Ex Parte Dragoo et al

Board of Patent Appeals and Interferences

Sep 28, 2010

11349502 (B.P.A.I. Sep. 28, 2010)

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.
11/349,502 02/07/2006 Robert K. Dragoo 13620.60/YOD
(ITWO:0032-1
6963
7590 09/29/2010
Patrick S. Yoder
FLETCHER YODER
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
MOHANDESI, JILA M
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
09/29/2010 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 ROBERT K. DRAGOO, DAVID E. SHEPHERD, and
MICHAEL A. ROWLAND
____________________

Appeal 2009-013819
Application 11/349,502
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, STEVEN D.A. MCCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013819
Application 11/349,502
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
6, 8-11, 13, 15-20, and 39-46. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection.

The claims are directed to a recyclable container for welding wire.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A container, comprising:
a housing consisting essentially of a single cellulosic
material, the housing being adapted to receive from at least two
non-parallel directions at least one lifting member of a lifting
device into an opening or a recess in the housing.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Crawshaw
Toffolon
Halliday
Gelmetti
Chung
Ortiz
Cipriani
US 2,421,453
US 2,696,360
US 4,976,353
US 5,494,160
US 5,746,380
US 5,921,391
US 6,237,768 B1
Jun. 3, 1947
Dec. 7, 1954
Dec. 11, 1990
Feb. 27, 1996
May 5, 1998
Jul. 13, 1999
May 29, 2001

Unilever GB 1,216,909 Dec. 23, 1970

REJECTIONS
Claim 44 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Toffolon. Ans. 3.
Claims 1 and 3-5 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Unilever. Ans. 4.
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Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Crawshaw. Ans. 6.
Claims 1, 3, 5, 8, 9, 11, 13, 17, 19, 20, 39, and 40 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Gelmetti. Ans. 7.
Claims 8 and 10 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Chung. Ans. 9.
Claims 1-4, 8-11, 17-20, and 39-43 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Ortiz. Ans. 10.
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Unilever. Ans. 12.
Claims 1, and 3-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Halliday and Unilever. Ans. 13.
Claims 1-6, 8-11, 13, 15-20, and 39-43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cipriani and Unilever. Ans. 15.
Claims 1-5, 8-11, 13, 15-20, and 39-43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gelmetti and Unilever. Ans. 17.
Claims 45 and 46 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Toffolon and Unilever. Ans. 19.

