Ex Parte DuBois et al

Patent Trial and Appeal Board

Jan 31, 2018

12958222 (P.T.A.B. Jan. 31, 2018)

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.
12/958,222 12/01/2010 Craig DuBois 2001-1 2631
30621 7590 02/01/2018
JENSEN & PUNTIGAM, P.S.
2033 6th Ave
Suite 990
SEATTLE, WA 98121
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
02/01/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG DUBOIS and JAMES E. BENNETT
Appeal 2017-005458
Application 12/958,222
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Craig DuBois and James E. Bennett (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—4.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants’ invention relates to storage bins for magazines or
workbooks. Spec. para. 1.
Appeal 2017-005458
Application 12/958,222
Claims 1 and 2 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A stabilized storage bin, comprising:
a rectangular bin element having a bottom and four sides
that is taller than it is wide, said bin element including a pivot
point at the center of the bottom and a plurality of downwardly
projecting rigid bubbles on the lower surface; and
a substantially flat stabilizing element of thin flexible
material capable of flexing over the bubbles contiguous with the
bin element, said stabilizing element approximately the same
dimension as the bottom of the bin, pivotably secured at the pivot
point and including openings to selectively receive the rigid
bubbles to secure the relative positions of the bin and the
stabilizing element, said stabilizing element selectively secured
in the stored position beneath the bottom and the stabilizing
position at right angles to the long dimension of the bottom.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1—4 under 35 U.S.C. § 103(a) as being unpatentable over
Phipps (US 3,612,343, issued Oct. 12, 1971) in view of Dalitz (US
1,452,494, issued Apr. 24, 1923) and Immerman (US 6,439,418 Bl, issued
Aug. 27, 2002); and
(ii) claims 1—4 under 35 U.S.C. § 103(a) as being unpatentable over
Phipps in view of Matsui (US 6,640,989 B2, issued Nov. 4, 2003) and
Immerman.
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ANALYSIS
Claims 1—4—Obviousness—Phipps/Dalitz/Immerman
Appellants argue claims 1—4 as a group. Br. 6—7. We take claim 1 as
illustrative of this group, and claims 2-4 stand or fall with claim 1.
The Examiner finds that Phipps discloses a stabilized storage bin
comprising: 1) a rectangular bin element having a bottom; and 2) a
substantially flat stabilizing element (base 37) made of a thin material. Final
Act. 2 (citing Phipps, Figs. 1—12; col. 1,1. 48—col. 2,1. 42). The Examiner
further finds that Phipps discloses that the stabilizing element may be
selectively secured in a stored position beneath the bottom of the rectangular
bin element, and in a stabilizing position at right angles to the long
dimension of the bottom of the rectangular bin element. Id. The Examiner
points out that Phipps discloses that the material of the stabilizing element is
plastic. Id. (citing Phipps, col. 2,11. 44-49). The Examiner acknowledges
that Phipps does not expressly disclose that the thin material making up the
stabilizing element is sufficiently flexible such that it could flex over
bubbles, nor does Phippse disclose a plurality of downwardly projecting
rigid bubbles on the lower surface of the rectangular bin element and
openings in the stabilizing element to selectively receive rigid bubbles to
secure the relative positions of the rectangular bin element and the
stabilizing element. Id. at 2—3.
The Examiner finds that Immerman discloses a container made of a
plastic material that is flexible. Final Act. 3 (citing Immerman, col. 5,11.
10—12). The Examiner concludes that it would have been obvious to modify
the Phipps storage bin and stabilizing element to be made of a flexible
plastic material to make the bin more durable. Id.
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Application 12/958,222
The Examiner finds that Dalitz discloses an apparatus comprising a
base having a plurality of downwardly projecting rigid bubbles
(protuberances 6) on the lower surface of the base, and a stabilizing element
(extension 15) including openings (depressions 20) to selectively receive the
rigid bubbles. Final Act. 3 (citing Dalitz, Figs. 1—6; p. 1,1. 20—p. 2,1. 20).
The Examiner concludes that it would have been obvious to modify the
rectangular bin element of Phipps to have a plurality of downwardly
projecting rigid bubbles on the lower surface and to include openings in the
stabilizing element to selectively receive the rigid bubbles, as taught by
Dalitz, to secure the relative positions of the rectangular bin element and the
stabilizing element, thereby promoting stability of the storage bin. Id. at 3—
4.
The Examiner additionally notes that, in the resulting structure, the
stabilizing element would be capable of flexing outwardly over rigid
structures, which, in the context of the rejection, we understand to include
bubbles on the lower surface of the Phipps bin as modified by Dalitz. Ans.
9.
Appellants contend that Phipps does not disclose that the stabilizing
element is thin and flexible, nor does it disclose a means for securing the
stabilizing element in either the stored or the stabilizing position. Br. 6.
Appellants’ contentions do not address the rejection as presented.
Phipps is not specifically relied on as teaching a stabilizing element that is
flexible, nor is Phipps relied on as teaching a means for securing the
stabilizing element in both stored and stabilizing positions. As noted above,
the Examiner proposes to modify Phipps in view of the teachings of the
other references to include these features. “Non-obviousness cannot be
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Application 12/958,222
established by attacking references individually where the rejection is based
upon the teachings of a combination of references [].” In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants additionally contend that Immerman teaches away from
the present invention because the base of Immerman is rigid and fixed to a
container. Br. 6. Appellants’ arguments fail to recognize that the Examiner
relies not on the teaching that the preferred base material in Immerman is
metal, but rather on the teaching to construct the container of a plastic
material that is flexible. The Examiner proposes to make the entire Phipps
device of a similarly flexible material. See Final Act. 3. Phipps itself
discloses that the components of its bin can be made of any suitable plastic.
Phipps, col. 2,11. 47—48. Further, in view of the fact that Immerman
additionally discloses making both the container and base from plastic,
Immerman would not be seen as discrediting, criticizing, or disparaging the
use of a plastic material as a base. See Immerman, col. 5,11. 18—23 (“In
another embodiment, both container portion 3 and base 5 could be made
from plastic.”). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Appellants further argue that the disclosure in Immerman of using a
plastic material that is “hard, rigid but somewhat flexible,” does not mean
that the material, when used as a flexible stabilizing element, would be
capable of moving over rigid bubbles, and that a stated object of Immerman
is to connect the base portion and the upper portion in a “secure manner.”
Id. at 6—7. This, however, is nothing more than a bald assertion unsupported
by evidence or persuasive technical reasoning. As the Examiner advises,
when a material is flexible, as taught by Immerman, it would be capable of
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Application 12/958,222
flexing over rigid structures. Ans. 9. This would include the bubbles
present as a result of the modification made in view of Dalitz.
Appellants’ contention that the Examiner’s position is flawed because
a stated object of Immerman is to connect the base portion and the upper
portion in a “secure manner,” is unpersuasive. Appellants’ continued focus
on the base portion of Immerman simply fails to recognize what aspects of
Immerman are relied on by the Examiner in proposing to modify Phipps, as
discussed above.
Appellants additionally contend that the Examiner uses the teaching
of Appellants’ invention to take an expensive and complex stabilized
container of Phipps and modify it using a misread disclosure of Immerman
and the nonanalogous teaching of Dalitz. Br. 7.
We have already addressed why we find Appellants’ argument
directed to Immerman to not be persuasive. Appellants’ argument that
Dalitz is non-analogous art is unpersuasive. As the Examiner explains, these
references are drawn to containers with reinforcing members. Ans. 10. As
such, Phipps, Immerman, and Dalitz are all in the field of Appellants’
endeavor and are reasonably pertinent to the particular problem with which
Appellants were concerned. See id.
None of Appellants’ arguments apprise us of Examiner error in
rejecting claim 1. Accordingly, we sustain the rejection of claim 1 as
unpatentable over Phipps, Dalitz, and Immerman. Claims 2—A fall with
claim 1.
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Application 12/958,222
Claims 1—4—Obviousness—Phipps/Matsui/Immerman
Appellants argue claims 1—4 as a group. Br. 6—7. We take claim 1 as
representative of this group, and claims 2-4 stand or fall with claim 1.
Appellants rely on the same arguments as were presented for the
combination of Phipps and Immerman. See id. For the reasons discussed
above with respect to the combination of Phipps, Dalitz, and Immerman, we
do not find the combination of Phipps, Matsui, and Immerman to be
deficient.
Accordingly, we sustain the rejection of claim 1 as unpatentable over
Phipps, Matsui, and Immerman. Claims 2—4 fall with claim 1.
DECISION
The rejections of claims 1—4 as being unpatentable are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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