WEATHERHAVEN GLOBAL RESOURCES LTD.

Patent Trials and Appeals Board

Jul 2, 2020

14737740 - (D) (P.T.A.B. Jul. 2, 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.
14/737,740 06/12/2015 Brian D. Johnson W216 0132/BMG 4196
720 7590 07/02/2020
OYEN, WIGGS, GREEN & MUTALA LLP
480 - THE STATION
601 WEST CORDOVA STREET
VANCOUVER, BRITISH COLUMBIA V6B 1G1
CANADA
EXAMINER
AHMAD, CHARISSA L
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
mail@patentable.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN D. JOHNSON and GLEN V. THORNE
____________________

Appeal 2019-0068611
Application 14/737,740
Technology Center 3600
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 4–11, 13, 14, and 17. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The citations herein refer to the Specification filed June 12, 2015 (“Spec.”),
Final Office Action mailed May 1, 2018 (“Final Act.”), Appeal Brief filed
April 29, 2019 (“Appeal Br.”), Examiner’s Answer mailed August 9, 2019
(“Ans.”), and Reply Brief filed September 19, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Weatherhaven Global Resources Ltd.
Appeal Br. 3.
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SUBJECT MATTER ON APPEAL
The invention relates to “freight shipping containers, portable shelters
and more particularly collapsible portable shelters having both rigid frame
and flexible fabric sections which collapse to . . . rigid shipping container[s]
for transporting.” Spec. ¶ 2. Claims 1 and 14 are independent. Appeal Br.,
Claims App. Independent claim 1, reproduced below, is illustrative of the
claimed subject matter.
Claim 1: A portable, collapsible shelter comprising:
a) a rigid, hollow container having an interior and
comprising opposed ends, opposed vertical sides, a
horizontal top and bottom and four corner posts, and
wherein said corner posts each comprise outer and inner
telescopic elements, each said inner element having an
upper end and being secured at its upper end to said
horizontal top and being reversibly telescopically slidable
within said outer element between a lowered position for
transit and an extended position when not in transit; said
ends, sides, top and bottom being secured to form said
rigid container having ISO Series 1 freight container
external dimensions and corner fitting locations when said
inner telescopic elements are in said lowered transit
position;
b) at least one of said vertical sides comprising a pivoting
wall portion having a lower edge and hingedly connected
to said vertical side along the lower edge of said pivoting
wall portion to pivot between a closed vertical position
whereby said pivoting wall portion forms part of said at
least one of said vertical sides of the container when said
inner telescopic elements are in said lowered position for
transit and an open horizontal position, said pivoting wall
portion having an outer edge, and whereby an opening is
formed in said vertical side when said pivoting wall
portion is in the horizontal position;
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c) means associated with said container and with said
pivoting wall portion for releasably securing said pivoting
wall portion in said vertical position;
d) means adapted to support said pivoting wall portion for
releasably maintaining said pivoting wall portion in said
horizontal position;
e) a collapsible frame for supporting a flexible cover above
said pivoting wall portion while said pivoting wall portion
is in said lowered horizontal position and said inner
element is in said extended position, said collapsible frame
being removably attached to said outer edge of said
pivoting wall portion and to said container when said
pivoting wall portion is in said lowered horizontal
position; and
f) said flexible cover being secured to said collapsible
frame, to the edges of said pivoting wall portion and to the
edges of said opening in said vertical side to be thereby
supported above said pivoting wall portion when said
pivoting wall portion is in said lowered horizontal position
thereby forming an enclosed space above said pivoting
wall portion open to the interior of said container when
said pivoting wall portion is lowered to the horizontal
position; and
g) a hydraulic cylinder located within each said corner post
and connected at its upper end to said inner telescopic
element of said corner post and at its lower end to said
outer telescopic element of said corner post for reversibly
telescopically lowering and extending each said inner
element within said outer element.
Id.
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REJECTIONS
Claim(s)
Rejected 35 U.S.C. § References/Basis
1, 4–11, 14,
17 103(a) Johnson,
3 Morrow,4 Kim,5 Oudelaar,6 Ju7
13 103(a) Johnson, Morrow, Kim, Oudelaar, Ju, Davis8

