Ex Parte Bradford et al

Board of Patent Appeals and Interferences

Aug 31, 2012

11206608 (B.P.A.I. Aug. 31, 2012)

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.
11/206,608 08/18/2005 Judson A. Bradford BRP-221A 7226
26875 7590 08/31/2012
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
CASTELLANO, STEPHEN J
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
08/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUDSON A. BRADFORD
and MARK J. FEENSTRA
____________

Appeal 2010-006823
Application 11/206,608
Technology Center 3700
____________

Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-20. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
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CLAIMED SUBJECT MATTER
Claim 1 is representative of the claimed subject matter on appeal:
1. A container for holding product therein during
shipment, the container comprising:
a body having a bottom and at least two side walls, the at
least two side walls being movable between an erected position
and a collapsed position;
tracks supported by the body at different levels; and
a plurality of support member assemblies generally inside
the container, each of said support member assemblies
comprising a pair of sliders slidable along the tracks and a
support extending between the sliders; and
dunnage supported by the support member assemblies
wherein any number of layers of product suspended by the
dunnage may be unloaded by moving the support member
assemblies of one layer to a position farthest from the unloader
to expose a lower layer of product for unloading.

REJECTIONS
Claims 1-5, 10-17 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Christian (US 5,407,262; iss. Apr. 18, 1995) and
Yasuda (JP 6-59230; pub. Aug. 16, 1994).
Claims 6-9, 18, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Christian, Yasuda, and Arpin (US 5,560,507; iss. Oct. 1,
1996).
ANALYSIS
Claims 1-5, 10-17, and 19 as unpatentable over Christian and Yasuda
The Examiner found that Christian discloses a container with upper
and lower levels of tracks (rails 11) supported by a body with a bottom and
two walls at different vertical levels for hanging files (not shown) from the
stabilizers (rails 11) but Christian lacks support member assemblies inside of
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the container. Ans. 5. The Examiner found that Yasuda discloses an outer
collapsible container body with tracks (guide rail 3) supported by the body, a
plurality of support member assemblies including pairs of sliders (everything
extending outwardly from and including element 28 in Figs. 6 and 7) and a
flexible support (rubber support cord 26 in Figs. 6 and 7 or rod 4 with spring
14 in Fig. 4), and dunnage 21-23 supported by the support assemblies inside
the container. Ans. 5. The Examiner determined that it would have been
obvious to replace the tracks (rails 11) of Christian with Yasuda’s tracks
(guide rails 3), support assemblies (sliders), flexible support, and dunnage to
more securely hold the sliders and dunnage while maintaining the smooth
sliding operation of the dunnage within the tracks to confine, segregate, and
prevent damage to the files and provide better organized files. Ans. 6, 9.
The Examiner also found that the dunnage or hanging files of Christian form
a bottom and two side walls that define a container. Ans. 9.
Appellants argue that Christian does not disclose a container having a
body with a bottom and at least two side walls movable between an erected
position and a collapsed position. Reply Br. 3; see App. Br. 7. We agree.
The Examiner’s finding that Christian’s files, which are not even illustrated
(col. 4, ll. 24-27), correspond to both dunnage and a bottom and two side
walls of a container is inconsistent with claim 1, which calls for a container
with a body having a bottom and at least two side walls and dunnage therein.
The Examiner has not adequately explained how Christian’s files correspond
to dunnage and the side walls and bottom of a container body that contains
the dunnage. As such, we cannot sustain the rejection of claims 1-5.
Independent claims 10 and 14 recite a container with similar features
as claim 1, but do not call for the body to have a bottom and at least two side
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walls. The Examiner made the same findings for claims 10 and 14 as for
claim 1, as set forth supra. Appellants argue that Christian’s rails 11 do not
correspond to tracks because they are stationary rails for so-called hanging
files and do not move when supporting the hanging files. App. Br. 6. This
argument is not persuasive because claims 10 and 14 do not call for movable
tracks but instead call for a pair of sliders to be slidable along the tracks. See
Ans. 8. This argument also is not persuasive because the Examiner relied on
Yasuda to disclose the support member assemblies.
Appellants also argue that it would not have been obvious to replace
Christian’s tracks (rails 11) with Yasuda’s tracks (guide rails 3), support
assemblies (sliders), flexible support, and dunnage because the tracks of
Christian are stationary rails 11 that do not move or have a smooth sliding
operation to be maintained by modification with Yasuda. App. Br. 6-7.
Appellants further argue that modifying Christian so the file folders slide
along the rails 11 is not how Christian is intended to operate. Reply Br. 2, 5.
Christian and Yasuda disclose stationary tracks on which files/dunnage slide
as claimed. Christian, col. 4, ll. 24-27; Yasuda, fig. 3. Appellants have not
persuaded us of error in the Examiner’s conclusion that it would have been
obvious to substitute Yasuda’s stationary support member assemblies for
Christian’s stationary tracks for the reasons stated by the Examiner.
Appellants also argue that Christian and Yasuda fail to disclose tracks
supported at different heights so that layers of products may be suspended
by dunnage. App. Br. 7. This argument does not persuade us of error in the
Examiner’s finding that Christian teaches a multi-level rack with a plurality
of tracks (rails 11) that are supported at different heights with files that hang
from the rails 11 and can be appropriately spaced (i.e., moved) along the
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rails 11 to expose a lower layer of product for unloading. See col. 4, ll. 21-
34; fig. 1. As such, we sustain the rejection of claims 10-17 and 19.
Claims 6-9, 18, and 20 as unpatentable over Christian, Yasuda, and Arpin
Independent claim 6 recites a container with similar elements as claim
1 including a body having a bottom and at least two side walls coupled to the
bottom. The Examiner relied on Christian and Yasuda to disclose the same
features as in the rejection of claim 1. Cf. Ans. 5-6 and 6-7. The Examiner
relied on Arpin to disclose an outer container for an upstanding frame and a
drop down door in a container side wall as called for in claim 20. Ans. 7-8,
11. The Examiner’s application of Arpin does not appear to cure the defects
in Christian and Yasuda because the Examiner still appears to rely on
Christian’s dunnage to disclose the bottom and side walls. See Ans. 6-7, 9.
Even if the Examiner relied on Arpin in an attempt to cure the above-
discussed defects in Christian and Yasuda with respect to the bottom and
side walls, it is not clear why a skilled artisan would have had a reason to
incorporate Arpin’s body, which is separate from the frame 28 (see col. 2, ll.
25-27), with Christian and Yasuda to provide a container in which the tracks
are secured to the side walls of the container. As such, we cannot sustain the
rejection of claims 6-9, 18, and 20.
NEW GROUNDS OF REJECTION
Claims 1-19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Christian and Yasuda. Regarding independent claims 1, 6, 10, and 14,
Yasuda discloses a container for holding product with a body 2 having a
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bottom 6 and at least two side walls 8 coupled (i.e., hinged1) to the bottom
and movable between erected and collapsed positions (see Figs. 1(a)-(c)),
tracks (guide rails 3) supported by the body 2 (Fig. 1(a)), and a plurality of
support member assemblies inside the container (Fig. 1(a)) that comprise a
pair of sliders (runners 17, elements 18-20 in Fig. 4, elements 18-20, 27, 28
in Fig. 7) that are slidable along the tracks 3 and a support (spring 15 in Fig.
4, flexible support 26 in Fig. 7), and dunnage 5 supported thereon (Figs. 3, 5,
6). See Trans. 2-4.2 Yasuda does not disclose tracks supported at different
levels or layers of product suspended by dunnage. Christian discloses a
container with tracks supported by the body at different levels. It would
have been obvious for a skilled artisan at the time of the invention to provide
Yasuda’s container in a stacked or multi-level configuration, as taught by
Christian, to provide an inexpensive, non-complex, easy to install structure
with sufficient strength to withstand normal office machine/file loading and
provide a professional, decorative appearance (col. 4, ll. 21-27 and 35-52;
col. 5, ll. 53-65; col. 6, ll. 55-68; Fig. 1) and as a self-evident way to provide
increased storage capacity in the same footprint. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007) (a court must ask whether an
improvement is more than the predictable use of prior art elements according
to their established functions).

