Ex Parte Barbalho et al

Patent Trial and Appeal Board

Jun 27, 2013

11755181 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANIEL BARBALHO and WILLIAM P. APPS
____________________

Appeal 2011-005049
Application 11/755,181
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005049
Application 11/755,181

2
STATEMENT OF THE CASE
Daniel Barbalho and William P. Apps (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 3, 5-7, 9-
20, 22-26, and 28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1 A collapsible container comprising:
a base;
a plurality of walls hingeably connected to the base, such
that the walls can be pivoted between an upright position and a
collapsed position on the base, wherein at least one of the walls
has a frame circumscribing an opening,
wherein the frame includes a lower frame member and an
upper frame member connected by opposed side frame
members; and
wherein the opening in the at least one of the walls is
more than 2/3 of the wall by area.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Aquino
Clark
Spykerman
US 4,120,417
US 6,131,757
US 6,253,943 B1
Oct. 17, 1978
Oct. 17, 2000
Jul. 3, 2001
Meissen WO 2006/014593 A2 Feb. 9, 2006
Rejections
Appellants request our review of the following rejections:
I. Claim 24 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement;
Appeal 2011-005049
Application 11/755,181

3
II. Claims 1, 3, 14, 15, 24, and 25 under 35 U.S.C. § 103(a) as
being unpatentable over Clark and Aquino;
III. Claims 5-7, 9, 16-19, and 26 under 35 U.S.C. § 103(a) as being
unpatentable over Clark, Aquino, and Meissen; and
IV. Claims 10-13, 20, 22, 23, and 28 under 35 U.S.C. § 103(a) as
being unpatentable over Clark, Aquino, and Spykerman.
OPINION
Written Description
The basis of the Examiner’s rejection of claim 24 under 35 U.S.C.
§ 112, first paragraph, is that Appellants’ Specification and drawings do not
provide written descriptive support for the limitation “‘wherein another of
the plurality of walls does not have an opening.” Ans. 4. We agree with
Appellants that figure 9 of the present application, as filed on May 30, 2007,
provides written descriptive support for this limitation.
The Examiner construes the term “opening” as being sufficiently
broad to encompass the regions between the strengthening ribs (i.e., “the
spaces created by the strengthening ribs”). Ans. 16. However, even
accepting the Examiner’s construction, Appellants’ figure 9 depicts a rear
wall 122 that does not have strengthening ribs thereon, and thus does not
have spaces of the type alluded to by the Examiner created by the
strengthening ribs. See Reply Br. 1 (stating, “Appellant’s rear wall 122 in
Figure 9 does not include any ribs”).
The Examiner also asserts that the rear wall 122 of Appellants’ second
embodiment “has a plurality of openings formed in the bottom of the wall
for the accommodation of the hinges.” Ans. 15. Appellants’ Specification
describes a “hingeably connected rear wall 122” (Spec., para. [0025]), but
Appeal 2011-005049
Application 11/755,181

4
does not describe any openings in the rear wall 122 of the second
embodiment. Appellants correctly point out that “the rear wall need not
necessarily include an ‘opening’ in order to be hingeably connected to the
base. For example, projections in the bottom of the wall 122 could be
received in recesses in the base.” Reply Br. 1.
For the above reasons, we find that Appellants’ figure 9 reasonably
conveys that Appellants had possession of a container as set forth in claim
24, “wherein another of the plurality of walls does not have an opening.”
Therefore, we do not sustain the rejection of claim 24 under 35 U.S.C.
§ 112, first paragraph.
Obviousness based on Clark and Aquino
Appellants do not present any separate arguments for claims 3, 14, 15,
and 25 apart from claim 1. Thus, we decide the appeal of this rejection on
the basis of claim 1. Claims 3, 14, 15, and 25 stand or fall with claim 1.
Appellants present a separate argument for claim 24.
Appellants argue that it would not have been obvious to modify
Clark’s box by providing an opening in one of the walls in view of the
teachings of Aquino, as proposed by the Examiner (Ans. 5), because,
according to Appellants, Aquino’s crate cannot function as a container, and
modifying Clark to include an opening from Aquino’s skeletal crate would
render Clark’s box incapable of containing anything and lacking the strength
to serve as a container, and thus unsatisfactory for its intended purpose.
App. Br. 6, 7. Appellants further contend that a user would not have access
to the items in Clark’s box as modified by Aquino, because no items could
be contained in the box. App. Br. 7.
Appeal 2011-005049
Application 11/755,181

