Nicholas DiPaolo

Patent Trials and Appeals Board

Jun 2, 2020

2019006589 (P.T.A.B. Jun. 2, 2020)

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.
13/330,526 12/19/2011 Nicholas DiPaolo MODP4153UA 2306
26822 7590 06/02/2020
Hackler Daghighian Martino & Novak
10900 Wilshire Blvd.
Suite 300
Los Angeles, CA 90024
EXAMINER
HUTCHENS, CHRISTOPHER D.
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
06/02/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
jcf@hdmnlaw.com
marc@hdmnlaw.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS DIPAOLO

Appeal 2019-006589
Application 13/330,526
Technology Center 3600
____________

Before EDWARD A. BROWN, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 6–10, and 15–17, which are the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Nicholas
DiPaolo. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A puppy apartment container comprising:
a top frame, a bottom frame, and four wire walled
sidewall frames forming a rectangularly-shaped container
portion; and
an apartment room divider having a wire walled dividing
frame adjustably attachable in a plurality of locations to a
container portion interior and being less in height and width
than said container portion and having a kennel opening
positioned within said dividing frame thereby allowing an
animal to pass from one interior apartment portion of the
container to another interior apartment portion;
wherein the adjustable attachment of the apartment room
divider between the plurality of locations within the container
portion interior changes the relative size of the one interior
apartment portion of the container in relation to the another
interior apartment portion;
wherein the sidewall frames and dividing frame each
have perpendicularly running welded wires having surfaces
being formed by spaced parallel end and side wire members
being evenly divided into a plurality of rectangles by means of
regularly spaced cross-wires thereby forming wire walls;
wherein the dividing frame is adjustably attachable in the
plurality of locations to the spaced parallel end and side wire
members of two of the oppositely disposed sidewall frames,
wherein the plurality of locations comprise at least three pairs
of successively disposed spaced parallel end and side wire
members of the two oppositely disposed sidewall frames.
Appeal Br. 25 (Claims App.).

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REJECTION
Claims 1, 3, 4, 6–10, and 15–17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cantwell (US 2012/0186529 A1, published
July 26, 2012) and Matteson (US 2011/0168104 Al, published July 14,
2011).

