10919043 (B.P.A.I. Oct. 5, 2010)

Ex Parte Acosta

Board of Patent Appeals and InterferencesOct 5, 2010

10919043 (B.P.A.I. Oct. 5, 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. 10/919,043 08/16/2004 Evelio Acosta GLM-8331 5700 27316 7590 10/05/2010 MAYBACK & HOFFMAN, P.A. 5722 S. FLAMINGO ROAD #232 FORT LAUDERDALE, FL 33330 EXAMINER GROSSO, HARRY A ART UNIT PAPER NUMBER 3781 MAIL DATE DELIVERY MODE 10/05/2010 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 EVELIO ACOSTA ____________ Appeal 2009-013462 Application 10/919,043 Technology Center 3700 ____________ Before WILLIAM F. PATE, III, MICHEAL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. O’NEILL, 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. Appeal No. 2009-013462 Application No. 10/919,043 2 STATEMENT OF THE CASE Evelio Acosta (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-3, 6-10, 13-33, 40, and 41.2 We have jurisdiction under 35 U.S.C. § 6(b). The Invention The claimed invention is to a roll-off cable system industrial waste container. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A roll-off cable system industrial waste container, comprising: a frame; and a container body: fixedly connected to said frame; and having a rounded bottom defining a container interior for holding industrial waste; and a hoist connector connected to at least one of said frame and said container body for connecting said frame and said container body to a pulling device. The Prior Art The Examiner relies upon the following as evidence of unpatentability: 2 In rendering our decision of this appeal, we are relying on the Supplemental Brief, filed Jun. 8, 2007, the Reply Brief, filed Aug. 24, 2007, the Supplemental Answer, mailed Mar. 6, 2008, in response to the Order Returning Undocketed Appeal to Examiner, mailed Feb. 25, 2008, to give a proper explanation of the grounds of rejection, and the Reply Brief, filed Mar. 19, 2008, in response to the Supplemental Answer. The Examiner’s Answer, mailed Jun. 25, 2007, in response to the Supplemental Brief, is deemed withdrawn by the Examiner. Appeal No. 2009-013462 Application No. 10/919,043 3 Petty US 4,451,072 May 29, 1984 Galbreath US 4,840,532 Jun. 20, 1989 Shubin US 5,085,448 Feb. 4, 1992 Lindley US 5,639,129 Jun. 17, 1997 Glen US 5,738,479 Apr. 14, 1998 Reiter US 6,478,176 B1 Nov. 12, 2002 Chapman US 6,581,999 B1 Jun. 24, 2003 Kloepfer US 6,688,673 B2 Feb. 10, 2004 The Rejections The following Examiner’s rejections are before us for review: Claims 1-3, 6-9, 13-15, 24-26, 28, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Galbreath in view of Kloepfer. Claims 32 and 40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Galbreath and Kloepfer in view of Glen. Claim 33 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Galbreath in view of Kloepfer, Shubin, Chapman, and Lindley. Contentions Appellant contends that Galbreath teaches away from containers with rounded bottoms, while Kloepfer teaches away from containers with rounded bottoms that are not permanently attached to a vehicle. Appellant contends that there is no “clear and particular” teaching or suggestion in Galbreath to incorporate the features therein and vice versa. Appellant further contends the Examiner’s only rationale or reasoning for combining the references as proffered is “because it is known in the art.” App. Br. and Reply Brs., passim. Appeal No. 2009-013462 Application No. 10/919,043 4 SUMMARY OF DECISION We AFFIRM. DISCUSSION Construing the claim is the first step in an obviousness analysis. Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998) (citations omitted). Pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim 1 is directed to a roll-off cable system industrial waste container comprising a combination of a frame, a rounded bottom container connected to the frame, and a hoist connector connected to either the frame or the container for connecting the frame and container to a pulling device. Claim 1 is broad. It is undisputed that Galbreath discloses a combination of a box- shaped container with a hoist connecter attached thereto and roll-off hoist system that includes the hardware to hoist the box-shaped container onto the roll-off trailer. See Figs. 1 and 2. It is undisputed that the difference between the claimed container and Galbreath’s container is that the claimed container has a rounded bottom. It is undisputed that Kloepfer teaches a rounded bottom container that is attached to the frame of a trailer. See Figs. 1 and 5. We conclude that a claim directed to a roll-off cable system industrial waste container combination of a framed rounded bottom container and hoist connector is obvious in view of the combined teachings of Galbreath and Kloepfer. In our view, such a combination is a combination of familiar Appeal No. 2009-013462 Application No. 10/919,043 5 elements according to known methods that yields no more than the predictable result of a roll-off container with a rounded bottom. Each limitation in the claim is familiar to a person of ordinary skill in the art as evinced by viewing Galbreath and Kloepfer. Galbreath shows the roll-off hoist system with a container. Kloepfer shows a rounded bottom container. A person of ordinary skill in the art is a person of ordinary creativity and not an automaton and thus could fabricate with known welding methods the necessary components to convert the flat bottomed container shown in Galbreath to a rounded bottom container as shown in Kloepfer. Absent an unpredictable result from combining these teachings, the combination is obvious. The simple fact that there are differences between two references is insufficient to establish that such references teach away from any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). Appellant’s argument that the Examiner has failed to provide findings showing a “clear and particular suggestion” to combine the references is foreclosed by KSR, in which the Court rejected the rigid requirement of a teaching, suggestion or motivation to combine known elements in order to show obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). Rejections on obviousness grounds must be supported by “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. Id. at 418. We disagree with Appellant’s perception that the Examiner’s only reason for combining the teachings of Galbreath and Kloepfer “is because it is known in the art.” The Examiner states in the Answer that applying the teachings of Kloepfer to the container disclosed by Galbreath Appeal No. 2009-013462 Application No. 10/919,043 6 “provides an interior surface that is easier to empty and clean.” Ans. 5. Appellant’s arguments do not demonstrate that this articulated reason of the Examiner fails to have some rational underpinning. CONCLUSIONS In view of the foregoing, we sustain the Examiner’s rejection of claim 1. Appellants do not separately argue the rejection of claims 2, 3, 6-9, 13- 15, 24-26, 28, and 31. As such, these claims fall with claim 1. For the rejections against claims 32, 33, and 40, Appellant essentially relies on the contended deficiency with the combined teachings of Galbreath and Kloepfer. Inasmuch as we conclude there is no deficiency with the combined teachings of Galbreath and Kloepfer to render obvious claim 1, we likewise conclude that there is no deficiency in the combined teachings of the prior art as applied to these claims and, as such, sustain the Examiner’s rejection based upon the reasoning stated above. DECISION The Examiner’s decision to reject claims 1-3, 6-9, 13-15, 24-26, 28, and 31 under 35 U.S.C. § 103(a) as being unpatentable over Galbreath in view of Kloepfer is affirmed. The Examiner’s decision to reject claims 32 and 40 under 35 U.S.C. § 103(a) as being unpatentable over Galbreath and Kloepfer in view of Glen is affirmed. The Examiner’s decision to reject claim 33 under 35 U.S.C. § 103(a) as being unpatentable over Galbreath in view of Kloepfer, Shubin, Chapman, and Lindley is affirmed. Appeal No. 2009-013462 Application No. 10/919,043 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED Klh MAYBACK & HOFFMAN, P.A. 5722 S. FLAMINGO ROAD #232 FORT LAUDERDALE, FL 33330