14710558 - (D) (P.T.A.B. Jul. 18, 2019)

Boban Jose

Patent Trials and Appeals BoardJul 18, 2019

14710558 - (D) (P.T.A.B. Jul. 18, 2019)

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. 14/710,558 05/12/2015 Boban Jose IPBH003U (150.0004US3) 4889 140719 7590 07/18/2019 Jacobsen IP Law - Barracuda Inc. 1999 S. Bascom Ave. Ste 700 Campbell, CA 95008 EXAMINER WEAVER, SUE A ART UNIT PAPER NUMBER 3733 NOTIFICATION DATE DELIVERY MODE 07/18/2019 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): boban.jose@outlook.com eofficeaction@appcoll.com krista@jacobseniplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BOBAN JOSE ____________ Appeal 2017-011747 Application 14/710,558 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and MICHAEL C. ASTORINO, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant1 seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1–3, 6, 7, 11, 12, 18–22, 29, and 31–33, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. 1 The real parties in interest are Barracuda, Incorporated and Kiran Bhogadi. App. Br. 3. Appeal 2017-011747 Application 14/710,558 2 THE INVENTION The Appellant’s claimed invention is directed to fold-out trays for luggage (Spec. para. 1). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An item of luggage, comprising: a first handle rod, the first handle rod having a proximal end and a distal end; a second handle rod, wherein the second handle rod is substantially parallel to the first handle rod; a grip coupled to the distal end of the first handle rod and to the second handle rod; a fold-out tray coupled to the first and second handle rods, the fold-out tray comprising a main panel, the main panel having a distal end, a proximal end, and a work surface; a connector coupled to the proximal end of the main panel, the connector permitting the fold-out tray to be rotated between a first position in which the work surface is substantially parallel to the first and second handle rods and a second position in which the work surface is substantially perpendicular to the first and second handle rods; and a pocket coupled to and disposed between the first and second handle rods, the pocket having at least one flap and at least one fastener enabling the pocket to be closed, wherein, when the fold-out tray is in the first position and the at least one flap is closed, the fold-out tray is stowed within the pocket. Appeal 2017-011747 Application 14/710,558 3 THE REJECTIONS The following rejections are before us for review: 1. Claims 1–3, 6, 7, 11, 12, 18–222, 29, and 31–33 are rejected under 35 U.S.C. § 112(a) as failing to show possession of the invention. 2. Claims 1–3, 6, 7, 11, 12, 18–22, 29, and 31–33 are rejected under 35 U.S.C. § 112(b) as being indefinite. 3. Claims 1, 18, 19, 31, and 33 are rejected under 35 U.S.C. § 103 as unpatentable over Gadbois (US 2014/0299428 A1; publ. Oct. 9, 2014) and Elam (US 9,277,796 B1; iss. Mar. 8, 2016). 4. Claims 2, 3, and 20–22 are rejected under 35 U.S.C. § 103 as unpatentable over Gadbois, Elam, and MacLean, III (US 2011/0209960 A1; publ. Sept. 1, 2011). 5. Claims 6, 7, 11, 12, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gadbois, Elam, and Soedomo (US 2013/0032443 A1; publ. Feb. 7, 2013). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.3 2 The Answer lists claim 23 in this rejection at page 3, but the claim has been withdrawn (App. Br. 34). 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2017-011747 Application 14/710,558 4 ANALYSIS Rejection under 35 U.S.C. § 112(a) The Examiner has determined that the Specification fails to provide support for “a pocket coupled to” the first and second handle rods as claimed in claim 1 (Final Act. 3, Ans. 4). In contrast, the Appellant argues that support for the cited claim limitation is found in the Specification at paragraph 85 (App. Br. 10–13). We agree with the Appellant. Here, the Specification at paragraph 85 provides support for the cited claim limitation. For example, the Specification at paragraph 85 states that “the extension handle 500 includes at least one pocket 700 between the first handle rod 501 and the second handle rod 504.” For these reasons this rejection is not sustained. Rejection under 35 U.S.C. § 112(b) The Examiner has determined claim 1 is indefinite and fails to set forth any structural orientation for “the at least one flap and fasteners enabling the pocket to be closed to effect the function wherein when the fold-out tray is in the first position and the at least one flap is closed the fold-out tray is stowed in the pocket” (Final Act. 3, 4; Ans. 4, 5). In contrast, the Appellant argues the cited claim limitation is not indefinite (App. Br. 13–16). We agree with the Appellant. Here, the cited claim limitation is simply not indefinite and one of ordinary skill in the art would understand what is being claimed. In this case, claim breadth is not indefiniteness. Accordingly, this rejection is not sustained. Appeal 2017-011747 Application 14/710,558 5 Rejections under 35 U.S.C. § 103 The Appellant argues that the rejections of record are improper because Gadbois does not disclose the recitation in independent claim 1 for “a pocket coupled to and disposed between the first and second handle rods, the pocket having at least one flap and at least one fastener enabling the pocket to be closed.” (App. Br. 17–20). The Appellant also argues that there is no motivation for the cited combination (id. at 23–28). In contrast, the Examiner has determined that the cited claim limitation is shown by Gadbois in Figures 3C, 3D, and 4A (Final Act. 5, Ans. 5, 8). We agree with the Appellant. Here, the Gadbois reference at Figures 3A and 3B does not disclose “a pocket coupled to and disposed between the first and second handle rods.” Regardless, the cited combination lacks articulated reasoning with rational underpinnings in the rationale to support the rejection and this rejection of record of claim 1 is not sustained. Dependent claims 2, 3, 6, 7, 11, 12, 18–22, 29, 31, and 33 contain the limitations of claim 1 and the rejections of these claims are not sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that the Appellant has shown that the Examiner erred in rejecting the claims as listed in the Rejections section above. Appeal 2017-011747 Application 14/710,558 6 DECISION The Examiner’s rejections of claims 1–3, 6, 7, 11, 12, 18–22, 29, and 31–33 are reversed. REVERSED