Ex Parte Forest

Board of Patent Appeals and Interferences

Sep 19, 2005

10174555 (B.P.A.I. Sep. 19, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT A. FOREST
____________
Appeal No. 2005-1476
Application No. 10/174,555
____________
ON BRIEF
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Before FRANKFORT, MCQUADE, and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 4 and
8, which are all of the claims pending in this application. Claim 1 was amended
subsequent to the final rejection in an amendment filed February 26, 2004.
We REVERSE.
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Application No. 10/174,555
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BACKGROUND
The appellant's invention relates to a trash receptacle having a trash bag
container secured thereto. A copy of the claims on appeal may be found in the
amendment filed February 26, 2004
The Prior Art
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Clark, Jr. (Clark) 4,823,979 Apr. 25, 1989
Waterston 5,092,480 Mar. 3, 1992
Beasley et al. (Beasley) 5,115,916 May 26, 1992
Sharkey 5,429,262 Jul. 4, 1995
The Rejections
Claim 1 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Waterston in view of Clark.
Claims 1, 4 and 8 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Waterston in view of Clark, Sharkey and Beasley.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection (mailed September 8, 2003) and answer (mailed March 16, 2004) for the
examiner's complete reasoning in support of the rejections, and to the brief (filed
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Application No. 10/174,555
Page 3
January 12, 2004) and reply brief (filed May 12, 2004) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. For the reasons
which follow, neither of the examiner's rejections can be sustained.
Independent claim 1 recites, inter alia, an open top trash receptacle, a trash bag
container having front and rear walls and "means [for] connecting the rear wall of the
trash bag container to the receptacle to position the rear wall of the container in abutting
contacting relation with a side wall of the receptacle." This claim reads on the
embodiments illustrated in appellant's Figures 1 and 2, wherein the trash bag container
21 or 40 "is secured to the side wall 12 of the trash receptacle by a suitable adhesive
material such as an epoxy or similar cementitious material" (specification, page 4).
The examiner has taken the position that the "means [for] connecting the rear
wall of the trash bag container to the receptacle to position the rear wall of the container
in abutting contacting relation with a side wall of the receptacle" is not a means-plus-
function recitation under 35 U.S.C. § 112, sixth paragraph, because the word "for" does
not directly follow the word "means" in the claim (answer, page 6). This position is not
well taken. As set forth in Signtech USA Ltd. v. Vutek Inc., 174 F.3d 1352, 1356, 50
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Application No. 10/174,555
Page 4
USPQ2d 1372,1374 (Fed. Cir. 1999), typically, if the word "means" appears in a claim
element in combination with a function, it is presumed to be a means-plus-function
element to which the sixth paragraph of 35 U.S.C. § 112 applies. In this case, the term
"means" appears in combination with the function "connecting" and is thus presumed to
be a means-plus-function limitation governed by 35 U.S.C. § 112, sixth paragraph.
Furthermore, claim 1 does not recite disqualifying structure which would prevent
application of 35 U.S.C. § 112, sixth paragraph. Accordingly, the examiner erred in not
interpreting the "means connecting ..." limitation of claim 1 as a means-plus-function
recitation to which 35 U.S.C. § 112, sixth paragraph applies.
In accordance with 35 U.S.C. § 112, sixth paragraph, the "means connecting ..."
limitation of claim 1 is construed to cover the corresponding structure described in the
appellant's specification and equivalents thereof. The structure disclosed in the
appellant’s specification for connecting the rear wall of the trash bag container to the
receptacle to position the rear wall of the container in abutting contacting relation with a
side wall of the receptacle is adhesive material such as epoxy or similar cementitious
material which adheres the rear wall of the container to a side wall of the receptacle.
The hanger member 36 of Waterston which secures the secondary receptacle 14 onto
the primary receptacle or wastebasket 12 is certainly not an adhesive. Furthermore, for
the reasons set forth on page 3 of the appellant’s reply brief, the hanger member 36 of
Waterston does not connect the rear wall of the secondary receptacle 14 to the side
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1 The application of Clark appears to us to be superfluous, inasmuch as claim 1 does not
positively recite a trash bag.
wall 18 of the primary receptacle or wastebasket 12 in the same manner that the
adhesive connects the rear wall of the appellant’s container to a side wall of the
receptacle and thus is not an equivalent of the appellant’s adhesive connection. We
therefore agree with the appellant that Waterston fails to meet the “means connecting
...” limitation. Clark, which is applied by the examiner merely for a suggestion to provide
a trash bag in the Waterston wastebasket1, provides no cure for that which is lacking in
Waterston. Accordingly, the rejection of claim 1 as being unpatentable over Waterston
in view of Clark is reversed.
The rejection of claims 1, 4 and 8 as being unpatentable over Waterston in view
of Clark, Sharkey and Beasley is also reversed. We find no suggestion in either
Beasley or Sharkey to replace the hanger member of Waterston with either a hook and
loop or adhesive fastener on the walls of the primary and secondary receptacles. As
stated by our reviewing court in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316 (Fed. Cir. 2000):
Most if not all inventions arise from a combination of old
elements. Thus, every element of a claimed invention may
often be found in the prior art. However, identification in the
prior art of each individual part claimed is insufficient to
defeat patentability of the whole claimed invention. Rather,
to establish obviousness based on a combination of the
elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of
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making the specific combination that was made by the
applicant [citations omitted].
Neither Beasley’s teaching of hook and loop fasteners for holding together a plurality of
separate containers containing personal care commodities nor Sharkey’s teaching of an
adhesive fastening an auxiliary condiment container to an associated foodstuff
container provides any teaching or suggestion to replace the hanger arrangement of
Waterston with either type of fastener. Waterston’s receptacles are intended to provide
a modular waste disposal receptacle system such that the primary and secondary
receptacles can be selectively and alternately utilized by placing the secondary
receptacles in a freestanding position in close proximity to the primary wastebasket, in
hanging engagement on the primary wastebasket, or in a stacked and nested
configuration within the primary wastebasket (column 1, lines 48-56). The securement
of the secondary receptacles to the primary wastebasket using either a hook and loop
fastener or an adhesive fastener would hinder the user’s ability to easily move the
receptacles between hanging or nested configurations and freestanding configurations
and thus would not have been obvious to one of ordinary skill in the art.
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CONCLUSION
To summarize, the decision of the examiner to reject claims under 35 U.S.C.
§ 103 is REVERSED.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2005-1476
Application No. 10/174,555
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Herman H. Bains
6101 Tracy Avenue
Minneapolis, MN 55436