Ex Parte Hedstrom et al

Patent Trial and Appeal BoardSep 21, 2012

11157967 (P.T.A.B. Sep. 21, 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. 11/157,967 06/22/2005 Kristen K. Hedstrom HED003-105 1377 173 7590 09/21/2012 WHIRLPOOL CORPORATION - MD 0750 500 RENAISSANCE DRIVE - SUITE 102 ST. JOSEPH, MI 49085 EXAMINER NOVOSAD, JENNIFER ELEANORE ART UNIT PAPER NUMBER 3637 MAIL DATE DELIVERY MODE 09/21/2012 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 KRISTEN K. HEDSTROM, MICHAEL J. KRAMER, and SEUNGWON (CHRIS) SONG ____________________ Appeal 2010-008743 Application 11/157,967 Technology Center 3600 ____________________ Before PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and PATRICK R. SCANLON, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008743 Application 11/157,967 2 STATEMENT OF THE CASE Kristen K. Hedstrom et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-16. Claims 17-20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and ENTER A NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b). THE CLAIMED SUBJECT MATTER The claimed subject matter relates to “a dishwasher dish support rack formed from plastic” and “including a plurality of tine elements having elastomeric bumpers.” Spec. 1, ll. 6-7. Claims 1, 2, and 7 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A dishwasher comprising: a tub defining a washing chamber; and a dish support rack arranged within the washing chamber, said dish support rack including: a rack body including front, rear, bottom and opposing side walls, said rack body being adapted to support dishware during a washing operation in the dishwasher; a plurality of tine members formed separate from and attached to the rack body, each of the plurality of tine members being formed from a ceramic and plastic composite material and including a base member and a plurality of tines extending from the base member, said plurality of tines establishing dividers for receiving and supporting dishware within the rack body; and Appeal 2010-008743 Application 11/157,967 3 a plurality of elastomeric bumpers provided on each of the plurality of tines, said plurality of elastomeric bumpers providing a cushion for dishware placed in the rack body. Independent claim 2 is directed to a dishwasher comprising a dish support rack that includes a plurality of tine members and a plurality of elastomeric bumpers provided on the tines. Independent claim 7 is directed to a dishwasher comprising a dish support rack that includes a plurality of tine members formed from a ceramic and plastic composite material. REFERENCES The Examiner relies upon the following prior art references: Williams Pityo Smith Bulters Cooke Yoakum Larson US 1,853,888 US 2,946,453 US 5,351,837 US 6,605,329 B2 US 6,685,034 B1 US 6,778,089 B2 US 7,434,592 B2 Apr. 12, 1932 Jul. 26, 1960 Oct. 4, 1994 Aug. 12, 2003 Feb. 3, 2004 Aug. 17, 2004 Oct. 14, 2008 THE REJECTIONS Appellants seek review of the following rejections: Claims 1-3 and 7-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Smith, Bulters, and Williams. Claims 1-3 and 7-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Smith, Bulters, and Pityo. Claims 1-3, 7-13, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Smith, Yoakum, and Williams. Claims 1-3, 7-13, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Smith, Yoakum, and Pityo. Appeal 2010-008743 Application 11/157,967 4 Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Smith and Williams. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Smith and Pityo. Claims 2-5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Smith and Cooke. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Smith, Cooke, and Larson. ANALYSIS Rejection of claims 1-3 and 7-16 based on Smith, Bulters, and Williams Claim 1 It is the Examiner’s view that all of the subject matter recited in independent claim 1 is disclosed in Smith, except for the tines formed from a plastic and ceramic composite material and the elastomeric bumpers. Ans. 4. The Examiner finds that Bulters discloses forming molded parts from a plastic and ceramic composite material and concludes it would have been obvious to one of ordinary skill in the art to fabricate the tines of Smith from the material taught by Bulters for increased strength and stability. Ans. 4-5. The Examiner also finds that Williams teaches the use of elastomeric bumpers and concludes it would have been obvious to one of ordinary skill in the art to provide each tine of Smith with an elastomeric bumper for increased protection against damage to items placed in the rack of Smith. Ans. 5. Appellants argue that Bulters does not suggest molded tines of any sort. App. Br. 11. While Bulters does not explicitly mention tines, the Appeal 2010-008743 Application 11/157,967 5 reference primarily relates to molded parts generally. The passage in column 