Ex Parte Rolfes et al

Patent Trial and Appeal Board

Nov 28, 2012

11949602 (P.T.A.B. Nov. 28, 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.
11/949,602 12/03/2007 Adam Rolfes 20467 (ITWO:0151) 5068
52145 7590 11/28/2012
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
11/28/2012 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 ADAM ROLFES, SANJEEV THAPA, and STEVE BARHORST
____________

Appeal 2010-010196
Application 11/949,602
Technology Center 3700
____________

Before LINDA E. HORNER, JOHN C. KERINS, and WILLIAM A. CAPP,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Adam Rolfes et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 2, 4, 5, 8, 10, and 12-
25, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-010196
Application 11/949,602

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THE INVENTION
Appellants’ claimed invention relates to a recyclable drum used to
supply welding wire to the wire feeder of an arc welding system. Spec.,
paras. [0002], [0004]. Claims 1, 12, and 19 are independent. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A wire container, comprising:
a housing consisting essentially of a recyclable fiber
material, the housing comprising:
a peripheral wall defining a boundary leading from
a first end to a second end of the housing;
a plurality of end portions of the housing folded
inwardly across the boundary at the second end to define
an end wall; and
a plurality of support structures coplanar with and
coupled to the end wall and extending across the plurality
of end portions.
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 21, 23, and 24 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.1
2. Claims 1, 2, 4, 5, 8, 10, and 12-25 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Bae (US 7,325,683 B2;

1 The Examiner withdrew claims 2 and 18 from this ground of rejection.
Ans. 8.
Appeal 2010-010196
Application 11/949,602

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iss. Feb. 5, 2008), Witte (US 1,866,496; iss. Jul. 5, 1932), and Dragoo
(US 7,017,742 B2; iss. Mar. 28, 2006).
ANALYSIS
Written Description
The Examiner determined that the original disclosure does not
adequately describe the subject matter of claim 23 that calls for the end
portions and support structures to be laminated to one another “without
metal fasteners” because the disclosure does not discuss metal fasteners.
Ans. 3, 8.
The Specification describes that the container 18 has a base 52, which
includes inwardly folded portions and laminations to increase the carrying
capacity of the container “without the use of metal.” Spec., para. [0018].
The Specification further describes that “the drum 80, the support structures
82, 84, and 86, and the lid 91 are made entirely of cellulosic material without
any metal or other dissimilar material that cannot be recycled together.”
Spec., para. [0026]. We acknowledge that the original disclosure does not
explicitly recite the absence of metal “fasteners.” Rather, the original
disclosure generally describes the absence of the use of metal. While in
some cases an undisclosed species may violate the written description
requirement, we find that in this case, based on the description that the
container does not use metal, the original disclosure would reasonably
convey to persons of ordinary skill in the art that Appellants were in
possession of a container that does not use metal fasteners.
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Application 11/949,602

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The Examiner also determined that the original disclosure does not
adequately describe the subject matter of claims 21, 23, and 24 that calls for
the end wall/end assembly of the container to support at least 500 pounds
“during lifting of the housing.” Ans. 3, 8.
The Specification describes an embodiment of a recyclable drum 80
having a “desired bottom strength” sufficient to support over 500 pounds.
Spec., para. [0025]; fig. 6. The Specification further shows, with reference
to Figure 9, the drum 80 being lifted by clamps 48 that grab the outside edge
of the drum 80. Spec., para. [0028]; fig. 9. The Specification describes that
“[t]he folding portions 76, the circular support structures 82, 84, and 86, and
the flanged cylindrical lid 91 cooperatively provide enough strength at the
bottom of the drum 80 to support the weight of the welding wire during
overhead lifting.” A person skilled in the art, upon reading these
descriptions of drum 80 in the Specification, would understand Appellants to
have been in possession of a container having a bottom strength that is
constructed to support at least 500 pounds during lifting of the housing. As
such, we reverse the rejection of claims 21, 23, and 24 under
35 U.S.C. § 112, first paragraph.
Obviousness
The Examiner determined:
It would have been obvious to one of ordinary skill in the
art to substitute an integral plurality of triangular folds having
radial folds directed inwardly toward a center of the boundary,
for the end portion 122c of the Bae device for the predictable
result of reinforcing the bottom of the Bae device, as taught by
Witte in column 1, lines 38-42.
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Ans. 4. Appellants argue that Witte is not analogous art. App. Br. 22. In
particular, Appellants argue that Witte is not in the field of Appellants’
endeavor (i.e., welding wire containers), because Witte relates to containers
for ice cream and other food. Id. Appellants also argue that Witte is not
reasonably pertinent to the problem facing Appellants because “[t]here has
been no showing by the Examiner that one of ordinary skill in the art of
welding wire containers would be motivated to look at ice cream containers
and, furthermore, there is no evidence whatsoever that similar problems
exist in these disparate fields of art.” Id. The Examiner responds that Witte
is “in the field of appellant’s endeavor i.e., art of containers and packaging.”
Ans. 10.2
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant’s endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). The
“field of endeavor” test asks if the structure and function of the prior art is
such that it would be considered by a person of ordinary skill in the art
because of the similarity to the structure and function of the claimed
invention as disclosed in the application. In re Bigio, 381 F.3d 1320, 1325-

