13826033 - (D) (P.T.A.B. Apr. 14, 2020)

Kelly, Daniel

Patent Trials and Appeals BoardApr 14, 2020

13826033 - (D) (P.T.A.B. Apr. 14, 2020)

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. 13/826,033 03/14/2013 Daniel Kelly PSI-00010 7479 139939 7590 04/14/2020 Massina Patent & Trademark Law PLLC 702 Route 113 Suite B Souderton, PA 18964 EXAMINER POON, ROBERT ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 04/14/2020 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@massinaptl.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DANIEL KELLY, JOHN A. SPADAVECCHIA, and JAMES FAVARON ____________ Appeal 2019-005467 Application 13/826,033 Technology Center 3700 ____________ Before JOHN C. KERINS, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Polymer Solutions International, Inc. as the real party in interest. Appeal Br. 2. Appeal 2019-005467 Application 13/826,033 2 THE INVENTION Appellant’s invention is a shipping pallet. Spec. ¶ 2. Claim 10, reproduced below, is illustrative of the subject matter on appeal. 10. A pallet base structure comprising: a center deck defining a continuous support surface extending between opposed sides and opposed ends, the continuous support surface having a length between the ends which is larger than a width between the opposed sides; a pair of base side members, each base side member having first and second spaced apart base legs and a support member extending between the base legs; and at least two connection members, each connection member configured to releasably connect a respective base side member with the center deck such that the center deck support surface is co-planar with an upper surface of each support member to define a planar pallet surface; wherein when the center deck is disconnected from the base side members, the center deck continuous to independently define a continuous support surface. THE REJECTIONS The Examiner’s rejections rely on the following references: NAME REFERENCE DATE Shepard US 2,109,784 Mar. 1, 1938 Cherrie US 3,471,116 Oct. 7, 1969 Bederman US 4,148,394 Apr. 10, 1979 Shuert US 4,550,830 Nov. 5, 1985 Flum US 4,801,024 Jan. 31, 1989 Brown US 5,829,595 Nov. 3, 1998 French US 2003/0141300 A1 July 31, 2003 Richardson US 2005/0016999 A1 Jan. 27, 2005 Brubaker US 2007/0131147 A1 June 14, 2007 Hartwall US 7,347,328 B2 Mar. 25, 2008 Hartel US 2008/0250987 A1 Oct. 16, 2008 Hailston US 2010/0095875 A1 Apr. 22, 2010 Appeal 2019-005467 Application 13/826,033 3 The following rejections are before us for review: 1. Claims 10–16 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement 2. Claims 10 and 11 are rejected under 35 U.S.C. § 102(b) as anticipated by Shepard. 3. Claims 1 and 6 are rejected under 35 U.S.C. § 103 as being unpatentable over Shepard and Richardson. 4. Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over Shepard, Richardson, and Hartwall. 5. Claims 3 and 4 are rejected under 35 U.S.C. § 103 as being unpatentable over Shepard, Richardson, and French. 6. Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over Shepard, Richardson, and Hailston. 7. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Shepard, Richardson, and Hartel. 8. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Shepard, Richardson, and Cherrie. 9. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Shepard, Richardson, and Brubaker. 10. Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over Shepard and Flum. 11. Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Shepard, Flum, and Bederman. 12. Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Shepard, Flum, and Shuert. 13. Claims 15 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Shepard, Flum, and Brown. Appeal 2019-005467 Application 13/826,033 4 OPINION Written Description – Claims 10–16 The Examiner states there is no written description support for the language in claim 10 directed to the center deck being co-planar with an upper surface of each support member. Final Act. 2. Appellant directs our attention to Figure 14 and to paragraph 39 of the Specification as providing the requisite written description support. Appeal Br. 5. Figure 9 of Appellant’s disclosure depicts base side member 130 comprising leg 134 and support member 132. Fig. 9. Figure 14 shows a pallet comprising base side member 130a, base side member 130b, and center base deck 112 disposed between the two side members. Spec. ¶ 39, Fig. 14. Appellant’s Specification teaches that the upper surface of center deck 112 is “flush” with the upper surface of support member 132. The depiction of Figure 14 is consistent with the teachings of paragraph 39. The