Ex Parte Riga et al

Patent Trial and Appeal BoardNov 14, 2012

11944835 (P.T.A.B. Nov. 14, 2012)

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. 11/944,835 11/26/2007 Erwin Riga RANPP0356USD 6251 23908 7590 11/15/2012 RENNER OTTO BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE NINETEENTH FLOOR CLEVELAND, OH 44115 EXAMINER TAWFIK, SAMEH ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 11/15/2012 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 RAIMOND DEMERS, DAN COPPUS, ERWIN RIGA, PATRICK KLEMKE, and KRISTIEN VARREWAERE ____________________ Appeal 2010-009313 Application 11/944,835 Technology Center 3700 ____________________ Before: KEN B. BARRETT, BENJAMIN D. M. WOOD, and RICHARD E. RICE, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009313 Application 11/944,835 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 33-36 and 38-40. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The claims are directed to a dunnage converter stand that is rotatable about horizontal and vertical axes. Claim 33, reproduced below, is illustrative of the claimed subject matter: 33. In combination with a dunnage converter, a stand having an upper part to which the converter is adjustably mounted for rotation about a substantially horizontal axis, and a base below the upper part to which the upper part is adjustably mounted for rotation about a substantially vertical axis. REFERENCES McGillivray Simmons Armington US 4,590,695 US 5,730,696 US 6,077,209 May 27, 1986 Mar. 24, 1998 Jun. 20, 2000 REJECTION Claims 33-36 and 38-40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Simmons in view of Armington and McGillivray. Ans. 3. ANALYSIS Appellants only argue the patentability of claim 33, the sole independent claim. App. Br. 12; Reply Br. 3. We therefore only address claim 33, with claims 34-36 and 38-40 standing or falling with claim 33. Appeal 2010-009313 Application 11/944,835 3 Claim 33 recites a stand for a dunnage converter having an upper part rotatable about a substantially horizontal axis and a base below the upper part rotatable about a substantially vertical axis. The Examiner found that Simmons discloses a dunning converter stand rotatable about a vertical axis, and Armington discloses a dunning converter stand rotatable about a horizontal axis. Ans. 5 (citing Simmons, Figs. 1, 2, and col. 3, ll. 40-45; Armington col. 7, ll. 2-5 and col. 20, ll. 8-10). The Examiner further found that McGillivray teaches a quilting stand that is rotatable about a horizontal axis and a vertical axis, with the upper part rotatable about a horizontal axis. Ans. 5-6 (citing McGillivray Figs. 1, 2, and col. 2, ll. 58-65). Finally, the Examiner concluded that it would have been obvious to one having ordinary skill in the art at the time the invention was made to modif[y] Simmons’s stand by allowing the upper part of the stand to rotate about a horizontal axis, as suggested by Armington and McGillivray, in order to provide an adjustable frame which is sufficiently rigid to support a large size device. Ans. 5-6 (citing McGillivray, col. 2, ll. 58-65). Appellants raise three arguments for why the Examiner’s rejection is erroneous. First, Appellants argue that neither Simmons nor Armington teach or suggest the claimed combination. App. Br. 9. While true, it is irrelevant because the rejection is based on the combination of references, not either reference individually. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures). Appellants next argue that Simmons’s stand cannot be modified to include Armington’s rotation mechanism because Simmons and Armington Appeal 2010-009313 Application 11/944,835 4 use different support stand mechanisms. App. Br. 9-11 (citing Simmons, Figs. 1-4, col. 2, ll. 33-36, and col. 4, ll. 1-3, 43-46, col. 4, l. 51 – col. 5, l. 14; Armington Figs. 11-13, col. 15, l. 21 – col. 16, l. 29). But “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). While it is true that Simmons and Armington use different support stand mechanisms, Appellants have not explained why a person of ordinary skill in the art would be unable to build a dunnage converter stand rotatable around the vertical and horizontal axes using the teachings of Simmons, Armington, and McGillivray. Appellants further argue that there is no reason to combine Simmons’s and Armington’s mounting arrangements in the manner set forth in claim 33, i.e., “where the converter is mounted to a stand having an upper portion rotatable about a horizontal axis and a lower portion rotatable about a vertical axis.” App. Br. 11-12. Having reviewed the record and Appellants’ arguments, however, we conclude that the Examiner has provided a reason with rational underpinning to support his conclusion of obviousness. See Ans. 5-6; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[r]ejections on obviousness grounds . . . [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Appeal 2010-009313 Application 11/944,835 5 Appellants next argue, in effect, that McGillivray is nonanalogous art. App. Br. 12-13. Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987)). As our reviewing court has stated: A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem. Thus, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. Clay, 966 F.2d at 659. We find that McGillivray is reasonably pertinent to the particular problem with which the inventor is involved, i.e., developing a stand for a heavy object that permits a user to conveniently position the object. Finally, Appellants argue that none of the references consider the problem of providing a dunnage conversion machine for use by a plurality of packers at different rotatably spaced packing stations, where different packers may need to dispense dunnage at different angles from horizontal. App. Br. 14-15. But it is not necessary for the Examiner to look only to the Appeal 2010-009313 Application 11/944,835 6 problem the patentee was trying to solve; rather, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 420. We sustain the Examiner’s rejection of claims 33-36 and 38-40. DECISION For the above reasons, the Examiner’s rejection of claims 33-36 and 38-40 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) (2011). AFFIRMED hh