Ex Parte Sawyer

Board of Patent Appeals and Interferences

Sep 29, 2011

11395994 (B.P.A.I. Sep. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE McLURE SAWYER
____________

Appeal 2010-005404
Application 11/395,994
Technology Center 3600
____________

Before FRED A. SILVERBERG, GAY ANN SPAHN and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-5, 8-11 and 16-19. More specifically, the
Examiner rejects claims 1, 2, 5, 8-10 and 16-19 under 35 U.S.C. § 102(b) as
being anticipated by Guenther (US 3,967,697, issued July 6, 1976) and
claims 3, 4 and 11 under 35 U.S.C. § 103(a) as being unpatentable over
Guenther. Claims 6, 7 and 12-15 have been cancelled.
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We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claims 1 and 18 are independent claims, and claim 18, reproduced
below with italics added, is illustrative of the subject matter on appeal.
18. A method of removing an oil drain plug from
an oil drain hole to drain used oil from an engine
comprising the steps of inserting at least a portion
of an oil drain plug head into a receptacle of an oil
drain plug remover comprising a deflector portion
and a receptacle, the receptacle being open from a
first side of the deflector portion to a second side
of the deflector portion to allow at least a portion
of the oil drain plug to pass through, loosening the
drain plug head by directly contacting the oil drain
plug having passed through the deflector portion
and holding the oil drain plug remover adjacent the
oil drain hole to direct the used oil emerging from
the drain hole downward into a catch basin.

ISSUES
The following issues are ordered starting with claim 18, instead of
starting numerically with claim 1, for ease of understanding the analysis of
the opinion. This appeal turns on the following issues.
First, does claim 18, as properly construed, require a step
of removing a drain plug (App. Br. 6)?
Second, does Guenther disclose (a) the deflector portion
as recited in the step of inserting and the step of loosening of
claim 18 (App. Br. 7), and (b) the step of “loosening the drain
plug head by directly contacting the oil drain plug having
passed through the deflector portion,” as recited in claim 18
(App. Br. 6-7; Reply Br. 4)?
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Third, does Guenther disclose (a) the deflector portion
(App. Br. 4, Reply Br. 2-3); and (b) a receptacle open “for user
access to the drain plug head,” as recited in claim 1?
Fourth, does Guenther disclose that “the deflector
portion includes a directional edge,” as recited in claim 5 (App.
Br. 5-6, Reply Br. 3)?

FINDINGS OF FACTS
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. Guenther discloses a crankcase oil drainage and collection device
including a special oil container 8 and a special drain plug 6 that is
substituted for the original drain plug in the crankcase neck 4. Guenther,
col. 1, ll. 50-53; col. 2, ll. 34-38; figs. 1 and 3. The special oil container 8
includes a bag 22, a neck 24 and a funnel member 38. The container neck
24 is preferably formed of a semi-rigid, flexible plastic material. Guenther,
col. 2, ll. 67-68, col. 3, ll. 1-6, 13-17, 25-30. The special drain plug 6 has the
form of a bolt and an externally threaded shank 10. The free end of the
threaded shank 10 includes an insert 16 formed of a soft, compressible
material such as plastic, and slightly oversized threads as compared to the
threads on the remainder of the shank 10. Guenther, col. 2, ll. 39-53; fig. 6.
2. Guenther discloses that the structure of insert 16 greatly resists
entry into the threads of the crankcase neck 4; and when insert 16 is
retracted outwardly from the crankcase drain neck 4, similar resistance in the
opposite direction provides a signal to the operator to “avoid[] the possibility
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that the plug might be turned completely free of the [crankcase drain] neck
4.” Guenther, col. 4, ll. 17-23.
3. We adopt the Examiner’s findings in the Examiner’s Answer
beginning at page 3, line 9 “Guenther discloses an oil drain” and ending
page 3, line 17 “drain plug head [12].”
4. We adopt the Examiner’s finding in the Examiner’s Answer at
page 7, lines 19-21 that “the deflector of Guenther directs used oil through
the neck (24) by running off the used oil of the first side of the deflector.”
5. We adopt the Examiner’s finding in the Examiner’s Answer at
page 6, in the annotation of Guenther’s Figure 3, “[d]rain plug head portion
that is passed through the [receptacle] opening from the first side to the
second side [of the deflector 38].” See also Guenther, col. 3, ll. 55-59.
6. The Appellant’s Specification at page 1, line 26 states “the used oil
tends to drip out as the oil drain plug is loosened”; and at page 7, line 30 –
page 8, line 2 states, “[t]he loosening tool can then be . . . placed . . . directly
on the drain plug head when using an open receptacle 6’ or 6” to loosen the
drain plug.”
7. We adopt the Examiner’s finding in the Examiner’s Answer at
page 8, lines 14-17 “[t]he Examiner further submits that the container neck
(24) of Guenther may be manually squeezed and deformed to press tightly
directly against the plug head to apply greater force to loose[n] or remove
the drain plug (see col. 4, lines 13-16).”

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ANALYSIS
Anticipation Rejection
First Issue
The Appellant has separately addressed the rejection of claim 18
under § 102(b) as anticipated by Guenther. App. Br. 6-7, Reply Br. 3-4.
The Appellant does not provide separate arguments for claim 19 other than
those presented for independent claim 18. As such, claim 19 stands or falls
with claim 18. See 37 C.F.R. § 41.37(c)(1)(vii).
The Appellant contends that Guenther does not disclose a “method of
removing an oil drain plug from an oil drain hole to drain used oil from an
engine” as recited from the preamble of claim 18. App. Br. 6. “If the claim
preamble, when read in the context of the entire claim, recites limitations of
the claim, or, if the claim preamble is ‘necessary to give life, meaning, and
vitality’ to the claim, then the claim preamble should be construed as if in
the balance of the claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999).
Claim 18 includes the following steps in the body of the claim:
“inserting at least a portion of an oil drain plug head into a receptacle”;
“loosening the drain plug head”; and “holding the oil drain plug remover
adjacent the oil drain hole.” These steps do not reference removing a drain
plug head from an oil drain hole. Although it is notable that the performance
of the holding step is “to direct the used oil emerging from the drain hole
downward into a catch basin[,]” since the Specification states “the used oil
tends to drip out as the oil drain plug is loosened” (FF 6), the used oil
emerging from the drain hole while the drain plug is being loosened can be
directed downward into a catch basin without the drain plug being removed.
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Therefore, we do not construe the claim preamble, when read in the context
of the entire claim, to recite limitations of the claim, and we do not construe
the claim preamble to give life, meaning, and vitality to the claim, with
respect to removing the drain plug. Thus, to sustain the Examiner’s
rejection of claim 18 under § 102(b) as being anticipated by Guenther, we
are not required to find that Guenther teaches the removal of the special
drain plug 6 from the crankcase neck 4.
It is noteworthy however, that Guenther discloses that the special
drain plug 6 has an insert 16 at its free end. FF 1. The insert 16 upon being
retracted can signal to the operator when the special drain plug 6 is retracted
as far as necessary to avoid the possibility that the drain plug may be turned
completely free of the crankcase neck 4. FF 2. The signal to an operator to
stop retracting the special drain plug 6, also signals to the operator that if the
operator continues retracting the special drain plug 6 there is a possibility
that the plug 6 would be turned completely free of the crankcase neck 4. As
such, Guenther’s signal to the operator also suggests the possibility that
special drain plug 6 can be removed from the crankcase neck 4 if the
operator continues to retract the special drain plug 6.
Second Issue
The Examiner correctly finds that Guenther’s funnel member 38
corresponds to the deflector portion. FF 3. The Appellant contends that
Guenther’s funnel member 38 is not a deflector portion. App. Br. 7. In light
of the Appellant’s contention, the Examiner clarifies and we agree that
Guenther’s funnel member 38 is a deflector because it directs used oil
through the container neck 24 by running off the used oil of the first side of
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the deflector. FF 4. Thus, Guenther describes the deflector portion as
recited in the step of inserting and the step of loosening of claim 18.
Claim 18 also recites “loosening the drain plug head by directly
contacting the oil drain plug having passed through the deflector portion.”
In this case, the broadest reasonable interpretation consistent with the
underlying Specification of “loosening the drain plug head by directly
contacting the oil drain plug” includes a loosening tool that can be placed
directly on the drain plug head when using an open receptacle. See FF 6.
The Appellant contends that Guenther does not disclose “loosening
the drain plug head by directly contacting the oil drain plug”, as recited in
claim 18, because the limitation requires “that the user directly contact the
drain plug head.” Reply Br. 4; App. Br. 6-7.
The Examiner correctly construes “loosening the drain plug head by
directly contacting the oil drain plug” in that the limitation lacks a reference
to the structure that is directly contacting the drain plug head. Ans. 8.
The Examiner correctly finds that in Guenther, the container neck 24
has a receptacle opening between the container neck 24 and the funnel
member 38 and the drain plug head 12 passes through the receptacle opening
from the first side to the second side of the deflector. FF 3, 5. In this case,
the manually squeezed and deformed container neck 24, wherein the
container neck is pressed tightly directly against the plug head is considered
