Ex Parte MogilDownload PDFPatent Trial and Appeal BoardJun 17, 201410606125 (P.T.A.B. Jun. 17, 2014) Copy Citation 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 ____________________ 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: Appeal 2012-003244 Application 10/606,125 2 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. Appeal 2012-003244 Application 10/606,125 3 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 Appeal 2012-003244 Application 10/606,125 4 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). Appeal 2012-003244 Application 10/606,125 5 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 Appeal 2012-003244 Application 10/606,125 6 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 mls Copy with citationCopy as parenthetical citation