Ex Parte McDonnough et al

Patent Trial and Appeal Board

Apr 30, 2014

12057986 (P.T.A.B. Apr. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREW JAMES MCDONNOUGH,
DUANE DAVID FRANZEN, JR., and MICHAEL GRINNALL
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Appeal 2012-004434
Application 12/057,986
Technology Center 3700
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Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
KEVIN W. CHERRY, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
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Application 12/057,986

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Claimed Subject Matter
Claims 1, 11, and 16 are the independent claims on appeal. Claim 1,
reproduced below, with emphasis added, is illustrative of the subject matter
on appeal.
1. A case for housing at least one object, comprising:
a base portion comprising a first cavity;
a lid portion connected by a hinge to the base portion and
comprising a second cavity;
a hollow insert comprising external walls, wherein the
hollow insert is shaped to be receivable in one of the first cavity
or the second cavity and at least one external wall has at least
one recess shaped to receive the at least one object; and
wherein the external walls of the hollow insert have a
lower stiffness than the base portion and the lid portion.

Rejections
The following Examiner’s rejections are before us for review:
I. claims 1, 4, 5, 7, and 11 are rejected under 35 U.S.C. § 102(b) as
unpatentable over Cislo (US 5,009,088, iss. Apr. 23, 1991);
II. claims 2, 3, 6, 8, 10, 12, 14, and 15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cislo and Newby (US 4,662,515, iss. May 5,
1987);
III. claims 9 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cislo, Newby, and Colombo (US 6,023,915, iss. Feb. 15,
2000); and
IV. claims 16-20 are rejected under 35 U.S.C. § 103(a) for the same
reasons as discussed above for claims 1-15.
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Application 12/057,986

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OPINION
Rejection I
Independent claim 1 recites “[a] case . . . comprising . . .a hollow
insert comprising external walls, wherein the hollow insert is shaped to be
receivable in one of the first cavity or the second cavity and at least one
external wall has at least one recess shaped to receive the at least one
object.” App. Br., Clms. App’x. Claim 11 recites a similar limitation. Id.
The Examiner finds that Cislo’s foam padding (51, 57), which
includes recesses for a battery housing 80 and a handgun, constitutes a
hollow insert, as required by claims 1 and 11. Ans. 5 and 7-8 (citing Cislo,
figs. 1 and 4, and col. 6, ll. 57-65).
The Appellants contend that the Examiner’s finding is unsupportable.
App. Br. 6-8, Reply Br. 2-3; see also Cislo, col. 4, l. 12, and col. 6, ll. 13-17.
The Appellants’ contention is persuasive.
The Examiner proffers that the recesses in the surface of Cislo’s foam
padding render the foam padding “hollow.” See Ans. 81. This however
implies a construction of the term “hollow” that is inconsistent with the
claim. As pointed out by the Appellants, “[t]he Examiner is interpreting the
claim so as to render the term ‘hollow’ superfluous and meaningless in view
of the [claimed] term ‘recess.’” Reply Br. 2; see also Spec. [0038]).
Additionally, the Examiner’s construction of the term “hollow” is
inconsistent with the broadest reasonable interpretation in light of the
Specification. Reply Br. 2-3. For example, the Specification discloses that

1 In the Final Office Action, mailed May 11, 2011, the Examiner offers “the
word ‘hollow’ as defined by the Webster dictionary is as follows: “a
depressed or low part of a surface; especially: a small valley or basin.”
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Application 12/057,986

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insert 10 is hollow within its external walls and that the top wall 42 of insert
10 has recesses 18a, 18b, and 18c. See Spec. para. [0038] and App. Br. 8.
As such, the Examiner’s finding that Cislo’s inserts are “hollow” because
they have a recess on the surface of the inserts is unsupportable.
Thus, the Examiner’s rejection of claims 1 and 11, and claims 4, 5,
and 7 that depend from claim 1, is not sustained.

Rejection II
At the outset, it is notable that the Examiner provides separate
rationales for the rejections of claims 2 and 3, claims 6 and 15, claims 8 and
12, and claims 10 and 14, based on Cislo in combination with Newby.2
Notably, independent claim 1 recites, “the external walls of the hollow insert
have a lower stiffness than the base portion and the lid portion [of the case].”
App. Br., Clms. App’x. Claim 11 recites a similar limitation. Id.
All of the Examiner’s rationales include a finding that Newby’s tool
tray 132, formed of blow-molded hollow double-wall construction,
constitutes a “hollow insert,” and are based on a “modification” of Cislo’s
apparatus in view of Newby’s insert. See Ans. 6 (citing Newby, col. 8, ll. 8-
11); see also Newby, fig. 5 and Ans. 8-9. For example, the Examiner
concludes “[i]t would have been obvious to one of the ordinary skill of the
art . . . to modify Cislo to include Newby’s blow-molded insert in order to
provide substantially greater depth with the process of blow-molding.”
Ans. 6 (emphasis added). The Examiner’s reasoning seems to include

