Jean-Francois Orsini

Patent Trials and Appeals Board

Aug 30, 2021

2021000713 (P.T.A.B. Aug. 30, 2021)

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.
16/752,476 01/24/2020 Jean-Francois Orsini JFO-NP104 1088
115910 7590 08/30/2021
Chen-Chi Lin
1119 Quail Creek Circle
San Jose, CA 95120
EXAMINER
HANSEN, JAMES ORVILLE
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
08/30/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CCL@LinsPatents.com
chen.chi.lin.7@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-FRANCOIS ORSINI
Appeal 2021-000713
Application 16/752,476
Technology Center 3600
Before CHARLES N. GREENHUT, JILL D. HILL, and
LEE L. STEPINA, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–10, and 13–21.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the inventor, Jean-Francois Orsini, as the real
party in interest. Appeal Br. 2.
2 Claims 1–10 and 13–22 are pending. The Examiner indicates that claims 7
and 22 contain allowable subject matter.
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BACKGROUND
Appellant’s invention relates to a dresser or cabinet with a
stabilization device intended to prevent tipping of the dresser or cabinet.
Claims 1, 17, and 21 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter with certain limitations italicized:
1. A furniture assembly comprising:
two or more drawers comprising:
a lower drawer; and
an upper drawer; and
a plurality of pouches disposed at a rear lower
portion of the furniture assembly.
REFERENCES
Name Reference Date
Beck US 450,925 Apr. 21, 1891
Chardon US 4,438,606 Mar. 27, 1984
Bond US 6,039,473 Mar. 21, 2000
Kunanantakul US 2005/0023942 A1 Feb. 3, 2005
Perrin US 2009/0236955 A1 Sept. 24, 2009
Latorraca US 2016/0089303 A1 Mar. 31, 2016
Smart Bottle
Pouches (SBP)
https://smartbottleinc.com
EPA “Disinfect water using household
bleach,” US EPA website,
https://www.epa.gov/ground-water-
and-drinking-water/emergency-
disinfection-drinking-water

REJECTIONS
I. Claim 21 stands rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 2.
II. Claims 1, 2, 4, 5, 13, 14, 17–19, and 21 stand rejected under 35
U.S.C. § 102(a)(1) as anticipated by Latorraca. Final Act. 3.
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III. Claims 1, 4, 5, 8, and 14 stand rejected under 35 U.S.C. § 103
as unpatentable over Bond and Perrin. Final Act. 5.
IV. Claims 1, 2, 4, 6, 8, 9, 13–19, and 21 stand rejected under 35
U.S.C. § 103 as unpatentable over Beck, Chardon, and SBP. Final Act. 7.
V. Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable
over Beck, Chardon, SBP, and EPA. Final Act. 10.
VI. Claims 3, 8–10, and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Latorraca, SBP, and EPA. Final Act. 10.
VII. Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable
over Bond, Perrin, and Kunanantakul. Final Act. 12.
VIII. Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable
over Latorraca and Kunanantakul. Final Act. 10.
ANALYSIS
Rejection I – Written Description
The Examiner finds that “the disclosure as originally filed does not
discuss the absence of a pouch within any of the drawers” and, therefore,
“the limitation ‘wherein no pouch is disposed in the upper drawer’ is
deemed an attempt to avoid a prior art reference by simply excluding a
positive feature without providing a patentable basis for doing so.” Final
Act. 3. The Examiner contends that “[t]he mere absence of a positive
recitation is not a basis for an exclusion” thereof in the claim. Id.
Although a lack of literal basis in the Specification for a negative
limitation may not be sufficient to establish a prima facie case for lack of
descriptive support, the negative limitation must still find a basis in the
original disclosure. The absence of a positive recitation, alone, does not
provide a basis in the original disclosure for an exclusionary claim
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recitation, and a negative limitation without a basis in the original disclosure
fails to comply with the written description requirement.
Appellant points to its Figure 2 and paragraph 20 as providing written
description support for the “wherein no pouch is disposed in the upper
drawer” limitation of claim 21. Appeal Br. 5. While Appellant’s Figure 2
shows the weight 296 in a bottom drawer, it does not visually indicate why
the weight should not or cannot be in an upper drawer. Paragraph 20
describes Figure 2, stating “[w]ithout the plurality of pouches 260, if a force
292 is applied to a tip of the upper drawer 224 in an open condition, the
furniture assembly 200 may tilt and rotate along a pivot line 290.”
Paragraph 20 also states that the amount of weight 296 is determined from a
foreseeable force on the open drawer 292 (i.e., the weight of a toddler)
multiplied by the distance 293 of the force from the front wall of the cabinet.
