Ex Parte Nurse

Board of Patent Appeals and Interferences

Jan 29, 2009

09755408 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT I. NURSE
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Appeal 2008-6286
Application 09/755,408
Technology Center 3700
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Decided: January 29, 2009
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Before DEMETRA J. MILLS, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 21-27
and 34. Jurisdiction is under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
The claims are directed to a container and reinforcing panel attached
to the container. The floor pan of the claimed container is domed.
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Application 09/755,408

Claims 21-27 and 34 stand finally rejected by the Examiner as
follows:
Claims 21-26 and 34 under 35 U.S.C. § 103(a) as obvious in view of
Simmons (U.S. Pat. No. 5,622,276, Apr. 22, 1997) and Syrek (U.S. Pat. No.
5,392,945, Feb. 28, 1995) (Ans. 4); and
Claim 27 under 35 U.S.C. § 103(a) as obvious in view of Simmons,
Syrek, and Spykerman (U.S. Pat. No. 6,253,943 B1, Jul. 3, 2001) (Ans. 6).
Claim 21 is the only independent claim on appeal. Claims 21 and 27
are representative of the appealed subject matter and read as follows:
21. A container having a plurality of upstandable sidewalls
interconnected by a floor pan, wherein said floor pan is domed,
at least one upstanding reinforcing panel releasably connected
to at least one of said sidewalls, wherein at least one of said
sidewalls is reinforceable with said at least one upstanding
reinforceable panel, said reinforceable panel being releasable
from said sidewall without separation from said container.

27. A container according to Claim 26 [which is indirectly
dependent on claim 21], wherein said reinforceable panel
further comprises notches for gripping said reinforceable panel
by a user.

OBVIOUSNESS OVER SIMMONS AND SYREK
Claims 21-26 and 34 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Simmons and Syrek (Ans. 4).
Issue
Do Simmons and Syrek suggest a container having a “domed” floor
pan as recited in independent claim 21?

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Principles of Law
“During [patent] examination, the examiner bears the initial burden of
establishing a prima facie case of obviousness.” In re Kumar, 418 F.3d
1361, 1366 (Fed. Cir. 2005).
To establish obviousness, the following factors must be taken into
consideration: (a) the scope and contents of the prior art; (b) the differences
between the prior art and the claimed subject matter; (c) the level of skill in
the pertinent art; and (d) evidence of secondary considerations. Graham v.
John Deere, 383 U.S. 1, 17 (1966).
In making an obviousness determination,
[o]ften, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this analysis
should be made explicit. See In re Kahn, 441 F. 3d 977, 988
(CA Fed. 2006) (“[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must
be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness”). As our
precedents make clear, however, the analysis need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.
. . .
Although common sense directs one to look with care at a
patent application that claims as innovation the combination of
two known devices according to their established functions, it
can be important to identify a reason that would have prompted
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a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-1741 (2007).

Findings of Fact
Scope and content of the prior art
The Simmons patent
1. Simmons describes an apparatus comprising a collapsible container and a
liner (Simmons, at col. 1, l. 50 to col. 2, l. 30; col. 2, ll. 59-63).
2. The collapsible container 12 has an impermeable liner 28 with a floor
portion and sidewalls 18 and 20 (Simmons, at col. 3, ll. 3-6; Figs. 3-4; see
Ans. 4).
3. The liner 28 “would be of a flexible plastic-like, fluid impermeable
material” (Simmons, at col. 3, ll. 6-7; see Ans. 4-5).
4. The liner can be secured to the side walls, as shown in Figure 4, by snap
apart members that include an extension member 38 extending from the
inner sidewall which engages an inward opening 40 in the liner (Simmons,
col. 3, ll. 23-33; see Ans. 4).
The Syrek patent
5. Syrek describes a container with a raised dome shaped floor 102 that
extends inwardly to form a gutter 112 (Syrek, at col. 3, ll. 25-33; see Figs. 3
and 6; see Ans. 5).
The Specification
6. The Specification states that the “floor pan 22 [of the container 10] may
be domed convex inwardly to increase strength as is known in the art”
(Spec. 4:10-11).
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Differences between the prior art and the claimed subject matter
7. Simmons describes a liner 28 with sidewalls 18 and 20 and a floor
portion (FF1, 2) which meet the limitations of claim 21 of a “container
having a plurality of upstandable sidewalls interconnected by a floor pan”
(see Ans. 4).
8. The collapsible container 12 described by Simmons (FF2) satisfies the
limitation of claim 21 of a “reinforcing panel” (see Ans. 4).
9. The “reinforcing panel”/collapsible container 12 is attached to at least
one of the liner 28 sidewalls by snap apart members (FF4) and is therefore
“releasably connected to at least one of said sidewalls” and “releasable from
said sidewall without separation from said container” as in claim 21 (see
Ans. 4).
10. Simmons, however, does not describe its floor pan as “domed” as
required by claim 21 (Ans. 5).
11. In sum, Simmons describes all the limitations of the container of claim
21 (FF7-9), but not a floor pan which is domed (see Ans. 4-5).
12. Simmons states:
As illustrated, when container 12 is to be placed in the
collapsed state as seen in FIG. 2, liner 28 would be disengaged
from each of the sidewalls 20 as seen in FIG. 4, with the nipple
like extension 38 being disengaged from the ports 40. At that
point, as seen in FIG. 5, both endwalls 18 would be disengaged
from their nipple like extensions 38 and endwalls 18 would be
folded inwardly in the direction of arrow 47 with liner 28 of
sidewalls 20 likewise being disengaged from extensions 38, and
folded inward in the direction of arrows 49, as seen in FIG. 5,
so that the liner of sidewalls 20 is folded onto the floor portion
14, prior to the endwalls 18 being folded thereupon.
(Simmons, at col. 3, ll. 54-66.)

