Ex Parte Bernasconi

Patent Trial and Appeal Board

Nov 21, 2013

10373243 (P.T.A.B. Nov. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDO BERNASCONI
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Appeal 2012-000540
Application 10/373,243
Technology Center 3600
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Before MICHAEL C. ASTORINO, HYUN J. JUNG, and
NINA L. MEDLOCK, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 16-18, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Wagner (US 4,607,655, iss. Aug. 26, 1986) and Barker
(US 2,819,724, iss. Jan. 14, 1958). We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2012-000540
Application 10/373,243

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Claimed Subject Matter
Claim 16, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
16. A method of collecting snow on a section of a ski slope,
comprising:
(a) positioning a snow berm comprising a single
elongated tubular structure with a longitudinal axis substantially
parallel to said section of ski slope and means for securing the
structure to the section of ski slope, wherein the single
elongated tubular structure has sealed ends, and has a
substantially uniform cross-section that is entirely pressurized
along said longitudinal axis while said structure is in an inflated
state, on said section of ski slope;
(b) securing said single elongated tubular structure to the
ski slope;
(c) inflating said single elongated tubular structure; and
(d) collecting snow upon and around said single
elongated tubular structure during a snowstorm.

OPINION
Independent Claim 16
The Examiner finds Wagner discloses substantially all of the claimed
methods steps of claim 16. Ans. 5. Most notably, the Examiner finds the
side portions 16a, 16b of Wagner’s inflatable shelter constitute the claimed
single elongated tubular structure. See id. The Examiner also finds Wagner
does not teach that the inflatable shelter is secured to the ground, but Barker
evidences that it is “notoriously old and well-known” in the art to secure a
tubular structure to the ground. See Ans. 5-6. The Examiner concludes, “it
would have been obvious to one of ordinary skill in the art to provide such
tent with ground securing means and secure the tent to the ground as taught
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Application 10/373,243

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by Barker so as to securely tie the tent to the ground and prevent a strong
wind from blowing it away.” Ans. 6.
The Appellant contends the tents of Wagner and Barker do not
necessarily perform step (d) of claim 16, i.e., the “collecting snow upon and
around said single elongated tubular structure during a snowstorm.” Br. 5-6.
However, Wagner’s inflatable shelter is designed to maintain its shape when
buried under two feet of snowfall. Wagner, col. 7, ll. 7-13, see Ans. 9. As
such, under the normal and usual operation of Wagner’s inflatable shelter
two feet of snowfall is collected upon and around the inflatable shelter.
The Appellant offers four assertions to support the opposite position.
Br. 5-6. After considering these assertions, we determine that the Examiner
has not erred. For example, the Appellant’s third assertion concerning
occupant suffocation is not persuasive since, among other things, the
inflatable shelter includes a means to ventilate the tent by means of zipper
38. Wagner, col. 4, ll. 59-63. Also, the Appellant’s fourth assertion
concerning Wagner’s reference to Barker is not persuasive (Br. 6 (citing
Wagner, col. 2, ll. 30-42)), because the Examiner only relies on Barker to
evidence the step of securing a structure to the ground. Ans. 9. The fact that
Wagner discloses that Barker does not appear to withstand heavy snowfall or
snowpack, which could possibly bury the tent, is not relevant to the
Examiner’s rejection. See id.; see also In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). In other words, the Examiner’s reliance on
Barker is limited to its disclosure of a securing means and not the structure
of the tent. See id. Therefore, the structural integrity of Barker’s tent due to
heavy snowfall or snowpack is not germane to the Examiner’s rejection.
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The Appellant contends that the Examiner fails to provide a
suggestion or motivation to combine the teachings of Wagner and Barker to
arrive at the claimed invention because “it may be quite undesirable to
collect snow upon and around a tent.” Br. 7. This contention is
unpersuasive at least because Wagner collects two feet of snow upon and
around its inflatable shelter. Supra.
The Appellant contends that Wagner and Barker do not disclose a ski
slope. Br. 7. This contention is also unpersuasive. The Background of the
Invention section of Wagner’s Specification describes:
aside from the difficulty of using a large tent of this type[1] in
rugged mountainous terrain common to Western parts of the
United States, this tent does not appear to be adequately
supported to withstand heavy snowfall or snowpack which
could possibly bury the tent.
Wagner, col. 2, ll. 30-35 (emphasis added); see Ans. 6. Additionally,
Wagner discloses “there is a need for a small emergency shelter suited for
use in rugged terrain under severe weather conditions that is light, portable,
easy to set-up[,] and stands up to high winds and heavy snowfall without
buckling.” Wagner, col. 3, ll. 1-5 (emphasis added). These two statements
suggest that the normal and usual operation of Wagner’s inflatable shelter
includes its use on a snow covered mountain area/slope. Ans. 6; see Ans.
10-11.
Thus, for the foregoing reasons, the Examiner’s rejection of claim 16
as unpatentable over Wagner and Barker is sustained.

