Ex Parte Enge et al

Board of Patent Appeals and Interferences

Mar 14, 2008

10414392 (B.P.A.I. Mar. 14, 2008)

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UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte ASBJORN ENGE and PER G. KVILER
___________

Appeal 2008-0531
Application 10/414,392
Technology Center 3700
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Decided: March 14, 2008
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Before WILLIAM F. PATE, III, ANTON W. FETTING, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Asbjorn Enge and Per G. Kviler (Appellants) seek review under
35 U.S.C. § 134 of a Final rejection of claims 24-46, the only claims pending in the
application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).

We AFFIRM.

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The Appellants invented an air freight container, including a top, bottom and
sides with one or more openings for loading and unloading, each opening being
provided with a closing and load supporting closure in the form of pivot gate door,
or a fabric material preferably with cables or reinforcing members, the closure in
turn, at its outer (lower) end being provided with a device for tensioning and
locking the closure. (Specification 1:First ¶).
An understanding of the invention can be derived from a reading of exemplary
claim 24, which is reproduced below [bracketed matter and some paragraphing
added].
24. A cargo container for transporting goods, comprising:
[1] a frame structure having a top, a bottom, sides, and an opening for
providing access to allow loading and unloading,
said opening including corner posts each having a counter-
tensioning-and-locking element; and
[2] a closure at said opening of said frame structure, said closure
including
[a] a stretchable fabric material body and
[b] a locking-and-tensioning device at a lower end of said
stretchable fabric material body, said locking-and-tensioning
device including:
an elongated member;
at least two tensioning-and-locking studs,
at least one of said tensioning-and-locking studs
being located at each opposite end of said
elongated member,
each of said tensioning-and-locking studs having
an inclined surface portion; and
[c] a drive mechanism
for linearly moving said tensioning-and-locking studs
along a longitudinal axis of said elongated member,
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said drive mechanism being operable to move said
tensioning-and-locking studs outward along the
longitudinal axis of said elongated member
so that said tensioning-and-locking studs are at
least partially received within said counter-
tensioning-and-locking element of each of said
corner posts, and
so that said inclined surface portion of each of said
tensioning-and-locking studs is engaged by a
corresponding counter-tensioning-and-locking
element,
said inclined surface portion being shaped and arranged
such that said elongated member is pushed downward by
said engaged counter-tensioning-and-locking element
to thereby lock said closure and pull taut said
stretchable fabric material body as said tensioning-
and-locking studs are moved outward.
This appeal arises from the Examiner’s Final Rejection, mailed April 19, 2006.
The Appellants filed an Appeal Brief in support of the appeal on November 1,
2006. An Examiner’s Answer to the Appeal Brief was mailed on December 11,
2006.
PRIOR ART
The Examiner relies upon the following prior art:
Bagley US 2,124,970 Jul. 26, 1938
Lohr US 3,591,034 Jul. 6, 1971
Douglas US 4,616,864 Oct. 14, 1986
Fleming US 5,524,942 Jun. 11, 1996
Neustadt US 5,667,002 Sep. 16, 1997
Weeks US 6,094,865 Aug. 1, 2000
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REJECTIONS
Claims 24, 31, 33, 40, and 46 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lohr, Bagley, and Neustadt.
Claims 35, 42, and 45 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lohr, Bagley, Neustadt, and Weeks.
Claims 25-28, 32, 36, and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lohr, Bagley, Neustadt, and Douglas.
Claims 30 and 39 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Lohr, Bagley, Neustadt, Douglas, and Weeks.
Claims 29, 34, 38, 41, 43, and 44 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lohr, Bagley, Neustadt, and Fleming.
ISSUES
The issues pertinent to this appeal are
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 24, 31, 33, 40, and 46 under 35 U.S.C.
§ 103(a) as unpatentable over Lohr, Bagley, and Neustadt.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 35, 42, and 45 under 35 U.S.C. § 103(a)
as unpatentable over Lohr, Bagley, Neustadt, and Weeks.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 25-28, 32, 36, and 37 under 35 U.S.C.
§ 103(a) as unpatentable over Lohr, Bagley, Neustadt, and Douglas.
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• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 30 and 39 under 35 U.S.C. § 103(a) as
unpatentable over Lohr, Bagley, Neustadt, Douglas, and Weeks.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 29, 34, 38, 41, 43, and 44 under
35 U.S.C. § 103(a) as unpatentable over Lohr, Bagley, Neustadt, and
Fleming.
The pertinent issue turns on whether it would have been obvious to a person of
ordinary skill in the art to have modified Lohr’s locking rods with inclined surfaces
shaped and arranged so they were pushed downward when inserted in Lohr’s
bores.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Lohr
01. Lohr is directed to a crate adapted to be reused an indefinite number
of times by being fitted with a door for loading and unloading purposes
(Lohr 1:6-8).
02. Lohr’s crate has a top, bottom, sides, and an opening for providing
access to allow loading and unloading (Lohr 2:16-17; Fig. 1).
03. Lohr’s door is made of stays interconnected by rubber sheet and is
therefore a stretchable closure (Lohr 2: 23-27).
04. Lohr describes one embodiment in which a sliding bar places the
bottom edge of its door under tension (Lohr 3:34-41; Fig. 14).
