Ex Parte Murrer

Board of Patent Appeals and Interferences

Jan 23, 2009

10629322 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALBERT ANDREW MURRER III
____________

Appeal 2008-1407
Application 10/629,322
Technology Center 3700
____________

Decided: January 23, 2009
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has requested rehearing (reconsideration) of the Decision
entered September 30, 2008. That Decision affirmed the Examiner’s
rejection of claims 6-10, 12-19, and 25 as obvious under 35 U.S.C. § 103.
We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-1407
Application 10/629,322

Claim Interpretation:
ISSUE
Does the term ‘soft-sided’ mandate that the claimed container system
collapse in a manner that produces an unorganized reduction in volume?

FACTS
FF 1. Appellant’s Specification defines the term “soft-sided” as referring
“to a non-rigid characteristic. ‘Soft-sided’ may include a surface that can be,
for example, bent or folded, either easily or with relatively little force”
(Spec. 3: ¶ 0009; Decision 11-12).
FF 2. Appellant’s Specification defines the term “collapsible” as meaning
the ability to occupy less volume. “Collapsable” may include
an organized reduction in volume through folding, for example,
and may also include an unorganized reduction, as may occur
with an unsupported structure. “At least partially” collapsable
refers to the ability to collapse at least part of the way between
a fully assembled configuration and a fully collapsed
configuration.

(Spec. 3: ¶ 0011.)

PRINCIPLES OF LAW
During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

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ANALYSIS
Appellant contends that “the requirement in all pending claims that
the outer shell be ‘soft-sided’ mandates that ‘collapsible’ include ‘an
unorganized reduction’ in volume” (Req. Reh’g 5 (emphasis removed)). We
disagree.
While the term soft-sided refers to a non-rigid characteristic, which
may include a surface that can be bent or folded easily or with relatively
little force, there is no requirement in Appellant’s definition of the term that
“mandates” the term soft-sided be interpreted as collapsing in a manner that
results in an unorganized reduction in volume as may occur with an
unsupported structure (FF 1). Further, while the term collapsible may
include the unorganized reduction in volume as may occur with an
unsupported structure, Appellant’s definition of the term collapsible does not
require an unorganized reduction in volume (FF 2). To the contrary,
Appellant’s definition of the term collapsible presents two alternatives: (1)
an organized reduction in volume through folding; or (2) an unorganized
reduction as may occur with an unsupported structure (id.).
Therefore, when the terms “soft-sided” and “collapsible” as defined
by Appellant are read together one finds that a soft-sided structure that is
bent or folded, either easily or with relatively little force, reads on a soft-
sided structure that collapses in a manner that produces an organized
reduction in volume through folding, or in Appellant’s words: “a pre-
determined volume reduction pattern” (Req. Reh’g 5).
Accordingly, we are not persuaded by Appellant’s contention that the
term “‘soft-sided’ mandates that ‘collapsible’ include ‘an unorganized
reduction’ in volume” (Req. Reh’g 5 (emphasis removed)).
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CONCLUSION OF LAW
The term ‘soft-sided’ does not mandate that claimed container system
collapse in a manner that produces an unorganized reduction in volume.

Redzisz:
ISSUE
Does Redzisz teach a container with a soft-sided outer shell?

FINDINGS OF FACT
FF 3. “Redzisz teaches ‘[a] collapsible insulated cooler case [which]
includes a sandwich construction of fabric and cell foam material forming
the panel walls of the container’” (Decision FF 1). “For clarity, we
reproduce Redzisz’s figures 1 and 11 below:

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‘FIG. 1 is an isometric view of the case in the closed, yet fully assembled,
condition or mode’” (id.). “‘FIG. 11 is a cross sectional enlarged view of
the bottom side and front and back side construction of the case’ in a
partially collapsed condition” (id.).
FF 4. “Redzisz teaches that ‘[t]he flexible fabric sections, or subsections,
10 and 12 may be fabricated from plastic materials, fabric materials, or any
similar flexible sheet material’” (Decision FF 2).

PRINCIPLES OF LAW
Where “the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the Patent and Trademark Office can require [an] applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255
(CCPA 1977).

