Ex Parte Feller

Board of Patent Appeals and Interferences

May 29, 2008

10994584 (B.P.A.I. May. 29, 2008)

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____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LARRY FELLER
____________________

Appeal 2008-0738
Application 10/994,584
Technology Center 3600
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Decided: May 29, 2008
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Before WILLIAM F. PATE, III, LINDA E. HORNER and DAVID B.
WALKER, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
The Appellant appeals under 35 U.S.C. § 134 (2002) from a Final
Rejection of claims 5-10. Claims 1-4 have been previously withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
The Appellant claims a sled including an aerosol container having a
coloring fluid therein where the container may be operated using a trigger.
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Independent claim 5 reads as follows:
5. A sled having a steering handle and having an aerosol
container attached thereto, which aerosol container contains a
coloring fluid wherein the aerosol container may be operated by
a trigger mounted to the steering handle.

The prior art relied upon by the Examiner in rejecting the claims is:
Hoagland 3,933,283 Jan. 20, 1976
Ryder 4,599,968 Jul. 15, 1986
Romer 4,863,075 Sep. 5, 1989

The Examiner rejected claims 5-7 under 35 U.S.C. § 103(a) as
unpatentable over Ryder in view of Romer.
The Examiner also rejected claims 8-10 under 35 U.S.C. § 103(a) as
unpatentable over Ryder in view of Romer and Hoagland.
The Examiner further entered a new ground of rejection in the
Examiner’s Answer rejecting claims 9 and 10 under 35 U.S.C. § 112, second
paragraph.
We AFFIRM-IN-PART.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Appellant has shown that the Examiner erred in
rejecting claims 5-7 as unpatentable over Ryder in view of Romer.
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2. Whether the Appellant has shown that the Examiner erred in
rejecting claims 8-10 as unpatentable over Ryder in view of Romer and
Hoagland.
3. Whether the Appellant has shown that the Examiner erred in
rejecting claims 9 and 10 as indefinite.

PRINCIPLES OF LAW
35 U.S.C. § 112, second paragraph, recites that “[t]he specification
shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his
invention.” Claims are in compliance with 35 U.S.C. § 112, second
paragraph, if “the claims, read in light of the specification, reasonably
apprise those skilled in the art both of the utilization and scope of the
invention, and if the language is as precise as the subject matter permits.”
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed.
Cir. 1986).
“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 (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
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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
(1966). In KSR, the Supreme Court explained that, “[o]ften, it will be
necessary for a court to look to interrelated teachings of multiple patents; the
effects of demands known to the design community or present in the
marketplace; and the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue.” KSR, 127 S.Ct. at 1740-41. The Court noted that “[t]o
facilitate review, this analysis should be made explicit.” Id., citing
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In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”). However, “the analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 1741.

ANALYSIS
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Rejection of claims 5-7 as unpatentable over Ryder in view of Romer
The Examiner rejected claims 5-7 as unpatentable over Ryder in view
of Romer. Ryder discloses a collapsible painting cart with a mounted paint
spray can that is operable by a hand trigger (Ryder: Fig. 1; Col. 4, ll. 17-20
and 37-39; Col. 5, ll. 56-60). Ryder discloses that the painting cart can be
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used to apply stripes or markings on a ground surface and/or a floor surface
(Col. 1, ll. 10-18). Romer discloses a beach caddy that includes removable
wheels that allow the caddy to be drawn on a hard surface (such as
pavement) and runners that allow the caddy to be drawn on a soft surface
(such as sand) (Romer: Fig. 1; Col. 2, ll. 34-44). The Examiner contends
that it would have been obvious to one of ordinary skill in the art to provide
the painting cart of Ryder with the runners of Romer in order to allow the
painting cart to be used in applying paint stripes on soft surfaces (Ans. 7).
The Appellant argues that the painting cart of Ryder does not have a
steering handle as recited in independent claim 5 (App. Br. 9). In this
regard, the Appellant refers to portions of Ryder that describe the wheels of
the cart as being non-pivotally mounted relative to the frame as well as the
desirability of moving the painting cart in a generally straight line (App. Br.
10; Ryder: Col. 4, ll. 28-33). The Appellant also notes that the secondary
Romer reference does not cure these deficiencies of Ryder (App. Br. 11).
The Appellant further argues that the Examiner does not establish
appropriate motivation for combining the cited references in the manner
suggested and that such combination would only be appropriate upon
showing the desirability of spraying paint on soft sand (App. Br. 11).
We agree with the Appellant that Ryder does not teach the recited
steering handle and that the Examiner has not established appropriate
motivation for combining the cited references in the manner suggested. The
cited portions of Ryder teach away from steering the disclosed painting cart
(Ryder: Col. 4, ll. 28-33). While Ryder does disclose the desirability of
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applying stripes on a variety of hard surfaces and Romer discloses use of
runners on soft surfaces, the Examiner has not established the desirability of
striping/marking a soft surface based on the disclosures of the cited
references and has not articulated a reason with a rational basis as to why
one of ordinary skill in the art would have been motivated to do so. Thus,
the Appellant has shown that the Examiner erred in rejecting independent
claim 5, as well as claims 6 and 7 depending therefrom, as unpatentable over
Ryder and Romer.