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05. Lohr describes an embodiment in which its handle is rotatable to drive
rods along its door’s bottom edge laterally into bores in the crate frame
(Lohr 3:42-48; Fig. 15).
Bagley
06. Bagley is a patent issued 65 years prior to the filing of the instant
application and is directed toward a manually operated closing and
locking device for overhead garage doors (Bagley 1:Left col., ll. 1-3).
07. Bagley describes a locking device having two latch bolts that enter
keeper plates to interact to close and tension the door (Bagley 1:Right
col., ll. 37-47).
08. Bagley’s latch bolts have inclined surface portions (Bagley Fig. 6:64)
These inclined surfaces interact with Bagley’s keep plates to push the
bolts downward when engaging Bagley’s locking device (Bagley
1:Right col., ll. 29-36; 2:Left col., ll. 1-8).
Neustadt
09. Neustadt is directed to an air cargo container having a flexible door
(Neustadt 1:66-67).
10. Neustadt describes fabric door embodiments for air cargo containers
that are less expensive than solid doors (Neustadt 1:5-11).
Facts Related To The Level Of Skill In The Art
11. Neither the Examiner nor the Appellants has addressed the level of
ordinary skill in the pertinent art. We will therefore consider the cited
prior art as representative of the level of ordinary skill in the art. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
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absence of specific findings on the level of skill in the art does not give
rise to reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (quoting Litton Indus.
Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985).
Facts Related To Secondary Considerations
12. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003) (claims must be interpreted “in view of the specification” without
importing limitations from the specification into the claims unnecessarily)
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to be
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
an inventor is free to define the specific terms used to describe the invention, this
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must be done with reasonable clarity, deliberateness, and precision; where an
inventor chooses to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to give
one of ordinary skill in the art notice of the change).
Obviousness
A claimed invention is unpatentable if the differences between it 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.”
35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727 (2007);
Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, at 1739.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” Id. at 1740.
“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
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“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742.
ANALYSIS
Claims 24, 31, 33, 40, and 46 rejected under 35 U.S.C. § 103(a) as unpatentable
over Lohr, Bagley, and Neustadt.
The Appellants argue these claims as a group.
Accordingly, we select claim 24 as representative of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner found that Lohr described all of the limitations of claim 24,
except for a fabric door and inclined surfaces on the tensioning and locking studs.
To overcome this deficiency, the Examiner found that Neustadt described a fabric
door for an air cargo container and that Bagley described the use of inclined
surfaces on locking studs. The Examiner implicitly found that one of ordinary skill
would have seen that Neustadt’s taught a fabric embodiment for the flexible door
in Lohr’s air cargo containers, and would have known that pulling Lohr’s closure
down and locking it tightly would be important. The Examiner concluded that it
was obvious to apply such features of Neustadt and Bagley to Lohr for these
reasons. (Answer 4-5).
The Appellants contend that the applied prior art does not teach or suggest a
locking-and-tensioning device at a lower end of a stretchable fabric material body
(Br. 4:First full ¶ under Argument –I). The Appellants argue that Lohr merely
locks, but does not apply tension to, its door (Br. 5:Bottom ¶); that Bagley’s
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locking and tensioning device is in the middle of its door, rather than at the bottom
(Br. 6:First full ¶); and that Bagley is non-analogous art (Br. 8:Top ¶).
We disagree. As the Examiner found, Lohr describes an air cargo container
with a top, bottom, sides, and an opening for providing access to allow loading and
unloading (FF 02); a locking and tensioning device at a lower end of a stretchable
door (FF 03 & 04); and a drive mechanism for linearly moving locking studs along
a longitudinal axis at the lower end of the door (FF 05). Although Lohr does not
explicitly combine its tensioning embodiment and its moveable locking studs
embodiment, one of ordinary skill would have immediately recognized that each is
complementary with the other, for their combination would have simply provided
the advantages of each, viz. tension to assist in closure and a handle with ease of
locking, both at the bottom, which would be important with a flexible door.
Lohr’s door is flexible (FF 03) and as the Examiner found, such flexible doors
may be made of fabric according to Neudstadt (FF 10). Thus, we agree with the
Examiner’s findings that Lohr and Neustadt describe all of the limitations of claim
1 except for the inclined surfaces of the tensioning-and-locking studs. We agree
with the Examiner’s findings that Bagley describes such inclined portions in
tensioning and locking studs (FF 07 & 08).
The Appellants’ arguments that each of these features are not found in a
particular piece of art simply responds to the rejection by attacking the references
separately, even though the rejection is based on the combined teachings of the
references. Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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The Appellants’ argument that Lohr does not apply tension is unpersuasive in
light of Lohr’s express description of such tensioning (FF 04). Thus, the only issue
remaining is whether it is proper to combine the inclined surface taught by Bagley
with Neustadt’s fabric door having Lohr’s locking mechanism at the bottom. The
Examiner responded that Bagley is (1) merely evidence of the notoriety of this
adaptation to a locking device such as that used by Lohr; and (2) analogous art in
any event for being addressed to the Appellants’ problem (Answer 11:Second full
¶).
We agree with the Examiner. The analogous art test requires a showing that
a reference is either in the field of the applicant's endeavor or is reasonably
pertinent to the problem with which the inventor was concerned in order to rely on
that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. 12
Cir. 1992). References are selected as being reasonably pertinent to the problem
based on the judgment of a person having ordinary skill in the art. Id. (“[I]t is
necessary to consider ‘the reality of the circumstances’ . . . –in other words,
common sense–in deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem facing the inventor.”
(quoting
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In re Wood, 599 F.2d 1032, 1036 (C.C.P.A. 1979))); In re Kahn, 441 F.3d 18
977, 986-87 (Fed. Cir. 2006); see also In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992)
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(“[a] reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor's endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor's
attention in considering his problem.”). The age of Bagley’s patent speaks to the
notoriety of its inclined surface in a locking mechanism, and the need for tension
described by Lohr would have commended one of ordinary skill to look to all the
art of closure devices that provide such tension.
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In view of the holding in KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742
(2007) that “any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining the
elements in the manner claimed,” 127 S. Ct. at 1742 (emphasis added), it is clear
that the second part of the analogous art test as stated in Clay, supra, must be
expanded to require a determination of whether the reference, even though it may
be in a different field from that of the inventor's endeavor, is one which, because of
the matter with which it deals, logically would have commended itself to an
artisan's (not necessarily the inventor's) attention in considering any need or
problem known in the field of endeavor. One of ordinary skill would have found
that the matter that Bagley deals with logically would have commended itself to
the need for tension expressed in Lohr.
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 24, 31, 33, 40, and 46 under 35 U.S.C. § 103(a) as
unpatentable over Lohr, Bagley, and Neustadt.
Claims 35, 42, and 45 rejected under 35 U.S.C. § 103(a) as unpatentable over
Lohr, Bagley, Neustadt, and Weeks.
The Appellants have relied on their arguments in support of claim 24, which
we found did not overcome their burden, supra, and so they have not sustained
their burden of showing that the Examiner erred in rejecting claims 35, 42, and 45
under 35 U.S.C. § 103(a) as unpatentable over Lohr, Bagley, Neustadt, and Weeks.
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Claims 25-28, 32, 36, and 37 rejected under 35 U.S.C. § 103(a) as unpatentable
over Lohr, Bagley, Neustadt, and Douglas.
The Appellants have relied on their arguments in support of claim 24, which
we found did not overcome their burden, supra, and so they have not sustained
their burden of showing that the Examiner erred in rejecting claims 25-28, 32, 36,
and 37 under 35 U.S.C. § 103(a) as unpatentable over Lohr, Bagley, Neustadt, and
Douglas.
Claims 30 and 39 rejected under 35 U.S.C. § 103(a) as unpatentable over Lohr,
Bagley, Neustadt, Douglas, and Weeks.
The Appellants have relied on their arguments in support of claim 24, which
we found did not overcome their burden, supra, and so they have not sustained
their burden of showing that the Examiner erred in rejecting claims 30 and 39
under 35 U.S.C. § 103(a) as unpatentable over Lohr, Bagley, Neustadt, Douglas,
and Weeks.
Claims 29, 34, 38, 41, 43, and 44 rejected under 35 U.S.C. § 103(a) as
unpatentable over Lohr, Bagley, Neustadt, and Fleming.
The Appellants have relied on their arguments in support of claim 24, which
we found did not overcome their burden, supra, and so they have not sustained
their burden of showing that the Examiner erred in rejecting claims 29, 34, 38, 41,
43, and 44 under 35 U.S.C. § 103(a) as unpatentable over Lohr, Bagley, Neustadt,
and Fleming.
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CONCLUSIONS OF LAW
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 24-46 under 35 U.S.C. § 103(a) as unpatentable over the
prior art.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 24, 31, 33, 40, and 46 under 35 U.S.C. § 103(a) as
unpatentable over Lohr, Bagley, and Neustadt is sustained.
• The rejection of claims 35, 42, and 45 under 35 U.S.C. § 103(a) as
unpatentable over Lohr, Bagley, Neustadt, and Weeks is sustained.
• The rejection of claims 25-28, 32, 36, and 37 under 35 U.S.C. § 103(a) as
unpatentable over Lohr, Bagley, Neustadt, and Douglas is sustained.
• The rejection of claims 30 and 39 under 35 U.S.C. § 103(a) as unpatentable
over Lohr, Bagley, Neustadt, Douglas, and Weeks is sustained.
• The rejection of claims 29, 34, 38, 41, 43, and 44 under 35 U.S.C. § 103(a)
as unpatentable over Lohr, Bagley, Neustadt, and Fleming is sustained.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED

JRG

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WENDEROTH, LIND & PONACK, L.L.P.
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WASHINGTON, DC 20006-1021

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