Ex Parte 6347847 et al

Board of Patent Appeals and Interferences

Oct 26, 2010

90008997 (B.P.A.I. Oct. 26, 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.
90/008,997 01/24/2008 6347847 081627-0275062 4859
3705 7590 10/26/2010
ECKERT SEAMANS CHERIN & MELLOTT
600 GRANT STREET
44TH FLOOR
PITTSBURGH, PA 15219
EXAMINER
GELLNER, JEFFREY L
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
10/26/2010 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 500 Group, Inc.,
Appellant and Patent Owner.
____________

Appeal 2010-011923
Reexamination Control 90/008,997
Patent 6,347,847 B1
Technology Center 3900
____________

Before SALLY GARDNER LANE, SALLY C. MEDLEY, and DANIEL S.
SONG, Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL1
500 Group, Inc.2 (“Appellant”) appeals under 35 U.S.C. §§ 134(b) and
306 from a final rejection of claim 1 of United States Patent 6,347,847 (“the

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”
shown on the PTOL-90A cover letter attached to this decision.
2 500 Group, Inc. is the real party in interest and the current owner of the
patent under reexamination.
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‘847 patent”) in reexamination. Claims 31, 54, and 62 were confirmed as
patentable, while claims 2-30, 32-53, 55-61, and 66-82 were not subject to
reexamination. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.

STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
by ZAG Industries, Ltd. on January 24, 2008, of the ‘847 patent issued to
Tiramani, Ham, and Bozak on February 19, 2002, based on United States
Application 09/731,780, filed December 8, 2000.
U.S. Patent 6,601,930, which is a continuation of the application that
became the ‘847 patent and is commonly assigned with the ‘847 patent, is
currently under reexamination (Reexamination No. 90/008,998) and appeal
(Appeal No. 2010-010428). (See App. Br. 2; Related Proceedings App’x).
We have not been informed of any other concurrent or prior
proceedings that would impact our decision.
Appellant’s invention relates to a rolling container that can store
working tools. (‘847 patent at col. 1, 10-12).
Claim 1 recites:
An apparatus for transporting articles, comprising:
a base container having an interior space in which articles to be
transported can be stored,
one or more rotatable ground engaging wheels mounted to the
apparatus toward the bottom of said apparatus for rotation about an
axis to provide rolling supporting for said apparatus;
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at least one removable container having (i) a container portion
with an interior space in which articles to be transported can be stored,
(ii) a lid pivotally connected to said container portion; (iii) a latch
arrangement constructed to secure said lid in covering relation with
respect to said container portion, and (iv) a carrying handle attached to
said lid and that is manually graspable to enable carriage of said
removable container;
said at least one removable container being removably mounted
above said base container, said at least one removable container being
removable for carriage by said carrying handle separately from said
base container;
a latch assembly securing said at least one removable container
above said base container, said latch assembly being releasable to
enable removal of said at least one removable container by said
carrying handle for carriage separately from said base container;
a manually engageable pulling handle having a hand grip
portion, said pulling handle and said one or more ground engaging
wheels being arranged on one side of said apparatus to enable a user to
manually grasp said hand grip portion and pull said pulling handle
generally rearwardly so as to tilt said apparatus rearwardly from (a) a
substantially upright position wherein said apparatus is supported in a
freestanding manner to (b) a tilted rolling movement position wherein
said apparatus is rollingly supported by said ground engaging wheels,
thereby enabling the user to roll said apparatus to a desired location by
pushing or pulling said pulling handle in a desired direction;
said container portion having a generally upwardly facing
opening when said apparatus is disposed in said substantially upright
position and said at least one removable container is secured above
said base container;
said lid being pivotable, when said apparatus is disposed in said
substantially upright position and said at least one removable
container is secured above said base container, between (i) a closed
position wherein said lid is in covering relation with said upwardly
facing opening of said container portion and (ii) an open position
permitting access to the interior space of said container portion.
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(App. Br. 17-18; Claims App’x).
The prior art references relied are upon by the Examiner in rejecting
the claims are:
Spielhoff DE 3510307 September 25, 1986
Kennedy 1,984,345 December 11, 1934

