Ex Parte Meers

Patent Trial and Appeal BoardAug 31, 2017

13460919 (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. 13/460,919 05/01/2012 Ryan C. Meers 11463 PUS; 67080-540 PUS1 8766 26096 7590 09/05/2017 TART SON OASKFY fr OT DS P C EXAMINER 400 WEST MAPLE ROAD SUITE 350 CHEUNG, CHUN HOI BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER 3728 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): ptodocket @ cgolaw. com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYAN C. MEERS Appeal 2015-006968 Application 13/460,919 Technology Center 3700 Before BRETT C. MARTIN, LISA M. GUIJT, and NATHAN A. ENGELS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-006968 Application 13/460,919 STATEMENT OF CASE Appellant appeals under 35U.S.C. § 134 from the Examiner’s rejection of claims 1—4 and 7—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s claims are directed generally to a multi-height container. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A container comprising: a base; a plurality of walls extending upward from the base; a support including a support portion connected to one of the walls by a support arm, the support arm including a first arm portion connected to the support portion and a second arm portion pivotably connected to the first arm portion and pivotably connected to the one of the walls, wherein the support is pivotable between a nesting position where the support portion does not extend over the base of the container, a low stack position where the support portion extends over the base of the container and a high stack position where the support portion extends over the base of the container at a height higher than the low stack position. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Knox Loftus et al. Cope Hassell US 2,519,666 US 5,609,254 US 6,145,664 US 2006/0231449 Al Aug. 22, 1950 Mar. 11, 1997 Nov. 14, 2000 Oct. 19, 2006 2 Appeal 2015-006968 Application 13/460,919 REJECTIONS The Examiner made the following rejections: Claims 1—3, 7—17, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hassell and Knox. Final Act. 3. Claims 4 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hassell, Knox, and Loftus. Final Act. 6. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hassell, Knox, Loftus, and Cope. Id. ANALYSIS Motivation Appellant argues claims 1—4 and 7—20 as a group. See App. Br. 4, 7. We select claim 1 as the representative claim, and claims 2—4 and 7—20 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(vii). Appellant does not contest the prior art teachings in any of the references as they pertain to the claim language. See App. Br. 4—7. Appellant’s only issue with the Examiner’s rejections is that “[t]he Examiner does not offer a reasonable rationale for making the modification to Hassell in light of Knox.” App. Br. 6. Appellant contends, and we generally agree, that the Examiner has offered multiple motivations that use “the statement of the problem from the present application [that] represents a form of prohibited reliance on hindsight.” Reply Br. 1. One of the motivations provided by the Examiner, however, does not rely on such hindsight. In response to Appellant’s argument that “Knox does not teach anything except how to make a bucket handle serve as a brush support” (App. Br. 7), the Examiner finds that “Knox can support 3 Appeal 2015-006968 Application 13/460,919 other items on the handle, including in an arrangement of a bucket resting on a lower bucket.” Ans. 4. Appellant first argues that “this is not disclosed in Knox.” Reply Br. 2. We note that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). The Examiner’s finding that buckets and other items may be supported on the handle need not be disclosed in Knox itself and can be gleaned from the knowledge of one of skill in the art. Here, Knox specifically teaches a bucket that supports a paint brush (see, e.g., Knox 1:20—21), but one of skill in the art could easily have extrapolated that concept to include supporting other items. Furthermore, in response to the Examiner’s finding that Knox could allow for stacked buckets, Appellant first states that “it would not work” and then argues that “another bucket of paint stacked thereon would be unstable.” Reply Br. 2. Appellant’s latter statement belies the first because if something would merely be “unstable” it does not mean that “it would not work.” Also, even if stacking proved unstable, this does not remove it from consideration as a motivation. Our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one 4 Appeal 2015-006968 Application 13/460,919 another.”). Here, being able to stack, even if it required careful placement of the bucket or other accommodations to ensure stability, would have been considered by a person of ordinary skill as a beneficial alternative to not being able to stack at all. Additionally, Appellant appears to be attacking the references individually rather than substantively addressing their combination. Non obviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Hassell discloses the desire to support items, specifically other stackable containers, using a multi-position support system. The Examiner finds, and we agree, that Knox teaches a bucket handle that may be used as a support explicitly for paint brushes and implicitly for stacking another bucket or other items. In other words, Knox, just as with Hassell, teaches the use of a multi position handle placement to allow the handle to be out of the way, or to act as a support for items to rest over the container. Although Appellant argues that such stacking in Knox might be “unstable,” we do not consider this sufficient to completely negate the Examiner’s finding, and we also agree with the Examiner that, at the very least, Knox teaches a multi-position handle for supporting something over the container in a manner similar to Hassel. As such, we are not persuaded that this rationale is insufficient to support the Examiner’s combination of the teachings of Hassell and Knox. Accordingly, we sustain the Examiner’s rejection of claim 1 and therefore also of claims 2-4 and 7—20. 5 Appeal 2015-006968 Application 13/460,919 DECISION For the above reasons, we AFFIRM the Examiner’s decision to reject claims 1—4 and 7—20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2009). AFFIRMED 6