No restriction on the location of the weight within the cabinet is mentioned.
In Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir.
2012), the court stated that “[n]egative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation.” Appellant’s Specification does not appear to provide a reason to
exclude. We disagree with Appellant’s contention that its Figure 2 and
paragraph 20 provide support for the “no pouch . . . in the upper drawer”
limitation (see Appeal Br. 5). Appellant’s Specification only provides the
absence of a positive recitation. We sustain this rejection.
Rejection II – Latorraca Anticipation
Independent claims 1 and 17 recite, inter alia, plural pouches disposed
at a rear lower portion of the furniture assembly, and independent claim 21
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similarly recites a pouch disposed at a rear lower portion of the furniture
assembly. Claims 2, 4, 5, 13, 14, 18, and 19 depend therefrom.
The Examiner finds, inter alia, that Latorraca discloses a furniture
assembly in its Figure 8 with
an upper drawer (610) and a lower drawer (620); and a plurality
of pouches (disclosed as IV bags that are stored in removable
compartments (640)) disposed at a rear lower portion of the
furniture assembly (such as when the IV bags are stored in the
lower drawer and within a rearward compartment . . .).
Final Act. 3.
Appellant argues that Latorraca “is silent regarding ‘a rear lower
portion’” of its furniture assembly, and does not disclose what its lower
compartments R691 and R693 are, but they appear different from its
compartment 640. Appeal Br. 8. Appellant further argues that at least a
portion of each of items R691 and 693 is at a front portion of the drawer
620,” rather than at “a rear portion of the drawer 620.” Id. at 7. Thus,
Appellant argues, “[t]here is no reasonable expectation of success to place a
plurality of IV bags at a rear lower portion of” Latorraca’s furniture
assembly. Id.
The Examiner responds that Latorraca’s drawers “may house a variety
of compartments (630, 640), where each compartment may” vary in size and
contain pouches such as IV bags. Ans. 4. The Examiner contends that the
compartments may be sized like the smaller compartments 630, 640 along
the front of the drawer or like the larger compartments behind them, “and
thus the bags housed and situated within the rearmost compartments of the
lowermost drawer would satisfy the claimed subject matter.” Id. The
Examiner contends that Latorraca’s “drawers would inherently be filled with
. . . compartments (not just a front compartment row),” or “the
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compartments themselves would be jostled and moved around within the
drawer.” Id. The Examiner reasons that a location of Latorraca’s pouches
within its drawers, such as along the rear of the lower drawer, would be
“dictated by the needs and/or preferences of the user.” Id. at 5.
Appellant replies, inter alia, that Latorraca’s compartments are
contemplated to be, at times, empty. Reply Br. 5.
Appellant has the better argument. The rejection based on Latorraca
is an anticipation rejection. Thus, the Examiner must establish that
Latorraca expressly or inherently discloses the limitations of claim 1,
including “a plurality of pouches disposed at a rear lower portion of the
furniture assembly.”
The Examiner’s finding that Latorraca has draws that may have rear
compartments that may hold IV bags, while possible, is nonetheless
speculative and does not provide sufficient evidence to support the
anticipation rejection. We do not sustain the Rejection II for this reason.
Rejections VI – Latorraca, SBP, EPA Obviousness
Claims 3, 8–10, and 20 depend from one of independent claim 1 and
independent claim 17, addressed above in our analysis of Rejection II.
Because the Examiner makes no finding that SBP or EPA cure the
deficiencies of Latorraca set forth in our analysis of Rejection II, and we do
not readily discern such a cure, we do not sustain Rejection VI for the
reasons set forth above regarding Rejection II.
Rejections VIII – Latorraca and Kunanantakul Obviousness
Claim 6 depends from claim 1, addressed above in our analysis of
Rejection II. Because the Examiner makes no finding that Kunanantakul
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cures the deficiencies of Latorraca set forth in our analysis of Rejection II,
and we do not readily discern such a cure, we do not sustain Rejection VIII
for the reasons set forth above regarding Rejection II.
Rejections III – Bond and Perrin Obviousness
Regarding independent claim 1, the Examiner finds, inter alia, that
Bond’s Figure 1 discloses a furniture assembly with one drawer 14 “and at
least an inherent second drawer (lower drawer - not shown),” and “one
pouch (20) disposed in the furniture assembly.” Final Act. 5. The Examiner
acknowledges that Bond does not explicitly disclose “a second lower drawer
or plural pouches.” Id. The Examiner finds, however, that Perrin’s Figure 2
discloses upper and lower drawers. Id. at 5–6. The Examiner reasons that it
would have been obvious “to incorporate an additional pouch within the
drawer, such as for increased tamper resistant capacity” and as an obvious
duplication of parts. Id. at 6. The Examiner further reasons that “the
addition of a lower drawer with plural pouches placed rearward within the
stowed lower drawer would account for pouches disposed at a rear lower
portion of the furniture assembly.” Id.
Appellant argues that Perrin, relied on to disclose a lower drawer,
“does not show [the] internal portion of the lower drawer,” and Bond does
not disclose plural pouches. Appeal Br. 9.
The Examiner responds that “[a]s modified, the pouches could be
positioned in either drawer since this would be the normal use of the item,
and an article is entitled to all its potential uses.” Ans. 5–6 (emphasis
omitted). The Examiner argues that prima facie obviousness is established
because the claimed invention “only unites old elements with no change in
their respective functions,” and “[c]ommon sense directs one to look with
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care at a patent application that claims as innovation the combination of
known devices according to their established functions,” such that “the
rejections are deemed adequate to support the legal conclusion of
obviousness.” Id. at 6.
Appellant replies, inter alia, that there is no motivation to combine
Bond and Perrin to get pouches in a rear lower portion of the furniture
assembly, particularly given that Bond shows its single pouch 20 “placed in
the front portion of the drawer.” Reply Br. 7 (emphasis omitted).
On some level, virtually all inventions involve a combination of
known elements. This does not lessen the Examiner’s requirement to make
findings supported by a preponderance of the evidence and articulate
reasoning with a rational basis in establishing obviousness. The Examiner
appears to be contending that the burden of establishing prima facie
obviousness is lower when an invention is a combination of old elements
performing their known functions. This contention finds no support in
procedure, rule, or law. The Examiner proposes to add a lower file drawer
to Bond and to add another pouch 20. The Examiner then contends that,
since file folders are intended to be stored within the holder 10 generally,
more than one pouch 20 could end up in the rear lower portion of the added
drawer and meet the limitations of claim 1. While this scenario is possible,
it is again speculative. “[L]egal determinations of obviousness, as with such
determinations generally, should be based on evidence rather than on mere
speculation or conjecture.” Alza Corp. v. Mylan Laboratories, Inc., 464 F.
3d 1286, 1290 (Fed. Cir. 2006). For this reason, we do not sustain Rejection
III.
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Rejections VII – Bond, Perrin, and Kunanantakul Obviousness
Claim 6 depends from independent claim 1, addressed above in our
analysis of Rejection III. Because the Examiner makes no finding that
Kunanantakul cures the deficiencies of Bond and Perrin set forth in our
analysis of Rejection III, and we do not readily discern such a cure, we do
not sustain Rejection VII for the reasons set forth above regarding Rejection
III.
Rejections IV – Beck, Chardon, and SBP Obviousness
Independent claims 1 and 17 recite a furniture assembly with upper
and lower drawers, and plural pouches disposed at a rear lower portion of
the furniture assembly. Independent claim 21 similarly recites a furniture
assembly with upper and lower drawers, and a pouch disposed at a rear
lower portion of the furniture assembly.
Appellant argues claims 1, 6, 14, and 16 as a group. We select claim
1 as representative. Claims 6, 14, and 16 stand or fall with claim 1.
The Examiner finds that Beck’s Figure 1 discloses a furniture
assembly with upper and lower drawers, and “weights (E) disposed in the
furniture assembly (the weights would be 3 - one for each tier of drawers).”
Final Act. 7. The Examiner acknowledges that Beck does not disclose
pouches, but finds that Chardon discloses using bags filled with sand or dirt
11 for ballast, and reasons that it would have been obvious to replace the
solid weight of Beck with “a bag with a comparable weight of fillable
material because this alternative weight arrangement would enhance the
versatility of Beck’s device by a allowing a user to readily alter the amount
of ballast required in the furniture.” Id. The Examiner finds that SBP
discloses “a container that is able to be filled with a flowable material and
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then subsequently employed as a ballast,” and reasons that it would have
been obvious to replace Beck’s weights with SBP’s pouches “in view of
Chardon’s teaching because this arrangement would enhance the versatility
of Beck’s device by providing a user with an alternative ballast container
that is able to retain flowable materials within a sealed environment.” Id. at
8 (emphasis omitted).
Appellant argues that “[t]here is no reasonable motivation to modify
Beck to replace weight E [with Chardon’s sandbags] 11,” because the
sandbags will leak, particularly because the weight will need to move
vertically in the furniture assembly, which will “accelerate[] leakage of the
[sandbags].” Appeal Br. 10. Appellant contends that this, in fact, teaches
away from modifying Beck to employ Chardon’s sandbags 11. Id.
