Ex Parte Salzberger et alDownload PDFPatent Trial and Appeal BoardJan 26, 201813824945 (P.T.A.B. Jan. 26, 2018) Copy Citation 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. KAT079 2454 EXAMINER STEVENS, ALLAN D ART UNIT PAPER NUMBER 3728 MAIL DATE DELIVERY MODE 13/824,945 03/18/2013 Thomas Salzberger 32047 7590 01/26/2018 GROSSMAN, TUCKER, PERREAULT & PFLEGER, PLLC 55 SOUTH COMMERCIAL STREET MANCHESTER, NH 03101 01/26/2018 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 THOMAS SALZBERGER and MICHAL SEDLAK Appeal 2017-002195 Application 13/824,945 Technology Center 3700 Before JEFFREY A. STEPHENS, ERIC C. JESCHKE, and PAUL J. KORNICZKY, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas Salzberger and Michal Sedlak (“Appellants”)1 seek review under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final Office Action dated July 28, 2015 (“Final Act.”), and as further explained in the Advisory Actions dated October 21, 2015, and June 16, 2016, rejecting claims 15—28 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify Kautex Textron GmbH & Co. KG as the real party in interest. Appeal Br. 1. Appeal 2017-002195 Application 13/824,945 BACKGROUND The disclosed subject matter “relates to a filler neck for a fuel tank of a motor vehicle.” Spec. 1:3—4. Claim 15, the sole independent claim, is reproduced below, with emphasis added to the limitation at issue: 15. A filler neck for a fuel tank of a motor vehicle comprising: at least one tubular section provided in a region of a filler inlet to receive an outlet pipe of a fuel delivery nozzle, wherein the outlet pipe has a diameter, and a flame barrier provided in the tubular section, wherein the flame barrier is arranged to surround the outlet pipe of the fuel delivery nozzle when the fuel delivery nozzle is within the tubular section, wherein the flame barrier comprises at least two segments which are moveable in the tubular section, the at least two segments movable from a first state occupied before insertion of the fuel delivery nozzle into the tubular section to a second state occupied after insertion of the fuel delivery nozzle into the tubular section, wherein, in the first state of the at least two segments, a diameter of an opening in the flame barrier for the outlet pipe is arranged smaller in a prestressed state of the segments than the diameter of the outlet pipe of the fuel delivery nozzle, wherein, in the second state of the at least two segments, gaps are formed between the at least two segments such that a distance of the gaps between the at least two segments is smaller than 2 mm, wherein, in the second state of the at least two segments, the distance of the gaps between the at least two segments is such that fuel vapor from 2 Appeal 2017-002195 Application 13/824,945 within the tank passes through the gaps while preventing a flashback outside the tank from passing through the gaps, and wherein the at least two segments are electrically conductive and are connected in an electrically conducting manner to an electric ground. DISCUSSION2 The Examiner rejected independent claim 15 and claims 16 to 28, which depend from claim 15, as failing to comply with the written description requirement. See Final Act. 2. Specifically, the Examiner stated that the limitation in claim 15 that “in the second state of the at least two segments, the distance of the gaps between the at least two segments is such that fuel vapor from within the tank passes through the gaps” is “new matter not supported by the original disclosure.” Id. at 3. According to the Examiner, “[njowhere in the original disclosure is it discussed that the gaps between the at least two segments in the second state allow fuel vapor to pass through.” Id. The Examiner further stated that page 3 of the Specification: goes against this limitation [by] stating that the resilient mounting causes the segments of the flame barrier to bear tightly against the outlet pipe of the fuel delivery nozzle, thus substantially avoiding an inflammable fuel vapor air mixture from emerging. Thus, as originally disclosed[,] in the second state[,] fuel vapor is prevented from passing and does not pass through as claimed. 2 The Examiner rejected claims 15—21 and 24—28 under 35 U.S.C. § 103(a) as unpatentable over certain prior art. See Final Act. 4—7. In the Answer, the Examiner withdraws these rejections. See Ans. 3. 3 Appeal 2017-002195 Application 13/824,945 Id. (referencing Spec. 3:32—36). Appellants argue that the Specification discloses “that the gaps between the segments are sized in order to prevent flashback into the tank.” Appeal Br. 13 (emphasis omitted) (citing Spec. 3:1—6, 3:23—36, 4:28—36, 8:24—28); see also Appeal Br. 13 n.l (“Flashback into a fuel tank may be understood as a fire hazard in which ignitable vapor of a flammable liquid travel away from the flammable liquid source, and are thereafter ignited by an ignition source, at which time the resultant flame/fire will follow the trail of ignitable vapor back to the flammable liquid source, or ‘flashback.’”). On this same issue, Appellants also argue that: page 4, lines 33—36 of the [Specification may be reasonably understood to set forth that a flame outside the fuel tank having the ability to flashback towards the fuel tank cannot flash through the gap between the