Ex Parte Cook

Board of Patent Appeals and Interferences

Aug 11, 1999

08387419 (B.P.A.I. Aug. 11, 1999)

1 Application for patent filed February 10, 1995.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DENNIS G. COOK SR.
_____________
Appeal No. 97-3195
Application 08/387,4191
______________
HEARD: AUGUST 2, 1999
_______________
Before COHEN, ABRAMS and FRANKFORT, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 7 and 9 through 17. These claims constitute all of the
claims remaining in the application.
Appeal No. 97-3195
Application 08/387,419
2
Appellant’s invention pertains to a divider for use in a
stacking system for shipping of a product in multiple layers on a
pallet and to a stacking system for a product in multiple layers
on a pallet. An further understanding of the invention can be
derived from a reading of exemplary claims 1, 4, and 11, copies
of which appear in the APPENDIX to the main brief (Paper No. 16).
As evidence of obviousness, the examiner has applied the
documents listed below:
Griffin, Jr. (Griffin) 4,000,704 Jan. 4, 1977
Sanders et al. (Sanders) 4,183,491 Jan. 15, 1980
The following rejections are before us for review.
Claims 1 through 3, 7, and 9 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Sanders.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sanders.
Appeal No. 97-3195
Application 08/387,419
2 We find that the arguments advanced in the main and reply
briefs lack conformance with 37 CFR § 1.192(c)(8)(iii) and (iv).
For example, the arguments advanced do not comply with the
requirement that specific limitations in the claims should be
referenced which are not described in the prior art relied upon
in the rejection.
3
Claims 4 through 6 and 11 through 17 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Sanders in view of
Griffin.
The full text of the examiner's rejections and response to
the argument presented by appellant appears in the answer (Paper
No. 17), while the complete statement of appellant’s argument can
be found in the main and reply briefs (Paper Nos. 16 and 19).2
In the “GROUPING OF THE CLAIMS” section of the main brief
(page 11), appellant indicates that the rejected claims do not
stand or fall together. Independent claim 1 is separately
argued. However, as to independent claims 4 and 11, they
are argued together. Thus, in accordance with 37 CFR §
1.192(c)(7), we select claim 4 for review, and claim 11 shall
stand or fall therewith. In the argument section of the brief,
the content of each of the dependent claims before us is
Appeal No. 97-3195
Application 08/387,419
3 For reasons set forth in a new ground of rejection, infra,
we conclude that claim 1 is indefinite. Nevertheless, we
understand this claim to the extent that we can assess the merits
of the examiner’s rejection thereof on appeal.
4 In our evaluation of the applied patents, we have
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
4
specified without any separate argument distinguishing each
dependent claim relative to the teachings of the applied prior
art, e.g., on pages 15 and 16 of the main brief, only the subject
matter of dependent claims 2, 7, and 9 is mentioned. Therefore,
we consider each of the dependent claims on appeal to stand or
fall with their respective parent claims. It follows from the
above that we shall focus our attention, infra, exclusively upon
independent claims 1 and 4.

OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification and claims 1 and 4,3 the applied
patents,4 and the respective viewpoints of appellant and the
Appeal No. 97-3195
Application 08/387,419
from the disclosure. See In re Preda 401 F.2d 825, 826, 159 USPQ
342, 344 (CCPA 1968).
5
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation issue
We reverse the rejection of claim 1 under 35 U.S.C. § 102(b)
as being anticipated by Sanders. It follows that the rejection
of claims 2, 3, 7, and 9 on this same statutory ground is
likewise reversed since these claims stand or fall with claim 1,
as earlier indicated.
Anticipation under 35 U.S.C. § 102(b) is established only
when a single prior art reference discloses, either expressly or
under principles of inherency, each and every element of a
claimed invention. See In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994); In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); and RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
Appeal No. 97-3195
Application 08/387,419
6
221 USPQ 385, 388 (Fed. Cir. 1984). However, the law of
anticipation does not require that the reference teach
specifically what an appellant has disclosed and is claiming but
only that the claims on appeal "read on" something disclosed in
the reference, i.e., all limitations of the claim are found in
the reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984).
Claim 1 is drawn to a divider for use in a stacking system
for shipping of a product in multiple layers on a pallet
comprising, inter alia, a bottom wall having a lower surface,
with a downwardly extending foot portion inboard of an edge of
said lower surface, the downwardly extending foot portion being
positioned at a predetermined distance inboard of the edge to
allow the divider to be nested with another like divider when
stacked together, such that an upwardly extending retaining wall
of the another like divider supports the exterior portion of the
bottom wall when nested.
We are of the view that the reinforced pallet of Sanders,
with its bottom wall 12 having a top supporting surface and a
Appeal No. 97-3195
Application 08/387,419
7
horizontal bottom (column 2, lines 2 through 8), is clearly
capable of performing as a divider. Nevertheless, we find that
the following claimed features are not responded to by the
teaching of Sanders. Sanders does not teach a lower surface with
a downwardly extending foot portion adjacent to a periphery of
and inboard of an edge of the lower surface. Further, unlike the
content of claim 1 that requires support at the exterior portion
of the bottom wall (the part of the bottom wall beyond the
downwardly extending foot portion) when like dividers are nested,
it is apparent to this panel of the board that Sanders teaches a
pallet with ribs 19 extending between flanges 18 and side and end
walls (14, 16) at spaced points to provide nesting supports which
engage the top edges of a like lower pallet as seen in Fig. 4 of
the patent. Thus, limitations of claim 1 are not addressed by
the teaching of Sanders. For this reason, the divider of claim 1
is not anticipated by the Sanders’ patent.
Appeal No. 97-3195
Application 08/387,419
5 As earlier indicated, dependent claim 10 stands or falls
with claim 1 from which it depends. We reversed the rejection of
claim 1, supra. In light of the latter reversal, and the
circumstance that Sanders would not have been suggestive of the
divider of claim 1, it follows that the rejection of claim 10
under 35 U.S.C. § 103(a) is also reversed. The same reasoning
applies to claims 6 and 15, each of which depend from claim 1.
Thus, the rejection of each of these claims under 35 U.S.C.
§ 103(a) is reversed.
6 It appears to us that claim 4 is readable on the Griffin
document alone (Figs. 7 and 10, channels in reinforcing deck area
ribs are banding slots), as well as on the Sanders’ patent alone
(Fig. 1, holes in the open grid construction can act as banding
slots). Anticipation is the epitome of obviousness.
8
The obviousness issues5
We affirm the rejection of claim 4 under 35 U.S.C. § 103(a)
as being unpatentable over Sanders in view of Griffin. The
rejection of independent claim 11 and dependent claims 5, 12
through 14, 16, and 17 is also affirmed since these claims stand
or fall with independent claim 4.
In rejecting claim 4, the examiner relies upon the combined
teachings of Sanders and Griffin as evidence of obviousness.6
Appellant asserts that the Sanders and Griffin patents do not
show or suggest the “banding slots” set forth in claim 4.
However, at this point, we note that the word “slots” in the
Appeal No. 97-3195
Application 08/387,419
7 Webster’s New Collegiate Dictionary, G. & C. Merriam
Company, Springfield, Massachusetts, 1979.
8 The test for obviousness is what the combined teachings of
references would have suggested to one of ordinary skill in the
art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981).
9
claim recitation “banding slots” may fairly be understood as
broadly denoting narrow openings or grooves7.
We find that Sanders (Figs. 2 and 4) teaches a nestable and
stackable reinforced plastic material pallet with handle flanges
18, and that Griffin (Figs. 8 and 9) discloses a nestable and
stackable plastic material shipping pallet that includes recessed
channels 52, 54 (Fig. 10) to protect strapping used to retain a
palletized shipping container.
In applying the test for obviousness,8 this panel of the
board determines that it would have been obvious to one having
ordinary skill in the art, from a combined assessment of the
applied prior art, to provide the pallet of Sanders with recessed
channels (slots or grooves), following the explicit teaching of
Griffin. As we see it, one having ordinary skill would have
Appeal No. 97-3195
Application 08/387,419
10
clearly been motivated to make this modification simply to
enhance the pallet of Sanders with a well known feature for
protecting strapping that may be used therewith, as explained by
Griffin.

The argument of appellant (main brief, pages 17 through 19,
and reply brief, pages 6 through 8) does not persuade us of error
on the part of the examiner in rejecting claim 4 under 35 U.S.C.
§ 103(a). Contrary to appellant’s view (main brief, page 18), we
earlier pointed out that the channels of Griffin fairly
correspond to banding slots, as set forth in claim 4. We don’t
agree with appellant that the applied patents address products
(pallets) different from a divider (main brief, page 19) since
the pallets are capable of acting as a divider. In particular,
it is noted that Griffin (Fig. 10) reveals the well known use in
the art of a pallet (upper shipping tray 76) acting as a divider.
We are also not in accord with the view advocated by appellant
(main brief, page 19) that the references lack suggestion for the
combination of their teachings. We refer to our analysis above
for an understanding of the suggestion that one having ordinary
skill in the art would derived from the applied teachings for
their combination. Again contrary to the viewpoint set forth in
Appeal No. 97-3195
Application 08/387,419
11
the main brief (page 23), we determine that portions of the
references have not been picked and chosen based only upon
appellant’s own teaching. Instead, as should be evident from our
discussion above, the rejection is soundly based upon suggestion
from the evidence of obviousness itself, viewed as a whole.
NEW GROUND OF REJECTION
Under the authority of 37 CFR § 1.196(b), this panel of the
board introduces the following new ground of rejection.
Claims 1 through 3, 6 through 10, and 15 through 17 are
rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
In claim 1, “the periphery” (line 10), “the edge” (line 11),
and “the exterior portion” (line 19) of the bottom wall have no
antecedent basis in the claim. In claim 6 (dependent from claim
1), “the periphery” of the bottom wall (line 3) lacks an
antecedent basis. In claim 4, “its periphery” (lines 2 and 3),
referring to the bottom wall, and “the periphery” of the lower
surface (lines 5 and 6) each lack an antecedent basis. Claim 17
Appeal No. 97-3195
Application 08/387,419
12
depends from independent claim 4. However, neither claim 4 nor
claim 17 has an antecedent basis for “said upwardly extending
retaining wall” (claim 17, lines 2 and 3).
In summary, this panel of the board has:
reversed the rejection of claims 1 through 3, 7, and 9 under
35 U.S.C. § 102(b) as being anticipated by Sanders;
reversed the rejection of claim 10 under 35 U.S.C. § 103(a)
as being unpatentable over Sanders; and
affirmed the rejection of claims 4, 5, 11 through 14, 16,
and 17 under 35 U.S.C. § 103(a) as being unpatentable over
Sanders in view of Griffin, but reversed the rejection of claims
6 and 15 on the same statutory ground.
Additionally, we have introduced a new ground of rejection
pursuant to 37 CFR § 1.196(b).
The decision of the examiner is affirmed-in-part.
Appeal No. 97-3195
Application 08/387,419
13
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for rehearing
within two months from the date of the original
decision . . . .
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 97-3195
Application 08/387,419
14
Should the appellant elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
Appeal No. 97-3195
Application 08/387,419
15
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
ICC/dal
Appeal No. 97-3195
Application 08/387,419
16
SCOTT M. OLDHAM
OLDHAM & OLDHAM CO
1225 WEST MARKET STREET
AKRON, OH 44313-7188