5, lines 3-22 of Bulters pointed out by Appellants (see App. Br. 11- 12) sets forth various applications in which molded parts are “preferably” used and thus does not appear intended to be an exhaustive list. Furthermore, the list includes “white goods,” which commonly refer to major appliances including dishwashers.1 Accordingly, the fact that Bulters does not specifically disclose forming tines for dishwasher racks does not mean a person of ordinary skill the art would not consider the reference in connection with the dishwasher rack of Smith. Appellants also argue that there is no apparent reason for one of ordinary skill in the art to modify the tines of Smith to be comprised of a ceramic and plastic composite material based on Bulters, asserting that the Examiner’s reasons for modifying Smith (increased ease in economy and manufacture and increased strength and stability)2 are “mere speculation.” App. Br. 12; see also Supp. Reply Br. 23. In response, the Examiner notes that the modification is the simple substitution of one known element for another that produces predictable results. Ans. 11. Appellants’ argument does not apprise us of error in the Examiner’s combination of Smith and Bulters. Bulters states that one objective of the invention is to eliminate the drawback of fiber-reinforced polypropylene 1 White goods: electrical goods that are conventionally white, such as washing machines and refrigerators. “White goods,” n., def. (b), Oxford English Dictionary (1989) available at www.OED.com. 2 We note that the Examiner provided both of these reasons in the Office Action of December 30, 2008 but relies on only increased strength and stability in the Examiner’s Answer. 3 “Supp. Reply Br.” refers to the Supplemental Reply Brief filed on May 10, 2010. Appeal 2010-008743 Application 11/157,967 6 having lower than desired strength. Bulters, col. 1, ll. 27-31. Thus, Bulters discloses using a plastic and ceramic material to provide increased strength with respect to fiber-reinforced polypropylene. Smith discloses that the dishwasher rack, including the tines, can be molded from a suitable plastic material such as polypropylene. Smith, col. 2, ll. 51-54 and 66-68. We thus agree with the Examiner that there would have been a sufficient reason to cause one of ordinary skill in the art to replace the plastic material of Smith with the plastic and ceramic material of Bulters. Regarding Williams, Appellants argue that this reference is non- analogous art. App. Br. 12; see also Supp. Reply Br. 3-4. The Federal Circuit has held: A reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed.Cir.1992). “Two separate tests define the scope of analogous art: (1) whether the art is from 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.” In re Bigio, 381 F.3d 1320, 1325 (Fed.Cir.2004). “A reference is reasonably pertinent if ... it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” Clay, 966 F.2d at 659. Innovention Toys, LLC v. MGA Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). The Examiner finds that Williams is analogous art because both Williams and the instant invention relate to racks for holding and separating fragile objects. Ans. 11. We take this to be a determination that Williams is reasonably pertinent to the particular problem that Appellants faced. Appeal 2010-008743 Application 11/157,967 7 Appellants counter by arguing that Williams is not concerned with separating fragile objects because the metal objects of Williams cannot be viewed as being fragile. Reply Br. 4.4 In response, the Examiner points out that the metal objects of Williams are considered to be fragile because they “could be bent or injure a user.” Supp. Ans. 4.5 While the capacity to injure a user does not make the metal objects fragile, we agree that the possibility of being bent or otherwise damaged does suggest that Williams’s metal objects can be considered to be fragile. Indeed, Williams states that a disadvantage of prior pickling crates is the metal sheets “are frequently subjected to scratching or denting through contact with the pickle pins [of the pickling crate].” Williams, p. 1, ll. 57-60. Appellants also argue that the bumpers of Williams are not used for cushioning but are instead used to prevent corrosive interaction between the pins of the pickling crate and the ferrous sheets being pickled. App. Br. 13. Williams is concerned with preventing deposition of copper or other materials that occurs due to galvanic action between the pins and the metal sheets. See Williams, p. 1, ll. 27-56 and p. 3, ll. 1-8. However, contrary to Appellants’ assertion, Williams also discloses that the bumpers provide cushioning to prevent damage to the sheets. See Williams, p. 1, ll. 70-75 and p. 3, ll. 8-17. Appellants’ Specification identifies the protection of dishes and the like as a particular problem that the inventors faced. See Spec. 2, ll. 11-13 (“To this end, there exists a need for a dishwasher dish support rack which is 4 “Reply Br.” refers to the Reply Brief received on Oct. 6, 2009. 