Ex Parte Aiken et al

Patent Trial and Appeal Board

Sep 20, 2012

10442716 (P.T.A.B. Sep. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CYNTHIA R. AIKEN and WILLIAM P. APPS
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Appeal 2010-005162
Application 10/442,716
Technology Center 3700
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Before JENNIFER D. BAHR, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-4, 8-13, 16, 17, and 19-35. Claims 5 and
18 have been cancelled. Claims 6, 7, 14, and 15 are allowed. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

REJECTIONS1
Claims 1, 2, 8-10, 16, 17, and 19-29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rasmussen (EP 1,157,946 A1, pub. Nov. 28,
2001).2
Claims 1-4 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ydström (WO 97/46468, pub. Dec. 11, 1997).
Claims 11-13 and 30-35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rasmussen and Ydström.

1 To facilitate our analysis of the issues involved in this appeal, we have
reordered the grounds of rejection from the order in which they were
presented in the Examiner’s Answer, the Appeal Brief, and the Reply Brief.
2 The Examiner includes dependent claims 25 and 26 in this ground of
rejection; however, these claims depend from independent claim 11, which
has not been rejected under this ground of rejection. Since neither the
Examiner nor the Appellants have specifically addressed the limitations of
claims 25 and 26, particularly those limitations recited in independent claim
11, in addressing the rejection of claims 11-13 and 30-35 under 35 U.S.C.
§ 103(a) as unpatentable over Rasmussen and Ydström, we do not reach the
rejection of these claims.
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CLAIMED SUBJECT MATTER
Claims 1, 11, 16, and 30 are independent, and claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A waste container comprising:
a bottom wall;
at least one side wall extending upwardly
from a periphery of the bottom wall;
a first grip integrally molded with the
sidewall; and
an arm extending from an axis to a second
grip, the arm pivotably mounted to the sidewall at
the axis and being pivotable between a retracted
position below the first grip and a use position
above the first grip, the arm selectively connected
to the first grip when the arm is in the use position
and disconnected from the first grip when the arm
is in the retracted position, the first grip at least
partially disposed at a distance from the bottom
wall greater than an uppermost edge of the at least
one side wall when the arm is in the retracted
position.

OPINION
Obviousness based on Rasmussen
The Examiner found that Rasmussen discloses a refuse container 1
having handles 5 and handles 7, which correspond to the “waste container’s
“first grip” and “arm,” respectively, as recited in claim 1. Ans. 3. The
Examiner also found that the engagement and disengagement of handle
stoppers 9 with handle stoppers 10 correspond to “the arm selectively
connected to the first grip when the arm is in the use position and
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disconnected from the first grip when the arm is in the retracted position,” as
recited in claim 1. See Ans. 3, 4; figs. 2, 3.
Rasmussen discloses that handles 7 pivot into an active position, as
depicted in Figure 3, or pivot into an inactive position, as depicted in Figures
1 and 2. When handles (arm) 7 are in the active position, the handle 7’s
stoppers 9 engage handle 5’s stoppers 10. Col. 7, ll. 20-22, 24, 25, and 34-
42; col. 9, ll. 34-39. Rasmussen also describes that “handles have a stopper
which is intended to interact with a stopper fastened to the transport
container for defining the active position.” Col. 11, ll. 19-22 (claim 3).
The Appellants contend that the engagement of handle stoppers 9 with
handle stoppers 10 is “simple contact” which “does not mean the handles are
‘connected.’” Reply Br. 2. We agree with the Appellants that simple
contact is not sufficient to establish that the handle stoppers 9 and 10 are
“connected.” Although it is clear that handle stoppers 9 and 10 engage and
interact, the details of the engagement and interaction are lacking.
Furthermore, Rasmussen’s Figures 1-7, which depict Rasmussen’s first
embodiment, do not adequately support the Examiner’s finding that stoppers
9 and 10 are selectively connected. See col. 7, ll. 20-24.
As such, we determine that the Examiner’s finding of correspondence
between handle stoppers 9 engaging handle stoppers 10 and “the arm
selectively connected to the first grip when the arm is in the use position and
disconnected from the first grip when the arm is in the retracted position,” as
recited in claim 1, is based on speculation and conjecture. The Examiner
uses the same unsubstantiated findings for the rejection of a similar
limitation of claim 16 (Ans. 3), i.e., “. . . wherein the arm is selectively
connectable to one of the pair of handles when the arm is pivoted to a use
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position and selectively disconnectable from the one of the pair of handles to
pivot the arm to a retracted position.” App. Br., Claim Appendix.
For the reasons discussed supra, the Examiner’s rejection of
independent claims 1 and 16, and their dependent claims 2, 8-10, 17, 19-24,
and 27-29, as unpatentable over Rasmussen is not sustained.

Obviousness based on Ydström
Claim 1 recites “the first grip at least partially disposed at a distance
from the bottom wall greater than an uppermost edge of the at least one side
wall when the arm is in the retracted position.” This recitation calls for the
first grip to extend above the sidewall when the arm is in the retracted
position. See App. Br. 16, Reply. Br. 7. Contra Ans. 6 (The Examiner
understands this limitation to call for “a relationship between the distance
from the bottom wall to the upper edge of the sidewall and from the bottom
wall to a portion of the first grip.”). The Examiner has found Ydström’s
upper stopper 15, bottom 2, rear wall 3, and handles 9 correspond to the
“first grip”, “bottom wall”, “sidewall”, and “arm”, respectively, as recited in
claim 1. Ans. 3-4. As such, the Examiner has found that Ydström’s upper
stopper 15 is at least partially disposed at a distance from the bottom wall
greater than the uppermost edge of the at least one side wall (Ydström’s rear
wall 3) when the arm is in the retracted position. Ans. 6.
We agree with the Appellants that Ydström’s Figures 1-4 do not
show, by a preponderance of the evidence, that upper stopper 15 extends
above side wall (Ydström’s rear wall 3) for the following reasons. See App.
Br. 16, Reply. Br. 7. First, Ydström does not disclose that Figures 1-4 are to
scale. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951,
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956 (Fed. Cir. 2000) (The disclosure gave no indication that the drawings
were drawn to scale. “[I]t is well established that patent drawings do not
define the precise proportions of the elements and may not be relied on to
show particular sizes if the specification is completely silent on the issue.”).
Second, Figures 1-4 are perspective drawings that cannot be relied on to
show precise distances of the upper stopper 15 relative to the side wall
(Ydström’s rear wall 3). See p. 3, ll. 7-14. Third, one cannot determine the
location of the uppermost edge of the side wall (Ydström’s rear wall 3) in
relation to the upper stopper 15 since the uppermost edge is covered by lid 8.
See figs. 1-4. Fourth, Ydström’s disclosure does not make it clear that upper
stopper 15 is at least partially disposed at a distance greater from the bottom
wall than the uppermost edge of the side wall (Ydström’s rear wall 3) when
the arm is in the retracted position.
Thus, the Examiner’s rejection of independent claim 1, and its
dependent claims 2-4 and 9, as unpatentable over Ydström is not sustained.