OPINION
Rejection of claim 44 under 35 U.S.C. § 102(b) as anticipated by Toffolon
We will not affirm this rejection. Toffolon discloses a binder and hitch
for cargo pallets. The binder of Toffolon is made from fabric and attached to
the corners of the pallet. See col. 1, ll. 17-23, ll. 55-75. We are in agreement
with the Appellants that the fabric flaps or binder 15 does not comprise a
housing, nor does the binder result in a hollow storage region. Br. 9-12.
Accordingly, the rejection of claim 44 under 35 U.S.C. § 102 is reversed.
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Rejection of claims 1 and 3-5 under 35 U.S.C. § 102(b) as anticipated by
Unilever
We will not affirm this rejection. Claims 1 and 3-5 do not lack novelty
over Unilever. The embodiments of Unilever illustrated in Figures 1-6 and 8
do not show housings that can be lifted by lifting members which are
received in at least two non-parallel directions as argued by Appellants. Br.
13. On the other hand, the embodiment of Figure 7 does show a housing
adapted to receive lifting members from at least two non-parallel directions.
However, the spaced-apart blocks 37 in the Figure 7 embodiment which
allow the non-parallel lifting are made from expanded polystyrene. See
Unilever, p. 3, ll. 43-51. Therefore the Figure 7 embodiment of Unilever
does not “consist essentially of a single cellulosic material.” Consequently,
Unilever does not show every claimed element of independent claim 1 and
therefore does not support a proper rejection under 35 U.S.C. § 102.
Rejection of claims 1 and 2 under 35 U.S.C. § 102 as anticipated by
Crawshaw
We will not affirm this rejection of claims 1 and 2. We are in
agreement with the Appellants that Crawshaw does not show lifting
apertures adapted to receive from at least two non-parallel directions at least
one lifting member. Br. 14-15. Furthermore, we also agree with Appellants
that the fiberboard container of Crawshaw does not consistent essentially of
a single cellulosic material, inasmuch as the fasteners, buttons 40, do not
appear to be made out of fiberboard. Consequently, Crawshaw lacks an
essential element of the subject matter of claim 1 and does not provide
evidence of lack of novelty of claims 1 and 2.
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Rejection of claims 1, 3, 5, 8, 9, 11, 13, 17, 19, 20, 39 and 40 under 35
U.S.C. § 102 as anticipated by Gelmetti
Claims 8, 9, 11, and 13
Turning first to a consideration of claim 8, claim 8 requires an
opening adapted to receive at least one lifting member of a lifting device.
Claim 8 further requires a wall extending from one side of the opening
toward another side of the at least one opening. In our view, one of ordinary
skill in the art would not be able to determine the metes and bounds of claim
8. As far as we can determine, there is no wall that extends from one side of
the opening toward another side. Consequently, one of ordinary skill in this
art would not be able to determine the metes and bounds of this subject
matter with adequate precision.
“All words in a claim must be considered in judging the patentability
of a claim against the prior art. If no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious - the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970). Our analysis of the claim indicates that considerable
speculation as to the meaning of the terms employed and assumptions as to
the scope of the claimed subject matter needs to be made. A rejection under
§ 102 or § 103 should not be based on such speculation and assumptions. In
re Steele, 305 F.2d 859, 862 (CCPA 1962). Accordingly, we reverse the
§ 102 and § 103 rejections of claim 8 and enter the rejection noted below.
NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Claims 8-16 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. As noted above, we are unable to ascertain the metes and bounds
of these claims, and one of ordinary skill would not have been able to do so.
This rejection is made under the provisions of 37 C.F.R. § 41.50(b).
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Claims 1, 3, 5, 17, 19, 20, 39 and 40
We will not sustain the rejections of claims 1, 3, 5, and 39. Gelmetti
does not teach a housing adapted to receive from at least two non-parallel
directions a lifting member. Consequently, Gelmetti does not teach one
element from claim 1 and therefore cannot anticipate the claim.
On the other hand, we will sustain the rejection of claims 17, 19, 20,
and 40. Gelmetti teaches a container or box for shipping welding wire. The
box 1 of Gelmetti can be constructed of wood fiber composite or plywood,
and the wood fiber composite or plywood container can be glued to a pallet
of wood 31. See col. 3, ll. 58-65. Plywood and wood are properly considered
by the Examiner to be a single recyclable material, and gluing a box of wood
fiber or plywood to a pallet creates a housing of an integral storage region
and forklift region. Thus the disclosure of Gelmetti fully anticipates the
