Ex Parte Beckstead

Patent Trial and Appeal BoardDec 19, 2012

11389295 (P.T.A.B. Dec. 19, 2012)

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. 11/389,295 03/27/2006 Kenneth M. Beckstead KB01U 1382 7590 12/19/2012 DON E. ERICKSON STE. 104 #627 7668 EL CAMINO REAL LA COSTA, CA 92009 EXAMINER MCKINLEY, CHRISTOPHER BRIAN ART UNIT PAPER NUMBER 3781 MAIL DATE DELIVERY MODE 12/19/2012 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 KENNETH M. BECKSTEAD ____________________ Appeal 2010-011943 Application 11/389,295 Technology Center 3700 ____________________ Before: WILLIAM V. SAINDON, SCOTT E. KAMHOLZ, and JEREMY M. PLENZLER, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011943 Application 11/389,295 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from the decision of the Examiner to reject claims 1, 3-10, and 12-21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE CLAIMED SUBJECT MATTER The claimed subject matter is directed to a receptacle for cigar and cigarette butts. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An outdoor receptacle for receiving cigar and cigarette butts, the receptacle comprising: a. a base section, the base section having a bottom wall; b. a hollow section for retaining discarded butts, the hollow section supporting a grill section supported by the bottom wall; c. a grill disposed between the base section and a hood section, the grill having an outer surface and an inner surface, the grill having grill elements substantially parallel to each other and defining elongated slots through which the butts can pass, the grill elements being spaced apart to permit the passage of butts through the grill while restricting the passage of other materials, the grill positioned at an angle substantially greater than zero relative to the horizontal; and d. the hood section providing a conduit for the butts to the grill and substantially covering the outer surface of the grill. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Appeal 2010-011943 Application 11/389,295 3 Sparrow Otsuka Forrest Zeller US 1,928,914 US 3,853,263 US 6,685,029 B2 US 7,306,104 B2 Oct. 3, 1933 Dec. 10, 1974 Feb. 3, 2004 Dec. 11, 2007 REJECTIONS Appellant seeks our review of the following rejections: Claims 1, 4, 6, 7, 10, 13, and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Otsuka and Sparrow. Ans. 3. Claims 3, 12, 18, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Otsuka, Sparrow, and Forrest. Ans. 4. Claims 5, 14, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Otsuka, Sparrow, and Forrest. Ans. 4. Claims 8, 9, 16, 17, and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Otsuka, Sparrow, Forrest, and Zeller. Ans. 5. ANALYSIS 1. Obviousness of claims 1, 4, 6, 7, 10, 13, and 15 over Otsuka and Sparrow Appellant argues these claims as a group. We therefore select claim 1 as representative and decide the appeal with respect to all claims in this group on the basis of claim 1 alone; see 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner found that Otsuka discloses all elements of claim 1 except a “hood section providing a conduit for the butts to the grill and substantially covering the outer surface of the grill.” Ans. 3-4. The Examiner further found that Sparrow discloses a hood. Id. at 4. The Examiner concluded that it would have been obvious to modify Otsuka’s Appeal 2010-011943 Application 11/389,295 4 receptacle to include Sparrow’s hood “in order to exclude rain, snow or the like from entering the receptacle.” Id. Appellant argues that (a) Otsuka teaches away from its combination with Sparrow; (b) neither Otsuka nor Sparrow discloses all elements of claim 1; and (c) Otsuka was applied for some forty years after Sparrow was published. We consider each argument in turn. a. Otsuka teaches away from its combination with Sparrow. Appellant argues that Otsuka teaches away from its combination with Sparrow because (1) Otsuka seeks to avoid sharp edges, but incorporating Sparrow’s hood would have introduced a “sharp edge completely about its periphery” (Br. 4, 7, 8, 10) (quotation from Br. 4); and (2) Otsuka’s nearly- vertical grill angle obviates the need for a cover (Br. 9). Appellant expresses the same opinions in his Declaration (Beckstead Decl. ¶¶ 9 and 6a-f, respectively). In response, the Examiner notes that (1) Sparrow does not disclose the edge as being sharp, that a given edge is not necessarily sharp, and that Appellant offers no evidence supporting this argument (Ans. 7); and (2) adding a hood to Otsuka would still enhance its protection from the elements. Ans. 9. Appellant’s arguments do not apprise us of error in the rejection. As to argument (1), while Appellant correctly notes Otsuka’s objective to provide a receptacle that is “free from sharp edges” (Otsuka, col. 1, ll. 48- 49), we agree with the Examiner that Sparrow does not disclose a hood that necessarily has a sharp edge. Thus, modifying Otsuka’s receptacle to include Sparrow’s hood would not necessarily result in a device that fails to be “free