Ex Parte Cushion et al

Patent Trial and Appeal Board

Aug 21, 2017

14098899 (P.T.A.B. Aug. 21, 2017)

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.
14/098,899 12/06/2013 Robert Cushion SYMM 12.05 9861
26812 7590
HAYES SOLOWAY P.C.
175 CANAL STREET
MANCHESTER, NH 03101
EXAMINER
REYNOLDS, STEVEN ALAN
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
TSULLIVAN@HAYES-SOLOWAY.COM
dbrancheau@hayes-soloway.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT CUSHION and GEORGE P. HANNAFIN
Appeal 2016-0002191
Application 14/098,8992
Technology Center 3700
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—13 and 21—27. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
April 23, 2015) and Reply Brief (“Reply Br.,” filed August 10, 2015), and
the Examiner’s Answer (“Ans.,” mailed July 22, 2015) and Final Office
Action (“Final Act.,” mailed February 5, 2015).
2 Appellants identify Symmetry Medical Manufacturing, Inc. as the real
party in interest. App. Br. 3.
Appeal 2016-000219
Application 14/098,899
CLAIMED INVENTION
Appellants’ claimed invention “is generally related to containers and
more particularly is related to a modular medical instrument sterilization
container and related methods” (Spec. 1,11. 11—12).
Claim 1, reproduced below with bracketed notations added, is the sole
independent claim, and representative of the claimed subject matter:3
1. A modular medical instrument sterilization
container comprising:
[(a)] a base and a plurality of sidewalls, wherein the base
and the plurality of sidewalls are both substantially planar and
have a consistently repeated cross-section;
[(b)] a plurality of comer posts, wherein at least one of
the plurality of comer posts is connected between at least two of
the plurality of sidewalls, wherein all of the plurality of comer
posts have a uniform, consistent cross-section along a length;
[(c)] a plurality of bottom edge rails, wherein at least one
of the plurality of bottom edge rails is connected between at least
one of the plurality of sidewalls and the base, wherein the bottom
edge rail is connected to a first edge of the at least one sidewall,
wherein all of the plurality of bottom edge rails have a uniform,
consistent cross-section along a length;
[(d)] a plurality of top edge rails, wherein at least one of
the plurality of top edge rails is connected to a second edge of
the at least one sidewall, wherein the second edge is opposite the
first edge, wherein all of the plurality of top edge rails have a
uniform, consistent cross-section along a length; and
[(e)] a plurality of junction connectors, each of the
plurality of junction connectors connected to one of the plurality
of comer posts and to at least one of: two of the plurality of
bottom edge rails; and two of the plurality of top edge rails.
3 Claim 1, as it appears in Appellants’ Claims Appendix, contains a
typographical error in that it recites “junction connectors connected between
to . . .” Claim 1 was amended to delete the word “between” in an
Amendment filed January 21, 2015.
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Application 14/098,899
REJECTIONS
Claims 1, 3—13, 21, and 22 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Presnick (US 3,517,849, iss. June 30, 1970).
Claims 1, 3—8, 11—13, 21, and 22 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Chang (US 2009/0071957 Al, pub. Mar. 19,
2009).
Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Presnick and Bose et al. (US 5,690,275, iss. Nov. 25, 1997) (hereinafter
“Bose”).
Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Chang and Bose.
Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Chang and Richter (US 2,919,826, iss. Jan. 5, 1960).
Claims 23—27 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Presnick and Hopkins et al. (US 5,452,830, iss. Sept. 26, 1995)
(hereinafter “Hopkins”).
Claims 23—26 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Chang and Hopkins.
ANALYSIS
Anticipation —Presnick
Independent Claim 1 and Dependent Claims 3—10, 13, and 22
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by
Presnick because Presnick does not disclose “a plurality of junction
connectors, each of the plurality of junction connectors connected to one of
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Application 14/098,899
the plurality of comer posts and to at least one of: two of the plurality of
bottom edge rails; and two of the plurality of top edge rails,” i.e.,
limitation (e), as recited in claim 1 (App. Br. 11—18). Instead, we agree with
the Examiner that the groups of three frame comer connectors 40, located, as
shown in Figure 1 of Presnick, at the comers of shipping container 10,
constitute “junction connectors,” as called for in claim 1 (Final Act. 2-4 and
14—16; Ans. 2—3).
As shown in the figure, each comer of shipping container 10 includes
three frame comer connectors 40 that together connect three rails 19 (i.e.,
one vertical rail and two horizontal rails). Each group of three frame comer
connectors 40 is, thus, “connected to one of the plurality of comer posts and
to at least one of: two of the plurality of bottom edge rails; and two of the
plurality of top edge rails,” as recited in claim 1.
Appellants argue that the three proximate Presnick connectors cannot
be equated to one of the claimed junction connectors because “structures
being ‘connected to’ one another is not equivalent to the stmctures being
‘positioned together’” (App. Br. 17). However, Appellants do not dispute
that each group of three frame comer connectors 40 is connected to a comer
post and two edge rails, as called for in claim 1. Whether the frame comer
connectors 40 in Presnick are “connected to” each other is irrelevant.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Presnick. We also
sustain the Examiner’s rejection of dependent claims 3—10, 13, and 22,
which are not argued separately except based on their dependence from
independent claim 1 (App. Br. 19).
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Application 14/098,899
Dependent Claims 11 and 12
Claim 11 depends from claim 1 and recites “wherein each of the
plurality of junction comers further comprise[s] at least one fastener
positioned at least partially within a hole within each of the plurality of
junction comers, wherein an end of the at least one fastener extends beyond
the hole”; claim 12 depends from claim 11.4
In rejecting claim 11 as anticipated by Presnick, the Examiner equates
leg 45, as shown in Figure 2 of Presnick, to the claimed “fastener” and the
opening in panel retaining wall 25 to the claimed “hole” (see Ans. 3—4).
However, the difficulty with that interpretation, as Appellants observe, is
that the opening in panel retaining wall 25 “is not within any element the
Examiner asserts is equivalent to the junction [connector], as required by the
claim” (App. Br. 19).
As discussed above, the Examiner equates the claimed “junction
connectors” to the groups of three frame comer connectors 40. As shown in
Figure 2 of Presnick, the opening in panel retaining wall 25 is not within any
group of three frame comer connectors 40 and, therefore, not “within each
of the plurality of junction [connectors],” as called for in claim 11.
Accordingly, we do not sustain the Examiner’s rejection of claim 11
under 35 U.S.C. § 102(a)(1) as anticipated by Presnick. For the same
4 Because there is no antecedent basis, either in claim 11 or in independent
claim 1, for the phrase “the plurality of junction comers,” as recited in
claim 11, we assume, as did the Examiner, that Appellants intended to refer
to “junction connectors” rather than “junction comers.” We have reviewed
the rejections of claims 11 and 12 on that basis. When the application is
returned to the Examining Corps, either (1) Appellants should amend
claim 11 to correct this error or (2) the Examiner should consider whether
the claim, as written, complies with 35 U.S.C. § 112.
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reason, we also do not sustain the Examiner’s rejection of dependent
claim 12.
Dependent Claim 21
Claim 21 depends from claim 1 and recites that each of the plurality
of junction connectors further comprises “at least three connection faces,
wherein each of the plurality of junction connectors is connected through the
at least three connection faces to one of the plurality of comer posts and at
least one of: two of the plurality of bottom edge rails; and two of the
plurality of top edge rails.”
In rejecting claim 21 as anticipated by Presnick, the Examiner equates
face 42 and faces 46 of frame comer connector 40, as shown in Figure 2, to
the claimed “three connection faces” (Final Act. 5). Appellants argue that
although “faces 46 on either leg 45 of the connector member 40 may be
‘connected ... to one of the plurality of comer posts’ and two bottom edge
rails or two top edge rails, face 42 never connects to a comer post or rail”
and “is positioned outwards, i.e., externally facing from the Presnick’s
shipping container” (App. Br. 20). According to Appellants, Presnick, thus,
fails to disclose “three connection faces,” as recited in claim 21 because “[a]
face[, i.e., face 42,] that is positioned outwards and does not touch another
stmcture cannot be connected to it” (Reply Br. 8).
Appellants’ argument is not persuasive at least because it is not
commensurate with the language of claim 21. Claim 21 does not recite that
each connection face is “connected to” another stmcture. Instead, claim 21
merely recites that each junction connector is “connected through the at least
three connection faces” to three other stmctures; the claim does not require a
one-to-one correspondence between faces and connected stmctures.
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Accordingly, we sustain the Examiner’s rejection of claim 21 under
35 U.S.C. § 102(a)(1) as anticipated by Presnick.
Anticipation — Chang
Independent Claim 1
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(a)(1) as anticipated by Chang because Chang does not
disclose that each of the comer members 14, which the Examiner equates to
the claimed “junction connectors,” is connected to “one of the plurality of
comer posts and to at least one of: two of the plurality of bottom edge rails;
and two of the plurality of top edge rails” as recited in claim 1 (App. Br. 20-
26). Referring to Figure 4 of Chang, Appellants assert that Chang “clearly
illustrates the comer members 14 only being connected to either two front
bars 111 or two rear bars 121” {id. at 25), and “in FIG. 2 (left side) [ ] the
side bars 13 are depicted in an assembled configuration with front and rear
bars 111 without the use of comer members 14” {id. at 26).
Responding to Appellants’ argument, the Examiner asserts that “each
junction connector (14) is joined or indirectly connected to a comer post and
to at least one of: two of the plurality of bottom edge rails; and two of the
plurality of top edge rails (as shown in the arrangement in Fig. 1)” and that
an “indirect connection between two elements is still considered a
connection between the two elements” (Ans. 6). We agree.
The term “connect” is generally understood to mean “[t]o join or
fasten together,” see The American Heritage Dictionary of the English
Language (2011), accessed at http://search.credoreference.com/
content/entry/hmdictenglang/connect (last visited on August 16, 2017). The
term is restricted to neither a direct nor an indirect connection and, as such,
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Application 14/098,899
is applicable to an indirect connection. See Ullstrand v. Coons, 147 F.2d
698, 700 (CCPA 1945).
Appellants argue that the Examiner’s interpretation of “connected to”
as including indirect connections is unreasonable because it is not consistent
with the Appellants’ Specification:
While the specification does not provide an explicit definition of
the term “connected to” a skilled artisan would understand that
the terms “connected to” have a meaning which includes some
joining, link, fastening, uniting or binding together of structures,
such as through the use of a “fastener connection . . . such as
threaded fasteners, friction fasteners, biased fasteners, or a
combination thereof’ as specified on page 9, lines 3—8 of the
original specification.
Reply Br. 5. However, Appellants admit that “connected to” is not explicitly
defined in the Specification (id.). And Appellants have not persuasively
explained why the exemplary discussion of fasteners in the Specification
affects the meaning of “connected to” in claim l.5 Claim 1 does not recite a
“fastener,” and we decline to import the disclosed fastener from the
Specification into claim 1.
We are not persuaded that the Examiner erred in rejecting claim 1 as
anticipated by Chang. Therefore, we sustain the Examiner’s rejection.
5 The Specification at page 9, lines 3—8 reads:
The junction connectors 60 may utilize any type of fastener
connection (generally denoted by reference character 62), such as
threaded fasteners, friction fasteners, biased fasteners, or a
combination thereof. For example, the junction connectors 60 may
use a friction fastener engagement with the comer posts 30 and a
threaded fastener engagement with the bottom and top side rails 40,
50, described more relative FIG. 3. The junction connectors 60 may
provide for permanent or removable connections between the
components of the container 10.
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Dependent Claims 11 and 12
As described above, claim 11 depends from claim 1 and recites that
each of the plurality of junction comers further comprises “at least one
fastener positioned at least partially within a hole within each of the plurality
of junction comers.”
In rejecting claim 11 as anticipated by Chang, the Examiner finds that
each of Chang’s comer members 14, which the Examiner equates to the
claimed “junction connectors” (see Final Act. 6—8; Ans. 6), further
comprises at least one fastener, i.e., positioning stub 141, positioned at least
partially within a hole 1111, “which is considered a portion of the connector
junction” (Ans. 6).
The difficulty with Examiner’s finding, as Appellants observe, is that
hole 1111 is within bar/frame rail 111, not within comer member 14 (Reply
Br. 7—8 (citing Chang, Fig. 3 A)). Although the Examiner takes the position
that hole 1111 and, therefore, bar 111, is “considered a portion of the
connector junction” (Ans. 6), that position cannot be sustained at least
because it is inconsistent with the Examiner’s finding that bar 111 is one of
the rails to which the junction connector is connected (see Final Act. 7).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 11 under 35 U.S.C. § 102(a)(1) as anticipated by Chang. For the
same reasons, we also do not sustain the Examiner’s rejection of dependent
claim 12.
Dependent Claims 3—8, 13, 21, and 22
Because we affirm the rejection of claims 3—8, 13,21, and 22 under
35 U.S.C. § 102(a)(1) as anticipated by Presnick, we need not, and do not
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reach, the Examiner’s cumulative rejection of these claims under 35 U.S.C.
§ 102(a)(1) as anticipated by Chang.
Obviousness
Appellants do not present any arguments in support of the
patentability of any of dependent claims 2, 9, 10, and 23—27 except to argue
that the additional references relied on in rejecting these claims under
35 U.S.C. § 103(a) do not cure the alleged deficiencies of Presnick and
Chang, and that the claims are allowable based on their dependence from
independent claim 1 (App. Br. 28—30). We are not persuaded for the reasons
set forth above that the Examiner erred in rejecting claim 1 under 35 U.S.C.
§ 102(a)(1) as anticipated by Presnick or Chang. Therefore, we sustain the
Examiner’s rejections of claims 2, 9, 10, and 23—27 under 35 U.S.C.
§ 103(a).
DECISION
The Examiner’s rejection of claims 1, 3—10, 13, 21, and 22 under
35 U.S.C. § 102(a)(1) as anticipated by Presnick is affirmed.
The Examiner’s rejection of claims 11 and 12 under 35 U.S.C.
§ 102(a)(1) as anticipated by Presnick is reversed.
The Examiner’s rejection of claim 1 under 35 U.S.C. § 102(a)(1) as
anticipated by Chang is affirmed.
The Examiner’s rejection of claims 11 and 12 under 35 U.S.C.
§ 102(a)(1) as anticipated by Chang is reversed.
We do not reach the Examiner’s rejection of claims 3—8, 13,21, and
22 under 35 U.S.C. § 102(a)(1) as anticipated by Chang.
The Examiner’s rejections of claims 2, 9, 10, and 23—27 under
35 U.S.C. § 103(a) are affirmed.
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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)(iv).
AFFIRMED-IN-PART
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