Ex Parte Dudley et al

Patent Trial and Appeal Board

Aug 29, 2017

13106442 (P.T.A.B. Aug. 29, 2017)

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.
13/106,442 05/12/2011 Newton H. DUDLEY TECH-52 5277
20558 7590 08/31/2017
SMITH IP SERVICES, P.C.
P.O. Box 997
Rockwall, TX 75087
EXAMINER
MAUST, TIMOTHY LEWIS
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
08/31/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mail@ smithipservices.com
scrawford @ smithipservices .com
sally @ smithipservices.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEWTON H. DUDLEY, RICHARD MILLER,
and JOHN McDERMOTT
Appeal 2015-001009
Application 13/106,442
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Newton H. Dudley et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from a final rejection of claims 1—19 and 21. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-001009
Application 13/106,442
THE INVENTION
Appellants’ invention is directed to a fuel additive system and a
method for discharging a fuel additive into a fuel receptacle. Claims 1
and 11, reproduced below, are illustrative:
I. A fuel additive system, comprising:
a fuel additive; and
a container for the fuel additive, the container including
a neck through which the fuel additive is flowed, wherein the
neck includes a threaded portion on one end, and wherein the
threaded portion has a configuration that disengages a lock
which secures a closure of a fuel receptacle upon insertion of
the container into the fuel receptacle.
II. A method of discharging a fuel additive into a fuel
receptacle, the method comprising:
containing the fuel additive in a container having a neck
through which the fuel additive can flow, wherein the neck
includes a threaded portion on one end;
inserting the container into the fuel receptacle;
spreading apart latch members of a lock with the threaded
portion, thereby disengaging the lock which secures a closure of
the fuel receptacle;
then continuing insertion of the container into the fuel
receptacle, thereby opening the closure; and
discharging the fuel additive from the container into the
fuel receptacle via the neck.
2
Appeal 2015-001009
Application 13/106,442
REJECTIONS
The Examiner has rejected:
(i) claims 1—7 under 35 U.S.C. § 102(b) as being anticipated by
Scriven (US Des. 422,919, issued Apr. 18, 2000);
(ii) claims 8—10 under 35 U.S.C. § 103(a) as being unpatentable over
Scriven; and
(iii) claims 11—19 and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Scriven in view of Gabbey (US 6,968,874 Bl, issued Nov.
29, 2005).
The Examiner withdrew similar rejections of the claims that employed
Hughes (US 6,585,015 B2, issued July 1, 2003) as an anticipating reference
and as a principal reference in rejections based on obviousness. Ans. 4.
OPINION
Claims 1—7—Anticipation by Scriven
Appellant argues claims 1 and 3—5 as a group, and presents separate
arguments for the patentability of dependent claims 2, 6, and 7. Appeal
Br. 13—14. We take claim 1 as representative of the group, and claims 3—5
stand or fall with claim 1. The arguments directed to claims 2, 6, and 7, are
taken up separately.
Claims 1 and 3—5
For claim 1, the Examiner takes the position that Scriven discloses all
structural elements of the claimed fuel additive system, including a container
for the fuel additive, including a neck through which the fuel additive is
flowed, and the neck having a length and a dimension lateral to the length,
and the neck having a threaded portion on one end. Final Act. 3. The
Examiner finds that the Scriven container is capable of performing the
3
Appeal 2015-001009
Application 13/106,442
functional or intended use language in claim 1, directed to insertion of the
container into a fuel receptacle, and the threaded portion of the neck having
a configuration that disengages a lock which secures a closure of a fuel
receptacle upon insertion of the container. Id.
Appellants first argue that Scriven does not describe a fuel additive, a
component positively recited in claim 1. Appeal Br. 13. Although the title
of the Scriven patent is simply, “Bottle,” as the Examiner points out, the
prior art references appearing on the cover page of the Scriven patent
disclose and evidence that the bottle, in use, contains a fuel additive. Ans. 5.
The argument therefore does not apprise us of error in the rejection.
