Ex Parte Bobed

Patent Trial and Appeal Board

Oct 29, 2012

10527536 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ISMAEL GRACIA BOBED
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Appeal 2010-004614
Application 10/527,536
Technology Center 3700
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Before: PHILLIP J. KAUFFMAN, LYNNE H. BROWNE, and
HYUN J. JUNG, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004614
Application 10/527,536

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
13, 19-21, 23, 25-28, 31-34, and 39.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

THE INVENTION
Appellant’s claimed invention “relates to a washing machine lye
container of the type which is formed by two halves which are connected by
the mouths of their open base sections and which can be separated to allow
repair of any defects which may arise.” Spec. 1:5-9. Claims 23 and 31 are
the independent claims on appeal, and claim 23, reproduced below, is
illustrative of the claimed subject matter:
23. A lye container for a washing machine, the lye
container comprising:
a first container portion and a second
container portion removably connected to one
another, the first container portion having a first
radial extension having a front section facing the
second container portion and a rear section facing
away from the second container portion;
an opening extending through the first radial
extension and having an inner diameter, the

1 While Appellant lists claim 40 as rejected in the Status of Claims, it is not
subject to any ground of rejection. App. Br. 3; Ans. 5-9. Additionally, we
agree with the Examiner that the objection to claims 24 and 31-40 is not an
appealable matter. See Ans. 2-3 (mistakenly omitting that claim 24 is
objected to); Office Action dated Aug. 7, 2009, p.5 (including claim 24);
App. Br. 3, 7-8; see also 37 C.F.R. § 1.181; Manual of Patent Examining
Procedure §§ 706.01, 1002, and 1201 (8th ed., Rev. 9, Aug. 2012); In re
Mindick, 371 F.2d 892, 894 (CCPA 1967).
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diameter near the rear section being greater than
the diameter near the front section;
the second container portion having a
second radial extension being removably
engagable with the first radial extension, the
engagement of the first and second radial
extensions helping to create a seal between the first
and second container portions;
a pin extending in an axial direction from
the second radial extension to an outer end and
having an outer diameter, an axial through hole,
and longitudinal grooves extending along the pin,
the maximum outer diameter of the pin being
greater than the minimum inner diameter of the
opening, the pin being at least partially disposed
within the opening when the second radial
extension engages the first radial extension; and
a dowel removably disposed within the axial
through hole and helping maintain the second
radial extension in engagement with the first radial
extension.

EVIDENCE RELIED UPON
Morel
Iguchi
Pliml
Bertoldo
Boved
US 4,276,806
US 4,874,276
US 6,324,731 B1
EP 0 961 374 A1
EP 0 789 104 A1
Jul. 7, 1981
Oct. 17, 1989
Dec. 4, 2001
Dec. 1, 1999
Aug. 13, 1997

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THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 13, 21, 23, 25, 26, 28, and 31-33 under 35 U.S.C. § 103(a) as
unpatentable over Boved and Bertoldo.
2. Claim 34 under 35 U.S.C. § 103(a) as unpatentable over Boved,
Bertoldo, and Pliml.
3. Claim 39 under 35 U.S.C. § 103(a) as unpatentable over Boved,
Bertoldo, and Morel.
4. Claims 19, 20, and 27 under 35 U.S.C. § 103(a) as unpatentable over
Boved, Bertoldo, and Iguchi.

OPINION
Claims 13, 21, 23, 25, 26, 28, and 31-33 over Boved and Bertoldo
Claims 13, 23, 25, 26, and 282
The Examiner found that Boved discloses the subject matter of
independent claim 23 except the closure mechanism (the pin, dowel, and
axial through hole). Ans. 5-6. The Examiner concluded that it would have
been obvious to replace Boved’s closure mechanism with Bertoldo’s closure
mechanism. Ans. 6. The Examiner reasoned that a person of ordinary skill
in the art would have made such a modification in order to provide:
(1) an indication within Bertoldo that a liquid-tight seal can be
achieved to keep electrical components and connections from
becoming wet to maintain component performance and
reduce/eliminate short circuits, (2) an indication within

2 Appellant argues claims 13, 23, 25, 26, and 28 as a group and we select
independent claim 23 as representative. App. Br. 9-10; see 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).

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Bertoldo that a guaranteed fastening force comparable to screw
fastening keeps the closure secured to the body of the
connection box to maintain component and connection integrity
and prevent human tampering and (3) to provide the advantage
of lower assembly time as compared to screw fasteners as the
pin is inserted then the dowel is inserted which is considerably
faster than a screw fastener wherein the threads need to aligned,
the threads are started by catching the first threads, then the
fastener is rotated till the full fastening force is achieved.
Id.
Appellant makes two primary arguments. App. Br. 9-10; Reply Br.
1-5. First, Appellant contends that Bertoldo’s closure mechanism is
intended to be used on small electrical connector boxes that do not
experience any significant forces, and that such a connection is “highly
unlikely” to provide the degree of fixation force required for use in a
washing machine. App. Br. 9-10. Specifically, according to Appellant,
Bertoldo’s closure mechanism need only provide a light amount of closing
force to maintain a liquid-tight seal and provides the same degree of closing
force as would the use of screws, which, for an electrical junction box,
would be very small screws that provide relatively little closure force. Reply
Br. 3-4. We view this first contention as both an attack on the Examiner’s
finding regarding the closure mechanism, and an attack on the first two
reasons of the Examiner’s rationale.
Regarding the attack on the Examiner’s finding, Appellant fails to
identify a structural distinction between the claimed closure mechanism and
Bertoldo’s closure mechanism. In re Schreiber, 128 F.3d 1473, 1477-78
(Fed. Cir. 1997) (claims directed to an apparatus must be distinguished from
the prior art in terms of structure rather than function). Consequently, the
burden shifted to Appellant to show that Bertoldo’s closure mechanism is
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not capable of the claimed use. See, e.g., In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Appellant does not submit evidence regarding the amount of
force applied to lye containers by washing machines, nor does Appellant
provide evidence regarding the amount of force Bertoldo’s closure
mechanism can withstand. In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (Appellant’s arguments do not take the place of evidence). As such,
Appellant failed to carry the burden of proving Bertoldo’s closure
mechanism is incapable of use in a washing machine as called for in claim
23.
Regarding the Examiner’s rationale, we agree with the Examiner that
Appellant’s contention that Bertoldo’s closure mechanism would provide
insufficient closure force for use as claimed, is undermined by the fact that
claim 23, when read in light of the Specification, does not specify an amount
of closure force. See Ans. 9-10; In re Morris, 127 F.3d 1048, 1056 (Fed.
Cir. 1997) (it is Appellant’s burden to precisely define the invention.); see
also See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”). Consequently, Appellant’s first contention is not
persuasive.
Second, Appellant contends that the Examiner’s third reason for the
proposed modification, lower assembly time, “makes no sense” because
Boved’s mechanism already provides for extremely fast assembly. Reply
Br. 4-5. We examine the references in light of this contention.
Bertoldo discloses an improved system for fixing the cover to the base
of a box for electrical material used in domestic or industrial electric
installations that permits the box to be opened and closed more simply and
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rapidly. Bertoldo, paras. [0001], [0003]; fig. 1. Bertoldo’s system provides
a fastening force comparable to that of traditional systems fastened by
screws, and “compared to them [traditional systems fastened by screws] has
the advantage of a considerably lower assembly time.” Bertoldo, para.
[0012].
Boved discloses that opening and closing the halves of a plastic tank
for washing machines having many screws is time consuming. Boved, col.
2, ll. 14-18. To save time and reduce cost, Boved discloses an improved
closing system having harpoon like axial projections rather than screws to
secure the halves to each other. Boved, col. 1, ll. 13-18; col. 2, ll. 47-50; col.
3, ll. 21-24. Alternatively, for those exceptional cases where the halves must
be separated by a service technician, the system includes screws
supplemented by axial projections so that the total number of screws
required is reduced. Boved, col. 5, l. 58-col. 6, l. 8.
In light of these disclosures, a person of ordinary skill in the art would
recognize that replacing the screws of Boved’s alternate embodiment with
Bertoldo’s securing system would provide the advantage of considerably
lower assembly time. Consequently, the Examiner’s reasoning that the
modification has the advantage of lower assembly time as compared to
screw fasteners has a rational underpinning. See Ans. 6; contra. Reply Br.
4-5.
Thus, Appellant has not convinced us of error in the Examiner’s
rejection of claim 23. Claims 13, 25, 26, and 28 fall with claim 23.

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Claim 21
Claim 21 depends from independent claim 23, and recites, “wherein a
concentric protective projection is formed on the second container portion
around a first end of the axial through hole that is opposite the outer end of
the pin, the concentric protective projection protecting the dowel when it is
held at the first end of the axial through hole.” The Specification states that
concentric projection 14 protects dowel 13 when the halves of the lye
container are transported. Spec. 7:16-19; figs. 2, 3; see also App. Br. 5
(identifying this as the claimed subject matter).
The Examiner found that Bertoldo discloses a concentric protective
projection (recessed seat 70) as claimed. Ans. 7. Appellant contends that
Bertoldo’s recessed seat 70, “only surrounds the dowel after the dowel has
been fully inserted into a through hole to join the two halves to the
mechanism together.” Reply Br. 5-6; see also App. Br. 11 (asserting more
generally that no feature of Bertoldo corresponds to the claimed concentric
protective projection).3
Appellant’s contention suggests that Appellant interprets claim 21 to
call for the entire dowel to be within the concentric protective projection.
Claim 21 does not recite that the concentric protective projection surround or
protect the entire dowel. Claim 21 only necessitates that the concentric
protective projection protect the dowel when it is positioned at the first end
of the axial through hole. Bertoldo’s recessed seat 70 protects a portion of
the dowel (pin 60) when it is positioned at the first end of axial through hole
(tubular element 50), and therefore corresponds to a concentric protective

