Ex Parte 6283044 et alDownload PDFPatent Trial and Appeal BoardApr 30, 201590006283 (P.T.A.B. Apr. 30, 2015) Copy Citation 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. 90/006,283 05/09/2002 6283044 432 P 172 4751 26096 7590 05/01/2015 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER ENGLISH, PETER C ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 05/01/2015 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 REHRIG PACIFIC COMPANY Appellant and Patent Owner ____________ Appeal 2014-004548 Reexamination Control 90/006,283 Patent 6,283,044 Technology Center 3900 ____________ Before RICHARD M. LEBOVITZ, DANIEL S. SONG, and KEN B. BARRETT, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON REHEARING This is a Request for Rehearing (“Req. Reh’g”) by Patent Owner under § 41.52 of the Decision of the Patent Trial and Appeal Board (“the Board”) dated June 27, 2014 (“Dec. App.”) which affirmed the Examiner’s rejections of claims 25–35, 41–46, 53–56, 58–62, and 64–86 as obvious under 35 U.S.C. § 103(a) over cited prior art publications. Dec. App. 13. The Request for Rehearing is denied. We address Patent Owner’s arguments below. Appeal 2014-004548 Reexamination Control 90/006,283 Patent 6,283,044 2 Claim 25 Independent claim 25 is directed to top frame assembly adapted for use with a pallet, where the top frame assembly and the pallet have at least one layer of objects positioned between them. The top frame comprises first and second top frame members, each member having ribs and cross-ribs. The claim recites that “the first and second top frame members fastened together such that the top frame assembly does not include columns creating forklift openings.” The absence of forklift opening is the issue in the rejection. The Board affirmed the rejection of claim 25 based on teachings in each of Konig, Nishitani, and Weichenrieder of a “top frame” comprising the claimed “cross-ribs” and “rib members” and in Flum of a bottom pallet that can serve as a top pallet. Dec. App. 4–5, 10. Although forklift openings are described in the bottom pallets of Konig, Nishitani, and Weichenrieder, the Examiner reasoned it would have been obvious to have eliminated the forklift openings because “modification would reduce the size and weight of the pallet, thereby making it easier to lift and manipulate the pallet when it is used as a ‘top frame’.” Answer 4 (quoted in Dec. App. 6–7); see also Dec. App. 9. The Board adopted the Examiner’s reasoning, and affirmed the rejection. Patent Owner contends that Board erred because eliminating the forklift openings from Konig, Nishitani, and Weichenrieder would render them unsatisfactory for their intended purpose as bottom pallets. Req. Reh’g 3. To support this argument, Patent Owner cites In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), which Patent Owner contends holds that a Appeal 2014-004548 Reexamination Control 90/006,283 Patent 6,283,044 3 modification which would make a reference “inoperable for its intended purpose” does not establish obviousness of the claimed invention. Req. Reh’g 3-4. Gordon was an appeal to the Federal Circuit of a Board decision involving a claim to a blood filter with an inlet and outlet on the bottom. Gordon, 733 F.2d at 901. The Board had affirmed the Examiner’s rejection of the claim over a single prior art publication, French, which taught a gasoline filter with the inlet and outlet on the top. Id. at 902. The Board had concluded that “it would have been obvious to turn the French device upside down to have both the inlet and outlet at the bottom, rather than at the top.” Id. The Federal Circuit reversed the Board, stating: French teaches a liquid strainer which relies, at least in part, upon the assistance of gravity to separate undesired dirt and water from gasoline and other light oils. Therefore, it is not seen that French would have provided any motivation to one of ordinary skill in the art to employ the French apparatus in an upside down orientation. Id. This case is distinguishable from Gordon. Unlike Gordon, two publications are cited in the rejection in this appeal. In Gordon, the Federal Circuit found the motivation to modify the single