Ex Parte McMahon

Patent Trial and Appeal Board

Dec 11, 2018

14454272 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/454,272 08/07/2014
36790 7590 12/11/2018
TILLMAN WRIGHT, PLLC
POBOX49309
CHARLOTTE, NC 28277-0076
FIRST NAMED INVENTOR
Vallie Hayden McMahon III
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.
9011.005 5971
EXAMINER
CASTRIOTTA, JENNIFER
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
12/11/2018 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 VALLIE HAYDEN MCMAHON III
Appeal2018-003733
Application 14/454,272
Technology Center 3700
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-7, 9, 13-15, and 18-20. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2018-003733
Application 14/454,272
STATEMENT OF THE CASE
The Appellant's invention relates to "facilitating the transfer of
contents" from "a bucket" to "another bucket." (Spec. ,r 3.)
Illustrative Claim
(with paragraphing modified and holding added)
1. A system comprising: (a) a first repository; (b) a second
repository; and ( c) an apparatus comprising
(i) generally flat first and second side pieces mounted to
the first repository, each side piece comprising (A) a mounting
slot within which a sidewall of the first repository is disposed,
an upper surface of the mounting slot supporting the respective
side piece on a rim of the first repository with walls of the
respective piece engaging the sidewall of the first repository
and stabilizing the respective piece, (B) a retention slot within
which a rim of the second repository is received and retained,
the retention slot having a lesser depth than the mounting slot,
and (C) a receiving slot, (D) wherein the entire retention slot is
disposed vertically below a top of the receiving slot, and
(ii) a generally flat top piece removably secured to the
first and second side pieces in a manner which allows the
pieces to be easily joined and disjoined, the top piece
comprising (A) a first insert portion disposed proximate a first
lateral side, the first insert portion being received within the
receiving slot of the first side piece, (B) a second insert portion
disposed proximate a second lateral side opposite the first
lateral side, the second insert portion being received within the
receiving slot of the second side piece, and (C) a curved support
surface engaging a sidewall of the second repository and
supporting the second repository such that it is oriented to allow
contents of the second repository to empty into the first
repository;
(iii) wherein the first and second side pieces are
oriented generally parallel to one another with a first
distance between the mounting slots being the same as a second
distance between the receiving slots.
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Appeal2018-003733
Application 14/454,272
Rejection
The Examiner rejects claims 1-7, 9, 13-15, and 18-20 under
35 U.S.C. § 103 as unpatentable over Cummins. 1 (Final Action 2.)
ANALYSIS
Claims 1, 13, and 18 are the independent claims on appeal, with the
rest of the claims on appeal depending directly or ultimately therefrom. (See
Appeal Br., Claims App.) Independent claims 1, 13, and 18 each recites an
"apparatus" comprising three pieces, namely, a "first side piece"; a "second
side piece"; and a "top piece" that is "removably secured to the first and
second side pieces in a manner which allows the pieces to be easily joined
and disjoined." (Id.) An embodiment of the claimed apparatus is shown in
the Appellant's Figure 4, reproduced below.
00
1 US 2014/0246123 Al, published September 4, 2014. Our quotations to
this publication omit the bolding of drawing-associated reference numerals.
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Appeal2018-003733
Application 14/454,272
As shown in the above drawing, the Appellant's apparatus "comprises three
pieces," namely "a first side piece" (illustrated component 40), "a second
side piece" (illustrated component 50), and "a top piece" ( component 60).
(Spec. ,r 47.) Significantly, Figure 4 shows three separate pieces.
Moreover, although these three separate pieces could be "secured to one
another by glue" (id.), "[t]he present application makes clear" (Appeal Br. 8)
that "in one or more other preferred implementations the pieces are not
secured by glue and can be easily joined and disjoined." (Spec. ,r 47.)
We determine that one of ordinary skill in the art would understand,
upon reading the Specification, that independent claims 1, 13, and 18 require
the apparatus to comprise three separate pieces, as opposed to three different
parts of a singular construction.
We also determine that one of ordinary skill in the art, upon reading
the Specification, would understand that independent claims 1, 13, and 18
require all three of these separate pieces to be easily joined and dis joined
from each other. Specifically, independent claims 1, 13, and 18 require: the
first side piece to be easily joined and disjoined from the top piece; the
second side piece to be easily joined and disjoined from the top piece; and
the first side piece and the second side piece to be easily joined and
disjoined from each other ( e.g., via the top piece).
Thus, independent claims 1, 13, and 18 require the "first side piece"
and the "second side piece" to be two separate pieces, as opposed to both
being parts of the same singular construction; and they require the "first side
piece" and the "second side piece" to be easily joined and disjoined from
each other.
