Ex Parte White et al

Board of Patent Appeals and Interferences

Nov 8, 2010

11124930 (B.P.A.I. Nov. 8, 2010)

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.
11/124,930 05/09/2005 Paul curtis White RB-0113 1840
7590 11/09/2010
Robert C. Brown
1207 Sandhurst Drive
Tallahassee, FL 32312
EXAMINER
PALO, FRANCIS T
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
11/09/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL CURTIS WHITE and RALPH DAVID BRYAN
____________________

Appeal 2009-007848
Application 11/124,930
Technology Center 3600
____________________

Before LINDA E. HORNER, JOHN C. KERINS, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/124,930

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STATEMENT OF THE CASE
Paul Curtis White and Ralph David Bryan (Appellants) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 2-8, 12-14 and
21. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to a wheeled flowerpot
having a relocation and a non-relocation mode, and a removable handle
(Spec. 3: 3-24).
Claim 12, reproduced below, is representative of the subject matter on
appeal.
12. A wheeled flowerpot assembly for holding planting
medium and one or more living plants, comprising:
a) a pot-shaped element; and
b) a wheel assembly including axle means mounted on
said pot-shaped element and at least one rotatable element
disposed on said axle means; and,
c) a receptacle attached to said pot-shaped element for
receiving a removably attachable handle to tilt and relocate said
assembly.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 2-6, 12-14 and 21 are rejected under 35 U.S.C. § 102(b) as
being anticipated by, or in the alternative under 35 U.S.C. § 103(a) as
being unpatentable over Ortlieb (US 6,708,991 B1, issued Mar. 23,
2004).
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2. Claims 2, 5-8 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ortlieb in view of Parker (US 2006/0232029,
published Oct. 19, 2006).

ISSUE
The issue before us is whether the Examiner erred in finding that
Ortlieb describes a receptacle for receiving a removably attachable handle,
as called for in independent claim 12 (App. Br. 12).

ANALYSIS
Rejection over Ortlieb
Appellants contend that Ortlieb does not describe a receptacle for
receiving a removably attachable handle, as called for in independent claim
12 (App. Br. 12).
The Examiner found that Ortlieb describes two internally threaded
support receivers 32, wherein each of the receivers 32 is capable of the
intended use recitation “for receiving a removably attachable handle to tilt
and relocate said assembly” (Ans. 5). The Examiner found that in the
“broadest possible interpretation” afforded the intended use statement, the
handle assembly comprising the vertical support rods 50 and horizontal
member 60 could be disassembled from each other (Ans. 6). The Examiner
found that since “there is no language in Ortlieb to preclude such
disassembly, the examiner’s rationale is plausible” (id.).
Appellants contend that there is no teaching in Ortlieb to suggest that
the handle 60 is removably affixed, wherein “the word ‘affix’ is defined by
Webster as meaning ‘to attach physically,’” nor is there any support
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suggesting a need, capability or desirability of removing the handle 60 once
it is affixed to the support rods 50 (App. Br. 14).
Claim 12 calls for, inter alia, “a receptacle attached to said pot-shaped
element for receiving a removably attachable handle to tilt and relocate said
assembly.”
Ortlieb describes an ambulatory device 10 comprising two threaded
receivers 32, the receivers accepting threaded lower ends 52 of vertical
support rods 50, and the vertical support rods including upper ends 54 to
which the handle 60 is affixed (col. 2, ll. 28-60).
The ordinary meaning of the word “affix” includes “to attach
physically.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed.
1999). Appellants’ proffered the same definition of the word (App. Br. 14).
The Examiner has offered no other definition of the word “affix.”
Therefore, we will use Appellants’ definition of the word “affix,” that is, “to
attach physically” in our analysis.
We find that in Ortlieb, the handle 60, by being affixed to the upper
ends 54 of the support rods 50, is physically attached to upper ends 54 of the
support rods 50. Since the lower ends 52 of the rods 50 are threaded into the
receivers 32 prior to the handle 60 being affixed to the upper ends 54 of the
rods 50, the handle 60 would have to be removable from the upper ends 54
of the rods 50 if the lower ends 52 of the rods 50 were to be capable of being
threadedly removed from the receivers 32. Ortlieb is silent, however, as to
removability of the handle 60 from the upper ends 54 of the rods 50, and
also as to removability of the handle 60 and/or the threaded lower ends 52 of
vertical support rods 50 from receivers 32. As such, it becomes incumbent
upon the Examiner to provide an adequate basis in fact and/or technical
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reasoning that would support a finding that in Ortlieb, the handle 60 along
with the threaded lower ends 52 of vertical support rods 50 are capable of
being removable from receivers 32. We find that the Examiner’s broadest
possible interpretation afforded the intended use statement, as set forth
supra, that the handle assembly comprising the vertical support rods 50 and
horizontal member 60 could be disassembled from each other is an
unsupported statement that does not provide the requisite adequate basis in
fact and/or technical reasoning. In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.”)
The Examiner has not made adequate findings to support a prima
facie case of anticipation or presented sufficient reasoning to support a
conclusion of obviousness regarding the removability of Ortlieb’s handle 60
along with the threaded lower ends 52 of vertical support rods 50 from
receivers 32.
Thus, we are constrained to reverse the rejection of independent claim
12, and of claims 2-6, 13, 14 and 21, which depend therefrom.

Rejection over Ortlieb and Parker
The Examiner has responded to Appellants’ arguments regarding the
merits of claims 7 and 8 (Ans. 7). The Examiner has also stated that, “upon
closer examination, the examiner submits that the claims [claims 7 and 8]
are directed to a non-elected species, and as such are hereby withdrawn by
the examiner” and “[n]evertheless, the rejection of claims 7 and 8 is included
in this examiners answer” (Ans. 10).
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We find that the Examiner has stated that claims 7 and 8 are both
withdrawn and included in this appeal. We find that the withdrawal of
claims 7 and 8 is inappropriate at this time and, therefore, consider claims 7
and 8 as being part of this appeal.2
The Examiner has not relied on Parker for any teaching that would
remedy the deficiency in Ortlieb (Ans. 7).
Thus, we are constrained to reverse the rejection of claims 2, 5-8 and
12.

CONCLUSION
The Examiner has erred in finding that Ortlieb describes a receptacle
for receiving a removably attachable handle, as called for in independent
claim 12.

DECISION
The decision of the Examiner to reject claims 2-8, 12-14 and 21 is
reversed.

REVERSED

2 See also 37 CFR § 1.142(a) and MPEP § 811 (8th ed., Rev. 7, Jul. 2008)

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mls

ROBERT C. BROWN
1207 SANDHURST DRIVE
TALLAHASSEE, FL 32312