Ex parte Schiwek

Board of Patent Appeals and Interferences

Mar 6, 2000

08495471 (B.P.A.I. Mar. 6, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HELMUT SCHIWEK
____________
Appeal No. 1999-2845
Application No. 08/495,471
____________
ON BRIEF
____________
Before CALVERT, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 17 to 61. Claims 62 to 66 have been
withdrawn from consideration under 37 CFR § 1.142(b) as being
drawn to a nonelected invention. Claims 1 to 16 have been
canceled.
We AFFIRM-IN-PART.
Appeal No. 1999-2845 Page 2
Application No. 08/495,471
Appeal No. 1999-2845 Page 3
Application No. 08/495,471
BACKGROUND
The appellant's invention relates to a safety container
for storing and transporting environmentally hazardous, in
particular explosive substances (specification, p. 1). A copy
of the claims under appeal is set forth in the appendix to the
appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Held 2,305,923 Dec.
22, 1942
Stewart 3,650,431 Mar. 21,
1972
Claims 17, 18, 24 to 33, 37 to 44 and 47 to 60 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by
Held.
Claims 19 to 23, 34 to 36, 45, 46 and 61 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Held in view
of Stewart.
Appeal No. 1999-2845 Page 4
Application No. 08/495,471
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 14, mailed September 29, 1998) and the answer (Paper No.
20,
Appeal No. 1999-2845 Page 5
Application No. 08/495,471
mailed May 11, 1999) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 19,
filed March 29, 1999) and reply brief (Paper No. 21, filed
June 14, 1999) 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 references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation rejection
We sustain the rejection of claims 17, 18, 24 to 33, 37
to 44 and 47 to 60 under 35 U.S.C. § 102(b).
Initially we note that anticipation by a prior art
reference does not require either the inventive concept of the
claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference.
Appeal No. 1999-2845 Page 6
Application No. 08/495,471
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). A prior art reference anticipates the subject of a
claim when the reference discloses every feature of the
claimed invention, either explicitly or inherently (see Hazani
v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358,
1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)); however, the law of anticipation does not require
that the reference teach what the appellants are claiming, but
only that the claims on appeal "read on" something disclosed
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)).
Claim 49
Claim 49 reads as follows:
A safety apparatus for oil tankers and ships for
storing and transporting hazardous material comprising a
container and glass wool filling in the container.
Appeal No. 1999-2845 Page 7
Application No. 08/495,471
Held's invention relates to receptacles such as tanks,
cans or similar containers for combustible liquids, such as
petrol, benzole, ethylether or the like, having a low boiling
point and forming explosive vapors, and more particularly to
tanks of vehicles, such as motor cars, airplanes and the like
(column 1, lines 1-7). Held's object was to develop a tank
which offers maximum safety against explosions (column 1,
lines 8-11). As shown in Figure 1, Held teaches (column 2,
lines 1-38) the use of a tank 1 having a charging and
discharging opening 2, which may be closed by a lid 3. In the
interior of the tank 1 there is arranged a number of vertical
and horizontal partitions 4 which consist of wire cloth,
perforated sheets, etc., which are well permeable to the
liquid but which have the necessary strength in order to keep
a glass wool filling in proper position and to prevent the
glass wool filling from being upset and sticking together.
The space between the partitions 4 is filled up with loose
glass wool 8 in such a manner that preferably the whole
interior of the tank, except for a small space 9 underneath
the inlet 2 which is provided with a perforated cylindrical
body 10, is filled with glass wool.
Appeal No. 1999-2845 Page 8
Application No. 08/495,471
It is our determination that claim 49 reads on Held and
accordingly claim 49 is anticipated by Held. In that regard,
we read claim 49 on Held as follows: A safety apparatus for
oil tankers and ships for storing and transporting hazardous
material (the receptacle disclosed by Held's Figure 1 is a
safety apparatus clearly capable of the recited intended use
of being for oil tankers and ships for storing and
transporting hazardous material) comprising a container
(Held's tank 1) and glass wool
filling in the container (Held's glass wool filling 8 in the
tank 1).