Appellants next argue that the Examiner’s position regarding the
capability of the Scriven container to perform the intended uses set forth in
claim 1 are “merely conjecture.” Appeal Br. 13. Appellants take this one
step further, and assert that the bottle illustrated in Scriven is “actually
incapable of disengaging a lock which secures a . . . fuel receptacle” closure,
in that there is “a large difference in diameter between a neck of the bottle
and threads at an end of the neck.” Id.
Appellants point to no differences between the Scriven container and
the structural features found in claim 1. Claim 1 includes no limitation(s)
directed to any difference in diameter between the neck of the bottle and the
threads at the end of the neck, nor what value or range of values of such
difference would result in a construction that meets the functional and
intended use statements in the claim. The Specification is, too, silent with
respect to any details as to how much difference in diameter would be
4
Appeal 2015-001009
Application 13/106,442
regarded as a limit to being able to perform the recited functions and
intended uses.
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[TJhere is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). “Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As stated
in Swinehart, 439 F.2d at 213:
where the Patent Office 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, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
Once a prima facie case of anticipation has been established, the
burden shifts to the Appellant to prove that the prior art product does not
necessarily or inherently possess the characteristics of the claimed product.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”). See also In re Spada,
911 F.2d 705, 708-09 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1327
(Fed. Cir. 1986) (finding it insufficient for an appellant to merely assert that
the prior art does not inherently possess the characteristic relied on and
challenge the PTO to prove the contrary by experiment or otherwise. “The
PTO is not equipped to perform such tasks.”).
5
Appeal 2015-001009
Application 13/106,442
Appellants here merely argue, because the threads in Scriven “are
much smaller in diameter than the neck,” that “if the Scriven bottle were to
be inserted into a locked closed fuel receptacle, the threads would likely
bottom out against a closure, without first spreading apart latch members of
a lock of the fuel receptacle.” Appeal Br. 11. Appellants continue,
“[c]onversely, if the threads did have a diameter large enough to spread apart
the latch members, the neck would be too large to be inserted into the fuel
receptacle.” Id. These arguments appear to presume some particular, but
unclaimed, lock configuration that includes latch members which are to be
spread outward to unlock a closure in the fuel receptacle. Arguments
directed to unclaimed features or elements are not probative of error in the
rejection of claim 1. Such arguments further do not satisfy Appellants’
burden to prove that the Scriven reference does not necessarily or inherently
possess the characteristics of the claimed container, particularly in view of
the absence of any claim elements defining a particular lock that Appellants
might use to establish that the Scriven container would not function to
disengage such lock.
The rejection of claim 1 as being anticipated by claim 1 is sustained.
Claims 3—5 fall with claim 1.
Claim 2
Appellants argue that the Examiner’s position that the Scriven
container is capable of performing the function and intended use set forth in
claim 2 is mere conjecture, and that it appears to Appellants that the Scriven
container is actually not capable of meeting the claim 2 limitation. Appeal
Br. 13—14. The argument does not apprise us of error in the rejection.
6
Appeal 2015-001009
Application 13/106,442
Claim 2 adds nothing structurally to the container set forth in claim 1,
and instead, in reciting that an unclaimed closure pivots under influence of
the container, attempts to invoke a functional or intended use limitation
directed to the unclaimed, not positively recited, fuel receptacle and lock
therefor.
As above, arguments directed to unclaimed features or elements are
not probative of error in the rejection of claim 2. The rejection is sustained.
Claim 6
Appellants argue that the Examiner’s position that the Scriven
container is capable of performing the function and intended use set forth in
claim 6 is mere conjecture, and that it appears to Appellants that the Scriven
container is actually not capable of meeting the claim 2 limitation. Appeal
Br. 14. The argument does not apprise us of error in the rejection.
Claim 6 adds nothing structurally to the container set forth in claim 1,
and instead, in reciting that an unclaimed closure is displaced as the
container is inserted, attempts to invoke a functional or intended use
limitation directed to the unclaimed, not positively recited, fuel receptacle
and closure therefor.
