Ex Parte Utz et al

Patent Trial and Appeal Board

May 30, 2013

11733546 (P.T.A.B. May. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ZACHARY UTZ, MICHAEL NICHOLLS,
JOSEPH YANKELLO, ANTHONY MARCHETTA, and
ROB WARNER
____________________

Appeal 2011-004420
Application 11/733,546
Technology Center 3600
____________________

Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-4, 7, 8, 11, 12, 14, 17, and 19-21 under 35 U.S.C.
§ 103(a) as being unpatentable over Heneveld (US 5,762,213, iss. Jun. 9,
1998), Welch (US 6,394,567 B1, iss. May 28, 2002), Miller (US 5,429,058,
iss. Jul. 4, 1995), and Swedman (US 2,157,309, iss. May 9, 1939). Claims
5, 6, 9, 10, 13, 15, 16, 18, and 22 are cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Claims 1, 11, and 17 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A storage system, comprising:
a base unit having a pair of opposing
sidewalls;
a first plurality of shelf supports defining a
first location and a second plurality of shelf
supports defining a second location removably
carried by the opposing sidewalls;
a first type of storage accessory having a
first base shelf removably supported on one of the
first plurality of shelf supports and the second
plurality of shelf supports and a second type of
storage accessory having a second base shelf
substantially identical to the first base shelf
removably supported on one of the first plurality of
shelf supports and the second plurality of shelf
supports, wherein said first base shelf defines a
first ledge extending along a first one of said pair
of opposing sidewalls and a second ledge
extending along a second one of said pair of
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opposing sidewalls and said second base shelf
defines a third ledge extending along the first one
of said pair of opposing sidewalls and a fourth
ledge extending along the second one of said pair
of opposing sidewalls;
said first type of storage accessory
comprising a drawer assembly removably
supported on said first base shelf such that said
first ledge and said second ledge are exposed
between said drawer assembly and said pair of
opposing sidewalls and said first type of storage
accessory mounted in said base unit as a complete
unit by positioning the first base shelf on one of
the first plurality of shelf supports and the second
plurality of shelf supports; and
said second type of storage accessory
comprising a storage assembly, said second type of
storage accessory mounted in the base unit as a
complete unit by positioning the second base shelf
on one of the first plurality of shelf supports and
the second plurality of shelf supports;
at least one first stop removably carried by
at least one of the pair of sidewalls and engaging
the first ledge or the second ledge of said first base
shelf when said first base shelf is in said first
location or the third ledge or the fourth ledge of the
second base shelf when said second base shelf is in
the first location, and at least one second stop
removably carried by at least one of the pair of
sidewalls and engaging the first ledge or the
second ledge of said first base shelf when the first
base shelf is in the second location or the third
ledge or fourth ledge of the second base shelf
when the second base shelf is in the second
location, said at least one first stop and said at least
one second stop positioned to limit displacement
of the first type of storage accessory and the
second type of storage accessory relative to the
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first plurality of shelf supports and the second
plurality of shelf supports such that the first type of
storage accessory and the second type of storage
accessory can be supported in either the first
location or the second location.
ANALYSIS
Independent claims 1 and 11
Appellants argue independent claims 1 and 11 together and do not
present any separate arguments for the patentability of dependent claims 2-4,
7, 8, 12, and 14. Br. 14-17. As such, we treat claims 1-4, 7, 8, 11, 12, and
14 as argued as a single group and select independent claim 1 as the
representative claim in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Heneveld discloses a storage system
comprising a base unit 20 with two removable shelves 40 and all of the
elements of claim 1 except for the first and second types of storage
accessories and the first and second stops. Ans. 4-5. The Examiner finds
that Welch teaches a drawer assembly attached to a shelf 22 and concludes
that it would have been obvious to one of ordinary skill in the art to attach
the drawer assembly of Welch to one of Heneveld’s shelves 40. Ans. 4.
The Examiner also finds that Miller teaches a platform 44 attached to a shelf
12 and concludes that it would have been obvious to one of ordinary skill in
the art to attach the platform of Miller to the other one of Heneveld’s shelves
40. Id. Lastly, the Examiner finds that Swedman discloses a stop (in the
form of the upper bracket B) removably received in a sidewall so as to
engage the ledge of a shelf C and concludes that it would have been obvious
to one of ordinary skill in the art to include at least first and second stops to
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engage Heneveld’s shelves 40 because such stops would prevent the shelves
from tipping forward. Ans. 5-6.
Appellants present several arguments contesting this ground of
rejection. First, Appellants argue that Welch and Miller both teach securing
an accessory to a shelf base that is permanently secured in the unit. Br. 14-
15. This argument is not persuasive because, as noted by the Examiner,
Welch and Miller are relied on only for teaching storage accessories
mounted to shelves; Heneveld is relied on for disclosing removably
mounting shelves in a base unit. Ans. 14. The test for obviousness is not
whether features from one reference may be bodily incorporated into another
reference to produce the claimed subject matter but is simply what the
combination of references makes obvious to one of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants also argue that the Examiner uses impermissible hindsight
to selectively pick and combine unrelated elements of the prior art to meet
the claim language. Br. 15. However, we agree with the Examiner that the
rejection is not an improper hindsight reconstruction because it does not
include knowledge gleaned only from Appellants’ disclosure, but rather
takes into account knowledge that was within the level of ordinary skill at
the time the claimed invention was made. Ans. 15 (citing In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971)).
Appellants next assert that “Heneveld does not contemplate different
types of storage accessories that are interchangeable and reconfigurable
where one of the accessories is a drawer.” Br. 15. This assertion is not
commensurate in scope with claim 1, which does not specifically recite
interchangeable and reconfigurable storage accessories. Moreover, contrary
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to Appellants’ assertion, Heneveld discloses a variety of different storage
accessories, as depicted in Figures 2-14.
In addition, Appellants argue that there is no suggestion in any of the
references “for why or . . . how” the various elements could be combined as
proposed and the Examiner has not provided “a convincing line of reasoning
supporting the combination.” Br. 15-16. We disagree. The Examiner has
provided a rationale for each of the proposed modifications. Namely, the
Examiner indicates that providing the storage system of Heneveld with a
drawer as taught by Welch “would have provided storage space which can
be slid out from the storage assembly” and providing a platform as taught by
Miller “would have provided a location to display the contents being stored
in the base unit.” Ans. 4. The Examiner also indicates that providing stops
as taught by Swedman would prevent the shelves of Heneveld from tipping
forward. Ans. 6. Swedman discloses that when using a pair of the brackets
B, they hold the shelf C against tipping or tilting. Swedman, p. 2, col. 1, ll.
48-53. Thus, the Examiner has articulated sufficient reasoning with rational
underpinnings to support the legal conclusion of obviousness.
Appellants also argue that the references do not “disclose or
contemplate a ledge formed between the edge of a shelf and a storage device
for receiving a stop and the references all disclose completely different
structures,” “that none of the references disclose ledges as that term is used
in the claim,” and the Examiner incorrectly determines all of the references
inherently disclose the claimed ledges. Br. 16. However, the Examiner
finds that the combination of Heneveld, Miller, and Welch includes a drawer
assembly removably supported on a first base shelf such that the first and
second ledges are exposed between the drawer assembly and the opposing
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sidewalls. Ans. 5. We agree with the Examiner. Figure 1 of Welch shows a
base plate or shelf 22 that supports a drawer assembly 10, 28, wherein the
shelf has ledges on the upper surface thereof that are exposed between the
drawer assembly and its edges.
In addition, the “ledges” of claim 1 are disclosed in Appellants’
Specification as “ledge portions 146a” that are depicted as being the portions
of the upper surface of the base shelf 146 that are located along the shelf
edges adjacent to the sidewalls 106. Spec., para. [0023]; fig. 2. We
accordingly construe the term “ledge” as used in claim 1 to refer to a portion
of the upper surface of a shelf adjacent an edge of the shelf. In light of this
construction, we agree with the Examiner’s finding that “ledges are
inherently present on all shelves because the outer periphery of any shelf
inherently defines a ledge.” Ans. 15. Thus, the combination proposed by
the Examiner would result in a storage system having shelves supporting a
support accessory and defining ledges formed between a shelf edge and the
storage accessory for receiving a stop.
In view of the above, Appellants’ arguments do not apprise us of
error, and we sustain the rejection of claim 1, and of claims 2-4, 7, 8, 11, 12,
and 14 grouped therewith, under 35 U.S.C. § 103(a) as being unpatentable
over Heneveld, Welch, Miller, and Swedman.
Independent claim 17
Appellants argue claims 17 and 19-21 as a group. Br. 17-18. We
select independent claim 17 as representative pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii) (2011), and claims 19-21 stand or fall with claim 17.
Claim 17 calls for a method of configuring a storage system.
Appellants argue that “[e]ven with the structure constructed by the
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Examiner, there is no teaching of the specific steps set forth in claim 17,”
and “[s]uch a method is not contemplated in any of the references relied on
in the Office action even if combined to create the structure as suggested by
the Examiner.” Br. 18. This argument is not persuasive. As correctly noted
by the Examiner, “the method steps [of claim 17] only call for providing
structural elements, all of which are disclosed by the combination of
Heneveld, Welch, Miller and Swedman, and assembling them in a known
manner which is also disclosed by the combination.” Ans. 16. If a prior art
device, in its normal and usual operation, would necessarily perform the
method claimed, then the method claimed will be considered to be
unpatentable over the prior art device. In re King, 801 F.2d 1324, 1326-27
(Fed. Cir. 1986).
For these reasons, we sustain the rejection of claim 17, and of claims
19-21 grouped therewith, under 35 U.S.C. § 103(a) as being unpatentable
over Heneveld, Welch, Miller, and Swedman.
DECISION
We affirm the decision of the Examiner rejecting claims 1-4, 7, 8, 11,
12, 14, 17, and 19-21.
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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