subject matter of claims 17, 19, 20 and 40.
Rejection of claims 8 and 10 under 35 U.S.C. § 102 as anticipated by Chung
As noted above, the subject matter of claim 8 is indefinite. Therefore
we reverse the rejection of claims 8 and 10 under 35 U.S.C. § 102. These
claims have been rejected under 35 U.S.C. § 112, second paragraph, by the
Board.
Rejection of claims 1-4, 8-11, 17-20 and 39-43 under 35 U.S.C. § 102 as
anticipated by Ortiz
With respect to claims 8-11, this rejection is reversed and a new
ground of rejection under 35 U.S.C. § 112, second paragraph, is entered by
the Board.
With respect to the rejection of claims 1-4, the core 40 of Ortiz
prevents the housing from being adapted to receive from at least two non-
parallel directions at least one lifting member of a lifting device. See col. 5,
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ll. 7-20. For example, lifting devices can access the container of Ortiz when
oriented as shown in Figure 1. However lifting devices would not be able to
access Ortiz in the orientation shown in Figure 2. Therefore Ortiz lacks an
essential element of the subject matter of claim 1 and this rejection of claims
1-4 is reversed.
For claims 39-43 we are in agreement with the Appellants that Ortiz,
taken by itself, does not show an opening adapted to pass a material
disposed within the housing. Therefore Ortiz lacks an essential element of
claims 39 and 40 and the rejection based thereon under 35 U.S.C. § 102
cannot be sustained.
Turning to claim 17 and the claims dependent thereon, it is our
finding that Ortiz does not show a container consisting essentially of a single
recyclable material. We are in agreement with Appellants that the plastic
film is of a different material than the rest of the container. Therefore, Ortiz
lacks an essential element of claim 17 and this rejection under 35 U.S.C.
§ 102 is cannot be sustained.
Rejection of claims 1-6 under 35 U.S.C. § 103 as unpatentable over Unilever
We will affirm this rejection. As noted supra, the housing of Unilever,
as shown in the Figure 7 embodiment, has openings adapted to receive from
at least two non-parallel directions at least one lifting member. However, the
Figure 7 embodiment has blocks 37 composed of expanded polystyrene
material. P. 3, ll. 46-47. However, the other embodiments of Unilever show
that the floor 12 of the box can be supported by hollow buffers 6, 6a made of
corrugated cardboard material. P. 2, ll. 57-62. In our view, the cardboard
polyhedral supports as shown in Figures 1 and 3 of Unilever could be
substituted for the polyhedral supports shown in Figure 7. That is, it would
have been obvious to make the material of the polyhedral supports 7 of the
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cardboard material shown in Figures 1 and 3. This is a simple substitution of
one known element for another to obtain predictable results. See KSR, Int’l
Co. v. Teleflex Inc., 550 U.S. 402, 417 (2007). Therefore the rejection of
claims 1-6 under 35 U.S.C. § 103 as unpatentable over Unilever is affirmed.
Rejection of claims 1 and 3-5 under 35 U.S.C. § 103 as unpatentable over
Halliday in view of Unilever
While the subject matter of claims 1-5 has been found unpatentable in
view of the teachings of Unilever, we will not affirm the rejection of these
claims as unpatentable over Halliday in view of Unilever. Halliday discloses
a box for holding goods on a pallet. Col. 1, ll. 24-31. The crossmembers 17
on the pallet of Halliday prevent the housing from being adapted to receive
from at least two non-parallel directions at least one lifting member.
Therefore Halliday does not teach this feature of claim 1, and the Examiner
has not provided articulated reasoning with rational underpinnings as to why
these crossmembers which hold the box to the pallet should be replaced.
Therefore, the rejection of claims 1 and 3-5 under 35 U.S.C. § 103 as
unpatentable over Halliday in view of Unilever is reversed.
Rejection of claims 1-6, 8-11, 13, 15-20, and 39-43 under 35 U.S.C. § 103
as unpatentable over Cipriani in view of Unilever
With respect to the rejection of claims 8-11, 13, 15 and 16, the
rejection of these claims is reversed, and a rejection under 35 U.S.C. § 112,
second paragraph, has been entered by the Board.
Turning to the rejection of claims 1-6 and 39, we will not affirm the
rejection of these claims under 35 U.S.C. § 103. Cipriani clearly discloses a
plastic film as an important part of his container. See, e.g., col. 3, ll. 44-51.
Therefore the Cipriani container does not consist essentially of a single
cellulosic material. The Examiner has not articulated reasoning with rational
underpinnings as to why, when the containers of Cipriani and Unilever are
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combined, one of ordinary skill would eliminate the plastic film. In our
view, the combination of references in this regard is based on impermissible
hindsight. Therefore the rejection of claims 1-6 and 39 is not sustained.
