Ex Parte EspositoDownload PDFPatent Trial and Appeal BoardMar 24, 201613622697 (P.T.A.B. Mar. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/622,697 09/19/2012 28249 7590 03/24/2016 DILWORTH & BARRESE, LLP Dilworth & Barrese, LLP 1000 WOODBURY ROAD SUITE405 WOODBURY, NY 11797 FIRST NAMED INVENTOR Joseph Esposito 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. 1211-7 CON 8852 EXAMINER TRIGGS, ANDREW J ART UNIT PAPER NUMBER 3638 MAILDATE DELIVERY MODE 03/24/2016 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 JOSEPH ESPOSITO Appeal2014-002630 Application 13/622,697 Technology Center 3600 Before JOHN C. KERINS, EDWARD A. BROWN, and GEORGE R. HOSKINS, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEivIENT OF THE CASE Joseph Esposito (Appellant)1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision finally rejecting claims 37-57, which are the pending claims. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER Claims 3 7, 51, and 5 6 are independent. Claim 3 7 illustrates the claimed subject matter: 37. A self-contained structure configurable as a shipping container and as a dwelling, said structure comprising: 1 The Appeal Brief identifies Mesocore, LLC, as the real party in interest. Appeal Br. 3. Appeal2014-002630 Application 13/622,697 a lower section including a platform and a floor, said lower section forming a first portion of a foundation of said dwelling; an upper section including a ceiling and connected to the lower section to define a cavity, said upper section forming a first portion of a roof of said dwelling; a plurality of wall components attached to said lower section and said upper section within said cavity to form subcavities within said cavity; a plurality of separate and distinct panels attachable to said lower section and said upper section to surround said cavity when the structure is configured as the shipping container and attachable to said upper section to form a second portion of said roof of said dwelling extending from said first portion of said roof to define an approximate area of said dwelling when the structure is configured as the dwelling; and a plurality of separate and distinct extension walls storable within said subcavities when the structure is configured as the shipping container and configurable to enclose said approximate area of said dwelling when the structure is configured as the dwelling. Appeal Br. 19 (Claims App.). REJECTIONS2 The claims on appeal stand rejected as follows: 1. Claims 37-39, 43, 47, 52, 53, and 55-57 under 35 U.S.C. § 102(b) as anticipated by Stockli (US 6,223,479 Bl, issued May 1, 2001). 3 2. Claims 40-42, 51, and 54 under 35 U.S.C. § 103(a) as unpatentable over Stockli and Hodges (US 6,889,395 Bl, issued May 10, 2005).4 2 The rejection of claims 40-42 and 46-50 under 35 U.S.C. § 112, first paragraph, has been withdrawn. Ans. 9; see also Final Act. 4--5. 3 The rejection of claim 51 under this ground of rejection has been withdrawn. Ans. 9; see also Final Act. 6-9. 4 A new ground of rejection of claim 51 under this ground of rejection is provided in the Examiner's Answer. Ans. 8-9. 2 Appeal2014-002630 Application 13/622,697 3. Claim 44 under 35 U.S.C. § 103(a) as unpatentable over Stockli and Colvin, Jr. (US 4,660,332, issued Apr. 28, 1987). 4. Claim 45 under 35 U.S.C. § 103(a) as unpatentable over Stockli and Bradley (US 2003/0009954 Al, published Jan. 16, 2003). 5. Claim 46 under 35 U.S.C. § 103(a) as unpatentable over Stockli, Hodges, and Johnson (US 6,080,927, issued June 27, 2000). ANALYSIS Anticipation by Stockli- Claims 37-39, 43, 47, 52, 53, and 55-57 Claims 37-39, 43, and 47 Figure 1 of Stockli shows building 30 in its extended position, and Figure 3 shows the building in its stowed position. Stockli, col. 3, 11. 4---6, 14--16, and 44--45. Building 30 includes roof assembly 42 with main roof section 44 having extendible roof sections 46, 48, and floor assembly 32 with main floor section 34 and extendible floor sections 36, 38. Id. at col. 4, 11. 42--47; Fig. 1. Claim 37 recites, in part, "a lower section," "an upper section," "a plurality of separate and distinct panels," and "a plurality of separate and distinct extension walls." The Examiner finds that Stockli discloses lower section 34, upper section 44, separate and distinct panels 46, 48, and separate and distinct extension walls 36, 38, as claimed. Final Act. 6-7 (citing Stockli, Figs. 1, 2B, 3, and 4). Appellant contends that Stockli does not disclose "separate and distinct panels" and "separate and distinct extension walls," as claimed. Appeal Br. 14. According to Appellant, "the panels are separate and distinct and the extension walls are separate and distinct. That is, the panels and extension walls are removable and, at least during the transformation from 3 Appeal2014-002630 Application 13/622,697 shipping container to dwelling, not connected to the other components of the structure." Id. at 15 (emphasis added). Appellant also contends that Stockli' s building "is constructed from panels that are connected via hinges, pulleys, and ropes[]," and "[c]onnected is not and cannot be equated with separate and distinct." Id. (emphases added). These contentions are not persuasive. Claim 37 does not recite that the panels or extension walls are "removable," or "not connected to" any other components of the structure "when the structure is configured as the shipping container," "when the structure is configured as the dwelling," or at any other time. Features that do not appear in a claim cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). The Patent and Trademark Office "determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction 'in light of the specification as it would be interpreted by one of ordinary skill in the art."' Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) ("'claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art."'). Appellant does not direct us to any disclosure in Appellant's application that supports the position that "[ c ]onnected is not and cannot be equated with separate and distinct." Appeal Br. 15. Appellant does not point to any description of the phrase "separate and distinct" in the Specification. In fact, we find no description of the term "distinct," or of the term "separate" in relation to "panels" or "extension walls," in the Specification. 4 Appeal2014-002630 Application 13/622,697 Appellant acknowledges that the building in Stockli is constructed from "panels." Appeal Br. 15. We note that an ordinary meaning of "separate" is "2a: not shared with another: INDIVIDUAL<~ rooms>." Merriam-Webster's Collegiate® Dictionary 1134 (I Ith ed. 2003). An ordinary meaning of "distinct" is "1: distinguishable to the eye or mind as discrete." Id. at 364. Applying these definitions of "separate" and "distinct" to the limitation "separate and distinct" in claim 3 7, we find that Stockli' s extendible roof sections 46, 48 are individual panels and are also distinguishable from each other and from main roof section 44, and, likewise, Stockli's extendible floor sections 36, 38 are individual extension walls and are also distinguishable from each other and from main floor section 34. For the above reasons, Appellant does not apprise us of any error in the Examiner's finding that Stockli discloses all limitations of claim 3 7. Appellant relies solely on the dependency of claims 38, 39, 43, and 47 from claim 37 for patentability. Appeal Br. 17. Thus, we sustain the rejection of claims 37-39, 43, and 47 as anticipated by Stockli. Claims 52, 53, and 55 As the anticipation rejection of claim 51 has been withdrawn, and claims 52, 53, and 55 depend from claim 51, we do not sustain the rejection of these dependent claims as anticipated by Stockli. Claims 56 and 57 Claim 56 recites a method comprising, in part, "attaching a plurality of separate and distinct panels to said joined first and second sections." Appeal Br. 23-24 (Claims App.). Appellant contends that Stockli discloses 5 Appeal2014-002630 Application 13/622,697 "panels that are connected via hinges, pullies and ropes," and does not disclose this claim limitation. Id. at 17. For the reasons discussed above in relation to the rejection of claim 37, this contention is not persuasive. Accordingly, we sustain the rejection of claim 56 as anticipated by Stockli. Appellant relies solely on the dependency of claim 57 from claim 56 for patentability. Appeal Br. 17. Thus, we also sustain the rejection of claim 57 as anticipated by Stockli. Obviousness over Stockli and Hodges- Claims 40--42, 51, and 54 Claims 40--42 Appellant relies solely on the dependency of claims 40-42 from claim 37 for patentability. Appeal Br. 17. Thus, we also sustain the rejection of claims 40-42 as unpatentable over Stockli and Hodges. Claims 51 and 54 Claim 51 recites; in part; that "the second section also includ[ es] a reservoir configured to collect rainwater." Appeal Br. 22-23 (Claims App.). The Examiner finds that Stockli does not disclose this limitation. Ans. 8. The Examiner finds that Hodges teaches "a rainwater collection system that collects runoff from a roof and stores it in a reservoir ( 14) so that it can be a water supply for the building." Id. at 8-9 (citing Hodges, Fig. 1 ). The Examiner concludes that it would have been obvious "to have a reservoir configured to collect rainwater and use the rainwater as a water supply for the building." Id. at 9. Appellant responds that "if Hodges were combined with Stockli, the resulting system would require gutter 12 to be positioned on outer edge 86 or 88 of the Stockli structure and thus require tank 14 to be positioned below 6 Appeal2014-002630 Application 13/622,697 that portion of the root: which is below plenum 110. Tank 14 cannot be positioned in plenum 110." Reply Br. 5. Figure 1 of Hodges shows a rainwater collection system comprising gutter 12 "for collecting water 2," and water reservoir tank 14 coupled to gutter 12 for holding the collected water. Hodges, col. 2, 11. 37--42. The Examiner does not explain clearly how the teachings of Hodges would be combined with Stockli. Hodges' gutter 12 and the flow passage coupling gutter 12 and reservoir 14 would also need to be included in the modified Stockli structure to be able to collect rainwater in reservoir 14. However, the Examiner does not state that Hodges' gutter 12 and the flow passage would be combined with Stockli. Also, the Examiner finds that Stockli' s main roof section 44 corresponds to the claimed second section. Ans. 8. We agree with Appellant that the Examiner has not provided an adequate reason with a rational underpinning why one skilled in the art would have incorporated Hodges' rainwater collection system at main roof section 44. We further agree with Appellant that one skilled in the art desiring to collect rainwater by using Stockli's building would most likely position gutter 12 on outer edges 86 and 88 to collect rainwater that flows downwardly from main roof section 44 over extendible roof section 46 and roof panel 72 and also over extendible roof section 48 and roof panel 78, not at main roof section 44. See Stockli, Fig. 2A. Accordingly, we do not sustain the rejection of claim 51, and claim 54 depending from claim 51, as unpatentable over Stockli and Hodges. 7 Appeal2014-002630 Application 13/622,697 Obviousness over Stockli and Colvin, Jr. - Claim 44 Obviousness over Stockli and Bradley - Claim 45 Obviousness over Stockli, Hodges, and Johnson - Claim 46 For each of claims 44, 45, and 46, Appellant relies solely on its dependency from claim 37 for patentability. Appeal Br. 17. Accordingly, we also sustain the rejections of claims 44--46. DECISION The Examiner's decision to reject claims 37--47, 56, and 57 is AFFIRMED, and to reject claims 51-55 is REVERSED. 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)(l )(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation