Ex Parte Hurst et al

Board of Patent Appeals and Interferences

Feb 27, 2009

10269019 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM S. HURST, SIDNEY T. SMITH, PIERRE CALOZ,
SINDHU RAMACHANDRAN, MICHELE M. ULM, and
JESSE F. RODRIGUEZ
____________

Appeal 2008-2869
Application 10/269,019
Technology Center 3600
____________

Decided:1 February 27, 2009
____________

Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and MICHAEL W.
O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-2869
Application 10/269,019

STATEMENT OF THE CASE
William S. Hurst et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 2, 7-9, 23, 25, 28-30, 34, and
35, which are the only pending claims. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellants’ claimed invention is directed to large volume, three-
dimensional containers, and support containers and hanger systems for
supporting such containers. Specification 1:5-6; Specification 5:20-21 and
28-29.
Claim 23, reproduced below, is illustrative of the claimed subject
matter.
23. A hanger system for supporting a large-
volume, flexible container, the hanger system
comprising:
a support container adapted to support at
least two sides of the flexible container;
a support member attached to and disposed
above the support container;
a hanger supported by the support member
outside and above the flexible container, the
hanger providing a substantially horizontal
suspended surface; and
a plurality of depending members extending
from the hanger in a spaced-apart manner along a
perimeter of the suspended surface, each of the
plurality of depending members having a first end
integral to the hanger and a second end adapted to
be connected to the flexible container, the second
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ends of the plurality of depending members being
movable toward and away from each other as the
flexible container is emptied and filled.

The Rejections
Appellants seek review of the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 2, 7-9, 23, 25, 29, 30, 34, and 35 as being unpatentable
over Wilhelm (US 5,944,455, issued Aug. 31, 1999) and Wilcox (US
5,765,723, issued Jun. 16, 1998) and claim 28 as unpatentable over Wilhelm,
Wilcox, and Cunningham (US 2,858,051, issued Oct. 28, 1958).

SUMMARY OF DECISION
We AFFIRM.
ISSUES
In rejecting claims 2, 7-9, 23, 25, 29, 30, 34, and 35 as being
unpatentable over Wilhelm and Wilcox, the Examiner found that Wilhelm
satisfies all limitations of the claims with the exception of the support
container and the support member being attached. Answer 4. The Examiner
determined that it would have been obvious to one having ordinary skill in
the art at the time of the invention to modify the emptying station of
Wilhelm by attaching the support member to the support container to save
material. Id.
Appellants have not presented any separate arguments for
patentability of the dependent claims apart from independent claim 23.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), dependent claims
2, 7-9, 25, 29, 30, 34, and 35 stand or fall with independent claim 23.
Appellants have argued that it would not have been obvious to combine the
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teachings of Wilhelm and Wilcox as proposed by the Examiner because: (a)
such a modification would change the principle of operation of Wilhelm,
rendering Wilhelm unsatisfactory for its intended purpose (Appeal Br. 10-
11; Reply Br. 2-3) and (b) modification of the support container by attaching
the support member thereto would be superfluous and not necessary in
utilizing the big-bag embodiment of Wilhelm, wherein a support container is
not needed (Appeal Br. 11-12).
In rejecting claim 28 as being unpatentable over Wilhelm, Wilcox,
and Cunningham, the Examiner found that Wilhelm lacks the depending
members (clamping elements 5) comprising flexible cables. Answer 4.
According to the Examiner, it would have been obvious to one of ordinary
skill in the art to modify Wilhelm’s clamping elements 5 so as to comprise
flexible cables as taught by Cunningham, because such modification would
involve a mere substitution of one well-known depending member for
another known in the art. Answer 4-5.
Appellants have argued that Cunningham teaches away from a hanger
supported outside and above the flexible container, as called for in claim 23,
from which claim 28 depends, because Cunningham’s connector block is
located entirely within Cunningham’s collapsible container. Appeal Br. 12;
Reply Br. 4.
Accordingly, the issues presented in this appeal are:
(1) Have Appellants demonstrated the Examiner erred in determining it
would have been obvious to modify the emptying station of Wilhelm
by attaching the support member to the support container to save
material? This issue turns on whether the modification actually
proposed by the Examiner would change the principle of operation of
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Wilhelm, rendering Wilhelm unsatisfactory for its intended purpose or
would be superfluous in view of the alternative embodiment for use
with a big-bag disclosed by Wilhelm.
(2) Have Appellants demonstrated the Examiner erred in determining it
would have been obvious to one of ordinary skill in the art to modify
Wilhelm’s clamping elements 5 so as to comprise flexible cables as
taught by Cunningham, because such modification would involve a
mere substitution of one well-known depending member for another
known in the art?

FACTS PERTINENT TO THE ISSUES
FF1 Appellants have not disputed that Wilhelm discloses all elements of
claim 23, with the exception of the support member being attached to
the support container.
FF2 The Examiner found that Wilhelm’s framework 10, holding frame 1,
and clamping elements 5 are a support member, hanger, and
depending members, as called for in claim 23, with the exception that
framework 10 is not attached to the support container. Answer 3-4.
FF3 Wilhelm’s clamping elements 5 do not comprise flexible cables, as
called for in claim 28.
FF4 Wilhelm’s casing 17 of octabin 7 is a support container, as called for
in claim 23. Wilhelm, col. 4, l. 61, fig. 3.
FF5 The structure disclosed by Wilhelm for use with a so-called big-bag
6’, which does not have any rigid outer casing, is a different
embodiment from the one disclosed for use with the octabin 7 and
illustrated in figs 1-4, which was relied upon by the Examiner in
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making the rejection. See Wilhelm, col. 5, l. 44 to col. 6, l. 5; figs. 5
and 6.
FF6 As illustrated in fig. 4, Wilhelm’s discharge device comprises an
aspiration device 15 for removing granular material from the foil sack
6 from above (Wilhelm, col. 4, ll. 48-55) and a power cylinder 12 and
piston rod 11, which raise the lifting tackle (holding frame 1 and
clamping elements 5) to such an extent that the foil sack 6 is lifted to
be just clear of the floor 19 of outer casing 17 of the octabin 7 in the
discharged state (Wilhelm, col. 4, ll. 35-38, col. 5, ll. 25-32).
FF7 Wilcox discloses a bag evacuator which evacuates material, such as
viscous liquid, from a bag drain 16 near the bottom of the bag 15
disposed in a container 10 by gripping and lifting an evacuated
portion of the bag across the top of the container to funnel the material
toward the drain. Wilcox, col. 1, ll. 35-45, col. 2, ll. 31 and 37-38.
FF8 In a preferred embodiment of the invention, Wilcox uses a windlass to
grip and pull the gripped region of the bag. Wilcox, col. 3, ll. 15-17
and 66-67. Wilcox teaches, however, that other means, such as
cranes, hoists, and arrangements of pulleys and ropes may also be
used. Wilcox, col. 3, l. 67 to col. 4, l. 1. Wilcox further teaches that a
ratchet winch may be substituted for the windlass. Wilcox, col. 4, ll.
1-3.
FF9 Wilcox teaches mounting the windlass, i.e., the apparatus for gripping
and lifting the bag, on an upper region of the walls 11 of container 10,
rather than having a separate support for the gripping and lifting
apparatus. Wilcox, col. 3, ll. 17-19.
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FF10 Cunningham teaches, in an apparatus for emptying collapsible
containers, providing cables 20 depending from a suspended ring 21
for supporting the arms 17 used to support and lift the collapsible
container C. Cunningham, col. 3, ll. 10-17 and 21-36; figs 3 and 5.
FF11 Cunningham’s ring 21, from which the cables 20 depend, is disposed
above and outside of the collapsible container C. Cunningham, col. 3,
ll. 11-15; figs. 3 and 5.

PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when
“the differences between the subject matter sought
to be patented and the prior art are such that the
subject matter as a whole would have been obvious
at the time the invention was made to a person
having ordinary skill in the art to which said
subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1734
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of ordinary skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 550 U.S. at ___, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
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bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at ___, 127 S. Ct. at 1740. We must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions. Id.
“[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” Id.
Where the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, the proposed
modification would not have been obvious. See Tec Air Inc. v. Denso Mfg.
Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999).
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR, 550 U.S. at ___, 127 S. Ct. at 1740 (citing United
States v. Adams, 383 U.S. 39, 51-52 (1966)).
A reference may be said to teach away when a
person of ordinary skill, upon reading the
reference, would be discouraged from following
the path set out in the reference, or would be led in
a direction divergent from the path that was taken
by the applicant. The degree of teaching away will
of course depend on the particular facts; in general,
a reference will teach away if it suggests that the
line of development flowing from the reference's
disclosure is unlikely to be productive of the result
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sought by the applicant.
In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994) (citations omitted).

ANALYSIS
Appellants’ arguments that the modification of Wilhelm to add a
windlass, or any other structure, across the top of Wilhelm’s octabin would
impede the foil sack 6 from rising out of the octabin, thus rendering
Wilhelm’s octabin unsatisfactory for its intended purpose (Appeal Br. 10-
11), and would change the principle of operation of Wilhelm (Appeal Br.
11) are not persuasive, as they are not directed to the modification proposed
by the Examiner. The Examiner has not proposed replacing the lifting tackle
arrangement of Wilhelm with a windlass. Rather, the Examiner proposed
modifying Wilhelm by attaching the support member, i.e., framework 10, to
the outer casing 17 of the octabin instead of providing separate support
structure, as taught by Wilcox, to save on materials needed for full ground-
up support structure. Such a modification would not change the principle of
operation of Wilhelm’s octabin or lifting tackle arrangement. Nor would
such a modification impede Wilhelm’s foil sack from rising out of the
octabin as intended.
Appellants’ argument that the Examiner’s proposed modification
would be superfluous and not necessary in utilizing the big-bag embodiment
of Wilhelm, wherein a support container is not needed, is likewise
unpersuasive. As noted above, the structure disclosed by Wilhelm for use
with a so-called big-bag 6’, which does not have any rigid outer casing, is a
different embodiment from the one disclosed for use with the octabin 7 and
illustrated in figs 1-4, which was relied upon by the Examiner in making the
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rejection. The Examiner has not proposed modification of the embodiment
of figs. 5 and 6 of Wilhelm intended for use with the so-called big-bag.
While a separate framework structure for supporting the lifting tackle
arrangement of Wilhelm might be preferred for applications wherein use of a
big-bag is contemplated, that fact in no way detracts from the material
savings economies to be gained by mounting support structure for
supporting the lifting tackle on the outer casing of an octabin to avoid the
need for duplicative structure required for a ground-up support structure in
octabin applications.
Appellants’ argument that Cunningham teaches away from a hanger
supported outside and above the flexible container, because Cunningham’s
connector block is located entirely within Cunningham’s collapsible
container, is ostensibly grounded on Appellants’ misapprehension of
Cunningham’s teachings. As noted in our findings above, Cunningham’s
cables 20 depend from a suspended ring 21 for supporting the arms 17 used
to support and lift the collapsible container C. Cunningham’s ring 21, from
which the cables 20 depend, is disposed above and outside of the collapsible
container C, not within Cunningham’s collapsible container, as asserted by
Appellants. Merely to provide flexible cables on the lifting tackle of
Wilhelm to suspend the clamping elements 5 from the holding frame 1
amounts to nothing more than the substitution of one element for another
known in the art, or the predictable use of prior art elements according to
their established functions. Such a simple modification is well within the
technical grasp of a person of ordinary skill and would afford the self-
evident and predictable benefit of facilitating attachment of the clamping
elements to the foil sack 6.
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CONCLUSIONS OF LAW
(1) Appellants have not demonstrated the Examiner erred in determining
it would have been obvious to modify the emptying station of
Wilhelm by attaching the support member to the support container to
save material.
(2) Appellants have not demonstrated the Examiner erred in determining
it would have been obvious to one of ordinary skill in the art to
modify Wilhelm’s clamping elements 5 so as to comprise flexible
cables as taught by Cunningham, because such modification would
involve a mere substitution of one well-known depending member for
another known in the art.

In light of the above, Appellants have not demonstrated that the
rejections of claims 2, 7-9, 23, 25, 29, 30, 34, and 35 as being unpatentable
over Wilhelm and Wilcox and claim 28 as being unpatentable over Wilhelm,
Wilcox, and Cunningham should be reversed.

DECISION
The Examiner’s decision 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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JRG

BAXTER HEALTHCARE CORPORATION
1 BAXTER PARKWAY
DF2-2E
DEERFIELD, IL 60015

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