Ex Parte Apps

Patent Trial and Appeal Board

Nov 15, 2013

11943830 (P.T.A.B. Nov. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WILLIAM P. APPS
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Appeal 2012-000085
Application 11/943,830
Technology Center 3700
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Before JOHN C. KERINS, STEFAN STAICOVICI, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000085
Application 11/943,830
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STATEMENT OF THE CASE
William P. Apps (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1, 4, 5, 34,
and 35 as unpatentable over Dubois (US 2004/0200833 A1, published Oct.
14, 2004); claims 2, 3, and 14-25 as unpatentable over Dubois and Hillis
(US 6,484,898 B2, issued Nov. 26, 2002); claims 36-38 as unpatentable over
Hillis; and claim 39 as unpatentable over Hillis and Gyenge (US 4,674,647,
issued Jun. 23, 1987). Claims 6-13 and 26-33 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

INVENTION
Appellant’s invention relates to a “collapsible pallet bin.” Spec. 1,
para. [0001].
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A pallet comprising:
a floor;
a plurality of supports extending downwardly from the
floor;
a pair of flanges extending upwardly from opposite edges
of the floor, each flange including at least three spaced
projections on an upper edge thereof; and
a wall pivotably connected to each of the flanges, each
wall pivotable between an upright position and a collapsed
position relative to the floor, wherein the reduced footprint
portion is dimensioned such that the reduced footprint portion
of an identical pallet can be supported on the interior ledges of
the flanges, and such that a peripheral ledge of the reduced
footprint portion of the identical pallet can be supported on the
upper surface of the projections when the walls are in the
collapsed position.

SUMMARY OF DECISION
We AFFIRM-IN-PART.
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ANALYSIS
The Obviousness Rejection Based Upon Dubois
Independent claim 1 requires, inter alia, “each flange including at
least three spaced apart projections on an upper edge thereof.” App. Br.,
Clms. App’x.
The Examiner found that although Dubois discloses a pair of flanges
including three projections 8, 12, 13, the projections do not constitute “three
spaced apart projections.” Ans. 5. Nonetheless, the Examiner concluded
that:
It would have been obvious to one of ordinary skill
in the art at the time of the invention to modify
Dubois so that additional duplicate spaced apart
projections (i.e. separate 12 or 13) are provided
spaced apart from one another in order to provide
support for the collapsible walls since mere
duplication of parts has no patentable significance
unless a new and unexpected result is produced.
Ans. 5-6 (citing to In re Harza, 247 F.2d 669 (CCPA 1960)); see also
Dubois, fig. 7.
Appellant argues that because Dubois’ sections 12 and 13 “are
integral pieces of the corner projections 11,” sections 12 and 13 “cannot
somehow be separated and ‘duplicated’ as the Examiner” proposes. Reply
Br. 1. Moreover, Appellant opines that the Examiner’s proposed duplication
of parts would result in another corner projection, which is not required
because the transport box of Dubois already includes four corner projections.
App. Br. 5. Thus, according to Appellant, “there is otherwise no reason to
add another ‘corner projection’ to Dubois.” Reply Br. 2.
In response, the Examiner takes the position that because projections
8, 12, and 13 “are distinctly labeled in the drawings and the reference calls
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for three separate parts,” it would have been obvious to a person of ordinary
skill in the art to duplicate one of these projections, namely, 12 or 13, “along
the flanges in order to perform the function of structural support as well as
improved support for stacking.” Ans. 21.
At the outset, we note that Dubois discloses “angular element 11” as
including “a short section 12 and a long section 13.” Dubois, para. [0019]
and fig. 1. Dubois further discloses that side walls 3, 5 include rectangular
cut-outs 34 and walls 4, 6 include rectangular cut-outs 29 that match the
long section 13 and the short section 12, respectively, of angular element 11.
Id., para [0021]. Furthermore, side walls 3, 5 and 4, 6 may be flipped
inwardly by hinges 28 and 33, respectively. Id.
Although we appreciate the Examiner’s position that ”mere
duplication of parts has no patentable significance unless a new and
unexpected result is produced,” in this case, modifying the transport box 1 of
Dubois to include an additional projection 12, 13, as the Examiner proposes,
would result in further modifications to transport box 1. Specifically,
transport box 1 of Dubois would require further modification to side walls 3,
5 and side walls 4, 6 to include additional rectangular cut-outs to
accommodate the additional projection 12, 13, as well as to provide space
for hinges 28, 33. The Examiner does not make findings regarding
modifying the structure of Dubois to incorporate additional projections 12,
13 nor does the Examiner explain why it would have been obvious to modify
Dubois as such. Moreover, the reason proffered by the Examiner to include
additional projections 12, 13, i.e., “in order to perform the function of
structural support,” appears to already be adequately performed by Dubois’
angular elements 11, which include inner step 47 for receiving runner
elements 16 of a similar transport box 1. See Dubois, para. [0024]. Lastly,
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the Examiner does not provide any support for the allegation that the
inclusion of additional projections 12, 13 in the transport box of Dubois
would have “improved support for stacking.” See Ans. 21 (emphasis added).
Thus, the Examiner has not made the initial factual findings required
to demonstrate a prima facie case of obviousness of claim 1. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). Without an articulated
rationale based on rational underpinning for modifying the reference as
proposed, the Examiner's rejection appears to be the result of hindsight
analysis. See 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, 418 (2007)).
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claims 1, 4, 5, 34, and 35 under 35 U.S.C. § 103(a) as
unpatentable over Dubois.

