Ex Parte Vanderberg et al

Patent Trial and Appeal Board

Jul 31, 2017

13831837 (P.T.A.B. Jul. 31, 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.
1034.047 2900
EXAMINER
COOLMAN, VAUGHN
ART UNIT PAPER NUMBER
3618
MAIL DATE DELIVERY MODE
13/831,837 03/15/2013 Matthew Alexander VANDERBERG
36790 7590 07/31/2017
TILLMAN WRIGHT, PLLC
PO BOX 49309
CHARLOTTE, NC 28277-0076
07/31/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW ALEXANDER VANDERBERG and
DANIEL LEE BIZZELL
(Applicant: H & M Innovations, LLC)1
Appeal 2016-008113
Application 13/831,8372
Technology Center 3600
Before MAHSHID D. SAADAT, LARRY J. HUME, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 33, 35—39, 43—47, and 96—99. Appellants have canceled
claims 1—32, 34, 40-42, and 48—95. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Applicant information as originally filed was obtained from USPTO "BIB
DATA SHEET."
2 According to Appellants, the real party in interest is M & C Innovations,
LLC. App. Br. 3.
Appeal 2016-008113
Application 13/831,837
STATEMENT OF THE CASE3
The Invention
Appellants' disclosed embodiments and claimed invention relate to
improved wheeled and collapsible insulating coolers. Spec. Tflf 5—6.
Exemplary Claim
Claim 33, reproduced below, is representative of the subject matter on
appeal (emphasis and formatting added to contested limitations):
33. A single-walled expandable and collapsible cooler,
comprising:
(a) a base defining a bottom portion of the cooler;
(b) an upper rim defining an upper portion of the cooler;
and
(c) a collapsible cooler wall extending between and
attached to said base and said upper rim and surrounding an
interior storage space of the cooler, the cooler wall comprising
a flexible elastomeric membrane formed from silicone rubber
that includes a plurality of hinge lines at which the membrane is
configured to bend such that the membrane is transitional
between a collapsed configuration and an expanded
configuration, each hinge line of the plurality of hinge lines
being generally less thick than other portions of the membrane;
(d) wherein the cooler is transitional between an
expanded configuration for use of the cooler, and a collapsed
configuration during nonuse of the cooler, by bending of the
membrane of the cooler wall along the hinge lines, each of the
configurations being a stable configuration of the cooler; and
3 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Dec. 8, 2015); Reply Brief ("Reply Br.," filed Aug. 22, 2016); Examiner's
Answer ("Ans.," mailed June 21, 2016); Final Office Action ("Final Act.,"
mailed Apr. 6, 2015); and the original Specification ("Spec.," filed
Mar. 15,2013).
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Application 13/831,837
(e) wherein the membrane comprises an outer surface
located on the exterior of the cooler and an inner surface
located in the interior storage space of the cooler,
(f) wherein the membrane defines the interior storage
space of the cooler.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Mann et al. ("Mann") US 5,913,448 June 22, 1999
Kusuma et al. ("Kusuma") US 2005/0127073 Al June 16, 2005
Rejections on Appeal
R1. Claims 33, 35—39, 43—47, and 96—99 stand rejected under 35
U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite. Ans. 2; see also Final Act. 2.
R2. Claims 33, 39, and 96 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Mann. Ans. 3; see also Final Act. 3.
R3. Claims 35—38, 43—47, and 97—99 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over the combination of Mann and
Kusuma. Ans. 7; see also Final Act. 7.
ISSUES AND ANAFYSIS
We agree with particular arguments advanced by Appellants with
respect to claims 33, 35—39, 43—47, and 96—99 for the specific reasons
discussed below.
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Application 13/831,837
1. $ 112,12/$ 112(b) Rejection Rl: Claims 33. 35-39. 43^17. & 96-99
Issue 1
Appellants argue (App. Br. 12) the Examiner's rejection of claim 33
under 35 U.S.C. § 112(b) as being indefinite is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the recitations of independent
claims 33, 39, and 96 are indefinite because, allegedly, "[t]he entirety of the
