of standard household
propane tanks, the principles of the invention can
be equally applied to larger or differently-
configured propane tanks. Thus, the term
‘propane tank’ as used herein should be
understood to embrace all shapes and sizes of
propane tanks.
See Spec. 7, ll. 1-4 (emphasis added). According to this disclosure, the term
“propane tank” should be construed as effectively encompassing any
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propane tank configuration. As such, the Specification does not appear to
limit the structure of the “propane tank” in the claim preamble so as to
require any additional structural features not expressly recited in the claim,
or not found in Nunlist’s pressure vessel.
Regarding the Examiner’s finding that Nunlist’s tank is “capable of
storing propane,” Appellants contend that “merely because the tank may be
‘capable of’ storing propane is not enough. There must be some teaching or
suggestion in the art to use the tank for propane storage.” App. Br. 20
(emphasis added). However, while Nunlist does not explicitly describe use
of the pressure vessel for storing propane, Appellants do not cite any
authority supporting the contention that Nunlist must provide an explicit
teaching or suggestion of this use. In fact, the Supreme Court has rejected
the rigid requirement of a teaching, suggestion or motivation to combine
known elements in order to show obviousness. KSR International Co. v.
Teleflex, Inc., 550 U.S. 398, 415 (2007). Furthermore, “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.” In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997) (citations omitted).
Where the PTO “has reason to believe that a functional limitation
asserted to be critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art,” the PTO can
require Appellants “to prove that the subject matter shown to be in the prior
art does not possess the characteristic relied on.” In re Best, 562 F.2d 1252,
1254-55 (CCPA 1977) (citation omitted). We agree with the Examiner that
Appellants have not provided any persuasive argument or evidence to show
why Nunlist’s pressure vessel is not capable of storing propane. Ans. 9.
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Appellants also contend that “merely because a given prior art structure may
be in the abstract ‘capable of’ performing a certain use does not ipso facto
mean that it would be obvious to employ that prior art structure for the use in
question.” Reply Br. 8. However, Appellants have the same burden of
proof whether the rejection is based on inherency under 35 U.S.C. § 102 or
on prima facie obviousness under 35 U.S.C. § 103. Id. at 1255. Also, the
“fairness [of the burden-shifting] is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art products.” Id.
Appellants also contend that Nunlist’s jacket 18 is not a “decorative
body,” as claimed. App. Br. 16. Appellants provide a definition of
“decorative” as "serving to decorate; especially: purely ornamental." Id.
Appellants state that “[t]his definition is in accord with the present
application and claims where the claimed wall structure is ornamental in
nature and intent.” Id. (emphasis added). Thus, Appellants acknowledge
that, in accordance with their construction of “decorative,” the claimed “wall
structure” of the “decorative body” is “purely ornamental.” We construe
“purely ornamental” as only providing ornamentation, and no mechanical
function.
However, claim features that relate to “ornamentation only and have
no mechanical function whatsoever” cannot be relied upon for patentability
of a claim in a utility patent application. In re Seid, 161 F.2d 229, 231
(CCPA 1947). Accordingly, the claimed ornamental features of the wall
structure cannot be relied upon to distinguish it from Nunlist’s jacket. We
note that claim 1 recites “said wall structure including a substantially rigid
outer wall shaped and configured to present a three-dimensional likeness of
a sports-related item.” Emphasis added. Accordingly, the claimed shape
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and configuration of the outer wall “to present a three-dimensional likeness
of a sports-related item” cannot be relied upon to distinguish the wall
structure from Nunlist’s jacket.
Appellants also contend that Nunlist’s jacket 18 could not be
configured to include concavo-convex wall structure presenting a three-
dimensional likeness of a sports-related item, and that jacket 18 must be at
an essentially uniform distance from wall 12. App. Br. 16. We note,
however, that Appellants’ Specification states:
As used herein, with reference to the cover
assembly bodies of the invention ‘three-
dimensional’ means that a given cover assembly
body presents a contoured or concavo-convex
outer surface, preferably with portions of the outer
surface spaced a significant distance (preferably at
least about one-half inch, and most preferably at
least about one inch) from the proximal propane
tank wall.
