Ex Parte Bradford et al

Patent Trials and Appeals Board

Jan 25, 2019

14281246 - (D) (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/281,246 05/19/2014
26875 7590 01/29/2019
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Judson A. Bradford
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BRP-316US 5916
EXAMINER
PATEL, BRIJESH V
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
01/29/2019 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUDSON A. BRADFORD and ERIC S. BRUINSMA
Appeal 2018-004408
Application 14/2 81,246 1
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision in
the Final Office Action (dated May 3, 2017, hereinafter "Final Act.") rejecting
claims 1-20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART and denominate our affirmance as a NEW
GROUND of REJECTION pursuant to our authority under 37 C.F.R. 41.50(b).
1 Bradford Company is the applicant and identified as the real party in interest in
Appellants' Appeal Brief (filed Sept. 18, 2017, hereinafter "Appeal Br."). Appeal
Br. 5.
Appeal2018-004408
Application 14/281,246
INVENTION
Appellants' invention is related "to containers with movable members for
supporting product." Spec. 1.
Claims 1, 8, 13, and 17 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A container for holding product therein during shipment,
the container comprising:
a bottom and two opposed sides;
at least one set of tracks supported by the opposed
container sides, each of the tracks of each set of tracks
comprising a back, upper and lower walls extending outwardly
from the back, the lower wall having a lower lip folded back
upon itself to create a rounded edge;
multiple movable dunnage supports extending between
each set of tracks, each of the dunnage supports having a
narrowed portion at each end and an end portion, the narrowed
portions of each dunnage support being engaged with and
slidable along the rounded edges of the tracks of the set of
tracks to facilitate movement of the dunnage supports and the
end portions being sized to remain inside the tracks of the set of
tracks during movement of the dunnage supports; and
dunnage supported by the dunnage supports.
REJECTION
The Examiner rejects claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Van Bree (US 6.164,440, iss. Dec. 26, 2000), Bolt et al. (US
4,527,694, iss. July 9, 1985, hereinafter "Bolt"), and Lautenschlager (US
4,778,230, iss. Oct. 18, 1998).
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Application 14/281,246
ANALYSIS
Claims 1-7
Appellants do not present arguments for the patentability of claims 2-7 apart
from claim 1. See Appeal Br. 10-19. Therefore, in accordance with 37 C.F.R. §
4I.37(c)(l)(iv), we select claim 1 as the representative claim to decide the appeal
of the rejection of these claims, with claims 2-7 standing or falling with claim 1.
Independent claim 1 requires, inter alia, "multiple movable dunnage
supports," wherein "each of the dunnage supports having a narrowed portion at
each end and an end portion." Appeal Br. 20 (Claims App.).
The Examiner finds that Van Bree discloses most of the limitations of
independent claim 1, including, inter alia, "multiple movable dunnage supports" 7
"having a narrowed portion at each end and an end portion." Final Act. 2-3; see
also Van Bree, Figs. 6, 7. However, the Examiner finds that Van Bree "fails to
teach the lower lip ( of the lower wall) being folded back upon itself to create a
rounded edge." Id. at 4. Nonetheless, the Examiner finds that Lautenschlager
discloses a container 10 having at least one set of tracks 10, 14, wherein each track
includes a back 22, lower wall 14, "and a lower lip folded back upon itself to
create a rounded edge." Id. (citing Lautenschlager, col. 3, 11. 29-49, Fig. 1). Thus,
the Examiner concludes that
Id.
[I]t would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to
modify the respective lower lips (of Van Bree '440) to [be]
folded back on itself (as taught by Lautenschlager '230) for
structural reinforcement of the (respective) lower lip of the
(respective) lower wall (of each track) which will prevent the
supports from falling off the track ( due to the large contact
surface that has been formed).
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Appeal2018-004408
Application 14/281,246
Appellants contend that Lautenschlager constitutes non-analogous art.
Appeal Br. 10. As such, Appellants argue that "Lautenschlager is not from
the same field of endeavor as the claimed invention" and "is not reasonably
pertinent to the particular problem with which the current inventor was
involved." Id. at 10-11. According to Appellants, the invention in the
instant application relates to "containers with movable members," whereas
Lautenschlager "relates to desk and kitchen drawers." Id. Appellants
further assert that the current invention pertains to the problem of "a
container whereby the contents may be more easily accessible for the person
required to access the contents," whereas Lautenschlager "pertain[ s] to the
problem of having a short drawer in a long cabinet carcase, or the
problem of having fully opening drawers." Id. at 12.
The Federal Circuit has explained that "[t]he analogous art inquiry is a
factual one, requiring inquiry into the similarities of the problems and the closeness
of the subject matter as viewed by a person of ordinary skill in the art.'' Scientijzc
Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014).
Criteria for detennining whether prior art is analogous may be
summarized as "( l) whether the art is form the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved."
id. at 1359 (citing bi re Clay, 966 F.2d 656, 658----659 (Fed. Cir. 1992)). In this
case, we appreciate Appellants' position that the claimed container is not from the
same field of endeavor as Lautenschlager's drawer. However, the Examiner is
correct in that "an inventor considering a support track mechanism for a container
would naturally look to other references employing supporting grooves, sliders,
etc. which may come from areas such as a file cabinet, a kitchen drawer, a sliding
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Appeal2018-004408
Application 14/281,246
door, a server rack or a sliding support rack." Examiner's Answer (dated Jan. 9,
2018, hereinafter "Ans.") at 3.
Stated differently, both Appellants' invention and Lautenschlager address
the same problem of providing a rail for movement of a structure thereon, i.e.,
dunnage supports, as per Appellants' invention, or a drawer, as per Lautenschlager.
The function of a rail to maintain a structure within its track and permit its
movement is the same, regardless of whether the structure is a dunnage support or
a drawer. As such, the Examiner coffectly found that Lautenschlager is analogous
art, and properly considered its teachings in determining that the subject matter of
claim 1 would have been obvious.
We further note that Appellants' statement of the problem would focus the
analysis not on the problem at issue but on the specific application and setting
identified in the Specification-"problems associated with tracks and support
configurations for shipping containers that use dunnage supported by dunnage
supports for transporting large items such as automobile doors and the like."
Reply Brief (filed Mar. 9, 2018, hereinafter "Reply Br.") at 6; see also Spec. 1
(generally disclosing this application and setting). Appellants' position, in effect,
would conflate the two-prong analogous art inquiry into a single prong, field of
endeavor inquiry. The analogous prior art should not be so limited. See Graham
v. John Deere Co. of Kansas City, 383 U.S. 1, 35 (1966) (rejecting the argument
that the cited references were not "pertinent prior art" and stating that "[ t ]he
problems confronting [ the patentee] and the insecticide industry were not
insecticide problems; they were mechanical closure problems"). Thus, the
Examiner correctly finds that Lautenschlager is analogous art
A .. ppeHants further argue that ''the Examiner provides no particular
motivation to combine the references." A .. ppeal Br. 13. According to Appellants~
the Examiner's rejection is "indicative of impermissible hindsight." id. at 15.
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Appeal2018-004408
Application 14/281,246
\Ve are not persuaded by Appellants' arguments because the Examiner has
provided reasoning with rational underpinnings to modify Van Bree's rail to have
a lower lip folded upon itself, as taught by Lautenschlager, namely, "for structural
reinforcement ... which will prevent the supports from falling off the track ( due to
the large contact surface that has been formed)." See Final Act. 4; In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds [require]
some articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness") ( cited with approval in KSR, 550 U.S. at 418).
Appellants' conclusory assertion that there is "no motivation" ignores and fails to
point out the error in the rationale provided by the Examiner, and, thus, Appellants
do not persuasively argue that the Examiner's conclusion lacks rational
underpinning.
A .. ccordingly, for the foregoing reasons~ we sustain the rejection under 35
U.S.C. § 103(a) of claim l as unpatentable over Van Bree and Lautenschlager.
Claims 2-7 fall with claim 1. However, we denominate our affirmance as a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 4I.50(b), because our analysis
relies upon facts and reasoning that the Examiner did not use.
Claims 8-20
In contrast to independent claim 1, each of independent claims 8, 13, and 17
requires, inter alia, dunnage supports having "flattened" portions. Appeal Br. 21-
23 (Claims App.).
The Examiner finds that although Van Bree fails to teach such "flattened"
portions, Bolt discloses "a plurality of dunnage supports (27) ... having a
flattened portion (63) at each end (27a)." Final Act. 3 (citing Bolt, col. 3, 1. 32-5,
1. 61, Figs. 1--4 ). Thus, the Examiner concludes that
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Application 14/281,246
Id.
[I]t would have been obvious to one of ordinary skill in the art
... to modify each of the plurality of dunnage supports ( of Van
Bree '440) to have a similar flattened portions at each end (as
taught by Bolt '694) for easier insertion of each of the plurality
of dunnage supports within the tracks.
Appellants argue that "modifying Van Bree with the ... end portions
disclosed in Bolt" "would render it unsatisfactory for its intended
purpose." Appeal Br. 17. According to Appellants, "replacing the rollers 30
provided at the end of the rods 2 and 3 in Van Bree with the recessed area 61 at the
edge portion 27a found in Bolt ... would render Van Bree inoperable" because it
"would provide an essentially round end portion inserted into the track area with a
flattened portion engaging an upper lip of the upper wall of the track." Id. at 17-
18 (citing Van Bree, Fig. 7; Bolt, Fig. 8). Appellants explain that such an
arrangement is "disfavored as it tends to create unwanted friction, require greater
force to move the hanger bars, and/or cause damage of either the hanger bar or the
tracks, such as spall." Id. at 18 (citing Appellants' Spec. 3, 1. 23--4, 1. 4).
In reviewing the Examiner's response to Appellants' arguments discussed
supra, Appellants are correct that the Answer does not address Appellants'
arguments. See Ans. 3-5; see also Reply Br. 9. Specifically, the Examiner does
not provide findings or reasoning rebutting Appellants' arguments. Thus, on the
record before us, weighing the Examiner's reasons for combining the teachings of
Van Bree and Bolt against Appellants' arguments supported with evidence from
Appellants' Specification and unrebutted by the Examiner, we disagree with the
Examiner's conclusion of obviousness. Moreover, the Examiner's use of the
Lautenschlager disclosure does not remedy the Examiner's combination of Van
Bree and Bolt. See Final Act. 3--4.
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Application 14/281,246
Accordingly, for the foregoing reasons, we do not sustain the rejection under
35 U.S.C. § 103(a) of claims 8----20 as unpatentable over Van Bree, Bolt, and
Lautenschlager.
SUMMARY
The Examiner's decision to reject claims 1-7 under 35 U.S.C. § 103(a) as
unpatentable over Van Bree and Lautenschlager is affirmed.
The Examiner's decision to reject claims 8-20 under 35 U.S.C. § 103(a) as
unpatentable over Van Bree, Bolt, and Lautenschlager is reversed.
For the reasons discussed above, we denominate our affirmance of the
rejection of claims 1-7 as a new ground of rejection pursuant to 37 C.F.R.
§ 4I.50(b ).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
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Appeal2018-004408
Application 14/281,246
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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