ANALYSIS
Appellant contends that
[t]he generic description in Redzisz that the container is made
of foam cell material encased in fabric gives no indication of
whether the container has rigid walls or is soft-sided. In order
to make this determination, one must look beyond the generic
description of construction materials and into the specific
teachings of Redzisz.

(Req. Reh’g. 6.) Reviewing Redzisz’ figures, Appellant contends that
“[n]othing in the[ ] figures indicates soft-sidedness” (id.). Appellant
contends that “each of the Redzisz embodiments are depicted with sharp
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score lines or stitches to define a folding line” (id.). Appellant contends
“that the use of the term ‘collapsible’ by Redzisz . . . is not equivalent to
‘collapsible,’ as defined by Appellant. Instead, the Redzisz container is
more properly described as a ‘foldable’ container” (Req. Reh’g 7).
Appellant contends that “[f]olding is an ‘organized reduction’ in volume
only, which does not satisfy Appellant’s requirement for ‘partially
collapsible,’ as that term is used in the context of a soft-sided outer shell”
(Req. Reh’g 8). “In sum, [Appellant contends] there is no example or
indication in Redzisz of a container in which the sides themselves are
capable of being ‘bent or folded, either easily or with relatively little force’
in a disorganized manner” (Req. Reh’g. 6-7). We are not persuaded.
Appellant concedes that Redzisz teaches lines or stitches that define
fold lines (Req. Reh’g. 6). As discussed above, there is no requirement in
Appellant’s claimed invention that the container system be bent, folded, or
otherwise collapsed in a disorganized manner, or in a manner that results in
an unorganized reduction of volume.
In addition, “Redzisz teaches that ‘[t]he flexible fabric sections, or
subsections, 10 and 12 may be fabricated from plastic materials, fabric
materials, or any similar flexible sheet material’” (FF 4 (emphasis added)).
Appellant has not established that Redzisz’ flexible fabric sections or sheet
material does not result in a soft-sided container according to Appellant’s
claimed invention.
Further, we disagree with Appellant’s intimation that the description
of Redzisz’ invention should be limited solely to Redzisz’ figures (Req.
Reh’g. 6).
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Redzisz teaches that “[t]he flexible fabric sections, or subsections, 10
and 12 may be fabricated from plastic materials, fabric materials, or any
similar flexible sheet material” (FF 4).
Redzisz teaches “[a] collapsible insulated cooler case [which]
includes a sandwich construction of fabric and cell foam
material forming the panel walls of the container” (FF 1).
There is no evidence on this record to suggest that the fabric
and cell foam construction of Redzisz’ container does not result
in a soft sided outer shell as defined by Appellant.

(Decision 12.) Accordingly, we disagree with Appellant’s contention that
“[t]he ability to maintain structural integrity in the fully opened
configuration is inconsistent with a soft-sided container” (Req. Reh’g 7).
Appellant defines the term “soft-sided” as including “a surface that can be,
for example, bent or folded, either easily or with relatively little force”, e.g.,
a flexible surface (FF 1). There is no evidence on this record to demonstrate
that Redzisz’ fabric and cell foams container does not result in a surface that
can be bent or folded either easily or with relatively little force.
Appellant failed to demonstrate that Redzisz’ container does not result
in a soft sided outer shell as defined by Appellant. In re Best, 562 F.2d at
1255.

CONCLUSION OF LAW
The preponderance of the evidence on this record supports the
conclusion that Redzisz teaches a container with a soft-sided outer shell.