. . . claim limitations appear to be incompatible with one another due to the
meaning of the words 'surrounding, ['] 'located in', and 'defines?'" Ans. 2.
Analysis
Appellants contend the recited "physical relationship is clear and
definite." App. Br. 12. Further,
The collapsible cooler wall surrounds the interior storage space,
and in fact the membrane of the collapsible cooler wall defines
the interior storage space. An outer surface of the membrane is
"located on the exterior of the cooler", and an inner surface of
the membrane is "located in the interior storage space of the
cooler". Applicant respectfully submits that this physical
relationship is clear and definite, and that accordingly the
section 112 rejection is improper.
Id.
We have reviewed the appealed claims, Appellants' disclosure,
Appellants' arguments, and the Examiner's legal conclusions of
indefmiteness. For essentially the same reasons argued by Appellants {id.),
we reverse the Examiner's indefmiteness Rejection Rl of independent
claim 33, and also the rejection of independent claims 39 and 96, which are
of commensurate form. For the same reasons, we also reverse the
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Application 13/831,837
indefiniteness rejections of claims 35—38, 43—47, and 97—99 that depend
therefrom.
2. $103 Rejection R2 of Claims 33, 39, and 96
Issue 2
Appellants argue (App. Br. 8—9; Reply Br. 2—5) the Examiner's
rejection of claim 33 under 35 U.S.C. § 103(a) as being obvious over Mann
is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art teaches or suggests
"[a] single-walled expandable and collapsible cooler" that includes, inter
alia, "a collapsible cooler wall. . . comprising a flexible elastomeric
membrane . . . wherein the membrane comprises an outer surface located on
the exterior of the cooler and an inner surface located in the interior storage
space of the cooler," as recited in claim 33, and as commensurately recited
in each of independent claims 39 and 96?
Analysis
Appellants contend Mann's collapsible exterior wall 22 "would still
clearly not have an inner surface 'located in the interior storage space of the
cooler' and would not 'define [] the interior storage space of the cooler' as
recited." App. Br. 9.
We are persuaded by Appellants' arguments. Mann teaches a cooler
having a collapsible exterior wall 22 and an interior wall 20 that defines the
interior storage space of the cooler. See Mann 2:64-67. We, therefore,
agree with Appellants that Mann does not teach or suggest a "membrane
[that] comprises an outer surface located on the exterior of the cooler and an
inner surface located in the interior storage space of the cooler; wherein the
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Application 13/831,837
membrane defines the interior storage space of the cooler," as claimed.
App. Br. 9. Thus, for essentially the same reasons argued by Appellants
(id.), we reverse the Examiner's obviousness Rejection R2 of independent
claim 33, and also the rejection of independent claims 39 and 96, which
recite the contested limitations in commensurate form.
3. Rejection R3 of Claims 35—38, 43—47. and 97—99
In light of our reversal of the rejections of independent claims 33, 39
and 96, supra, we also reverse obviousness Rejection R3 of claims 35—38,
43—47, and 97—99 under § 103, which variously and ultimately depend from
claims 33, 39, and 96. On this record, the Examiner has not shown how the
additionally cited secondary Kusuma reference overcomes the
aforementioned deficiencies with Mann, as discussed regarding claim 33. In
reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[Djependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.").
CONCLUSIONS
(1) The Examiner erred with respect to indefmiteness Rejection R1
of claims 33, 35—39, 43—47, and 96—99 under 35 U.S.C. § 112(b), and we do
not sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejections R2
and R3 of claims 33, 35—38, 39, 43—47, and 96—99 under 35 U.S.C. § 103(a)
over the cited prior art of record, and we do not sustain the rejections.
DECISION
We reverse the Examiner's decision rejecting claims 33, 35—39,
43—47, and 96-99.
REVERSED
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