Turning to the rejection of claims 17-20, we will not affirm the
rejection of these claims for essentially the same reason. Cipriani does not
teach a container consisting essentially of a single recyclable material. The
same holds true for claims 40-43. As noted above, there is no articulated
reasoning with rational underpinnings as to why the container of Cipriani
would be combined with the container of Unilever and the container is
configured of one recyclable material.
Rejection of claims 1-5, 8-11, 13, 15-20, and 39-43 under 35 U.S.C. § 103
as unpatentable over Gelmetti in view of Unilever
With respect to the rejection of claims 8-11, 13, 15, and 16 we note
that the rejection of these claims is reversed, and a rejection under 35 U.S.C.
§ 112, second paragraph, has been entered by the Board.
We reverse the rejection of claims 1-5 under 35 U.S.C. § 103
inasmuch as Gelmetti does not teach a housing adapted to receive from at
least two non-parallel directions at least one lifting member of a lifting
device. While Unilever in the Figure 7 embodiment, shows this feature, in
our view the Examiner has not provided articulated reasoning with rational
underpinnings as to why Gelmetti would be reconstructed with both this
feature and the feature of the container comprised of, or consisting
essentially of, one cellulosic material. Therefore the rejection of claims 1-5
is reversed.
Turning to the rejection of claims 17, 19, and 20 we will affirm this
rejection. As noted previously, Gelmetti teaches a container comprised of
Appeal 2009-013819
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plywood walls and a wooden pallet. Therefore, Gelmetti teaches a container
of a single recyclable material.
We note that Gelmetti teaches containers of many sided polyhedrals.
See, e.g., fig. 13. The many sided polyhedral container of Gelmetti is at least
suggestive of a cylindrical container. Therefore the rejection of claim 18 is
affirmed.
With respect to the rejection of claims 40-43, we will affirm the
rejection of these claims for the same reasons. We further note that a plastic
transparent cover is provided to cover the container of Gelmetti and provide
a hole for wire passage. See col. 3, ll. 35-37. We note that the cover is not
part of the housing of Appellants’ claim 40.
Rejection of Claims 45 and 46 as unpatentable under 35 U.S.C. §
103(a) over Toffolon in view of Unilever
As noted above, Toffolon discloses a binder and hitch with the binder
of a fabric material that drapes around the corners of the load. It is unclear to
us how this disclosure is compatible with that of Unilever which relates to a
rigid cardboard container. For claims 45 and 46, arranging the pallet of
Toffolon to accept lifting devices as Unilever discloses would still not
provide the claimed hollow storage region as argued by Appellant. In
Toffolon it is the articles carried that form the shape of the storage region.
The rejection of claims 45 and 46 are reversed.
SUMMARY
The rejection of claim 44 under 35 U.S.C. § 102(b) as anticipated by
Toffolon is reversed.
The rejection of claims 1 and 3-5 under 35 U.S.C. § 102(b) as
anticipated by Unilever is reversed.
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The rejection of claims 1 and 2 under 35 U.S.C. § 102 as anticipated
by Crawshaw is reversed.
The rejection of claims 1, 3, 5, 8, 9, 11, 13, 17, 19, 20, 39, and 40
under 35 U.S.C. § 102 as anticipated by Gelmetti is reversed as to claims 1,
3, 5, 8, 9, 11, 13, and 39. It is affirmed as to claims 17, 19, 20, and 40.
The rejection of claims 8 and 10 under 35 U.S.C. § 102 as anticipated
by Chung is reversed.
The rejection of claims 1-4, 8-11, 17-20, and 39-43 under 35 U.S.C.
§ 102 as anticipated by Ortiz is reversed.
The rejection of claims 1-6 under 35 U.S.C. § 103 as unpatentable
over Unilever is affirmed.
The rejection of claims 1 and 3-5 under 35 U.S.C. § 103 as
unpatentable over Halliday in view of Unilever is reversed.
The rejection of claims 1-6, 8-11, 13, 15-20, and 39-43 under 35
U.S.C. § 103 as unpatentable over Cipriani in view of Unilever is reversed.
The rejection of claims 1-5, 8-11, 13, 15-20, and 39-43 under 35
U.S.C. § 103 as unpatentable over Gelmetti in view of Unilever is reversed
with respect to claims 1-5, 8-11, 13, 15, 16, and 39. It is affirmed with
respect to claims 17-20 and 40-43.
The rejection of claims 45 and 46 under 35 U.S.C. § 103 as
unpatentable over Toffolon and Unilever is reversed.
A New Ground of Rejection has been entered under 37 C.F.R.
§ 41.50(b) as to claims 8-16.
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 Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(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 Appellant 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 Appellant elects 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) (2007).

Appeal 2009-013819
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AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

nlk

Patrick S. Yoder
FLETCHER YODER
P.O. Box 692289
Houston TX 77269-2289