Ex Parte Apps

Board of Patent Appeals and Interferences

May 8, 2009

11264371 (B.P.A.I. May. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM P. APPS,
Appellant1
____________________

Appeal 2009-2321
Application 11/264,371
Technology Center 3700
____________________

Decided:2 May 11, 2009
____________________

Before CAROL A. SPIEGEL, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
I. Statement of the Case
Appellant appeals pursuant to 35 U.S.C. § 134 from an Examiner's
final rejection of all pending claims, claims 1, 2, 4, 5, and 8-26. We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134. We AFFIRM-IN-PART.

1 The real party in interest is REHRIG PACIFIC CORPORATION (Appeal
Brief filed 24 November 2007 ("App. Br."), at 1).
2 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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The subject matter on appeal is directed to stackable, collapsible
containers. Claims 1, 14, 17, 18, and 24-26 are illustrative (App. Br. Claims.
App'x., paragraphing added):
1. A container comprising:
a base having opposed long edges and
opposed short edges;
a first wall pivotably mounted to one of the
opposed short edges of the base;
an adjacent wall adjacent the first wall, the
support supported by the first wall and the adjacent
wall in the support position; and
a support pivotably mounted to the first wall
and pivotable about an axis generally parallel to
the base, the support pivotable between a support
position and a retracted position,
wherein the support includes a laterally-
extending projection, the projection contacting the
adjacent wall to support the support in the support
position,
wherein the adjacent wall includes a channel
on an interior surface thereof,
the projection disposed in the channel as the
first wall and the support are pivoted to the base
toward a collapsed position on the base.

24. The container of claim 1 wherein the
projection does not extend through the adjacent
wall.

26. The container of claim 1 wherein the
adjacent wall is collapsible onto the first wall when
the first wall is in the collapsed position on the
base.

14. A container comprising;
a base;
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a first wall mounted to the base and movable
between an upright position and a collapsed
position on top of the first wall; and
a flap mounted to an upper end portion of
the first wall, the flap movable between a first
position supported on the second wall and a second
position extending upwardly from an upper edge
of the first wall.

25. The container of claim 14 wherein the
support includes a stop member contacting the first
wall when the support is in the second position and
preventing further pivoting motion of the support
relative to the first wall.

17. A container comprising:
a base;
a first wall mounted to the base and movable
between an upright position and a collapsed
position;
a second wall adjacent the first wall and
movable between an upright position and a
collapsed position, the second wall including a
channel on an interior surface thereof; and
a support mounted to an upper end portion
of the first wall and including a laterally-extending
portion, the support movable between a first
position where the laterally-extending portion is
supported on the second wall and a second position
where the laterally-extending portion of the flap
can pass through the channel of the second wall as
the first wall is pivoted to the collapsed position.

18. The container of claim 17 wherein the
support is slidable and pivotable relative to the first
wall.

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The Examiner has rejected claims 1, 2, 4, 5, and 8-13 under 35 U.S.C.
§ 112, second paragraph, as indefinite due to insufficient antecedent basis
for the first recitation of "the support" in claim 1 (Ans.3 3). The Examiner
has also rejected claims 1, 2, 4, 5, and 8-26 as unpatentable under 35 U.S.C.
§ 103(a) over Townson4 in view of Sanders5 (Ans. 3-6).
Appellant argues that claim 1 is not indefinite and that the prior art
does not render a number of claim limitations obvious. We will address the
issues raised by Appellant seriatim.
II. Findings of Fact ("FF")
The following findings of fact are supported by a preponderance of
the evidence of record.
A. Application 11/264,371 ("the 371 application")
[1] Figure 3 depicts an interior perspective of an embodiment of a
container 10 having a retractable support 20 in a "support position."
Container 10 comprises a base (unnumbered), a first wall 18, a
support 20 comprising a laterally-extending projection 21, and an
adjacent wall 14 having channels 24 on an interior surface thereof.
Support 20 is pivotably mounted on the first wall 18. Recess 44 in
adjacent wall 14 receives projection 21. (371 specification ¶¶ 31 and
34) Figure 3 is reproduced below:

3 Examiner's Answer mailed 15 February 2008 ("Ans.").
4 European Patent Application 1,241,105 A1, Collapsible Container,
published 18 September 2002 ("Townson").
5 U.S. Patent 3,874,546, Convertible Container-Pallet, issued 1 April 1975
to Sanders et al. ("Sanders").
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{Figure 3 of the 371 application is an interior
perspective view, partially broken away, of an
embodiment of a collapsible container having a
pivotable support in the "support position."}

[2] Figure 6 depicts the container shown in Figure 3 with support 20 in a
retracted position (371 specification ¶ 34). Figure 6 is reproduced
below.