ANALYSIS
Appellant argues the rejection of claims 1, 3, 4, 6–10, and 15–17 as a
group. Appeal Br. 11–24. We select claim 1 as representative of the group
to decide the appeal as to the rejection. Claims 3, 4, 6–10, and 15–17 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 1, the Examiner finds that Cantwell discloses a
puppy apartment container comprising, inter alia, a rectangularly-shaped
container portion, and a room divider (divider panel 400) adjustably
attachable to a container portion interior to change the relative size of the
interior. Final Act. 2 (citing Cantwell ¶ 42, Figs. 2, 4). The Examiner
concedes that Cantwell does not disclose that the dividing frame has a
kennel opening positioned within it, as claimed. Id. at 3. The Examiner
relies on Matteson as teaching an animal cage including a divider panel
(divider 28) that has an opening (e.g., opening 94) for allowing an animal to
pass through. Id. (citing Matteson ¶ 40). The Examiner concludes that it
would have been obvious to modify the container of Cantwell in view of
Matteson’s teaching to have an opening in the room divider frame, “since
Cantwell states the divider is used to separate objects within the container
and doing so would allow the animal to access the objects separated by the
dividing panel.” Id. (emphasis added).
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Appellant contests the rejection based on three arguments. Appeal Br.
12–22. First, Appellant contends that the Examiner mischaracterized what
“object” Cantwell is actually referring to in paragraph 42. Id. at 12.
Appellant asserts that the Examiner indicates that the term “object” refers to
food, toys or other inanimate objects, whereas Cantwell teaches that the
object is the animal itself. Id. Appellant contends that Cantwell does not
suggest separating such inanimate objects inside the same crate, based on the
last sentence of paragraph 42, which states “[t]his enhances the flexibility of
the crate 100 and its ability to contain one or more animals in separate areas
therein.” Id. at 13. Appellant asserts that paragraphs 5 and 17 reinforce that
Cantwell teaches that animals, not inanimate objects, can be separated. Id.
at 13–15. Appellant also contends that, in paragraph 32 of Cantwell, the
reference to an “object” relates to an animal. Id. at 15. Appellant
acknowledges, however, that paragraphs 48 and 56 of Cantwell use the term
“object” in referring to an inanimate object, but contends that Cantwell does
not suggest that the divider is used to separate such inanimate objects in the
container. Id. at 15–16.
In response, the Examiner disagrees with Appellant about the meaning
of the term “objects” in paragraph 42 of Cantwell. Ans. 3. The Examiner
submits that paragraphs 48 and 60 describe “‘[a] blanket, pad, cloth, or other
object.’” Id. The Examiner submits that Cantwell does not correlate the
term “object” to anything other than an inanimate object. Id.
Appellant’s first argument is unpersuasive. As noted by the
Examiner, Cantwell uses the term “object” in describing inanimate items
that can be placed inside the cage for animals. Ans. 3. Cantwell discloses
an animal crate comprising a divider panel that can be located within the
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crate to change the relative size of adjacent interior spaces. Cantwell also
discloses that “the divider panel 400 can be coupled to the top panel 102
along any of these wires to adjust the desired space on each side of the
divider panel 400.” Cantwell ¶ 42. Cantwell further discloses that “[i]t can
also be advantageous to reduce the amount of space a younger animal may
have inside the crate, and it can be easily accomplished by installing the
divider panel.” Id. (emphasis added). Accordingly, Cantwell teaches the
advantage of having the capability to adjust the size of the interior space of
the cage to match the size of an animal contained in the space, and also
teaches the provision of a divider panel to achieve this advantage.
Cantwell describes various “objects” that can be placed in the crate.
As disclosed by Cantwell, a pan 800 can be placed in the crate, where “[t]he
pan 800 can have a raised periphery so that food, water, and other items do
not easily spill out of the pan 800.” Cantwell ¶ 47. Additionally, “a pad,
bedding, cloth, or other object can be either placed on the pan 800 or
inserted through the opening 802 instead of the pan 800.” Id. ¶ 48.
Matteson discloses an animal cage 10 including a divider 28
positioned inside the cage to divide the interior into adjacent chambers 30,
32. See Matteson ¶ 34, Figs. 1, 4. Openings 88 and 94 provided in upper
and lower door panels 38 and 40, respectively, can be aligned with openings
34 and 36 in divider 28 for allowing an animal to pass through openings 34
and 36. Id. ¶ 40. Matteson also discloses that “the divider can be positioned
at various locations within the cage interior to create different size
chambers,” and that “[c]ages need to be appropriately sized for the animals
to be housed. They need to be big enough, but not too big.” Id. ¶ 7.
Accordingly, Matteson, like Cantwell, teaches the advantage of matching the
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size of the chambers to the size of contained animals, and teaches the
provision of a divider to achieve this advantage. Matteson also teaches that
an animal contained in a smaller sized chamber can pass to an adjacent
larger sized chamber via the opening in the divider.
Appellant’s first argument focuses on Cantwell only. However, when
a rejection is based on a combination of prior art disclosures, attacking the
references individually is typically unpersuasive because it fails to address
what the collective information demonstrates a skilled artisan knew at the
time of the invention. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d at 425). As Appellant’s first
argument does not address the combination of teachings, it is unpersuasive.
Second, Appellant contends that providing a hole in Cantwell’s
divider panel 400 defeat Cantwell’s purpose, that is, to separate animals.
Appeal Br. 17–18. In support, Appellant quotes description in paragraphs 5,
10, and 17 of Cantwell and portions of MPEP §§ 2143.01(V) and (VI). Id.
at 17–18. Accordingly, Appellant contends, the Examiner’s combination
cannot be considered an obvious modification of Cantwell. Id. at 18.
In response, the Examiner acknowledges that Cantwell discloses that
the divider panel can separate animals from one another. Ans. 4 (citing
Cantwell ¶¶ 5, 17, 57). The Examiner also notes that paragraph 17 of
Cantwell states, “‘[i]t can also be advantageous to reduce the amount of
space a younger animal may have inside the crate, and it can be easily
accomplished by installing the divider panel,’” and paragraph 42 of Cantwell
