Ex Parte ForestDownload PDFBoard of Patent Appeals and InterferencesSep 19, 200510174555 (B.P.A.I. Sep. 19, 2005) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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 ____________ 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. Appeal No. 2005-1476 Application No. 10/174,555 Page 2 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 Appeal No. 2005-1476 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 Appeal No. 2005-1476 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 Appeal No. 2005-1476 Application No. 10/174,555 Page 5 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 Appeal No. 2005-1476 Application No. 10/174,555 Page 6 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. Appeal No. 2005-1476 Application No. 10/174,555 Page 7 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 Page 8 Herman H. Bains 6101 Tracy Avenue Minneapolis, MN 55436 Copy with citationCopy as parenthetical citation