Chester LENON, III

Patent Trials and Appeals Board

Mar 25, 2022

2021003194 (P.T.A.B. Mar. 25, 2022)

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. 15/652,541 07/18/2017 Chester LENON, III LEN001 4435 27137 7590 03/25/2022 DIEDERIKS & WHITELAW, PLC 4196 Merchant Plaza, #815 WOODBRIDGE, VA 22192 EXAMINER IMAM, TANZIM ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 03/25/2022 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): MAIL@DWPATENTLAW.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHESTER LENON III ____________ Appeal 2021-003194 Application 15/652,5411 Technology Center 3700 ____________ Before ANTON W. FETTING, BRUCE T. WIEDER, and ROBERT J. SILVERMAN, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 8-12, 14, 18, 19, and 22-26. 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 states that “[t]he real party in interest is Mr. Chester Lennon, III.” (Appeal Br. 3.) Appeal 2021-003194 Application 15/652,541 2 CLAIMED SUBJECT MATTER Appellant’s “invention pertains to a bag and, more particularly, to a bag that can be converted from a flat or unbundled state to a bundled state.” (Spec. ¶ 2.) Claims 8 and 18 are the independent claims on appeal. Claim 8 is illustrative. It recites (emphasis and some paragraphing added): 8. A bag comprising: an upper surface configured to receive a material being collected in the bag when the bag is in use in a flat state; a lower surface, wherein the lower surface is configured to be in contact with a support surface when the bag is in use in the flat state; a channel, wherein a portion of the bag located within the channel constitutes a pocket having an outer periphery that is spaced inward from the channel and a flat annular space between the channel and the outer periphery, said outer periphery defining a shape having an area and said pocket having a surface area greater than the area of the shape, and wherein the pocket is configured to expand and the annular space is configured to expand less than the pocket when the bag is lifted off the support surface; and a drawstring located in the channel, wherein the channel includes an opening through which the drawstring is accessible by a user of the bag, wherein the bag is substantially square. Appeal 2021-003194 Application 15/652,541 3 REJECTION2 Claims 8-12, 14, 18, 19, and 22-26 are rejected under 35 U.S.C. § 103 as unpatentable in view of Snipes (US 2008/0115853 A1, pub. May 22, 2008). ANALYSIS Under 35 U.S.C. § 103, the question is whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” Obviousness is a legal conclusion involving a determination of underlying facts. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. 2 The Final Action rejected claims 8-14 and 18-26 under §§ 102(a)(1), 102(a)(2), and 103. (See Final Action 2.) Appellant filed a Response after the Final Action. The response sought to amend the claims including cancelling claims 13, 20, 21, and 27 (claim 27 had been withdrawn). In the Advisory Action mailed December 3, 2020, the Examiner entered the amendments and stated that “Applicants [sic] reply has overcome the following rejection(s): 102(a)(1) and 102(a)(2) rejections of claims 8-14 and 18-26.” (Advisory Action mailed Dec. 3, 2020, at 1.) In the Answer, the Examiner does not indicate that the §§ 102(a)(1) or 102(a)(2) rejections were withdrawn. (See Answer 3.) However, in view of the Examiner’s statement in the Advisory Action, we treat these rejections as having been withdrawn. Appeal 2021-003194 Application 15/652,541 4 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. In short, “[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Claims 8, 9-11, and 14 With regard to the scope and content of the prior art, Snipes discloses “a disposable woven fiber connectible debris carrier.” (Snipes, Abstract.) The Examiner finds that Snipes discloses all of the elements of claim 8 except for the annular space between the channel and the outer periphery. (Final Action 3-4.) The Examiner refers to Examiner-annotated Figure 1 of Snipes, reproduced below. Appeal 2021-003194 Application 15/652,541 5 Figure 1 “shows details of the top side of an embodiment of the elements of the woven fiber connectible debris carrier.” (Snipes ¶ 19.) The Examiner determines that “[i]t would have been obvious to one having ordinary skill in the art at the time the [application] was filed to have changed the shape of the space (shown in [annotated Figure 1] above) of Snipes to be annular (e.g. by changing the peripheral shape of pocket 170 and/or the peripheral shape of channel 195).” (Final Action 4.) The Examiner explains that the shape being modified in the rejection does not