5 “Supp. Ans.” refers to the Supplemental Examiner’s Answer dated March 9, 2010. Appeal 2010-008743 Application 11/157,967 8 formed from plastic, while exhibiting elastomeric qualities to protect delicate dishes and the like.”). Because the Williams reference addresses the same problem of protecting the objects supported in the rack from damage, we conclude that Williams logically would have commended itself to an inventor's attention in considering such a problem and thus is analogous art. Appellants also argue that the Examiner has failed to provide a proper rationale for combining Williams with Smith. App. Br. 12, 14. The rationale provided by the Examiner for the combination is that using the bumpers taught by Williams would prevent fragile items from being damaged. Ans. 5. As noted above, we disagree with Appellants’ positions that Williams does not involve fragile items and does not disclose using bumpers to provide cushioning of the fragile items. We thus find that the Examiner has established a proper rationale for combining Williams with Smith. For the above reasons, we sustain the rejection of independent claim 1 as being obvious over the combination of Smith, Bulters, and Williams. Claims 2 and 3 Appellants set forth the same arguments for independent claim 2 as those advanced with respect to independent claim 1. App. Br. 14-17. For the same reasons as discussed supra with respect to claim 1, we sustain the rejection of claim 2. We also sustain the rejection of claim 3, which depends from claim 2 and for which Appellants do not advance any separate arguments. Appeal 2010-008743 Application 11/157,967 9 Claims 7 and 10-16 Appellants set forth essentially the same arguments for independent claim 7 as those advanced with respect to independent claim 1. App. Br. 17- 19. For the same reasons as discussed supra with respect to claim 1, we sustain the rejection of claim 7. We also sustain the rejection of claims 10- 16, which depend from claim 7 and for which Appellants do not advance any separate arguments. Claim 86 Claim 8 depends from independent claim 7 and recites “wherein the base member includes a first end having a socket element that extends to a second end provided with a pin element.” The Examiner finds that Smith discloses a plurality of tine members (combs 20),7 each tine member including a base member (elongated base wire 21) having a first end with a socket element (channel 27) and a second end with a pin element, wherein the pin element is received in the socket element. Ans. 4, 13. Appellants argue that the connectors 23 (which define the channels 27 alleged by the Examiner to be socket elements) cannot be interpreted as a first end of the base member (elongated base wire 21) that 6 Though claim 8 is indefinite, as explained infra, our analysis here relates to a different aspect of claim 8, and does not involve considerable speculation regarding the scope of claim 8. Cf. In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the examiner and the Board were wrong in relying on what at best were speculative assumptions as to the meaning of the claims and basing a rejection under 35 U.S.C. § 103 thereon.). 7 The Examiner refers to reference numeral 22 of Smith as a “plurality of tine members.” Ans. 3-4. However, it is clear the Examiner found the comb 20 of Smith corresponds to Appellants’ claimed tine members, and the tines 22 of Smith correspond to the claimed tines. See Ans. 13. Appeal 2010-008743 Application 11/157,967 10 extends to a second end having a pin element. App. Br. 20. Appellants further argue that it is not reasonable to interpret Smith as teaching the base member configuration required by claim 8. Id. The Examiner responds by stating: each tine member (20) has a rod (21) that can have a socket element (27) at each end, or one socket element (27) can bridge two rods (21). Hence, each rod [has] a first end, and a second end, a socket element at either end, and the end without the socket element would thus define the pin element. Ans. 13. We find the Examiner’s reasoning to be flawed. The connectors 23 are separate elements provided to pivotally mount the combs 20 to the rack. Smith, col. 3, ll. 25-30. Smith does disclose that the combs 20 can be mounted to the rack by “at least a connector adjacent each end of the comb” (Smith, col. 3, ll. 34-36), but there is no indication that Smith discloses providing one end of the comb 20 with a connector 23 while leaving the other end of the comb 20 free of a connector 23. Accordingly, there is an inadequate basis to support the Examiner’s finding that there would be a connector 23 (and thus a “socket element”) at either end of the base rod 