The Obviousness Rejection Based Upon Dubois and Hillis
Claims 2 and 3
The Examiner’s use of the teachings of Hillis does not remedy the
deficiencies of Dubois as described supra. Accordingly, we likewise do not
sustain the rejection of claims 2 and 3 over the combined teachings of
Dubois and Hillis.

Claims 14-25
The Examiner found that Dubois discloses all the limitations of
independent claim 14 with the exception of a lid having recesses configured
to receive flanges when the walls are in a collapsed position. See Ans. 10-
11. The Examiner further found that Hillis discloses a lid 822 having a pair
of recesses (formed by flange 832 and détente 846) configured to receive
Appeal 2012-000085
Application 11/943,830
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upper edges 30 of Dubois’ walls when the walls are in an upright position
and in a collapsed position. See Ans. 11. According to the Examiner,
independent claim 14 merely requires that the lid of Hillis “only has to be
capable of being placed on top of the flanges and the recesses of the lid
(formed by 823 provides sufficient space for the flanges to be placed within
the recesses).” See Ans. 11-12.
Appellant argues that:
[R]egardless of whether Hillis’ lid is “capable of”
being received on Dubois’ flanges, the rejection
misses that when Dubois collapses its walls, it
intends to receive the runner elements 16 of
another container on its ledge 47. The addition of
a lid to Dubois’ flanges would prevent this. (See
Dubois at [0024]).
App. Br. 6-7.
Although we appreciate the Examiner’s position that Hillis’s lid
merely requires that it be capable of receiving the flanges of Dubois’ walls
when in a collapsed position, nonetheless, we agree with Appellant that
when the walls of Dubois’ container are collapsed, step 47 of angular
elements 11 is configured to receive runner elements 16 of another similar
transport box 1. We thus agree with Appellant that “[t]he addition of a lid to
Dubois’ flanges would prevent these runner elements 16 from being
received on the ledges 47.” Reply Br. 2. Moreover, we note that upon
collapsing transport box 1 of Dubois, side walls 3, 5 with covers 43, 44 are
located on top of the flanges (as defined by the Examiner). Compare Figure
8 of Dubois with the Examiner’s Annotated Figure 7 of Dubois (see Ans. 7).
The Examiner has not responded to Appellant’s position. Therefore, the
modification proposed by the Examiner of providing Hillis’s lid to the
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container of Dubois would not have been obvious to the person of ordinary
skill in the art because it would prevent the stacking of Dubois’ containers.
We thus do not sustain the rejection of independent claim 14, and its
dependent claims 15-25, under 35 U.S.C. § 103(a) as unpatentable over
Dubois and Hillis.