ANALYSIS
Obviousness Based on Johnson, Morrow, Kim, Oudelaar, and Ju
Appellant argues claims 1, 4–11, 14, and 17 as a group. Appeal
Br. 9–14; Reply Br. 2–5. We select independent claim 1 as representative,
and claims 4–11, 14, and 17 stand or fall with independent claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
In rejecting independent claim 1, the Examiner finds Johnson
discloses the invention substantially as claimed. Final Act. 2–3. In
particular, the Examiner finds Johnson discloses container 10, having
opposed ends 16, opposed vertical sides, i.e., side walls 12, horizontal top,
i.e., roof 14, and four corner posts, i.e., vertical rails 24. Id. at 2.
The Examiner acknowledges Johnson discloses a fixed top and, thus,
does not disclose telescopic elements within the posts to raise and lower the
horizontal top. Id. at 3. The Examiner finds Morrow teaches an extendable
height container/shelter having corner posts comprising outer and inner

3 Johnson et al., US 5,761,854, issued June 9, 1998 (“Johnson”).
4 Morrow, US 2003/0115808 A1, published June 26, 2003.
5 Kim, US 6,227,397 B1, issued May 8, 2001.
6 Oudelaar, US 7,171,890 B2, issued Feb. 6, 2007.
7 Ju, US 2006/0180190 A1, published Aug. 17, 2006.
8 Davis, US 3,321,233, issued May 23, 1967.
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telescopic elements, i.e., telescoping guide cylinders 78. The Examiner
further finds Morrow teaches a hydraulic cylinder, i.e., central hydraulic
jack 76, for reversibly telescopically lowering and extending each inner
telescopic element within the respective outer telescopic element. Id. The
Examiner determines it would have been obvious to one having ordinary
skill in the art to modify Johnson’s disclosure to include Morrow’s hydraulic
cylinder and corner posts comprised of outer and inner telescopic elements
to allow the shelter be collapsed into a smaller size for easier transport of the
shelter and expanded to more comfortably function as a shelter. Id.
Although Morrow teaches a hydraulic cylinder, the Examiner
acknowledges Morrow does not teach a hydraulic cylinder within each of the
four corner posts. Id. at 3–4. The Examiner finds Kim teaches an extendible
shipping container having, at each of the four corners, an outer telescopic
element, i.e., fixed post 14, and an inner telescopic element, i.e., mobile
post 16, that is raised and lowered by a hydraulic cylinder. Id. at 4. The
Examiner determines it would have been obvious to replace a
centrally-located hydraulic cylinder, as Morrow teaches, with a hydraulic
cylinder in each of the four corners, as Kim teaches, because the location of
a hydraulic cylinder is a matter of design choice. Id. The Examiner also
determines such a replacement would have been obvious to free the interior
of the shelter from obstructions. Id.
The Examiner also acknowledges that Morrow’s inner telescopic
element is at the bottom of the container, and that the outer telescopic
element is at the top. Id. The Examiner finds Kim’s inner and outer
telescopic elements are located at the top and bottom, respectively. The
Examiner determines providing a telescopic element at the top or the bottom
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of the container is a matter of obvious design choice. Id. The Examiner also
determines it would have been obvious to provide the inner telescopic
element at the top of the container to allow the larger outer element to be at
the bottom and provide a stronger support for the roof. Id.
Although both Morrow and Kim teach using a hydraulic cylinder to
raise the height of a structure, the Examiner acknowledges they do not teach
the cylinder being connected at its upper end to the inner telescopic element
and at its lower end to the outer telescopic element. Id. at 4–5. The
Examiner finds Oudelaar teaches a hydraulic cylinder, i.e., actuator 20,
connected at its upper and lower ends to the inner telescopic element, i.e.,
tube section 4, and outer telescopic element, i.e., tube section 2, respectively.
Id. at 5. According to the Examiner, it would have been obvious to
incorporate a hydraulic cylinder connected at its upper and lower ends to the
inner and outer telescopic elements, respectively, because the upper end of
the cylinder would push the inner element upwardly to lift the top of the
shelter. Id.
Lastly, the Examiner acknowledges Johnson does not disclose the
frame is collapsible. Id. The Examiner finds Ju teaches a collapsible frame,
and determines it would have been obvious to substitute Johnson’s frame for
Ju’s collapsible one to make storage, assembly, and transport easier. Id.
(citing Johnson 4:18–21).
Appellant asserts that the Examiner fails to consider the claimed
invention as a whole. Reply Br. 4. We disagree. The Examiner does not
impermissibly generalize the claimed invention, but instead identifies each
claim limitation in the prior art and provides reasons why a person of
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ordinary skill would have combined the prior art to result in the claimed
invention. Final Act. 2–5.
Appellant also contends Morrow teaches away from using hydraulic
cylinders in conjunction with and connected to telescopic elements in the
corner posts for raising and lowering the roof of the container. Appeal
Br. 10–11. According to Appellant, an important feature of Morrow is that
its construction fully supports the roof and upper walls and keeps them
elevated during use without the need for hydraulics or other supports. Id. at
10 (citing Morrow ¶¶ 1, 2, 5). Appellant further alleges Morrow teaches the
use of a central hydraulic cylinder to raise all of the roof elements at the
same time, until the upper wall and roof portions can be supported on the
lower end walls. Id. at 11 (citing Morrow, Figs. 4–7).
We agree with Appellant that Morrow’s construction does not rely on
hydraulics or other supports to keep the roof and upper walls elevated. The
Examiner, however, is proposing to modify Johnson, not Morrow, to use
hydraulic cylinders connected to the telescopic elements in the corner posts,
as taught by Kim and Oudelaar. Final Act. 4–5. Moreover, “[a] reference
does not teach away . . . if it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Morrow’s
objective to provide a structure that supports the roof and upper walls in the
elevated position without hydraulics does not discredit incorporating
hydraulic cylinders with the telescopic elements in the corner posts to raise
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and lower a roof. Morrow, therefore, does not teach away from the
Examiner’s proposed combination.
Appellant additionally argues the Examiner misinterprets Morrow and
Kim. Reply Br. 2–4. Appellant contends: “[T]he guide cylinders 78
disclosed in Morrow only function to align the top 14 and bottom 16. They
do not cause the roof of the container to be extended to provide additional
space. That is done by the central hydraulic jack [76].” Id. at 2. Appellant
also argues Kim does not specify the location of its hydraulic cylinders nor
explain why a particular location would be advantageous. Id. at 3. Per
Appellant, “[b]y unjustifiably attributing teachings to Kim and Morrow
which are not disclosed in those references, the Examiner is clearly applying
hindsight with knowledge of Applicant’s disclosure.” Id. at 4.
Beginning with Morrow, the Examiner is not proposing to modify
Johnson to include only Morrow’s guide cylinders 78 to raise and lower the
roof, as Appellant’s argument suggests. Rather, the Examiner relies on
Morrow’s guide cylinders 78 in conjunction with hydraulic jack 76, and
reasons it would have been obvious to modify Johnson’s disclosure to
include Morrow’s outer and inner telescopic elements, i.e., guide
cylinders 78, and hydraulic cylinder to allow the shelter be collapsed into a
smaller size for easier transport of the shelter and expanded to more
comfortably function as a shelter. Final Act. 3. Indeed, Morrow teaches
central hydraulic jack 76 raises roof section 18 as telescoping guide
cylinders 78 align top 14 and bottom 16 of structure 12. Morrow ¶ 59. As
hydraulic jack 76 and guide cylinders 78 enable roof 18 to be raised and
thereby expand structure 12, the Examiner’s reason for combining the
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teachings of Johnson and Morrow is based on Morrow’s disclosure, not
hindsight.
Turning to Kim, Figure 3 shows fixed post 14 and mobile post 16
located in each of the four corners of container 10. Kim, Fig. 3. Kim further
teaches a hydraulic cylinder may be used to adjust mobile post 16 along
