Ex Parte Beckstead

Patent Trial and Appeal Board

Dec 19, 2012

11389295 (P.T.A.B. Dec. 19, 2012)

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.
11/389,295 03/27/2006 Kenneth M. Beckstead KB01U 1382
7590 12/19/2012
DON E. ERICKSON
STE. 104 #627
7668 EL CAMINO REAL
LA COSTA, CA 92009
EXAMINER
MCKINLEY, CHRISTOPHER BRIAN
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
12/19/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte KENNETH M. BECKSTEAD
____________________

Appeal 2010-011943
Application 11/389,295
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, SCOTT E. KAMHOLZ, and
JEREMY M. PLENZLER, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/389,295

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the decision of the
Examiner to reject claims 1, 3-10, and 12-21. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

THE CLAIMED SUBJECT MATTER
The claimed subject matter is directed to a receptacle for cigar and
cigarette butts. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An outdoor receptacle for receiving cigar and cigarette
butts, the receptacle comprising:
a. a base section, the base section having a bottom
wall;
b. a hollow section for retaining discarded butts, the
hollow section supporting a grill section supported by the
bottom wall;
c. a grill disposed between the base section and a
hood section, the grill having an outer surface and an inner
surface, the grill having grill elements substantially parallel to
each other and defining elongated slots through which the butts
can pass, the grill elements being spaced apart to permit the
passage of butts through the grill while restricting the passage
of other materials, the grill positioned at an angle substantially
greater than zero relative to the horizontal; and
d. the hood section providing a conduit for the butts
to the grill and substantially covering the outer surface of the
grill.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Application 11/389,295

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Sparrow
Otsuka
Forrest
Zeller
US 1,928,914
US 3,853,263
US 6,685,029 B2
US 7,306,104 B2
Oct. 3, 1933
Dec. 10, 1974
Feb. 3, 2004
Dec. 11, 2007

REJECTIONS
Appellant seeks our review of the following rejections:
Claims 1, 4, 6, 7, 10, 13, and 15 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Otsuka and Sparrow. Ans. 3.
Claims 3, 12, 18, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Otsuka, Sparrow, and Forrest. Ans. 4.
Claims 5, 14, and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Otsuka, Sparrow, and Forrest. Ans. 4.
Claims 8, 9, 16, 17, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Otsuka, Sparrow, Forrest, and Zeller. Ans. 5.

ANALYSIS
1. Obviousness of claims 1, 4, 6, 7, 10, 13, and 15 over Otsuka and
Sparrow
Appellant argues these claims as a group. We therefore select claim 1
as representative and decide the appeal with respect to all claims in this
group on the basis of claim 1 alone; see 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Otsuka discloses all elements of claim 1
except a “hood section providing a conduit for the butts to the grill and
substantially covering the outer surface of the grill.” Ans. 3-4. The
Examiner further found that Sparrow discloses a hood. Id. at 4. The
Examiner concluded that it would have been obvious to modify Otsuka’s
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receptacle to include Sparrow’s hood “in order to exclude rain, snow or the
like from entering the receptacle.” Id.
Appellant argues that (a) Otsuka teaches away from its combination
with Sparrow; (b) neither Otsuka nor Sparrow discloses all elements of
claim 1; and (c) Otsuka was applied for some forty years after Sparrow was
published. We consider each argument in turn.
a. Otsuka teaches away from its combination with Sparrow.
Appellant argues that Otsuka teaches away from its combination with
Sparrow because (1) Otsuka seeks to avoid sharp edges, but incorporating
Sparrow’s hood would have introduced a “sharp edge completely about its
periphery” (Br. 4, 7, 8, 10) (quotation from Br. 4); and (2) Otsuka’s nearly-
vertical grill angle obviates the need for a cover (Br. 9). Appellant expresses
the same opinions in his Declaration (Beckstead Decl. ¶¶ 9 and 6a-f,
respectively). In response, the Examiner notes that (1) Sparrow does not
disclose the edge as being sharp, that a given edge is not necessarily sharp,
and that Appellant offers no evidence supporting this argument (Ans. 7); and
(2) adding a hood to Otsuka would still enhance its protection from the
elements. Ans. 9.
Appellant’s arguments do not apprise us of error in the rejection. As
to argument (1), while Appellant correctly notes Otsuka’s objective to
provide a receptacle that is “free from sharp edges” (Otsuka, col. 1, ll. 48-
49), we agree with the Examiner that Sparrow does not disclose a hood that
necessarily has a sharp edge. Thus, modifying Otsuka’s receptacle to
include Sparrow’s hood would not necessarily result in a device that fails to
be “free from sharp edges.” Sparrow is therefore not inconsistent with
Otsuka’s objective. As to argument (2), we agree with the Examiner that a
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hood would reduce the susceptibility of Otsuka’s receptacle to rain and
snow, and that Otsuka need not have recognized this benefit for it to have
been obvious to one of ordinary skill.
For these reasons, we determine that the Examiner correctly found
that Otsuka does not teach away from its combination with Sparrow.
b. Neither Otsuka nor Sparrow discloses all limitations of claim 1.
Appellant argues that (1) Otsuka does not disclose the grill section
being “disposed between the base section and the hood section, where the
hood section provides a conduit for the butts, and where the hood section
substantially covers the outer surface of the grill” (Br. 7,8); and (2) Sparrow
does not (i) disclose a grill or (ii) provide a “conduit for the garbage to a
grill” (Br. 8). In response, the Examiner explained that (1) it is the
combination of Otsuka and Sparrow that meets the specified limitation, not
Otsuka alone (Ans. 5-6); that (2)(i) Sparrow was not relied upon for the
disclosure of a grill (Ans. 9); and (2)(ii) Sparrow in combination with
Otsuka would provide the recited conduit (Ans. 8-9).
Appellant’s arguments do not apprise us of error in the rejection,
principally because they address the references individually rather than the
combination articulated by the Examiner in the rejection. For example, the
Examiner did not rely upon Otsuka for the teaching of a hood providing a
conduit for the butts to the grill or for a hood substantially covering the outer
surface of the grill. The Examiner similarly did not rely upon Sparrow alone
for these teachings. Rather, the Examiner showed how the combination of
the two references would have met the specified limitations and rendered
them obvious to one having ordinary skill. One cannot show
nonobviousness of a combination by attacking the references individually.
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c. Sparrow predates Otsuka by forty years.
Appellant notes that Otsuka fails to include Sparrow’s hood despite
the fact that Sparrow was published some forty years before Otsuka was
filed. Br. 10.
This argument does not apprise us of error in the rejection. The mere
passage of time between references does not demonstrate non-obviousness
of the combination, without more, such as evidence of failed attempts to
combine.
For these reasons, we affirm the rejection of claims 1, 4, 6, 7, 10, 13,
and 15.
2. Obviousness of claims 3, 12, 18, and 20 over Otsuka, Sparrow, and
Forrest.
These claims require, among other things, that the angle of the grill be
in or within “the range of about 35 degrees to the horizontal to about 55
degrees to the horizontal.” The Examiner cited the combination of Otsuka
and Sparrow, as above, in further combination with Forest, which discloses a
grill having an angle in the claimed range. Ans. 4. Appellant acknowledges
that Forrest discloses a grill having an angle in the claimed range but argues
that Forrest is “completely irrelevant” to the claimed receptacle. Br. 11. In
response, the Examiner explains that the grills of Otsuka and Forrest
perform the same function— segregating material passing through the
grill— and that the modification to Otsuka’s grill angle would have been
obvious in the interests of improving Otsuka’s visibility. Ans. 10.
Appellant’s argument does not apprise us of error in the rejection.
The Examiner has provided articulated reasoning with rational underpinning
to explain why the combination would have been obvious and how Forrest’s
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disclosure is not “irrelevant” to Otsuka’s receptacle. Appellant has not
identified error in the Examiner’s reasoning.
3. Obviousness of claims 5, 14, and 19 over Otsuka, Sparrow, and
Forrest.
Appellant presents no arguments specifically directed to patentability
of these claims. We affirm the rejection for reasons similar to those given
above.
4. Obviousness of claims 8, 9, 16, 17, and 21 over Otsuka, Sparrow,
Forrest, and Zeller.
Appellant presents no arguments specifically directed to patentability
of these claims. We affirm the rejection for reasons similar to those given
above.

We have considered Appellant’s remaining arguments but find that
they too do not apprise us of error in the rejections.
We have considered Appellant’s declaration but find that it consists of
little more than arguments and unsupported assertions as to how one of
ordinary skill would have interpreted the cited references. It does not
contain objective statements of fact that are material to the outstanding
rejections. As such, it is of little probative value. We agree with the
Examiner that it is insufficient to overcome the rejections. See Ans. 9.

DECISION
For the above reasons, the Examiner’s decision to reject claims 1,
3-10, and 12-21 is AFFIRMED.

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Application 11/389,295

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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