Ex Parte Paculdo

Patent Trial and Appeal Board

Jun 20, 2016

13450100 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/450,100 04/18/2012
85444 7590 06/20/2016
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
FIRST NAMED INVENTOR
Sara Paculdo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
545.283 5964
EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3788
MAILDATE DELIVERY MODE
06/20/2016 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 SARA P ACULDO
Appeal2014-003458
Application 13/450, 100
Technology Center 3700
Before: WILLIAM A. CAPP, LEE L. STEPINA, and
AMANDA F. WIEKER, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON i\.PPEi\L
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's Final
rejection of claims 6 and 7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-003458
Application 13/450, 100
CLAIMED SUBJECT MATTER
The claims are directed to a cat needs organizer for receiving and
maintaining products related to cat needs. Spec. 1 :4--5. Claim 6, reproduced
below, is illustrative of the claimed subject matter:
6. A cat needs organizer comprising a shell, said shell
having a base for residing upon a horizontal surface and
organizer sidewalls emanating therefrom creating an interior
space with an open top, said organizer sidewalls having top
edges, a plurality of which are provided with at least one notch,
at least one receptacle sized for residing within said interior space
and having receptacle sidewalls having at least one protrusion
sized and positioned to be received by said at least one notch,
said receptacle being sized and configured to be removable from
said interior space and to hang from said at least one of said
organizer sidewalls exterior to said interior space by joining said
at least one protrusion with said at least one of said notches and
further comprising a lidded litter disposable container.
Appeal Br. 6, Claims App.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Araki
Behlman
Sullins
us 4,307,819
us 5,215,205
us 6,050,200
REJECTIONS
Dec. 29, 1981
June 1, 1993
Apr. 18, 2000
(I) Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Sullins and Araki.
(II) Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Sullins, Araki, and Behlman.
2
Appeal2014-003458
Application 13/450, 100
OPfNION
Re} ection (I)
The Examiner finds that Sullins discloses most of the features recited
in independent claim 6, but does not disclose "a lidded disposable container
capable of holding litter." Final Act. 2-3. Nonetheless, the Examiner finds
that Araki teaches such a container and concludes that it would have been
obvious "to modify one of the receptacles [trays] 38 of Sullins ... with a lid
as taught by Araki in order to prevent stored items from falling out of the
receptacle when being transported (see [Araki, col. 4, 11. 21-38])." Final
Act. 3.
Appellant argues that Sullins teaches a lap desk, Araki teaches a box
with a pivotable lid, and "[ w ]ith this pivotal connection, it is not seen how
the Araki device would substitute for the external trays of Sullins, the
Examiner [is] basically taking the position that [it] would be obvious with or
without the citation of prior art to put a lid on Sullins' trays." Appeal Br. 4
(emphasis added); see also Reply Br. 2 (stating "ifthe tray of Araki was to
substitute for tray 3 8 of Sullins, lid portion 5 of Araki would be unable to
open along its hinge as lid 7 would abut lid 14 of Sullins").
In response, the Examiner states that both Sullins and Araki teach
small containers, Araki provides a lid to its small container to "prevent[]
items stored within from falling out when being transported," and "with this
teaching in mind it would have been obvious to provide a lid to at least one
of the smaller containers of Sullins." Ans. 4. In this regard, the Examiner
reasons that Sullins provides a large container with smaller containers inside,
and "[a ]dding a lid as taught by Araki would also prevent unwanted mixing
3
Appeal2014-003458
Application 13/450, 100
of these items ... and allow the smaller storage containers to be used
separately." Ans. 4.
We agree with the Examiner on this issue. Appellant does not explain
persuasively why a lid, even with a "pivotal connection," such as the one
taught by Araki, would not be compatible with trays 3 8 as taught by Sullins.
Rather, Appellant makes the contention that "lid portion 5 of Araki would be
unable to open along its hinge as lid 7 would abut lid 14 of Sullins" without
explaining adequately why any particular orientation or placement of lid 7
would be required in the Examiner's proposed combination so as to result in
the abutment problem identified by Appellant. Reply Br. 2. In any event,
we understand the Examiner's rejection to modify Sullins' trays 38 to
include a lid, not necessarily the specific "pivotable" lid taught by Araki.
See Ans. 4--5. Thus, Appellant's arguments are not commensurate with the
Examiner's application of the teachings of Araki to the containers in Sullins.
"It is well-established that a determination of obviousness based on
teachings from multiple references does not require an actual, physical
substitution of elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012).
Appellant next argues that the Examiner's proposed combination
"fails to teach all of the recited component parts constituting claim 6."
Appeal Br. 4. Specifically, Appellant argues that claim 6 recites "both a
receptacle sized and configured to be removable from the interior space and
to hang on at least one of the organizer sidewalls exterior to the interior
space as well as a lidded litter disposable container," and "Applicant's
invention has sidewalls with notches, the notches and remainder of the
