Ex Parte Gibson

Patent Trial and Appeal Board

Aug 15, 2013

10553290 (P.T.A.B. Aug. 15, 2013)

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.
10/553,290 11/17/2005 Rodney Mark Gibson P1450 USA 8635
7590 08/16/2013
O M (Sam) Zaghmout
Bio Intellectual Property Service (Bio Ips)
8509 Kernon Ct
Lorton, VA 22079
EXAMINER
LAUX, JESSICA L
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
08/16/2013 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 RODNEY MARK GIBSON
____________________

Appeal 2011-008796
Application 10/553,290
Technology Center 3600
____________________

Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-008796
Application 10/553,290

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13 and 16.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal and is reproduced
below:
1. A building construction having a main portion, a roof
portion, and a floor portion, the roof portion and the floor
portion each being attached to the main portion by way of a
respective pivot connection or connections, the building
construction being formed such that the main portion, the roof
portion and the floor portion can be arranged with respect to
one another such that the building construction is substantially
in the shape of a box-like freight container in which the roof
portion and/or the floor portion provide(s) structural integrity,
the structural integrity being such that the building construction
can be picked up by a crane, and/or arranged in a freight vehicle
with a normally loaded freight container on top of it, in either
case without causing structural damage to the building
construction, and wherein the building construction can be,
after being freighted to a desired site, assembled by swinging
the roof portion out from the main portion, and by swinging the
floor portion out from the main portion, not necessarily in that
order, but in each case by way of the pivot connections, such
that the roof and floor portions become at least part of the roof
and floor of the building construction respectively when the
building construction is installed on site.

1 Claims 14, 17, and 18 are not before us on appeal, as the Examiner has not
rejected these claims. Br. 7; Ans. 2. Claim 15 has been cancelled.
Amendment, Jan. 14, 2009.
Appeal 2011-008796
Application 10/553,290

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REJECTIONS
Appellant seeks review of the following rejections:
(1) the rejection of claims 1, 2, 5-8, 11-13, and 16 under 35 U.S.C.
§ 102(b) as anticipated by Ciotti (US 2003/0051417 A1, pub. Mar. 20, 2003)
(Ans. 3-6);
(2) the rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Ciotti and Abler (US 2006/0185262 A1, pub. Aug. 24, 2006) (Ans. 6-
7);
(3) the rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Ciotti and Morris (US 5,966,956, iss. Oct. 19, 1999) (Ans. 7-8); and
(4) the rejection of claims 9, 10, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Ciotti and Kalinowski (WO 98/02626, pub. Jan 22, 1998)
(Ans. 8-9).
ANALYSIS
Rejection (1)
Claim 1 is directed to a building construction having a main portion
and a roof portion and a floor portion each pivotally attached to the main
portion, in which the roof portion and/or the floor portion provides structural
integrity. Br. 25, Claims App’x. Claim 1 further defines the building
construction functionally by reciting:
the structural integrity being such that the building construction
can be picked up by a crane, and/or arranged in a freight vehicle
with a normally loaded freight container on top of it, in either
case without causing structural damage to the building
construction.
Id.
The Examiner found that Ciotti discloses a main portion (enclosure
10, including base and end portions 16, 14) and a roof portion (roof
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expander 25) and a floor portion (base expander 24) each pivotally attached
to the main portion. Ans. 3 (citing Ciotti, figs. 1b-d; paras. [0024]-[0025]).
The Examiner also found that Ciotti’s structure is “equivalent to
[Appellant’s] and capable of being used in the same manner with the same
structural integrity.” Id. at 10. Moreover, the Examiner reasoned that “[i]t
would be immediately recognizable to a person of ordinary skill in the art
that the device be capable of withstanding transportation without damage as
Ciotti clearly discloses the device to be a cargo shipping container
transported via a cargo ship.” Id.; see also id. at 4 (citing Ciotti, para.
[0006]). The Examiner also found that “Ciotti discloses that the
construction could be a multi-level construction with one container stacked
upon another container.” Id. at 11 (citing Ciotti, para. [0030]). The
Examiner further reasoned that “[p]resumably one container would have to
somehow be transported and lifted to achieve a stacked configuration.” Id.
Because the portions of Ciotti relied upon by the Examiner establish a
sound basis that Ciotti’s structure possesses structural integrity such that the
building construction is capable of being picked up by a crane, and/or
arranged in a freight vehicle with a normally loaded freight container on top
of it, in either case without causing structural damage to the building
construction (see Ans. 10-11), the burden shifted to Appellant to
demonstrate that Ciotti’s structure is not capable of performing such
function. See In re Swinehart, 439 F.2d 210, 213 (CCPA 1971):
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
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See also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citations omitted)
(“when the PTO shows sound basis for believing the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”).
While we agree with Appellant that “‘[t]here is nothing intrinsically
wrong with defining something by what it does rather than what it is in
drafting patent claims’” (Br. 16 (citing Swinehart, 439 F.2d at 212)), we note
that “choosing to define an element functionally, i.e., by what it does, carries
with it a risk” (In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)). This
risk is that Appellant bears the burden to prove that the prior art does not
possess the functional characteristic, once the Examiner has shown a
reasonable basis for believing the claimed structure to be the same as the
prior art structure.
Appellant argues that Ciotti lacks sufficient factual information to
“reasonably infer anything about its particular structural or bracing . . .
features.” Br. 17-18. However, Appellant’s argument does not identify a
characteristic of Ciotti’s structure that makes it incapable of the claimed
function. Consequently, Appellant has failed to carry the burden of proving
that Ciotti’s structure is not capable of the claimed function.
We have also considered Appellant’s argument that granted claims in
Australia and New Zealand are “persuasive in favor of the present US case.”
Id. at 24. However, determinations made in other countries are not binding
in the United States. Appellant is applying for a patent in the United States,
and as such, the application is subject to the statutes and regulations in the
United States, which may differ from those in other countries. Moreover,
the issues raised by the Examiner in the United States may not be the same
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as those that may have been raised by Examiners in other countries. We find
Appellant’s argument to be entitled to little to no weight and unpersuasive.
For the foregoing reasons, Appellant does not show error by the
Examiner in finding that Ciotti discloses all of the limitations of independent
claim 1, and we sustain the rejection of claim 1 under 35 U.S.C. § 102(b) as
anticipated by Ciotti. Appellant does not provide separate arguments for
dependent claims 2, 5-8, 11-13, and 16. Br. 20. Therefore, we also sustain
the rejection of dependent claims 2, 5-8, 11-13, and 16 under 35
U.S.C. §102(b) as anticipated by Ciotti.

Rejection (2)
Claim 3 depends from claim 1, adding the limitation that the building
construction “has locking means for the floor and wall portions such that
they can each be locked in a substantially vertical orientation when the
building construction is in a disassembled state for freighting.” Br. 26,
Claims App’x. The Examiner concluded that it would have been obvious to
modify Ciotti’s building construction by adding the locking means as taught
by Abler in order “to provide a secure container for shipping.” Ans. 7
Appellant argues that “the prior art does not readily suggest why one
would modify the construct of Ciotti with the locking mechanism of Abler
when Ciotti does not suggest the need for such locking of the various
components.” Br. 22. Appellant further argues that Ciotti’s building
construction may already have a “basis for keeping the various elements of
the construct in place while disassembled.” Id. at 21.
The Supreme Court rejected such a rigid requirement for a teaching,
suggestion, or motivation to be found within the references, let alone only
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the primary reference. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). The Examiner provided a rationale for the proposed modification,
namely, “to provide a secure container for shipping.” Ans. 7. This rationale
is reasonable given that Abler teaches secure fastening of side walls of a
building structure similar to Ciotti’s building structure. See Ans. 7 (citing
Abler, para. [0016]). Accordingly, Appellant’s argument is unpersuasive
because it applies the incorrect legal standard and fails to address the
reasonable rationale provided by the Examiner.
For the foregoing reasons, Appellant does not show error by the
Examiner in determining that the subject matter of claim 3 would have been
obvious, and we sustain the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Ciotti and Abler.

Rejection (3)
Appellant’s arguments in support of the patentability of claim 4 solely
relate to the perceived deficiencies in Ciotti. Br. 22-23. Since we have
found no such deficiencies, we also sustain the rejection of claim4 under 35
U.S.C. § 103(a) as unpatentable over Ciotti and Morris.

Rejection (4)
Appellant argues claims 9, 10, and 12 as a group. Br. 23-24. We
select claim 9 as the representative claim, and claims 10 and 12 fall with
claim 9. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Claim 9 depends from
claim 1, adding the limitation of “a removable corner protector arranged
over at least part of an external edge of the disassembled construction.” Br.
27, Claims App’x. The Examiner concluded that it would have been
obvious to modify Ciotti’s building construction by adding the corner
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protectors as taught by Kalinowski in order “to aid in safely and efficiently
transporting the construction.” Ans. 8-9 (citing Kalinowski, fig. 16); see
also Kalinowski 10, ll. 2-5.
Appellant argues that “there is nothing that would suggest the need in
the construct of Ciotti for such corner protectors as urged by the Examiner.”
Br. 23. The Examiner provided a rationale for the proposed modification,
namely, “to aid in safely and efficiently transporting the construction.” Ans.
8. This rationale is reasonable given that Kalinowski teaches the use of
corner fitting connectors 26 “to provide protection and to permit handling of
building 20 in the same manner as a standard I.S.O. or ‘high cube’ shipping
container.” Kalinowski 10, ll. 3-5. Accordingly, Appellant’s argument is
unpersuasive because it fails to address the reasonable rationale provided by
the Examiner.
For the foregoing reasons, Appellant does not show error by the
Examiner in determining that the subject matter of claim 9 would have been
obvious, and we sustain the rejection of claim 9, and claims 10 and 12 which
fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Ciotti and
Kalinowski.
DECISION
The Examiner’s rejection of claims 1, 2, 5-8, 11-13, and 16 under 35
U.S.C. § 102(b) is AFFIRMED.
The Examiner’s rejections of claims 3, 4, 9, 10, and 12 under 35
U.S.C. § 103(a) are AFFIRMED.

AFFIRMED

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