The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Spielhoff and Kennedy. (Ans. 3-6).
Appellant relied upon Exhibits 1-29, which are copies of dictionary
definitions, to rebut the Examiner’s rejections. (App. Br. 19-20, Evidence
App’x).
ISSUES
Appellant raised the following issues:
Does Spielhoff teach an apparatus with a removable container that is
“secured” above a base container, as recited in claim 1?
Did the Examiner provide an appropriate reason why it would have
been obvious to those in the art to combine the elements of the apparatus
taught in Kennedy with the apparatus of Spielhoff?
FINDINGS OF FACT
1. Figure 27 of the ‘847 patent is reproduced below.
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Figure 27 depicts a rolling container assembly with a removable cabinet or
container (206) secured to a base cabinet or container (202). Removable
container (206) is secured by latch (230) to base container (202) and has a
lid (234), which is pivotally connected and is secured by latches (236) to
container (206). (‘847 patent col. 12, ll. 52-65).
2. The specification of the ‘847 patent provides that “the at least
one cabinet 206 [is] secured to the base cabinet 202 by a latch or latch
assembly 230 as shown. The tool case 212 is secured to the organizer 214 in
any manner, for example, by a frictional fit as shown.” (‘847 patent col. 12,
ll. 54-58 (emphasis added)).
3. Figure 3 of Spielhoff is reproduced below.
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Figure 3 depicts a mobile tool cart on wheels (3’) with a base container (4’)
and a removable case for holding tools (8’) that is inserted into a top
compartment. (Spielhoff translation, pp. 7 and 8-9).
4. Kennedy teaches a tool kit as depicted in Figure 1, which is
reproduced below.
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Figure 1 depicts a tool kit with a lid (5) pivotally connected to a container
portion and including latches (46 and 47) between the lid and container.
(Kennedy p. 1, right col., ll. 13-15, and p. 3, left col., ll. 29-31).
5. Kennedy teaches that the lid (5) depicted in Figure 1 can
include a handle attached to the cover. (Kennedy, p. 2, l. 35).