fixed post 14. Id. at 3:48–53. As Kim teaches a hydraulic cylinder to move
mobile post 16 relative to fixed post 14, both of which are located in a
corner, a person of ordinary skill in the art would have understood that the
hydraulic cylinder is likewise located in the corner. The Examiner reasons it
would have been obvious to a person of ordinary skill in the art to replace a
centrally-located hydraulic cylinder, as Morrow teaches, with a hydraulic
cylinder in each of the four corners, as Kim teaches, to free the interior of
the shelter from obstructions. Final Act. 4. The Examiner’s reason is not
premised on hindsight, but instead on the teachings of Kim and the common
knowledge of a person of ordinary skill in the art.
Appellant alleges the Examiner does not provide a reasonable
motivation to combine the prior art teachings. Reply Br. 4–5. Specifically,
Appellant argues:
Here the Examiner misconstrues Kim to come to the conclusion
that the person skilled in the art would look to Kim to resolve the
problem of load on the central hydraulic cylinder in Morrow by
replacing Morrow’s central load-bearing hydraulic cylinder for
raising the roof with load-bearing hydraulic cylinders in the
corner posts of Kim, whereas in Kim the hydraulic cylinders are
not load-bearing nor is their location specified, nor are they
connected to a roof.
Id.
Contrary to Appellant’s argument, the Examiner is not relying on Kim
to resolve the problem of load on Morrow’s central hydraulic cylinder.
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Rather, the Examiner determines it would have been obvious to replace a
centrally-located hydraulic cylinder, as Morrow teaches, with a hydraulic
cylinder in each of the four corners, as Kim teaches, to free the interior of
the shelter from obstructions. Final Act. 4. Appellant’s argument
misconstrues the Examiner’s rejection and is not persuasive of error.
Appellant further argues that a person skilled in the art would not look
to Kim to modify Morrow because Kim solves a problem that is different
from the problem Morrow addresses. Appeal Br. 11–12. According to
Appellant, Kim discloses a flat rack container comprising a bottom plate, but
no top or lateral sides, to carry freight. Id. at 11 (citing Kim 1:29–32,
3:31–33, Fig. 3). Kim’s flat rack container addresses the problem of an
over-height freight container interfering with a spreader that hooks to the
tops of the four corner posts. Id. (citing Kim 1:48–52). When the freight
exceeds the height of fixed corner post 14, mobile post 16 is extended so that
the top of the freight does not contact the spreader coupled to corner
casts 18. Id. (citing Kim 4:28–48). Appellant contends that a person skilled
in the art would not look to Kim to modify Morrow because Morrow’s
central roof section 18 must be raised uniformly with all of the roof elements
at the same time. Id. at 12. For similar reasons, Appellant alleges the
Examiner’s proposed combination would be inoperable. Reply Br. 5.
According to Appellant, Kim’s corner posts, which are adjusted
independently, would not be workable in Morrow where the raising and
lowering of central roof section 18 raises and lowers cooperatively engaged
side top sections 50A, 50B and roof panels 54. Id. (citing Kim 4:22–27;
Morrow ¶ 59).
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Appellant, however, acknowledges that Kim’s corner posts could be
moved simultaneously, for example, via extension plates installed between
pairs of mobile posts 16. Kim 4:22–27; Ans. 5. Nonetheless, Appellant’s
arguments are unconvincing because they mischaracterize the Examiner’s
rejection. The Examiner is proposing to modify Johnson, not Morrow, to
include Kim’s telescopic corner posts. Final Act. 4.
Appellant also argues that the Examiner’s proposed combination of
prior art would not have resulted in
a hydraulic cylinder located within each said corner post and
connected at its upper end to said inner telescopic element of said
corner post and at its lower end to said outer telescopic element
of said corner post for reversibly telescopically lowering and
extending each said inner element within said outer element,
as recited in independent claim 1, because Oudelaar does not teach this
limitation. Appeal Br. 12. Appellant contends Oudelaar’s actuator 20