make a difference and performs equally well as the claimed shape. The examiner asserts that the Appellant has not disclosed any criticality for the claimed annular shape in any part of the instant application and that the claimed annular shape does not make a difference and performs equally well as the shape taught by Snipes because both the shape taught by Snipes and the claimed annular shape can provide a pocket having the same volume and can allow the same amount of debris to be collect by the bag 100. Thus, one of ordinary skill in the art may choose the claimed annular shape over the shape taught by Snipes based on personal aesthetic preference. (Answer 3 (emphasis omitted).)3 3 In the Final Action, the Examiner states that it would have been obvious to one of ordinary skill in the art at the time the invention was made “to have changed the shape of the space . . . of Snipes to be annular (e.g. by changing the peripheral shape of pocket 170 and/or the peripheral shape of channel 195), since it has been held that changing the shape of an object involves only routine skill in the art. (Final Action 4 (citing In re Dailey, 357 F.2d 669 (CCPA 1966)).) We do not agree that Dailey stands for such a broad proposition. In Dailey, the court determined that Appellants had “presented no argument which convinces [the court] that the particular configuration of their container is significant or is anything more than one of numerous configurations a person of ordinary skill in the art would find obvious” for the stated purpose. In re Dailey, 357 F.2d at 672-73. However, in view of the Examiner’s explanation in the Answer regarding the Examiner’s Appeal 2021-003194 Application 15/652,541 6 As [the Federal Circuit] has explained, “[o]ne way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of ‘unexpected results,’ i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed.Cir.1995). In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997). “[I]t is well settled that unexpected results must be established by factual evidence. ‘Mere argument or conclusory statements in the specification does not suffice.’” Id. at 1470 (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)). Appellant argues that “Snipes describes, in paragraph 24, a sheet that has a pouch with an opening that complements the shape of the sheet” and that “[c]laim 8 requires an annular space in a square bag such that the shapes are not complementary.” (Appeal Br. 9 (emphasis omitted).) Specifically, Appellant argues that the square shape of the bag and annular space provide[] a critical advantage. As noted in paragraph 3 of the specification, there is a need in the art for a bag on which yard debris, or other material or objects, can be collected by a user while working such that the collection and filling steps are combined, thereby saving the user time. As noted in paragraph 4 the shape of the surface on which the leaves are collected, the exposed nature of the rope and the location of the handle prevent the prior art arrangements from performing satisfactorily. As noted in paragraph 27, the present invention provides a bag that facilitates the filling thereof. More specifically. the present invention provides a bag on which yard debris, or other material or objects, can be collected by a user while working such that the collection and filling steps are combined, thereby saving the user time. In addition, while the square shape shown in Figure 5 provides for easy collection of application of Dailey to the facts in this case, as quoted above, we do not find this to be reversible error. Appeal 2021-003194 Application 15/652,541 7 leaves, the circular channel with a drawstring and the annular space allow for a tight closing of the bag as shown in Figure 7, which is not achieved with the square channel of the prior art. The circular shaped channel will close smoother and smaller than the square shaped one. (Id. at 10 (emphasis omitted).) The Examiner answers that paragraph 24 of Snipes teaches “that the opening 160 of Snipes ‘can be any shape’” (Answer 5 (emphasis omitted)) and “that there is no evidence or reason to believe that the square channel 195 of Snipes does not allow for a tight, smooth, and small closing of bag 100 like the claimed bag does” (id. at 6 (emphasis omitted)). The background section of Appellant’s application discloses that Appellant’s invention relates “to a bag that can be converted from a flat or unbundled state to a bundled state.” (Spec. ¶ 2.) Paragraph 3 of the Specification offers as an exemplary use a person raking leaves will generally rake the leaves into a pile and then stop to place them into a bag by the handful. This