Obviousness based on Rasmussen and Ydström
The Appellants argue claims 11-13 and 30-33 as a group. App. Br.
12-14. We select independent claim 11 as the representative claim, and
claims 12, 13, and 30-33 fall with claim 11. See 37 C.F.R. § 41.37
(c)(1)(vii) (2011). The Appellants argue claims 34 and 35 as a group. App.
Br. 14-15. We select independent claim 34 as the representative claim, and
claim 35 falls with claim 34. See Id.
Claims 11-13 and 30-33
The Examiner found that the handles 5 and handles 7 of Rasmussen’s
refuse container correspond to the “first grip” and the “arm,” respectively, as
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recited in claim 11. Ans. 3. The Examiner also found that Rasmussen
discloses “that the arm [7] snaps in the retracted [(inactive)] position (col. 8
lines 29-40) but does not teach the arm snap-connection in the upright use
position.” Id. The Examiner then found that Ydström “teaches that it is
known to secure a pivoting arm in the upright use position by using a snap-
connection (see . . . [handles] 9 and [upper stopper] 15)” via a locking device
12, such as a snap-lock. See Id.; see also Ydström, Abstract. The Examiner
determined that “[i]t would have been obvious to one of ordinary skill in the
art . . . to provide the container of Rasmussen with the arm snap-connecting
into the upright use position, as taught by Ydstr[ö]m, in order to lock the
arm in the upright use position.” Id.
The Appellants contend that one of ordinary skill in the art would
“analogize the handles 9 of Ydstr[ö]m to the first handles 5 of Rasmussen
and conclude only that the first handles 5 of Rasmussen could possibly be
pivotable and lockable in an upper position.” App. Br. 14; see Reply Br. 5.
However, the Examiner’s above-noted findings are reasonable because
Ydström’s pivoting handles 9 and Rasmussen’s pivoting handles 7 both
pivot from a retracted to an upright position.
Further, the Appellants contend that Ydström does not render obvious
the locking of Rasmussen’s handles 7 into an upright position and that
Rasmussen’s handles 7 could not be secured to an upper stopper 15 similar
to that in Ydström. App. Br. 14. However, modifying Rasmussen’s handles
7 with Ydström’s teaching such that handles 7 lock in the upright position
provides a secured connection which is beneficial when using the handles to
transport the container. As for the specific structure of Ydström being used
as a locking means for Rasmussen’s handles 7 when placed in an upright
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position, Ydström’s locking device is not required to be bodily incorporated
into Rasmussen’s container 1. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (Obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference).
The Appellants also argue that Ydström keeps upper stopper 15 “out
of the way of potential contact with the user’s hands” and therefore, the “clip
[upper stopper 15] could not be positioned on the handle 5 of Rasmussen
because it might hurt a user’s hand when grabbing the handle 5.” Reply Br.
6. We are not persuaded by this argument because a person of ordinary skill
in the art is also a person of ordinary creativity and thus would be able to
position the upper stopper 15 of Ydström on the handle of Rasmussen to
minimize interference with the user’s hands. See KSR Int'l. Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”).
Lastly, the Appellants argue there is no need to lock Rasmussen’s
handles 7 in an upright position because “the handles are short and can be
used while freely pivoting to move the cart.” Reply Br. 6. However, by
securing Rasmussen’s handle 5 to handle 7, handle 5 would be prevented
from moving away from handle 7 and thus, modifying Rasmussen to include
the locking mechanism of Ydström would ensure that the handles 7 do not
inadvertently pivot onto a user’s hand causing injury.
Therefore, the rejection of claims 11-13 and 30-33 as obvious over
Rasmussen and Ydström is sustained.
Claims 34 and 35
Claim 34, which depends from claim 11, recites “wherein the first
grip is integrally molded with the sidewall.” App. Br., Claims Appendix.
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At the outset, we note that the Examiner and the Appellants both
recognize that the Examiner’s reasoning for the rejection of claim 34 is not
placed under the correct ground of rejection, i.e., § 103(a) as unpatentable
over Rasmussen and Ydström; however, both parties appear to also
recognize that the Examiner provides reasoning for the above-quoted
recitation of claim 34 in the rejection under § 103(a) as unpatentable over
Rasmussen, since claim 1 recites “a first grip integrally molded with the
sidewall.” See Ans. 3, App. Br. 10, 11-12, 14-15, Reply Br. 3, 6.
The Examiner found that Rasmussen does not disclose that handles
(first grip) 5 are integrally molded with the sidewall of container 1. See Ans.
3. However, the Examiner determined that:
[i]t would have been obvious to one having
ordinary skill in the art at the time the invention
was made to provide the pair of handles [5]
integrally molded with the sidewall, since it has
been held that “that the use of a one piece
construction instead of the structure disclosed in
[the prior art] would be merely a matter of obvious
engineering choice.”
Ans. 3, citing In re Larson, 340 F.2d 965, 968 (CCPA 1965). The
Appellants argue that Larson “does NOT say that it would always be
obvious to use a one-piece construction instead of multi-piece structure in
the prior art” and requires “some suggestion or motivation.” App. Br. 10. In
response, the Examiner further reasons that integrally molding handles 5
with the sidewall of container 1 results in a “more rigid connection” as well
as “eliminate[s] the need for additional parts and fasteners.” Ans. 4-5; see
also Final Rej. 2.
The Appellants’ contend that it would be “impractical if not
impossible to integrally mold the handles 5 with the side wall in Rasmussen”
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and “unnecessarily difficult (if not impossible) to [simultaneously] inject the
plastic into the [large loop-shaped] handles and require a complex mold (for
the loop-shaped handles).” App. Br. 10. The Appellants also contend that
“smaller integral handles of the present invention are more easily integrally
molded” (id.) and “[n]obody would form these handles integrally with the
container without substantial modifications, which might avoid other
limitations of the claims.” Reply Br. 3. Lastly, the Appellants contend
“integrally molding these handles would far outweigh any possible benefit
of simply reducing the number of parts.” See App. Br. 14-15, Reply Br. 6.
However, the Appellants’ contentions are not persuasive because they are
not supported by objective evidence in the record. See In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (holding “[a]ttorney's arguments in a brief
cannot take the place of evidence.”).
For the reasons discussed above, we determine that the Examiner has
articulated adequate reasoning with rational underpinning as to why one of
ordinary skill in the art would have combined the teachings of these
references to result in the claimed subject matter. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require]
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Therefore, the rejection of claims 34 and 35 as obvious over
Rasmussen and Ydström is sustained.
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DECISION
We AFFIRM the rejection of claims 11-13 and 30-35 as unpatentable
over Rasmussen and Ydström.
We REVERSE the rejections of: claims 1, 2, 8-10, 16, 17, 19-24, and
27-29 as obvious over Rasmussen; and claims 1-4 and 9 as unpatentable
over Ydström.
We do not reach the rejection of claims 25 and 26 as unpatentable
over Rasmussen.
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).

AFFIRMED-IN-PART

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