Ex Parte Armaly

Patent Trial and Appeal BoardNov 28, 2012

11827284 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOHN W. ARMALY, JR. ____________________ Appeal 2010-009525 Application 11/827,284 Technology Center 3600 ____________________ Before: KEN B. BARRETT, PHILLIP J. KAUFFMAN, and BARRY L. GROSSMAN, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009525 Application 11/827,284 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1, 3, 5, 7-9. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s claimed invention “relates, in general, to a support frame for use with lawn and refuse bags or the like.” Spec. [0002]. Claims 1, 7, and 8 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A support apparatus for insertion into and maintaining the top opening of a bag in an upwardly open position, comprising: a retention frame, said retention frame including a center wall, a pair of sidewalls, and means for hingedly connecting the sidewalls to the center wall and to swing relative to the hinge between a stored first position in generally parallel relation with the center wall and an in use second position in generally perpendicular relation with the center wall and form a C-shaped structure that is fittable, at least in part, to the upper end portion of the bag and the walls are juxtaposed with a respective portion of the bag the frame extending partially into the bag, and retention means for engaging and gripping the material of the bag, the retention means being provided on each sidewall and adapted to removably grip a respective upper end portion of the bag with which the sidewall is juxtaposed wherein the frame operates to retain and maintain the bag in the upwardly open position the retention means comprising: each sidewall being punched and slitted, the slit being even, continuous and extending between Appeal 2010-009525 Application 11/827,284 3 opposite ends, and upwardly directed U-shaped wherein to form a deflectable U-shaped beam clip that interfits in nested relation within a U-shaped cutout and the punches forming a pair of keyhole shaped openings one at each uppermost end of the slit, said keyhole shaped openings defining a pivot axis proximate to the top edge of the associated side wall, said beam clip having an upper end portion disposed along said pivot axis and a lower end portion that is deflectable outwardly and inwardly relative to the plane of the associated sidewall, the upper end portion of the material of the bag being frictionally engaged and retained in a tight fit by and between the edges of the slit that form the beam clips and associated cutouts when the beam clips are nested in their cutouts and also by and with the edges that form the keyhole openings at the ends of the slit. REJECTIONS Appellant seeks review of the following rejections made in the Office Action, a Final Rejection, mailed August 20, 2009: 1. Claims 1, 3, 5, and 7-9 under 35 U.S.C. § 103(a) as being obvious over Judge (U.S. Patent No. 6,007,030, issued December 28, 1999) and Peeples (U.S. Design Patent No. D500,457 S, issued January 4, 2005); and 2. Claims 1, 3, 5, and 7-9 under 35 U.S.C. § 103(a) as being obvious over Judge and Ashby (U.S. Patent No. 5,100,087, issued March 31, 1992). Appeal 2010-009525 Application 11/827,284 4 ANALYSIS For both rejections, the Examiner found that Judge discloses all of the limitations of the claimed invention except for the claimed “retention means.” Ans. 4-5, 6-7. The Examiner also found that Peeples and Ashby each disclose the claimed “retention means.” Ans. 5-6, 7-8. The Examiner concluded that it would have been obvious to a person having ordinary skill in the relevant technology to substitute the retention structure disclosed in either Peeples or Ashby for the retention structure disclosed in Judge. Ans. 6, 8. The rationale for this combination of the references provided by the Examiner is that the resulting structure provides “a better means of retaining the bag within the support apparatus.” Id. Obviousness over Judge and Peeples Appellant argues that even if Judge and Peeples collectively disclose the structure claimed, it would not have been obvious to a person of ordinary skill in the art to combine the references. Br. 7. We find this argument persuasive. We fail to see, and the Examiner has not adequately explained, why one of ordinary skill in the art would have found it obvious to combine Judge’s trash bag holder with Peeples ornamental design for a pot wrap holder so as to arrive at subject matter of Appellant’s independent claims 1, 7, and 8. As such, we cannot sustain the Examiner’s rejection of claims 1, 3, 5, and 7-9 as being obvious over Judge and Peeples. Obviousness over Judge and Ashby For both rejections being appealed, Appellant argues the rejections of claims 1, 5, and 8-9 under 35 U.S.C. § 103(a) as a group (Br. 6-8, 9-11). We address the first rejection by independent claim 1. For the second rejection, we select independent claim 1 as representative, and claims 5, 8, and 9 stand Appeal 2010-009525 Application 11/827,284 5 or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Claims 3 and 7 are argued separately and thus are addressed separately. Claims 1, 5, 8 and 9 The Examiner’s findings concerning Judge were summarized previously and need not be repeated. The Examiner