Ex Parte Miller

Patent Trial and Appeal Board

Mar 20, 2018

13163675 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/163,675 06/18/2011
94104 7590 03/21/2018
Taylor English Duma LLP
1600 Parkwood Circle, Suite 200
Atlanta, GA 30339
FIRST NAMED INVENTOR
Brandon Charles Miller
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.
66171-1010 1204
EXAMINER
DEMEREE, CHRISTOPHER R
ART UNIT PAPER NUMBER
3782
MAILDATE DELIVERY MODE
03/21/2018 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 BRANDON CHARLES MILLER
Appeal 2016-0023 89
Application 13/163,675 1
Technology Center 3700
Before ANNETTE R. REIMERS, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brandon Charles Miller ("Appellant") seeks review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated January 29, 2015 ("Final Act."), and as further explained in the
Advisory Action dated May 11, 2015, rejecting claims 1, 3-7, 9-13, 15-21,
and 23. The record includes a transcript of the oral hearing held on February
6, 2018 ("Tr."). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
1 Appellant identifies Pratt Industries, Inc. as the real party in interest.
Appeal Br. 2.
Appeal2016-002389
Application 13/163,675
BACKGROUND
The disclosed subject matter "relates to containers for recyclables."
Spec. i-f 1. Claims 1, 13, and 21 are independent. Claim 1 is reproduced
below:
1. A recyclable container comprising:
a hollow body having an outer surface and an inner
surface, the hollow body including a top end, a bottom end, a
first side panel, and a second side panel,
the first side panel defining
a fitted cutout and
an indicator cutout,
the second side panel including
a first lock tab, the first lock tab connected
proximate a top end of the second side panel by a
first bend line parallel to the top end of the second
side panel and positioned between the top end of
the second side panel and a bottom end of the
second side panel, the first lock tab including a
flex portion proximate the first bend line and an
insertion portion distal the first bend line, the flex
portion of the first lock tab and the insertion
portion of the first lock tab connected to each other
by a second bend line parallel to the first bend line
and positioned between the first bend line and the
top end of the first side panel, the insertion portion
including a shank, a left ear, and a right ear, a
distance between a distal end of the left ear of the
first lock tab and a distal end of the right ear of the
first lock tab greater than a distance between a left
end of the flex portion of the first lock tab and a
right end of the flex portion of the first lock tab,
and
a second lock tab, the second lock tab
connected proximate a bottom end of the second
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Application 13/163,675
side panel by a third bend line parallel to a bottom
end of the second side panel and positioned
between the bottom end of the second side panel
and the top end of the second side panel, the
second lock tab including a flex portion proximate
the third bend line and an insertion portion distal
the third bend line, the flex portion of the second
lock tab and the insertion portion of the second
lock tab connected to each other by a fourth bend
line parallel to the third bend line and positioned
between the third bend line and the bottom end of
the second side panel, the insertion portion
including a shank, a left ear, and a right ear, a
distance between a distal end of the left ear of the
second lock tab and a distal end of the right ear of
the second lock tab greater than a distance between
a left end of the flex portion of the second lock tab
and a right end of the flex portion of the second
lock tab,
the hollow body defining a cavity interior to the
hollow body and about continuous from the top end to
the bottom end,
wherein the indicator cutout defines an opening
from the outer surface to the cavity,
wherein the fitted cutout defines an opening from
the outer surface to the cavity,
the fitted cutout defining a fitted cutout
width and the inner surface of the hollow body
defining a hollow body interior width, the fitted
cutout width being less than the hollow body
interior width,
the fitted cutout being centered between a
left end and a right end in the first side panel,
the fitted cutout separated from the indicator
cutout, no edge of the fitted cutout intersecting an
edge of the indicator cutout,
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Application 13/163,675
and
a first distance from the fitted cutout to the
top end of the first side panel less than a second
distance from the indicator cutout to the top end of
the first side panel;
a top panel contacting the top end of the hollow body;
a bottom panel contacting the bottom end of the hollow
body,
the hollow body including a square cross-section,
the recyclable container remaining vertical after
placing the bottom end on a horizontal surface, an
outside surface of the bottom panel touching the
horizontal surface.