two- step process means that the overall duration of the task is increased. In other words, it would be beneficial if the person could rake the leaves directly into the bag. Accordingly, there is a need in the art for a bag that facilitates the filling thereof. More specifically, there is a need in the art for a bag on which yard debris, or other material or objects, can be collected by a user while working such that the collection and filling steps are combined, thereby saving the user time. (Id. ¶ 3.) Appellant does not persuasively argue how this description distinguishes Appellant’s invention from the debris carrier disclosed in Snipes. Appeal 2021-003194 Application 15/652,541 8 Paragraph 4 of the Specification cites U.S. Patent No. 7,976,5084 [sic] and asserts that “the shape of the surface on which the leaves are collected, the exposed nature of the rope and the location of the handle prevent this leaf collection apparatus from performing satisfactorily.” (Spec. ¶ 4.) Paragraph 4 does not indicate that the shape of the leaf collecting surface alone produces an unsatisfactory result or why the shape is asserted to contribute to producing an unsatisfactory result, e.g., is the asserted unsatisfactory result related to the ’508 patent’s disclosure of a flat, rather than a pocket shape, for the leaf collection surface? (See ’508 patent, col. 1, ll. 37-48.) We do not find persuasive Appellant’s argument relying on paragraph 4 of the Specification. (See Appeal Br. 10.) Paragraph 27 of the Specification discloses that “[t]he bag is an improvement over prior devices in that the drawstring openings are located in corners, the drawstring is enclosed in a channel and the area delineated by the channel encompasses substantially all of the bag other than the corners.” (Spec. ¶ 27.) Paragraph 27 further discloses that “[a]lthough described with reference to preferred embodiments, it should be readily understood that various changes or modifications could be made to the invention without departing from the spirit thereof. In general, the invention is only intended to be limited by the scope of the following claims.” (Id.) In this regard, we note that claim 1 as originally filed, makes no mention of “a flat annular 4 U.S. Patent No. 7,967,508 B2 (hereinafter “the ’508 patent”) relates to a leaf collection apparatus. U.S. Patent No. 7,976,508 B2 relates to “[a] medication safety system includ[ing] a panel mounted to an IV pole above a multi-channel infusion pump also mounted to the IV pole.” (U.S. Patent No. 7,976,508 B2, Abstract.) We treat the reference in the Specification (Spec. ¶ 4) to U.S. Patent No. 7,976,508 as a typographical error. Appeal 2021-003194 Application 15/652,541 9 shape between the channel and the outer periphery.” Originally filed dependent claim 7 refers to the channel as “shaped as a circle, a rounded square or a squircle.” (Spec. 8.) In view of the foregoing, we determine that the cited portions of the Specification do not provide persuasive evidence that the square shape of the bag and annular space located between the channel and outer periphery provide a critical advantage, as argued by Appellant. (See, e.g., Appeal. Br. 10.) Nor does Appellant direct us to any support in the record for the attorney argument that “the circular channel with a drawstring and the annular space allow for a tight closing of the bag as shown in Figure 7, which is not achieved with the square channel of the prior art. The circular shaped channel will close smoother and smaller than the square shaped one.” (See Appeal Br. 10.) Additionally, we note that Snipes discloses: The sheet 110 is a broad flat structure that may be formed of any size and any desired material. . . . The sheet 110 may be of any desired size and is generally rectangular or square in shape for ease of manufacture. The sheet 110 further includes a centrally located opening 160. The opening 160 can be any shape but is generally rectangular or square to complement the shape of the sheet 110. (Snipes ¶ 24.) In other words, paragraph 24 of Snipes teaches: 1) that the shape of the sheet is generally rectangular or square; 2) that the opening can be any shape; and 3) that the shape of the opening and the shape of the sheet may be, but need not be, the same. In view of the above, we determine that Appellant has not shown any unexpected results or persuasively argued why it would not have been a predictable variation that a person of ordinary skill in the art can implement Appeal 2021-003194 Application 15/652,541 10 to provide a flat annular space between the channel/drawstring casing and the outer periphery. (See, e.g., Final Action 