PRINCIPLES OF LAW
“[W]hen a [claim] ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
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ANALYSIS
Claim 1
Appellant’s claim 1 recites an apparatus for transporting articles that
has elements including a base container, wheels, a removable container with
a pivotally connected lid, and a handle. (App. Br. 17-18, Claims App’x).
The removable container is “removably mounted above said base container
. . .” and “secured above said base container . . . .” (Id.).
Combination of the Prior Art
Spielhoff teaches a rolling tool cart with a base container and a
removable case inserted into a top compartment (FF 3, Spielhoff Fig. 3),
while Kennedy teaches a tool kit with a lid pivotally attached to the
container, latches to lock the lid, and an attached handle. (FF 4; Kennedy
Fig. 1). According to the Examiner, it would have been obvious to those of
skill in the art to modify the rolling container of Spielhoff with elements
taught in Kennedy to increase protection of the contents of the removable
container with a locking lid. (Ans. 6).
“Mounted” or “secured” above the base container
Appellant argues that Spielhoff does not teach a removable container
that is “removably mounted above said base container” or “secured above
said base container,” as claimed. (App. Br. 11; see also App. Br. 6-7).
Appellant argues that the removable case (8’) of Spielhoff is “inserted” (see
Spielhoff translation p. 9, ll. 4-6) into a compartment, but is not “mounted”
or “secured” because it is not “fixed,” “attached,” or “fastened” to the lower
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portion of the device by any kind of latch, lock, or securing device. (App.
Br. 11-12; Reply Br. 3).
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007)(citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004)).
Appellant points to the specification of the ‘847 patent to support the
construction of the term “mounted” or “secured” (App. Br. 10-11), but does
not point to an express definition of “mounted” or “secured” or use of the
terms “fixed,” “attached,” or “fastened” to describe the relationship of the
removable container and the base container in the specification. The
specification does use the term “secured” to describe an embodiment of the
apparatus in which the removable cabinet is attached to the base cabinet with
latches or with a snapping mechanism. (FF 2; ‘847 patent col. 12, ll. 54-58;
see also ‘847 col. 7, ll. 55-60). As Appellant notes, though, such latches or
snaps are not recited in the claim and do not limit the claim term “secured.”
(App. Br. 10-11: “It is noted that Appellants are not attempting to read the
words ‘snapping mechanisms’ or ‘latch assembly’ into that claim, but are
merely demonstrating the types of coupling devices that are capable of
‘mounting’ or ‘securing’ the tool case to the base cabinet.”). See In re
Prater, 415 F.2d 1393, 1396 (CCPA 1969) (“an applicant should [not] have
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limitations of the specifications read into a claim where no express statement
of the limitation is included in the claim.”).
In fact, the specification of the ‘847 patent provides for any
mechanism of securing the container to the apparatus, by stating that it can
be accomplished “in any manner, for example, by a frictional fit.” (FF 2;
‘847 patent col. 12, ll. 56-58). Thus, the specification of the ‘847 patent
does not limit the terms “mounted” or “secured” to any specific mechanism,
but rather, makes it clear that at least the term "secured" is being used, and
should be construed, broadly.
Appellant also points to several dictionary definitions of the terms
“mount” and “secure.” (App. Br. 6-9). Appellant asserts that every
definition of the term “mounted” and “secure” provided uses the words
“fast” or “fasten,” and implies that a “mounted” or “secured” item is only
one that is “fastened” to something. (App. Br. 7-9). Some of the definitions,
though, encompass the inserted removable case of Spielhoff. For example,
one of the definitions of “mount” provided by Appellant is “to place or fix
on or in the appropriate support or setting for display or study.” (Ex. 13
(emphasis added)). Similarly, one of the definitions of “secured” relied
upon by Appellant is “firmly fixed: firmly fixed or placed in position and
unlikely to come loose or give way.” (App. Br. 7, Ex. 14 (emphasis added)).
According to these definitions, a removable container that is “inserted” into
a compartment, as in Spielhoff, would be “mounted” or “secured” in the
compartment because it had been placed in the compartment and would be
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unlikely to come loose or give way. In this respect, we further note the
provision of a lid (not numbered) for the compartment in the tool cart of
Spielhoff which furthers securing of the removable container. We decline to
construe the claim terms “mounted” and “secured” as narrowly as Appellant
asserts to require fastening. Given the broadest reasonable interpretation of
these terms, the arrangement in Spielhoff, where the container is inserted
into the top compartment, is encompassed by Appellant’s claims.
Motivation to combine
Appellant also argues that there would not have been any reason for
those in the art to combine the teachings of Spielhoff and Kennedy. (App.
Br. 13-14). According to Appellant, the tool box of Kennedy must have an
unobstructed face for latches 47 to be released. Appellant asserts that the
enclosed space of the top compartment of Spielhoff would obstruct the face
of a tool box such as in Kennedy and render it unsatisfactory for its intended
use. (App. Br. 14; Reply Br. 8).
The test for obviousness is not whether the features
of a secondary reference may be bodily
incorporated into the structure of the primary
reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the
references. Rather, the test is what the combined
teachings of the references would have suggested
to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Kennedy would have taught
those in the art that a removable container such as that taught in Spielhoff
could have been modified to have a pivotally connected lid and a latch for
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the purpose of providing a locking means to increase protection of the
contents of the removable container. (See Ans. 5; Kennedy p. 3, ll. 16-20).
First, the entire tool box of Kennedy need not have been incorporated into
the apparatus of Spielhoff for those in the art to have considered these
modifications obvious. Second, Appellant cannot be asserting that use of
hinged lids and latches are not well known in the art of containers. Further,
Appellant's assertion that enclosed space of the top compartment of
Spielhoff would render Kennedy unsatisfactory is unpersuasive. Spielhoff
clearly teaches that the container is removable, and also discloses a lid
thereon (not numbered) with a handle and a frontal flap so that frontal access
to the case would be required, much like the tool kit of Kennedy. Hence, it
would have been obvious to one of ordinary skill in the art that the tool kit of
Kennedy would have been entirely suitable for use with mobile tool cart of
Spielhoff, and vice versa, without rendering either device unsatisfactory for
their respective intended uses.
Finally, Appellant argues that the Examiner erred in providing only a
single reason for combining the teachings in the references. (App. Br. 15).
“[T]o increase protection of the contents . . .” (Ans. 6) is a reasonable reason
for combining the references, regardless of how concisely expressed.
(Contra App. Br. 15” “By providing only this single sentence, the Examiner
has failed to present an articulated reasoning in support of the rejection.”).
The Examiner presented a prima facie case of obviousness.

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CONCLUSIONS
Spielhoff teaches an apparatus with a removable container that is
“mounted” or “secured” above a base container.
The Examiner provided an appropriate reason why it would have been
obvious to those in the art to combine the elements of the apparatus taught in
Kennedy with the apparatus of Spielhoff.

DECISION
The rejection of claim 1 under 35 U.S.C. § 103(a) over Spielhoff and
Kennedy is AFFIRMED.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

cc:
David C. Jenkins, Esq.
Eckert, Seamans, Cherin & Mellott, LLC
600 Grant Street
44th Floor
Pittsburgh, PA 15219

Jack S. Baruka
Pillsbury Winthrop Shaw Pittman LLP
P.O. Box 10500
McLean, VA 22102