publication, French, lacking. However, in this case, the second publication, Flum, provides the reason to have modified the pallet of Konig, Nishitani, and Weichenrieder. Dec. App. 7–9. Specifically, the Examiner found that Flum teaches that a pallet can be used as a top frame. Id. at 9. Patent Owner did not identify a defect in this finding. The Examiner further found a reason to have eliminated the forklift openings in a pallet when used as a top frame as Appeal 2014-004548 Reexamination Control 90/006,283 Patent 6,283,044 4 taught by Flum. Id. at 8–9. Again, Patent Owner did not identify a flaw in the Examiner’s reason, but rather simply said the skilled worker would not have made the modification because it would make the pallet inoperable as a pallet, i.e., forklift opening were necessary for the function of a pallet. What the Patent Owner ignored was the Examiner’s finding that pallets were used as top frames, and, when put to such use, it would have been obvious to have eliminated the unnecessary forklift openings while retaining the ribs and cross-ribs for strength. In contrast to Gordon where the modified gasoline filter would be inoperable for its intended purpose, Flum teaches that a pallet could also be used as a top frame; thus, the purpose of the pallet of Konig, Nishitani, and Weichenrieder would not be destroyed by elimination of the forklift openings because, as established by Flum, pallets are useful as top frames. Cross-ribs The Decision also stated that ribs and cross-ribs are found in the top frame of Pigott ’029. Dec. App. 9. It was stated: The use of ribs and cross-members in a top frame is also disclosed in Pigott ’029, which is discussed in more detail below. See Fig. 2 of Pigott ’029 referenced by the Examiner. Answer 4-5. Because ribs are disclosed in both top frames and pallets (Answer 5: 10-12), the Examiner reasonably found it obvious to have used the ribbed pallets of Konig, Weichenrieder, and Nishitani as top frames. Id. See also id. at 12 stating Pigott’s “cross members 15 and 16 have longitudinal and traverse ribs (col. 4, ll. 23–30), together which correspond to the claimed ribs and the ribs described in each of Konig, Weichenrieder, and Nishitani for pallets.” Thus, Pigott’s teaching about ribs and cross-ribs Appeal 2014-004548 Reexamination Control 90/006,283 Patent 6,283,044 5 in a top frame provided further evidence of the obviousness of incorporating this feature into a pallet when used as a top frame as taught by Flum. Patent Owner contends this is a “red herring” which “is not relevant to the question of whether it would have been obvious to destroy the primary, intended functionality of pallets.” Req. Reh’g 4. We do not agree. Pigott ’029 provides further evidence of a reason to have ribs and cross-ribs in a top pallet, independent of the teachings in Konig, Weichenrieder, and Nishitani. Claims 26 and 35 Claims 26 and 35 requires at least one large opening through the top frame member that is “a majority of the first top member by area.” Patent Owner argues that modifying a bottom pallet with large openings would make it less capable, if not incapable of supporting goods stacked on it. Req. Reh’g 5. We already addressed this argument in the Decision on Appeal, and Patent Owner did not identify a defect in our reasoning. Pigott ’029 teaches that the top frames 10 can be stacked (“[p]referably the pad extends below the supporting rib 54 so that when the frame 10 is placed on top of either another frame 10 (as in FIG. 6) or the rows of goods G, the pad, and not the frame 10, contacts the other frame or goods.”). Pigott ’029, col. 5, ll. 4-8. Thus, Patent Owner’s argument that goods could not be stacked on a top frame with large openings is contradicted by the explicit teaching in Pigott ’029 of a stackable top frame 10 with four large openings. Dec. App. 11. DENIED Appeal 2014-004548 Reexamination Control 90/006,283 Patent 6,283,044 6 ack Patent Owner CARLSON, GASKEY & OLDS, P.C. 400 West Maple Road Suite 350 Birmingham, MI 48009 Third Party Requester RICHARD C. HIMELHOCH UNGARETTI & HARRIS LLP 70 W. Madison Street, Suite 3500 Chicago, Il 60602 Copy with citationCopy as parenthetical citation