21 and the end without a connector 23 would define a pin element. Accordingly, even if a connector mounted at an end of the base member 21 could be interpreted as the end “having a socket element,” Smith does not disclose a base member including a first end having a socket element and a second end provided with a pin element. We thus cannot sustain the rejection of claim 8 as being obvious over the combination of Smith, Bulters, and Williams. Appeal 2010-008743 Application 11/157,967 11 Claim 9 Claim 9 depends from claim 8, and the Examiner’s rejection of claim 9 is thus based on the same erroneous finding of fact discussed supra that Smith discloses a base member including a first end having a socket element and a second end provided with a pin element. As such, we cannot sustain the rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over Smith, Bulters, and Williams. Rejection of claims 1-3 and 7-16 based on Smith, Bulters and Pityo Claim 1 The rejection of independent claim 1 based on Smith, Bulters, and Pityo is substantially the same as the rejection based on Smith, Bulters, and Williams discussed supra except the Examiner relies on Pityo instead of Williams as a teaching of elastomeric bumpers. Specifically, the Examiner finds that Pityo teaches the use of elastomeric bumpers and concludes it would have been obvious to one of ordinary skill in the art to provide each tine of Smith with an elastomeric bumper for increased protection against damage to items placed in the rack of Smith. Ans. 6. Appellants make the same arguments against combining Smith and Bulters that were advanced in connection with the Examiner’s first ground of rejection. App. Br. 21-22. For the reasons discussed supra, we find no error in the Examiner’s combination of Smith and Bulters. Appellants also argue that Pityo is non-analogous art. App. Br. 23; Reply Br. 4-6; Supp. Reply Br. 4-5. The Examiner finds that Pityo is analogous art because both Pityo and the instant invention relate to racks for holding and separating fragile objects. Ans. 14. Pityo discloses a rack for Appeal 2010-008743 Application 11/157,967 12 supporting a plurality of windshields. Pityo, col. 1, ll. 17-18. The rack includes a number of upstanding posts 21 and 23 provided with clamping heads 31 on the tops thereof. Pityo, col. 2, ll. 14-19, 37-38. The clamping heads are covered by cushioning pads 37 arranged to engage a windshield. Pityo, col. 2, ll. 52-58. Pityo thus addresses the same problem addressed by Appellants of protecting the objects supported in the rack from damage. We thus conclude that Pityo logically would have commended itself to an inventor's attention in considering such a problem and is analogous art. Appellants also argue that the Examiner has failed to provide a proper rationale for combining Pityo with Smith. App. Br. 23-24. This argument is unpersuasive in that if fails to address the rationale provided by the Examiner, namely, that the bumpers taught by Pityo would prevent fragile items from being damaged. See Ans. 6. We agree with the Examiner that this rationale would have provided a sufficient reason to cause one of ordinary skill in the art to provide the tines of Smith with elastomeric bumpers. For the above reasons, we sustain the rejection of independent claim 1 as being obvious over the combination of Smith, Bulters, and Pityo. Claims 2 and 3 Appellants’ arguments raise the same issues regarding claims 2 and 3 as those addressed above concerning independent claim 1. App. Br. 24-25. Those arguments remain unpersuasive. Claims 7 and 10-16 Appellants set forth essentially the same arguments for independent claim 7 as those advanced with respect to independent claim 1. Ap. Br. 25. Appeal 2010-008743 Application 11/157,967 13 For the same reasons discussed supra with respect to claim 1, we sustain the rejection of claim 7. We also sustain the rejection of claims 10-16, which depend from claim 7 and for which Appellants do not advance any separate arguments. Claim 8 The rejection of claim 8 based on Smith, Bulters, and Pityo is essentially the same as the rejection based on Smith, Bulters, and Williams discussed supra in that the Examiner relies on the same teachings of Smith in this rejection. Ans. 5. Accordingly, we do not sustain the rejection of claim 8 as being obvious over the combination of Smith, Bulters, and Pityo for the same reasons discussed supra in connection with the rejection of claim 8 based on Smith, Bulters, and Williams. Claim 9 Similarly, we cannot sustain the rejection of claim 9, which depends from claim 8, under 35 U.S.C. § 103(a) as unpatentable over Smith, Bulters, and Pityo for the same reasons as discussed supra in connection with the rejection of claim 9 based on Smith, Bulters, and Williams. Rejection of claims 1-3, 7-13 and 15 based on Smith, Yoakum and Williams Claim 1 The rejection