As above, arguments directed to unclaimed features or elements are
not probative of error in the rejection of claim 6. The rejection is sustained.
Claim 7
Appellants argue that the Examiner’s position that the Scriven
container is capable of performing the function and intended use set forth in
claim 7 is mere conjecture, and that it appears to Appellants that the Scriven
container is actually not capable of meeting the claim 7 limitation. Appeal
Br. 13—14. The argument does not apprise us of error in the rejection.
7
Appeal 2015-001009
Application 13/106,442
Claim 7 adds nothing structurally to the container set forth in claim 1,
and instead, in reciting that a displacement of an unclaimed closure permits
fluid flow into an unclaimed fuel receptacle, attempts to invoke a functional
or intended use limitation directed to the unclaimed, not positively recited,
fuel receptacle and closure therefor.
As above, arguments directed to unclaimed features or elements are
not probative of error in the rejection of claim 7. The rejection is sustained.
Claims 8—10— Unpatentability over Scriven
Claim 8 depends from claim 1 and recites a minimum length for the
neck of the container. Claims 9 and 10 each depend from claim 1, with
claim 9 reciting an approximate outer diameter of the threaded portion of the
neck, and with claim 10 reciting an approximate range of outer diameters for
the threaded portion. The Examiner takes the position that it would have
been obvious to employ these dimensions for the Scriven container, in order
for the container to be usable with an unleaded fuel or diesel fuel system in
that the container is designed to deliver fuel additives. Ans. 3.
Appellants contend that “the claimed invention is very different from
the bottle illustrated in the Scriven reference,” with the alleged principal
difference being that, in the Scriven container, “the threaded end is much
smaller in diameter than the neck of the bottle.” Reply Br. 15. Appellants
maintain that a person of ordinary skill in the art would thus “clearly not be
motivated to use the Scriven bottle design for dispensing fuel additive into a
locked closed fuel receptacle. Id.
Once again, Appellants attempt to distinguish the claims on the basis
of limitations found nowhere in the claims. As noted in the discussion of
claim 1 above, neither claim 1 nor these claims depending from claim 1
8
Appeal 2015-001009
Application 13/106,442
include any limitation to any difference in diameter between the neck of the
bottle and the threads at the end of the neck, nor what value or range of
values of such difference would result in a construction that meets the
functional and intended use statements in the claim. As such, there is no
basis for asserting that “the claimed invention is very different from the
bottle illustrated in the Scriven reference.” Reply Br. 15 (emphasis added).
As claimed, there is no structural difference between the container set forth
in these claims and the Scriven container.
The rejection of claims 8—10 as being unpatentable over Scriven is
sustained.
Claims 11—19 and 21—Unpatentability over Scriven and Gabbey
Appellants argue these claims as a group. Reply Br. 16—17. We take
claim 11 as representative, and claims 12—19 and 21 stand or fall with claim
11.
Appellants argue that this rejection is in error because the threaded
bottle end of Scriven “is clearly incapable of operating a locked closed fuel
receptacle.” Reply Br. 16. These claims differ from the above-discussed
claims in that they are drawn to a method, and that a fuel receptacle having
latch members to disengage a lock are positively-recited elements, however,
the claims are no more specific in terms of the relative size of the outer
diameter of the neck to the outer diameter of the threaded portion of the
neck.
Further, Appellants do not address the Examiner’s position that it
would have been obvious to modify the dimensions of the Scriven device, if
and as necessary, to have the threaded portion of the neck displace the latch
9
Appeal 2015-001009
Application 13/106,442
members of the Gabbey locking mechanism, in order to be able to dispense a
fuel additive from the Scriven container into the Gabbey fuel reservoir.
Accordingly, we are not apprised of error in the rejection of claim 11
as being unpatentable over Scriven and Gabbey. The rejection of claim 11 is
sustained. Claims 12—19 and 21 fall with claim 11.
DECISION
The rejection of claims 1—7 under 35 U.S.C. § 102(b) is affirmed.
The rejections of claims 8—19 and 21 under 35 U.S.C. § 103(a) 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).
AFFIRMED
10