Ex Parte PaculdoDownload PDFPatent Trial and Appeal BoardJul 28, 201613450168 (P.T.A.B. Jul. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/450, 168 04/18/2012 85444 7590 07/29/2016 Bay Area Technolgy Law Group PC 2171 E. Francisco Blvd., Suite L San Rafael, CA 94901 FIRST NAMED INVENTOR Sara Paculdo 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 545.284 6279 EXAMINER COLLADO, CYNTHIA FRANCISCA ART UNIT PAPER NUMBER 3781 MAILDATE DELIVERY MODE 07/29/2016 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 SARA P ACULDO Appeal2014-003810 Application 13/450, 168 Technology Center 3700 Before WILLIAM A. CAPP, LEE L. STEPINA, and AMANDA F. WIEKER, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Sara Paculdo (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1 and 5. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. THE CLAIMED SUBJECT MATTER The claimed invention is directed to a litter disposal box. Spec. 1 (Title). Claim 1 is illustrative of the claims on appeal and is reproduced below. Appeal2014-003810 Application 13/450, 168 1. A disposal container for spent cat litter comprising a box and sidewalls emanating therefrom and terminating in an edge defining an opening, said bottom and sidewalls establishing a volume, a lid hingedly connected to a retainer, said retainer being removably supported by said edge, said retainer being sized with regard to said sidewalls to enable a liner to be draped within said container and over said edge to be maintained by frictionally fitting said retainer to said liner and sidewalls, said lid sized to removably reside over said opening when said retainer is applied to said sidewalls, said lid having a seal positioned with respect to said edge to minimize odors emanating from said volume, and wherein at least one of said sidewalls further comprises a plurality of downward extending hooks. Br. 7 (paragraph structure added). REFERENCES RELIED ON BY THE EXAMINER Verbeek Gordon US 6,250,492 B 1 US 2012/0228301 Al June 26, 2001 Sept. 13, 2012 THE REJECTION ON APPEAL Claims 1 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Verbeek and Gordon. Final Act. 3--4. 2 Appeal2014-003810 Application 13/450, 168 ANALYSIS Appellant argues claims 1 and 5 as a group. See Br. 3---6. We take claim 1 as representative, and claim 5 stands or falls with claim 1. The Examiner finds that V erbeek discloses most of the features required by claim 1, but does not disclose any downward extending hooks. See Final Act. 3--4. However, the Examiner finds that Gordon discloses a container in Figures 3 and 4 "having hook members to suspend from a ledge making it easier to reach for products and supplies." Final Act. 4. The Examiner determines that, "[b ]ased on the teaching of Gordon, it would have been obvious ... to have a container in figures 3 and 4 having hook members to suspend from a ledge making it easier to reach for products and supplies." Final Act. 4. Appellant argues that the container taught by Gordon "is not suited for use in the present invention as it is not suitable for employment with the invention disclosed in [Appellant's] co-pending U.S. Application Serial No. 13/450,100." Br. 4. We are not persuaded on this point because claim 1 does not require employment with the device described in Appellant's above-identified co- pending patent application. Rather, claim 1 recites, in part, "wherein at least one of said sidewalls further comprises a plurality of downward extending hooks," without requiring that those hooks be suitable for connection to any 3 Appeal2014-003810 Application 13/450, 168 specific structure. 1 Accordingly, Appellant's argument is not commensurate with the scope of claim 1. Appellant further asserts, "[ u ]nless a corresponding ledge was somehow curved, it would be extremely difficult for Verbeek to attach to it unless Verbeek's rubbish container has flat or planar sidewalls." Br. 5. We find Appellant's argument to be unpersuasive because claim 1 does not require a ledge, much less a ledge with any particular shape, and claim 1 does not specify that the disposal container must be attachable to a straight ledge. 2 Appellant also argues that neither Verbeek nor Gordon recognizes any advantage that would be obtained by adding hook members to the container in V erbeek. Br. 5. We are not persuaded by Appellant's arguments on this point because there is no requirement for the Examiner's rationale for modifying Verbeek to be recognized by the references themselves. A holding of obviousness can be based on a showing that "there was an apparent reason to combine the known elements in the fashion claimed." KSR Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Such a showing requires, "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness" .... [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can 1 We note that claim 5 recites a combination of a disposal container and a complimentary ledge. Appeal Br. 7. However, claim 5 does not limit the complimentary ledge to any particular structure disclosed in Appellant's co- pending application. 2 Although claim 5 recites a complimentary ledge, claim 5 does not limit the ledge in any way that would exclude a surface to which hooks 30 of Gordon would attach. 4 Appeal2014-003810 Application 13/450, 168 take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. (quoting Jn re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). Br. 5. Appellant also states: Although [Appellant] acknowledges that there are many structural arrangements in which one or more hooks can be used to suspend one object from another, [Appellant] is not aware of any such expedients that have been applied to a rubbish container whether or not that rubbish container was intended to be used as a disposable container for spent cat litter or otherwise. Further, there is no prior art to which the [Appellant] is aware which teaches the combination of a disposable container, hook members and a ledge, the combination of which being applied to [Appellant's] invention as described previously. More specifically addressing the Examiner's reasoning for modifying Verbeek, Appellant states, "Verbeek, in dealing with rubbish disposal, would have no motivation to modify its physical structure in order to make 'it easier to reach for products and supplies.' One would not generally reach within a rubbish container as the debris located therein would generally be unsanitary." Br. 5. The Examiner's proposed rationale for adding hooks to the arrangement taught by V erbeek is based on facilitating access to the container. See Final Act. 4 (stating "it would have been obvious to one having ordinary skill in the art at the time the invention was made to have a container in figures 3 and 4 having hook members to suspend from a ledge making it easier to reach for products and supplies"). Although Verbeek is directed to a rubbish container (see Verbeek, col. 1, 11. 4--11 ), we agree with the Examiner that facilitating access to the container (including facilitating convenient placement of the container allowed by adding hooks 5 Appeal2014-003810 Application 13/450, 168 as proposed by the Examiner) would be beneficial. In other words, the Examiner's rationale for modifying Verbeek applies whether a user is depositing items into the container taught by V erbeek or removing items from the container. Accordingly, we find the Examiner's reasoning for modifying Verbeek to be adequate. We have considered all of Appellant's arguments, but we find them to be unpersuasive. Accordingly, we affirm the Examiner's rejection of claims 1 and 5 as unpatentable over Verbeek and Gordon. DECISION We affirm the Examiner's decision to reject claims 1 and 5. 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)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation