Ex Parte Meno

Patent Trial and Appeal BoardAug 23, 2013

12157927 (P.T.A.B. Aug. 23, 2013)

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. 12/157,927 06/13/2008 Joseph D. Meno 1417 U 9051 7590 08/23/2013 FORREST L. COLLINS POST OFFICE BOX 41040 Brecksville, OH 44141-1040 EXAMINER STANCZAK, MATTHEW BRIAN ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 08/23/2013 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 D. MENO ____________ Appeal 2011-009705 Application 12/157,927 Technology Center 3700 ____________ Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and BARRY L. GROSSMAN, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009705 Application 12/157,927 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1 and 5-7. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm the decision of the Examiner. CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is representative of the subject matter on appeal, and recites: 1. A device in the form of a box having a hinged structure, a delivery device within said box, an envelope attached to said delivery device, said box having four rectangular fixed sides, a rectangular bottom fixed to each of said rectangular fixed four sides, a rectangular lid, a hinge mechanism operatively connected to said rectangular lid and to one of said rectangular fixed sides, a latch release mechanism to operatively open said rectangular lid, said latch release mechanism located on a rectangular fixed side opposite of said rectangular fixed side that is operatively connected to said hinge mechanism, a single spring mechanism fixedly connected to said rectangular bottom, said single spring mechanism oriented to urge said delivery device toward said rectangular lid upon opening of said rectangular lid, said four rectangular fixed sides maintaining a box like structure upon opening of said rectangular lid. Appeal 2011-009705 Application 12/157,927 3 REFERENCES The Examiner relied upon the following prior art references: REJECTION The rejection of claims 1 and 5-7 under 35 U.S.C. 103(a) as unpatentable based on Popov and Frenkel is before us for review. ANALYSIS For each rejection, the Examiner’s Answer points out the elements of the claims taught by the references, the differences between what is taught and what is claimed, and articulated reasons why one of ordinary skill in the art would have combined the teachings of the prior art to obtain the claimed invention. Ans. 4-7. Appellant’s arguments have been fully and correctly summarized by the Examiner. Ans. 8. The Examiner has responded to each argument. Ans. 8-9. We affirm the Examiner’s rejections and adopt the Examiner’s findings and conclusions as our own. We write below to further explain our analysis. Based on the clear disclosure of Popov in Figure 2 and elsewhere as cited by the Examiner, there can be no credible dispute that Popov discloses a box with a bottom and a box and a hinge mechanism as claimed. “[A] drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference patent.” In re Aslanian, Popov US 4,407,504 Oct. 4, 1983 Frenkel US 2004/0206640 A1 Oct. 21, 2004 Appeal 2011-009705 Application 12/157,927 4 590 F.2d 911, 914 (CCPA 1979). Drawings are evaluated on the basis of what they reasonably disclose and suggest to one skilled in the art. Id. The Examiner’s proposed modification of Popov with the disclosure of Frenkel, and the Examiner’s articulated reasoning for the proposed modification is fully supported by the evidence and the applicable case law, which the Examiner cited. Ans. 8, referring to KSR Int’l v. Teleflex Inc., 550 U.S. 398 (2007). Whether a patent claiming the combination of prior art elements is obvious is determined by whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR, 550 U.S. at 417. Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. Id. at 418. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. at 417. “Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of Appeal 2011-009705 Application 12/157,927 5 ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. Regardless of Frenkel’s primary purpose, the Examiner found that Frenkel discloses presenting checks in an envelope along with a greeting card. Ans. 5. The idea that a person of ordinary skill in the relevant technology would ignore Frenkel because Frenkel may use this technology differently than the claimed invention makes little sense. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Regarding claims 5-7, Appellant’s argument is based on the orientation of the opening of Frenkel’s envelope. Br. 11-12. This line of argument is unpersuasive in that it does not address the rejection as articulated by the Examiner, because the Examiner proposed to modify the orientation of the opening of Frenkel’s envelope. See Ans. 5-7. DECISION Upon consideration of the record as a whole in light of Appellant’s contentions and the preponderance of relevant evidence, we affirm the Examiner’s decision rejecting claims 1 and 5-7. 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). AFFIRMED mls