also found that Ashby discloses the claimed “retention means.” Ans. 7-8. The Examiner concluded that it would have been obvious to a person having ordinary skill in the relevant technology to substitute the retention means disclosed in Ashby for the retention means disclosed in Judge. Ans. 8. The rationale for this combination of the references provided by the Examiner is that the resulting structure provides “a better means of retaining the bag within the support apparatus.” Id. Deflectable Retention Means Appellant argues that the fastening device disclosed by Ashby is made from plastic or metal materials that “inherently do not allow it to deflect along an axis between the keyhole openings and move inwardly and outwardly to engage and retain the bag.” Br. 10. The Examiner found that Ashby discloses a deflectable clip (Ans. 8) and that the combination of Judge and Ashby would result in a flexible structure (Ans. 16-17). See also, Ashby, col. 2, ll. 47-51. Appellant has not pointed to any evidence or expressed any persuasive reasoning that establishes error in the findings of the Examiner. Ashby’s Function and Operability Appellant argues that it would not have been obvious to combine Ashby and Judge because the retention mechanism in Ashby functions by preventing handles from being pulled upwardly, whereas the claimed Appeal 2010-009525 Application 11/827,284 6 structure prevents the support frame from sliding down the bag being retained, and that the combined references would be “inoperable.” Br. 10- 11. Appellant’s argument is unpersuasive. Appellant fails to identify a structural difference between Ashby’s fastening device and the claimed retention means. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function). The fact that Ashby’s fastening device may also be utilized in a different fashion does not demonstrate error in the Examiner’s findings regarding the combination of Judge and Ashby (Ans. 7-8, 17-18) and the conclusion that the claimed invention would have been obvious (Ans.7-8). Accordingly, we sustain the rejection of claim 1 and claims 5, 8, and 9 fall with claim 1. Claim 3 With respect to the rejection of claim 3, Appellant argues that because Judge discloses that no retaining slits are required when using a paper bag (col. 6, ll. 40-43) Judge “teaches away from the use of slits for engaging a bag when the bag is made from paper, such as required by Claim 3.” Br. 11. The Examiner found that just because Judge states that “retaining slits are not required for use with a paper bag does not negate the fact that the retaining slits can be used with a paper bag” (emphasis added). Ans. 12. We find Appellant’s argument unpersuasive. Appellant has not pointed to any evidence or expressed any persuasive reasoning that establishes error in the findings of the Examiner. Appeal 2010-009525 Application 11/827,284 7 We agree with the Examiner that it would have been obvious to a person having ordinary skill in the relevant technology to use the retention structure of Judge taken with Ashby with either paper or plastic bags. Moreover, since claim 3 is dependent on claim 1, it includes the same retention means called for in claim 1 whether the bag is paper, plastic, or some other material. Appellant also argues that Ashby is used exclusively with plastic bags, and that if used with a paper bag, the bag would rip due to the non- deflectable plastic or metal fastening device, and for that reason is not properly combined with Judge. Br. 11-12. This argument is premised on the characterization that Ashby’s fastening devices are not deflectable. Such characterization is incorrect as explained in the analysis of claim 1, supra. Claim 7 Regarding claim 7, Appellant argues that Judge does not disclose “a frame having top and bottom edges proximate to the top end of the bag.” Br. 12. The Examiner found that the claimed structure was disclosed. The Examiner reasoned that, since the size of the bag has not been claimed, if a very large bag was used with the structure of Judge taken with Peeples, the combined structure would be proximate the top end of the bag as claimed. Ans. 13. We agree with the Examiner’s reasoning. A person having ordinary skill in the relevant technology would have known at the time the invention was made that the frame or support structure could or should be sized to suit the needs of the bag being held, the material (e.g., paper or plastic) from which the bag is made, and the material (e.g., leaves or trash) being loaded Appeal 2010-009525 Application 11/827,284 8 into the bag. Judge discloses that his holder may be used with bags of varying sizes. Judge, col. 5, l. 59 – col. 6, l. 4. Appellant recognizes this well-known design concept and discloses, but does claim, that the support structure of the disclosed device may extend the full height of the bag (Spec., para. 41, 44, 53), as disclosed in Judge, or may extend less than the full height of the bag and be proximate the top end as claimed. Br. 12. DECISION We reverse the Examiner’s decision to reject claims 1, 3, 5, and 7-9 under 35 U.S.C. § 103(a) as unpatentable over Judge and Peeples. We affirm the Examiner’s decision to reject claims 1, 3, 5, and 7-9 under 35 U.S.C. § 103(a) as unpatentable over Judge and Ashby. 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 Klh