REJECTIONS2
1. Claims 1, 3---6, and 9--11 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Harris (US 6,763,970, issued July 20, 2004),
Robinson (US 5,507 ,428, issued Apr. 16, 1996), and Peterson (US
2005/0199690 Al, published Sept. 15, 2005).
2. Claims 7 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Harris, Robinson, Peterson, and McGowan (US
2007/0152028 Al, published July 5, 2007).
3. Claims 13, 15-17, and 19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Peterson, Robinson, Harris, and Brickwood
(US 2004/0200854 Al, published Oct. 14, 2004).
2 The Examiner rejected claims 12 and 20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. See Final
Act. 2. In the Answer, the Examiner withdraws this rejection. See Ans. 13.
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Application 13/163,675
4. Claims 18, 20, 21, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Peterson, Robinson, Harris, Brickwood, and
McGowan.
DISCUSSION
Rejection 1 - Claims 1, 3-6, and 9-11
For independent claim 1, the Examiner relied on Figure 1 of Harris for
certain limitations, but stated that "Harris does not teach an indicator cutout,
the second side panel having lock tabs, or the hollow body having a square
cross section." Final Act. 3 (i-f 6). To address these deficiencies, the
Examiner relied on Robinson, Peterson, and certain stated rationale. See id.
at 3-5 (i1i17-9). As explicitly stated in the Final Office Action, for this
Rejection, "the [E]xaminer uses the structure of [Figure 1 of] Harri[ s]
oriented upside down." Id. at 3.
Appellant argues that the proposed modification-in particular, the
proposed inversion of the embodiment in Figure 1 of Harris-"renders the
Harris reference 'unsatisfactory for its intended purpose' as in [In re]
Gordon[, 733 F.2d 900 (Fed. Cir. 1984)]." Appeal Br. 17. Appellant argues
that "to tum the container of Harris upside down ... would result in a
'system for dispensing face masks' (see Harris at Abstract) that would
dispense only one or only a few face masks before the remaining majority of
face masks in the dispensing container would fall from view due to gravity
and from reach by any user." Id. at 18. We agree with Appellant.
In In re Gordon, the Federal Circuit reversed an obviousness rejection
because modifying the prior art-by turning a filter upside down-would
render it incapable of filtering, and thus, inoperable for its intended purpose.
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See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Similarly, here, as
argued by Appellant, the embodiment shown in Figure 1 of Harris, when
inverted as proposed, would be incapable of dispensing face masks shortly
after beginning use-i.e., when the supply of masks dropped vertically
below opening 48, which, in the modified device, would be located near the
top of the structure. See id.; see also Harris, col. 1, 11. 46-49, 55-60
(discussing how, in Harris, the container "may have a dispensing opening
having a length, a height, and a widened region defined in a lowermost
portion of one of the plurality of walls" and discussing how "the widened
region provides a location for the user to grip the bottommost mask proximal
to the shape retaining element for extraction from the interior space of the
container" (emphasis added)).
The Examiner states that "the claims are drawn to a finished product
and not a method of use" and "[ t ]herefore, any implied claimed functional
limitations are met by the prior art so long as the prior art is capable of
performing the implied functions." Ans. 14.
Although the Examiner's comments focus on whether or not the
phrase "recyclable container" in the preamble of claim 1 requires a certain
orientation of the structure (Ans. 14), we agree with Appellant that the body
of claim 1 requires a certain orientation for the recited structure. See Appeal
Br. 18 (top paragraph). In other words, we view the orientation of the
structure as more than merely an intended use or functional limitation, which
could be satisfied by a structure capable of such a use or function. For
example, claim 1 recites the locations of the "fitted cutout" and the
"indicator cutout" in terms of their distances from the "top end of the first
side panel." Id. at 36 (Claims App.) (emphasis added). In the context of
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claim 1, the recited "top end," for example, indicates the orientation of the
overall recited "container." See, e.g., Spec. Fig. 1. Moreover, in this
Rejection, the Examiner explicitly proposed to invert the embodiment of
Figure 1 of Harris. Final Act. 3.
