Ex Parte Brown

Board of Patent Appeals and Interferences

Aug 25, 2011

10940994 (B.P.A.I. Aug. 25, 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.
10/940,994 09/15/2004 John P. Brown 24803.00 7677
37833 7590 08/26/2011
LITMAN LAW OFFICES, LTD.
PATENT LAW BUILDING
8955 CENTER STREET
MANASSAS, VA 20110
EXAMINER
SUERETH, SARAH ELIZABETH
ART UNIT PAPER NUMBER
3749
MAIL DATE DELIVERY MODE
08/26/2011 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
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN P. BROWN
____________

Appeal 2009-012485
Application 10/940,994
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
EDWARD A. BROWN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John P. Brown (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1, 2, 4-8, and 11-13 under 35
U.S.C. § 103(a) as unpatentable over Taylor (U.S. Patent No. 6,006,744,
issued Dec. 28, 1999) and Wagg (U.S. Patent No. 4,307,704, issued Dec. 29,
Appeal 2009-012485
Application 10/940,994

2
1981). Claims 3, 9, 10, and 14-19 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to a removable fireplace cleanout. Claim
1, reproduced below, is illustrative of the subject matter on appeal.
1. A removable fireplace cleanout,
comprising:
a debris collection tray having a floor pan
defining a periphery and a plurality of sidewalls
extending upward from the periphery, including a
front wall, a rear wall, and first and second lateral
sidewalls, the rear wall having an opening defined
therein;
a debris dump door panel having an upper
edge and a lower edge;
a weight mounted adjacent the lower edge of
said debris dump door panel; and
at least one top-mounted hinge pivotally
attaching the upper edge of the dump door to the
rear wall of the tray, whereby the dump door
closes the opening in the rear wall when the tray is
level and swings open by gravity when the tray is
tilted so that the rear wall is downward.

OPINION
The Examiner finds that Taylor substantially discloses the inventions
of independent claims 1 and 8, except that Taylor fails to disclose a hinged
door panel and weight as claimed. Ans. 3-4. The Examiner finds that Wagg
discloses a door panel (i.e., cover means 46) having top-mounted hinges 48
pivotally attaching the door to an upper edge of a wall 34 and a weight 60.
Id. The Examiner concludes that it would have been obvious to modify
Taylor’s removable fireplace cleanout 10 with the door panel 46 and weight
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60 as taught by Wagg in order to guide ashes into an ash retaining enclosure,
such as a garbage can. Ans. 4.
Appellant contends that the Examiner has failed to set forth a
sufficient reason why a person of ordinary skill in the art would be
motivated to combine Taylor and Wagg. Br. 9. Appellant also contends that
Taylor’s rear wall is solid and there would be no reason to put a door panel
in the rear wall of the tray for dumping ash because the ashes are already
easily disposed of by simply dumping the ashes out of the tray. Br. 7.
Appellant also contends that even if a person of ordinary skill in the art were
motivated to combine Taylor and Wagg, their combination would not result
in the present invention because neither reference teaches the specific
placement of the door in the rear wall. Br. 8. Finally, Appellant also
contends that the Examiner’s combination of Taylor and Wagg is an
impermissible hindsight reconstruction. Br. 11.
In response to Appellant’s arguments, the Examiner disagrees with
Appellant's contention that there is no reason to combine Taylor and Wagg.
Ans. 5. The Examiner alleges that Taylor discloses the importance of not
spilling ashes while dumping them into a garbage can, the problem of clouds
of ash arising during disposal of ashes which fill the room, and the necessity
of lifting the cover to dump ashes all at once invariably displacing ash into
the air. Id. The Examiner also alleges that Wagg discloses an ashcan with a
hinged cover for preventing loss of ashes into the surrounding environment
which allows a minimal number of ashes to fly into the surrounding
environment by the pouring out of the ash from the ashcan in a controlled
and contained manner to create less mess. Id. Thus, the Examiner suggests
that Wagg’s teachings show the desirability of the combination with Taylor.
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Id. In response to the Appellant’s argument that neither Taylor nor Wagg
discloses the specific placement of the door in the rear wall, the Examiner
alleges that “it would be obvious to place the hinged cover in any convenient
location, including the rear of the fireplace tray” and that the combined
teachings of Taylor and Wagg “clearly show the desirability of a fireplace
tray with a hinged cover.” Ans. 6.
We disagree with the Examiner that it would be obvious to place
Wagg’s door 46 “in any convenient location” on Taylor’s fireplace tray 10,
including the rear wall 26. At column 2, lines 28-34, Wagg discloses that:
The apparatus further includes a cover means which is
moveable and pivotally secured with respect to the housing to
be capable of being placed over the open end and thereby as
required and desired, seal the ash retaining chamber from the
external environment when the inclined entry ramp and the
entry side means extend into the ash pit of the stove.

At column 4, lines 24-29, Wagg also discloses that:
Once the ashes 12 are moved into the chamber 40 it is
desirable to seal the chamber by closing the open end 38
thereof. This sealing is performed by the placing of a movable
cover means 46 over open end 38. Preferably the movable
cover means 46 is pivotally secured with respect to the top
means 34 by a plurality of hinges 48.

Thus, Wagg teaches a person of ordinary skill in the art to place a door over
an open end of an ash receiving chamber in order to seal the ash retaining
chamber from the external environment.
The Examiner’s modification of Taylor by Wagg does not specify
where on the fireplace tray 10 of Taylor that the door 46 of Wagg is being
placed. The Examiner makes no finding concerning whether Taylor teaches
“the rear wall having an opening defined therein” as is recited in claim 1 and
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“said rear wall having an opening formed therethrough” as recited in claim
8. Nor does it appear that the Examiner modified Taylor by Wagg to have
an opening in the rear wall 26. Upon our reading of the totality of the
Examiner’s rejection on pages 3-4 of the Examiner’s Answer and the
Response to Argument on pages 5-7 of the Examiner’s Answer, it appears
that the Examiner is modifying Taylor to place the door 46 of Wagg over the
top opening so that the hinge is top mounted along the back wall 26 of
Taylor’s fireplace tray 10 in order for the door 46 to seal the ash retaining
chamber (above base 22 and between walls 24, 26, 28, and 30) from ash
flying into the surrounding environment. If the Examiner is modifying
Taylor by placing Wagg’s door 46 over the top opening, this modification
does not satisfy the claim language of the rear wall having an opening, nor
the functional claim language of “whereby the dump door closes the opening
in the rear wall when the tray is level and swings open by gravity when the
tray is tilted so that the rear wall is downward,” which the Examiner
improperly treated as a recitation of intended use by interpreting Wagg’s
door 46 to be capable of performing the recited functions. See the Manual of
Patent Examining Procedure (MPEP) § 2111.04 citing Hoffer v. Microsoft
Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005) (When a “‘whereby’ clause
states a condition that is material to patentability, it cannot be ignored in
order to change the substance of the invention.”).
If instead the Examiner is modifying Taylor’s fireplace tray 10 by
Wagg to have an opening in the rear wall 26 covered by a hinged door, the
Examiner’s articulated reasoning, namely, “in order to guide ashes into the
ash retaining enclosure, such as a garbage can (Wagg, col. 3, line 24)” (Ans.
4), lacks an adequate rational underpinning. See KSR Int’l Co. v. Teleflex,
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Application 10/940,994

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Inc., 550 U.S. 398, 418 (2007) (“‘[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.’” quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)). At column 3, line 24, Wagg specifies that it is the entry
side means 44 of the inclined entry ramp 42 that guide the ashes into the
stove ash retaining apparatus 26, not the door 46. Wagg’s door 46 mainly
functions to allow ash into the chamber 40 of the ash retaining apparatus 26
and to seal the chamber 40 so that ash will not scatter into the surrounding
environment to dirty the room. Wagg does not teach that the door 46 helps
guide ashes. Additionally, modifying Taylor’s fireplace tray 10 by Wagg to
place a hinged door covering an opening in the rear wall would not prevent
ashes from scattering into the air as suggested by the Examiner (Ans. 5).
As it appears that the only suggestion to provide the claimed subject
matter of a fireplace tray having an opening in a rear wall and a hinged and
weighted door, which closes the opening in a rear wall when the tray is level
and which swings open by gravity when the tray is tilted so that the rear wall
is downward, comes from Appellant’s disclosure, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejection of claims 1, 2, 4-8, and 11-13
under 35 U.S.C. § 103(a) as unpatentable over Taylor and Wagg.

REVERSED

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