Ex Parte Van Buuren

Patent Trial and Appeal Board

Sep 28, 2017

12812947 (P.T.A.B. Sep. 28, 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.
12/812,947 01/19/2011 Darren Van Buuren 1083-093U 2359
29973 7590 10/02/2017
CRGO LAW
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
POON, PETER M
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARREN VAN BUUREN1
Appeal 2016-007191
Application 12/812,947
Technology Center 3600
Before DANIEL S. SONG, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1—5, 8, 10, and 11 in the present application, claims
6 and 7 having been canceled, and claim 9 having been withdrawn (App. Br.
1). We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We REVERSE.
1 Referred to as “Appellant” herein. The real party in interest is Poly Dome
Ontario, Inc. (Appeal Brief (hereinafter “App. Br.”) 2).
Appeal 2016-007191
Application 12/812,947
The claimed invention is directed to a calf housing system (Spec.,
Title; Abstract). Representative independent claim 1 reads as follows (App.
Br. 31, Claim 1 App’x, italics added for emphasis):
1. A portable pen unit for use in housing a calf in isolation
from a herd, the pen unit comprising a frame having a front panel
and opposing side panels combining to define an interior
containment area, wherein:
the front panel carries a door hingedly movable between
an open position and a closed position and the door is releasably
maintained in the closed position;
the door carries at least one apertured feeding pail
receptacle for receiving a corresponding feeding pail; and
the at least one apertured feeding pail receptacle is
adapted to be vertically movable relative to the opposed side
panels to adjust the height of the at least one apertured feeding
pail receptacle and the at least one apertured feeding pail
receptacle is adapted to be securable in a plurality of stably
supported vertical positions relative to the opposed side panels.
REJECTIONS
1. The Examiner rejects claims 1—4, 8, 10, and 11 under 35 U.S.C.
§ 102(e) as anticipated by Hampel (US 8,186,306 B2; iss. May 29,
2012) (Final Office Action (hereinafter “Final Act.”) 2).
2. The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Hampel in view of Fisher (US 4,478,175; iss. Oct.
23, 1984) (Final Act. 5).
3. Examiner also rejects claims 1—5, 8, 10, and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Hampel in view of Steinke (US
3,821,865; iss. Jul. 2, 1974) (Final Act. 5).
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Application 12/812,947
ANALYSIS
Rejection 1
The Examiner rejects claims 1—4, 8, 10, and 11, finding that Hampel
discloses each and every limitation of these claims, including the above
italicized limitations reciting an “apertured feeding pail receptacle [that] is
adapted to be vertically movable” and “is adapted to be securable in a
plurality of stably supported vertical positions.” (Final Act. 2—3).
According to the Examiner:
the claimed limitations of ‘adapted to be vertically movable’ and
‘adapted to be securable’ are merely functional recitations, [and]
the pail receptacle and opposed side panels of Hampel are
capable ofperforming the function.
(Final Act. 3, emphasis added).
Specifically, the Examiner finds that:
The connection means in Hampel are tabs 60, 62 and rods 34,
any one of these tabs can be offset and locked in position by rods
34 for incremental adjustment of the panels. For example, fig.
15b shows tabs 60b, 62a, the user can move the middle tab 60b
to the top tab 62a and lock with rod 34, which would place panel
10b higher than panel 10a. Thus, Hampel’s pail receptacle is
capable of being adjusted in height due to incremental movement
to either panels 10a, or 10b.
(Final Act. 3, emphasis added).
The Appellant disagrees with the Examiner’s claim interpretation and
findings, and argues that the limitations “adapted to be vertically movable”
and “adapted to be securable” must be given structural effect (see generally,
App. Br. 9-12 citing In Re Raymond Gianelli, 739 F.3d 1375 (Fed. Cir.
2014)). In that regard, the Appellant argues that in view of the
Specification, these terms mean more than merely “capable of,” and instead:
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Application 12/812,947
terms “adapted to be vertically movable” and “adapted to be
securable” are structural limitations meaning “made to”,
“designed to” or “configured to.”
(Reply Br. 5 ; see also Reply Br. 10).
According to the Appellant:
even if the feed pail receptacles in Hampel are “capable of’
vertical adjustment and “capable of’ being secured in a plurality
of stable vertical positions (which is not admitted), the feed pail
receptacles in Hampel are certainly not “made to”, “designed to”
or “configured to” do so.
(Reply Br. 5).
We generally agree with the Appellant. Initially, we do not find
persuasive, the Appellant’s assertion that the Examiner did not give
structural effect to the limitations at issue because as the Examiner explains:
The examiner did considered [sic] “adapted to” with a
limiting effect because the examiner clearly explained] that
Hampel’s device is “adapted to” perform this limiting effect of
being vertically movable. The examiner did not ignore the
function. Clearly, the structure of the prior art has to be capable
of performing the intended function; otherwise, the prior art
cannot teach this limiting effect.
(Ans. 12).
Nonetheless, under the facts of this case in which the Specification
clearly teaches the importance of height adjustment in the disclosed pen, and
discloses the corresponding structure for performing such a function, we
generally agree with the Appellant that “adapted to” means “made to,”
“designed to,” or “configured to,” instead of merely being “capable of.”
(Spec. 1128, 34; Figs. 4A, 7).
Even with such interpretation, the analysis requires the determination
as to whether the use of tabs in Hampel indicates that its pen was “made to,”
“designed to,” or “configured to,” allow for such height adjustment. We
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Application 12/812,947
agree with the Appellant that it does not. Firstly, nothing in Hampel
suggests changing the height of the front panel relative to the side panels. In
contrast to the Examiner’s finding that the tabs can be offset to allow for
height adjustment, the VanBuuren Declaration establishes that many of the
altered configurations of Hampel result in a pen structure that leans heavily
to one side, or cannot be fully assembled (see generally, VanBuuren
Declaration; see also App. Br. 14—22). Such structure, at least in the
attempted configurations set forth in the VanBuuren Declaration, cannot be
reasonably considered as being “in a plurality of stably supported positions,”
as claim 1 further requires.
In Hampel, the three upper tabs 60 provided on one side of front panel
12 are not positioned at the same heights as the three lower tabs 62 on the
other side of front panel 12 and, when connected to side panels 16, prevent
vertical movement of the front panel when properly assembled (see Hampel,
Fig. 2). Although the VanBuuren Declaration does not address the
embodiment in which the front panel of Hampel is raised relative to both of
the side panels so that the front panel is level, such positioning would raise
the front panel so high (raised about half the height of the front panel) that
stability of the resultant structure would have been questionable, and it
would no longer function as a pen at all considering that an unobstructed
opening about half of the height of the front panel would result.
We further find generally persuasive, the Appellant’s argument that
the Examiner’s anticipation rejection requires that Hampel’s tabs 60, 64 be
“assembled differently than the assembly taught by Hampel.” i.e.,
misassembled (App. Br. 7; see also Reply Br. 12). While “[i]t is well settled
that the recitation of a new intended use for an old product does not make a
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Application 12/812,947
claim to that old product patentable,” In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997), that does not give latitude to assemble the old product in a
manner unsupported in the reference. In that regard, to establish
anticipation, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). In other
words, “there must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill in the field of
the invention.” Scripps Clinic & Research Found, v. Genentech, Inc., 927
F.2d 1565, 1576 (Fed. Cir. 1991). The misassembled arrangement of
Hampel’s components relied upon by the Examiner finds no basis in the
disclosure of Hampel itself, and there is no persuasive evidence or argument
that Hampel would have been viewed as disclosing components to be
assembled in the manner now suggested by the Examiner. See Dell Inc. v.
Acceleron, LLC, 818 F.3d 1293, 1299 (Fed. Cir. 2016) (“[t]he Board could
properly find that Hipp does not explicitly or implicitly describe its web
server processing cards as programmed to be capable of remotely booting
from the NAS. For anticipation purposes, the absence of such a teaching
makes it immaterial whether, as Dell contends, a user of the Hipp system
could modify the system to activate such remote booting.”); In re Chudik,
851 F.3d 1365, 1372 (Fed. Cir. 2017) (“a prior art reference that ‘“must be
distorted from its obvious design”’ does not anticipate a patent claim.”).
Therefore, in view of the above considerations, we reverse the
Examiner’s anticipation rejection of claim 1, and claims 2—4, 8, 10, and 11
that ultimately depend therefrom.
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Rejection 2
The Examiner rejects claim 5 as obvious over Hampel in view of
Fisher (Final Act. 5). In our view, the Examiner’s reliance on Fisher does
not adequately set forth a prima facie case of obviousness. In particular, in
relying on Fisher for disclosing panel connections wherein panels slide
vertically within channels, and substituting this connection for the tabs of
Hampel (Final Act. 5), the rejection eliminates the very structure of Hampel
that the Examiner found to be “capable of’ allowing the recited height
adjustment. Accordingly, it is unclear what structure would then allow for
the height of the aperture feeding pail receptacle to be “securable in a
plurality of stably supported vertical positions” as required by claim 1 from
which claim 5 ultimately depends. Therefore, this rejection is also reversed.
