Ex Parte Epstein

Board of Patent Appeals and Interferences

Nov 2, 2010

11607561 (B.P.A.I. Nov. 2, 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.
11/607,561 11/30/2006 Marc I. Epstein 6818/71882 1289
23432 7590 11/02/2010
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
RAMIREZ, RAMON O
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
11/02/2010 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 MARC I. EPSTEIN
____________________

Appeal 2010-008972
Application 11/607,561
Technology Center 3600
____________________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-008972
Application 11/607,561

STATEMENT OF THE CASE
Marc I. Epstein (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 28, 29, 31, 39, 43-45 and 47-49. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to a tray assembly that is
compatible with different vehicle cup holders (Spec. 2: 11-14).
Claim 482, reproduced below, is representative of the subject matter
on appeal.
48. An assembly for releasably affixing a conveying
accessory to an open socket formed in or as part of a supportive
console, the assembly comprising:
a panel configured to enable an opening therethrough
immediately above and aligned with but not part of a structure
defining the open console socket;
a plurality of flaps scribed in a surface of said panel to
have a common fold line boundary outlining said opening, said
flaps being downwardly foldable along said fold line boundary
by an adapter to depend below said panel and to define an
aperture having a variable effective diameter through said panel
to enable said adapter and flaps to fit within any of a plurality
of open console sockets the diameters of which are within a
range of from less than to approximately equal to said opening
defined by said common fold line boundary, said flaps being
releasably secured by said adapter to a perimeter of the open
console socket whereby said flaps provide the principal

2 In a communication dated March 11, 2010, it was stated that the
“[a]mendment to claim 48 filed January 29, 2010 would be entered and
considered for appeal.” Thus, claim 48, as amended January 29, 2010, is
being treated in this appeal.
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Appeal 2010-008972
Application 11/607,561

structural support to counteract destabilizing forces tending to
disorient said panel relative to said console socket.

THE REJECTION
The following rejection by the Examiner is before us for review:
Claims 28, 29, 31, 39, 43-45 and 47-49 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hemingway (US 6,988,614 B2, issued
Jan. 24, 2006) in view of Chandler (US 5,088,673, issued Feb. 18, 1992).

ISSUE
The issue before us is whether the Examiner erred in concluding that
the combined teachings of Hemingway and Chandler would have led a
person having ordinary skill in the art to an assembly for releasably fixing a
conveying accessory to an open socket, as called for in independent claim 48
(App. Br. 16-17).

ANALYSIS
Appellant contends that Hemingway does not “describe or suggest a
device in which flaps [44, 46] depending from a tray are capable of being
engaged with console socket walls” (Reply Br. 7). Appellant contends that
“[w]hile the adapter of Chandler could support the Hemingway et al. tray,
the Hemingway et al. flaps [44, 46] cannot be anchored to the walls of a
console socket” (id.). Appellant contends that in Hemingway, to permit the
sectors 44, 46 to engage the walls of a console would require the removal of
the lower port 38 (App. Br. 20).
The Examiner found that Hemingway describes “a tray having an
aperture (64) formed by slits defining flaps (44) for receiving a container”
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Appeal 2010-008972
Application 11/607,561

(emphasis added) (Ans. 3), (2) Chandler describes “an adapter for receiving
a container” (id.), and (3) that ‘[t]he console and its open socket are
definitely not claimed” (Ans. 4).
The Examiner concluded that it would have been obvious to a person
having ordinary skill in the art to modify the teachings of Hemingway by
providing Hemingway with “an adapter . . . to facilitate the retention of the
container within the adapter” as taught by Chandler (Ans. 3).
The Examiner further concluded (1) that the claimed cooperation of
the adapter and the console socket is functional language, and (2) that as
long as the combined teachings of Hemingway and Chandler are capable of
performing the functional language the rejection is proper (Ans. 4).
Claim 48 calls for, inter alia, “said flaps being releasably secured by
said adapter to a perimeter of the open console socket.”
Hemingway describes a folding food tray 10, having a port 38 and a
container port 40, wherein the container port 40 includes sectors 44, 46 (col.
5, l. 43-col. 6, l. 19). Hemingway shows in Figure 2, container port 40 being
in vertical alignment with and spaced above port 38. Hemingway describes
that inserting a beverage container into container port 40 forces the sectors
44, 46 to pivot so that they grasp the container (col. 6, ll. 43-48).
Hemingway describes that “[p]referably, the sectors [44, 46] are long
enough so that when fully deflected by the presence of a beverage container
in port 40 they project through the lower port 38” (col. 6, ll. 48-51).
We find that since Hemingway’s sectors 44, 46 project through lower
port 38, sectors 44, 46 are limited in their pivotal movement by the lower
port 38. We conclude that when Hemingway is modified by the teachings of
Chandler, as set forth supra, that is, when an adapter, as described by
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Appeal 2010-008972
Application 11/607,561

Chandler, is inserted into Hemingway’s sectors 44, 46, the pivotal
movement of sectors 44, 46 would be limited by the lower port 38. Thus,
Hemingway’s sectors 44, 46 would not be capable of being secured to an
open console socket by the adapter. Accordingly, Hemingway’s sectors 44,
46 are not releasably secured by the adapter to a perimeter of the open
console socket, as called for in independent claim 48.
Thus, we are constrained to reverse the rejection of independent claim
48, and dependent claims 28, 29, 31, 39, 43-45, 47 and 49.

CONCLUSION
The Examiner has erred in concluding that the combined teachings of
Hemingway and Chandler would have led a person having ordinary skill in
the art to an assembly for releasably fixing a conveying accessory to an open
socket, as called for in independent claim 48.

DECISION
The decision of the Examiner to reject claims 28, 29, 31, 39, 43-45
and 47-49 is reversed.

REVERSED

JRG

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