The argument presented by the appellant in the brief (pp.
9-15) and the reply brief (pp. 1-2) does not convince us that
the subject matter of claim 49 is novel. The appellant is
correct that Held's tank 1 does include partitions 4 defining
individual chambers or cells filled with glass wool 8.
However, we fail to find any limitation in claim 49 (or for
the matter claim 17) that would preclude the claimed container
from having a supporting structure therein (e.g., the
Appeal No. 1999-2845 Page 9
Application No. 08/495,471
appellant's supports 16, 17 (see Figure 2), Held's partitions
4, etc.). Thus, the claimed subject matter is not
distinguishable from Held's tank 1 with partitions 4 defining
individual chambers or cells filled with glass wool 8. As to
the appellant's allegation (brief, p. 13) that "Held will
inherently have areas with the liquid in the material and
areas with free flowing liquid thereby leading away from the
claimed invention in which the liquid is uniformly stored in
the mat," we note first that arguments in a brief cannot take
the place of evidence (In re Pearson, 494 F.2d 1399, 1405, 181
USPQ 641, 646 (CCPA 1974)) and second that the argument is not
commensurate in scope with the claimed invention. Likewise,
the appellant's argument that Held is silent on "bonded glass
wool" is not commensurate in scope with the claimed invention
since bonded glass wool is not claimed.
Since all the limitations of claim 49 are disclosed in
Held for the reasons set forth above, the decision of the
examiner to reject claim 49 under 35 U.S.C. § 102(b) is
affirmed.
Appeal No. 1999-2845 Page 10
Application No. 08/495,471
Claims 17, 18, 24 to 33, 37 to 44, 47, 48 and 50 to 60
The decision of the examiner to reject claims 17, 18, 24
to 33, 37 to 44, 47, 48 and 50 to 60 under 35 U.S.C. § 102(b)
is also affirmed since the appellant has not argued separately
the patentability of any particular claim apart from the
others, thus allowing claims 17, 18, 24 to 33, 37 to 44, 47, 48
and 50 to 60 to fall with claim 49 (see In re Young, 927 F.2d
588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Wood,
582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978); and 37 CFR §
1.192(c)(7) and (8)(iv)).
The obviousness rejection
We will not sustain the rejection of claims 19 to 23, 34
to 36, 45, 46 and 61 under 35 U.S.C. § 103.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d at 591, 18 USPQ2d
at 1091 and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981).
Appeal No. 1999-2845 Page 11
Application No. 08/495,471
The teachings of Held have been set forth above. Stewart
discloses a safety container in which a bulked or textured
filamentary plastic material is employed to reduce explosion
hazard and/or as a anti-sloshing means.
The examiner found (final rejection, p. 3) that Stewart
teaches "that it was known to provide a coating binder as set
forth at column 1, lines 70+." The examiner then determined
that it would have been obvious at the time the invention was
made to a person having ordinary skill in the art to "modify
the 'glass wool' of Held to include a binder, as taught by
Stewart."
The appellant argues (brief, pp. 15-19, and reply brief,
pp. 2-3) that the examiner has not presented a prima facie
case of obviousness with respect to claims 19 to 23, 34 to 36,
45, 46 and 61 since there is no suggestion to combined the
applied prior art to arrive at the claimed invention. We
agree. We have reviewed the teachings of Stewart (especially
those set forth at column 1, lines 70+) and fail to find any
teaching "that it was known to
Appeal No. 1999-2845 Page 12
Application No. 08/495,471
provide a coating binder." In our view, the teachings of
Stewart would not have suggested modifying the glass wool of
Held to include a binder but instead would have suggested
replacing the glass wool in Held's tank with a bulked or
textured filamentary plastic material.