3 Appellant also argues for claim 23 based upon its dependency from claim
21. App. Br. 11. For the reasons given in the analysis of the rejection of
claim 21, supra, that argument is unconvincing here as well.
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projection as claimed. Bertoldo, para. [0009], [0010]; figs. 1, 2, 4; see also
Ans. 7, 10.
Accordingly, we sustain the rejection of claim 21.

Claims 31 and 32
Appellant argues for independent claim 31 by repeating the arguments
used in connection with independent claim 23, and argues for claim 32 by
virtue of its dependence from claim 31. App. Br. 11-12; see also App. Br. 9-
10. For the reasons given in the analysis of claim 23, supra, that argument is
unpersuasive here as well.

Claim 33
Claim 33 depends from independent claim 31. Appellant repeats the
argument used in connection with claim 31, which is a repetition of the
argument used against independent claim 23. App. Br. 12; see also App. Br.
9-10. Appellant also repeats the argument against the rejection of claim 21
regarding the concentric protective projection. App. Br. 12; see also App.
Br. 11; Reply Br. 5-6. For the reasons given in the analysis of the rejection
of claims 23 and 21, supra, those arguments are unpersuasive here as well.

Claim 34 over Boved, Bertoldo, and Pliml
Claim 34 depends from claim 33. Appellant repeats the argument
against claim 33, adding that Pliml does not cure the deficiency of the
combination of Boved and Bertoldo. App. Br. 12; see also App. Br. 9-10;
Reply Br. 5-6. As explained in the analysis of claim 33, supra, there are no
deficiencies to be cured, and therefore this argument is unconvincing.
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Claim 39 over Boved, Bertoldo, and Morel
Claim 39 depends from independent claim 31, and recites, “wherein
when the dowel is disposed within the pin, the entire shaft of the dowel is
accommodated within the axial through hole.”
Examiner found that “Morel teaches an insertion stop for a pin (see
Fig. 2-4, the insertion stop is the ledge formed between recess 15 and
opening 14), the stop prevents the pin from being backed-out of the opening
once the lugs 11 are engaged within the recess 15.” Ans. 8. However, the
Examiner makes no finding that when the dowel is disposed within the pin
the entire shaft of the dowel is accommodated within the axial through hole
as called for in claim 39. Thus, the Examiner has failed to make a prima
facie case of obviousness. See Reply Br. 6-7 (speculating that the
Examiner’s rejection may have unintentionally addressed the subject matter
of claim 40 rather than claim 39).
As such, we do not sustain the rejection of claim 39.

Claim 19, 20, and 27 over Boved, Bertoldo, and Iguchi
Claim 27 depends from claim 23, and recites, “wherein the axial
through hole include fixing ribs to help retain the dowel in the desired
position.” Claims 19 and 20 depend from claim 27, and therefore also
contain this limitation.
The Examiner found that Iguchi discloses fixing ribs (plurality of
projections 13) on a dowel, and concluded that it would have been obvious
to add fixing ribs to the axial through hole “to prevent the dowel from
inadvertently being backed-out of the hole to provide a secure connection
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even when the parts being connected are subjected to vibration and
movement the connection will hold fast.” Ans. 8.
Iguchi’s ribs (plurality of projections 13) serve as guides in notches 3,
and are not disclosed as providing a secure connection as called for in claim
27. Iguchi, col. 1, ll. 61-65; fig. 13. Therefore, we agree with Appellant that
Iguchi’s ribs (plurality of projections 13), “would not be effective to hold the
Iguchi dowel 12 at a non-inserted position within the axial through hole 1a.”
Reply Br. 8.
Accordingly, we do not sustain the rejection of claims 19, 20, and 27.

DECISION
We affirm the Examiner’s decision to reject claims 13, 21, 23, 25, 26,
28, and 31-33 under 35 U.S.C. § 103(a) as unpatentable over Boved and
Bertoldo.
We affirm the Examiner’s decision to reject claim 34 under 35 U.S.C.
§ 103(a) as unpatentable over Boved, Bertoldo, and Pliml.
We reverse the Examiner’s decision to reject claim 39 under 35
U.S.C. § 103(a) as unpatentable over Boved, Bertoldo, and Morel.
We reverse the Examiner’s decision to reject claims 19, 20, and 27
under 35 U.S.C. § 103(a) as unpatentable over Boved, Bertoldo, and Iguchi.
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
Klh