10 Rejection of claims 8-10 as unpatentable over Ryder in view of
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Because claims 8-10 ultimately depend from independent claim 5, the
Appellant’s arguments with respect to claims 8-10 are moot in view of the
above. Thus, the Appellant has also shown that the Examiner erred in
rejecting dependent claims 8-10 as unpatentable over Ryder, Romer and
Hoagland.

Rejection of claims 9 and 10 as indefinite 18
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In the Examiner’s Answer, the Examiner entered a new ground of
rejection rejecting claims 9 and 10 as indefinite for failing to particularly
point out and distinctly claim the subject matter of the invention. The
Examiner states that it is not clear whether the phrase “a hand-operated
trigger” of claim 9 is the same as the recited “a trigger” of independent claim
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5 from which claims 9 and 10 ultimately depend (Ans. 6). The Examiner
further notes that only one trigger is described in the Specification (Ans. 6).
In response, the Appellant filed a Reply Brief, thereby requesting that
the appeal be maintained. See 37 C.F.R. §41.39(b)(2). The Appellant
argues that because claim 5 utilizes conditional language in stating that “the
aerosol container may be operated by a trigger mounted to the steering
wheel” (emphasis added), claim 5 does not require a trigger (Reply Br. 4).
Thus, the Appellant contends that the use of the article “a” in dependent
claim 9 is appropriate (Reply Br. 4). We disagree.
In our reading, the conditional term “may” in claim 5 modifies the
operation of the aerosol container so that the operation of the aerosol
container is optional, but does not make the presence of the recited trigger
optional. Independent claim 5 requires the operability of the aerosol
container by actuating the recited trigger, such trigger being required for the
operability. Thus, the recited trigger of claim 5 is required, and because
claim 9 introduces the limitation “a hand-operated trigger” which is not
disclosed as being distinct from “a trigger” recited in base claim 5, we agree
with the Examiner that claims 9 and 10 are indefinite.
The Appellant further states that if the Board disagrees with the
Appellant, authority is given to the USPTO to change “a hand-operated
trigger” of claim 9 to “the hand-operated trigger” (Reply Br. 4). However,
the Board does not have the authority to enter amendments to the claims.
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Amendments to the claims are made by the Appellant and considered by the
Examiner in normal prosecution
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1.

CONCLUSIONS
1. The Appellant has shown that the Examiner erred in rejecting
claims 5-7 as unpatentable over Ryder in view of Romer.
2. The Appellant has shown that the Examiner erred in rejecting
claims 8-10 as unpatentable over Ryder in view of Romer and Hoagland.
3. The Appellant has not shown that the Examiner erred in
rejecting claims 9 and 10 as indefinite.

ORDERS
1. The Examiner’s prior art rejections of claims 5-10 are
REVERSED.
2. The Examiner’s indefiniteness rejection of claims 9 and 10 is
AFFIRMED.
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) (2007).

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AFFIRMED-IN-PART

1 We note that the amendment language suggested by the Appellant is still
problematic because the limitation “the hand-operated trigger” would lack
proper antecedent basis.
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JRG

RICHARD L. HUFF
19304 OLNEY MILL ROAD
OLNEY, MD 20832

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