segments, particularly due to the effect achieved by the small distance between the segments (and not because there is no fuel vapor originating from the tank). Appeal Br. 14 (emphasis added); see also Declaration of Thomas Salzberger (dated March 23, 2016) (“Salzberger Decl.”), 120 (discussing how one of ordinary skill in the art would understand page 4, lines 33—36 of the Specification).3 Appellants also assert that (1) one of ordinary skill in the art would understand “relatively little output” at page 3, line 5 of the Specification “to be referring to vapor output from the tank” and (2) based on the Figures (such as Figures 2 and 6), the Specification indicates that “fuel vapor from 3 In an Interview Summary dated June 29, 2016, the Examiner approved entry of the Salzberger Declaration, for purposes of this Appeal. In addition, the Examiner “acknowledged the declarant Thomas Salzberger (a co-inventor) as an expert in the field of fuel tanks.” Ans. 4. 4 Appeal 2017-002195 Application 13/824,945 the fuel tank which may give rise to a flashback can only travel through the gaps between the segments.” Appeal Br. 14, 15; see also Salzberger Deck 16—18 (discussing how one of ordinary skill in the art would understand page 3, lines 1—6 of the Specification and stating that “a POSITA would understand that the fuel vapor output from the tank must necessarily pass through the gaps between the segments in order for the fuel vapor to travel outside the fuel tank[,] which may give rise to a flashback”). Thus, according to Appellants, the Specification provides written description support for the limitation at issue. See, e.g., Appeal Br. 13—16; see also Salzberger Deck 114 (stating that “a POSITA would reasonably understand that when the segments are in the second state, the gaps between the segments allow fuel vapor from within the tank to pass through the gaps between the segments”). The test for compliance with the written description requirement is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). For the reasons argued by Appellants as set forth above, as well as for the reasons below, we agree that the Specification satisfies the written description requirement as to the limitation at issue. We first address the paragraph at page 3, lines 23—36 of the Specification (the “first paragraph at issue”). According to the Examiner, the first paragraph at issue includes a passage that “seems to preclude” the limitation at issue. Ans. 4; see also Final Act. 3 (stating that the identified 5 Appeal 2017-002195 Application 13/824,945 passage “goes against” the limitation at issue). The passage identified by the Examiner provides: The resilient mounting causes the segments of the flame barrier to bear tightly against the outlet pipe of the fuel delivery nozzle, thus substantially avoiding an inflammable fuel vapor air mixture from emerging, and preventing flashback into the tank. Spec. 3:33-36. We do not agree with the Examiner that the first paragraph at issue (which includes the passage above) discloses “substantially avoiding any inflammable fuel vapor air mixture from emerging when the outlet pipe is inserted and the segments are pushed apart.” Ans. 5 (emphasis added); see also id. at 7 (stating that the first paragraph at issue “is explicit in its description . . . that fuel vapor is being prevented from emerging from the tank when the segments are in the second state”). As argued by Appellants, the passage at issue addresses the interface between (1) the inner surface of the recited “segments” and (2) the outer surface of the recited “outlet pipe of the fuel delivery nozzle”; the passage at issue does not address the “gaps” between the “segments,” as recited in the limitation at issue. See Appeal Br. 16—17; see also Salzberger Decl. 110 (discussing how one of ordinary skill in the art would understand page 3, lines 23—36 of the Specification). The distinction between the recited “gaps” and the interface addressed in the passage at issue is illustrated in Appellants’ annotated version of Figure 6 of the Specification: 6 Appeal 2017-002195 Application 13/824,945 Appeal Br. 12; see also Spec. Fig. 2 (showing “fuel delivery nozzle” 5 interfacing with “segments” 6). Without the annotation, Figure 6 “shows a detailed view of the flame barrier from figure 5 when the outlet pipe of a fuel delivery nozzle is inserted into the flame barrier.” Spec. 7:13—16. We agree with Appellants that the passage at issue discloses that, in the recited “second state” (shown, for example, in Figure 6), the system “substantially avoid[s] an inflammable fuel vapor air mixture from emerging” at the interface described; and we also agree with Appellants that the passage does not address whether fuel vapor emerges from the “gaps” between the “segments.” See Appeal Br. 11 (stating that the Specification “disclose [s] that the segments of the flame barrier were such that they would indeed bear tightly against the outlet of the pipe to prevent the fuel vapour air mixture from emerging between the outlet of the pipe and the segments’ '’). Further, we agree with Appellants that the first paragraph at issue: teaches that while the segments could certainly bear against the outlet pipe and substantially avoid an inflammable fuel vapor air mixture from emerging, such was hardly a disclosure that the other positively recited feature that is recited in this paragraph 7 Appeal 2017-002195 Application 13/824,945 and throughout the [Specification, the gaps between the segments, would not allow for any gas vapor to pass. Reply Br. 3^4. In response to Appellants’ position, the Examiner states: “the gaps of the invention are present between the segments and the outlet pipe, and as such, an interpretation that vapor does not pass between the segments and the outlet pipe would mean that vapor does not pass through the gaps.” Ans. 9 (discussing Appeal Br. 11). We disagree. For the reasons above, the “gaps” in the limitation at issue—i.e., between the “segments”—are different from the interface addressed in the first paragraph at issue, which is between the “segments” and the “outlet pipe of the fuel delivery nozzle” (Spec. 3:32-36). According to the Examiner, the Examiner’s position as to the teachings in the first paragraph at issue is supported: by the factual evidence of the closest prior art, Uranishi, US 4651889, which discloses a seal member 36 with segments 37 that are interlaced and have a spring 41 holding them in contact with each other, wherein the segments 37 expand when a filler pipe is inserted, forming gaps, and no vapor escapes (see e.g. Col. 1:36-40; Col. 5:46-52). Ans. 5 (emphasis added); see also Uranishi, Fig. 11 (showing “seal member” 36). Although Uranishi does disclose that, in the context of the described invention, “there is no danger that the fuel vapor in the fuel tank 1 will escape to the outside air” (5:51—52), the Examiner has not demonstrated why the teaching in that reference reasonably leads to the conclusion that the “gaps” between the “segments” recited in claim 15 of the Application here must necessarily also prevent fuel vapor from emerging. 8 Appeal 2017-002195 Application 13/824,945 And, to the extent the passage at issue is viewed as addressing the entire “flame barrier”—including the “gaps” between the “segments” and the interface described above (as proposed by the Examiner)—we note that the passage discloses “substantially avoiding an inflammable fuel vapor air mixture from emerging.” Spec. 3:34—36 (emphasis added). Thus, the passage does not wholly “preclude” the limitation at issue. Ans. 4. We next address the paragraph at page 3, lines 1—6 of the Specification (the “second paragraph at issue”). As noted above, Appellants argue that one of ordinary skill in the art would understand “relatively little output” at page 3, line 5 “to be referring to vapor output from the tank.” Appeal Br. 14; see also id. at 17 (stating that “the output from the filler neck would reasonably understood to be fuel vapor by a POSIT A, particularly given that fuel vapor may be understood to expel from a filler neck”). The declarant, Mr. Salzberger, stated that, in light of the second paragraph at issue, “a POSITA would understand that the present application provides a filler neck which prevents flashback during fueling, even though a ‘relatively little output’ of fuel vapor is provided from the filler neck.” Salzberger Deck 117 (quoting Spec. 3,1. 5). The Examiner responds that “[t]he declarant offers no factual evidence to support this opinion” and that “[tjhere appears to be no support in the original disclosure for this interpretation of a relatively little output being fuel vapor.” Ans. 7. A preponderance of the evidence supports Appellants’ position as to the meaning of “relatively little output.” As argued by Appellants, the Examiner “does not offer any rebuttal analysis as to what one of ordinary skill in the art would otherwise reasonably understand from page 3, lines 1—6 9 Appeal 2017-002195 Application 13/824,945 read in light of the entire [Specification, only that Mr. Salzberger[’s] analysis—which takes into consideration the entire [Specification and its teachings—is somehow wrong.” Reply Br. 4; see also Appeal Br. 17 (“If not fuel vapor, how does the Examiner interpret such output?”). Appellants’ position as to the meaning of “relatively little output” is also supported by the Specification’s description of the gaps between the segments, which emphasizes that the distance between segments is too small to allow flashback into the tank. See Spec. 4:33—36 (“The effect achieved by the small distance in the radial direction between two segments is that a flame outside the fuel tank cannot flash through the gap between two segments into the fuel tank.”). This description suggests that it is the size of the gap—and not the complete absence of fuel vapor—that prevents flashback. See Salzberger Decl. 120 (“a POSITA would understand that the reason that flashback does not occur between two segments is due to the distance (gaps) between the two segments, and not because there is no fuel vapor between the segments, particularly given fuel vapor originating from the tank must be present for a flashback to occur”). For the reasons above, we agree with Appellants that the Specification here satisfies the written description requirement as to the limitation at issue. As such, we do not sustain the rejection of claim 15, or the rejection of claims 16—28, which depend from claim 15. DECISION We reverse the decision to reject claims 15—28 under 35U.S.C. § 112, first paragraph. REVERSED 10 Copy with citationCopy as parenthetical citation