Ex Parte Koefelda et al

Patent Trial and Appeal Board

Jun 26, 2018

13117195 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/117, 195 05/27/2011
26096 7590 06/28/2018
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Gerald R. Koefelda
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.
10436PUS1;67080-508PUS1 7113
EXAMINER
WEINERTH, GIDEON R
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
06/28/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD R. KOEFELDA, ALAN J. COOK,
and MAURICIO D. CAVALCANTE
Appeal2017-007739
Application 13/117, 195
Technology Center 3700
Before JOHN C. KERINS, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gerald R. Koefelda et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from a final rejection of claims 2--4 and 6-25. 1 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Claims 1 and 5 are pending in the application, however, Appellants do not
appeal the rejections of those claims. Appeal Br. 10; Reply Br. 5.
Appeal2017-007739
Application 13/117, 195
THE INVENTION
Appellants' invention is directed to a collapsible container. Claims 1,
2, and 16, reproduced below, are illustrative:
1. A collapsible container comprising:
a base;
a plurality of walls, including a first wall, the plurality of walls
movable between an upright position generally transverse to the
base and a collapsed position on the base; and
a support movable between a first position and a second position
relative to the first wall, wherein an identical container would
stack on the collapsible container at a first height when
the support is in the first position and the plurality of walls are in
the upright position and at a second height when the support is in
the second position and the plurality of walls are in the
upright position.
2. The collapsible container of claim 1 wherein the
support is pivotably connected to the first wall, wherein the first
position is a retracted position and wherein the second position
is an extended position, wherein the support is movable toward
an interior of the container away from the first wall from the
retracted position toward the extended position.
16. A collapsible container comprising:
a base, a periphery of the base of the collapsible container
includes a plurality of alternating recesses and projections, the
projections projecting laterally in a direction parallel to the plane
of the base relative to the recesses; and
a plurality of walls pivotably connected to the base and
collapsible onto the base, wherein the plurality of walls include
at least one wall connected by a hinge to the base, wherein the
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Application 13/117, 195
hinge is located in one of the plurality of projections of the
periphery of the base.
REJECTIONS
The Examiner rejects:
(i) claims 16-18, 23, and 24 under 35 U.S.C. § 102(b) as being
anticipated by Foy (US 4,591,065, issued May 27, 1986);
(ii) claims 1-5, 9-11, and 21under35 U.S.C. § 103(a) as being
unpatentable over Pamall (US 7,556,166 B2, issued July 7, 2009); and
(iii) claims 6-8, 12-20, and 23-25 under 35 U.S.C. § 103(a) as being
unpatentable over Pamall in view ofiwahara (US 7,063,223 B2, issued June
20, 2006).
ANALYSIS
Rejection (i) - claims 16-18, 23, and 24 over Foy
The Examiner finds that Foy discloses all limitations recited in claim
16. Final Act. 2. The Examiner finds that Figure 2 of Foy shows
projections 60, 70, and 90, and that these projections extend in a length
direction and a width direction, parallel to the plane of the base of the
container. Final Act. 2-3; Ans. 3--4.
Appellants argue that the container of the Foy reference does not
include projections projecting laterally in a direction parallel to the plane of
the base relative to the recesses. Appeal Br. 8. 2 Appellants contend that the
term "project" means to extend outward beyond something else or to
protrude. Id. at 9.
2 Reference herein to the Appeal Brief is to the Substitute Appeal Brief dated
December 19, 2016.
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Application 13/117, 195
The Examiner does not indicate what recesses in the container of Foy
correspond to the recesses recited in claim 16. If the spaces between the
projections are asserted as corresponding to the claimed recesses, projections
60, 70, and 90 project upward relative to these recesses in a direction
perpendicular to the plane of the base. In contrast, although the projections
also extend in the length and width direction parallel to the plane of the base,
as indicated on page 4 of the Examiner's Answer, the projections do not
project relative to the recesses in these directions, as required by claim 16.
Projections 60, 70, and 90 in the Foy reference merely extend in the length
and width directions but the Examiner's findings do not establish adequately
that the projections protrude from or extend beyond any specific recesses of
Foy in the length or width directions, and therefore the configuration of Foy
does not disclose all limitations of claim 16.
In view of the foregoing, the rejection of claim 16 is not sustained.
The rejections of claims 17, 18, 23, and 24, over Foy are not sustained for
the same reasons.