from sharp edges.” Sparrow is therefore not inconsistent with Otsuka’s objective. As to argument (2), we agree with the Examiner that a Appeal 2010-011943 Application 11/389,295 5 hood would reduce the susceptibility of Otsuka’s receptacle to rain and snow, and that Otsuka need not have recognized this benefit for it to have been obvious to one of ordinary skill. For these reasons, we determine that the Examiner correctly found that Otsuka does not teach away from its combination with Sparrow. b. Neither Otsuka nor Sparrow discloses all limitations of claim 1. Appellant argues that (1) Otsuka does not disclose the grill section being “disposed between the base section and the hood section, where the hood section provides a conduit for the butts, and where the hood section substantially covers the outer surface of the grill” (Br. 7,8); and (2) Sparrow does not (i) disclose a grill or (ii) provide a “conduit for the garbage to a grill” (Br. 8). In response, the Examiner explained that (1) it is the combination of Otsuka and Sparrow that meets the specified limitation, not Otsuka alone (Ans. 5-6); that (2)(i) Sparrow was not relied upon for the disclosure of a grill (Ans. 9); and (2)(ii) Sparrow in combination with Otsuka would provide the recited conduit (Ans. 8-9). Appellant’s arguments do not apprise us of error in the rejection, principally because they address the references individually rather than the combination articulated by the Examiner in the rejection. For example, the Examiner did not rely upon Otsuka for the teaching of a hood providing a conduit for the butts to the grill or for a hood substantially covering the outer surface of the grill. The Examiner similarly did not rely upon Sparrow alone for these teachings. Rather, the Examiner showed how the combination of the two references would have met the specified limitations and rendered them obvious to one having ordinary skill. One cannot show nonobviousness of a combination by attacking the references individually. Appeal 2010-011943 Application 11/389,295 6 c. Sparrow predates Otsuka by forty years. Appellant notes that Otsuka fails to include Sparrow’s hood despite the fact that Sparrow was published some forty years before Otsuka was filed. Br. 10. This argument does not apprise us of error in the rejection. The mere passage of time between references does not demonstrate non-obviousness of the combination, without more, such as evidence of failed attempts to combine. For these reasons, we affirm the rejection of claims 1, 4, 6, 7, 10, 13, and 15. 2. Obviousness of claims 3, 12, 18, and 20 over Otsuka, Sparrow, and Forrest. These claims require, among other things, that the angle of the grill be in or within “the range of about 35 degrees to the horizontal to about 55 degrees to the horizontal.” The Examiner cited the combination of Otsuka and Sparrow, as above, in further combination with Forest, which discloses a grill having an angle in the claimed range. Ans. 4. Appellant acknowledges that Forrest discloses a grill having an angle in the claimed range but argues that Forrest is “completely irrelevant” to the claimed receptacle. Br. 11. In response, the Examiner explains that the grills of Otsuka and Forrest perform the same function— segregating material passing through the grill— and that the modification to Otsuka’s grill angle would have been obvious in the interests of improving Otsuka’s visibility. Ans. 10. Appellant’s argument does not apprise us of error in the rejection. The Examiner has provided articulated reasoning with rational underpinning to explain why the combination would have been obvious and how Forrest’s Appeal 2010-011943 Application 11/389,295 7 disclosure is not “irrelevant” to Otsuka’s receptacle. Appellant has not identified error in the Examiner’s reasoning. 3. Obviousness of claims 5, 14, and 19 over Otsuka, Sparrow, and Forrest. Appellant presents no arguments specifically directed to patentability of these claims. We affirm the rejection for reasons similar to those given above. 4. Obviousness of claims 8, 9, 16, 17, and 21 over Otsuka, Sparrow, Forrest, and Zeller. Appellant presents no arguments specifically directed to patentability of these claims. We affirm the rejection for reasons similar to those given above. We have considered Appellant’s remaining arguments but find that they too do not apprise us of error in the rejections. We have considered Appellant’s declaration but find that it consists of little more than arguments and unsupported assertions as to how one of ordinary skill would have interpreted the cited references. It does not contain objective statements of fact that are material to the outstanding rejections. As such, it is of little probative value. We agree with the Examiner that it is insufficient to overcome the rejections. See Ans. 9. DECISION For the above reasons, the Examiner’s decision to reject claims 1, 3-10, and 12-21 is AFFIRMED. Appeal 2010-011943 Application 11/389,295 8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls