Ex Parte Esposito

Patent Trial and Appeal Board

Mar 24, 2016

13622697 (P.T.A.B. Mar. 24, 2016)

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.
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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
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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.
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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
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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
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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.
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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
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