to be a loosening tool to loosen the drain plug. Thus, the manually
squeezing and deforming of the container neck 24 to loosen the drain plug,
corresponds to the step of “loosening the drain plug head by directly
contacting the oil drain plug.” See FF 6, 7. Thus, the Appellant’s contention
is not persuasive.
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Third Issue
The Appellant has separately addressed the rejection of claim 1 under
§ 102(b) as anticipated by Guenther. App. Br. 4-5, Reply Br. 2-3. The
Appellant does not provide separate arguments for claims 2, 8-10, 16 and 17
rejected under § 102(b) other than those presented for independent claim 1.
As such, claims 2, 8-10, 16 and 17 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
The Appellant contends that Guenther’s funnel member 38 is not a
deflector portion. App. Br. 5. As stated above, the Examiner correctly finds
that funnel member 38 is a deflector. (FF 3, 4). Additionally, the funnel
member 38 corresponds to the deflector portion as recited in claim 1.
Claim 1 also recites “the receptacle is open to allow at least a portion
of the drain plug head to pass from a first side of the deflector portion to the
second side of the deflector portion for user access to the drain plug head.”
(Italics added). We construe the phrase “for user access to the drain plug
head” as an intended use of the receptacle. This is similar to the Appellant’s
construction in that, “‘access’ to a drain plug head requires that the head be
used for its intended purpose, i.e. turning the drain plug.” Reply Br. 2
(emphasis in original).
Therefore, the Examiner’s finding that Guenther teaches manually
squeezing container neck 24 to loosen the drain plug head 12 (FF 7) also
corresponds to an intended use of the container neck 24 to provide user
access to drain plug head 12 via manually squeezing the drain plug head 12
through the container neck 24. Additionally, we note that to manually
squeeze the drain plug head 12, a portion of the drain plug head 12 must be
passed through the receptacle opening. See FF 5.
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Fourth Issue
Claim 5 recites “[t]he oil drain plug remover of Claim 1 wherein the
deflector portion includes a directional edge.” The Appellant contends that
the claim must be read in light of the specification, which includes the
directional edge being described to deflect the used oil away from the user.
Reply Br. 3. The Appellant also contends that Guenther’s funnel member 38
does not include a directional edge because the contents are not deflected off
the surface, but directed downward into an opening. App. Br. 5-6.
Although the claims are interpreted in light of the specification, limitations
from the specification must not be read into the claims. In re Van Geuns,
988 F.2d 1181 (Fed. Cir. 1993). The Examiner reasons “any edge of a
deflector [(i.e. funnel member)] is considered as a directional edge.” Ans. 8.
More importantly, and as stated above, the Examiner correctly finds
Guenther’s funnel member 38 acts a deflector by directing used oil through
the container neck 24 by running off the used oil of the first side of the
deflector. FF 3, 4. As such, we find that the lower edge of the Guenther’s
funnel member 38, near flange 40, corresponds to a directional edge as
recited in claim 5.
Obviousness Rejection
Additionally, the Appellant does not separately address claims 3, 4
and 11 rejected under § 103(a) as being unpatentable over Guenther apart
from independent claim 1 (See App. Br. 3-4).
For the reasons provided above in our analysis of claim 1, we find
these arguments equally unpersuasive of Examiner error for dependent
claims 3, 4 and 11. As such, we affirm the Examiner’s rejection of
dependent claims 3, 4 and 11.
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CONCLUSION
First, claim 18, as properly construed, does not require a step of
removing a drain plug. Second, Guenther discloses (a) the deflector portion
as recited in the step of inserting and the step of loosening of claim 18, and
(b) the step of “loosening the drain plug head by directly contacting the oil
drain plug having passed through the deflector portion”, as recited in claim
18. Thus, we sustain the rejection of claims 18 and 19 under § 102(b) as
being anticipated by Guenther.
Third, Guenther discloses (a) the deflector portion, and (b) a
receptacle open “for user access to the drain plug head,” as recited in claim
1. Thus, we sustain the rejection of claims 1, 2, 8-10 and 16-17 under
§ 102(b) as being anticipated by Guenther and the rejection of claims 3, 4
and 11 under § 103(a) as being unpatentable over Guenther.
Fourth, Guenther discloses that “the deflector portion includes a
directional edge,” as recited in claim 5. Thus, we sustain the rejection of
claim 5 under § 102(b) as being anticipated by Guenther.

DECISION
We AFFIRM the Examiner’s decision finally rejecting claims 1-5, 8-
11 and 16-19.
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 § 1.136(a)(1).

AFFIRMED

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