of independent claim 1 based on Smith, Yoakum and Williams is substantially the same as the rejection based on Smith, Bulters, and Williams discussed supra except the Examiner relies on Yoakum instead of Bulters as a teaching of using a ceramic and plastic composite material. Specifically, the Examiner finds that Yoakum discloses using a Appeal 2010-008743 Application 11/157,967 14 plastic and ceramic composite material and concludes it would have been obvious to one of ordinary skill in the art to fabricate the tines of Smith from the material taught by Yoakum for increased strength and stability. Ans. 6. Appellants argue the Examiner has failed to provide a proper rationale for combining Yoakum with Smith. App. Br. 27; Reply Br. 7; Supp. Reply Br. 5. Yoakum discloses over-molding the core materials and circuitry of transponders with injection molded material such as a plastic, polymer, or elastomer. Yoakum, col. 3, ll. 23-28. The purpose of the over-molding is to encapsulate the frangible core in a protective shell, thereby allowing use in a variety of applications that the frangible material properties would not otherwise allow. Yoakum, col. 6, l. 65 to col. 7, l. 8. Yoakum discloses adding a filler or weighting material (which can be a ceramic such as calcium carbonate) to the injection molded material to adjust properties such as specific gravity or density of the finished casing. Yoakum, col. 7, l. 62 to col. 8, l. 6. Yoakum thus discloses use of a ceramic and plastic composite material for the purpose of adjusting the specific gravity or density. Contrary to the Examiner’s assertion, Yoakum does not suggest using the composite material to increase strength and stability. In addition, Yoakum is focused on protective shells for transponders and does not relate to forming molded parts generally like Bulters. We thus agree with Appellants that the Examiner has not established a proper rationale for combining Yoakum with Smith. As such, we cannot sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Smith, Yoakum, and Williams. Appeal 2010-008743 Application 11/157,967 15 Claims 2 and 3 As noted above, independent claim 2 recites a plurality of elastomeric bumpers provided on the tines but does not require the tine members to be formed from a ceramic and plastic composite material. Accordingly, the Examiner’s reliance on Yoakum in rejecting claim 2 appears to be unnecessary, which is further evidenced by the fact that the Examiner has also rejected claim 2 over the combination of just Smith and Williams.8 For this reason, the lack of a proper rationale for combining Yoakum with Smith becomes irrelevant with respect to this ground of rejection. See App. Br. 28, 29; Reply Br. 7; Supp. Reply Br. 5. Because we find no error in the Examiner’s combination of Smith and Williams, for the reasons discussed supra, we sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Smith, Yoakum, and Williams. We also sustain the rejection of claim 3, which depends from claim 2 and for which Appellants do not advance any separate arguments. Claims 7-13 and 15 The Examiner’s rejection of independent claim 7, which recites a plurality of tine members formed from a ceramic and plastic composite member, is based on the deficiency in the rationale for combining Smith and Yoakum discussed supra. As such, we cannot sustain the rejection of claim 7—and of claims 8-13 and 15 depending therefrom—under 35 U.S.C. § 103(a) as unpatentable over Smith, Yoakum, and Williams. 8 This ground of rejection is discussed infra. Appeal 2010-008743 Application 11/157,967 16 Rejection of claims 1-3, 7-13 and 15 based on Smith, Yoakum, and Pityo Claims 1 and 7-13 and 15 The rejection of independent claims 1 and 7 based on Smith, Yoakum, and Pityo is substantially the same as the rejection based on Smith, Yoakum, and Williams discussed supra except the Examiner relies on Pityo instead of Williams as a teaching of elastomeric bumpers. This ground of rejection therefore suffers the same lack of a proper rationale for combining Yoakum with Smith discussed supra. Accordingly, we do not sustain the rejection of claims 1 and 7 under 35 U.S.C. § 103(a) as unpatentable over Smith, Yoakum, and Pityo. The rejection of claims 8-13 and 15, which depend from claim 7, is also not sustained. Claims 2 and 3 As previously discussed, the Examiner’s reliance on Yoakum in rejecting claim 2 is unnecessary, rendering the lack of a proper rationale for combining Yoakum with Smith irrelevant with respect to this ground of rejection. Because we find no error in the Examiner’s combination of Smith and Pityo, for the reasons discussed supra, we sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Smith, Yoakum, and Pityo. We also sustain the rejection of claim 3, which depends from claim 2 and for which Appellants do not advance any separate arguments. Rejection