Ex Parte Giampavolo et al

Board of Patent Appeals and Interferences

Jun 4, 2012

10676412 (B.P.A.I. Jun. 4, 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.
10/676,412 09/30/2003 Paul Giampavolo P3758-17 8071
7590 06/05/2012
OSTROLENK, FABER, GERB & SOFFEN, LLP
1180 Avenue of the Americas
New York, NY 10036-8403
EXAMINER
CHEN, JOSE V
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
06/05/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL GIAMPAVOLO and ROBERT SHELTON
____________

Appeal 2009-013981
Application 10/676,412
Technology Center 3600
____________

Before JOHN C. KERINS, GAY ANN SPAHN and
EDWARD A. BROWN, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/676,412

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STATEMENT OF THE CASE
Paul Giampavolo and Robert Shelton (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1-4, 6, 7,
9-12, 17, 19, 21, 23 and 25-32. Claim 24 has been canceled; claims 5, 8, 18,
20, 22 and 33-35 have been withdrawn; claim 14 has been allowed, and
claims 13, 15 and 16 are objected to. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

THE INVENTION
Appellants’ invention is directed to a pallet guard. Independent claim
1 is illustrative:
1. A guard for protecting the sides of a pallet on which
goods can be stacked or a merchandise grouping placed on a
support surface, the guard comprising:

a plurality of modular guard sections, each section being
couplable to an adjacent section to surround at least a portion of
the perimeter of a pallet or merchandise grouping, each modular
guard section having top and bottom portions disposed between
front and back portions, the bottom portion being wider than the
top portion making each modular guard section substantially
wedge or triangular shape in cross section to increase the
stability of the guard section; and the guard sections each
having a complementary portion of a joint for coupling the
sections together.

THE REJECTIONS
The Examiner has rejected claims 1-4, 6, 7, 9-12, 17, 19, 21, 23 and
25-32 under 35 U.S.C. § 103(a) as being obvious over Giampavolo (CA 2
375 246 A1, pub. Dec. 7, 2000) in view of Heuss (US 5,913,501, iss. Jun.
22, 1999).
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ISSUE
Did the Examiner err in concluding that the subject matter of claims 1,
21 and 25 would have been obvious over Giampavolo in view of Heuss?

