Ex parte FENTON et al.

Board of Patent Appeals and Interferences

May 8, 1998

08569554 (B.P.A.I. May. 8, 1998)

Application for patent filed December 8, 1995. According to1
appellants, this application is a continuation of application 08/142,580,
filed October 25, 1993, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GARY L. FENTON and GERALD A. SILL
_____________
Appeal No. 97-1948
Application 08/569,5541
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge,
MEISTER and FRANKFORT, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3 through 5, 8, 9, 14, 15, 20, 21, 24 and
26 through 32, which are all of the claims remaining in this
application. Claims 2, 6, 7, 10 through 13, 16 through 19, 22, 23
and 25 have been canceled.
Appeal No. 97-1948
Application 08/569,554
2
Appellants' invention relates to an intermodal shipping
container of the type widely used in the freight hauling industry
where different modes of transport (e.g., sea, rail and roadway)
are used to ship the containers from one point to another. As
explained on pages 2 through 5 of the specification, the
intermodal shipping container that is the subject of the present
invention has a non-standard arrangement of lock-receiving
fittings or connectors and stacking points which affords the
container the capacity to be stacked in a variety of double-stack
arrangements with other containers of different lengths. Claims
1, 9, 20, 26 and 31 are representative of the subject matter on
appeal and a copy of those claims may be found in the Appendix to
appellants' brief.
The prior art references of record relied upon by the
examiner as evidence of obviousness of the claimed subject matter
are:
Yurgevich 4,844,672 Jul. 04, 1989
Grogan 5,072,845 Dec. 17, 1991
Claims 1, 3 through 5, 8, 9, 14, 15, 20, 21, 24 and 26 through 32
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Yurgevich in view of Grogan.
Appeal No. 97-1948
Application 08/569,554
3
Reference is made to the examiner's answer (Paper No. 20) for
the examiner's reasoning in support of the above-noted rejection.
Appellants' arguments against the examiner's rejection are found in
appellants' brief (Paper No. 19, filed September 18, 1996).
OPINION
Our evaluation of the obviousness issues raised in this appeal
has included a careful assessment of appellants' specification and
claims, the applied prior art references, and the respective
positions advanced by appellants and the examiner. As a consequence
of our review, we have reached the conclusion that the examiner's
rejection of the appealed claims before us on appeal will not be
sustained. Our reasons follow.
Looking at the examiner's combination of Yurgevich and
Grogan, we share appellants' view (brief, pages 6-16) that even
if these references are combined in the manner urged by the
examiner, the resulting intermodal shipping container would not
be the same as that now claimed by appellants in the claims
before us on appeal. The intermodal container resulting from
providing the container of Yurgevich with fittings at the corners
of each frame (18, 26) so as to define four stacking points as in
Appeal No. 97-1948
Application 08/569,554
4
the container of Grogan, does not provide a container as claimed
by appellants, since the additional, lock-receiving fittings (50)
pointed to by the examiner in Yurgevich (as modified) are not
"spaced from said stacking points so as to be independent
thereof," as required in appellants' independent claims 1, 9, 20,
26 and 31 on appeal. Based on appellants' disclosure (pages 5, 10
and 11) and the arguments made in the brief (pages 8-11), we
understand the language of the claims on appeal to require the
additional lock-receiving fittings (claims 1, 20, 26 and 31) and
the "pair of said connectors in said bottom wall" which are set
forth in claim 9 as being "spaced from said stacking points and
are independent thereof," to be "not associated with stacking
points" of the container (specification, page 5) and/or "not
located at a stacking frame and... therefore not associated with
vertical stacking posts or an upper crossmember" (specification
pages 10-11). Accordingly, we interpret the language "spaced
from said stacking points so as to be independent thereof" in
claims 1, 20, 26 and 31, and similar language in claim 9 on
appeal, to be -- spaced from all of said stacking points of said
container so as to be independent of all of said stacking points
thereof --. It is clear that neither Yurgevich nor Grogan teach
Appeal No. 97-1948
Application 08/569,554
5
or suggest such an arrangement of additional lock-receiving
fittings or connectors.
Moreover, we observe that the container of Yurgevich (as
modified) does not have "exactly three stacking points" as
required in independent claims 1, 20 and 31 on appeal. Contrary
to the position taken by the examiner (answer, page 6), it is our
opinion that the language "exactly three stacking points" is
limiting and does, as appellants have argued, require that the
container of appellants' claims 1, 20 and 31 have "only three
stacking points," no more and no less (see, e.g., brief, pages 13
and 14). Since, by the examiners own understanding, the container
of Yurgevich (as modified) has four stacking points, for this
additional reason, it clearly differs from the container defined
in appellants' independent claims 1, 20 and 31 on appeal.
For the reasons set forth on pages 15 and 16 of appellants'
brief, we find that the container resulting from the exminer's
combination of Yurgevich and Grogan also differs from the
intermodal container defined in appellants' claims 5, 20 and 30
on appeal. Like appellants (brief, page 15), we recognize that
the container of Yurgevich (as modified)
Appeal No. 97-1948
Application 08/569,554
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illustrates a tunnel section, but does not teach or
suggest providing additional lock-receiving fittings
independent of stacking locations between a front
stacking frame and an intermediate stacking frame
forming a rear end portion of the tunnel section
Based on the foregoing , the decision of the examiner
rejecting claims 1, 3 through 5, 8, 9, 14, 15, 20, 21, 24 and 26
through 32 under 35 U.S.C. § 103 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 97-1948
Application 08/569,554
7
Timothy M. Kelley
Michael, Best & Friedrich
100 East Wisconsin Avenue
Milwaukee, WI 53202-4108