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Appeal2018-003733
Application 14/454,272
The Examiner finds that Cummins discloses an apparatus ( container-
draining device 400) comprising a first side piece (right side panel 420), a
second side piece (left side panel 421 ), and a top piece (foldable tab 480).
(See Final Action 2-3.) The Examiner also finds that, in Cummins's
container-draining device 400, the top piece (i.e., foldable tab 480) is
"removably secured to the first and second side pieces in a manner which
allows the pieces to be easily joined and disjoined." (Id. at 3.) As shown in
Cummins's Figure 26, reproduced below, the container-draining device 400
has "a singular construction which may be cut out of a flat, foldable
material." ( Cummins ,r 62.)
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The above drawing shows that the alleged three "pieces" of Cummins' s
container-draining device 400 (i.e., right side panel 420, left side panel 421,
and foldable tab 481) are not three separate pieces but rather all parts of the
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Appeal2018-003733
Application 14/454,272
same singular construction. (See id. at Fig. 26.) And, as argued by the
Appellant (see Appeal Br. 14), in this "singular construction" of Cummins's
container-draining device, the right side panel 420 and the left side
panel 421 "are connected by a first hinge 440." (Cummins ,r 61.)
Thus, in Cummins's disclosed container-draining device 400, the
alleged "first side piece" (right side panel 420) and the alleged "second side
piece" (left side panel 421) are not two separate pieces, but rather two parts
of the same singular construction. And, in view of the hinge 440 connecting
these two parts, it is difficult to see how these two parts could be easily
joined and disjoined from each other. 2
Independent claims 1, 13, and 18 further recite that "the first and
second side pieces are oriented generally parallel to one another." (Appeal
Br., Claims App.) The Examiner finds that "it would have been an obvious
matter of design choice" to modify Cummins's container-draining
device 400 so that its alleged first side piece (right side panel 420) and its
alleged second side piece (left side panel 421) would be oriented "parallel to
one another." (Final Action 5.)
To accomplish this parallel orientation, the Examiner proposes
"increasing the size of the portion ( 440) between the first and second side
2 Cummins does disclose that, "instead" of the container-draining device 400
"comprising a singular construction," it may comprise "two or more flat
pieces, or multiple pieces, which are folded and combined into a substantially
similar arrangement." (Cummins ,r 62.) "For example, the foldable tab 480,
could be provided as a separate piece from the singular construction." (Id.)
But making the foldable tab 480 a separate piece would result Cummins' s
container-draining device 400 having two, not three, separate pieces; as the
right side panel 420 and the left side panel 421 would still be part of the same
singular construction, and connected by the hinge 440.
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Appeal2018-003733
Application 14/454,272
pieces." (Final Action 5.) We agree with the Appellant that the Examiner
does not adequately address how one would "go about substantially
increasing the size of the hinge ( 440) while still retaining hinge
functionality." (Appeal Br. 15.) More notably, however, Cummins's
alleged "first side piece" (right side panel 420) and alleged "second side
piece" (left side panel 421) would still be two parts of the same singular
construction, with an increased-in-size hinge 440 therebetween.
The Examiner alternatively proposes modifying Cummins's
container-draining device 400 "such that rather than having a single hinge, it
would have two hinges and a larger portion between the two hinges
separating them at a distance." (Answer 7.) We agree with the Appellant
that one of ordinary skill in the art would view such a modification as "much
more than a 'design choice."' (Reply Br. 3.) And, in any event, the
Examiner does not explain, and we do not see, how this more complicated
modification would result in the device 400 having two separate side pieces
that can be easily joined and disjoined from each other.
The Examiner does ask us to consider the teachings conveyed by
other disclosed embodiments of the Cummins' s container-draining device,
specifically the container-draining device 200 shown Cummins's
Figures 8-13 and the container-draining device 300 shown in Cummins's
Figures 20-24. (See Final Action 5; see also Answer 7.) But Cummins's
container-draining devices 200 and 300 are also each described as having a
"singular construction." (Cummins ,r,r 56, 59.) As such, they would not
seem to lead one of ordinary skill in the art towards a design choice
resulting in Cummins's container-draining device 400 having two separate
side pieces that can be easily joined and disjoined from each other.
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Appeal2018-003733
Application 14/454,272
Accordingly, we are persuaded by the Appellant's position that the
Examiner does not establish adequately that independent claims 1, 13,
and 18, and the claims depending therefrom, are unpatentable under
35 U.S.C. § 103.
DECISION
We REVERSE the Examiner's rejection of claims 1-7, 9, 13-15,
and 18-20.
REVERSED
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