Ex Parte Doss

Board of Patent Appeals and Interferences

Nov 29, 2011

10440981 (B.P.A.I. Nov. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CATHRYNE DOSS
____________

Appeal 2010-000603
Application 10/440,981
Technology Center 3600
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/440,981

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision twice rejecting claims 1-5, 13, 14, 16 and 18-27. More specifically,
the Examiner rejects:
claims 1-5, 13, 14, 16 and 20-27 under 35 U.S.C. § 103(a) as
being unpatentable over Blum (US 4,640,560, iss. Feb. 3, 1987) and
Gearon (US 1,568,729, iss. Jan. 5, 1926); and
claims 18 and 19 under § 103(a) as being unpatentable over
Blum, Gearon, and Catron (US 3,978,601, iss. Sept. 7, 1976).
Claims 6-12, 15, and 17, are objected to as being dependent upon a rejected
base claim, but would be allowable if rewritten in independent form
including all the limitations of the base claim and any intervening claims.
Br. 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claims 1 and 20-22 are independent claims. Claim 1 is illustrative of
the apparatus claims on appeal.
21. A calendar comprising:
a backing member providing a plurality of
calendar positions;
a first securing mechanism on the backing
member associated with a first calendar position;
a second securing mechanism on the
backing member associated with a second calendar
position; and
a plurality of detachable storage trays, each
of said detachable storage trays including a
plurality of storage compartments having an
associated calendar identifier, and at least one tray
securing mechanism;
wherein a first detachable storage tray
having a first tray securing mechanism is
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configured for arrangement in the first calendar
position and the second calendar position with
attachment to the first securing mechanism and the
second securing mechanism.

ISSUES
The Appellant argues against the rejection of independent claims 1,
and 20-22 as a group in the Appeal Brief at pages 7-13 and separately for
each claim at pages 13-16. The Appellant does not provide separate
arguments for dependent claims 2-5, 13, 14, 16, and 23-27. As such, the
dependent claims stand or fall with the independent claims which they
depend from. See 37 C.F.R. § 41.37(c)(1)(vii). The Appellant also does not
provide separate arguments against the rejection of dependent claims 18 and
19 under § 103(a).1
This appeal turns on the following issues.
First, do the evidence and technical reasoning underlying the
rejection of claims 21 and 22 adequately support the conclusion that
the subject matter of those claims would have been obvious? Br. 7-
13 and 15-16.
Second, do the combined teachings of Blum and Gearon render
obvious “said tray securing mechanisms” as recited in claim 1; or the
“first tray securing mechanism” as recited in claim 20? Br. 14, 15

1 Even though the Appellant does not present separate arguments for claims
18 and 19 we understand that claims 18 and 19 are appealed claims because
under the “Grounds of Rejection to be Reviewed on Appeal” (Br. 5) the
Appellant lists “[c]laims 18 and 19 were rejected under 35 U.S.C. 103(a) as
being unpatentable over Blum in light of Gearon and further in view of
Catron (U.S. Patent No. 3,978,601).” Br. 6.
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ANALYSIS
First Issue
The Examiner finds Blum’s separating wall 22 and pillbox containers
30 correspond to the “backing member” and “storage trays” as recited in
claims 21 and 22, respectively. Ans. 4; Blum, col. 3, ll. 41-44, 65 and 66.
The Examiner finds Blum’s ribs 60 engage lips 56, which act as securing
mechanisms to retain the trays in position (Ans. 4, Blum, col. 4, ll. 22-30)
and “[e]ach tray is associated with a particular position on the backing
member and includes calendar identifier 54 which may be erasable . . . and
includes calendar indicia (days or hours).” Ans. 4, Blum, col. 4, ll. 15-21.
The Examiner finds Gearon cures a deficiency with respect to Blum’s
disclosure and relative to claims 21 and 22 in that Gearon discloses “upper
and lower fastening devices or a rear fastening device 35” to secure a
plurality of receptacles in position. Ans. 4, Gearon p. 2, ll. 73-79, and fig. 3.
The Examiner concludes, “[i]t would have been obvious to a person having
ordinary skill in the art to modify the trays of Blum to be attached at the rear
since Gearon shows this is an equivalent, alternative attaching means.” Ans.
4.
The Appellant’s first contention is that Blum and Gearon are non-
analogous art because the Blum patent, the Gearon patent, and the subject
application have been classified by the U.S. Patent and Trademark Office in
different classes (Br. 9); and Blum and Gearon as compared to the subject
invention do not serve “the same function, have dissimilar structures, and
would not [sic, have] commended themselves to the Applicant's attention” in
considering the Appellant’s problem. Br. 9-10. The two criteria are relevant
in determining whether prior art is analogous: “(1) whether the art is from
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the same field of endeavor, regardless of the problem addressed, and (2) if
the reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59
(Fed.Cir.1992)). The Examiner finds Blum is a “cabinet structure with
day/time indicia.” Ans. 6. The title of Gearon’s patent is a post-card
cabinet. Blum’s and Gearon’s apparatuses are cabinets so the prior art is in
the same field of endeavor, and thus, not non-analogous art.
The Appellant’s second contention is that the Examiner’s rejection
under § 103(a) “does not provide a reason for modifying the references cited
by the Examiner in the manner suggested by the Examiner except to arrive
at applicant's specifically defined construction.” Br. 11. Additionally, the
Appellant contends that the simplicity of a device, the lack of a suggestion
of the claimed invention in the references, and time period between the
references suggests that the combined teachings of Blum and Gearon are not
obvious. Br. 12. The Appellant’s contentions are not persuasive because the
contentions do not point out a deficiency in the Examiner’s reasoning that
Gearon’s fastener 35 is an equivalent, alternative attaching means, for
Blum’s ribs 60 engagement to lips 56. See Ans. 4, 7.
The Appellant also contends that modifying the Blum device “in light
of desk drawers with dividers” is not obvious. Br. 15, 16. The Examiner
finds Blum does not teach that storage trays 30 have “a plurality of storage
compartments” as recited in claims 20 and 21. Ans. 5. The Examiner takes
official notice that “desk drawers that comprise a single compartment . . .
may be separated by dividers to form multiple compartments” and concludes
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that “[i]t would have been obvious to one of ordinary skill in the art to
separate the compartment of each drawer of Blum if a user requires more
than one compartment as is taught by the desk drawers.” Id. The Appellant
does not appear to contest the truth of this finding. The Appellant’s
contention is not persuasive because the Examiner’s conclusion of
obviousness is supported by rational underpinning. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.”)
Second Issue
Claims 1 and 20 both recite limitations to a tray securing mechanism
configured for quick release attachment and quick release detachment from a
securing mechanism. More specifically, claim 1 recites a calendar including
“a plurality of detachable storage trays each having a plurality of storage
compartments and a tray securing mechanism, each of said storage
compartments having an associated calendar identifier, said tray securing
mechanisms configured for quick-release attachment to and quick-release
detachment from each securing mechanism associated with a calendar
position” (italics added); and claim 20 recites a calendar including “a first
detachable storage tray having a first tray securing mechanism is configured
for quick-release attachment to and quick-release detachment from the first
calendar position and the second calendar position.” (Italics added).
As discussed above the Examiner combines the teachings of Blum and
Gearon to reject claims 1 and 20. Ans. 4. More specifically, the Examiner
concludes that “[i]t would have been obvious to a person having ordinary
skill in the art to modify the trays of Blum to be attached at the rear since
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Gearon[‘s fastening devices ]shows this is an equivalent, alternative
attaching means.” Id. Thus the Examiner apparently reasons Gearon’s
fasteners are configured for quick-release attachment and quick-release
detachment. See Ans. 4.
The Appellant contends that Gearon’s fastening device “does not
teach or suggest a ‘quick-release attachment’ and ‘quick-release
detachment’.” See Br. 14. Gearon’s disclosure of fasteners 33, 34, and 35,
is limited to the figures, and page 2, lines 73-79, which is not sufficient to
support a finding by a preponderance of the evidence that fasteners 33, 34,
and 35 are capable of “‘quick-release attachment’ and ‘quick-release
detachment’.” As such, the Examiner’s conclusion of obviousness for
claims 1 and 20 is not supported by rational underpinnings.
Turning to the rejection of claims 18 and 19 under § 103(a), the
Examiner finds Catron discloses “a display including hook 31 for attaching
an accessory to the display (Figure 2).” Ans. 6. This finding does not cure
the deficiency of the combined teachings of Blum and Gearon as pointed out
in connection with the rejection of claim 1. Thus the Examiner’s conclusion
of obviousness for claims 18 and 19 lacks rational underpinning.

CONCLUSION
First, the evidence and technical reasoning underlying the rejection of
claims 21 and 22 adequately support the conclusion that the subject matter
of those claims would have been obvious. We sustain the rejection of claims
21and 22 under § 103(a) as being unpatentable over Blum, Gearon and
Catron. Accordingly, the rejection of dependent claims 23-27 is sustained
for the same reasons as claim 22.
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Second, the combined teachings of Blum and Gearon do not render
obvious “said tray securing mechanisms” as recited in claim 1; or the “first
tray securing mechanism” as recited in claim 20. We do not sustain the
rejection of claims 1 and 20 under § 103(a) as being unpatentable over Blum
and Gearon. Accordingly, the rejection of dependent claims 2-5, 13, 14, and
16 is not sustained for the same reason as claim 1. Additionally, we do not
sustain the rejection of claims 18 and 19 under § 103(a) as being
unpatentable over Blum, Gearon, and Catron.

DECISION
We REVERSE the Examiner’s decision rejecting claims 1-5, 13, 14,
16, and 18-20.
We AFFIRM the Examiner’s decision rejecting claims 21-27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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