written description requirement of 35 U.S.C. § 112 requires that the disclosure of the application relied upon reasonably convey that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The written description requirement is met when the disclosure “allow[s] one skilled in the art to visualize or recognize the identity of the subject matter purportedly described.” Enzo Biochem, Inc. v. Gen–Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). The language at issue in claim 10 has adequate written description support. Accordingly, we do not sustain the Examiner’s Section 112 written description rejection of claims 10–16. Appeal 2019-005467 Application 13/826,033 5 Anticipation of Claims 10–11 by Shepard Appellant argues claims 10 and 11 together. Appeal Br. 10–12. We select claim 10 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Shepard discloses each limitation of the claimed invention. Final Act. 3–4. Appellant argues that Shepard’s center deck is not “continuous” as claimed and that Shepard lacks a releasable connection between the side members and the center deck. See Appeal Br. 11–12. Appellant argues that Shepard’s deck is defined by floor boards that are spaced apart by girders and, therefore, is not continuous. Id. Appellant argues that Shepard’s side members and deck are secured to each other by welding and, therefore, the connections are not releasable. Id. In response, the Examiner states that there are no gaps between the floor boards of Shepard and that the transverse girders bind the boards together to ensure that the platform is continuous. Ans. 12. The Examiner finds that the girders fill any gaps between the boards. Id. at 13. With respect to Appellant’s welding contention, the Examiner points out that Shepard teaches alternative forms of connection such as bolts and rivets. Id. Shepard is directed to a platform that has a metal frame and metal legs. Shepard p. 1, col. 1, ll. 1–8. The upper surface of Shepard’s platform is formed of rectangular-shaped floor members surrounded by channel- shaped side frames. Id. p. 2, col. 2, ll. 11–34. The platform features metallic legs mounted on the side frames. Id. The leg members are secured to the side members by welding, bolts, or rivets. Id. p. 2, col. 2, ll. 38–44. Contrary to Appellant’s argument, we see no evidence that Shepard’s floor boards are spaced apart from each other such that open gaps are present between the boards. Appellant’s argument that Shepard’s legs are Appeal 2019-005467 Application 13/826,033 6 permanently connected by welding is refuted by Shepard’s explicit disclosure of bolts and rivets. See Shepard, Figs 16–22. Determining whether claims are anticipated involves a two-step analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The first step involves construction of the claims of the patent at issue. Id. “During examination, ‘claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.”’ Id. (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation analysis involves comparing the claims to prior art. Id. A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation. Id. Appellant’s Specification does not use the word “continuous,” or any synonym thereof, to describe the center support surface. See generally Spec. Under the circumstances, the Examiner’s finding that Shepard’s center deck is “continuous” comports with a broad, but reasonable interpretation of the claim language. The Examiner’s findings of fact are supported by a preponderance of the evidence. We sustain the Examiner’s Section 102 anticipation rejection of claims 10 and 11. Unpatentability of Claims 12–16 over Combinations Based on Shepard Claims 12–16 depend, directly or indirectly, from claim 10. Claims App. These claims are rejected over Shepard in combination with various references. Final Act. 5–6. Appellant does not argue for the separate Appeal 2019-005467 Application 13/826,033 7 patentability of these claims apart from arguments presented with respect to the anticipation rejection of claim 10 which we have previously considered. Appeal Br. 10–12. We sustain the Examiner’s rejection of claims 12–16. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of arguments for separate patentability). Unpatentability of Claims 1 and 6 over Shepard and Richardson Independent claim 1 is substantially similar in scope to claim 10 except that it recites that the center section is connected to the legs by lug and slot means. Claims App. Appellant argues claims 1 and 6 as a group. Appeal Br. 6–10. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner relies on Richardson as disclosing the lug and slot connection. Final Act. 6–8. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to substitute the connections of Richardson for that of Shepard. Id. at 7. According to the Examiner, a person of ordinary skill in the art would have done this as a matter of substitution of one known element for another to obtain a predictable result. Id. at 7–8. Appellant argues that Richardson is non-analogous art. See Appeal Br. 7–8. Appellant argues that the field of endeavor of the invention is a packaging system “including a multicomponent base structure with a center deck configured such that the center deck can be utilized to support a freestanding device during movement of the freestanding device.” Id. at 8. Appellant argues that Richardson is directed to a kit for a trash container. Appeal 2019-005467 Application 13/826,033 8 Id. Appellant further argues that Richardson is not reasonably pertinent to problem faced by the inventor. Id. According to Appellant, Richardson is concerned with providing a kit for a trash can that can be shipped in a knocked-down state and constructed into a container. Id. In response, the Examiner states that Shepard discloses a planar deck connected to side support members using a connection means. Ans. 11. According to the Examiner, if desired, a person of ordinary skill in the art would look to means other than a weld, rivet, or bolt to connect a platform member to a side member. Id. The Examiner finds that Richardson’s removable lug and slot connection is well known in the art and that simply substituting one connection means for a functionally equivalent one would have been obvious to one of ordinary skill in the art. Id. The Examiner’s position is persuasive. A reference qualifies as prior art for an obviousness determination when it is analogous to the claimed invention. Innovention Toys, LLC. v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably pertinent . . . if 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 re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id. Appeal 2019-005467 Application 13/826,033 9 Here, the problem faced by the inventor is connecting a platform component to a leg component. A wide variety of connection means are well known to persons of ordinary skill over a broad range of mechanical disciplines. We agree with the Examiner that a lug and slot means is a well- known connection technique that would have commended itself to an artisan seeking to connect the leg component to the platform component of a pallet. “We find it not unreasonable in cases such as this, involving relatively simple everyday-type mechanical concepts, to permit inquiry into other areas where one of even limited technical skill would be aware that similar problems exist.” In re Heldt, 433 F.2d 808, 812 (CCPA 1970). Appellant also argues that a person of ordinary skill in the art would not combine Shepard with Richardson because Shepard requires a high degree of rigidity such that a person of ordinary skill in the art would not seek to connect the legs and platform with lug and slot connectors. Appeal Br. 9. This argument is not persuasive because it assumes that Shepard is only useful for teaching heavy duty product applications. However, “[a] reference may be read for all that it teaches, including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR, 550 U.S. at 418–421. We sustain the Examiner’s unpatentability rejection of claims 1 and 6. Unpatentability of Claims 2–5 and 7–9 over Combinations Based on Shepard and Richardson Claims 2–5 and 7–9 depend from claim 1. Claims App. These claims are rejected over Shepard and Richardson in combination with various references. Final Act. 8–11. Appellant does not argue for the separate patentability of these claims apart from arguments presented with respect to Appeal 2019-005467 Application 13/826,033 10 the rejection of claim 1 which we have previously considered. Appeal Br. 6–10. We sustain the Examiner’s rejection of claims 2–5 and 7–9. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION Claims Rejected § Reference(s)/Bases Aff’d Rev’d 10-16 112 Written Description 10-16 10, 11 102 Shepard 10, 11 1, 6 103 Shepard, Richardson 1, 6 2 103 Shepard, Richardson, Hartwall 2 3, 4 103 Shepard, Richardson, French 3, 4 5 103 Shepard, Richardson, Hailston 5 7 103 Shepard, Richardson, Hartel 7 8 103 Shepard, Richardson, Cherrie 8 9 103 Shepard, Richardson, Brubaker 9 12 103 Shepard, Flum 12 13 103 Shepard, Flum, Bederman 13 14 103 Shepard, Flum, Shuert 14 15, 16 103 Shepard, Flum, Brown 15, 16 Overall Outcome 1-16 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED