Ex Parte Malone

Board of Patent Appeals and Interferences

Sep 28, 2010

10448096 (B.P.A.I. Sep. 28, 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.
10/448,096 05/29/2003 William E. Malone JR. 11, 555 4922
27284 7590 09/28/2010
EDWARD J. DARIN, INC.
301 EAST COLORADO BLVD, SUITE 518
PASADENA, CA 91101
EXAMINER
MORRIS, LESLEY D
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
09/28/2010 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 WILLIAM E. MALONE JR.
____________________

Appeal 2009-013535
Application 10/448,096
Technology Center 3600
____________________

Before: LINDA E. HORNER, WILLIAM F. PATE III, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, 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 2009-013535
Application 10/448,096
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 3-
5, 8-12, 21-25, and 27-29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a hand cart having a one-piece plastic
frame. Claim 5, reproduced below, is illustrative of the claimed subject
matter:
5. A two wheeled hand cart comprising a single frame
comprising a pair of side rails joined by spaced apart cross rails
constructed, formed and designed of a molded, engineered
polymer plastic in the form of a single, rigid unitary piece, one
end of each side rail being adapted for receiving and securing a
cart handle,
a cart handle mounted to said side rails at said handle
receiving ends,
a wheel axle mounted to said frame and extending
between the side rails adjacent the opposite ends of the frame
from the handle receiving ends,
individual wheel assemblies to opposite ends of said axle
on the outside of said side rails,
and a toe plate for receiving and carrying loads to be
transported by said hand cart secured to the single frame at the
opposite ends of the single frame from the handle receiving
ends for directly transmitting the loads applied to said single
frame.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mortenson
Stallbaumer
Ward
US 4,563,014
US 5,749,588
US 6,786,496
Jan. 7, 1986
May 12, 1998
Sep. 7, 2004
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REJECTIONS
Claims 3, 5, 8-11, 21-25 and 27-29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Stallbaumer, and Ward. Ans. 3.
Claims 4 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stallbaumer, Ward, and Mortenson. Ans. 6.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have determined that the applied prior art establishes the prima facie
obviousness of claims 3-5, 8, 10, 12/10, 24, 28 and 29. Appellant has
submitted a declaration by the inventor both in rebuttal of the prima facie
case and as secondary considerations regarding obviousness. Considering all
the evidence anew, it is our conclusion that the evidence for obviousness of
these claims out weighs the evidence against obviousness. Our analysis
follows.
We adopt the Examiner’s findings with respect to the Stallbaumer
reference contained on pages 3 and 4 of the Answer as our own. We merely
add the following for emphasis. Toe plate 16 of Stallbaumer is formed of
aluminum, and an inner stiffener plate 24 is welded thereto by weld 26. Col.
3, ll. 17-27. By virtue of this weldment, the inner stiffener plate 24 becomes
an integral or unitary feature of the toe plate 16. Therefore, when the toe
plate, including the stiffener plate 24, is fastened by a lap joint to the plastic
frame 12, it can be seen that the toe plate is directly connected to the frame.
We further note that Appellant’s claims on appeal do not further describe the
connection between the toe plate and the frame.
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Ward discloses a security cart-like wheel chair made entirely of
plastic. Appellant does not dispute that the frame of Ward is a one-piece
plastic member. We are in agreement with the Examiner that applying the
technique of a unitary frame with cross-members integrated into the side
rails as Ward teaches is merely a known technique to improve similar
devices in a predictable manner. Therefore, to construct the hand truck of
Stallbaumer as a unitary plastic frame would have been obvious to one of
ordinary skill.
Appellant argues that the Ward reference cannot serve as prior art
because the disclosure is not enabled. “A non-enabling reference may
qualify as prior art for the purpose of determining obviousness under 35
U.S.C. 103.” Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed.
Cir. 1991). See MPEP § 2121.01(II). “Even if a reference discloses an
inoperative device, it is prior art for all that it teaches.” Beckman
Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). In
this instance however, Ward is being relied upon to teach the very feature
Appellant argues is non-enabled, i.e., that it would have been obvious to
construct a cart as an integral unit. Therefore we will review Appellant’s
enablement argument.
The burden of rebutting the presumption of enablement of the cited
prior art by a preponderance of the evidence falls on the applicant. In re
Sasse, 629 F.2d 675, 681 (CCPA 1980).
Enablement under 35 U.S.C. § 112, first paragraph, requires the
specification to “contain a written description of the invention . . . in such
full, clear, concise, and exact terms as to enable any person skilled in the art
to which it pertains . . . to make and use the same . . ..” The test for
enablement is whether one skilled in the art would have to resort to undue