{Figure 6 of the 371 application is an interior
perspective view, partially broken away, of an
embodiment of a collapsible container having a
pivotable support in the "retracted position."}

[3] Figures 7 and 8 depict the container of Figure 6 with the first wall in a
partially and a fully collapsed position, respectively, on base 12.
Figure 7 shows tab 21 of support 20 being received in channel 24 of
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adjacent wall 14 as first wall 18 is being collapsed. (371 specification
¶ 35) Figures 7 and 8 are reproduced below.

{Figures 7 and 8 of the 371 application depict the
container of Figure 6 with the first wall, wherein
the support in the retracted position, partially and
fully collapsed, respectively, onto the base of the
container.}

B. Townson
[4] Townson discloses stackable containers which, preferably, may be
collapsed by folding the walls of the container over the base of the
container (Townson ¶¶ 2 and 12).
[5] In an embodiment depicted in Figure 4a-c, Townson discloses a
container 10b having hinged end walls (i.e., first walls) 18b and side
walls 16b (i.e., adjacent walls) which allow the container to be
collapsed. A stacking support 40 is pivotably mounted at the top of
end wall 18b. Support 40 has two wings (i.e., laterally-extending
projections) 46 at either end. The wings, which have teeth 52 on their
underside, can be housed within recesses 48 in the side walls 16b.
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The top edge of the side walls 16b have a series of sockets 50 which
are complementary to wing teeth 52. When support 40 is pivoted into
contacted with the side walls 16b, the wing teeth 52 align with sockets
50, thereby allowing downward pressure to snap the support into a
"supporting position" and braces the container 10b against collapsing.
(Townson ¶¶ 31-32) Figure 4a-c is reproduced below.

{Figure 4a-c depict a perspective view of one end
of an stackable container embodiment according to
Townson.}

[6] Support arms 40 allow containers to stack and can be
stowed out of the way when not in use (Townson ¶ 23).
[7] According to Townson, it is convenient if side walls 16b
fold down first when containers which are variations of
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the embodiment shown in Figure 4 are to be collapsed
(Townson ¶¶ 34 and 36).
[8] Further according to Townson (Townson ¶ 12),
[t]he container may further comprise releasable
lock means to secure the walls against collapse.
The lock means may be caused to engage by
movement of the stack member to the stacking
position. The stack member may engage another
member when in the stacking position, to secure
the walls as aforesaid.
[9] In an embodiment shown in Figure 9a-f, Townson
discloses a container wherein supports 80 are mounted to
side wall 16g (Townson ¶ 41).
C. Sanders
[10] Sanders discloses a stackable container which may be
collapsed to provide a pallet (Sanders 1:19-23).
[11] The container 10 comprises upstanding side 14 and end
18 walls which are pivotably connected to a base 12
(Sanders 1:61-65).
[12] An embodiment of the container depicted in Figure 5
shows one side wall upright and one end wall in an
intermediate position between upright and collapsed
positions. The ends of the side walls 12 have arcuate
slots (i.e., channels) 60. The ends of the end walls 18
have pins 80 which are adapted to fit in slots 60 of the
side walls 12 and move in the slots as the side 12 and end
18 walls are shifted between upright and collapsed
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positions. (Sanders 1:41-43; 3:17-19, 62-67; 4:3-46)
Figure 5 is reproduced below.

{Figure 5 is a fragmentary perspective view of a
container according to Sanders in an intermediate
position between upright and collapsed positions.}
III. Discussion
At the outset we note that Appellant has provided separate
patentability arguments for claims 1, 14, 17, 18, and 24-26. Thus, the
patentability of claims 2, 4, 5, 8-13, 22, and 23 stands or falls with the
patentability of claim 1; the patentability of claims 15 and 16 stands or falls
with the patentability of claim 14; the patentability of claims 20 and 21
stands or falls with the patentability of claim 17; and, the patentability of
claim 19 stands or falls with the patentability of claim 18. 37 C.F.R.
§ 41.37(c)(1)(vii).
A. Legal principles of obviousness
A claimed invention is not patentable if it would have been obvious to
a person having ordinary skill in the art. 35 U.S.C. § 103(a); KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 127 S.Ct. 1727 (2007); Graham v. John Deere
Co. of Kansas City, 383 U.S. 1 (1966). Facts relevant to a determination of
obviousness include (1) scope and content of the prior art, (2) any
differences between the claimed invention and the prior art, (3) the level of
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ordinary skill in the art, and (4) relevant objective evidence of obviousness
or nonobviousness. KSR, 550 U.S. at 405, 127 S.Ct. at 1734; Graham, 383
U.S. at 17-18. The proper inquiry under § 103 is what the collective
teachings of the prior art would have reasonably suggested to one of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of the claim is described or
suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988, (Fed. Cir. 1996)
(quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418,
127 S. Ct. 1727, 1741 (2007)).
1. Rejection of claim 1 under § 103
a. Positions of the Examiner and Appellant
The Examiner found that Townson discloses the container of claim 1
but for the recited channel on the interior surface of the adjacent wall (Ans.
3-4). However, the Examiner found that Townson did disclose a recess 48
as a means of accommodating support 40 which is pivotably mounted at the
top of wall 18b (Ans. 4 and 6). The Examiner further found that Sanders
discloses a container an adjacent wall having an arcuate channel 60 for the
purpose of guiding pins on the end wall when the end wall was being moved
into a collapsed position (Ans. 4). The Examiner concluded that it would
have been obvious to modify the container of Townson with channels on a
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sidewall as taught by Sanders so that the wings 46 are guided towards the
base when the container is collapsed (Ans. 4 and 6).
Appellant argues that neither Townson nor Sanders teach retractable
supports as recited in claim 1 (App. Br. 11). Specifically, Appellant argues
that the supports of Townsend are always positioned outside the side walls
of the container, while the pins of Sanders are always connected to the side
walls of the container (App. Br. 11; Reply Br.6 2). According to Appellant,
Townson does not disclose a support mounted to a first wall as recited in
claim 1, i.e., Figures 4a-c are incomplete and fail to teach anything workable
(App. Br. 12).
b. Issues
At issue is whether Appellant has shown that the Examiner erred (i) in
finding that Townson discloses a support 40 as recited in claim 1 and/or (ii)
in concluding that providing the side walls 16b of Townson with a channel
on an interior surface thereof would allow wing 46 to both contact the side
wall 16b when support 40 is in the support position and be disposed in the
channel as the end wall 18b and support 40 are pivoted toward a collapsed
position on the base.
c. Analysis
Claim 1 requires a support (a) "pivotably mounted to a first wall and
pivotable about an axis generally parallel to the base" and (b) comprising "a
laterally-extending projection" (i) "contacting the adjacent wall … in the
support position" and (ii) "disposed in the channel … toward a collapsed
position." (App. Br. 16, Clms App'x.) Claim 1 does not recite a retractable
support or require the laterally-extending projection to be retractable. It is

