Ex Parte BrineDownload PDFBoard of Patent Appeals and InterferencesJan 18, 201110939527 (B.P.A.I. Jan. 18, 2011) Copy Citation 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. 10/939,527 09/13/2004 William H. Brine 18458-00003 4118 7590 01/18/2011 Jenifer E. Haeckl, Esq. Mirick, O'Connell, DeMallie & Lougee, LLP 100 Front Street Worcester, MA 01608-1477 EXAMINER NGUYEN, TAN D ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 01/18/2011 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 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte WILLIAM H. BRINE 8 ___________ 9 10 Appeal 2009-011762 11 Application 10/939,527 12 Technology Center 3600 13 ___________ 14 15 Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 16 THU A. DANG, Administrative Patent Judges. 17 FETTING, Administrative Patent Judge. 18 DECISION ON APPEAL1 19 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 2009-011762 Application 10/939,527 2 STATEMENT OF THE CASE2 1 2 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed November 18, 2008) and the Examiner’s Answer (“Ans.,” mailed January 22, 2009). William H. Brine (Appellant) seeks review under 35 U.S.C. § 134 2 (2002) of a final rejection of claims 1- 5, 7, 8, 10, 12-14, 16, and 17, the only 3 claims pending in the application on appeal. We have jurisdiction over the 4 appeal pursuant to 35 U.S.C. § 6(b) (2002). 5 The Appellant invented a way of providing memorials to loved ones 6 while generating charitable income (Specification 3:5-7). An understanding 7 of the invention can be derived from a reading of exemplary claim 10, which 8 is reproduced below [bracketed matter and some paragraphing added]. 9 10. A method for providing a memorial for a deceased person 10 or animal whose bodily remains have been cremated into ashes, 11 comprising the steps of, 12 [1] providing a first facility; 13 [2] locating a self-contained crypt at said first facility 14 wherein said self-contained crypt comprises a plurality of 15 individually accessible compartments and 16 said self-contained crypt is readily movable relative to 17 said first facility; 18 [3] providing only a portion of said ashes; 19 [4] enclosing said portion of said ashes in a vessel; 20 Appeal 2009-011762 Application 10/939,527 3 [5] enclosing said vessel in one of said compartments; and 1 [6] after said vessel is enclosed in one of said compartments, 2 moving said self-contained crypt from said first facility 3 to a second facility. 4 The Examiner relies upon the following prior art: 5 Wood US 6,389,664 B1 May 21, 2002 Hill, II US 2002/0133360 A1 Sep. 19, 2002 Russell US 2002/0178079 A1 Nov. 28, 2002 Claims 1-3, 5, 7, 8, 10, 12, 13, 14, 16, and 17 stand rejected under 35 6 U.S.C. § 103(a) as unpatentable over Hill and Wood. 7 Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable 8 over Hill, Wood, and Russell. 9 ISSUES 10 The issue of obviousness turns on whether it was predictable to move a 11 display burial container such as that in Hill to a different location. 12 FACTS PERTINENT TO THE ISSUES 13 The following enumerated Findings of Fact (FF) are believed to be 14 supported by a preponderance of the evidence. 15 Facts Related to the Prior Art 16 Hill 17 01. Hill is directed to providing a resting place for remains and 18 raising funds for institutions. Hill ¶ 0001. 19 Appeal 2009-011762 Application 10/939,527 4 02. Hill uses a burial structure that is both a burial and display case 1 containing individual ash burial vessels in individual niches (Hill 2 ¶s 0028 and 0038). 3 03. Hill’s burial container may simply be supported on a platform. 4 Hill ¶ 0046. 5 Wood 6 04. Wood is directed to a portable burial system. Wood 1:11-13. 7 05. Wood describes relocation of burial remains as a problem 8 Wood solves. Wood 1:30-31. 9 06. Wood describes reasons that such relocation would be desirable 10 including that the owner might relocate or the instant burial 11 location might become impractical at some point. Wood 5:6-12. 12 ANALYSIS 13 The Examiner found that all three independent claims 1, 10, and 13, 14 were similar and applied the same findings to all three claims. The 15 Examiner found that Hill described the burial container in these claims and 16 Wood described moving the container as in these claims. The Examiner also 17 cited In re Lindberg, 194 F2d. 732 (CCPA 1952) for the legal finding that 18 merely making something moveable was obvious. As to the issue of a 19 portion of the remains being encapsulated, the Examiner found this was to 20 be afforded no patentable weight as this was no more than a matter of 21 choice. Ans. 3-7. 22 The Appellant argues that Hill is not portable and Wood does not use a 23 crypt, a classic example of arguing references separately where the rejection 24 Appeal 2009-011762 Application 10/939,527 5 is based on their union. Appeal Br. 12-14. This is an improper argument. 1 Nonobviousness cannot be established by attacking the references 2 individually when the rejection is predicated upon a combination of prior art 3 disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 4 1986). 5 Basically, none of the limitations except for moving the crypt are under 6 contention. We agree with the Examiner these limitations are met by Hill. 7 FF 01-03. Woods describes a problem of burial relocation needing to be 8 solved and describes making burial chambers re-locatable as a solution. FF 9 04-06. This problem would clearly apply to Hill’s burial container, 10 particularly when the institution using Hill’s chamber relocated a building 11 such a chamber was within. As Hill describes such a simple means of 12 positioning as supporting on a platform which would allow ready relocation, 13 one of ordinary skill seeing the problem so starkly stated in Wood would 14 immediately see its applicability to Hill. This close relationship between 15 problems to be solved also responds to the Appellant’s arguments regarding 16 combinability of the references. Appeal Br. 14-16. 17 CONCLUSIONS OF LAW 18 Rejecting claims 1-3, 5, 7, 8, 10, 12, 13, 14, 16, and 17 under 35 U.S.C. 19 § 103(a) as unpatentable over Hill and Wood is not in error. 20 Rejecting claims 4 and 16 under 35 U.S.C. § 103(a) as unpatentable over 21 Hill, Wood, and Russell is not in error. 22 DECISION 23 To summarize, our decision is as follows. 24 Appeal 2009-011762 Application 10/939,527 6 • The rejection of claims 1-3, 5, 7, 8, 10, 12, 13, 14, 16, and 17 under 1 35 U.S.C. § 103(a) as unpatentable over Hill and Wood is sustained. 2 • The rejection of claims 4 and 16 under 35 U.S.C. § 103(a) as 3 unpatentable over Hill, Wood, and Russell is sustained. 4 No time period for taking any subsequent action in connection with this 5 appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 6 § 1.136(a)(1)(iv) (2007). 7 8 AFFIRMED 9 10 11 12 mev 13 14 Address 15 JENIFER E. HAECKL, ESQ. 16 MIRICK, O'CONNELL, DEMALLIE & LOUGEE, LLP 17 100 FRONT STREET 18 WORCESTER MA 01608-1477 19 Copy with citationCopy as parenthetical citation