comprises two cylinder-piston units 30, 40. Appellant asserts lower end 33a
of first cylinder-piston unit 30 is connected to the outer telescopic element,
i.e., tube section 2. Id. (citing Oudelaar 3:28–32). Appellant further asserts
the upper end of first cylinder-piston 30 is not connected to the inner
telescopic element, i.e., tube section 4, but, rather, the upper end of second
cylinder-piston unit 40 is connected thereto. Id. (citing Oudelaar 3:23–27).
Although Oudelaar’s actuator 20 comprises two cylinder-piston
units 30, 40, the Examiner relies on actuator 20, in its entirety, for teaching
the hydraulic cylinder recited in this limitation of independent claim 1. Final
Act. 5. As Appellant does not address the Examiner’s finding that
Oudelaar’s actuator 20 teaches the hydraulic cylinder recited in this
limitation, Appellant does not apprise us of error in the finding.
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Appellant further contends that “the person skilled in the art of
transporting military shelters by ISO channels would not look to the art of
lifting devices for operating room tables.” Appeal Br. 12–13. Yet, as the
Examiner explains in the Answer, a reference that is not in the field of an
applicant’s endeavor may still be analogous art if it is reasonably pertinent to
the particular problem with which the applicant was concerned. Ans. 6
(citing In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992)). The Examiner finds
the applicant was concerned with the problem of using hydraulic cylinders to
lift telescoping elements. Id. The Examiner also finds Oudelaar is
reasonably pertinent to this problem because it teaches a telescopic lifting
column having hydraulic means. Id. Appellant does not address these
findings and does not apprise us of error in the Examiner’s reliance on
Oudelaar as analogous art.
Appellant additionally argues the Examiner’s proposed combination
of the prior art to include Oudelaar’s hydraulic cylinder is the result of
hindsight. Appeal Br. 13. We disagree. The Examiner determines it would
have been obvious to incorporate a hydraulic cylinder connected at its upper
and lower ends to inner and outer telescopic elements, respectively, as taught
by Oudelaar, into each of the four roof-supporting corner posts resulting
from the combination of Johnson, Morrow, and Kim, because the upper end
of the cylinder would push the inner element upwardly to lift the top of the
shelter. Final Act. 5. Indeed, Oudelaar teaches the upper end of the
hydraulic cylinder, i.e., actuator 20, pushes upwardly inner telescopic
element, i.e., tube section 4. Oudelaar 4:45–53, Fig. 2. A person of ordinary
skill in the art would have understood that the upward movement of the
inner telescopic element would result in the upward movement of anything
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attached thereto, such as a roof. Thus, the Examiner’s reason is not
premised on hindsight, but instead on the teachings of Oudelaar and the
common knowledge of a person of ordinary skill in the art.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s determination that the combined teachings of Johnson, Morrow,
Kim, Oudelaar, and Ju renders obvious the subject matter of independent
claim 1. We, therefore, sustain the rejection of independent claim 1, with
claims 4–11, 14, and 17 falling therewith.

Obviousness Based on Johnson, Morrow, Kim, Oudelaar, Ju, and Davis
Appellant does not present arguments for claim 13 apart from its
arguments for independent claim 1. Appeal Br. 9–14; Reply Br. 2–5. For
the reasons set forth above for independent claim 1, Appellant does not
apprise us of error, and we likewise sustain the rejection of claim 13.

CONCLUSION
We sustain the rejection of claims 1, 4–11, 14, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Johnson, Morrow, Kim, Oudelaar, and Ju. We
similarly sustain the rejection of claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Johnson, Morrow, Kim, Oudelaar, Ju, and Davis.

DECISION SUMMARY
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–11,
14, 17 103(a)
Johnson, Morrow,
Kim, Oudelaar, Ju
1, 4–11,
14, 17
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13 103(a)
Johnson, Morrow,
Kim, Oudelaar, Ju,
Davis
13
Overall
Outcome
1, 4–11,
13, 14, 17

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED