Ex Parte Brine

Board of Patent Appeals and Interferences

Jan 18, 2011

10939527 (B.P.A.I. Jan. 18, 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.
10/939,527 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.

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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
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[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
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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
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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
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• 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
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12
mev 13
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Address 15
JENIFER E. HAECKL, ESQ. 16
MIRICK, O'CONNELL, DEMALLIE & LOUGEE, LLP 17
100 FRONT STREET 18
WORCESTER MA 01608-1477 19