Appellant further argues that there is no reasonable expectation of success in
replacing Beck’s single weight E with two pouches. Id. at 11.
The Examiner responds that “[A]ppellant relies on a disclosure which
is not of record and does not provide a factual basis for all ‘sand bags’”
leaking. Ans. 6.
Appellant replies that it provided evidence that a typical sandbag
tends to leak during motion, and the Examiner failed to find a special
sandbag that will not leak during motion, or provide a reason to use such a
special sandbag. Reply Br. 8.
We agree with the Examiner that leakage mentioned in one document
does not establish that pouches filled with sand leak. It would seem that a
skilled artisan has the capability to select a pouch for sand that does not leak.
Further, Appellant has not explained why some leaking sand would not be a
tradeoff a skilled artisan would find acceptable in many situations. Indeed,
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many known substitutions carry with them both advantages and
disadvantages. For example, substitutions of more costly material for
cheaper but weaker material – wherein the increased cost is a tradeoff for the
increased strength. Thus, Appellant has not established a teaching away
from sand bag use, and has not established that the Examiner’s reasoning
lacks a rational basis.
Appellant further argues, in the Reply Brief, that “[t]he very limited
space of Beck [cannot] accommodate the additional volume of the sand bag
and the further additional volume of SBP as contended by the Examiner.”
Reply Br. 8.
We are not persuaded by this argument, because it is not supported by
evidence or sound reasoning.
The Reply Brief, Appellant also contends that Beck’s cord D is tied to
a central protrusion of its weight E, so that the direction of the pulling force
from the cord D on the weight E passes through the centroid of weight E to
reduce vibration of weight E during vertical motion. Reply Br. 8. Appellant
contends that, to the contrary, the irregular shape of Chardon’s sandbag 11
has a changing centroid location, so that the Examiner cannot propose to
randomly tie the cord D of Beck to the bag 11 of Chardon and still
prevent/minimize vibration, such that “Beck further teaches away from
replacing the weight E by a sand bag.” Id.
This argument is raised for the first time in the Reply Brief without a
showing of good cause. We decline to consider the merits of this argument
without considering the Examiner’s position on the issue. 37 C.F.R.
§ 41.41(b)(2) (“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
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examiner’s answer, including any designated new ground of rejection, will
not be considered by the Board for purposes of the present appeal, unless
good cause is shown.”).
Appellant lastly contends, in the Reply Brief, that the SBP container
cannot “hit the floor” as proposed by the Examiner, because “[t]he light SBP
will be damaged after hitting the floor for several times,” such that “Beck
further teaches away from replacing the weight E by a sand bag or an SBP.”
Reply Br. 8 (emphasis omitted).
This argument is not persuasive, because it is mere attorney argument
unsupported by evidence. We discern no factual basis for Appellant’s
contention. Further, this argument is raised for the first time in the Reply
Brief, and we decline to consider the merits of this argument without
considering the Examiner’s position on the issue.
Lastly, Appellant argues that “[t]he problem of furniture tip-over
existed for a long period of time,” and the claimed “plurality of pouches
disposed at a rear lower portion of the furniture assembly” provides “a
solution to the problem of furniture tip-over of Long-Felt Need and Failure
of Others.” Appeal Br. 12. In support of this contention, Appellant provides
a Consumer Reports article about the insufficiency of furniture anchors
specifically. Spec. ¶ 3.
The Examiner responds that “numerous successful techniques” have
been used to “prevent unwanted tipping of a furniture item.” Ans. 3.
Establishing long-felt need requires objective evidence that a problem
in the art was recognized by one of ordinary skill, and existed in the art for a
long period of time without solution. In re Gershon, 372 F.2d 535, 538
(CCPA 1967). In addition, the long-felt need must not have been satisfied
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by another before the invention by applicant. Newell Co. v. Kenney Mfg.
Co., 864 F.2d 757, 768 (Fed. Cir. 1988).
The Consumer Reports article mentioned in Appellant’s Specification
was specific to anchors, and does not speak to other solutions to furniture
tipping, or a lack thereof prior to Appellant’s filing date. Thus, Appellant
has not properly established long-felt need with the Consumer Reports
article, and we are not persuaded by this argument. We sustain this rejection
of claim 1. Claims 6, 14, and 16 fall with claim 1.
Claim 2
Regarding claim 2, Appellant repeats the long felt need arguments
discussed above. Appeal Br. 12–13. For the reason explained above.
Appellant has not established long-felt need. We sustain the rejection of
claim 2.