6 Reply Brief filed 15 April 2008 ("Reply Br.").
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improper to read limitations from the specification into the claims. Constant
v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)
("particular embodiments and examples appearing in the specification will
not generally be read into the claims.”); In re Hiniker Co., 150 F.3d 1362,
1368 (Fed. Cir. 1998) ("Although operational characteristics of an apparatus
may be apparent from the specification, we will not read such characteristics
into the claims when they cannot be fairly connected to the structure recited
in the claims.").
Here, support 40 of Townson is pivotably mounted to a first wall 18b
as recited in claim 1 and includes laterally-extending wings 46 (FF 5).
Wings 46 contact the adjacent side wall 16b when the support is snapped
into a supporting position (FF 5). Furthermore, modifying adjacent side wall
16b of Townson by adding an interior channel as suggested by Sanders
would reasonably appear to permit wings 46 to be "disposed in the channel
… toward a collapsed position" akin to housing wings 46 within recesses 48
in the side walls 16b (see FF 5; see also Ans. 6 (Townson discloses a recess
48, further promoting the use of channels)). We also note that Townson
discloses that the container may include a releasable lock means which is
engaged when a support into a supporting position to secure the walls
against collapse (FF 8).
Finally, Appellant's bald statement, that the disclosure of Townson
relied on by the Examiner, particularly Figure 4a-c, is inoperative, is
insufficient to establish Examiner error absent support for this conclusory
assertion. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed.
Cir. 1997) (nothing in the rules or in jurisprudence requires the fact finder to
credit unsupported or conclusory assertions); In re Schulze, 346 F.2d 600,
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602 (CCPA 1965) (argument in the brief does not take the place of evidence
of record).
d. Conclusion
Appellant has not shown that the Examiner erred (i) in finding that
Townson discloses a support 40 as recited in claim 1 and/or (ii) in
concluding that providing the side walls 16b of Townson with a channel on
an interior surface thereof would allow wing 46 to both contact the side wall
16b when support 40 is in the support position and be disposed in the
channel as the end wall 18b and support 40 are pivoted toward a collapsed
position on the base.
Therefore, we will sustain the rejection of claims 1, 2, 4, 5, 8-13, 22,
and 23 under § 103 over Townson and Sanders.
2. Rejection of claim 24 under § 103
Claim 24 depends from claim 1 and prohibits the projections on the
ends of the support from extending through the adjacent wall.
a. Positions of the Examiner and Appellant
The Examiner concluded that channels added to adjacent walls 16b of
Townson would continue on a path set forth by recess 48 and, therefore,
would not extend through adjacent walls 16b since recesses 48 does not
extend through adjacent walls 16b (Ans. 8).
Appellant notes that the pins of Sanders would not latch or hold up the
adjacent walls if they did not extend through the adjacent walls (App. Br. 14;
Reply Br. 6-7).
b. Issue
At issue is whether Appellant has shown that modifying the side walls
12 of Sanders establishes that the Examiner erred in concluding that the
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subject matter of claim 24 would have been obvious over the combined
teachings of Townson and Sanders.
c. Analysis
Where a rejection is based on a combination of references, one cannot
show non-obviousness by attacking the references individually. In re Keller,
642 F.2d 413, 426 (CCPA 1981). The question under 35 U.S.C. § 103 is not
merely what the references teach but what they would have suggested to one
of ordinary skill in the art at the time the invention was made. In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976).
Here, as noted in the analysis of claim 1 above, the Examiner bases
his conclusion of obviousness, in part, on the fact that recesses 48 for
housing wings 46 do not extend through adjacent side walls 16b of Townson
and that this teaching would have reasonably suggested to one of ordinary
skill in the art that channels added to the interior of side walls 16b would
have been designed to allow wings 46 to follow along a path including
recesses 46. Appellant's argument fails to address what the combined
teachings of Townson and Sanders would have suggested to one of ordinary
skill in the art and, therefore, is insufficient to show Examiner error in the
conclusion of obviousness.
d. Conclusion
Appellant has not shown that modifying the side walls 12 of Sanders
establishes that the Examiner erred in concluding that the subject matter of
claim 24 would have been obvious over the combined teachings of Townson
and Sanders.
Therefore, we will sustain the rejection of claim 24 under § 103 over
Townson and Sanders.
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3. Rejection of claim 26 under § 103
Claim 26 depends from claim 1 and requires the adjacent wall to
collapse onto the first wall when the first wall is collapsed onto the base.
a. Positions of the Examiner and Appellant
The Examiner maintains that the walls of Townson are collapsible in
the required sequence (Ans. 5), while Appellant argues that the walls of
Townson must be collapsed in the opposite sequence (App. Br. 13-14).
b. Issue
The issue is whether Appellant has shown that the prior art requires
the walls to collapse in the opposite sequence from that claimed.
c. Analysis
Claim 26 depends from claim 1 which requires an interior channel in
the adjacent side walls of the container. It reasonably appears that insofar as
Townson has been modified to include the interior channel recited in claim
1, Townson discloses or suggests a container that collapses in the required
sequence. As noted by the Examiner, Townson discloses that the walls of its
container are hinged to allow the container to be collapsed (FF5). (As
discussed infra in regard to claim 14, we reach an opposite conclusion when
the container of Townson is not modified to include an interior channel.)
d. Conclusion
Appellant has not shown that the prior art requires the walls to
collapse in the opposite sequence from that claimed.
Therefore, we will sustain the rejection of claim 26 under § 103 over
Townson in view of Sanders.