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Level of ordinary skill in the art
13. Persons of ordinary skill in the art knew how to produce a container
with a dome shaped floor pan (see FF5, 6).
14. Persons of ordinary skill in the art knew that a floor pan which is
“domed convex inwardly” would “increase strength” of the container (FF6;
see Ans. 51).
15. As Simmons teaches that its liner is made of “flexible plastic-like . . .
material” (FF3), it is considered within the ordinary level of skill to choose
the specific flexible material from which to produce the liner.
Reason to modify the prior art
16. Persons of ordinary skill in the art would have had reason to modify the
shape of Simmons’ planar floor to be inwardly domed – as in claim 21 – “to
increase the load strength of the floor to prevent buckling, deformation or
failure” (Ans. 5).
17. “Either with the floor 14 (outer container) being domed or without the
floor 14 (outer container) being domed, the . . . flexible material of liner
28[ ]2 will hold a domed shape with a domed shaped floor 14 (outer
container) or with a entirely flat and entirely planar floor 14 (outer
container). In this case of a self-supporting liner material, it would not be

1 “Please note that the domed floor is supported at page 4, lines 10-14 of
applicant’s specification wherein it has been stated that ‘the floor pan 22
may be domed convex inwardly to increase strength as is known in the art.’
Such statement is construed as an admission by applicant that the domed
floor is prior art.” (emphases removed).
2 The Examiner characterized the material as “self-supporting” (Ans. 5), but
later admitted that Simmons did not expressly disclose this as characteristic
of the flexible material (Ans. 7). We therefore do not rely on Simmons as
teaching a “self-supporting” material.
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necessary to make the floor 14 (outer container) domed wherein the
modification is applied directly to the floor pan (liner)” (Ans. 5-6).
Analysis
The difference between claim 21 and Simmons is that Simmons does
not describe a container with a dome shaped floor as required by the claim
(FF10-11). The Examiner finds that persons of ordinary skill in the art
would have recognized the advantages of a domed shaped floor (FF14) and
would have been prompted to add one to the Simmons container to increase
its load strength and “prevent buckling, deformation or failure” (FF16, 17).
The Examiner’s reasoning is logical and supported by fact-based
findings. We therefore conclude that the Examiner has met the burden of
establishing prima facie obviousness of the claimed subject matter. In re
Kumar, 418 F.3d at 1366.
Appellant argues that “[n]othing in the Simmons reference teaches or
suggests that the liner 28 is capable of holding a domed shape” (App. Br. 3).
This argument is not persuasive. It was within the level of ordinary
skill in the art to construct containers (liner 28) with dome shaped bottoms
(FF13, 14). This would have included selecting flexible materials capable of
a holding the claimed dome shape for added strength (see FF15).
The Examiner alternatively argued that there was reason to make the
container 12 (“reinforcing panel” as in claim 21) domed (Ans. 7-8). In this
configuration, the Examiner reasoned that the flexible liner 28 lining the
container would conform to a dome shape and therefore meet the claimed
limitation (id.). Appellant argues that such a structure would be “necessarily
more complex than that claimed by Appellant” (Reply Br. 3). We are not
persuaded. The Examiner provided a logical reason as to why the ordinary
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skilled worker would have made the container 10 floor domed (FF16; Ans.
7-8). Appellant has not identified a flaw in this reasoning other than saying
it would result in a structure that is “more complex” than what is claimed.
However, the Examiner articulated a reason for making the modification,
which Appellant has not rebutted, and the suggested modification meets the
claimed limitation. Thus, the legal test of obviousness has been met.
Therefore, even were the structure to be more “complex” than necessary, we
do not understand how this would undermine the rejection.
Appellant also argues that Simmons’ teaching that the liner wall is