Although the Examiner is correct that the structure of the embodiment
of Figure 1 of Harris "is capable a/being turned upside down after all the
masks have been dispensed, which would then present an opening (Harris;
50) which is capable a/having articles inserted there-through to re-fill an
empty container" (Ans. 14 (emphasis added)), the Examiner has not
sufficiently explained why one of skill in the art would have performed such
a modification, in light of the intended purpose of Harris. See Gordon, 733
F.2d at 902; see also In re Giannelli, 739 F.3d 1375, 1379-80 (Fed. Cir.
2014) ("In the context of the claimed rowing machine, however, the mere
capability of pulling the handles is not the inquiry that the Board should
have made; it should have determined whether it would have been obvious
to modify the prior art apparatus to arrive at the claimed rowing machine.").
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 3---6 and 9-11, which depend from claim 1.
Rejection 2-The rejection of claims 7
and 12 under 35 US.C. § 103(a)
Claims 7 and 12 depend from claim 1. Appeal Br. 37, 39 (Claims
App.). The Examiner's added reliance on McGowan does not remedy the
deficiencies in the rejection based on Harris, Robinson, and Peterson,
discussed above regarding claim 1 (see supra Rejection 1 ). Thus, for the
reasons discussed above, we do not sustain the rejection of claims 7 and 12.
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Rejection 3 -The rejection of claims 13,
15-17, and 19 under 35 US. C. § 103 (a)
For this Rejection, Appellant argues the patentability of independent
claim 13 and does not separately argue claims 15-17 and 19, which depend
from claim 13. Appeal Br. 24--26. Thus, we address claim 13, with claims
15-17 and 19 standing or falling with claim 13. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2014).
For claim 13, the Examiner relied on Peterson for certain limitations,
but stated that "Peterson does not teach the insertion portions include ears
and a shank, the claimed fitted cutout, or the left end of the first side panel
connectable to the right end of the second side panel." Final Act. 7 (i-f 18).
To address these deficiencies, the Examiner relied on Robinson, Harris,
Brickwood, and certain stated rationales. See id. at 7-8 (i-fi-f 19-22). In this
Rejection, the Examiner relied on Harris, in part, regarding various aspects
of the "fitted cutout." See Final Act. 8 (i-f 20) (identifying element 50 in
Figure 3 of Harris as a "fitted cutout"); see also Appeal Br. 41 (Claims
App.). According to the Examiner,
It would have been obvious to one of ordinary skill in the art at
the time of invention to modify the structure of Peterson and
Robinson with the cutout of Harris with the motivation of
making the container more suitable for dispensing a certain
item as it is a simple substitution of known equivalents to yield
an expected result.
Final Act. 8 (i-f 20) (emphasis added).
Appellant argues that identifying "'more suitable' dispensing as a
motivation for combining features of various dispensing container
references to create a receptacle for recyclables fails to establish proper
rationale for the suggested combination." Appeal Br. 25. Appellant also
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argues that "[ e ]ven assuming that the relevance of a particular modification
to a dispensing container to the evaluation of a receptacle for recyclables
has been established, the Office Action has failed to explain what benefit is
gained by 'more suitable' dispensing and how the modification provides the
alleged benefit." Id.
This argument does not apprise us of error. As an initial matter,
contrary to Appellant's position, claim 13 does not recite a "receptacle for
recyclables." Appeal Br. 25; see also Tr. 3:2-3 (Appellant acknowledging
that "[ c ]laim 13 is a blank that forms th[ e] container" of claim 1 ). As noted
by the Examiner, claim 13 is "drawn to a flat blank and not a method of
receiving articles into a receptacle, as argued" by Appellant. Ans. 15.