Rejection 3
The Examiner alternatively rejects claims 1—5, 8, 10, and 11 as
obvious over Hampel in view of Steinke (Final Act. 5). The Examiner finds
that even if Hampel is not capable of supporting an aperture feeding pail
receptacle to be “securable in a plurality of stably supported vertical
positions relative to the opposed side panels,” Steinke discloses a channeled
end gate with a door, “wherein the door is securable in a plurality of stably
supported vertical positions (by using refs. 30, 34, 36, 35, 40) relative to the
opposed side panels (12, 13).” (Final Act. 5—6). Accordingly, the Examiner
concludes that:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to replace the hinge/pin
connection system of Hampel with the sliding channel
connection system of Steink[e], since a simple substitution of one
known element for another would obtain predictable results. . . .
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Application 12/812,947
In addition, it would have been obvious to one having ordinary
skill in the art at the time the invention was made to have the at
least one apertured feeding pail receptacle (which is mounted on
the door) of Hampel be adapted to be securable in a plurality of
stably supported vertical positions as taught by Steinke relative
to the opposed side panels in order to allow the front panel/door
to be open/close in various positions.
(Final Act. 6).
The Appellant disagrees and argues that combination is based on
impermissible hindsight (App. Br. 24) in that the Examiner has failed to
articulate a reason with some rational underpinnings to support the
obviousness conclusion (App. Br. 25). According to the Appellant:
the Examiner is referring to allowing the door to be open/closed
in various vertical positions. However, no explanation is offered
as to why, absent hindsight knowledge of the invention, one
would seek this result. There is no teaching or suggestion in
Steinke that the door should be maintained in intermediate
positions between fully raised and fully lowered.
(App. Br. 26).
We generally agree with the Appellant. As noted by the Appellant:
If the “hinge/pin connection system” [] refers to the hinged
door of Hampel, the Examiner’s proposed modification (“simple
substitution”) would simply produce a modified version of
Hampel in which the hinged door of Hampel was replaced with
a vertically sliding door. This modified Steinke would not meet
the claim limitation of “the front panel carries a door hingedly
movable between an open position and a closed position”.
(App. Br. 27).
As to the more likely position of the Examiner in applying Steinke to
Hampel, the Appellant argues that:
On the other hand, if the “hinge/pin connection system” []
to be replaced refers to interconnection between the side panels
and the front panel of Hampel, the proposed modification
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Application 12/812,947
(“simple substitution”) would simply produce a hinged door in a
fixed front panel. In particular, upon review of Steinke it is clear
that it is only the door of Steinke which slides vertically; the front
panel of Steinke (actually two separate pieces that cooperate with
the door) is rigidly fixed to the side panels. . . .
Therefore, replacing the interconnection between the side
panels and the front panel of Hampel would still leave a fixed
front panel with a hinged door.
(App. Br. 27, citing Steinke, col. 2,11. 29-35).
The Examiner explains that “[e]ven though Steinke has a different
intention for his front panel/door to be opened/closed in various positions,
Steinke’s front panel/door structure, nevertheless, is capable of performing
applicant's intention.” (Ans. 18).
The Examiner’s obviousness analysis is inadequate. In Steinke, the
sliding channel connection provides an operable door, whereas Hampel
already has a door. While sliding channel connection could have been used
as a substitute to the hinge/pin connection of Hampel’s front and side walls,
to apply such connection for a door to the edge of a wall, there should be a
reason to do so considering the sliding channel connection stems from
Steinke’s door and not its front wall. The Examiner’s rejection has not
articulated a reason with rational underpinnings to incorporate such feature
for the door of Steinke to the front wall of Hampel.
Furthermore, even if it would have been obvious and there was a
reason to substitute the sliding channel connection of the door of Steinke to
the front wall of Hampel, that does not address why a person of ordinary
skill in the art would then incorporate the cable/pulley lifting mechanism of
Steinke to allow lifting of the front wall of Hampel. Again, such
cable/pulley lifting mechanism of Steinke provides an operable door. The
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Application 12/812,947
Examiner’s rejection has not articulated a reason with rational underpinnings
to incorporate the lifting feature for the front wall of Hampel when Hampel
already discloses a hinged door. In that regard, we also find persuasive, the
Appellant’s argument that “the door mechanisms of Hampel (hinged door)
and Steinke (vertically sliding door) are alternatives,” and observe that the
Examiner has not provided an articulated reason with rational underpinnings
to provide “both a vertically sliding front door or panel and another hinged
door in the same place.” (App. Br. 27).
Therefore, in view of the above considerations, we agree with the
Appellant that the Examiner has not set forth an adequate reason with
rational underpinnings that is sufficient to support the conclusion of
obviousness. Accordingly, we reverse the Examiner’s obviousness rejection
of claim 1, and claims 2—5, 8, 10, and 11 ultimately depending therefrom.
CONCLUSION
The Examiner’s rejections are REVERSED.
REVERSED
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