11767000 (P.T.A.B. Nov. 6, 2013)

Ex Parte Donnell et al

Patent Trial and Appeal BoardNov 6, 2013

11767000 (P.T.A.B. Nov. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte EMERSON B. DONNELL and DANIEL KELLY ____________________ Appeal 2011-013575 Application 11/767,000 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, WILLIAM A. CAPP, and SCOTT A. DANIELS, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013575 Application 11/767,000 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1-15 and 17-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Invention Appellants’ claimed invention “relates generally to a rack for storing storable members, such as water bottles, and more specifically to storage units having a shock dampener within the storage unit.” Spec. 1:2-4. Claims 1 and 10 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A storage rack comprising: a storage unit housing defining at least one longitudinally extending aperture adapted to receive at least one storable member; and a shock dampener positioned along an inner surface of the at least one aperture, wherein the at least one shock dampener is configured such that a radial clearance exists between the at least one shock dampener and a storable member positioned within the at least one aperture. The Rejection and Evidence Relied Upon The Examiner rejected claims 1-15 and 17-20 under 35 U.S.C. § 103(a) as unpatentable over Kelly (U.S. 6,026,958; iss. Feb. 22, 2000), and Ide (U.S. 5,513,917; iss. May 7, 1996). Appeal 2011-013575 Application 11/767,000 3 OPINION Independent claims 1 and 10 are each directed to a storage rack comprised of a storage unit housing having an aperture adapted to receive at least one storable member, and a shock dampener positioned along the inner surface of that aperture. The Examiner found that Ide discloses “a rack having fluid filled shock absorber assemblies 31 for the purpose of protecting the articles stored therein,” and concluded that it would have been obvious to add Ide’s bearing pad 31 (shock dampener) to Kelly’s storage rack for water bottles (storable members) for the purpose of protecting the water bottles. Ans. 3. The Examiner did not provide a citation in support of this finding, nor do we discern a disclosure in Ide that bearing pads 31 protect stored articles. To the contrary, Ide discloses a one-piece hydrodynamic bearing that is well suited to cryogenic applications. Ide, Abstr.; col. 1, ll. 22-24. Ide’s bearing is a form of a tilt pad bearing designed to operate in a liquid filled environment, and is comprised of spaced bearing pads 31 supported on a bearing housing 30 by a web-like ligament 37. Ide, col. 13, ll. 11-18; fig. 1A. In operation, pads 31 tilt so as to pressurize the liquid. Ide, col. 13, ll. 13-14; fig. 1D. In light of this, the Examiner’s reasoning that a person of ordinary skill in the art would have added Ide’s bearing pads to Kelly’s storage rack to protect the water bottles (storable members) lacks a rational underpinning. As such, we do not sustain the rejection of independent claims 1 and 10 or their respective dependent claims 2-9, 11-15, and 17-20. Appeal 2011-013575 Application 11/767,000 4 DECISION We reverse the Examiner’s decision to reject claims 1-15 and 17-20. REVERSED hh