Moreover, unlike, for example, claim 1, claim 13 does not require a certain
orientation. In the context of the recited "blank formable into a recyclable
container," we do not view the recitations of, for example, a "top edge" of
the "fitted cutout" and the "bottom panel" as limiting claim 13 in the same
manner discussed above in the context of claim 1. In claim 13, the "top
edge" and "bottom panel," for example, indicate the orientation of those
features after (at least partly) forming the "blank" into a "recyclable
container"-the recited intended use of the "blank." In other words, the "top
edge" and "bottom panel" do not indicate the required orientation of the
"blank" itself. See, e.g., Spec. Fig. 2. 3
Moreover, although the Examiner does discuss "modify[ing] the
structure of Peterson and Robinson with the cutout of Harris with the
3 We note that Appellant did not present the argument that the
proposed modification for claim 13 would render Peterson inoperable for its
intended purpose. See Tr. 5: 14--17.
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motivation of making the container more suitable for dispensing a certain
item," the Examiner also identifies modifying the structure of Peterson and
Robinson with the cutout of Harris as "a simple substitution of known
equivalents to yield an expected result." Final Act. 8 (i-f 20). Here,
Appellant does not address, and has not shown error in this reasoning as a
basis for the proposed modification. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007) ("[W]hen a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.").
In the Reply Brief, Appellant asserts that the Examiner's "simple
substitution" reasoning is "misleading" because
to modify the opening of Peterson, a dispenser of paper towel
rolls that have a length substantially equal to the interior width
of the alleged "hollow body," to have a "fitted cutout width
being less than the side panel width" would defeat the purpose
of Peterson to dispense its paper towel rolls because such paper
towel rolls would catch on at least one if not both sides of the
side panel containing the alleged "fitted cutout."
Reply Br. 13-14.
For procedural reasons, we will not address this argument. See
37 C.F.R. § 41.41(b)(2) ("Any argument raised in the reply brief which was
not raised in the appeal brief, or is not responsive to an argument raised in
the examiner's answer, including any designated new ground of rejection,
will not be considered by the Board for purposes of the present appeal,
unless good cause is shown."). This new argument addresses the rejection
as set forth in the Final Office Action, rather than positions raised in the
Answer. Although Appellant quotes a discussion from the Answer as
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providing the Examiner's reasoning (Reply Br. 13-14), the same reasoning
was provided in the Final Office Action. Compare Ans. 9-10, with Final
Act. 8. In addition, Appellant has not shown good cause for failing to
provide this new argument in the Appeal Brief. See 3 7 C.F .R. § 41.41 (b )(2 ).
For the reasons above, we sustain the rejection of independent claim
13. Claims 15-1 7 and 19 fall with claim 13.
Rejection 4 - The rejection of claims 18, 20,
21, and 23 under 35 US.C. § 103(a)
A. Claim 18
For claim 18, the Examiner stated that "the combined teachings of
Peterson, Robinson, Harris, and Brickwood teach the claimed structure and
method except for a V shaped bottom edge on the fitted cutout." Final Act.
9. To address this deficiency, the Examiner relied on McGowan. See id. at
9-10; see also McGowan, Fig. 5 (showing dispenser opening 130).
According to the Examiner,
It would have been obvious to one of ordinary skill in the art at
the time of invention to modify the structure of Peterson,
Robinson, Harris, and Brickwood with the cutout shape of
McGowan with the motivation of more suitably dispensing a
product as it is a simple substitution of known equivalent
structures.
Final Act. 10 (emphasis added).
Appellant argues that identifying "'more [suitable] dispensing' as a
motivation for combining features of various dispensing container
references to create a receptacle for recyclables fails to establish proper
rationale for the suggested combination." Appeal Br. 27-28. Appellant also
argues that "[ e ]ven assuming that the relevance of a particular modification
to a dispensing container to the evaluation of a receptacle for recyclables
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has been established, the Office Action has failed to explain what benefit is
gained by 'more [suitable] dispensing' and how the modification provides
the alleged benefit." Id. at 28.
This argument does not apprise us of error. As an initial matter, for
the same reasons discussed above (see supra Rejection 3), claim 13, from
which claim 18 depends, does not recite a "receptacle for recyclables."