5
We have considered the arguments on pages 6-8 of the Appeal Brief
and on page 2 of the Reply Brief, but we do not find them convincing. As
emphasized by the Examiner, the rejection relies on Aquino “for the
teaching of an opening in a wall in order to allow for access to the contents
of the container and not for the bodily incorporation of all of the open
walls.” Ans. 16. The Examiner does not rely on Aquino for its teachings
with regard to collapsibility or intentional weakness. Providing an opening
in one of the walls of Clark’s box would not necessarily render it so weak as
to be incapable of functioning as a container unless it were intentionally
designed using materials that cannot accommodate such an opening without
losing the necessary strength to so function. “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 421 (2007). Appellants provide no evidence
showing that the design considerations necessary to accommodate such an
opening in a wall of Clark’s box without unduly compromising its strength
and rigidity would have been beyond the technical grasp of such a person.
Appellants also argue that the Examiner’s reason for the modification
(i.e., to allow a user access to items contained within Clark’s container)
lacks a rational underpinning. App. Br. 7. This argument is premised on
Appellants’ unsupported contention that modifying Clark’s box by providing
an opening in one of the walls would render Clark’s box incapable of
containing items therein, and thus lacks merit.
We sustain the rejection of claim 1 and of claims 3, 14, 15, and 25,
which fall with claim 1, as unpatentable over Clark and Aquino.
In contesting the rejection of claim 24, Appellants additionally argue
that the Examiner has no evidence that it would have been obvious to
Appeal 2011-005049
Application 11/755,181

6
provide Clark with an opening in less than all four of the walls, because
Aquino teaches a skeletal crate in which all four walls have openings. App.
Br. 8.
This argument is not convincing. “The obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of published articles
and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead,
the relevant inquiry is whether the Examiner has set forth “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR, 550 U.S. at 418). A conclusion of obviousness must be
supported by explicit findings and analysis establishing an apparent reason
to combine the known elements in the manner required in the claim at issue.
KSR, 550 U.S. at 418. However, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
The Examiner articulated a reason for providing an opening in one of
the four walls of Clark’s box. Specifically, the Examiner reasoned that it
would have been obvious to include an opening to allow access to the
interior of the container. Ans. 17. According to the Examiner, “[o]ne of
ordinary skill in the art would recognize the benefit of just one open wall
and would not need to bodily incorporate the four open walls taught by
Aquino.” Id. The Examiner’s articulated reason for providing one wall, as
distinguished from all four walls, of Clark’s box with an opening has a
Appeal 2011-005049
Application 11/755,181

7
rational underpinning, as an opening in just one of the walls would provide
access to the interior of the container.
We thus sustain the rejection of claim 24 as unpatentable over Clark
and Aquino.
Obviousness based on Clark, Aquino, and Meissen
Appellants present specific arguments against the rejection of claim
16, but do not present any separate arguments for claims 17-19 and 26,
which depend from claim 16. Thus, claims 17-19 and 26 stand or fall with
claim 16.
Claim 16 requires that the front wall be “molded of a material
different from the side walls and the rear wall.” Clms. App’x. (emphasis
added).
The Examiner found that neither Clark nor Aquino discloses that the
open front end is molded of a material different from the side walls and the
rear wall. Ans. 10. The Examiner found, however, that Meissen discloses
forming the walls having an opening therein of a reinforced material which
increases the strength of the frame of such walls, “thereby compensating for
the decrease in strength and rigidity due to the lack of materials associated
with having an opening.” Id.
Appellants argue that all four of Meissen’s walls are made of like
materials and thus would not have prompted one of ordinary skill in the art
to change one of Clark’s walls to be different from the others. App. Br. 9.
Appellant is correct that Meissen discloses making all four walls of
the same material(s). See, e.g., Meissen 3:29-4:2; 6:6-12. However,
Meissen also discloses a tray having an opening in each of the four walls.
Meissen discloses reinforcing the upper edge of each of the walls with, for
Appeal 2011-005049
Application 11/755,181

8
example, a metal rod, which may be molded-in, for greater strength in order
to maximize the size of the openings. Id. In other words, as correctly
characterized by the Examiner, Meissen “teaches the use of a reinforced
material in order to compensate for a loss in structural integrity due to
having an opening in the wall.” Ans. 18.
Applying Meissen’s teachings to Clark’s box, modified as proposed
by the Examiner to have an opening in one of the walls,1 a person of
ordinary skill in the art would have been prompted to reinforce the wall
having the opening. Thus, the Examiner reasons, “one of ordinary skill in
the art would only modify the open wall taught by Clark and Aquino to be
formed of a reinforced material since the remaining walls taught by Clark
are solid and are not lacking in structural strength.” Id.
Appellants also argue that the Examiner has “improperly discounted
the claim term ‘molded’” in rejecting claim 16. App. Br. 9. This is not
correct. The Examiner explicitly addresses the “molded” limitation, and
Appellants’ assertion that the Examiner has overlooked this term, pointing
out that
Meissen discloses “The upper edge 130 may be integrally
formed of plastic, but for greater strength may also be formed
of metal, such as steel rod, which is bent and held in place
within each corresponding sidewall, which may be molded-in
or applied in a post-molding process, as appropriate.”
Ans. 18 (citing Meissen 6:9-12).
Appellants do not adequately explain why a wall with a molded-in
steel reinforcement rod is not “molded of a material different from the side
walls and the rear wall,” which do not include a steel reinforcement rod.

