Ex Parte Chubb

Board of Patent Appeals and Interferences

Apr 8, 2011

10972565 (B.P.A.I. Apr. 8, 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.
10/972,565 10/25/2004 Richard A. Chubb 690520.6 9749
7590 04/08/2011
CARELLA, BYRNE BAIN; GILFILLAN, CECCHI, STEWART
& OLSTEIN
Five Becker Farm Road
Roseland, NJ 07068
EXAMINER
MEYER, KATY E
ART UNIT PAPER NUMBER
3618
MAIL DATE DELIVERY MODE
04/08/2011 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 RICHARD A. CHUBB
____________________

Appeal 2009-011838
Application 10/972,565
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
JOHN C. KERINS, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011838
Application 10/972,565
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 8,
11-13, 16-18, 24-26 and 29. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a stackable dolly. Claim 8, reproduced
below, is illustrative of the claimed subject matter:
8. A stackable dolly comprising
a rectangular frame;
a plurality of wheels mounted on an underside of said
frame for rollably supporting said frame on a surface;
a plurality of posts mounted on said frame, each said post
having an opening in one end thereof and a male member at an
opposite end thereof, each said member being sized for
reception in an opening of a post of a second such dolly;
at least two support feet carried on one end of said frame,
each said support foot being movable under said frame to
receive the weight of said frame thereon and to elevate said
wheels above the support surface, each said support foot being
removably mounted on an underside of a respective post; and
a locking pin passing transversely through a respective
support foot and a respective post to removably secure said
respective support foot to said respective post.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Holmes
Skyrud
Reutter
Ondrasik
US 2,747,692
US 2,827,302
US 6,273,006 B1
US 6,793,223 B2
May 29, 1956
Mar. 18, 1958
Aug. 14, 2001
Sep. 21, 2004

Appeal 2009-011838
Application 10/972,565
3
REJECTIONS
Claims 8 and 24-26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Skyrud and Holmes. Ans. 3.
Claims 11-13, 18 and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Skyrud and Reutter. Ans. 4.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Skyrud and Ondrasik. Ans. 6.

OPINION
The Examiner found that Skyrud teaches the basic structure of
independent claims 8, 11, 16, 18, 24 and 29—a stackable dolly with the
bottom-most one set on a block 44. Ans. 3-6; Skyrud, cols. 1-2. The
Examiner also found that Skyrud does not disclose the claimed removable
foot structure, as required by claims 8 and 34, the claimed intermediate post
structure, as required by claims 11, 18 and 29, or the claimed tube structure,
as required by claim 16. Ans. 3-6.
Regarding claims 8 and 24-26, the Examiner cites Holmes to remedy
the deficiencies of Skyrud. Ans. 3-4. We agree with Appellant that Holmes,
which teaches a foot actuated brake mechanism (figs. 1-4, col. 2, ll. 15-46),
when combined with Skyrud would still not yield a support foot “removably
mounted on an underside of” the posts 30 of Skyrud and “a locking pin
passing transversely through a respective support foot and a respective post
to removably secure said respective support foot to said respective post.”
App. Br. 9-11; Reply Br. 2. The Examiner suggests a general reason to
provide the capability of carrying support feet—to prevent loss or damage.
However, the Examiner has failed to articulate reasoning with a rational
underpinning for repurposing Holmes’ brake mechanism, including
Appeal 2009-011838
Application 10/972,565
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transverse shaft 30, which serves as a pivot mechanism for the over-center
linkage, to include it on Skyrud’s posts. Thus, we cannot sustain the
rejection of claims 8 and 24-26 as being unpatentable over the combination
of Skyrud and Holmes. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Regarding claims 11-13, 18 and 29, the Examiner cites Reutter, which
teaches stackable pallets of different sizes, to remedy the deficiencies of
Skyrud. Ans. 4-5; Reutter, figs. 1, 12, col.3, ll. 13-59. We agree with
Appellant that Reutter would not have prompted one of ordinary skill in the
art to place intermediate posts on Skyrud. App. Br. 14; Reply Br. 3. The
concept of the two prior art references of being able to stack items of similar
nature but varying size in a single stack is the same, but Reutter’s ribs 16
would not have prompted one of ordinary skill in the art to modify Skyrud to
include intermediate posts so as to arrive at the claimed structure. There is
no legally recognizable essential gist or heart of the invention. W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed.Cir.1983). “All
words in a claim must be considered in judging the obviousness of the
claimed subject matter.” See In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970). For these reasons, the rejection of claims 11-13, 18 and 29 as being
unpatentable over Skyrud and Reutter cannot be sustained.
Regarding claims 16 and 17, the Examiner cites Ondrasik, which
teaches a nesting cart 10 having removable vertical frames 35, 46, to remedy
the deficiencies of Skyrud. Ans. 6; Ondrasik, col. 3, l. 60 – col. 4, l. 45. We
agree with Appellant that Ondrasik would not have prompted one of
ordinary skill in the art to place a plurality of hollow tubes on each of the
two longitudinal sides of Skyrud. App. Br. 16-17. At best, Ondrasik
demonstrates the concept of putting a plurality of posts 32, 58 on a cart
platform 14 for receiving a rack while at the same time demonstrating that a
Appeal 2009-011838
Application 10/972,565
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post 44, arguably “upstanding” from frame 12, can be placed on each
longitudinal side of the cart frame to also receive a rack. Col. 4, ll. 45-60,
col. 6, ll. 29-33, fig. 1. There is no structure in Ondrasik that teaches a
plurality of upstanding tubes that are themselves on each longitudinal side of
the skeletal frame of a dolly and the Examiner has not offered any reasoning
as to why a person of ordinary skill in the art would further modify Ondrasik
to arrive at such a structure. See Reply Br. 3. Even assuming arguendo that
Ondrasik’s teachings could have been interpreted as suggest ing placing a
plurality of upstanding tubes on each longitudinal side of a skeletal frame,
doing so would be contrary to the main purpose of Skyrud, which is to
provide a pallet truck for stacking steel sheets. Skyrud, col. 2, ll. 35-40.
Thus, the Examiner has not articulated any reasoning with a rational
underpinning as to how or why Ondrasik and Skyrud would have rendered
obvious including a plurality of upstanding tubes on each longitudinal side
of Skyrud’s dolly frame. Thus, the rejection of claims 16 and 17 as being
unpatentable over Skyrud and Ondrasik cannot be sustained. In re Kahn, 441
F.3d at 988.

DECISION
For the above reasons, the Examiner’s rejections of claims 8, 11-13,
16-18, 24-26 and 29 are reversed.

REVERSED

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