Claim 4
Appellant argues that Beck’s weight E is separated from each of
Beck’s drawers by a guide, such that it cannot be “disposed at a rear portion
of the lower drawers.” Appeal Br. 14–15 (emphasis omitted).
Appellant is correct that Beck’s weights disposed outside of its
drawers, rather than in of them. The Examiner does not address this
argument. We do not sustain the rejection of claim 4.
Claim 8
Appellant argues that Beck’s weight E is not a rectangular prism.
Appeal Br. 17. However, the Examiner finds this disclosure in SBP. Final
Act. 8 (“each of the pouches would be of a rectangular prism shape (shown
in SBP).”). We sustain the rejection of claim 8.
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Claim 9
Appellant argues that the Examiner “fails to point out what [portion]
of SBP the Examiner contended as a recess,” “top surface of the cap,” “top
surface of a pouch.” Appeal Br. 17. Appellant then asserts, without
explanation, that “SBP fails to teach the limitations as required by claim 9.”
Id.
The Examiner responds that the recessed region would be the SBP
handle opening above the cap. Ans. 9.
We are not persuaded by Appellant’s argument. A skilled artisan is
capable of determining the top surfaces of the SBP pouch without an explicit
description of the metes and bounds thereof. Further, Appellant fails to
explain how the elements of SBP fail to meet the limitations of claim 9. We
sustain the rejection of claim 9.
Claim 13
Appellant argues that Beck’s assembly is not a “draw dresser” as
recited in claim 13. Absent a construction of the term “drawer dresser,” a
description of the structure necessitated by such construction, and an
explanation of why Beck’s ticket holding assembly does not meet that
construction, we are not persuaded by this argument. We sustain the
rejection of claim 13.
Claims 15 and 17
Appellant refers back to arguments regarding claim 1 that we
addressed above. Appeal Br. 19. As explained above, we are not persuaded
by these arguments. We sustain the rejections of claims 15 and 17. Claim
19 depends from claim 17. Appellant makes no argument that claim 19
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would be patentable if claim 17 is not. We also sustain the rejection of
claim 19.
Claim 18
Claim 18 recites that “a minimum weight of the plurality of pouches is
determined from torque balance.” The Examiner finds that “minimum
weight of the pouches could be determined in order to effectively and
efficiently operate the drawer’s return depending upon the items placed
within the furniture system.” Final Act. 9. Appellant argues that (1) Beck’s
weight E “is force instead of torque (distance times force),” (2) “Beck is
silent regarding a center of rotation (or center of tilting),” and (3) Beck is
silent regarding a distance between the weight E to the center of rotation (or
center of tilting). Appeal Br. 20. Because the Examiner fails to explain how
Beck, Chardon, and BP teach the limitation(s) of claim 18, we do not sustain
the rejection of claim 18.
Claim 21
Claim 21 recites a furniture assembly comprising, inter alia, upper
drawers, lower drawers, and a pouch, wherein the pouch is disposed at a rear
lower portion of the furniture assembly and not “in the upper drawer.”
Appellant argues that “[t]he weight E of Beck is neither in the lower drawer
nor in the upper drawer.” Appeal Br. 21. Beck’s weight E is not in one of
its upper drawers, and, as discussed above regarding claim 1, Beck’s weight
E is disclosed at a rear lower portion of the furniture assembly. We sustain
the rejection of claim 21.
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Rejections V – Claim 3 Obviousness over Beck, Chardon, SBP, and EPA
Although perhaps intending to argue against this rejection (see Appeal
Br. 3), Appellant only argues that claim 3 is patentable over Latorraca, SBP,
and EPA. Id. at 13–14. We sustain this rejection.

CONCLUSION
The Examiner’s rejections are affirmed in part.

DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21 112(a) Written Description 21
1, 2, 4, 5,
13, 14,
17–19, 21
102(a)(1) Latorraca 1, 2, 4, 5,
13, 14, 17–
19, 21
1, 4, 5, 8,
14
103 Bond, Perrin 1, 4, 5, 8,
14
1, 2, 4, 6,
8, 9, 13–
19, 21
103 Beck, Chardon, SBP 1, 2, 6, 8,
9, 13–17,
19, 21
4, 18
3 103 Beck, Chardon,
SBP, EPA
3
3, 8–10,
20
103 Latorraca, SBP,
EPA
3, 8–10, 20
6 103 Bond, Perrin,
Kunanantakul
6
6 103 Latorraca,
Kunanantakul
6
Overall
Outcome
1–3, 6, 8,
9, 13–17,
19, 21
4, 5, 10,
18, 20

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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)(1)(iv).
AFFIRMED IN PART