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4. Rejection of claim 14 under § 103
Claim 14 recites a container wherein side walls, which adjacent to end
walls having a support mounted thereto, are collapsible on top of the end
walls. The container of claim 14, unlike that of claim 1, does not require the
side walls to include a channel on an interior surface thereof.
a. Positions of the Examiner and Appellant
The Examiner contends that the walls of the container of Townson
Figure 4a-c are designed to inherently collapse in the required order (Ans.
7). The Examiner points to Figure 9d of Townson to support his inherency
argument (Ans. 7). According to the Examiner, Figure 9d shows first wall
18g collapsing onto base 4g before side wall 16g.
Appellant argues that Townson does not disclose a support mounted
to a first wall as recited in claim 14 and that support 40 prevents adjacent
side wall 16b from collapsing from collapsing in the required order in the
embodiment shown in Figure 4 (App. Br. 12).
b. Issue
Thus, the dispositive issue is whether the Examiner has established
that the container shown in Figure 4a-c of Townson is designed such that the
walls inherently collapse in the order recited in claim 14.
c. Analysis
As explained in Continental Can Co. USA v. Monsanto Co., 948 F.2d
1264, 1269 (Fed. Cir. 1991), discussing inherency in the context of
obviousness:
[i]nherency, however, may not be established by
probabilities or possibilities. The mere fact that a
certain thing may result from a given set of
circumstances is not sufficient. [Citations
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omitted.] If, however, the disclosure is sufficient
to show that the natural result flowing from the
operation as taught would result in the
performance of the questioned function, it seems to
be well settled that the disclosure should be
regarded as sufficient.
(quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
Here, the Examiner has failed to establish that the container shown in
Figure 4a-c of Townson is designed such that the walls inherently collapse
in the order recited in claim 14. Rather, Townson suggests the contrary, i.e.,
that side walls 16b fold down first in containers of the type shown in Figure
4a-c (FF 7). Furthermore, the Examiner has failed to explain how the
Townson container embodiment shown in Figure 9d necessarily leads to a
contrary conclusion in regard to the design of the Townson container shown
in Figure 4a-c. Notably, the container embodiment shown in Figure 9d
depicts the support as mounted to side wall 16g (FF 9), unlike the
embodiment shown in Figure 4a-c where the support is mounted to end wall
18b (FF 5), effectively reversing which wall corresponds to the first wall of
claim 14, i.e., the wall with the mounted support. Thus, it appears that
Figure 9d of Townson is consistent with Townson's teaching that the walls
without the mounted support are folded down first.
d. Conclusion
The Examiner has failed to establish that the container shown in
Figure 4a-c of Townson is designed such that the walls inherently collapse
in the order recited in claim 14.
Therefore, we reverse the rejection of claims 14-16 under § 103 over
Townson and Sanders.

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5. Rejection of claim 25 under § 103
Claim 25 depends from claim 14 and requires that the walls of the
container collapse in the order recited in claim 14.
Therefore, we also reverse the rejection of claim 25 under § 103 over
Townson and Sanders because the Examiner has failed to establish that the
container shown in Figure 4a-c of Townson is designed such that the walls
inherently collapse in the order recited in claim 14 for the reasons discussed
supra.
6. Rejection of claim 17 under § 103
Appellant's patentability argument in toto is as follows:
[c]laim 17 recites that the laterally-extending
portion of the flap [i.e., support] can pass through
the channel of the second wall as the first wall is
pivoted to the collapsed position. As explained
above with respect to claim 1, it would not have
be[en] obvious to modify Townson to include a
channel in the second wall through which the
support could pass. Therefore claim 17 is
allowable. [App. Br. 13.]
a. Conclusion
Insofar as the positions and arguments of the Examiner and Appellant
are the same as those set forth in regard to claim 1 and the issues are the
same, we likewise will sustain the rejection of claims 17, 20, and 21 for the
reasons given above in regard to claim 1.
7. Rejection of claim 18 under § 103
Claim 18 requires the support recited in claim 17 to be slidable and
pivotable relative to the first wall.