With regard to claim 19 and its dependent claims (i.e.,
claims 20 to 23, 45 and 46), it is clear to us that the
subject matter of claim 19 (i.e., a coating on the glass wool
comprising a binder, a resin, a hardener, methylpolysilane, a
dust-collecting agent, and silicone) is not suggested by the
applied prior art. The examiner has not even alleged that the
subject matter of claim 19 would have been obvious at the time
the invention was made to a person having ordinary skill in
the art from the applied prior art. In this regard, we note
that the examiner has not pointed to any teaching in the
applied prior art of a coating including the recited hardener,
methylpolysilane, dust-collecting agent and silicone.
With regard to claim 34 and its dependent claim (i.e.,
claim 35), it is clear to us that the subject matter of claim
Appeal No. 1999-2845 Page 13
Application No. 08/495,471
34 (i.e., a compressed air source connected to the container)
is not suggested by the applied prior art. The examiner has
not alleged
Appeal No. 1999-2845 Page 14
Application No. 08/495,471
While the examiner has stated (final rejection, p. 4)1
that "[t]he use of an 'inert gas' is deemed old and no
teaching is deemed necessary," the examiner never determined
that adding a compressed air source connected to Held's tank
would have been obvious at the time the invention was made to
a person having ordinary skill in the art.
It is not clear to us where the original disclosure2
provides written description support (required by the first
paragraph of 35 U.S.C. § 112) for the limitation of claim 36.
While Figure 1 clearly discloses inert gas containers 19, the
specification (p. 19) clearly states that inert gas from the
containers 19 is introduced via connection 18 into the
interior 10 of the container 7. Thus, the inert gas
containers 19 are not an inert gas chamber within the
container as set forth in claim 36. The examiner should
determine whether or not claim 36 is in compliance with the
written description requirement of the first paragraph of 35
U.S.C. § 112.
that the subject matter of claim 34 would have been obvious at
the time the invention was made to a person having ordinary
skill in the art from the applied prior art. 1
With regard to claim 36, it is clear to us that the
subject matter of claim 36 (i.e., an inert gas chamber in the
container) is not suggested by the applied prior art. The2
examiner has not even alleged that the subject matter of claim
36 would have been obvious at the time the invention was made
Appeal No. 1999-2845 Page 15
Application No. 08/495,471
While the examiner has stated (final rejection, p. 4)3
that "[t]he use of an 'inert gas' is deemed old and no
teaching is deemed necessary," the examiner never determined
that adding an inert gas chamber in Held's tank would have
been obvious at the time the invention was made to a person
having ordinary skill in
the art.
to a person having ordinary skill in the art from the applied
prior art. 3
With regard to claim 61, it is clear to us that the
subject matter of claim 61 (i.e., a latticework of glass
fibers surrounding walls of the ships, wherein the latticework
has a hydrophobic binder coating) is not suggested by the
applied prior art. The examiner has not alleged that the
subject matter of claim 61 would have been obvious at the time
the invention was made to a person having ordinary skill in
the art from the applied prior art. In this regard, we note
that the examiner has not pointed to any teaching in the
applied prior art of a latticework of glass fibers wherein the
latticework has a hydrophobic binder coating.
Appeal No. 1999-2845 Page 16
Application No. 08/495,471
For the reasons set forth above, the decision of the
examiner to reject claims 19 to 23, 34 to 36, 45, 46 and 61
under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 17, 18, 24 to 33, 37 to 44 and 47 to 60 under 35 U.S.C.
§ 102(b) is affirmed and the decision of the examiner to
reject claims 19 to 23, 34 to 36, 45, 46 and 61 under 35
U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
Appeal No. 1999-2845 Page 17
Application No. 08/495,471
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-2845 Page 18
Application No. 08/495,471
JAMES C. WRAY
1493 CHAIN BRIDGE ROAD SUITE 300
MCLEAN, VA 22101
JVN/dal