Tonia Miller

Patent Trials and Appeals BoardNov 25, 2020

2020002383 (P.T.A.B. Nov. 25, 2020)

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. 13/218,874 08/26/2011 Tonia Walstad Miller 107086-0001 8763 24267 7590 11/25/2020 CESARI AND MCKENNA, LLP ONE LIBERTY SQUARE SUITE 310 BOSTON, MA 02109 EXAMINER BARFIELD, ANTHONY DERRELL ART UNIT PAPER NUMBER 3636 NOTIFICATION DATE DELIVERY MODE 11/25/2020 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): USPTOMail@c-m.com docket@c-m.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TONIA WALSTAD MILLER ____________ Appeal 2020-002383 Application 13/218,874 Technology Center 3600 ____________ Before MAHSHID D. SAADAT, CATHERINE SHIANG, and CARL L. SILVERMAN, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 24–26, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Tonia Walstad Miller. Appeal 2020-002383 Application 13/218,874 2 STATEMENT OF THE CASE Introduction The present invention relates to “furniture and, more specifically, to furniture which incorporates load-bearing or non-load bearing structures in which water or other material may be stored.” See Spec. 1:6–8. Claim 1 is exemplary (emphases added): 1. A table having integrated storage capacity comprising: a removable tabletop which is supported by a load- bearing frame; said load-bearing frame defining a volume in which an emergency water store is disposed, said volume entirely overlayed by said tabletop, said emergency water store including a plurality of reusable storage containers substantially identical in size and shape, each of which includes a spout; and one or more load-bearing structures for supporting said tabletop, load-bearing frame and emergency water store above a floor surface. References and Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 24–26 103(a) Shaw (US 5,060,580; iss. Oct. 29, 1991), Herckner (US 2003/0173328 A1; publ. Sept. 18, 2003) ANALYSIS Obviousness On this record, the Examiner did not err in rejecting claim 1. We have reviewed and considered Appellant’s arguments, but such arguments are unpersuasive. To the extent consistent with our analysis Appeal 2020-002383 Application 13/218,874 3 below, we adopt the Examiner’s findings and conclusions in (i) the action from which this appeal is taken and (ii) the Answer.2 Appellant contends Shaw and Herckner do not collectively teach the claimed “emergency water store,” as recited in claim 1. See Appeal Br. 6– 11; Reply Br. 2–4. In particular, Appellant asserts Shaw’s “food stuff, picnic supplies and ice” do not teach the disputed claim term, because “[t]he claimed ‘emergency water store’ is a structural limitation, not a functional limitation.” Appeal Br. 8. Appellant also cites external references to show differences between the claimed “emergency water store” and food. See Appeal Br. 10–11; Reply Br. 4. Appellant further argues: “There is no teaching or suggestion whatsoever in Shaw of a structure that meets the limitation ‘emergency water store’” and neither Shaw nor Herckner “recite[s] the phrase ‘emergency water store’ nor ‘emergency’ nor ‘water store’ nor ‘water[.]’” Appeal Br. 8; see also Reply Br. 2–3. Appellant has not persuaded us of error. First, we disagree with Appellant’s interpretation of the Examiner’s findings, because we understand the Examiner cites Shaw’s internal storage area 14—not Shaw’s “food stuff, picnic supplies and ice” (Appeal Br. 8)— for teaching the claimed “emergency water store.” See Final Act. 2–3 (citing Shaw’s internal storage area 14); (“[t]he containers of Shaw are stored in the volume of the load-bearing frame”); (“the ‘containers’ of Shaw which houses ‘food stuff’”); Ans. 4 (“there is physical identity (i.e., a table having a load bearing frame defining a volume along with a removable table 2 To the extent Appellant advances new arguments in the Reply Brief without showing good cause, Appellant has waived such arguments. See 37 C.F.R. § 41.41(b)(2). Appeal 2020-002383 Application 13/218,874 4 top)” in Shaw). As a result, Appellant’s arguments (Appeal Br. 8) are not directed to the Examiner’s specific findings, and Appellant’s references showing the differences between the claimed “emergency water store” and food (Appeal Br. 10–11; Reply Br. 4) are not on point and do not show Examiner error. Second, contrary to Appellant’s arguments (Appeal Br. 8–10; Reply Br. 2–43), the claimed “emergency water store” is taught by or obvious in light of Shaw’s teachings. In particular, the claimed “water store” is taught by or obvious in light of Shaw’s disclosure of “the internal storage area 14.” Shaw teaches “the contents 26 of the internal storage area 14 . . . can include any articles, such as picnic supplies, food stuffs and ice” (Shaw 3:5–9 (emphasis added)). See Ans. 5 (citing Shaw). Shaw’s disclosure of “any articles” includes water, especially since “picnic supplies, food stuffs” generally include water. See Ans. 5; Shaw 3:5–9. Therefore, the claimed “water store” is taught by or obvious in light of Shaw’s disclosures. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (whether a reference teaches a claim limitation “is not an ‘ipsissimis verbis’ test”). Further, claim 1 recites a “table” product, and the claimed “emergency” recites how the water store is used. Therefore, the claimed 3 Appellant requests we disregard a portion of the Examiner’s Answer because the Examiner fails to designate that portion as a new ground of rejection. See Reply Br. 2. The request is a petitionable—not appealable— matter and is therefore, not before us. See MPEP § 1002.02(c) (Petitions and Requests Decided by the Technology Center Directors); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”). Further, Appellant is not prejudiced because Appellant had an opportunity to respond to the Examiner’s Answer. In any event, our analysis does not rely on that portion of the Examiner’s Answer. Appeal 2020-002383 Application 13/218,874 5 “emergency” constitutes intended use, and “emergency water store” encompasses Shaw’s internal storage area 14. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“[i]t is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable”). As a result, the claimed “emergency water store” is taught by or obvious in light of Shaw’s teachings. Because Appellant has not persuaded us the Examiner erred, we sustain the Examiner’s rejection of independent claim 1. We also sustain the Examiner’s rejection of corresponding dependent claims 24–26, as Appellant does not advance separate substantive arguments about those claims. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION We affirm the Examiner’s decision rejecting claims 1 and 24–26. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 24–26 103(a) Shaw, Herckner 1, 24–26 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). See 37 C.F.R. § 41.50(f). AFFIRMED