Ex Parte Edler

Patent Trial and Appeal Board

Dec 19, 2018

15412855 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/412,855 01/23/2017
85444 7590 12/19/2018
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
FIRST NAMED INVENTOR
Edward M. Edler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
221.248 4094
EXAMINER
DONDERO, WILLIAM E
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
12/19/2018 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 EDWARD M. EDLER
Appeal2018-002058
Application 15/412,855 1
Technology Center 3600
Before STEFAN STAICOVICI, BRETT C. MARTIN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Edward M. Edler ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision in the Final Office Action (dated Aug. 28,
2017, hereinafter "Final Act.") rejecting claims 1-5.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
1 Plews, Inc. is the Applicant and is identified as the real party in interest in
Appellant's Appeal Brief (filed Oct. 26, 2017, hereinafter "Appeal Br.").
Appeal Br. 1.
2 Claim 6 is cancelled. See Appeal Br. 9 (Claims App.).
Appeal2018-002058
Application 15/412,855
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellant's invention is related "to a device for coiling, storage and
payout of cable, hose, cord and wire." Spec. 1.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A device for the coiling, storage and payout of cable, hose,
cord and wire, said device comprising:
a bucket comprising a storage space defined by a round
bucket bottom, a peripheral wall cylindrically extending from
said round bucket bottom and terminating in a round open top,
said bucket further characterized as having a bucket
longitudinal axis passing through its geometric center;
a spool comprising a substantially cylindrical core,
spaced apart top and bottom flanges and a spool longitudinal
axis passing through its geometric center;
a nub extending between said bottom flange and said
bucket bottom at said spool and bucket longitudinal axes;
said bucket further comprising an opening in said
peripheral wall sized to accommodate passage of said cable,
hose, cord and wire, said opening having elongated sides
extending longitudinally and substantially parallel to said
bucket longitudinal axis extending approximately the distance
between said top and bottom flanges and relatively low friction
contour rails positioned along said elongated sides;
a handle secured to said top flange;
wherein when said spool is confined within said storage
space, said bottom flange is spaced from said bucket bottom by
said nub, said bucket longitudinal axis aligns with said spool
longitudinal axis and said handle extends toward said round
open top and when cable, hose, cord or wire is withdrawn from
said cylindrical core through said opening, said bottom flange
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Application 15/412,855
remains spaced from said bucket bottom by said nub wherein
said top and bottom flanges are sized with respect to said
storage space such that when said cable, hose, cord and wire are
withdrawn from said spool through said opening in said
peripheral wall, no portion of said bottom flange comes into
contact with said round bucket bottom.
REJECTIONS
I. The Examiner rejects claims 1, 2, 4, and 5 under 35 U.S.C. § 103 as
being unpatentable over Barberg (US 5,915,641, iss. June 29, 1999),
Kawabe et al. (US 6,145,781, iss. Nov. 14, 2000, hereinafter
"Kawabe"), and DeLuca et al. (US 8,052,078 B2, iss. Nov. 8, 2011,
hereinafter "DeLuca").
II. The Examiner rejects claim 3 under 35 U.S.C. § 103 as being
unpatentable over Barberg, Kawabe, DeLuca, and Blunt et al. (US
2012/0168554 Al, pub. July 5, 2012, hereinafter "Blunt").
ANALYSIS
Rejection I
Independent claim 1 requires, inter alia, "[ spool] top and bottom
flanges [that] are sized with respect to said [bucket] storage space such that
when said cable, hose, cord and wire are withdrawn from said spool ... no
portion of said bottom flange comes into contact with said round bucket
bottom." Appeal Br. 8 (Claims App.).
The Examiner finds that Barberg discloses a device for coiling a cable
including, inter alia, a bucket 12 having a bottom 22, an open top 28, and an
opening 26 in the peripheral wall, a spool 18 having a cylindrical core 44, a
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Application 15/412,855
top flange 46, and a bottom flange 42, and a bearing 16 located between
bottom flange 42 and bucket bottom 22. See Final Act. 2-3; see also
Barberg, Fig. 1. The Examiner further finds that "the top and bottom flanges
[ of Barberg] are sized with respect to the storage space such that when the
cable, hose, cord, and wire are withdrawn from the spool ... no portion of
the bottom flange comes into contact with the round bucket bottom." Final
Act. 3.
As the Examiner finds that Barberg "does not expressly teach a nub,"
the Examiner looks to Kawabe, which discloses a device for coiling a cable
including a nub 41 that extends between bottom flange 30 and container
bottom 50 (support)3• Id.; see also Kawabe, Fig. 4. Thus, the Examiner
concludes that "it would have been obvious to one of ordinary skill in the art
... to substitute the nub of Kawabe ... for the bearing of Barberg to
simplify the device, [to] make it easier to manufacture, and [to] make it
cheaper to manufacture." Final Act. 3.
Appellant argues that the combined teachings of Barberg and Kawabe
fail to disclose that nub 41 precludes frictional contact between bottom
flange 42 and bucket bottom 22 "by judicially sizing the top and bottom
flanges [ 46, 42] with respect to the storage space [32] as to prevent the
bottom flange [ 42] from contacting the bucket bottom [22] during payout of
the cable, hose, cord or wire." Appeal Br. 5. According to Appellant, the
Examiner's position that "[t]he bottom flange [42] would not pivot enough
to contact the round bucket bottom [22]" when substituting nub 41 of
3 Parenthetical nomenclature refers to Kawabe.
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Application 15/412,855
Kawabe for bearing 16 of Barberg is "an inherency rejection without any
basis whatsoever." Id. at 6 (emphasis added).
We agree with Appellant that the Examiner is relying on a theory of
inherency to establish that in the device of Barberg, as modified by Kawabe,
sizing of top and bottom flanges with respect to bucket storage space is such
that "no portion of ... bottom flange [ 42] comes into contact with ... bucket
bottom [22]."
To establish inherency, the extrinsic evidence
"must make clear that the missing descriptive matter is
necessarily present in the thing described in the
reference, and that it would be so recognized by persons
of ordinary skill." "Inherency, however, may not be
established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of
circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
In this case, the Examiner correctly finds that "neither Barberg nor
Kawabe discloses the bottom flange coming into contact with the respective
container bottoms." Final Act. 5; Examiner's Answer 3 (dated Nov. 30,
2017, hereinafter "Ans."). The Examiner is also correct that Barberg's
bearing 16 "maintains the space between the bottom flange [ 4 2] and the
bottom [22] of the bucket" and Kawabe's nub 41 maintains base 30 spaced
apart from support 50 to "'minimize[] friction generated by rotation of the
coil 20 and base 30'." Ans. 3 (citing Kawabe, col. 3, 11. 7-10).
Nonetheless, although Barberg discloses preventing contact from
occurring during rotation between bottom flange 42 and bucket bottom 22
and Kawabe discloses preventing contact from occurring during rotation
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between base 30 and support 50, this does not mean that such features are
necessarily based on sizing top and bottom flanges with respect to bucket
storage space, as called for by claim 1. We agree with Appellant that "there
is no recognition [in the applied prior art] that the bottom flange touching the
bucket bottom presents a problem." Reply Brief2 (filed Dec. 18, 2017,
hereinafter "Reply Br.").
Appellant is correct that Barberg' s bearing 16 "would prevent such
contact" from occurring. Appeal Br. 6. As Barberg specifically discloses
that "bearing unit 16 rotatably supports spool 18 above base 22 of bucket
12," Barberg does not necessarily disclose preventing contact from
occurring during rotation between bottom flange 42 and bucket bottom 22
based on sizing top and bottom flanges with respect to bucket storage space,
as called for by claim 1. See Barberg, col. 3, 11. 24--25 ( emphasis added).
Rather, in Barberg's bucket, contact between bottom flange 42 and bucket
bottom 22 is prevented during rotation by bearing unit 16.
We also do not agree with the Examiner's position that because in
Figure 2 of Barberg the "top and bottom flanges are space[ d] a very small
distance from the interior surface of the [bucket] side wall," when
substituting nub 41 of Kawabe for bearing 16 of Barberg, even if spool 18
pivots, motion of bottom flange 42 "would stop due to contact of the side
wall [of bucket 12]" and, hence, bottom flange 42 would not contact bucket
bottom 22. Final Act. 5. Appellant is correct that because there is "no
indication that Barberg's drawings ... [is] created to any particular scale,"
nor that particular dimensions are taught by either Barberg or Kawabe, the
Examiner's determination that Kawabe's nub 41, when substituted for
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Barberg's bearing 16, would prevent contact from occurring during rotation
between bottom flange 42 and bucket bottom 22, requires speculation on the
Examiner's part. See Appeal Br. 5---6.
Lastly, with respect to the disclosure of Kawabe, we agree with
Appellant that it "fail[s] to include an upper flange." Appeal Br. 5. We
further agree with Appellant that because the purpose of Kawabe' s device is
to store cable, "there is no need for an upper flange corresponding to base
30." Id. at 4. Moreover, even though Kawabe's nub 41 "minimizes the
friction generated by rotation of coil 20 and base 30," this does not mean
that it necessarily prevents contact from occurring during rotation between
base 30 and support 50. Kawabe, col. 3, 11. 7-10. Accordingly, Kawabe
does not disclose explicitly or inherently sizing of top and bottom flanges
with respect to bucket storage space, as called for by claim 1.
In conclusion, because neither Barberg nor Kawabe discloses
explicitly or inherently sizing of top and bottom flanges with respect to
bucket storage space to preclude frictional contact between a bottom flange
and a bucket bottom, as called for by claim 1, the combined teachings of
Barberg and Kawabe likewise fail to disclose such a feature. Therefore, as
the Examiner does not employ the disclosure of DeLuca to remedy the
deficiency of the Barberg and Kawabe combination (see Final Act. 3), for
the reasons discussed supra, we do not sustain the rejection under 35 U.S.C.
§ 103 of claims 1, 2, 4, and 5 as unpatentable over Barberg, Kawabe, and
DeLuca.
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Rejection II
The Examiner's use of the Blunt disclosure does not remedy the
deficiency of the Barberg, Kawabe, and DeLuca combination discussed
supra. See Final Act. 4--5. Therefore, for the reasons discussed above, we
also do not sustain the rejection of claim 3 over the combined teachings of
Barberg, Kawabe, DeLuca, and Blunt.
SUMMARY
The Examiner's decision to reject claims 1-5 under 35 U.S.C. § 103 is
reversed.
REVERSED
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