“capable of sagging from sidewalls 30” is inconsistent with it being able to
retain a dome shape (Reply Br. 3). This argument is not persusasive.
Appellant does not point to any support for Simmons’ teaching of a sagging
wall. In fact, Simmons shows liner 28 disengaged from the container’s
sidewall and “folded inwardly” (FF12). There is no teaching in Simmons
that we are aware of that the liner “sags” as Appellant contends it does.
Appellant asserts that Simmons teaches away from adding a dome to
the bottom because of the need to modify the container’s “hinge points” and
the increase in space necessary for storing the container (App. Br. 3). These
arguments are not persuasive.
There is no evidence that the “hinge points” of Simmons’ container
would need raising to “further . . . accommodate the dome” or that increased
storage space (App. Br. 3) would have dissuaded persons of ordinary skill in
the art from adding the dome to the container. Arguments of counsel can not
substitute for evidence lacking in the record. Estee Lauder Inc. v. L’Oreal,
S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
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Appellant states that the “reasons provided in Syrek for providing a
domed floor have no applicability to the Simmons container” (App. Br. 3).
The Examiner did not rely on Syrek for providing a reason to modify
Simmons. Rather, the Examiner cited an admission in the Specification that
a domed shaped floor would have been known to increase floor strength
(FF14).
It is stated in the Appeal Brief:
The existence of claimed elements of a combination in the prior
art does not, by itself, render the claimed combination obvious.
Nothing in the reference teaches or suggests that the floor of the
outer shell represents a weakness of the design which would
benefit from the addition of a dome, whereas the additional
height of the dome would adversely affect the performance of
the container with regard to the required storage space.
(App. Br. 4).
It is well-established that precise teachings are unnecessary to
establish obviousness. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. at 1741. As
pointed out by the Examiner, a reference is not required, nor expected, to
state its weaknesses (Ans. 8). The proper standard for an obviousness
determination is whether there is a reason which “would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727 at 1741. In this case, the Examiner articulated an express reason
for combining Simmons with the prior art domed floor: to strengthen it
(FF16). The preponderance of evidence in the record supports the
Examiner’s findings that persons of ordinary skill in the art recognized the
advantages of a domed floor and that such modification was within the level
of skill in the pertinent art (FF13-15).
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For the foregoing reasons, we affirm the rejection of claim 21.

OBVIOUSNESS IN VIEW OF SIMMONS, SYREK, AND SPYKERMAN
Claim 27 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Simmons, Syrek, and Spykerman (Ans. 6)
The Examiner states that the combination of references describes the
subject matter of claim 27, “except for the notches” (id.). The Examiner
finds that “hand graspable notches 121, 131” are taught by Spykerman and
that it would have been obvious “to add the notches to the reinforceable
panel [of Simmons] to provide easier grasping of the panel” (Ans. 6-7).
The Examiner provides sound fact-based reasoning for combining
Simmons and Syrek with Spykerman. As Appellant does not identify any
defect in the Examiner’s reasoning, and we find none, we affirm the
rejection of claim 27 for the reasons stated by the Examiner.

CONCLUSION OF LAW
Simmons and Syrek suggest a container having a “domed” floor pan
as recited in independent claim 21. We thus affirm the rejection of claim 21.
Claims 22-26 and 34 were not argued separately from claim 21. As
dependent claims 22-26 and 34 incorporate all the limitations of claim 21,
and Appellant does not provide separate reasons for their patentability, we
affirm their rejection as well. See 37 C.F.R. § 41.37(c)(1)(vii).
We affirm the rejection of claim 27.

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

AFFIRMED

Ssc:

THE PROCTOR & GAMBLE COMPANY
GLOBAL LEGAL DEPARTMENT – IP
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