1 Appellants disclose a collapsible container with walls 14d, 16d, 18d, 20d
that are hinged to the bottom 22d of the container and the “walls” are not
limited to a solid wall but may comprise two vertical posts joined together in
any desired manner. Spec. 22, ll. 7-19; figs. 9, 11.
2 Citations are to the drawings of JP 6-59230 and the English language
translation (“Trans.”) of JP 6-59230 provided by Appellants. See App. Br.
5, 21, Evidence Appendix. We also adopt the Examiner’s findings regarding
Yasuda that are set forth at pages 5-7 and 9 of the Answer.
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Yasuda discloses dunnage as pouches hanging from support member
assemblies and made from one piece of material, as called for in claims 2, 9,
13, 15, and 17. Trans. Abstract, p. 2; Fig. 3. Yasuda also discloses sliders
with a pair of heads 18, 19 that are inside and outside of the track as called
for in claim 3. Figs. 3, 4. Regarding claim 4’s recitation of plastic sliders,
the Examiner took Official Notice that plastic is a well-known material that
is easily molded to form complex shapes that are durable, readily available,
and inexpensive. Office Action, Feb. 3, 2009, at 4. Because Appellants did
not challenge the Examiner’s taking of Official Notice (see Response to First
Office Action, Feb. 25, 2009, at 8 (“Claim 4 was rejected under 35 U.S.C.
103(a) as being unpatentable over Yasuda et al. Applicants have amended
the claims so this rejection is moot.”)), the Examiner properly indicated that
this common knowledge is admitted prior art (see Final Rejection at 5).
Yasuda also discloses a flexible support (e.g., spring 15 in Fig. 4) that
can be a cable (support cord 26 in Figs. 6 and 7 (see Ans. 5)) as called for in
claims 5, 7, and 11. Yasuda further discloses opposed ends of the support 4
secured to sliders as called for in claim 8. Figs. 3, 4, 7. In addition, Yasuda
discloses a collapsible container body as called for in claims 16, 18, and 19.
Figs. 1(a)-(c). As modified by Christian, Yasuda also discloses a container
with multiple levels of support member assemblies as called for in claim 12.
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Christian, Yasuda, and Arpin. Claim 20 calls for the container to have a
drop down door. Arpin discloses a container with such a door (flap 44). It
would have been obvious to include a drop down door, as taught by Arpin,
on the modified container of Yasuda, to provide easier access to the dunnage
and products therein. See Col. 3, ll. 13-15; col. 4, ll. 40-43; Fig. 3.
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DECISION
We REVERSE the rejection of claims 1-5 and AFFIRM the rejections
of claims 10-17 and 19 under 35 U.S.C. § 103(a) as being unpatentable over
Christian and Yasuda.
We REVERSE the rejection of claims 6-9, 18, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Christian, Yasuda, and Arpin.
For the reasons provided supra, we enter the following NEW
GROUNDS OF REJECTION of:
Claims 1-19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Christian and Yasuda.
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Christian, Yasuda, and Arpin.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellant[s] may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:

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(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner….

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record….

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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; 37 C.F.R. § 41.50(b)

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