of claims 2 and 3 based on Smith and Williams The Examiner finds that Smith discloses all of the subject matter of independent claim 2 with the exception of the elastomeric bumpers. Ans. 8. The Examiner also finds that Williams teaches the use of elastomeric Appeal 2010-008743 Application 11/157,967 17 bumpers and concludes it would have been obvious to one of ordinary skill in the art to provide each tine of Smith with an elastomeric bumper for increased protection against damage to items placed in the rack of Smith. Id. Appellants make the same arguments against combining Smith and Williams that were advanced in connection with the Examiner’s first ground of rejection. App. Br. 36. We find these arguments unpersuasive for the reasons discussed supra. Appellants also presents two arguments asserting that the combination of Smith and Williams does not include the plastic tines required in claim 2. App. Br. 37.9 First, Appellants state that “the tines in Smith are made of wire coated with plastic” (id.), and “[d]ipping a wire tine in plastic … does not establish a plastic tine.” Reply Br. 3; Supp. Reply Br. 2-3. The Examiner’s position is that the language of claim 2 does not prevent a wire pin coated with plastic as defining a “plastic” tine. Ans. 16. Appellants appear to be arguing that a tine must be formed entirely of plastic to be a “plastic” tine. We disagree with this position because claim 2 employs the open-ended language “comprising,” and the claim merely requires that the tines comprise plastic. See Mars, Inc. v. H.J. Heinz Co., L.P., 377 F.3d 1369, 1372, 1376 (Fed. Cir. 2004) (holding a claim reciting “[a] dual texture pet or animal food product comprising” a number of elements including “a soft inner component … containing a mixture of lipid and solid ingredients” was not limited to only lipid and solid ingredients and included a mixture with lipids, solids and a third ingredient). Furthermore, Appellants’ 9 To the extent Appellants intend these arguments to apply to any of the other grounds of rejection (see Reply Br. 3; Supp. Reply Br. 2-3), these arguments are unconvincing against such rejections for the reasons outlined here. Appeal 2010-008743 Application 11/157,967 18 Specification states “[i]n the most preferred form of the invention, tine member 120 is formed from plastic. That is, tine member 120 is injection molded from a composite ceramic/plastic material including plastic and ceramic fillers.” Spec. 6, ll. 15-17. This passage demonstrates that, when read in light of the Specification, one of ordinary skill in the art would understand “tine members formed from a plastic material” includes tine members formed from plastic combined with other materials. Second, Appellants point to the statement “[t]he claims differ from Smith ‘837 in requiring: (a) the tines to be formed from a plastic (claim 2) and ceramic composite material (claims 1 and 7)” made on page 3 of the Office Action dated December 30, 2008 as showing that the Examiner admits Smith does not disclose plastic tines. App. Br. 37. While this might be viewed as a statement that Smith lacks tines formed from a plastic and ceramic composite, the use of the parentheticals does seem to suggest that the Examiner is saying Smith lacks both tines formed from plastic and tines formed from a plastic and ceramic composite. However, other statements made by the Examiner communicate that the Examiner found Smith to teach plastic tines. For example, on page 8 of the December 30, 2008 Office Action (describing the rejection of claim 2 as being unpatentable over Smith and Williams), the Examiner mentions only the elastomeric bumpers as lacking from Smith. By not mentioning plastic tines as missing, the Examiner clearly implies that Smith does teach plastic tines. Page 3 of the December 30, 2008 Office Action states the rack of Smith is “made from plastic, i.e., metal with a plastic coating,” indicating that “made from plastic” includes metal coated with plastic. Moreover, the Examiner’s Appeal 2010-008743 Application 11/157,967 19 Answer clearly states the finding that the language of claim 2 does not prevent a wire pin coated with plastic as defining a “plastic” tine. Ans. 16. We thus determine that the Examiner has not admitted that Smith lacks plastic tines, despite the apparently conflicting statement identified by Appellants, and that Appellants had adequate notice of the Examiner’s position that Smith’s tines made of wire coated with plastic were “plastic” tines. Accordingly, we sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Smith and Williams. We also sustain the rejection of claim 3, which depends from claim 2 and for which Appellants do not advance any separate arguments. Rejection of claims 2 and 3 based on Smith and Pityo The rejection of independent claim 2 based on Smith and Pityo is substantially the same as