3, Answer 3; see also KSR, 550 U.S. at 417.) We are not persuaded that the Examiner erred in determining that “Appellant has not disclosed any criticality for the claimed annular shape in any part of the instant application” (see Answer 3 (emphasis omitted)) or that “[i]t would have been obvious to one having ordinary skill in the art at the time the [application] was filed to have changed the shape of the space . . . of Snipes to be annular” (Final Action 4). We will affirm the rejection of claim 8. Appellant states that claims 9-11 and 14 will stand or fall with claim 8. (See Appeal Br. 11.) Therefore, we will also affirm the rejection of claims 9-11 and 14. Claim 12 Claim 12 recites “[t]he bag of claim 8, further comprising a plurality of holes, wherein each of the plurality of holes is sized to receive a stake for holding the bag in place.” The Examiner finds: Snipes discloses a plurality of holes (the holes in 280 shown in Figures 1-3), wherein each of the plurality of holes (the holes in 280) is sized to receive a stake for holding the bag (100) in place (it is apparent from Figures 1-3 that the holes in 280 are each capable of receiving a stake for holding the bag in place). (Final Action 5.) Appellant argues that paragraph 31 of Snipes “describes how handles 280 are pulled down toward each other to gather the debris in the center of carrier 100. There is no discussion of holes in carrier 100 sized to receive a stake.” (Appeal Br. 11.) More specifically, Appellant argues that claim 12 Appeal 2021-003194 Application 15/652,541 11 “require[s] that the bag not the handle comprise[s] the holes and each of the plurality of holes is sized to receive a stake for holding the bag in place and the handles 280 are not so sized.” (Reply Br. 5.) Snipes refers to the entirety of the debris carrier shown in Figure 1 as carrier 100. (See, e.g., Snipes ¶ 23.) Snipes describes carrier 100 as having four sides/edges (120, 130, 140, and 150) (id. ¶¶ 28, 29), and that each side/edge “further includes a grab strap or handle 280. Handle 280 is essentially a thickened piece of woven fiber in the shape of a loop. . . . The handle 280 can be attached by any means such as stitching, gluing or stapling.” (Id. ¶ 29.) Appellant does not persuasively argue why, under a broadest reasonable interpretation,5 the term “bag” in claim 8 does not include an attached handle. Therefore, we agree with the Examiner that Snipes discloses that the handles are part of the carrier, i.e., part of the bag, and that each loop/handle includes a hole. (See Final Action 5.) Neither claim 8 nor claim 12 recites a size for the claimed bag or a size for a stake for holding the bag in place. Therefore, we do not find persuasive Appellant’s argument that the holes in the handles of Snipes’ bag/carrier are not sized to receive a stake. We will affirm the rejection of claim 12. 5 “During examination, ‘claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). Appeal 2021-003194 Application 15/652,541 12 Claims 18, 19, and 22 Appellant argues that independent “claim 18 is different from claim 8 in that claim 18 recites another portion of the bag that extends in a flat annular shape radially outward from the outer periphery to the channel.” (Appeal Br. 12.) For the reasons discussed above regarding the limitation “a flat annular space between the channel and the outer periphery,” we do not find Appellant’s argument persuasive. (See supra; see also Final Action 6, Answer 3.) We will affirm the rejection of claim 18. Appellant states that claims 19 and 22 will stand or fall with claim 18. (See Appeal Br. 18.) Therefore, we will also affirm the rejection of claims 19 and 22. Claims 23-26 Claim 23 depends indirectly from claim 18 and, like claim 12, recites “a plurality of holes, wherein each of the plurality of holes is sized to receive a stake for holding the bag in place.” Appellant presents arguments similar to those presented for claim 12. For the reasons discussed above with regard to claim 12, we are not persuaded of error. Therefore, we will affirm the rejection of claim 23. Claims 24-26 are not separately argued and fall with claim 23. See 37 C.F.R. § 41.37(c)(1)(iv). Summary We will affirm the Examiner’s rejection of claims 8-12, 14, 18, 19, and 22-26. Appeal 2021-003194 Application 15/652,541 13 Appellant’s other arguments have been considered but are not persuasive. CONCLUSION The Examiner’s rejection of claims 8-12, 14, 18, 19, and 22-26 under 35 U.S.C. § 103 is affirmed. Specifically: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8-12, 14, 18, 19, 22-26 103 Snipes 8-12, 14, 18, 19, 22-26 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED