Ex Parte McAtarian et al

Patent Trial and Appeal Board

Aug 31, 2017

14589407 (P.T.A.B. Aug. 31, 2017)

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.
14/589,407 01/05/2015 Patrick F. McAtarian 42025-CNTl 3026
23589 7590 09/05/2017
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
patents @ hovey williams, com
amalik @hovey williams .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK F. Me ATARI AN and MARK Me ATARI AN1
Appeal 2016-007074
Application 14/589,407
Technology Center 3700
Before DANIEL S. SONG, JAMES P. CALVE, and SEAN P. O’HANLON,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1—7 in the present application. We have jurisdiction
under 35 U.S.C. §§ 6(b) and 134.
We REVERSE.
1 Collectively referred to as “Appellant” herein. The applicant and real party
in interest is Andax Industries LLC (Appeal Brief (hereinafter “App. Br.”)
1).
Appeal 2016-007074
Application 14/589,407
The claimed invention is directed to a containment berm that can be
erected in the field for containment of hazardous liquids or solids, and a
method for erecting a containment berm (Spec. 1 (Title; Field of the
Invention)). Representative independent claim 1 reads as follows (App. Br.
17, Claims App’x, paragraph structure and emphasis added):
1. A method of erecting a portable containment berm
having
a floor and an upright sidewall secured to the floor to
present a containment zone, and
support structure for the sidewall including a plurality of
deployable support assemblies secured to the sidewall and
pivotal about respective upright axes during said deployment
thereof,
there being an elongated, common strap presenting a
longitudinal axis and extending along the length of said
sidewall and secured to a plurality of said support assemblies,
said method comprising the step of
simultaneously pivoting said plurality of said support
assemblies about said respective upright axes to cause the
support assemblies to assume a deployed position extending
from the sidewall,
said simultaneous pivoting step comprising the step of
pulling said elongated common strap to cause the strap to shift
along the longitudinal axis thereof and relative to said berm
floor and sidewall so that said plurality of support assemblies
simultaneously assume said deployed position.
Independent claim 4 is directed to a containment berm. While claim 4
is phrased slightly differently by the virtue of it being an apparatus claim, it
includes structural and functional recitations that are substantively the same
as those in claim 1.
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Application 14/589,407
The Examiner rejects claims 1—7 as unpatentable under 35 U.S.C.
§ 103(a) as obvious over Van Romer (U.S. Patent No. 5,762,233, issued
June 9, 1998) in view of Barrett (U.S. Patent Application Publication No.
2010/0294779 Al, published November 25, 2010) and Hughes (U.S. Patent
No. 7,819,270 Bl, issued October 26, 2010) (Final Office Action
(hereinafter “Final Act.”) 2).
ANAFYSIS
As noted, there is no material difference between claim 1 (method)
and claim 4 (apparatus) in terms of the issues raised in the present appeal. In
fact, the Appellant argues all of the claims on appeal collectively, and the
Examiner refers to the articulated rejection of the method claims in
addressing the apparatus claims in the rejection (see generally, Appeal Br.;
Final Act. 4). Thus, we address the substantive rejection of the claims, and
arguments of the Appellant collectively as well.
The Examiner rejects the claims, finding that Van Romer discloses the
limitations of the claims except for the limitations requiring the support
assemblies be pivotal about upright axes and the deployment of the support
assemblies with an elongated common pull strap (Final Act. 2—3; see also
Van Romer, Figs. 1,3). The Examiner finds that
Hughes teaches that it is known in the art to manufacture a
collapsible container with support legs (60) pivotal (61) about
axes extending upward relative to a floor of the container
(Fig. 1).
(Final Act. 3).
Accordingly, the Examiner concludes that it would have been
obvious
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Application 14/589,407
to have manufactured the containment berm of Van Romer such
that they were pivotal about an upright axis, as taught by
Hughes, in order to reduce the space taken up by the support
legs and in since such a modification would be the use of a
known technique on a known device to achieve a predictable
result.
(Final Act. 3; see also Ans. 6).
In addition, the Examiner finds that Barrett discloses a container berm
“with an elongated first common pull strap (70) having a plurality of
connection members” (Final Act. 3), and relies on Barrett for “teaching]
how strap members can be attached together.” (Final Act. 5). The Examiner
concludes that
[i]t would have been obvious to . . . have manufactured the
assembly of Van Romer with the pull straps connected together
on respective sides of the berm, as taught by Barrett, in order to
better secure the containment berm in a deployed position.
When connected together the pull straps would form common
pull straps on each side of the containment berm and the pull
straps would shift along a longitudinal axis.
(Final Act. 3).
The Appellant argues that the rejection does not set forth a prima facie
case of obviousness because:
the art does not teach any structure or method where [1] berm
support assemblies are simultaneously deployed; [2] fails to
anticipate the concept of plural berm support assemblies being
simultaneously deployed about individual upright axes; and
[3] is completely silent about the use of a common pull strap
secured to plural berm supports and shiftable relative to the
berm floor and sidewall to deploy the supports.
(App. Br. 13).
In response to the Examiner’s Answer, the Appellant also argues that
the Examiner engages in impermissible hindsight in “first converting the
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Appeal 2016-007074
Application 14/589,407
stationary side members 70 of Barrett into ‘straps,’ attaching these ‘straps’
to Van Romer’s brace ends 24, 24a.” (Reply Br. 7). We agree with the
Appellant for various reasons.
Firstly, Barrett’s side members 70 are not pull straps, but instead, are
“attached to opposing portions of the liner 20” of the disclosed berm (Barrett
143; Fig. 4; see also App. Br. 15). In this regard, side members 70 of
Barrett are disclosed as including “a plurality of grommets 72 that receive a
corresponding plurality of spikes 14 to secure the present invention to a
surface.” (Barrett 143). In contrast, the claims recite a strap that is shifted,
i.e., moved, along its axis relative to the berm floor. The side member of
Barrett cannot reasonably be considered to be a strap that is shifted when it
is entirely attached to the berm.
The Examiner clarifies that Barrett teaches “a single grommet strap
(70) on each side of the berm with grommet holes (72) for securing the
berm,” and that, in the rejection, “the pull straps of Van Romer (Van Romer,
Fig. 3 at 48) are being manufactured as one single strap per side, as taught
by Barret[t] et al.” (Ans. 5). Specifically, the Examiner explains that:
When one of ordinary skill in the art combine[s] the grommet
hole structure of Barret[t] et al. with Van Romer, the individual
pull straps with grommet holes would now be a single pull strap
with grommet holes. Therefore, instead of each pull strap being
pulled separately, all of the pull straps would move together due
to the common strap on the side of the berm. This combination
would read on the limitation of the support assemblies being
simultaneously deployed because they would all be commonly
connected.
(Ans. 5—6).
However, as the Appellant argues (App. Br. 14), there is no colorable
teaching of simultaneous deployment of plural support assemblies in the
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Application 14/589,407
prior art relied upon. Specifically, Van Romer and Hughes each disclose
deployment of their respective support assemblies individually. There is
nothing in Barrett from which a person of ordinary skill in the art would
glean such simultaneous deployment of plural support assemblies as there is
nothing to deploy in Barrett. As such, the art relied upon lacks a common
pull strap shifted along the longitudinal axis thereof and relative to the berm
floor, and fails to provide any teaching as to simultaneous deployment of
plural support assemblies (see App. Br. 15).
The Appellant further argues that the rationale provided in the Answer
reproduced above is faulty because “the brace straps 24, 24a of Van Romer
must be threaded under respective anchors 32 or 36 in order to erect and
secure the berm,” and “the very presence of the elongated straps 70 would
make it impossible to thread the individual straps 24 or 24a under the
associated arms 32a or 36a” so that such modification would render the
berm of Van Romer inoperable (Reply Br. 4—5 (citing Van Romer, Figs. 2,
3))-
Indeed, while the rejection relies on Hughes for pivoting of support
assemblies about “upright axes,” the rejection does not adequately explain,
and it is not clear, the manner in which the support structure of Van Romer
is being modified or otherwise being combined with the teachings of
Hughes. In that respect, we observe that the rejection is not based on
substitution of the support structures of Van Romer for those of Hughes.
Importantly, the Examiner does not provide any reason with rational
underpinnings to interconnect the grommets of Van Romer together based
on the disclosure of a plurality of grommets on the side members of Barrett.
Instead, the rejection merely states that “[tjhis combination would read on
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Application 14/589,407
the limitation of the support assemblies being simultaneously deployed
because they would all be commonly connected.” (Ans. 5—6). Such a
statement does not provide a reason for the suggested combination, but,
instead, is a statement of a result of the combination. Accordingly, we agree
with the Appellant that the Examiner also appears to be engaging in
impermissible hindsight.
In view of the above considerations, we agree with the Appellant that
a prima facie case of obviousness has not been established, and that the
rejection as presented is also based on impermissible hindsight.
Accordingly, we reverse the Examiner’s rejection of claims 1—7.
CONCLUSION
The Examiner’s rejection of claims 1—7 is REVERSED.
REVERSED
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