the rejection based on Smith and Williams discussed supra except the Examiner relies on Pityo instead of Williams as a teaching of elastomeric bumpers. Ans. 8-9. Appellants make the same arguments against the combination of Smith and Pityo that were advanced against the combination of Smith and Williams. App. Br. 37-38; see also Reply Br. 4-6; Supp. Reply Br. 4-5. For the reasons discussed supra, we find no error in the Examiner’s rejection based on Smith and Pityo. We thus sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Smith and Pityo. We also sustain the rejection of claim 3, which depends from claim 2 and for which Appellants do not advance any separate arguments. Appeal 2010-008743 Application 11/157,967 20 Rejection of claims 2-5 based on Smith and Cooke Claims 2 and 4 The Examiner finds that Smith discloses all of the subject matter of independent claim 2 except for the elastomeric bumpers. Ans. 9. The Examiner finds that the embodiment of Figure 29 of Cooke discloses the use of bumpers and concludes it would have been obvious to one of ordinary skill in the art to provide each tine of Smith with an elastomeric bumper for increased protection against damage to items placed in the rack of Smith. Id. Appellants argue that Cooke is non-analogous art.10 App. Br. 39. The Figure 29 embodiment of Cooke includes a storage device 76 having a number of upstanding “spigots” 77 and a mat of flexible material 78 with an array of holes placed over the spigots 77. Cooke, col. 12, ll. 3-6. The mat 78 forms a plurality of upwardly extending bosses 79 surrounding the base of each spigot 77 and is made of a soft pliable material that provides a frictional engagement with objects inserted in the device 76. Cooke, col. 12, ll. 6-11; Fig. 29. In addition to providing frictional engagement, the soft pliable bosses would protect inserted objects from damage, a problem with which Cooke is concerned. See Cooke, col. 1, ll. 42-48. Cooke thus 10 To the extent Appellants argue that Cooke is not analogous art to Smith, such argument is unpersuasive. See Reply Br. 6. The correct focus of the analogous art test is not whether the prior art references are analogous to each other, but rather the correct focus is whether the references are analogous art to the claimed subject matter. In re Kahn, 441 F.3d 977, 986- 87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (“The analogous-art test requires that the Board show that a reference is either in the field of the applicant’s endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.”). Appeal 2010-008743 Application 11/157,967 21 addresses the same problem addressed by Appellants of protecting the objects supported in the rack from damage. We thus conclude that Cooke logically would have commended itself to an inventor's attention in considering such a problem and is analogous art. Appellants also argue that the Examiner has failed to provide a proper rationale for combining Cooke with Smith. App. Br. 40. The rationale provided by the Examiner for the combination is that using the bumpers taught by Cooke would provide increased protection against damage to items placed in the rack. Ans. 9. We agree with the Examiner that this rationale would have provided a sufficient reason to cause one of ordinary skill in the art to provide the tines of Smith with elastomeric bumpers. In addition, Appellants argue that the mat 78 of Cooke does not constitute a plurality of elastomeric bumpers as required by claim 2. App. Br. 40. While Cooke does disclose a single mat 78, the mat forms several bosses or bumpers that are distinct from one another. Therefore, even though they are all connected to the mat 78, we find that the bosses comprise a plurality of bumpers. Lastly, Appellants argue that the combination of Smith and Cooke does not comprise plastic tines because the tines of Smith are made of wire that is just coated with plastic. Id. This argument is unpersuasive for the reasons discussed supra in connection with the rejection of claim 2 based on Smith and Williams. For the above reasons, we sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Smith and Cooke. We also sustain the rejection of claim 4, which depends from claim 2 and for which Appellants do not advance any separate arguments. Appeal 2010-008743 Application 11/157,967 22 Claims 3 and 5 Claims 3 and 5 both recite elastomeric bumpers provided on the tip portions of the tines. Appellants argue that it is unclear how the mat 78 of Cooke provides a bumper on the tip portion of each tine. App. Br. 41. The Examiner states that the “tip portion” is considered to be any portion of the tine above the intersection and the claims do not require the tip to be at a distal point from the base member. Ans. 18. Appellants have the better position on this point. The broadest reasonable interpretation of the “tip portion” of a tine would include either the outermost point of the tine or at least a portion very close to the outermost point. The bosses 79 of Cooke are clearly located at the base of the tines or spigots 77 and are not anywhere near the outermost point or tip of the spigots 77. We thus cannot sustain the rejection of claims 3 and 5 as being obvious over Smith and Cooke. Rejection of claim 6 based on Smith, Cooke, and Larson Claim 6 recites that the elastomeric bumpers are over-molded onto the tines. The Examiner finds that Larson teaches the use of over-molding and concludes it would have been obvious to one of ordinary skill in the art to use over-molding to fabricate bumpers on the tines for ease in assembly, economy, and manufacture. Ans. 10. Appellants argue that “Larson cannot be said to address the same problem as the present invention or be in the same field of endeavor.” App. Br. 43. We agree with Appellants that Larson is not analogous to the claimed invention. Larson relates to a crutch and is clearly outside Appellants’ field of endeavor. As noted previously, the problem faced by Appellants was to protect objects such as delicate dishes supported in a rack from damage. See Appeal 2010-008743 Application 11/157,967 23 Spec. 2, ll. 11-13. Larson discloses a crutch 500 having a hand grip 504. Larson, col. 8, ll. 16-19; Fig. 15. The hand grip 504 can include an over- mold 630 that protects an attachment mechanism 620. Larson, col. 10, ll. 51-56; Fig. 17. The over-mold 630 provides a protective function, but Larson is not remotely pertinent to the problem of protecting objects supported in a rack. We thus find that Larson is not analogous and cannot sustain the rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Smith, Cooke and Larson. New Ground of Rejection of Claims 8 and 9 Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 8 and 9 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. Claim 8 recites that “the base member includes a first end having a socket element that extends to a second end provided with a pin element.” It is unclear from this language whether the base member extends from a first end to a second end or the socket element extends to the second end. Claim 8 is thus amenable to two or more plausible claim constructions, rendering the claim indefinite. Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by Appeal 2010-008743 Application 11/157,967 24 holding the claim . . . indefinite.”). Claim 9 is indefinite because of its dependency from claim 8.11 DECISION The Examiner’s rejection of claims 1-3, 7, and 10-16 under 35 U.S.C. § 103(a) as being unpatentable over Smith, Bulters, and Williams is affirmed. The Examiner’s rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as being unpatentable over Smith, Bulters, and Williams is reversed. The Examiner’s rejection of claims 1-3, 7 and 10-16 under 35 U.S.C. § 103(a) as being unpatentable over Smith, Bulters, and Pityo is affirmed. The Examiner’s rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as being unpatentable over Smith, Bulters, and Pityo is reversed. The Examiner’s rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as being unpatentable over Smith, Yoakum, and Williams is affirmed. The Examiner’s rejection of claims 1, 7-13, and 15 under 35 U.S.C. § 103(a) as being unpatentable over Smith, Yoakum, and Williams is reversed. The Examiner’s rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as being unpatentable over Smith, Yoakum, and Pityo is affirmed. The Examiner’s rejection of claims 1, 7-13, and 15 under 35 U.S.C. § 103(a) as being unpatentable over Smith, Yoakum, and Pityo is reversed. The Examiner’s rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as being unpatentable over Smith and Williams is affirmed. 11 Claim 9 recites that “the plurality of tines” are adapted to interconnect. However, we interpret this to mean “the plurality of tine members,” which appears to be Appellants’ clear intention in light of the Specification. Appeal 2010-008743 Application 11/157,967 25 The Examiner’s rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as being unpatentable over Smith and Pityo is affirmed. The Examiner’s rejection of claims 2 and 4 under 35 U.S.C. § 103(a) as being unpatentable over Smith and Cooke is affirmed. The Examiner’s rejection of claims 3 and 5 under 35 U.S.C. § 103(a) as being unpatentable over Smith and Cooke is reversed. The Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Smith, Cooke, and Larson is reversed. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 8 and 9 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, 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 proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Appeal 2010-008743 Application 11/157,967 26 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). AFFRIMED-IN-PART; 37 C.F.R. § 41.50(b) hh