Appeal Br. 28; see also Tr. 3:2-3 (Appellant acknowledging that "[c]laim 13
is a blank that forms th[ e] container" of claim 1 ). In addition, also for the
same reasons discussed above, neither claim 13 nor claim 18 requires a
certain orientation.
Although the Examiner does discuss "modify[ ing] the structure of
Peterson, Robinson, Harris, and Brickwood with the cutout shape of
McGowan with the motivation of more suitably dispensing a product," the
Examiner also identifies modifying the structure of Peterson, Robinson,
Harris, and Brickwood with the cutout shape of McGowan as "a simple
substitution of known equivalent structures." Final Act. 10. Here, Appellant
does not address, and has not shown error in this reasoning as a basis for the
proposed modification. See KSR, 550 U.S. at 416.
For claim 18, Appellant also relies on the arguments provided for
claim 13, from which claim 18 depends. For the reasons above, however,
the arguments regarding claim 13 do not apprise of us of error.
For these reasons, we sustain the rejection of claim 18.
B. Claim 20
Because Appellant does not separately argue claim 20 (Appeal Br.
29), which depends from claim 13, we also sustain the rejection of claim 20.
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C. Claims 2 I and 23
For independent claim 2I, the Examiner relied on Figure IA of
Peterson, stating that the "combined teachings of Peterson, Robinson, Harris,
and Brickwood teach the claimed structure and method except for a V
shaped bottom edge on the fitted cutout." Final Act. 9. To address this
deficiency, the Examiner relied on McGowan. See id. at 9-IO.
Appellant argues that "to tum the container of Peterson upside down
... would result in a 'dispensing container' for 'paper towels' (see Peterson
at Abstract) that would dispense only one or only a few rolls of paper towels
before the remaining majority of paper towel rolls in the dispensing
container would fall from view due to gravity and from reach by any user."
Appeal Br. I 9. According to Appellant, "such a modification renders
Peterson 'inoperable for its intended purpose' and thus such a modification
would not have been obvious to a person having ordinary skill in the art and
cannot support a legal conclusion of obviousness." Reply Br. I 7 (footnote
omitted).
For the same reasons discussed above for Rejection I, we agree with
Appellant that inverting the embodiment in Figure IA of Peterson would
render it incapable of dispensing paper towel rolls shortly after beginning
use-i.e., when the supply of paper towel rolls dropped vertically below
dispensing aperture I I 6, which, in the modified device, would be located
near the top of the structure. See Gordon, 733 F.2d at 902; see also Peterson
i-f 3 ("Removal of a paper towel roll from the dispensing aperture causes any
paper towel rolls directly above the extracted paper towel roll to shift
downward to the bottom of the dispenser, positioning a new roll of paper
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towels directly inside of the dispensing aperture for later removal from the
dispenser.").
As with claim 1, and as argued by Appellant, the language of claim 21
requires a certain orientation. See Appeal Br. 30-31; Reply Br. 15-17; Tr.
9:13-24. The recited step of placing the "container" in a specific orientation
is more than merely an intended use or functional limitation, which could be
satisfied by a structure capable of such a use or function. Specifically, in the
final clause, claim 21 recites: "placing the bottom end of the recyclable
container on a horizontal surface, an outside surface of the bottom panel
touching the horizontal surface, the recyclable container remaining vertical
after placement." Appeal Br. 45 (Claims App.).
Although the Examiner is correct that "the applied prior art [including
Peterson] is 'capable of being used as an empty receptacle once the
contents have been completely dispensed therefrom" (Ans. 16 (emphasis
added)), the Examiner has not sufficiently explained why one of skill in the
art would have performed, for example, the final step in claim 21, in light of
the intended purpose of Peterson. See Gordon, 733 F.2d at 902; see also
Giannelli, 739 F.3d at 1379-80.
For these reasons, we do not sustain the rejection of claim 21, or the
rejection of claim 23, which depend from claim 21.
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DECISION
We affirm the decision to reject claims 13, and 15-20, and we reverse
the decision to reject claims 1, 3-7, 9-12, 21, and 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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