Ex Parte Mettler et al

Board of Patent Appeals and Interferences

Jul 29, 2012

11280780 (B.P.A.I. Jul. 29, 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.
11/280,780 11/16/2005 Charles M. Mettler PSSIP0122US 8970
23908 7590 07/29/2012
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
ADDIE, RAYMOND W
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
07/29/2012 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 CHARLES M. METTLER
and GREGORY H. BROWN
____________

Appeal 2009-014028
Application 11/280,780
Technology Center 3600
____________

Before NEAL E. ABRAMS, STEVEN D. A. McCARTHY,
and STEFAN STAICOVICI, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Charles M. Mettler et al. (Appellants) seek our review under 35 U.S.C
§ 134 of the final rejection of claims 1-7, 9 and 12-23, which are all the
claims remaining of record. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2009-014028
Application 11/280,780

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THE INVENTION
The claimed invention is directed to an inertial barrier for use in
protecting vehicles from roadway hazards.
Claims 1 and 12, reproduced below, are illustrative of the subject
matter on appeal.
1. An inertial barrier for use in protecting a
vehicle from roadway hazards comprising a plastic
container having a bottom wall and open top and a
side wall, a ledge extending laterally inwardly
from the side wall in spaced relation from the
bottom wall and open top, and an insert having
sides sized and shaped to be supported by the
ledge inside the container, the insert having an
axially upwardly, radially inwardly extending top
wall for supporting a dispersible granular energy
absorbing material above the insert inside the
container, wherein the container side wall includes
a cylindrical upper side wall portion that is stepped
laterally inwardly at discrete intervals along its
height from the open top, and a generally
rectangular lower side wall portion
that tapers inwardly from a lowermost edge of the
upper side wall portion to the bottom wall to
facilitate stacking of a plurality of such containers
during transit or storage.

12. The inertial barrier of claim 1 wherein the
ledge is continuous and extends laterally inwardly
from the generally rectangular lower side wall
portion substantially to the same lateral extent
around the entire periphery of the lower side wall
portion and the insert has straight opposite side
edges that are sized and shaped to substantially
match the cross sectional shape of the lower side
wall portion immediately above the ledge.

Appeal 2009-014028
Application 11/280,780

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THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Cory U.S. 4,674,431 Jun. 23, 1987
Zucker U.S. 4,688,766 Aug. 25, 1987
Denman U.S. 4,934,661 Jun. 19, 1990
Mileti U.S. 5,306,106 Apr. 26, 1994
Fan U.S. D531,081 S Oct. 31, 2006

THE REJECTIONS
Claims 1, 12, 14, 18, 21 and 22 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Denman in view of Cory.
Claims 2-5 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Denman in view of Cory and Mileti.
Claims 6, 7, 9, 13, 16, 17 and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Denman in view of Cory and Zucker.
Claims 20 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Denman in view of Cory, Zucker, and Fan.

OPINION
Claims 1, 12, 14, 18, 21 and 22 – Obviousness
Denman in view of Cory

As set forth on page 4 of the Answer, it is the Examiner’s position that
Denman discloses all of the subject matter recited in independent claim 1
except for the requirement that the inertial barrier container have a
cylindrical upper side wall portion that is stepped laterally inwardly at
discrete intervals along its height from the open top and a generally
rectangular lower side wall portion that tapers inwardly from a lowermost
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edge of the upper side wall portion to the bottom wall of the container to
facilitate stacking of a plurality of such containers. Ans. 4. According to the
Examiner, Cory teaches an inertial barrier container wherein the upper
portion includes a cylindrical upper side wall portion that is stepped laterally
at discrete intervals along its height from the open top and a lower portion
that is generally rectangular. The Examiner then concludes that it would
have been obvious to one of ordinary skill in the art to modify the Denman
container such that the upper tapered portion is formed with laterally stepped
cylinders and the lower portion is generally rectangular. Ans. 4.
In the “RESPONSE TO NOVEMBER 28, 2008 NOTIFICATION OF
NON-COMPLIANT APPEAL BRIEF” (hereinafter Amended Brief), the
Appellants dispute this conclusion, arguing that Denman fails to disclose “a
ledge extending laterally inwardly from the side wall,” that the cylindrical
upper side wall portion of Denman is not stepped laterally inwardly at
discrete intervals along its height from the open top of the container, that the
Cory side wall steps are oriented outwardly rather than inwardly, and that
the lower portion of the Cory container is not generally rectangular and
tapered inwardly from a lowermost edge of the upper side wall portion.
Amended Br. 10-11 (reference numerals omitted). In response to this
argument, the Examiner then stated that Denman does disclose “at least 2
stepped regions (14, 18)” in the upper side wall portion of the container
(Ans. 16), and concluded that since Denman discloses stackable barriers
having downwardly and inwardly tapered sides to facilitate stacking and
Cory discloses stepped, tapered upper sidewalls, it would have been obvious
to combine the teachings of Denman and Cory into an “optimized”
embodiment. Ans. 16-17.
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It is our view that Denman clearly discloses a “ledge extending
laterally inwardly from the side wall in spaced relation from the bottom wall
and open top” of the container. It is our further view that one of ordinary
skill in the art would have recognized that containers tapered inwardly
(Denman) or outwardly (Cory) from top to bottom each provide the
advantage of allowing containers to be stacked to facilitate storage and
handling. This being the case, it is our conclusion that one of ordinary skill
in the art would have found it obvious to construct the upper side portion of
the Denman container such that it is “stepped laterally inwardly at discrete
intervals along its height from the open top,” so as to allow a plurality of
containers to be nested to facilitate storage and transportation (Cory col. 1,
ll. 41-44) and because stepped portions allow a plurality of reflective strips
to be disposed on the container, thus increasing its visibility (Cory col. 3, ll.
38-43). These known teachings are the very advantages set forth by the
Appellants in their specification (page 5, ll. 6-15) and in the arguments
against the Examiner’s rejection (Amended Br. 11).
Cory also discloses a lower side wall portion 16e that has sides
arranged “to define a closed configuration such as an octagon having eight
sides.” Col. 3, ll. 22-23. The Appellants have argued that this does not
conform to the “generally rectangular” shape required by claim 1, and that
the sides do not taper inwardly as further stated in the claim. Amended Br.
10. The Examiner countered in the Answer that the Appellants have not
disclosed that this shape solves any stated problem or provides any
unexpected results, and therefore the shape is a matter of choice (Ans. 7),
and that the lower section of the Appellants’ container “appears to be
strikingly similar” to the lower section of Cory (Ans. 16).
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The Appellants’ specification describes the lower side wall portion 15
as being “generally rectangular (e.g., square) shaped with parallel opposite
sides 17 and rounded corners 19 between the sides” (page 5, ll. 22-24). We
find ourselves in agreement with the Examiner that the shape of Cory’s
lower side wall, which can be considered to be defined by four sides with
flat corners between the sides, falls within the scope of “generally
rectangular” to the same extent as that configuration is disclosed by the
Appellants. We also agree with the Examiner that it would have been
obvious to taper the bottom wall portion inwardly from a lowermost edge of
the upper side wall portion in order to facilitate stacking a plurality of
containers, in view of the fact that such is a well-known teaching in the art,
as noted above.
It is our opinion that a prima facie case of obviousness has been
established with regard to the subject matter recited in claim 1, which has
not been overcome by the Appellants’ arguments. We therefore will affirm
the Examiner’s rejection of independent claim 1.
Dependent claim 12 adds to claim 1 the requirement that “the ledge is
continuous and extends laterally inwardly from the generally rectangular
lower side wall portion” (emphasis added). In this rejection, the Examiner
has taken the position that the Denman ledge extends inwardly from the
lower side wall portion (Ans. 4), and also opines that “[w]hether the ledge
extends inwardly from the lower portion or upper portion of the sidewall,
appears to be a simple matter of design choice” (Ans. 17). The Appellants
have argued in rebuttal that the Cory ledge extends laterally outwardly rather
than inwardly, and that shaping the ledge to match the cross-sectional shape
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of the non-circular lower side wall portion provides a more positive
orientation of the insert on the ledge (Amended Br. 11).
The only ledge disclosed in Cory is not on the lower side wall portion
of the container, as required by the claim, but is on the detachable base, and
its purpose is to align the detachable base with the lower side wall portion of
the container when the base is installed. Fig. 2; col. 4, ll. 1-20. Moreover,
the ledge is broken into sections by several slots (Fig. 2) and therefore does
not extend “around the entire periphery” of the container, and it does not
support an insert because Cory does not disclose an insert. The Examiner
proposes to replace the outwardly oriented ledge of Denman, in which the
periphery matches the shape of the cylindrical upper side wall portion of the
cylinder, with an inwardly oriented ledge in which the periphery matches the
shape of the generally rectangular lower side wall portion solely on the basis
of the unsubstantiated conclusion that it makes no difference whether the
ledge extends inwardly or outwardly, even in the face of argument to the
contrary by the Appellants.
In rejecting claims under 35 U.S.C § 103(a), the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, (Fed. Cir. 1984). It is incumbent upon the Examiner to
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In doing so, the Examiner
is expected to make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior
art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art. In addition to these factual
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determinations, the Examiner must provide “some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Based upon the foregoing guidance, it is our view that the Examiner
has failed to establish a prima facie case of obviousness with regard to the
subject matter recited in claim 12, and claim 12 is reversed.
Independent claim 14 includes the same structure recited in claim 12,
and we therefore also will reverse the Examiner’s rejection of claim 14, for
the reasons explained above with regard to claim 12.
Independent claim 18 sets forth, inter alia, that the upper side wall
portion of the container has “an outwardly stepped generally rectangular
non-tapered outer wall portion immediately above the uppermost end of the
lower side wall portion, and a further outwardly stepped cylindrical outer
wall portion immediately above the outwardly stepped generally rectangular
outer wall portion to provide laterally outwardly extending flanges” between
the cylindrical outer wall portion and the non-tapered outer wall portion, that
are engageable by a generally U-shaped lifting yoke. It is the Examiner’s
position that these various configurations and relationships between
components would have been obvious modifications to the Denman
structure because the Appellants have “not shown any criticality for the
various shapes and steps being claimed.” Ans. 6. The Appellants argue that
such is not the case, and that the claimed arrangement of components results
in the creation of flanges between the stepped cylindrical outer wall portion
and the stepped rectangular non-tapered outer wall portion which are
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engageable by generally U-shaped yokes to facilitate lifting and emptying
the container. Amended Br. 13; Spec. 5, ll. 22-35.
We agree with the Appellants that the claimed arrangement of
components in claim 18 is critical in that it solves the problem of providing a
location for attaching means to lift and empty the container. As was the case
with claims12 and 14, it is our view that the Examiner has failed to establish
a prima facie case of obviousness with regard to the subject matter recited in
claim 18, and the rejection of claim 18 therefore is reversed.
Independent claim 21 recites essentially the same location and
relationships as claim 18 between the components that form the flanges. On
the basis of the same reasoning as we expressed above with regard to claim
18, we reverse the rejection of claim 21.
Claim 22 depends from claim 12, and the Examiner’s rejection of this
claim also is reversed.

Claims 2-5 and 15 – Obviousness
Denman in view of Cory and Mileti
Claims 2-5 all are dependent from claim 1, the Examiner’s rejection
of which we have affirmed. The Appellants have not separately argued the
merits of these claims, but have stated that they “ultimately depend from
claim 1 and are submitted as allowable for substantially the same
reasons.” Amended Br. 15. This being the case, we also will affirm the
Examiner’s rejection of claims 2-5.
We have reversed the Examiner’s rejection of independent claim 14,
from which claim 15 depends. Consideration of the teachings of Mileti does
not overcome the shortcomings we pointed out above with regard to the
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rejection of claim 14 on the basis of Denman and Cory. We therefore also
will reverse the rejection of claim 15.

Claims 6, 7, 9, 13, 16, 17 and 19 – Obviousness
Denman in view of Cory and Zucker
The rejection of claim 1, from which claim 6 depends, has been
affirmed. The Appellants have stated that claim 6 is patentable for the same
reasons as claim 1, and have provided no additional arguments. Amended
Br. 16. That being the case, we also will affirm the Examiner’s rejection of
claim 6.
Claim 7 depends from claim 6, and adds to claim 6 ribs to support the
ledge. It is the Examiner’s position that it would have been obvious in view
of Zucker to add ribs to the modified Denman container to reinforce the side
wall and to provide additional support for the ledge. Ans. 11. The
Appellants have argued in rebuttal that none of the ribs of Zucker contact the
bottom side of a continuous ledge and extend the full width of the ledge.
Amended Br. 17. However, Zucker teaches that the ribs (flutes) provide
additional support for an inner core 20 when the unit is filled with sand (col.
4, ll. 60-63), and while Zucker’s ledge 16 is not continuous, the upper
surfaces of the ribs nevertheless support inner core 20 across their entire
width (Figs. 2A and 4). We therefore share the Examiner’s view that one of
ordinary skill would have found it obvious in view of the showing in Zucker
to strengthen the continuous ledge of the modified Denman container by the
use of inwardly extending ribs, and we will affirm the rejection of claim 7.
Claim 9 depends from claim 7 and has not separately been argued by
the Appellants, who state that it is patentable for the same reasons as claims
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1 and 7 (Amended Br. 16), the rejections of which we have affirmed. The
rejection of claim 9 therefore also is affirmed.
Claim 13 depends from independent claim 12, claims 16 and 17 are
dependent from independent claim 14, and claim 19 depends from
independent claim 18. We have reversed the rejections of these three
independent claims. Consideration of the teachings of Zucker does not
overcome the shortcomings we found in the combined teachings of Denman
and Cory as applied against claims 12, 14 and 18. This being the case, we
also will reverse the rejections of claims 13, 16, 17 and 19.

Claims 20 and 23 - Obviousness
Denman in view of Cory, Zucker and Fan
Claim 20 depends from independent claim 18 through claim 19. The
rejection of claim 18 has been reversed. The teachings of Zucker and Fan do
not overcome the deficiencies we found in the rejection of claim 18, and
thus we will reverse the Examiner’s rejection of claim 20.
The Appellants’ have not presented arguments directed to the
rejection of claim 23, but have stated only that this claim is allowable for the
same reasons as claims 1 and 7. Amended Br. 17. Since we have affirmed
the rejection of claims 1 and 7, we also will affirm the rejection of claim 23.

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DECISION
The Examiner’s rejections of claims 1- 7, 9 and 23 are affirmed.
The Examiner’s rejections of claims 12-22 are reversed.
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)(v).

AFFIRMED-IN-PART

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