Rejection (ii)- claims 1-5, 9-11, and 21 over Parnall
As noted previously, Appellants expressly state that the rejection of
claim 1 is not appealed. Appeal Br. 10. The rejection of claim 1 is
summarily sustained. Appellants also do not present separate arguments for
claims 9, 10, and 21, which depend from claim 1, and those claims thus fall
with claim 1.
Claim 2
The Examiner cites two embodiments of Pamall regarding the
limitations of claim 2. Final Act. 4. The obviousness rejection states,
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Application 13/117, 195
Parnall discloses an alternate embodiment in Figures 1 and 2
wherein alternate supports (wall members 35 and 40) are
pivotably connected to pivotably collapsible wall members
(Element 25). As these pivoting support walls are also used to
adjust the height of the collapsible crate, a person having
ordinary skill in the art would recognize using such pivoting
support in place of the slide extension support members with
stacking ability seen in Parnall Figures 6-7.
Final Act. 4.
Appellants argue that the rejection does not account for the support
being movable toward an interior of the container away from the first wall
from the retracted position toward the extended position. Appeal Br. 10.
It is unclear how the Examiner proposes to modify the embodiment(s)
of Parnall so as to have a pivotably connected support which meets the
requirements of claim 2. The Examiner does not specify which position of
the pivotably connected walls of Parnall corresponds to the retracted
position and which corresponds to the extended position. It appears that
moving a pivoting wall such as that seen in Figure lB of Parnall from a
retracted position toward an extended position would move the wall away
from the interior of the container, not toward the interior of the container.
The Examiner also fails to provide any reason as to why it would have
been seen as obvious to replace features of a second embodiment of Parnall
with features from a first embodiment in order to achieve a function that is
already achieved by the second embodiment without modification.
Furthermore, it does not appear that the modified structure described by the
Examiner would meet the limitations present in claim 2 while also meeting
the limitations in claim 1, from which claim 2 depends, directed to stacking
at first and second heights based on the first and second positions of the
support. The Examiner cites the sliding upper walls (140, 150, 240, 250) as
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Application 13/117, 195
corresponding to the support recited in claim 1, but the proposed
modification to use pivoting walls "in place of' the sliding members as
contemplated in the rejection of claim 2 eviscerates the reasoning employed
in rejecting claim 1.
The Examiner has thus not accounted for all of the limitations of
claim 2, and has not provided an articulated rationale based on rational
underpinning for modifying Pamall to reach all such limitations. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In view of the
foregoing, the rejection of claim 2 is not sustained. The rejections of claims
3 and 4 are not sustained for the same reasons.
Claim 11
The Examiner finds that two of the embodiments of Pamall account
for the limitations of claim 11, stating,
Pamall discloses both slidable and pivoting support walls
connected to the first walls in two separate embodiments. A
person having ordinary skill in the art would be capable of
providing other types of movable connections between the wall
and the support wall.
Final Act. 4. The Appellants argue that it is not clear how the embodiments
of Pamall are combined. Appeal Br. 11.
We cannot determine that the Examiner has provided an articulated
rationale based on rational underpinning for modifying the Pamall reference.
See KSR, 550 U.S. at 418. The rejection of claim 11 is merely a statement
that the claimed invention is within the capabilities of one of ordinary skill
in the art, which the statement is insufficient to show that there would have
been an apparent reason to combine the claim elements. See In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984) (mere fact that prior art could be
modified does not make modification obvious unless prior art suggests
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Appeal2017-007739
Application I 3/1 I 7, I 95
desirability of the modification). Additionally, the Examiner does not
provide an explanation of how "providing other types of movable
connections" would lead to a device having the configuration of claim I I,
and does not even identify what "other types of connections" are
contemplated.
The rejection of claim I I is therefore not sustained.
Rejection (iii) - claims 6-8, 12-20, and 23-25 over Parnall in view of
Iwahara
Appellants do not present arguments directed to the rejection of
claims 6 and 8, which depend from claim I. Appellants are thus deemed to
have waived any arguments that could have been made with respect to these
claims, and the rejection is summarily sustained.
Claim 7
The Examiner finds that projections 25 of Iwahara correspond to the
projections of claims 6 and 7, and that it would have been obvious to provide
these features to the container of Pamall. Final Act. 5. Regarding the
language of claim 7 defining the position of the hinge, the Examiner finds,
"Iwahara discloses [that] the hinge is contained within one of the plurality of
projections (Elements HI and I 7) of the periphery of the base." Final Act.
5; Ans. 8. Appellants argue that the hinges of Iwahara are not contained
within the projections as required by claim 7. Appeal Br. I2.
Appellants' have the better position. It is not clear from the figures of
Iwahara or the Examiner's explanation as to how the hinge portion HI or
protruding portion I 7 of I wahara can be considered to be contained within
projections 25. Protruding members 23 and 25 are shown in Figure 2 of
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Application 13/117, 195
I wahara as being located on the lower side of bottom portion 19 of the
container, whereas hinge portion HI and protruding portion 17 are located
on an inner periphery of shoulder 11. The Examiner does not provide any
explanation or any claim interpretation which accounts for the "contained
within" language of claim 7.
The rejection of claim 7 is therefore not sustained. For the same
reason, the rejections of claims 19 and 20 are not sustained.
Claim 12
Claim 12 is independent. The Examiner relies on I wahara as teaching
projections, which we assume to be projections 25 as specified in the
rejection of claim 7 discussed above, as corresponding to the projections
recited in claim 12, and that it would have been obvious to provide these
features to the container of Pamall. Final Act. 6.
Appellants argue that the rejection does not account for the claim
limitations requiring that identical containers be stackable at a first stacking
height, and at a different, second stacking height when the containers are at
an orientation that is 180Q from a first orientation. Appeal Br. 13.
Appellants contend that the claim language "configured such that" defines
that the recesses and projections cause the two stacking heights described in
the claim to be attained. Appeal Br. 13 (emphasis omitted).
The Examiner responds that "configured such that" does not imply
causality, and that "any possible means of varying the heights between two
180 degree offset orientations may suffice to meet the limitations of the
claim." Ans. 9. In explaining this finding, the Examiner points out that the
disclosure of the present application has multiple embodiments that vary the
heights of two stacked containers via different structures. Ans. 9.
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The Examiner employs an unreasonably broad interpretation of the
claim language. The claim specifically refers to the configuration of the
recesses and projections, and is therefore clearly not defining some other
structure. The Examiner, in making reference to other, non-claimed
structures, in effect, inappropriately ignores the phrase "configured such
that" in claim 12. This claim terminology links the stacking function to the
configuration of the recesses and projections. That the Specification
discloses one or more other embodiments that achieve different stacking
heights in different ways than that set forth in claim 12 is of no moment;
there is no rule that an independent claim is to be interpreted to encompass
every disclosed embodiment. Claim 12 calls for recesses and projections of
such a structural configuration that stacking of an identical container creates
two stacking heights respectively at two positions rotated 180 degrees from
each other. We cannot find on the record before us that Pamall and Iwahara
account for this claim limitation.
For these reasons, the rejection of claim 12 is not sustained. The
rejections of claims 13-15 and 22, which depend from claim 12, are also not
sustained.
Claim 16
Independent claim 16, like claim 7 discussed above, requires at least
one wall to be connected to a base via a hinge located in one of a plurality of
projections at a periphery of the base. The Examiner takes the same position
as with claim 7, finding that projections 25 oflwahara correspond to the
projections of claim 16, and that it would have been obvious to provide these
features to the container of Pamall. Final Act. 6. The Examiner further
states, "I wahara quite clearly shows a hinge member (H 1) within one of the
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Application 13/117, 195
plurality of projections of the periphery of the base," and provides an
annotated version of Figure 3 of Iwahara identifying the portion of the
illustration that purports to provide support for this position. Ans. 10.
Appellants again argue that the rejection fails to account for the limitations
of claim 16 because it does not explain how the hinge of Iwahara is located
in one of the plurality of projections. Appeal Br. 13.
Even with the aid of the annotated version of Figure 3, it remains
unclear how hinge portion HI in Figure 1 or Figure 3 of Iwahara could be
considered to be located in a projection, either in Iwahara itself, or in Pamall
as proposed to be modified by I wahara. The Examiner provides a lead line
pointing to reference numeral H 1, which in tum has a lead line pointing to a
hinge, but we do not understand how that hinge is regarded as being located
in some projection. There is thus no basis in the current record to conclude
that the combination of Pamall and Iwahara accounts for the hinge being
located in one of the plurality of projections of the periphery of the base.
The rejection of claim 16 is not sustained. For the same reasons, the
rejections of claims 17, 18, and 23-25, which depend from claim 16, are not
sustained.
DECISION
We reverse the rejections of claims 2--4, 7, 11-20, and 22-25.
We affirm the rejection of claim 5.
The rejections of claims 1, 6, 8-10, and 21 are summarily affirmed.
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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-IN-PART
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