2 See also Advisory Action dated December 31, 2009 (“In this case, both
Bae and Witte are from the same art (i.e., art of containers and receptacles),
also it is noted that Witte is reasonably pertinent to the particular problem
(i.e., reinforcing the bottom of a container as taught by Witte column 1, lines
38-42) with which the applicant was concerned.”).
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27 (Fed. Cir. 2004). “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.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Witte relates to paper containers for holding one to ten gallon lots of
ice cream to be used in lieu of metal cans. Witte, p. 1, ll. 1-12. Witte
teaches die cutting a paper blank 10 to provide a plurality of tongues or
flanges 11 integral with the body of the blank 10, which are bent inwardly
and designed to reinforce the bottom of the container. Witte, p. 1, ll. 33-41
and 53-57.
Appellants’ Specification is directed to a drum for storing welding
wire and for supplying the welding wire to the wire feeder of an arc welding
system. Spec., para. [0002]. The Specification describes that a typical drum
is formed as a hollow cylinder of a cellulosic material, such as cardboard,
along with various metal parts for support, and that during lifting, the base of
the drum cannot support the weight of the welding wire without some type
of non-cellulosic support, such as pallet straps or metal structures. Id. The
Specification describes that recycling the drums is difficult because the
fibrous portion of the drum must be separated from the metal portion, which
can be a complex and time consuming operation. Spec., para. [0003]. The
Specification describes that “[i]n certain embodiments, the drum 80 may be
constructed to support over 500 lbs, over 1000 lbs, or over 1500 lbs.” Spec.,
para. [0025].
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An examination of the structure and function of Witte as compared to
the structure and function of the claimed invention reveals an important
distinction. While both structures relate generally to containers for holding
goods, Witte’s container is designed to hold one to ten gallon lots of ice
cream, while the Appellants’ invention is designed to hold on the order of
500 pounds of coiled welding wire. The magnitude of the difference in the
weight of the contents of the respective containers evinces that the
Examiner’s characterization of the field of Appellants’ endeavor as relating
generally to “containers and packaging” is too broad. Witte’s container is
essentially a cylinder capped at each end and having the bottom strengthened
by inwardly folded tongues 11. Witte describes that the caps are put on over
the ends of the cylinder to preserve the container’s contents against
contamination and to prevent dust collecting in the container when empty,
and that the bottom cap can be secured by friction or with a couple of
staples. Witte, p. 2, ll. 58-64. Appellants’ container, on the other hand, has
a much more complex structure in order to be capable of supporting the
weight of the welding wire, including support structures 86 and 82, inwardly
folded triangular portions 76, support structure 84, and flanged lid 91.
Spec., fig. 7. Thus, the structure and function of Witte’s ice cream container
is not sufficiently similar to the structure and function of the claimed
welding wire container so that it would be considered by a person of
ordinary skill in the welding wire container art. As such, we disagree with
the Examiner’s finding that Witte is from the Appellants’ field of endeavor.
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To the extent the Examiner’s finding that Witte is analogous art is
based on a determination that Witte is reasonably pertinent to the problem
facing Appellants, we disagree. The problem facing Appellants was the
construction of a container capable of supporting a coil of welding wire
without the use of metal supports to reinforce the bottom of the container.
Witte deals with constructing a paper ice cream container capable of
containing a one to ten gallon lot of ice cream. We find that a disclosure for
a container for holding one to ten gallons of ice cream would not have
logically commended itself to Appellants’ attention in considering the
problem of constructing a container to hold a coil of welding wire.
As such, we find that Witte is not analogous art. Neither of the
remaining references would have rendered obvious a container comprising a
plurality of end portions of the housing folded inwardly across an end of the
container, as claimed. As such, we reverse the rejection of claims 1, 12, and
19, and their dependent claims 2, 4, 5, 8, 10, 13-18, and 20-25, under
35 U.S.C. § 103(a) as unpatentable over Bae, Witte, and Dragoo.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 2, 4, 5,
8, 10, and 12-25.
REVERSED

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