Ex Parte Dege et al

Board of Patent Appeals and Interferences

Sep 26, 2007

10968436 (B.P.A.I. Sep. 26, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL T. DEGE, JIM C. NENSEWITZ
EDWARD W. BURMEISTER and
BRIAN E. AINSWORTH
____________

Appeal 2007-0229
Application 10/968,4361
Technology Center 3700
____________

Decided: September 26, 2007
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
DAVID B. WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

1 This application is a continuation of U.S. Patent Application Serial No.
10/223,128, filed August 19, 2002, which is a continuation-in-part of U.S. Patent
Application Serial No. 10/073,832, filed February 11, 2002. The real party in
interest is Oliver Products Company.
Appeal 2007-0229
Application 10/968,436

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-14.2 We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
THE INVENTION
Appellants claim a food carrier for carrying a plurality of meal containers in
a stacked orientation, and allowing for a removal of meal containers from a lower
portion of the carrier (Specification 1:[0002]). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A food carrier for carrying a plurality of meal
containers, comprising:
an insulated housing having a closed bottom, a
closed top located substantially vertically above the
bottom, and at least one side wall having a first opening
proximate the top of the housing and a second opening
proximate the bottom of the housing, the first opening
being sized to receive at least one meal container
therethrough, the second opening being sized to allow
removal of at least one meal container from within the
housing as received within the housing from the first
opening and to preclude simultaneous removal of all of
the meal containers from within the housing, thereby
limiting heat transfer from within the housing;
a first door operably connected with the housing,

2 Appellant also seeks review of claims 21-40, which were withdrawn in response
to a restriction requirements entered by the Examiner (Office Action mailed April
4, 2005). Because the Appellant has not followed the procedure set forth in 37
C.F.R. §1.144 to petition the Director for review of the restriction requirement,
those claims remain withdrawn and are not properly before this Board.
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the first door movable between an open position, wherein
at least one meal container may be loaded into the
housing via the first opening, and a closed position,
wherein the first door covers the first opening, thereby
limiting heat transfer from within the housing; and
a second door operably connected with the
housing, the second door movable between an open
position, wherein at least one meal container as received
within the housing from the first opening may be
removed from within the housing via the second opening,
and a closed position, wherein the second door covers the
second opening, thereby limiting heat transfer from
within the housing.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Hill US 2,812,227 Nov. 5, 1957
Jacober US 4,706,856 Nov. 17, 1987
Kirkendall US 4,812,054 Mar. 14, 1989
Lippincott US D371,942 Jul. 23, 1996
Davis US 6,116,456 Sep. 12, 2000

The following rejections are before us for review.
1. Claims 1-2 and 13-14 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Davis.
2. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Davis.
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3. Claims 1-6, 8-9, and 13-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lippincott in view of Davis or Hill.
4. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Lippincott in view of Davis or Hill and further in view of Jacober.
5. Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Lippincott in view of Davis or Hill and further in view of Kirkendall.

ISSUE
The issue before us is whether Appellants have shown that the Examiner
erred in rejecting (1) claims 1-2 and 13-14 as anticipated by Davis; (2) claims 3
and 4 as unpatentable over Davis; (3) claims 1-6, 8-9, and 13-14 as unpatentable
over Lippincott in view of Davis or Hill; (4) claim 7 as unpatentable over
Lippincott in view of Davis or Hill and further in view of Jacober; and (5) claims
10-12 as unpatentable over Lippincott in view of Davis or Hill and further in view
of Kirkendall. The dispositive issue is whether the cited references disclose a
closed top and at least one side wall having a first opening proximate the top of the
housing and a second opening proximate the bottom of the housing.
Rather than repeat the arguments of Appellants and the Examiner, we make
reference to the Briefs and the Answer for their respective details. Only those
arguments actually made by Appellants have been considered in this decision.
Arguments which Appellants could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).
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FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).

