Ex Parte Miller

Patent Trial and Appeal Board

Jul 24, 2017

13218874 (P.T.A.B. Jul. 24, 2017)

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.
13/218,874 08/26/2011 Tonia Walstad Miller 107086-0001 8763
24267 7590 07/26/2017
CESARI AND MCKENNA, LLP
88 BLACK FALCON AVENUE
BOSTON, MA 02210
EXAMINER
BARFIELD, ANTHONY DERRELL
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
07/26/2017 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):
docket@c-m.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TONIA WALSTAD MILLER
Appeal 2017-001070
Application 13/218,874
Technology Center 3600
Before MAHSHID D. SAADAT, CATHERINE SHIANG and
CARL L. SILVERMAN, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 24—26, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
furniture. See generally Spec. 1. Claim 1 is exemplary:
Appeal 2017-001070
Application 13/218,874
1. A table having integrated storage capacity
comprising:
a removable tabletop which is supported by a load-
bearing frame;
said load-bearing frame defining a volume in which an
emergency water store is disposed, said volume entirely
overlayed by said tabletop, said emergency water store
including a plurality of reusable storage containers substantially
identical in size and shape, each of which includes a spout; and
one or more load-bearing structures for supporting said
tabletop, load-bearing frame and emergency water store above a
floor surface.
References and Rejection
Claims 1 and 24—26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shaw (US 5,060,580; iss. Oct. 29, 1991) and Bylo (US 6,
729,490 B2; iss. May 4, 2004).
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contention that the Examiner erred in finding the cited portions of Shaw and
Bylo collectively teach “said emergency water store including a plurality of
reusable storage containers substantially identical in size and shape, each of
which includes a spout,” as recited in independent claim 1 (emphasis
added).1 See App. Br. 10-13; Reply Br. 2—3. The Examiner finds:
1 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
2
Appeal 2017-001070
Application 13/218,874
Shaw shows all of the teachings of the claimed invention except
the use of a plurality of identical reusable storage containers
with a spout. Bylo shows the conventional use of a plurality of
identical reusable storage containers (24, 120) with a spout (37,
see Fig. 10).
In response to applicant’s arguments that Bylo fails to
teach the use of a “reusable” storage container but instead a
“disposable ” container, applicant is reminded that the storage
containers of Bylo can inherently be used and reused to store
water as in the case of filling a container up more than once
prior to the disposing of the container. Therefore the examiner
maintains the position that the storage containers as taught by
Bylo are in fact “reusable” storage containers.
Final Act. 2—3 (emphasis added) (emphases in original).
In response to Appellant’s arguments about the Examiner’s
unsupported inherency theory, the Examiner responds:
Regarding the appellant’s argument that the examiner is
relying “erroneously on the doctrine and inherency ” and “has
not provided any evidence supporting the doctrine inherency”,
appellant is reminded the basis of the rejection is solely based
on “obviousness” as the grounds for rejection, as again . . .
Bylo teaches the use of reusable storage containers for water
and beverages ....
Ans. 3^4 (emphases in original).
Inherency is a question of fact that arises both in the context of
anticipation and obviousness rejections. See In re Napier, 55 F.3d 610, 613
(Fed. Cir. 1995). Inherency can only be established when “prior art
necessarily functions in accordance with, or includes, the claimed
limitations. ” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002).
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Appeal 2017-001070
Application 13/218,874
Appellant correctly argues Bylo teaches disposable—not reusable—
storage containers. See App. Br. 12—13; see, e.g., Bylo Abst. (repeatedly
discussing disposable storage containers); 2:16—31 (same). In fact, the word
“reusable” does not appear in Bylo. The Examiner chose the inherency
theory to show Bylo teaches “reusable” storage containers, but has not
established Bylo’s disposable storage container are necessarily reusable. See
App. Br. 12—13. Therefore, Appellant has persuaded us the Examiner erred.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 1.
We also reverse the Examiner’s rejection of dependent claims 24—26,
which depend from claim 1.
DECISION
We reverse the Examiner’s decision rejecting claims 1 and 24—26.
REVERSED
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