Ex Parte DeSanti et al

Patent Trial and Appeal Board

Nov 25, 2014

12972902 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FREDERICK H. DeSANTI and MICHAEL F. DeSANTI
____________

Appeal 2012-011064
Application 12/972,9021
Technology Center 3600
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–13. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.

1 According to the Appellants, the real party in interest is the inventors.
Appeal Br. 1.
Appeal 2012-011064
Application 12/972,902

2
Claimed Subject Matter
Claims 1, 6, and 9 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A collapsible bag support comprising:
a tube including a first end and a second end, the tube
configured to receive refuse through the first end and deliver
the refuse through the second end, the tube being flexible such
that the tube may be placed in a collapsed position and a fully
extended position; and
a spring coil carried by the tube, the spring coil biasing
the tube to the fully extended position.

Rejections
Claims 1–3, 5–11, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Metcalfe (US 7,237,753 B2, iss. July 3, 2007) and Joo-Tai
(US 6,612,453 B2, iss. Sept. 2, 2003).
Claims 4 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Metcalfe, Joo-Tai, and King (US 2004/0026578 A1, pub. Feb. 12,
2004).

ANALYSIS
At the outset, we acknowledge that the Examiner’s rejection includes
a modification of Metcalfe’s bag holder, more specifically sleeve (tube) 14,
to include a spring coil, as taught by Joo-Tai, to bias Metcalfe’s tube 14 in a
fully extended position. See Ans. 5, Metcalfe, col. 3, ll. 35–37. The
Appellants contend that biasing Metcalfe’s tube in a fully extended position
prevents the bag holder from collecting debris when the bag holder is in a
collapsed position on the ground. See Appeal Br. 6.
Appeal 2012-011064
Application 12/972,902

3
The Examiner acknowledges that Metcalfe discloses a bag holder
having a tube 14 where the tube is in a collapsed position to collect debris.
See Ans. 5, 9 (citing Metcalfe, Fig. 7). The Examiner explains that Metcalfe
discloses the use of ties 40 to maintain tube 14 in a collapsed position. See
Ans. 8.
In response, the Appellants argue that using ties 40 to maintain tube
14 in a collapsed position creates a problem when untying those ties when
collecting debris in the/a bag fastened by fasteners 30. See Reply Br. 3–4;
see also Appeal Br. 7. More specifically, the Appellants’ assert, “if a bag is
secured to the bag holder using fasteners 30 and the ties are used as
advanced by the Examiner, the user would have to puncture holes through
the bag in order to wrap the ties around the bottom the bag.” Reply Br. 4.
The Appellants’ contention is persuasive.
Metcalfe’s Figure 12 depicts ties 40 having knots at the interior of the
tube. To untie the knots a user would have to either puncture a hole in a bag,
as suggested by the Appellants, or dig through the collected debris to access
ties 40 in the interior of the tube and unknot them. Both scenarios provide
an unnecessarily cumbersome arrangement indicating that the Examiner’s
reasoning is based on impermissible hindsight.
Thus, for the foregoing reasons, the Examiner’s rejection of claim 1–
3, 5–11, and 13 under 35 U.S.C. § 103(a) as unpatentable over Metcalfe and
Joo-Tai is not sustained.
The remaining rejection based on Metcalfe and Joo-Tai in
combination with King relies on the same reasoning discussed above. See
Ans. 8. As such, we do not sustain the rejection of claims 4 and 12 under 35
U.S.C. § 103(a) as unpatentable over Metcalfe, Joo-Tai, and to King.
Appeal 2012-011064
Application 12/972,902

4
DECISION
We REVERSE the rejections of claims 1–13.

REVERSED

Klh