Ex Parte Tucker

Board of Patent Appeals and Interferences

Mar 26, 2012

12180269 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOLLY S. TUCKER
____________

Appeal 2011-007993
Application 12/180,269
Technology Center 3600
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Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Holly S. Tucker (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 7-11.1 Appellant cancelled claims 1-6.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 Claims 12-17 in the Claims Appendix of the Appeal Brief were newly
added in an amendment after final rejection filed August 22, 2010 and were
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The Claimed Subject Matter
The claimed subject matter is directed to a drawer liner for organizing
articles, such as eating and cooking utensils, craft supplies, small tools, etc.
Title; Spec. 1. Claim 7 (the sole independent claim), reproduced below, is
representative of the subject matter on appeal.
7. A storage mat for useful articles, wherein the mat
comprises a base and a plurality of projections
stemming from the mat, and arranged in an orderly
manner along two directions, so as to provide a
means for organizing said articles in either a
corresponding or a facilitated orderly manner;

and wherein the cross-sectional area of said
projections amounts to less than 10% of the area of
the surface of said base, on the side of said base
from which said projections extend, so as to
maximize the remaining space.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 7-11 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Ans. 3-4.
Claims 7-11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hauze (US 4,798,292, iss. Jan. 17, 1989). Ans. 4-5.
Claims 7, 8, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Frieze (US 5,766,561, iss. Jun. 16, 1998). Ans. 5-6.
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Frieze and Hauze. Ans. 6-7.

denied entry into the official record by the Examiner in an Advisory Action
mailed August 27, 2010.
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OPINION
Lack of Written Description under 35 U.S.C. § 112, first paragraph
Appellant argues claims 7-11 as a group and we select independent
claim 7 as the representative claim. See App. Br. 5-6 and Reply Br. 2-3; See
also 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that claim 7’s recitation that “the cross-sectional
area of said projections amounts to less than 10% of the area of the surface
of said base, on the side of said base from which said projections extend, so
as to maximize the remaining space” constitutes new matter as not being
supported by the original disclosure. Ans. 3-4, 7-9.
Appellant contends the above-quoted language of claim 7, which was
added to the claims by amendment, is not new matter as supported by the
Drawing Figures, in particular Figure 1, and the Specification’s statement
that “[s]till another object in an organizer that maximizes the space available
for actual storage, and minimizes the space taken up by the organizer itself.”
App. Br. 5-6 and Reply Br. 2-3; Spec. 2.2
“[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad
Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
This test “requires an objective inquiry into the four corners of the

2 All citations to the Specification are to the Substitute Specification filed
May 3, 2010. Since the Substitute Specification does not have page
numbers thereon, we note that page 1 is the title page, page 2 is the page
beginning with the heading “BRIEF SUMMARY OF THE INVENTION,”
and page 3 is the page beginning with the heading “DETAILED
DESCRIPTION OF THE INVENTION.”
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specification from the perspective of a person of ordinary skill in the art.”
Id. “Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Id. “The content of the drawings may also
be considered in determining compliance with the written description
requirement.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
We are not persuaded by Appellant’s contention because neither the
disclosure in the Specification pointed to by Appellant, nor Appellant’s
Drawing Figures provide support for claim 7’s recitation calling for the
cross-sectional area of the projections to be less than 10% of the area of the
surface of the base. More particularly, the Specification sets forth a generic
statement concerning maximizing space available and minimizing space
taken by an organizer. Spec. 2. The general nature of this disclosure is too
broad to support the Appellant’s very specific recitation in claim 7 that “the
cross-sectional area of said projections amounts to less than 10% of the area
of the surface of said base.” As for Figure 1, it depicts “a perspective view
of the invention in its preferred embodiment.” Spec. 2.
Moreover, the Specification states that
Figure 1 is a good view of the invention 10 in its
simplest form. The invention is molded as a single
piece of material. It has two main components, a
base 20 and a plurality of projections 30. In this
case the material is an elastomer. It is pliable to
the extent that it will accept items that vary in
shape substantially.

Spec. 3. Emphasis omitted. This disclosure does not make reference to the
cross-sectional area of the projections and neither do Appellant’s Drawing
Figures since they are not disclosed as being to scale. Ans. 8; see In re
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Olson, 212 F.2d 590, 592 (CCPA 1954) (“Ordinarily drawings which
accompany an application for a patent are merely illustrative of the
principles embodied in the alleged invention claimed therein and do not
define the precise proportions of elements relied upon to endow the claims
with patentability” (citations omitted)). As such, we are left to speculate
from the Drawing Figures the percentage of the cross-sectional area of the
projections as compared to the base. The Examiner finds that “there is
nothing explicit, inherent or implicit in the specification (including the
drawings) to suggest a specific percentage (less than 10%).” Ans. 8. In
other words, the disclosure of the application as originally filed does not
reasonably convey to a person of ordinary skill in the art that the inventor
had possession at that time of the later claimed subject matter.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 7-11 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
Obviousness based on Hauze
Appellant argues claims 7-11 as a group and we select independent
claim 7 as the representative claim. See App. Br. 7-8; see also 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner finds that Hauze discloses the subject matter of claim 7
substantially as claimed, except that Hauze fails to disclose that the cross-
sectional area of the projections is less than 10% of the area of the surface of
the base on the side of the base from which the projections extend so as to
maximize the remaining space. Ans. 4. The Examiner concludes that it
would have been an obvious matter of design choice to a person of ordinary
skill in the art to modify Hauze’s mat so that the cross-sectional area of the
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projections is less than 10% of the surface of the base in order to allow the
mat to hold different sized articles. Id.
Appellant contends that “Hauze does not disclose the storage mat
enabled by Claim 7,” “[t]he Hauze device is not even intended as a storage
device,” and “the Hauze device could NOT be used as a storage device,
because that reference is concerned with sterilization.” App. Br. 7. More
particularly, Appellant contends that once articles have been sterilized by the
Hauze device, they need to be relocated to a sealed storage container in
order to maintain them in the sterilized condition and since the Hauze device
is riddled with holes necessary in order to perform its intended sterilization,
the Hauze device cannot act as a storage device for sterilized articles. Id.
We are not persuaded by Appellant’s contentions. Claim 7 recites
“[a] storage mat for useful articles” and Appellant has failed to show that the
Examiner’s finding concerning Hauze disclosing a storage mat 100 for
useful articles 98 is in error. While Hauze’s mat 100 is for performing
sterilization, it is also for storing articles and thus, Hauze’s mat 100
constitutes a storage mat.
Appellant also contends that “what we have is impertinent, non-
analogous art that simply does nothing to teach, suggest or motivate one to
arrive at the claimed invention,” and the Examiner’s rejection amounts to
“the clear use of hindsight to reconstruct the claimed invention.” App. Br. 8.
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992). References are selected as being reasonably pertinent to the
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problem based on the judgment of a person having ordinary skill in the art.
Id.; see also In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) (“A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem.”)
In view of the holding in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
420 (2007) that “any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed,” it is clear that the second
part of the analogous art test as stated in Clay, supra, must be expanded to
require a determination of whether the reference, even though it may be in a
different field from that of the inventor's endeavor, is one which, because of
the matter with which it deals, logically would have commended itself to an
artisan's (not necessarily the inventor's) attention in considering any need or
problem known in the field of endeavor.
We disagree with Appellant’s contentions. In the instant case, the
Examiner asserts that “Hauze is in [Appellant’s] field of endeavor (i.e.,
storage mats), and [is] reasonably pertinent to the particular problem of
storing articles because it teaches storing articles (e.g.[,] medical
instruments) on mats.” Ans. 11; see also Hauze, Abstract; col. 3, ll. 44, 55,
and 67 (discussing that the container is for storage). Because Hauze deals
