Ex Parte Apps et al

Board of Patent Appeals and Interferences

Mar 10, 2011

10340315 (B.P.A.I. Mar. 10, 2011)

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.
10/340,315 01/09/2003 William P. Apps 2078 PUS 5225
7590 03/10/2011
Konstantine J. Diamond
4010 E. 26th Street
Los Angeles, CA 90023
EXAMINER
CHEN, JOSE V
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
03/10/2011 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 WILLIAM P. APPS,
GERALD R. KOEFELDA, and CYNTHIA R. AIKEN
____________________

Appeal 2009-008326
Application 10/340,315
Technology Center 3600
____________________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, 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 2009-008326
Application 10/340,315

2
STATEMENT OF THE CASE
William P. Apps et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-27 and 29-31. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claimed invention pertains to a nestable pallet with a deck
having ribs extending between upper and lower panels to form box beam
sections. Spec. 1, para. [4]. Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A nestable pallet comprising:
a lower deck section including a plurality of feet
extending downward;
an upper deck section including a plurality of openings
for receiving feet of a similar pallet, each of the openings
aligned with one of the plurality of feet in the lower deck
section; and
a plurality of elongated ribs extending perpendicularly
from the upper deck section to the lower deck section to form at
least one box beam section, wherein each of the plurality of ribs
is elongated to a length substantially greater than a height of the
plurality of ribs, the lengths extending in a plane parallel to a
major upper support surface of the upper deck section.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1-21, 24-27, and 29-31 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shuert (US 4,879,956, issued Nov. 14,
1989) and Nakayama (US 5,967,057, issued Oct. 19, 1999); and
Appeal 2009-008326
Application 10/340,315

3
2. Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shuert.

OPINION
The rejection of claims 1-21, 24-27, and 29-31 as being unpatentable over
Shuert and Nakayama
The Examiner found that the only difference between Shuert’s
disclosed pallet and the device of claim 1 is “that the ribs [of Shuert] are not
elongated to a length greater that it’s height.” Ans. 4 (referring to Shuert’s
bosses as shown in figures 5 and 6). The Examiner further found that
“Nakayama et al teaches the use of providing such dimensioned ribs to be
old.” Id. Nakayama discloses a pallet having reinforcing ribs. See, e.g.,
Nakayama, Abstr. The Examiner concluded that it would have been obvious
to modify the structure of Shuert to have ribs as taught by Nakayama as the
references teach “conventional alternative rib structure.” Ans. 4 (emphasis
added). Thus, the Examiner’s proposed modification predictably results in
Shuert’s pallet having elongated ribs like those of Nakayama.2 We agree
with the Examiner’s conclusion that the subject matter of claim 1 would
have been obvious in light of the teachings of Shuert and Nakayama. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”)

2 We understand the Examiner’s discussion of “Shuert” and “the ribs of
Shuert” in the Answer after the description of the proposed modification
(Ans. 4) to refer to the Shuert pallet as modified by Nakayama.

Appeal 2009-008326
Application 10/340,315

4
We are not persuaded by Appellants’ argument that it would not be
possible to substitute elongated ribs for the bosses of Shuert because
Shuert’s thermal vacuum forming process cannot produce ribs. App. Br.
7-8. As the Examiner notes (Ans. 5), the forming process is not a claim
limitation and the obviousness analysis focuses on what the combined
teachings of the two cited references would have suggested to one of
ordinary skill in the art. Nakayama teaches that it is well known in the art to
manufacture ribbed pallets via injunction molding (Nakayama, col. 1, 8-12,
col. 3, ll. 30-39), which is Appellants’ preferred forming process (Spec. 5,
para. [37]).
Appellants’ remaining arguments for independent claim 1 (App. Br.
8) are not persuasive as those arguments are premised on the elongation of
Shuert’s bosses rather than the substitution of elongated ribs as taught by
Nakayama. Similarly, Appellants’ arguments regarding independent claims
12, 19, and 29 are unpersuasive as they are directed to Shuert’s cylindrical
bosses rather than the modified device having elongated ribs. App. Br. 8-9.
Appellants do not present separate arguments for the remaining claims, each
of which depends from one of the argued independent claims.
We affirm the rejection of claims 1-21, 24-27, and 29-31 as being
unpatentable over Shuert and Nakayama.

The rejection of claims 22 and 23 as being unpatentable over Shuert
The Examiner concludes that the method of claim 22 would have been
obvious in view of Shuert’s structures. Ans. 5. Claim 22 recites the step of
aligning a plurality of upper and lower ribs each of which is “elongated
along a length substantially greater than a height of the each rib.”
Appeal 2009-008326
Application 10/340,315

5
Appellants point out that the Examiner found that Shuert lacks ribs with the
recited elongation. App. Br. 9; see Ans. 4. The Examiner responds that
“[t]he proposed modification of Shuert in view of Nakayama et al teaches all
structure as claimed and therefore, the method of forming would have been
obvious and [sic, as] stated in the rejection above.” Ans. 7. However, the
stated ground of rejection for claims 22 and 23 only includes Shuert, not
Nakayama. Id. at 5; Final Rej. at 4. The Examiner does not articulate how
Shuert alone discloses structure adequate to render obvious the claimed
method. As such, we cannot sustain the rejection of claim 22 and its
dependent claim 23 as being obvious over Shuert.

DECISION
The decision of the Examiner to reject claims 22 and 23 is reversed.
The decision of the Examiner to reject claims 1-21, 24-27, and 29-31 is
affirmed.
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

mls

KONSTANTINE J. DIAMOND
4010 E. 26TH STREET
LOS ANGELES, CA 90023