ANALYSIS
Appellants argue claims 1-4, 6, 7, 9-12, 17, 19, 23 and 26-32 as a
group. We will take claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claims 21 and 25 are separately argued in the
Reply Brief. Reply Br. 2.
The bulk of Appellants’ arguments presented in the Appeal Brief are
directed to the Heuss patent, and attack the Heuss patent individually as not
teaching or suggesting various elements of the claims. Appeal Br. 9-10.
These arguments do not apprise us of any error in the Examiner’s position.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (nonobviousness cannot be established
by attacking references individually where rejections are based on
combinations of references).
A further attack on the Heuss disclosure appears in the Reply Brief.
There, Appellants argue that the Heuss stacker sections are not wedge
shaped or triangular shaped, because they have a complex shape that
includes the flat floor bearing extensions 25, 26. Reply Br. 1. Appellants
recognize, however, that the Heuss sections have cap walls 29, 30, that are
unitary with downwardly angulated stiffener wall members 31, 32. Id.; see
Heuss, Figs. 3-5, 7 and col. 2, ll. 51-55. The cross-sectional shape of the
Heuss cap wall and stiffener walls is very similar to the cross-section of the
same portions of Appellants’ guard sections, and Appellants’ arguments do
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not persuade us of error in the Examiner’s position that Heuss discloses
elements having wedge shapes.
Appellants further argue that it would not have been obvious to
combine the teachings of Heuss with Giampavolo, because Heuss is directed
to a stacker base, whereas Giampavolo is directed to a pallet guard. Appeal
Br. 10-11. This argument is in the vein of asserting that the devices
disclosed in the respective references are non-analogous art. Appellants
have not, however, persuasively shown that Heuss is outside the field of
Appellants’ endeavor, or that Heuss is not reasonably pertinent to the
problem with which the inventor was concerned. In re Oetiker, 977 F.2d
1443, 1447 (Fed. Cir. 1992). As to the former, the Heuss device is disclosed
as being provided to form an enclosure for the lower levels of a stack of
articles, as is Appellants’ invention. (Heuss, Abstr.). As to the latter,
Appellants were concerned with increasing the stability of the pallet guard,
Similarly, the “downwardly angulated stiffener wall members 31 and 32” of
Heuss “impart greater stability to the base.” Heuss, col. 2, ll. 51-55.
Appellants also assert that the Examiner has not set forth any
motivation for combining teachings from a stacker base with those of a
pallet guard. Appeal Br. 10-11. The Examiner states that “the patent to
Heuss et al[.] teaches the use of providing a wedge shaped member to
provide better strength and stability,” and that it would have been obvious to
modify the members of Giampavolo to have a wedge shaped base, to
predictably provide increased strength and stability. Ans. 4-5. Appellants
have not apprised us of error in the Examiner’s position.
Appellants additionally maintain that even if the teachings are
properly combinable, the combination would result in a device that could not
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be used as a pallet guard, in that the flat floor bearing extensions in Heuss
would require that a pallet be lifted in order to be placed atop those
extensions. Appeal Br. 11; Reply Br. 1-2. The Examiner makes clear that
the proposed modification is not to bodily incorporate all features of the
Heuss device into the Giampavolo device, but rather to simply form the
Giampavolo guard sections with a wedge shaped cross-section. The
Examiner’s proposed modification does not contemplate also including the
Heuss flat floor bearing extension portions 25, 26 in the modified
Giampavolo structure. Thus, Appellants arguments in this respect are
unavailing.
Appellants urge that Giampavolo does not teach or suggest the claim
limitation calling for “‘each section being couplable to an adjacent section.’”
Appeal Br. 11. Appellants note that an example of this claim limitation is
shown in “Fig[ure] 11 where sections 120 and 122 are coupled together.”
Appeal Br. 10. Appellants assert that sections 42 in Figure 3 of Giampavolo
can only be connected by using intervening sections 44, 46 and 48. Appeal
Br. 11. First, the claim limitation does not require that each section be
directly coupled to each other section. Second, the claimed “modular guard
section[s]” is sufficiently broad so as to encompass, in the cited Figure 3
embodiment of Giampavolo, a “section” that includes element 42 as well as
one or more connecting members 44, 46 and/or 48. This is evidenced in
Appellants’ citation to their Figure 11 as corresponding to that limitation.
Appellants describe this construction as including “a connector 120 [is]
fitted to a section 90 to mate with a complementary connector 122.” Spec.,
p. 11, para. [0069]. Appellants have not apprised us of error in the
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Examiner’s position with respect to Giampavolo as meeting this claim
limitation.
For the foregoing reasons, the Examiner’s rejection of claims 1-4, 6,
7, 9-12, 17, 19, 23 and 26-32 as being unpatentable over Giampavolo in
view of Heuss is sustained.
In the Reply Brief, Appellants appear to argue for the separate
patentability of claims 21 and 25, and in particular with respect to limitations
directed to structure for receiving signage. Reply Br. 2. Much of the
argument is devoted to limitations found in claim 14, which had been
deemed allowable by the Examiner, and not the broader recitations in claims
21 and 25. Thus, to the extent that those arguments are not directed to what
is actually set forth in claims 21 and 25, the arguments are not
commensurate in scope with the claims, and are not persuasive of
patentability.
Appellants maintain that the combination of Giampavolo and Heuss
does not teach or suggest a pallet guard wherein at least one of the guard
sections has an outwardly facing surface having an area for the receipt of a
removable signage member, as set forth in claims 21 and 25. Reply Br. 2.
The claim limitation requires nothing more structurally than an outwardly
facing surface onto which removable signage can be received. Giampavolo
describes, with respect to the structure in Figure 1 thereof, that “advertising
space 28 for messaging, such as sale information, on, for example, one of
wall portions 22” may be provided. Appellants have not demonstrated how
this disclosure fails to meet the limitation argued in connection with claims
21 and 25. The rejection of these claims as unpatentable over Giampavolo
and Heuss is sustained.
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CONCLUSION
The Examiner did not err in concluding that the subject matter of
claims 1, 21 and 25 would have been obvious over Giampavolo in view of
Heuss.

DECISION
The rejection of claims 1-4, 6, 7, 9-12, 17, 19, 21, 23 and 25-32 as
being unpatentable over Giampavolo in view of Heuss is affirmed.
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).

AFFIRMED

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