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a. Positions of the Examiner and Appellant
The Examiner asserts that Townson "discloses the support being
slidable and pivotable relative to the first wall while being partially
retractable into the first wall (fig 13a-c)" (Ans. 5). More specifically, the
Examiner contends "a reasonable assumption can be made" that the
embodiment shown in Figure 13 can be modified to perform as claimed
(Ans. 8).
Appellant argues that there is not an obvious way, nor has the
Examiner explained how, to modify the container of Townson Figure 13a-c
to perform as recited in claim 18 (App. Br. 13; Reply Br. 5).
b. Issue
The issue is whether Appellant has shown that the Examiner erred in
failing to set forth an adequate basis or articulated reasoning to support his
conclusory statement that "a reasonable assumption can be made" that the
embodiment shown in Figure 13a-c can be modified to perform as required
by claim 18.
c. Analysis
Here, neither the Examiner nor Townson provides any discussion of
Townson Figure 13a-c. We decline to interpret what is being depicted in
Townson Figure 13a-c in the first instance. To the extent the Examiner
asserts that "a reasonable assumption can be made" that the container
embodiment shown in Townson Figure 13a-c can be modified to perform as
required by claim 18, the Examiner has failed to articulate any reasoning
with rational underpinning to support his conclusion. Rejections of
obviousness cannot be sustained by merely conclusory statements. In re
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Kahn, 441 F.3d at 988. Therefore, we are constrained to reverse the
rejection of claim 18 and its dependent claim 19 under § 103.
d. Conclusion
Appellant has shown that the Examiner erred in failing to set forth an
adequate basis or articulated reasoning to support his conclusory statement
that "a reasonable assumption can be made" that the embodiment shown in
Figure 13a-c can be modified to perform as required by claim 18.
Therefore, we reverse the rejection of claims 18 and 19 under § 103
over Townson and Sanders.
B. Legal principles of claim definiteness
The second paragraph of 35 U.S.C. § 112 requires that there be claims
"particularly pointing out and distinctly claiming the subject matter which
the applicant regards as his invention." If the scope of the subject matter
encompassed by the claim is clear and if the applicant has not otherwise
indicated that he intends the claims to be of a different scope, the claim
satisfies this requirement. In re Borkowski, 422 F.2d 904, 909 (CCPA
1970). In other words, claims must make "clear the subject matter from
which they would preclude others." In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970).
1. Position of the Examiner and Appellant
According to the Examiner, claim 1 fails to provide sufficient
antecedent basis for the first recitation of "the support" in claim 1 and,
therefore, claims 1, 2, 4, 5, and 8-13 are indefinite under § 112, second
paragraph (Ans. 3).
Appellant argues that he tried to correct the obvious error in an
Amendment After Final filed May 30, 2007 which the Examiner refused to
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enter because "'The proposed amendment includes the same limitations as
the claims previously presented and examined'" (quoting an Advisory Action
mailed June 14, 2007) (App. Br. 8-9). Appellant further argues that one of
skill in the art reading claim 1 in light of the 371 specification and drawings
"would understand that the first clause referencing the ‘the support' refers to
the same support recited in the very next clause" (App. Br. 9-10).
2. Issue
Thus, the issue is whether the technical lack of antecedent basis for
the first recitation of "the support" in claim 1 renders the claim indefinite
under § 112, second paragraph, i.e., whether the scope of the subject matter
of claim 1 is indefinite.
3. Analysis
Here, we agree with Appellant that the technical lack of antecedent
basis for the first recitation of "the support" fails to render the scope of the
subject matter of claim 1 indefinite and is an obvious error which may be
corrected in the manner proposed by Appellant. Not only has the Examiner
failed to provide any substantive reasoning why claim 1 is indefinite, but
also the Examiner provides no response to Appellant's arguments in his
Answer. We also note that the Examiner only considers some of the claims
which depend from claim 1, claims 2, 4, 5, and 8-13, to be indefinite due to
the technical lack of antecedent basis, but not other claims, i.e., claims 22-24
and 26.
4. Conclusion
The technical lack of antecedent basis for the first recitation of "the
support" in claim 1 is insufficient to render claim 1 and its dependent claims
indefinite under § 112, second paragraph.
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Therefore, we reverse the rejection of claims 1, 2, 4, 5, and 8-13 under
§ 112, second paragraph (definiteness).
IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1, 2, 4,
5, and 8-12 as unpatentable under 35 U.S.C. § 112, second paragraph
(definiteness) is REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 1, 2, 4, 5, 8-13, 17, and 20-24 as unpatentable under 35 U.S.C.
§ 103(a) over Townson in view of Sanders is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 14-16, 18, 19, 25, and 26 as unpatentable under 35 U.S.C. § 103(a)
over Townson in view of Sanders is REVERSED; and,
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED-IN-PART

rvb

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