The Obviousness Rejection Based Upon Hillis
Appellant has not presented arguments for the patentability of claims
37 and 38 apart from claim 36. App. Br. 7. Therefore, in accordance with
37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 36 as the representative
claim to decide the appeal of the rejection of these claims, with claims 37
and 38 standing or falling with claim 36.
Pointing to column 3, lines 24-26 of Hillis, the Examiner found that
Hillis discloses “containers [that] can be stacked one upon one another
whether the containers are in a collapsed or uncollapsed position and
whether the containers have the cap or without the cap.” Ans. 22. The
Examiner concluded that, “[i]t would have been obvious to one of ordinary
skill in the art at the time of the invention to modify Hillis so that the cap is
used to cover the top portion of the flanges since it was known in the art to
use caps/lids to cover the top of a container and Hillis provides the
motivation for such a modification.” Ans. 19 (citing to Hillis, col. 3, ll. 24-
26).
Appellant argues that the Examiner’s interpretation of column 3, lines
24-26 of Hillis is in error. According to Appellant, “[t]he correct
interpretation . . . is that the containers can be stacked one upon another
either (1) in the collapsed position, or (2) in the uncollapsed position with or
without a cap.” App. Br. 6. Appellant further points to Figures 8 and 11 of
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Hillis to show containers 820a, 820b that can be stacked in an uncollapsed
position with or without a cap. Id. (citing to Hillis, col. 6, ll. 35-39). Thus,
according to Appellant, the Examiner relies on an improper reading of Hillis
to reach the conclusion of obviousness. App. Br. 7.
Column 3, lines 24-26 of Hillis states that “the containers can be
stacked one upon another, either in [a] collapsed position[], uncollapsed
position, with or without a cap or top.” Emphasis added. We do not agree
with Appellant’s interpretation because the use of the term “either” sets forth
two alternatives for stacking Hillis’s containers, namely, in a collapsed
position or in an uncollapsed position, and each alternative further including
two other alternatives, namely, “with or without a cap or top.” In other
words, Hillis discloses that containers can be stacked in a collapsed position,
with or without a cap or top, or in an uncollapsed position, with or without a
cap or top. We thus do not agree with Appellant’s position that “Hillis only
uses its lid when its walls are in an upright position.” App. Br. 5.
Appellant further argues that, “Hillis’ lid cannot be positioned over its
flanges when its walls are collapsed, as its hinges and walls would interfere
with the lid and prevent the lid from covering the flanges.” App. Br. 7
(citing to Figure 1 of Hillis). We are not persuaded by Appellant’s argument
because it is not commensurate in scope with the Examiner’s proposed
rejection. The Examiner is not proposing to position lid 822 over the flanges
of Hillis’s container, as Appellant argues, but rather to modify lid 822 to
cover the flanges and hinges 18 when Hillis’s container is in a collapsed
position. See Ans. 19. Thus, Appellant has not persuasively argued that the
Examiner erred in concluding that the subject matter of claims 36-38 would
have been obvious to one of ordinary skill in the art at the time of the
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invention. We thus affirm the rejection of claims 36-38 under 35 U.S.C.
§ 103(a) as unpatentable over Hillis.

The Obviousness Rejection Based Upon Hillis and Gyenge
Appellant does not present any other substantive arguments separate
from the arguments presented supra with respect to the rejection of claims
36-38 under 35 U.S.C. § 103(a) as unpatentable over Hillis. App. Br. 8.
Accordingly, we likewise sustain the rejection of claim 39 over the
combined teachings of Hillis and Gyenge.

SUMMARY
The Examiner’s decision is affirmed as to claims 36-39 and reversed
as to claims 1-5, 14-25, 34, and 35.
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-IN-PART

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