1 As discussed above, the Examiner articulated a reason with a rational
underpinning for providing Clark’s box with only one open wall.
Appeal 2011-005049
Application 11/755,181

9
For the above reasons, we sustain the rejection of claim 16 and of
claims 17-19 and 26, which fall with claim 16, as unpatentable over Clark,
Aquino, and Meissen.
Appellants do not specifically identify any error in the rejection of
claims 5-7 and 9 as unpatentable over Clark, Aquino, and Meissen. For the
reasons discussed above, we therefore sustain the rejection of these claims.
Obviousness based on Clark, Aquino, and Spykerman
In contesting this rejection, Appellants specifically present arguments
directed to claims 20 and 23, but do not present any separate arguments for
any of the remaining claims subject to this rejection. Thus, claims 10-13,
22, and 28 stand or fall with claim 20.
Turning first to claim 20, Appellants argue that the Examiner’s
proposed modification of Clark to provide a divider as taught by Spykerman
would not have been obvious, because if the divider were collapsed onto the
base of Clark, it would prevent Clark’s wall 13 from being able to fully
collapse. App. Br. 11.
In response, the Examiner points out that the divider of Spykerman “is
removable and could therefore be removed from the container prior to the
walls of Clark being collapsed.” Ans. 18. The Examiner further points out
that Spykerman’s divider is recessed from the end walls and does not
overlap with the sidewalls in the collapsed position, thus allowing the
container to be folded flat. Ans. 18-19 (citing Spykerman, figs. 5-9; col. 4,
ll. 5-29).
Appellants attack the Examiner’s reasoning that the divider can be
removed prior to collapsing Clark’s walls by arguing that if the divider were
removed prior to collapsing Clark’s walls, it could not then be collapsed on
Appeal 2011-005049
Application 11/755,181

10
the base, and thus would fail to meet the express limitations of claim 20.
Reply Br. 3-4. Appellants’ argument is not commensurate with the scope of
claim 20, which does not require that the side walls, rear wall, and front wall
be collapsed at the same time that the divider is in a collapsed position on
the base.
For the above reasons, Appellants do not apprise us of error in the
Examiner’s rejection of claim 20 as unpatentable over Clark, Aquino, and
Spykerman. We thus sustain the rejection of claim 20 and of claims 10-13,
22, and 28, which fall with claim 20.
In contesting the rejection of claim 23, Appellants challenge the
Examiner’s conclusion that Clark, Aquino, and Spykerman teach the
claimed collapsible container, wherein the divider and the opposed side
walls are collapsible onto the base and do not overlap one another. See Ans.
15; App. Br. 11-12. Appellants acknowledge the Examiner’s finding that
Spykerman’s divider is recessed from the end walls and does not overlap
with the side walls. Reply Br. 4; see Ans. 18-19. However, Appellants
assert that this finding addresses Spykerman in isolation, and contend that
“when Spykerman’s divider is incorporated into the container of Clark there
would be overlap.” Reply Br. 4; see also App. Br. 11-12.
The Examiner reasons that “[s]ince both Clark and Spykerman
disclose fold-flat containers, one of ordinary skill in the art when modifying
Clark in view of Spykerman would maintain a fold-flat configuration for the
combination.” Ans. 19. This reasoning does not address the claim
limitation at issue, namely, that the divider and the pair of opposed side
walls are collapsible and do not overlap one another. As evidenced by
figures 6 and 7 of Clark, which the Examiner characterizes as a “fold-flat”
Appeal 2011-005049
Application 11/755,181

11
container, Clark’s collapsed configuration includes overlapping walls.
Specifically, the side walls 13 and 15 overlap each other, and the end walls
17 and 19 overlap the side walls, in the collapsed configuration. See col. 4,
ll. 38-41. Thus, maintaining a fold-flat configuration for the combination, as
proposed by the Examiner, would not ensure that the divider and opposed
side walls do not overlap each other in the collapsed configuration.
For the above reasons, the Examiner does not establish a prima facie
case of obviousness of the subject matter of claim 23. We do not sustain the
rejection.
DECISION
The Examiner’s decision rejecting claims 1, 3, 5-7, 9-20, 22-26, and
28 is affirmed as to claims 1, 3, 5-7, 9-20, 22, 24-26, and 28, and is reversed
as to claim 23.
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

hh