1. Davis teaches an insulated food box 10 comprising a receptable unit 11
including a reinforced generally rectangular receptacle member 20
having an open top, a closure unit 12 including a pair of transparent lid
panels 40 hingedly connected to the receptacle member 20 and
dimensioned to overlie the open top of the receptacle member 20 (Davis,
abstract). The insulated food box further includes a collapsible support
unit for elevating the receptacle unit to a serving height at the point of use
of the food box and which can be collapsed to facilitate the transport of
the insulated food box to and from the point of use (Davis, col. 1, ll. 38-
44).
2. Davis does not teach a closed top and at least one side wall having a first
opening proximate the top of the housing and a second opening
proximate the bottom of the housing as required by claim 1.
3. Lippincott is a design patent which displays a portable cooler with a top
cover (which may be opened), a side pocket cover, and a lower
compartment cover (Lippincott, Fig. 1-5).

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4. Lippincott does not teach a closed top or at least one side wall having a
first opening proximate the top of the housing and a second opening
proximate the bottom of the housing as required by claim 1. The side
pocket cover of Lippincott is not a first opening sized to receive at least
one meal container, and it lacks a first door which may be placed in an
open position to permit insertion of at least one meal container or in a
closed position to cover the first opening, thereby limiting heat transfer
from within the housing.
5. Hill teaches a convertible furniture piece that is a combined hassock and
bar (Hill, col. 1, ll. 15-17). It provides a pair of hinged doors, which
when swung to open position, serve as support for a corresponding pair
of opened, hinged top lids (Hill, col. 1, ll. 27-30).
6. Hill does not teach at least one side wall having a first opening proximate
the top of the housing and a second opening proximate the bottom of the
housing as required by claim 1. The hinged doors are oriented side-by-
side, not top and bottom as required by the disputed claims and
reorienting the combined hassock and bar of Hill to place them on the top
and bottom of the structure would prevent them from serving their
disclosed function of supporting a pair of hinged top lids, when opened.
7. Jacober teaches a backpack with a removable insulated container. The
backpack body has a sleeve component secured thereto for closely
receiving and supporting an insulated container component with a mouth
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and a cover component for selectively opening and closing the mouth.
(Jacober, col. 1, ll. 14-20).
8. Jacober does not teach a closed top and at least one side wall having a
first opening proximate the top of the housing and a second opening
proximate the bottom of the housing as required by claim 1.
9. Kirkendall teaches an insulated beverage box storage and carrying case
for use with rectangular dispensing cardboard beverage containers, such
as box-type wine containers (Kirkendall, col. 1, ll. 6-11).
10. Kirkendall does not teach at least one side wall having a first opening
proximate the top of the housing and a second opening proximate the
bottom of the housing as required by claim 1.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631,
2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications “not
solely on the basis of the claim language, but upon giving claims their broadest
reasonable construction ‘in light of the specification as it would be interpreted by
one of ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75
USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
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Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004)). The
properly interpreted claim must then be compared with the prior art.
To establish inherency, the extrinsic evidence must make
clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it
would be so recognized by persons of ordinary skill.
Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of
circumstances is not sufficient.
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)
(citations omitted) (internal quotation marks omitted).
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level of
skill in the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See
also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors continue
to define the inquiry that controls.”).

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In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Only if this initial burden
is met does the burden of coming forward with evidence or argument shift to the
appellant. Id. at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788. Obviousness is then determined on the basis of the evidence as
a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.

ANALYSIS
A. Rejection of claims 1-2 and 13-14 under 35 U.S.C. § 102(b) as anticipated
by Davis.
The Examiner found that Davis disclosed all of the limitations of claims 1-2
and 13-14 “when the housing 10 is in a vertical position.” (Answer 3) Appellants
argue that “simply reorienting that which is disclosed in Davis would require
ignoring much of what is disclosed therein and the clear and unquestionable
meaning of the description of what is illustrated” (Br. 14). We agree with
Appellants that Davis does not teach orienting the insulated food box in a vertical
position, because it “includes a collapsible support unit for elevating the receptacle
unit to a serving height at the point of use of the food box and which can be
collapsed to facilitate the transport of the insulated food box to and from the point
of use” (Finding of Fact 1). Moreover, Davis discloses that each of the opposing
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ends of the insulated food box are fitted with handles 26 that appear to prevent the
box from resting on either of the ends, thus rendering the box incapable of being
placed in a vertical orientation. Thus, Davis discourages one of skill in the art
from turning the insulated food box on its side as would be required to meet the
claim limitations. In addition, the insulated food box of Davis is explicitly
described as having an “open top” which is contrary to the “closed top” required
by claim 1 (Finding of Fact 1). Davis thus does not teach a closed top and at least
one side wall having a first opening proximate the top of the housing and a second
opening proximate the bottom of the housing (Finding of Fact 2). The Examiner
thus erred in rejecting claims 1-2 and 13-14 as anticipated by Davis.
B. Rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over
Davis.
The Examiner relied on the same logic as in the § 102 rejection above to find
that each of the limitations of claims 3 and 4 are disclosed by Davis except for
making the housing, door, and handle out of a flexible material (Answer 4-5). The
Examiner found that “[i]t would have been obvious to one having ordinary skill in
the art at the time the invention was made to make the housing, door and handle
out of flexible fabric, since it has been held to be within the general skill of a
worker in the art to select a known material on the basis of its suitability for the
intended use as a matter of obvious desire choice.” (Answer 5). Claims 3 and 4
share the same limitations that were missing from Davis as applied in the § 102
rejection above. Because Davis does not teach vertically orienting the insulated
food box disclosed therein, Davis thus does not teach a closed top and at least one
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side wall having a first opening proximate the top of the housing and a second
opening proximate the bottom of the housing (Finding of Fact 2). The Examiner
failed to make out a prima facie case of obviousness over Davis as to claims 3 and
4.
C. Claims 1-6, 8-9, and 13-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lippincott in view of Davis or Hill.
The Examiner found that Lippincott does not disclose multiple doors on the
same side of the cooler (Answer 6). The Examiner found that Davis or Hill are
examples of containers with two separate doors to enter in the housing, which
allow retrieval of an article from door 2 that was placed into the compartment door
1 (Answer 6). For the reasons stated above, Davis does not teach multiple doors
on the same side of the cooler. Hill teaches two doors in the same side of the
container, but the doors are side by side, not one proximate the bottom of the
housing and the other proximate the top of the housing as required by claim 1
(Finding of Fact 6). The Examiner found it would have been obvious in view of
Davis and Hill to prevent the loss of ambient air and to allow manipulation of the
articles from any of the openings (Answer 6). Because neither Davis nor Hill teach
the openings as required by claim 1, the Examiner failed to make a prima facie of
obviousness over the cited references as to claim 1. We also reverse the
Examiner’s rejection of dependent claims 2-6, 8-9, and 13-14, because these claim
rejections rely upon the underlying rejection of independent claim 1. See In re
Fine, 837 F.2d 1071, 5 USQP2d 1596 (Fed. Cir. 1988) (If an independent claim is
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nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is
nonobvious).
D. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Lippincott in view of Davis or Hill and further in view of Jacober.
Claim 7 depends from claim 1, so the combination of Lippincott, Davis, and
Hill has the same deficiencies when applied to claim 7 as stated above. Because
Jacober does not remedy these deficiencies (Finding of Fact 8), the Examiner
failed to make out a prima facie case of obviousness as to claim 7.
E. Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Lippincott in view of Davis or Hill and further in view of Kirkendall.
Claims 10-12 depend from claim 1, so the combination of Lippincott, Davis,
and Hill has the same deficiencies when applied to claims 10-12 as stated above.
Because Kirkendall does not remedy these deficiencies (Finding of Fact 10), the
Examiner failed to make out a prima facie case of obviousness as to claims 10-12.

CONCLUSIONS
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-2 and 13-14 under 35 U.S.C. § 102(b) and claims 1-14 under
35 U.S.C. § 103(a).

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DECISION
The decision of the Examiner to reject claims 1-2 and 13-14 under 35 U.S.C.
§ 102(b) and claims 1-14 under 35 U.S.C. § 103(a) is reversed.

REVERSED

vsh

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