See Spec. p. 2, l. 31 – p. 3, l. 2 (emphasis added). In light of this definition
of “three-dimensional,” the claim recitation “presenting a concavo-convex
wall segment, and having a portion thereof spaced at least one-half inch
from the tank,” also appears to be directed to ornamental features of the wall
structure that provide the “three-dimensional likeness.” As such, these
ornamental features also cannot be relied upon to distinguish the claimed
decorative body from Nunlist’s jacket. Thus, Appellants have not apprised
us of any claim limitation that patentably distinguishes claim 1 from Nunlist.
In other words, we believe that Nunlist renders the claimed invention
unpatentable.
Even assuming, however, that the above-described ornamental
features of the wall structure of the claimed decorative body should be given
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patentable weight, we agree with the Examiner that it would have been
obvious to modify Nunlist’s vessel to result in the claimed cover assembly.
In this regard, Appellants’ contentions that Nunlist, Tullio, and Kalb are not
related to propane tanks are not persuasive. Appellants have not provided
any persuasive argument or evidence that Nunlist’s vessel is not capable of
storing propane, and the Examiner did not rely on Tullio and Kalb for
teachings directed to storing propane.
Regarding the claim recitation “presenting a concavo-convex wall
segment, and having a portion thereof spaced at least one-half inch from the
tank,” we agree with the Examiner that Appellants have not provided any
persuasive argument or evidence that supports the contention that Nunlist’s
jacket 18 could not be configured to include concavo-convex wall structure
presenting a three-dimensional likeness of a sports-related item, or that
jacket 18 must be at an essentially uniform distance from wall 12.
Accordingly, this contention is not persuasive.
Appellants also contend that the rejection is improper because the
prior art relied on by the Examiner is non-analogous. App. Br. 17.
Appellants also contend that Tullio is “entirely non-analogous to Nunlist and
Kalb.” Id. at 22. The two separate tests for determining whether a reference
is analogous prior art for purposes of a rejection under 35 U.S.C. § 103 are:
(1) whether the reference is from the same field of endeavor, regardless of
the problem addressed; and (2) if the reference is not within the inventor's
field of endeavor, whether the reference is reasonably pertinent to the
particular problem with which the inventor is involved. In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). Here, Appellants do not appear to
indicate what particular problem the invention is directed to. We note,
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however, that the Specification discloses that “[i]t would therefore be a boon
to tailgaters if unattractive and innocuous propane tanks could be decorated
in a manner consistent with a tailgate party scheme, and particularly to give
the appearance or likeness of a sports-related item consistent with the
tailgate party theme.” See Spec. p. 2, ll. 6-8.
Nunlist relates to a pressurized vessel for containing fluids, Tullio
relates to pressurized containers for fluids, and Kalb does not appear to be
limited to a particular type of tank. In addition, Tullio and Kalb are both
directed to providing “the appearance or likeness of a sports-related item” to
an article that contains fluid. Appellants have not provided any persuasive
argument why the applied references are not reasonably related to the
problem with which the claimed invention appears to be involved. Thus,
Appellants’ non-analogous art contention is not persuasive.
Finally, we find that the Examiner has articulated an adequate reason
with rational underpinning to combine the teachings of Nunlist, Tullio, and
Kalb to result in the claimed invention. Ans. 5. Appellants have not
apprised us of any error in the Examiner’s reasoning.
Thus, we sustain the rejection of claim 1, and claims 6-9, 15, and 17-
20, which fall with claim 1.

Rejection of claims 15 and 21 – Flanigen, Tullio, and Kalb
Appellants do not provide any additional argument in regard to this
rejection. Accordingly, we also sustain the rejection of claims 15 and 21 as
obvious over Flanigen, Tullio, and Kalb.

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DECISION
The Examiner's rejections of claims 1, 6-9, 15, and 17-21 are
AFFIRMED.
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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