1 “[A] large tent of this type” refers to Barker’s tent. Wagner, col. 2, ll. 19-
35.
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Dependent Claims 17, 18, 21, and 22
The Appellant relies on the arguments offered against the rejection of
claim 16 for the rejections of claims 17, 18, 21, and 22. For similar reasons
to those discussed above, the Appellant’s contentions are unpersuasive.
Additionally, the Appellant offers separate arguments for the rejections of
claims 17, 18, 21, and 22.
Claim 17
Claim 17 recites, “[t]he method of claim 16, wherein steps (b) and (c)
further comprise securing and inflating one or more additional elongated
tubular structures such that snow is collected between two or more elongated
tubular structures.” Br., Clms. App’x. Wagner discloses collecting two feet
of snow upon and around its inflatable shelter. Supra. Wagner also
discloses the use of one or more inflatable shelters. See Ans. 7, Wagner, col.
7, ll. 18-21. Under the normal and usual operation of Wagner’s inflatable
shelters, it is clear that at least some space exists between structures; and, the
aforementioned two feet of snow would fall and collect in that space during
a snowstorm. See Ans. 7. The Appellant’s contentions at page 8 of the
Appeal Brief are similar to those discussed above and are not persuasive of
Examiner error. See also Ans. 11-12. Thus, the Examiner’s rejection of
claim 17 as unpatentable over Wagner and Barker is sustained.
Claim 18
Claim 18 recites, “[t]he method of claim 16, additionally comprising
the step of: (e) deflating and removing said single elongated tubular structure
after collection of said snow.” Br., Clms. App’x. The Appellant contends
that the combined teachings of Wagner and Barker do not disclose or
suggest the additional step of claim 18 and that such is not inherent. See
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Br. 8-9. The Appellant asserts, “occupants may wait for any snow collected
on the tent to melt before deflating the tent and allowing it to dry before
packing.” Br. 9 (emphasis added). However, claim 18 does not require that
the snow does not melt before deflating the tent. Rather, claim 18 requires
deflation and removal of the structure after collection of said snow. Once
snow is on and around Wagner’s inflatable shelter, the snow is collected.
Whether or not the snow melts thereafter does not change the fact that the
collection of snow occurred. As such, the Appellant’s assertion is
unpersuasive. See also Ans. 7, 12. Thus, the Examiner’s rejection of claim
18 as unpatentable over Wagner and Barker is sustained.
Claim 21
Claim 21 recites “[t]he method of claim 16, additionally comprising
the step of redistributing said snow after collection in step (d).” Br., Clms.
App’x. The Examiner determines “the act of ‘digging out’ after a
snowstorm inherently results in ‘redistributing’ the snow that has collected
because snow will have moved/been displaced from the spot that it
originally fell.” Ans. 7. Based on this determination, it is apparent that the
Examiner presumes that under the normal and usual operation of Wagner’s
inflatable shelter a user would exit the inflatable shelter when snow is
collected upon and around the inflatable shelter. However, this presumption
is speculative and based on conjecture on how a user might use Wagner’s
inflatable shelter. See Br. 9. As such, the Examiner’s determination that it
is inherent that the “collected snow will be ‘redistributed’ when one ‘digs
out’ and when one walks about outside the shelter to pack up to leave” (Ans.
12) is not adequately supported. Thus, the Examiner’s rejection of claim 21
as unpatentable over Wagner and Barker is not sustained.
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Claim 22
Claim 22 recites “[t]he method of claim 18, additionally comprising
the step of redistributing said snow after step (e).” Br., Clms. App’x. The
Examiner determines that “walking about in the collected snow as one seeks
to pack and leave inherently results in ‘redistributing’ the collected snow.”
Ans. 7. Similar to the Examiner’s rejection of claim 21, the Examiner’s
determination is speculative and based on conjecture. See Br. 9. Thus, the
Examiner’s rejection of claim 22 as unpatentable over Wagner and Barker is
not sustained.

DECISION
We AFFIRM the Examiner’s decision to reject claims 16-18.
We REVERSE the Examiner’s decision to reject claims 21 and 22.
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)(1)(iv).

AFFIRMED-IN-PART

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