Ex Parte Chui et al

Patent Trial and Appeal Board

Sep 29, 2016

13212701 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/212,701 08/18/2011 Peng Sun Paul Chui
33729 7590 10/03/2016
LAW OFFICES OF ALBERT WAI-KIT CHAN, PLLC
141-07 20TH A VENUE
WORLD PLAZA, SUITE 604
WHITESTONE, NY 11357
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1345-A-PCT-US 6759
EXAMINER
CLEVELAND, TIMOTHY C
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
10/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
chank@kitchanlaw.com
docketing@kitchanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PENG SUN PAUL CHUI,
WENG TIM CHONG,
and WENG KAI CHONG
Appeal2015-005770
Application 13/212,701
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
JEFFREY R. SNAY, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from a final rejection
of claims 33--44. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Independent claim 33 is reproduced below from the Claims Appendix of the
Appeal Brief dated August 5, 2014 ("Br.").
33. A compartmentalized container for use as an autopsy facility,
comprising an enclosed autopsy room at one end of said container,
wherein the other end of said container is divided into a first
compartment and a second compartment separated by a wall, wherein
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Application 13/212,701
Br. 7.
the first compartment comprises an enclosed anteroom having a door
that opens into the autopsy room and a door that opens into an
enclosed first passage way, wherein said first passage way ends in a
door providing access into the container; wherein the second
compartment comprises an enclosed first shower room having a door
that opens into said autopsy room and a door that opens into an
adjacent enclosed first changing room, wherein adjacent to said
changing room is a second enclosed shower room having a door that
opens into the first changing room and a door that opens into a second
enclosed changing room, wherein said second changing room has a
door that opens into an enclosed second passage way, wherein said
second passage way ends in a door providing access into the
container.
The claims on appeal stand rejected as follows:
(1) claims 33-37, 40, 41, and 44 under 35 U.S.C. § 103(a) as
unpatentable over Hirayama et al. 1 and
(2) claims 38, 39, 42, and 43 under 35 U.S.C. § 103(a) as unpatentable
over Hirayama in view of ~v1igurski et al. 2
B. DISCUSSION
The Examiner finds Hirayama discloses a plurality of wagons capable for
use as an autopsy facility. The Examiner finds Hirayama does not disclose the
structure of a first and second compartment separated by a wall as recited in claim
33. The Examiner, however, finds Hirayama discloses all of the components of the
claimed container in separate wagons. Ans. 2. 3 The Examiner finds "[t]he mere
rearrangement of parts, without any new or unexpected results, is within the ambit
of a person of ordinary skill in the art." Ans. 2 (citing In re Japikse, 181 F.2d 1019
1 US 6, 179 ,358 B 1, issued January 30, 2001 ("Hirayama").
2 US 5,964,065 A, issued October 12, 1999 ("Migurski").
3 Examiner's Answer dated September 4, 2014.
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(CCPA 1950)). The Examiner also concludes that it would have been obvious to
one of ordinary skill in the art to have rearranged the wagons of Hirayama for the
purpose of optimizing the layout of the compartments without creating any new or
unexpected results. Ans. 3.
The Appellants argue that "MPEP 2144.04 (VI)(C), when discussing In re
Japikse and other cases, concludes that the 'prior art must provide a motivation or
reason for the worker in the art, without the benefit of appellants' specification, to
make the necessary changes in the reference device' [quoting Ex parte Chicago
Rawhide Mfg. Co., 223 USPQ 351, 353 (BPAI 1984)]." Br. 4.
In this case, the Examiner provides motivation for the proposed modification
of Hirayama, i.e., to optimize the layout of the compartments. Ans. 3. To the
extent that the Examiner's reason for arranging the wagons or compartments of
Hirayama as claimed is not expressly disclosed in Hirayama, the absence of such a
statement in Hirayama is not fatal to the rejection on appeal. See DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,
1361 (Fed. Cir. 2006) ("The motivation need not be found in the references sought
to be combined, but may be found in any number of sources, including common
knowledge, the prior art as a whole, or the nature of the problem itself.").
On this record, the Appellants fail to show that rearranging the
compartments of Hirayama as recited in claim 1, to optimize their layout, would
have been beyond the level of ordinary skill in the art. See Hirayama, col. 4, 11.
64--65 ("any two adjacently located container wagons are connected with each
other" (emphasis added)). Moreover, the Appellants do not direct us to any
evidence showing that the layout of the claimed container creates a new or
unexpected result.
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Application 13/212,701
The Appellants also argue there is no teaching to modify the system of
Hirayama "for autopsy, particularly not an autopsy system consisting of only one
wagon." Br. 5. In response, the Examiner concludes that "[t]he claims are not
drawn to an apparatus consisting of only one wagon .... [Rather, t]he claims are
drawn to a 'compartmentalized container' which has been divided into multiple
compartments." Ans. 6. The Examiner finds "Hirayama discloses a plurality of
interconnected wagons" and concludes that "each of the wagons can be fairly
viewed as a compartment of the claimed container using the broadest reasonable
interpretation of the claims." Ans. 6. On appeal, the Appellants do not direct us to
any definition of "compartmentalized container" in their Specification that
excludes the interconnected wagon structure disclosed in Hirayama. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (during examination, "the PTO
applies to the verbiage of the proposed claims the broadest reasonable meaning of
the words in their ordinary usage as they would be understood by one of ordinary
skill in the art, taking into account whatever enlightenment by way of definitions
or otherwise that may be afforded by the written description contained in the
applicant's specification").
The Examiner also finds Hirayama' s interconnected wagon structure is
capable of being used as an autopsy facility. 4 Ans. 2. The Appellants do not direct
us to any evidence to the contrary.
Finally, the Appellants argue that "[ o ]ne of ordinary skill in the art would
readily appreciate that [the claimed] autopsy facility, as a result of its compactness
and layout, would be much easier and cheaper than multiple wagons to be
4 See In re Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir. 1997) (in order to satisfy
the functional limitations in a claim, the prior art apparatus must be capable of
performing the claimed function).
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Application 13/212,701
transported to a remote area in need, to keep the air inside the facility free from
contamination, ... and keep the personnel working inside the facility safe." Br. 5-
6.
The Appellants' argument is not persuasive of reversible error. First, the
Appellants do not direct us to any evidence establishing that the facility disclosed
in Hirayama does not keep the air inside the wagons free from contamination and
keep personnel safe. See Ans. 7; see also Hirayama, col. 5, 11. 12-16 (disclosing
that bellows-like connecting seal 15 for corridor members 14 "provides
airtightness and shuts off ambient air"); Hirayama, col. 8, 11. 41--45 (disclosing that
container wagons dedicated to medical purposes have a clean room structure);
Hirayama, col. 6, 1. 64---col. 7, 1. 6 (disclosing an air conditioning system that
constantly cleans the inside of a surgical wagon). Second, to the extent that the
Appellants' facility may be easier and cheaper to transport than the facility
disclosed in Hirayama, "the name of the game is the claim." In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998). On this record, the Appellants fail to
patentably distinguish the claimed "compartmentalized container" from the
interconnected wagon structure disclosed in Hirayama.
For the reasons set forth above and reasons provided in the Examiner's
Answer, the§ 103(a) rejection of claim 33 is sustained. The Appellants do not
present arguments in support of the separate patentability of any of the remaining
claims on appeal. Therefore, the§ 103(a) rejections of claims 34--44 are also
sustained.
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C. DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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