with storing items in a container, the Hauze reference is either in Appellant’s
field of endeavor or else, would logically have commended itself to the
problem that the inventor faced. Thus, we are not persuaded by Appellant’s
contentions that Hauze is non-analogous art.
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In addition, with respect to Appellant’s hindsight and lack of teaching,
suggestion, or motivation argument, we note that a rigid and mandatory
application of a “teaching, suggestion, motivation” test for nonobviousness
is incompatible with Supreme Court precedent. See KSR at 419. Thus, the
Examiner need not establish the existence of a teaching, suggestion, and
motivation in combining teachings from prior art references; rather, the
Examiner must provide an articulated reasoning with some rational
underpinning to support a legal conclusion of obviousness. Kahn at 988.
The analysis need not seek out precise teachings directed to the specific
subject matter of the claim but can take into account the inferences and the
creative steps that a person of ordinary skill in the art would employ. KSR at
418. In the present case, the Examiner’s articulated reason appears to have a
rational basis and thus, we are not persuaded of lack of motivation or
hindsight reconstruction.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 7, and claims 8-11 dependent thereon, under 35 U.S.C.
§ 103(a) as unpatentable over Hauze.
Obviousness based on Frieze
Appellant argues claims 7, 8, 10, and 11 as a group and we select
independent claim 7 as the representative claim. See App. Br. 9-10; See also
37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Frieze discloses the subject matter of claim 7
substantially as claimed, except that Frieze fails to disclose that the cross-
sectional area of the projections is less than 10% of the area of the surface of
the base on the side of the base from which the projections extend so as to
maximize the remaining space. Ans. 5-6. The Examiner concludes that it
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would have been an obvious matter of design choice to a person of ordinary
skill in the art to modify Frieze’s mat so that the cross-sectional area of the
projections is less than 10% of the surface of the base in order to allow the
mat to hold different sized articles. Ans. 6.
Appellant presents contentions against the Frieze reference that are
similar to those discussed supra with respect to the Examiner’s rejection
based on Hauze. App. Br. 9-10; see also Ans. 12.
For the same reasons as discussed supra, we sustain the Examiner’s
rejection of independent claim 7, and claims 8, 10, and 11 dependent
thereon, under 35 U.S.C. § 103(a) as unpatentable over Frieze.
Obviousness based on Frieze and Hauze
Claim 9 depends directly from independent claim 7 and recites that
“said projections are shaped with a cross-sectional area that is greatest at
some pre-determined distance from the base, so as to keep articles in
position and prevent them from shifting.” App. Br. 14.
The Examiner finds that Frieze fails to disclose the subject matter of
claim 9, but that Hauze discloses a mat having projections shaped with a
cross-sectional area that is greatest at some predetermined distance from the
base as shown in Figure 11. Ans. 6-7. The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify the mat
of Frieze to have projections with a cross-sectional area that is greatest at a
predetermined distance from the base as taught by Hauze in order to increase
support to the object stored atop the mat. Ans. 7.
Appellant contends that Frieze does not teach a mat providing “for the
optimal storage benefit of having articles rest in contact with the base,”
because in Frieze, the medical instruments are supported by the fingers in a
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floating manner above the mat so that steam can sterilize a maximum
surface of the instruments. App. Br. 11.
We are not persuaded by Appellant’s contention because it is not
commensurate with the scope of claim 9. Claim 9 does not require articles
to rest in contact with the base, but rather only requires that the projections
have their greatest cross-section above the base in order to keep articles in
position and prevent them from shifting.
Appellant also contends that “what we have here is impertinent, non-
analogous art that simply does nothing to teach, suggest or motivate one to
arrive at the claimed invention.” App. Br. 11.
For the same reasons as discussed supra, we are not persuaded of non-
analogous art and lack of motivation.
In view of the foregoing, we sustain the Examiner’s rejection of claim
9 under 35 U.S.C. § 103(a) as unpatentable over Frieze and Hauze.

DECISION
We affirm the Examiner’s decision to reject of claims 7-11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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