article being claimed are sized and positioned to receive both a receptacle
4
Appeal2014-003458
Application 13/450, 100
and a lidded litter disposable container. These are separate items and no
reading of the Sullins/ Araki combination teaches these elements in
combination." Appeal Br. 4 (emphases added).
In response, the Examiner states, "all of the plurality of small
containers [disclosed by Sullins] are capable of holding litter and all the
plurality of small containers are disposable." Ans. 4. The Examiner
determines that the modification of the word "container" by the word "litter"
in claim 6 is a recitation of intended use, and the containers in Sullins satisfy
this requirement in claim 6 because they are capable of holding litter. Ans.
4.
We agree with the Examiner on this issue. Appellant makes no
persuasive argument as to whether trays 38 of Sullins are incapable of
containing litter. See Appeal Br. 2-5. Nor does Appellant make any
persuasive argument as to whether claim 6 requires a structural difference
between the recited receptacle and lidded litter disposable container. The
scope of claim 6 does not preclude two identical containers, one satisfying
the requirement for a lidded litter disposable container and the other
satisfying the requirement for a receptacle, so long as the remaining features
of the claim are also satisfied.
In the Reply Brief, Appellant argues that the Examiner overlooked
claim limitations or misinterpreted the claims. Reply Br. 2. In this regard,
Appellant argues that Sullins does not provide an open top, and does not
provide notches on top edges of a plurality of sidewalls as required by claim
6. Reply Br. 2. Appellant states, "cited 'notch 50' is not a notch at all, as it
is not configured within the top edge of the Sullins lap desk sidewall," and
"the cutout sections of Sullins, again which the Examiner characterizes as
5
Appeal2014-003458
Application 13/450, 100
'notches[,]' are not in the Sullins sidewalls but are in the Sullins lid." Reply
Br. 2.
These arguments are not in response to an argument made by the
Examiner in the Answer and could have been made in the Appeal Brief
inasmuch as the Examiner has not changed the basis for the rejection of
claim 6. See Final Act. 2-3; see also Ans. 2-3. Appellant provides no good
cause for their late inclusion. See Reply Br. 1-2. Accordingly, we find
these arguments to be untimely and we do not consider them for the
purposes of this appeal. See 37 C.F.R. § 41.41(b)(2) (2015) ("Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner's answer ... will not be
considered by the Board for purposes of the present appeal, unless good
cause is shown."). Accordingly, we sustain the Examiner's rejection of
claim 6 as unpatentable over Sullins and Araki.
Re} ection (II)
The Examiner determines it would have been obvious "to modify the
organizer of Sullins ... in view of Araki with partitions as taught by
Behlman in order to organize and separate different items that are be stored
within the organizer (see [Behlman col. 3, 11. 16-37])." Final Act. 3--4.
Appellant argues "Behlman fails to disclose a receptacle being sized
to fit within a subspace, the thrust of the reference being that interior walls
are provided with subdividers 28, 29 which can be removed." Appeal Br. 4.
Appellant states:
Importantly, there is no suggestion why one would modify
Sullins['] lap desk with Behlman's partitions 27 and 28. They
would have no function in a lap desk. They would seemingly
intervene with the Sullins['] trays and have no defined purpose.
6
Appeal2014-003458
Application 13/450, 100
Sullins provides trays that hang from the perimeter of the desk.
The laptop is used in a close orientation to write upon.
Appeal Br. 4. In this regard, Appellant poses the query, "What would be the
purpose for partitions?" Appeal Br. 4.
The Examiner states:
In response to [Appellant's] arguments that Behlman
fails to disclose a receptacle being sized to fit within a
subspace. The Examiner agrees with [Appellant]. However,
Behlman was only being use[d] for its teaching of partitions
and when combined with Sullins in view of Araki the partitions
could create a subspace within the main container of Sullins in
view of Araki and separate one of the plurality of smaller
containers (receptacle).
Ans. 5.
We find Appellant's arguments for the patentability of claim 7 to be
unpersuasive. The Examiner's proposed rationale for providing partitions to
Sullins, "to organize and separate different items that are [to] be stored
within the organizer" (Final Act. 4), is supported by rational underpinning
inasmuch as Sullins discloses that its lap desk may contain various separate
items. See Sullins, col. 1, 11. 15-17 (stating "[i]t is often helpful to have
supplies accompany the lap desk to facilitate its use, such as pencils, pens,
erasers, paper clips and the like"). Accordingly, we do not agree with
Appellant's contention that partitions as taught by Behlman "would have no
function in a lap desk." Appeal Br. 4. As for whether such partitions would
"intervene" with trays 38 of Sullins, Appellant provides no objective
evidence or persuasive technical argument as to why this would be the case.
In this regard, we note that Sullins allows for the removal of trays 3 8, and,
even when stored within compartment 32, trays 38 do not occupy the entire
space therein. See Sullins, Fig. 13. Accordingly, the space in compartment
7
Appeal2014-003458
Application 13/450, 100
32 would allow for the use of partitions as proposed by the Examiner, either
while trays 3 8 are outside this space or while trays 3 8 are stored within
compartment 32.
DECISION
The Examiner's decision to reject claims 6 and 7 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
8