Ex Parte Giglio et al

Patent Trial and Appeal Board

Jan 27, 2015

11809154 (P.T.A.B. Jan. 27, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAMON GIGLIO and ROBERT LOMONACO
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Appeal 2013-001180
Application 11/809,154
Technology Center 3700
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Before ANNETTE R. REIMERS, TIMOTHY J. GOODSON, and
MICHAEL L. WOODS, Administrative Patent Judges

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants Damon Giglio and Robert LoMonaco appeal under
35 U.S.C. § 134(a) from the rejection of claims 18–25. App. Br. 3. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claim 18 illustrates the subject matter on appeal and is reproduced
below, with emphasis added to highlight the limitations that are the focus of
Appellants’ arguments:
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18. A device which is supported and stably secured by
support element rods to contain and protect from moisture,
display, and dispense documents comprising:
a) a transparent convex shaped front face made from
plastic material and having top, bottom, and side portions, said
top portion having an opening into which documents may be
inserted and removed from said device, said front face having a
center section having an interior convex surface extending from
said top portion to said bottom portion of said device;
b) a back face having top, bottom, and first and second
side portions, said back face connected to said front top face at
said top, bottom, and side portions of said front and back faces
and forming a chamber between said front and back faces, said
chamber adapted to contain and protect from moisture, display
at said front face, and dispense documents contained in said
chamber, and said top portion of said back face pivotally
connected to a flap cover sized to cover said opening in said top
portion of said front face when in a closed position thereby
preventing moisture from entering said chamber and exposing
said opening when pivotally moved to an open position thereby
permitting documents to be inserted and removed from said
device; and
c) further comprising a top opening having two open
ends extending horizontally along the top of said device to
said first and second side portions, a bottom opening having
two open ends extending horizontally along the bottom of the
device to said first and second side portions, and straight
support element rods contained and secured within said top
and bottom openings and extending from said top and bottom
opening ends whereby said device is supported and stably
secured by said support element rods, said support element
rods attached to a stake holder for securing the device to said
stake holder.

PRIOR ART
The Examiner relies on the following evidence:
Paik
Zazworsky
US 5,595,300
US 2007/0209258 A1
Jan. 21, 1997
Sept. 13, 2007
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GROUND OF REJECTION
Claims 18–25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Paik in view of Zazworsky. Ans. 3.

