Ex parte ANDERSON et al.

Board of Patent Appeals and Interferences

May 14, 1998

08339558 (B.P.A.I. May. 14, 1998)

Application for patent filed November 15, 1994. According1
to the appellants, the application is a continuation of
Application No. 08/128,989, filed September 29, 1993, now U.S.
Patent No. 5,390,813.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DENNIS C. ANDERSON,
BRETT A. ANDERSON and
HAROLD T HJERMSTAD II
____________
Appeal No. 97-2540
Application No. 08/339,5581
____________
ON BRIEF
____________
Before CALVERT, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 23 through 29, which are all of the claims
pending in this application.
Appeal No. 97-2540
Application No. 08/339,558
We REVERSE.
Appeal No. 97-2540 Page 3
Application No. 08/339,558
BACKGROUND
The appellants' invention relates to a method of recycling.
An understanding of the invention can be derived from a reading
of exemplary claim 23, which appears in the appendix to the
appellants' brief.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Papaianni 4,729,489 March 8, 1988
Dziersk et al. (Dziersk) 5,086,917 Feb. 11, 1992
Claims 23 through 29 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Papaianni in view of Dziersk.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellants regarding the § 103 rejection, we
make reference to the examiner's answer (Paper No. 14, mailed
October 15, 1996) for the examiner's complete reasoning in
support of the rejection, and to the appellants' brief (Paper No.
13, filed July 3, 1996) and reply brief (Paper No. 15, filed
November 29, 1996) for the appellants' arguments thereagainst.
Appeal No. 97-2540 Page 4
Application No. 08/339,558
Appeal No. 97-2540 Page 5
Application No. 08/339,558
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it is
our conclusion that the evidence adduced by the examiner is
insufficient to establish a case of obviousness with respect to
claims 23 through 29. Accordingly, we will not sustain the
examiner's rejection of claims 23 through 29 under
35 U.S.C. § 103. Our reasoning for this determination follows.
Claims 23 and 27, the only independent claims on appeal,
both recite a method comprising, inter alia, (1) molding a
recycling container having a pair of integral side-by-side
stackable compartments each having side and bottom walls,
(2) providing/forming the container with a hollow downwardly
opening upright partition between the compartments, (3) forming
the partition from a pair of adjacent side walls, (4) forming a
handle in an upper portion of the partition, and (5) providing a
hand opening in the partition beneath the handle.
Appeal No. 97-2540 Page 6
Application No. 08/339,558
Papaianni discloses a compartmentalized trash container.
In the particular embodiment shown in Figure 3, the trash
container 10 includes three compartments 27, 29 and 31 for
selective disposal of waste. Compartment 27 is separated from
compartments 29 and 31 by an inverted V-shaped groove 36
extending upwardly from base 12 to a common interior wall 34 and
a depending V-shaped groove 38 depending from the top 24 to the
common interior wall 34. Papaianni teaches (column 3, lines 36-
42) that his configuration permits easy stacking of trash
containers 10 since the compartments 27, 29 and 31 of one trash
container 10 can be inserted into the identical compartments of
another trash container 10 for easy stacking and storage.
Dziersk discloses a utility caddy for transporting cleaning
supplies. As shown in Figures 1 and 4, the caddy 10 has
compartments 28, 30 separated by partition 20. Partition 20
includes a pair of opposing walls 22, 24 integrally formed with
handle 36. The compartments 28, 30 are formed by two pairs of
opposing sidewalls 12, 14, bottom walls 26, rounded corners 16
and opposing walls 22, 24 of the partition 20. The opposing
walls 22, 24 define a space 44 and opening 46 which facilitates
nesting and denesting a stack of such caddies.
Appeal No. 97-2540 Page 7
Application No. 08/339,558
The test for obviousness is what the combined teachings of2
the references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
In applying the test for obviousness, we reach the2
conclusion that the combined teachings of Papaianni and Dziersk
would not have been suggestive of the claimed partition.
Contrary to the examiner's determination (answer, pp. 5-6), we do
not believe that the claimed partition reads on Dziersk's
partition 20. In that regard, it is our opinion that when claims
23 and 27 are read as a whole in light of the specification, the
claimed handle and hand opening must be located in an upper
portion of the partition formed from a pair of adjacent side
walls (i.e., the claimed handle and hand opening must be located
in an upper portion of the pair of adjacent side walls of the
compartments). Thus, the claimed partition must be read on only
Dziersk's side walls 22, 24 and not Dziersk's partition 20 (which
includes handle 36). Since Dziersk's handle 36 is not located in
an upper portion of the pair of adjacent side walls 22, 24 of
Dziersk's partition 20, the claimed handle and hand opening
located in an upper portion of the pair of adjacent side walls of
the compartments does not read on Dziersk's handle 36. Since all
the limitations of claims 23 and 27 are not suggested by the
Appeal No. 97-2540 Page 8
Application No. 08/339,558
applied prior art, we cannot sustain the examiner's rejection of
appealed independent claims 23 and 27, or claims 24 through 26,
28 and 29 which depend therefrom, under 35 U.S.C. § 103.
CONCLUSION
To summarize, the decision of the examiner to reject claims
23 through 29 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2540 Page 9
Application No. 08/339,558
JAMES V. HARMON
1000 NORTHSTAR CENTER EAST
608 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
APPEAL NO. 97-2540 - JUDGE NASE
APPLICATION NO. 08/339,558
APJ NASE
APJ STAAB
APJ CALVERT
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 30 Apr 98
FINAL TYPED:
3 MAN CONF