2 Claims 2, 3, 6, 8, and 10 depend directly from independent claim 1, and
claims 12, 14, and 15 depend directly from independent claim 11. App. Br.,
Clms. App’x.
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Newby’s blow-molded insert in Cislo’s case, rather than modify Cislo’s
foam inserts 51, 57.
The Appellants contend the Examiner’s combination of teachings
from Cislo and Newby would not have resulted in the claimed invention
having the external walls of the hollow insert have a lower stiffness than the
base portion and the lid portion. See App. Br. 10-12. In response, the
Examiner determines “[b]ecause Cislo teaches the hollow insert having less
stiff walls tha[n] the outer shell coupled with Newby’s blow molding
process, [A]ppellant[s]’[] claimed invention is met.” Ans. 9.
The Appellants’ contention is persuasive because the Examiner’s
combination lacks support for the external walls of Newby’s tool tray 132
(hollow insert) having a lower stiffness than the base and lid portions of
Cislo’s case. See also App. Br. 9-12. Additionally, as discussed above,
Cislo’s foam inserts 51, 57 are not hollow and as such, the stiffness of the
foam inserts 51, 57 relative to base and lid portions of Cislo’s case is
immaterial.
Although the Examiner’s rationale for the rejection of claims 6 and 15
further “modif[ies] Cislo to include Newby’s thermoplastic lid, base and
insert” (Ans. 6), this modification does not necessarily result in the external
walls of the hollow insert having a lower stiffness than the base and lid
portions, or explain why such would have been obvious to one of ordinary
skill in the art.
Thus, the Examiner’s rejection of claims 2, 3, 6, 8, 10, 12, 14, and 15
is not sustained.
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Rejection III
At the outset, it is notable that claim 9 indirectly depends from claim
1, and claim 13 indirectly depends from claim 11. See App. Br., Clms.
App’x.
The Examiner finds that Cislo in view of Newby lacks, but that
Colombo discloses, “pressure inside the hollow insert is greater than 1
atmosphere.” Ans. 6-7 (citing Colombo, col. 5, ll. 31-36). The Examiner
concludes that:
It would have been obvious to one of the ordinary skill in the
art through simple substitution of one known element for
another element to obtain results to develop such a hollow
insert to improve the efficiency of the storage capability of the
insert and to affect a tighter among neighboring hollow inserts
and would have achieved the same on normal experimentation
and since it has been held that discovering an optimum value of
a result effective variable involves only routine skill in the art.
Ans. 7 (citing In re Boesch, 617 F.2d 272 (CCPA 1980) and MPEP
§ 2144.05(II)(B)). However, this conclusion does not provide adequate
support to determine that the Examiner’s combination would have resulted
in “the external walls of the hollow insert have a lower stiffness than the
base portion and the lid portion [of the case],” as recited in claim 1, or the
similar recited limitation of claim 11.
Thus, the Examiner’s rejection of claims 9 and 13 is not sustained.

Rejection IV
The Examiner’s rejection of claims 16-20 fails to establish a prima
facie case of obviousness because it does not identify with any particularity
the basis of the rejection. Ans. 7. More specifically, the Answer states,
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“[c]laims 16-20 stand rejected under 35 USC 103(a) for the same reasons as
discussed above for claims 1-15.” Id. However, claims 1, 4, 5, 7, and 11 are
rejected under 35 U.S.C. § 102(b), and not 35 U.S.C. § 103(a). In addition,
claims 2, 3, 6, 8-10, and 12-15 are rejected under 35 U.S.C. § 103(a) for
separate grounds: claims 2, 3, 6, 8, 10, 12, 14, and 15 are unpatentable over
Cislo and Newby; and claims 9 and 13 are unpatentable over Cislo, Newby,
and Colombo. Moreover, the Appellants state in the Appeal Brief, that their
response is based on a belief that the rejection of claims 16-20 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Cislo and Newby. See App.
Br. 9. The Appellants’ statement supports our position that Examiner’s
rejection of claims 16-20 does not identify with any particularity the basis of
the rejection. For at least the reasons set forth above, the Examiner fails to
establish a prima facie case of obviousness under 35 U.S.C. § 103(a) of
claims 16-20.
Thus, the Examiner’s rejection of claims 16-20 is not sustained.

DECISION
We REVERSE the rejections of claims 1-20.

REVERSED

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