Ex Parte Mogil

Patent Trial and Appeal Board

Jun 17, 2014

10606125 (P.T.A.B. Jun. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte MELVIN S. MOGIL
____________________

Appeal 2012-003244
Application 10/606,125
Technology Center 3700
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Before: CHARLES N. GREENHUT, LYNNE H. BROWNE, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1–
20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a container with reinforced and collapsible
portions. Claims 1 and 16 are independent. Claim 1 is reproduced below:
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1. A soft sided insulated container assembly having
a first portion and a second portion, the first portion
being non-collapsible and the second portion being collapsible;
the first portion having a first enclosed space defined
therewithin;
the first portion having a soft-sided insulated wall
structure and a substantially rigid non-collapsible reinforcement
member mounted therewithin;
said first portion having a shape defining said first
enclosed space;
said reinforcement member having substantially the same
size and shape as said first portion;
said reinforcement member having a chamber defined
therewithin in which to receive objects;
said reinforcement member being mounted within said
enclosed space;
said reinforcement member being mounted within said
first portion such that said first portion has a non-collapsible
rigid form;
unlike said first portion, the second portion being
movable between a first, folded position and a second, unfolded
position, and, in said second, unfolded position said second
portion of said insulated container assembly having a second
enclosed space defined therewithin in which to receive objects;
said second portion having at least one releasable
securement for maintaining said second portion in said first
position;
said container assembly having a first closure member
operable to control access to said first enclosed space, and a
second closure member operable to control access to said
second enclosed space, and
said first and second portions being insulated one from
another to permit different environmental conditions to be
maintained in said first and second enclosed spaces
respectively.
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PRIOR ART
Beales
Melk
Preston
Ellison
Rucker
Mogil
Sloan
US 5,020,921
US 5,403,095
US 5,501,338
US 5,979,175
US 6,216,488 B1
US 6,234,677 B1
US 6,305,185 B1
Jun. 4, 1991
Apr. 4, 1995
Mar. 26, 1996
Nov. 9, 1999
Apr. 17, 2001
May 22, 2001
Oct. 23, 2001
Arreazola US 2003/0139169 A1 Jul. 24, 2003

GROUNDS OF REJECTION
1. Claims 1, 2 and 5–13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mogil and Preston.
2. Claims 1, 2 and 5–11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mogil and Melk.
3. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mogil, Melk and Beales.
4. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mogil, Preston, and Arreazola, Sloan, Rucker or
Ellison.
5. Claims 3 and 4 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Mogil, Melk and Arreazola, Sloan, Rucker or
Ellison.

OPINION
Appellant argues claims 1–20 together. See App. Br. 5–6 (“Although
there are thus two groups of claims, the central issue of the appeal is
applicable to both groups of claims.”). Thus, our resolution of the issues
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Application 10/606,125
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raised regarding claim 1 is dispositive as to all claims and rejections
involved in this appeal.
Appellant states:
The only issue is whether Mogil teaches away from the
proposed combinations. That issue has two parts. The first part
is the explicit teaching away by Mogil that both sides of the
container are collapsible. The second part is the destruction of
function of Mogil if either of the proposed Preston or Melk
modifications is made.
App. Br. 8; Reply Br. 4. We will address each of Appellant’s contentions in
turn.
Appellant argues that “[t]he Mogil teaching that both sides of the
cooler be collapsible is inherently and inescapably contrary to the
requirement in all of the presently pending claims that one part of the cooler
be collapsible and the other part be non-collapsible.” App. Br. 8; see also
Reply Br. 5–6. Based on this argument, Appellant concludes that “[t]he
Mogil reference therefore clearly teaches away from the recited feature of …
claim 1… (and therefore of every claim dependent…) that one side of the
cooler not be collapsible.” Id.
Appellant’s argument is not persuasive because “teaching away”
requires that the reference “criticize, discredit, or otherwise discourage” the
use of other alternatives. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). Appellant does not identify, nor do we discern, where Mogil
criticizes, discredits or otherwise discourages the use of a reinforcement
member mounted within the first portion. We will not read into a reference
a teaching away from a proposed combination when no such language
exists. Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364
(Fed. Cir. 2006).
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Appellant argues that “the proposed combination destroys the function
of the claimed invention of the principal reference, Mogil” because “[e]very
single claim of the Mogil reference claims that the cooler is collapsible.”
App. Br. 8; Reply Br. 4.
In response to this argument, the Examiner finds that:
the noncollapsible members (tray assemblies 12, 14, 16) of
Preston are disclosed as being removable from its insulated
portion (cover 22). See col. 3, lines 18-21. Similarly, the non-
collapsible member (liner 24) of Melk is disclosed as being
removable from its insulated portion (22). Therefore, providing
the first portion of the Mogil soft-sided insulated container
assembly with the removable, non-collapsible members of
Preston or Melk, as discussed above, would not interfere with
the collapsible functionality of Mogil when the non-collapsible
members of Preston or Melk are removed for cleaning.
Ans. 10. The Examiner further finds that Appellant’s Specification discloses
that “the reinforcement member (28) is removable from within the soft-sided
insulated wall structure 26 of main portion 22, to facilitate washing thereof.
Id. (citing, Spec. p. 7, ll. 1–6). Based on these findings, the Examiner
concludes that “[t]here is no destruction of the collapsible functionality of
Mogil by providing the removable, non-collapsible member/receptacle of
Preston or Melk.” Ans. 12. We agree and note that Appellant has not
identified, nor do we discern, where Mogil states that collapsibility is the
function of Mogil’s cooler. Rather, Mogil’s device has many functions with
the primary function appearing to be the provision of a removable liner. See,
e.g., Mogil, col. 2, ll. 23–27; col. 2, ll. 60–65; col. 3, ll. 15–20. The
proposed modification of Mogil in view of Preston or Melk does not destroy
this function, thus Appellant’s arguments that the proposed modification
would render Mogil unsatisfactory for its intended purpose in view of In re
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Gordon, 733 F. 2d 900 (Fed. Cir. 1984) (see App. Br. 8–9; Reply Br. 4) is
unfounded.
Appellant has not shown that Mogil teaches away from the proposed
combinations. Accordingly, we sustain the Examiner’s rejection of
independent claim 1 and claims 2–20 which fall therewith.

DECISION
The Examiner’s rejection of claims 1–20 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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