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Zeddies:
ISSUE
Does Zeddies require a substantially rigid wall?
FACTS
FF 5. “Zeddies teaches that ‘[e]ach of the walls 11 may comprise a layer
of a thermal-retentive material 30. The thermal-retentive material 30 may
comprise a flowable gel material. Each of the walls 11 may comprise a
substantially rigid panel 31 positioned adjacent to the thermal-retentive
material 30’” (Decision FF 6).
FF 6. “Zeddies teaches that a bend line ‘is formed between the end
regions of the walls mounted together . . . to allow bending . . . for
permitting adjacent walls 22, 23, 24, 25 on opposite sides of the bend line . .
. to be folded into an adjacent condition’” (Decision FF 7).
FF 7. “Zeddies teaches a frame [adapted] to fit in the interior of the walls
when they are oriented perpendicular to the bottom wall” (Decision FF 8).
“Zeddies teaches that the frame panels 63-66 are pivotally mounted on the
bottom frame panel to allow the frame panels to fold” (id.). “For clarity, we
reproduce Zeddies’ FIGs 6 and 7 below:

“FIG. 6 is a schematic perspective view of the plurality of frames of . . .
[Zeddies’] invention shown in condition for use. FIG. 7 is a schematic
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perspective view of the plurality of frames shown in a stored configuration”
(id).

PRINCIPLES OF LAW
Obviousness is viewed through the lens of a person of ordinary skill in
the art with consideration of common knowledge and common sense.
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1367 (Fed. Cir. 2006).

ANALYSIS
Appellant asserts that “the only volume reduction mechanism
contemplated [by Zeddies] is a folding mechanism, consistent with
substantially rigid outer walls” (Req. Reh’g. 9). In this regard, Appellant
contends that “while the substantially rigid panel 31 may be optional,
Zeddies provides no indication that the walls as a whole should not maintain
a substantially rigid character” (id.). Appellant does not, however, identify
any teaching in Zeddies or provide any evidence that a person of ordinary
skill in the art would reasonably expect that in the absence of substantially
rigid panel 31, the walls of Zeddies’ container would retain a substantially
rigid character.

CONCLUSION OF LAW
The preponderance of evidence on this record fails to establish that
Zeddies requires a substantially rigid wall.

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The combination of Redzisz and Zeddies:

ISSUE
Would it have been prima facie obvious to a person of ordinary skill
in the art at the time the invention was made to use Zeddies’ frame in
Redzisz’s container?

FINDINGS OF FACT
FF 8. We previously found that:
Both Redzisz and Zeddies teach a collapsible container
that can retain some shape when in the open configuration (see,
e.g., FF 1 and 5). Such a configuration is not excluded from
Appellant’s definition of a non-rigid, soft-sided container which
“may include a surface that can be, for example, bent or folded,
either easily or with relatively little force” (Spec. ¶ 0009).
Zeddies teaches that the walls of the container may
comprise a “substantially rigid panel” (FF 6), which according
to Appellant’s assertions would further maintain the container’s
shape in the open position. Nevertheless, Zeddies teaches the
use of a frame that fits in the interior of the walls when they are
oriented perpendicular to the bottom wall (FF 8). Stated
differently, even if one of ordinary skill in this art would make
use of Zeddies’ substantially rigid panel for use in the
construction of the container’s walls, Zeddies teaches the use of
an inner frame to support the container.
There is, however, no requirement in Zeddies that a
relatively rigid material be used for the walls. There is also no
evidence on this record that Redzisz’s container does not result
in a soft sided outer shell as defined by Appellant. Therefore,
as a whole, we find Appellant’s arguments unpersuasive.

(Decision 12-13.)

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PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1739
(2007).

ANALYSIS
Appellant contends that “there is no motivation to use an internal
frame with containers that have sufficient structural strength and rigidity for
the desired purpose” (Req. Reh’g 11). In this regard, Appellant contends
that “generally, an internal frame is placed inside a container when the
container lacks the requisite structural rigidity or strength for the desired
purpose” (id.). We are not persuaded.
Appellant’s contention is inconsistent with Appellant’s interpretation
of Zeddies. Specifically, Appellant contends that “Zeddies provides no
indication that the walls as a whole should not maintain a substantially rigid
character” (Req. Reh’g 9), yet Zeddies teaches the use of an inner frame (FF
7). Appellant contends that “the use of an internal fram[e] in Zeddies is
motivated by its loosely-secured sidewall design, maintained with Velcro
straps. Thus, the requisite motivation is negated because the Redzisz
container is capable of maintaining its structure” (Req. Reh’g 11). We
disagree.
Redzisz’s container is composed of “flexible fabric sections, or
subsections, 10 and 12 [that] may be fabricated from plastic materials, fabric
materials, or any similar flexible sheet material’” (FF 4). Contrary to
Appellant’s intimation, a person of ordinary skill in the art would recognize
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that a frame as taught by Zeddies would enhance the structural strength and
rigidity of Redzisz’s container. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at ___, 127 S. Ct. at 1739.

CONCLUSION OF LAW
It would have been prima facie obvious to a person of ordinary skill in
the art at the time the invention was made to use Zeddies’ frame in Redzisz’s
container.

Redzisz, Zeddies, and Travis:
ISSUE
Did our analysis of the rejection of claims 17-19 under 35 U.S.C.
§ 103 as unpatentable over the combination of Redzisz, Zeddies, and Travis
result in a new ground of rejection?

FINDINGS OF FACT
FF 9. The Examiner found that “[t]he use of the container disclosed by
Travis . . . as a removable inner frame would provide a collapsible frame
structure that would be less bulky and fold flat with a thinner profile for
handling and storage than the frame of Zeddies” (Ans. 13 (emphasis added)).
Our decision states that
Travis teaches an internal frame having side walls that are
linked to the ends of longitudinal walls (Ans. 7; FF 17). The
walls of Zeddies’ frame are pivotally mounted on the bottom
frame panel. Both the Zeddies and the Travis frames allow the
frame to collapse into a conformation that reduces the distance
between longitudinal walls (FF 8 and 17). There is no evidence
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on this record to suggest that the pivotable mounts of Zeddies’
frame could not be replaced with the wall linkages taught by
Travis to accomplish the same purpose of allowing the frame to
collapse in a manner that reduces the distance between the
frame’s longitudinal walls.

(Decision 22.)

PRINCIPLES OF LAW
A new ground of rejection occurs when the Examiner and the Board
reject a claim for different reasons. In re Kumar, 418 F.3d 1361, 1368 (Fed.
Cir. 2005), citing In re Waymouth, 486 F.2d 1058, 1060-61 (CCPA 1973).
“[T]he ultimate criterion of whether a rejection is considered ‘new’ in
a decision by the board is whether appellants have had fair opportunity to
react to the thrust of the rejection”. In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976).

ANALYSIS
Appellant contends that “the Board bases its affirmation of the
rejection of claims 17-19 on an entirely different theory which requires a
modification of the Zeddies inner frame based on the disclosure of Travis,
rather than on the Examiner’s argument for inserting the entire Travis frame
(or container) into the Redzisz container” (Req. Reh’g 14; FF 9). On
reflection, we agree with Appellant’s contention.

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CONCLUSION OF LAW
Our analysis of the rejection of claims 17-19 under 35 U.S.C.
§ 103 as unpatentable over the combination of Redzisz, Zeddies, and Travis
resulted in a new ground of rejection.

SUMMARY
We reaffirm the rejection of:
• claims 6 and 12-15 under 35 U.S.C. § 103 as unpatentable over the
combination of Redzisz and Zeddies;
• claims 7 and 8 under 35 U.S.C. § 103 as unpatentable over the
combination of Redzisz, Zeddies, and Tattam;
• claim 9 under 35 U.S.C. § 103 as unpatentable over the combination
of Redzisz, Zeddies, and Boyd-Moss;
• claim 10 under 35 U.S.C. § 103 as unpatentable over the combination
of Redzisz, Zeddies, and Kalal;
• claim 16 under 35 U.S.C. § 103 as unpatentable over the combination
of Redzisz, Zeddies, and Reichert; and
• claim 25 under 35 U.S.C. § 103 as unpatentable over the combination
of Redzisz, Zeddies, and McHutchison.
For the reasons set forth above, we designate our affirmance of the
rejection of claims 17-19 under 35 U.S.C. § 103 as unpatentable over the
combination of Redzisz, Zeddies, and Travis as a new ground of rejection.

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TIME PERIOD FOR RESPONSE
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner….

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record….

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
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for final action on the affirmed rejection, including any timely request for
rehearing thereof.

REHEARING GRANTED-IN-PART

Ssc:

FOLEY & LARDNER LLP
P.O. BOX 80278
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