states, “‘another embodiment of a crate is illustrated with a divider panel
coupled thereto. One of the advantages of this embodiment is the ability to
separate objects being contained in the crate.’” Id. The Examiner submits
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that an example of an inanimate object known in the art is a water bowl or
food bowl that would be provided in a separate compartment to prevent the
animal from spilling the food or water, and a blanket on the other side of the
pet crate to allow the animal to sleep in a separate section. Id. The
Examiner finds Appellant’s argument unpersuasive because it “is only
drawn to the divider panel being used to separate two or more animals, and
[is] silent to Cantwell’s statement of using the divider panel with . . . one
animal and for separating objects.” Id.
Appellant’s second argument is also unpersuasive. Providing an
opening in Cantwell’s divider panel would allow an animal to pass through
the divider panel from one interior chamber to an adjacent interior chamber.
As explained by the Examiner, the animal would be able to access food
and/or water contained in one chamber, and to access an object such as a
blanket or pad contained in an adjacent chamber where the animal sleeps or
rests.
We are unpersuaded that providing an opening in Cantwell’s divider
panel, as taught by Matteson, would prevent the cage from being able to
separate animals contained in adjacent chambers from each other. For
example, in situations where a larger animal is contained in a larger chamber
of the cage defined by the divider panel, an adjacent smaller chamber could
be sized to contain a smaller animal but not the larger animal. This
arrangement would also allow the smaller animal to access the larger
chamber, but not vice versa. Ultimately, regardless of whether an animal
could traverse the divider panel after the Examiner’s proposed modification,
Cantwell’s crate would still function for its intended purpose, namely,
confining animals, and the principle of operation of the crate would not be
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changed. See MPEP §§ 2143.01(V) and (VI). We agree with the Examiner
that it would have been obvious to modify the divider panel of Cantwell to
have an opening to allow animals to pass through from one area of the cage
to an adjacent area.
Third, Appellant contends that the invention lies in the discovery of
the source of a problem. Appeal Br. 18. According to Appellant, Cantwell
and Matteson both fail to teach or suggest “the need for a structure to closely
follow the growth of the puppy such that the puppy would be forced to
always relieve themselves into the potty portion and not relieve themselves
into the sleeping portion.” Id. at 19. Appellant contends that a nonobvious
invention may arise from the identification of a problem, or its source, even
if the solution to the problem would have been obvious once the source was
identified. Id. (quoting In re Peehs, 612 F.2d 1287, 1288 (CCPA 1980)).
In response, the Examiner submits that the proposed modification
“would provide a separate compartment to prevent the animal from spilling
food or water within a bowl while allowing the animal access to an area that
does not contain the food or water bowl for other activities, such as
sleeping.” Ans. 5. The Examiner determines that “the only solution to
providing access to multiple compartments within the pet crate is not based
on ‘a new way to potty train a puppy,’ as alleged by [Appellant],” but is “for
separating and giving access to objects that would hinder the normal
activities of an animal within the crate.” Id.
We understand the Examiner’s position is that the Patent Office is not
required to look only to the problem Appellant was trying to solve. We
agree. “Under the correct analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
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a reason for combining the elements in the manner claimed.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 420 (2007). Under the correct analysis, even
if the Examiner’s stated reason for modifying Cantwell is not to address the
problem of finding “‘a new way to potty train a puppy,’” which Appellant
contends is the problem addressed by the claimed invention, the Examiner
has explained how the proposed modification addresses another need or
problem. Namely, the Examiner reasons that the proposed modification of
Cantwell would still allow different sized animals to be contained in
different chambers of the cage, yet the modification would also allow such
animals to pass through the divider to access different “objects” placed in
the respective different chambers, for example. Thus, we determine that the
Examiner has articulated an adequate reason with a rational underpinning to
combine the teachings of Cantwell and Matteson to result in the claimed
puppy apartment container.
Appellant also contends that the Examiner’s rejection is based on
improper hindsight. Appeal Br. 23. As a general rule, the articulation of a
reason to combine teachings that is supported by rational underpinnings
prevents hindsight bias from arising. See In re Cree, 818 F.3d 694, 702 &
n.3 (Fed. Cir. 2016) (holding a showing of sufficient evidence that a person
of ordinary skill in the art would have had a reason to combine the
references as a predictable use of prior art elements according to their
established functions fully addressed the argument that the rejection was
based on “impermissible hindsight.”); see also KSR, 550 U.S. at 417
(holding that “it can be important to identify a reason that would have
prompted a skilled artisan to combine the elements in the way the claimed
invention does because a patent composed of several elements is not proved
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obvious merely by demonstrating that each of its elements was,
independently, known in the art”). We note that the reason for combining
references cannot be gleaned solely from Appellant’s disclosure. It must be
based only on knowledge that was within the level of ordinary skill in the art
at the time the claimed invention was made. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971). As discussed above, the Examiner has relied on
teachings of Cantwell and Matteson, not solely on Appellant’s disclosure.
Accordingly, Appellant’s hindsight contention is also unpersuasive.
Finally, we have also considered each of Appellant’s contentions set
forth in the Reply Brief, but find the contentions unpersuasive.
We sustain the rejection of claim 1, and claims 3, 4, 6–10, and 15–17
depending therefrom.

DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6–10,
15–17
103(a) Cantwell, Matteson 1, 3, 4, 6–
10, 15–17

PERIOD FOR RESPONSE

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