OPINION
Appellants argue claims 18–25 as a group. Appeal Br. 9–16; Reply
Br. 4–7. We select claim 18 as representative, except that we separately
address claim 25 for reasons discussed below. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2012). Dependent claims 19–24 stand or fall with claim
18.
The Examiner finds that Paik discloses the subject matter of claim 18,
except that the Examiner relies on Zazworsky as teaching support elements
that pass through the top and bottom openings and extend from opening
ends. Ans. 3–5. The Examiner determines that it would have been obvious
to substitute a different fastener, as taught by Zazworsky, because doing so
would merely involve the substitution of a known equivalent for the same
purpose. Id. at 5 (citing Smith v. Hayashi, 209 USPQ 754, 759 (Bd. Pat. Int.
1980).
Appellants first argue that Paik’s front face is not convex. Appeal Br.
9–10. This argument is unpersuasive because, as the Examiner correctly
notes, Paik’s Figure 2 shows the top and bottom “bowing outwards, which
would indicate that the front surface is convex.” Ans. 7.
Next, Appellants argue that Paik does not disclose a “top opening”
having the recited features. Appeal Br. 10. Appellants assert that the area
the Examiner finds to be the claimed top opening “is not suitable for
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containing and securing support element rods because opening cover
member 40 would destroy the ability to contain and secure the rods.” Id.;
see also id. at 13–14; Reply Br. 4–5. Appellants further argue that “any
insertion of support element, such as a rod, into the top opening of Paik
followed by opening of the cover flap would result in an unstable, unwieldy
device where the support rod contributes to instability.” Appeal Br. 13. In
response, the Examiner states that Paik’s Figures 2 and 3 show openings at a
gap below the hinged portion and above reference number 54, and either of
these openings is “capable of containing and securing element rods.” Ans.
7. Regarding Appellants’ argument concerning stability, the Examiner states
that the proposed combination of Paik with Zazworsky would yield a device
that “would be stable and still be able to perform its function of holding and
dispensing flat articles such as flyers and brochures.” Ans. 11. The
Examiner does not specifically address Appellants’ contention that opening
Paik’s cover member 40 would prevent the areas to which the Examiner
refers to as “top openings” from containing or securing straight support
element rods.
Although Appellants argue independent claims 18 and 25 together, we
perceive a material difference between them with regard to Appellants’
arguments concerning opening the lid. See Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005) (en banc) (“Differences among claims can . . .
be a useful guide in understanding the meaning of particular claim terms.”)
(citation omitted). Claim 25 recites “straight support element rods contained
and secured within said top and bottom openings and extending from said
top and bottom opening ends when said flap cover is in said open and
closed positions.” Claims App. 22 (emphasis added). Claim 18 does not
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include the highlighted language. Indeed, apart from the preambles, the
highlighted language is the only difference between claims 18 and 25. The
absence of the highlighted language indicates that claim 18, unlike claim 25,
does not require that straight support element rods are contained and secured
within the top and bottom openings when the flap cover is in the open
position as well as when the flap cover is in the closed position. Thus, for
claim 18, it is sufficient to have the recited features when the flap cover is in
the open position or the closed position. A different construction would
render the highlighted language in claim 25 superfluous. See Kara Tech.
Inc. v. Stamps.com Inc., 582 F.3d 1341, 1347 (Fed. Cir. 2009) (asserted
claims did not require the use of a key because asserted claims did not recite
a key, while all other independent claims did recite a key, thus signaling that
“when the inventor wanted to restrict the claims to require the use of a key,
he did so explicitly”).
We agree with the Examiner that in the proposed modification, the top
opening would contain and secure the straight support element rods when
the cover 40 is in the closed position. See Ans. 8, 10. However, we agree
with Appellants that the Examiner has not shown that the top opening would
contain and secure the straight support element rods when the cover 40 is
open. See Appeal Br. 10, 13–14. Accordingly, Appellants’ argument that
the area where the Examiner finds a “top opening” in Paik (or the
Examiner’s proposed modification of Paik) would not contain and secure the
straight support element rods when the lid is open is persuasive with respect
to claim 25, but not with respect to claim 18.
Appellants’ next argument is that the ties 72 and vacuum cups 80
shown in Paik’s Figures 9 and 10 are not “straight support element rods” and
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they are not contained and secured in the top and bottom openings. Appeal
Br. 11. Appellants further argue that Zazworsky also does not teach support
element rods as claimed because Zazworsky’s bars 16 and 18 pass through a
connector 28, not through openings in the box 26. Id. at 12; Reply Br. 5.
The Examiner’s response clarifies that Paik’s ties 72 and vacuum cups 80
were only cited “to show that it was well known in the art to mount the Paik
container to an external support,” which thereby supports the obviousness of
utilizing another mounting arrangement as shown in Zazworsky. Ans. 8–9.
We agree with the Examiner that in the proposed combination, as illustrated
at page 10 of the Answer, the bars 16 and 18 would satisfy the “straight
support element rods” limitations of claim 18. Appellants contest that the
proposed combination would satisfy the structure of claim 18 because “there
is no structural element created upon wrapping for the postulated snapping
over a crossbar to occur” (Reply Br. 6), but this argument is unpersuasive.
Appellants also argue that the Examiner has not shown how Paik
could be modified to include support rods as claimed, as it is unclear how
Zazworsky’s external clip could be incorporated into the openings identified
in Paik. Appeal Br. 14. This argument is unpersuasive, particularly in view
of the illustration on page 10 of the Answer that demonstrates how
Zazworsky’s bars 16 and 18 would interact with Paik’s openings in the
proposed combination. Moreover, as the Examiner correctly notes, “the test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Ans. 11 (citing In re Keller,
642 F.2d 413, 425 (CCPA 1981)).
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For the foregoing reasons, we sustain the rejection of claims 18–24.
We do not sustain the rejection of claim 25.

DECISION
We AFFIRM the Examiner’s rejection of claims 18–24 under
35 U.S.C. § 103(a) as being unpatentable over Paik in view of Zazworsky.
We REVERSE the Examiner’s rejection of claim 25 under 35 U.S.C.
§ 103(a) as being unpatentable over Paik in view of Zazworsky.
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).

AFFIRMED-IN-PART

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