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experimentation in order to practice the invention. In re Angstadt, 537 F.2d
498, 503 (CCPA 1976). Undue experimentation analysis may include
consideration of: (1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state of the prior
art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims. In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). These factors are illustrative, and what
is relevant to an enablement determination depends upon the facts of the
particular case. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213
(Fed. Cir. 1991).
Appellant has not provided any evidence, directed specifically to
enablement, such as declarations, that establish that the cart-like chair
disclosed by Ward would not have been enabled to one of ordinary skill
without undue experimentation. Undue experimentation is the cornerstone of
lack of enablement. Failure to discuss undue experimentation is, by itself,
sufficient to dismiss Appellant’s contention that the Ward reference is not
enabling. We acknowledge that the Malone declaration, filed on November
24, 2008, does discuss the relative skill of those in the art and the nature of
the invention. However, these are merely two of the so-called Wands factors,
and, by themselves, without being placed in the context of undue
experimentation, fail to establish the Appellant-argued lack of enablement.
Therefore it is our determination that the Examiner’s reliance on the Ward
patent disclosure is well placed.
On page 19 of the Brief, Appellant cites In re Vaeck, 947 F.2d 488
(Fed. Cir. 1991) for the proposition that a teaching or suggestion to make the
claimed combination along with the reasonable expectation of success must
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be found in the prior art. The Supreme Court has reminded us that a rigid
insistence on teaching, suggestion or motivation is incompatible with its
precedent concerning obviousness. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 402 (2007). Appellant alleges that the combination of references is
based on a hindsight reconstruction of Appellant’s disclosure. We disagree.
Appellant has not disputed that Ward discloses a unitary plastic cart frame
which would have suggested that the frame of Stallbaumer be similarly
made. Appellant argues that no one has been able to construct a hand truck
that can move 600 pounds. However, the claims are not directed to any
specific weight or strength. Appellant further argues that no one has been
able to make a commercial hand truck using a single piece plastic frame
formed by plastic molding. Note that the patent statute does not require
commercial use of subject matter of a prior art disclosure for that disclosure
to qualify as a reference. In re Blake, 352 F.2d 309, 312 (CCPA 1965).
Appellant and the Examiner expend much energy arguing about the
fact that Appellant’s hand truck frame is disclosed as a molded, one-piece
article. Inasmuch as the claims are directed to an article or product, the
molded nature of Appellant’s frame is of little significance.
The patentability of a product does not depend on its method of
production. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citing In re
Pilkington, 411 F.2d 1345, 1348 (CCPA 1969)). If the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was
made by a different process. Id. (citing In re Marosi, 710 F.2d 799, 803
(Fed. Cir. 1983)); Johnson & Johnson v. W.L. Gore, 436 F.Supp. 704,
726 (D. Del. 1977); see also In re Fessmann, 489 F.2d 742, 744 (CCPA
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Application 10/448,096
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1974) and Amgen Inc. v. F. Hoffman-LA Roche Ltd, 580 F.3d 1340 (Fed.
Cir. 2009).
As the Court Customs and Patent Appeals stated in In re Brown,
459 F.2d 531, 535 (CCPA 1972) (internal citation omitted):
In order to be patentable, a product must be novel, useful
and unobvious. In our law, this is true whether the product is
claimed by describing it, or by listing the process steps used to
obtain it. This latter type of claim, usually called a
product-by-process claim, does not inherently conflict with the
second paragraph of 35 U.S.C. 112. That method of claiming is
therefore a perfectly acceptable one so long as the claims
particularly point out and distinctly claim the product or genus
of products for which protection is sought and satisfy the other
requirements of the statute. It must be admitted, however, that
the lack of physical description in a product-by-process claim
makes determination of the patentability of the claim more
difficult, since in spite of the fact that the claim may recite only
process limitations, it is the patentability of the product claimed
and not of the recited process steps which must be established.
We are therefore of the opinion that when the prior art discloses
a product which reasonably appears to be either identical with
or only slightly different than a product claimed in a
product-by-process claim, a rejection based alternatively on
either section 102 or section 103 of the statute is eminently fair
and acceptable. As a practical matter, the Patent Office is not
equipped to manufacture products by the myriad of processes
put before it and then obtain prior art products and make
physical comparisons therewith.

In effect, the USPTO bears a lesser burden of proof in making out a
prima facie case of obviousness in a product-by-process situation because of
its peculiar nature. Fessmann, 489 F.2d at 744. Once the examiner provides
a rationale tending to show that the claimed product appears to be the same
or similar to that of the prior art, although produced by a different process,
the burden shifts to applicant to come forward with evidence establishing an
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Application 10/448,096
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unobvious difference between the claimed product and the prior art product.
Marosi, 710 F.2d at 803.
We must emphasize that a product-by-process claim is not limited to a
claim that merely recites process steps. For example, consider In re Dike,
394 F.2d 584, 589 (CCPA 1968) wherein it was held that an article, a “blow-
molded” one-piece bottle, was in the nature of a product-by-process claim.
In fact, in this case, the Court Customs and Patent Appeals held that the line
of flashing formed on the article from the parting line of the two molds
could not serve to patentably distinguish over the article from the prior art
that was not blow-molded.
We further note that the Dike case is actually directed to an article
which was claimed as molded, but the article was found to be unpatentable
over an unmolded product that was the same as or similar to Dike’s claimed
molded bottle. Thus to the extent that Appellant has argued the molded
nature of the frame, and to the extent that Appellant has argued about the
level of skill in the art, particularly the level of skill as it applies to plastic
molding, these arguments are unavailing to show error on the part of the
Examiner with respect to Stallbaumer and Ward. In short, the prior art article
does not have to be molded to render Appellant’s claimed article, a molded
frame, unpatentable.
With respect to claim 3, we note that Stallbaumer discloses cross
members of C-shaped cross section. See Fig. 7. Therefore, the subject matter
of claim 3 is prima facie obvious in view of Stallbaumer and Ward.
For claim 4 and claim 12/10 we note that Mortenson discloses curved
cross members. See, e.g., col. 3, ll. 20-25. It would have been obvious to
manufacture the cross members of Stallbaumer in a curved configuration to
better accommodate cylindrical loads on the hand cart.
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Turning to the rejection of claims 9 and 11, Appellant’s argument at
page 22 of the Brief convinces us that there is no evidence for modifying the
side rails to be a C-shaped cross section when Stallbaumer shows an H or
wide-flange cross section. Accordingly, the rejection of claims 9 and 11 is
reversed.
Likewise, with respect to the Y-shaped truss cross members we are in
agreement with Appellant’s argument that there is no evidence that one of
ordinary skill would have found it obvious to modify the V-shaped members
of Stallbaumer to be the Y-shaped members as claimed. Accordingly, the
rejection of dependent claims 21-23 and 27 is also reversed.
As noted above, we have found the subject matter of some claims on
appeal to be prima facie obvious. Whenever obviousness is found with
respect to the subject matter on appeal, and an Appellant further furnishes
evidence of secondary considerations, it is our duty to reconsider the issue of
obviousness anew, carefully considering the evidence for obviousness with
respect to the evidence against obviousness. See, e.g., In re Eli Lilly & Co.,
902 F.2d 943, 945 (Fed. Cir. 1990). We are also mindful that the objective
evidence of non-obviousness in any given case may be entitled to more or
less weight depending on its nature and its relationship to the merits of the
invention. See Stratoflex, Inc. v. Aeroquip, Corp., 713 F.2d 1530, 1538 (Fed.
Cir. 1983). To be given substantial weight in the determination of
obviousness or non-obviousness, evidence of secondary considerations must
be relevant to the subject matter as claimed, and therefore we must
determine whether there is a nexus between the merits of the claimed
invention and the evidence of secondary considerations. Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985).
Appeal 2009-013535
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Appellant has furnished evidence both rebutting the prima facie case
and of secondary considerations in the Malone declaration. We credit
Malone as an expert in molding of plastics and construction of rolling cards.
On page 3 of the Declaration, Malone states that, in his opinion, the patent to
Stallbaumer has nothing to do with the design of his single-piece hand cart.
However, Malone has not applied the appropriate test for whether the prior
art is relevant to his invention. In our view, Stallbaumer is clearly from
Appellant’s field of endeavor since it is directed to a hand cart.
We are in general agreement with Malone’s evidence regarding the
qualifications of one of ordinary skill in the art as they apply to Appellant’s
plastic hand cart. To the extent that these arguments refer to molding of a
plastic hand cart, however, we note that molding with respect to the article
claimed is a product-by-process limitation, and, as outlined above, the Patent
Office bears a lesser burden of proof with respect to these types of
limitations on articles. Therefore, arguments directed to a balanced flow into
the plastic mold, selection of plastics with regard to flow analysis
characteristics, and the like, cannot differentiate Appellant’s invention over
the cited prior art. We further note that Malone has no real evidence of the
alleged low expectation of success as discussed in the last paragraph on page
5. With respect to the claim that others in the prior art had a low expectation
of success, the declaration of Malone is little more than hearsay.
Malone also states that due to the lack of joints, his hand cart is
stronger than that of Stallbaumer. This allegation, found on page 6, is not
quantified, and the exact prior art that Appellant has compared his invention
to is not described. Therefore, this part of the Declaration is based on few
facts and we are unable to accord this claim any great weight.
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Finally on page 7 of the Declaration, Malone alleges commercial
success. However, no facts are provided, such as market share, number of
units sold, etc. which facts would tend to prove Appellant’s commercial
success. Based on the above analysis, it is our conclusion that the
Declaration of Malone is entitled to but little weight.
Comparing all the evidence anew, it is our conclusion that the
evidence for the obviousness of independent claims 5, 10, 28, and 29, along
with dependent claims 3, 4, 8, 12/10, and 24 outweighs the evidence for non-
obviousness of these claims. Therefore the rejections of claims 3-5, 8, 10,
12/10, 24, 28 and 29 are affirmed. The rejection of claims 9, 11, 12/11, 21,
22, 23, and 27 is reversed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

nlk

EDWARD J. DARIN, INC.
301 EAST COLORADO BLVD, SUITE 518
PASADENA CA 91101