Ex Parte Hord et al

Patent Trial and Appeal Board

Feb 14, 2014

11982696 (P.T.A.B. Feb. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/982,696 11/05/2007 Richard W. Hord 07-6042 2743
7590 02/14/2014
William M. Hobby, III
157 E. New England Avenue, #375
Winter Park, FL 32789
EXAMINER
NEWHOUSE, NATHAN JEFFREY
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
02/14/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD W. HORD, SCOTT J. MILLS and GENE GILBERT
____________

Appeal 2012-002046
Application 11/982,696
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI and
BART A. GERSTENBLITH, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Richard W. Hord, Scott J. Mills and Gene Gilbert (Appellants) seek
our review under 35 U.S.C. § 134(a) of the rejection of claims 1 and 4-10.
Claims 2 and 3 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention is directed to a storage tub for a marine vessel
which is to be removably mounted in a marine vessel hatch. The storage tub
is designed to be removably locked to a frame shaped to be fitted to the
hatch opening when the tub is inserted into the hatch frame. Spec. 2.
Independent claim 1, reproduced below, is representative of the
claimed subject matter:
1. A removable storage tub for a marine vessel
comprising:

a hatch frame shaped to be fitted in a hatch opening in a
marine vessel, said hatch frame having a plurality of spaced
downwardly tapered notches spaced around the interior thereof,
each said tapered notch having a pair of downwardly
converging interior sides;

a tub having an open top and a rim portion around said
open top, said tub being shaped to fit into said hatch frame and
having a plurality of tapered attachment lugs on said rim
portion, each said tapered lug having a pair of downwardly
converging exterior sides aligned and sized to engage and
wedge into one said hatch frame tapered notch when said tub is
inserted into said hatch frame to thereby lock said tub to said
hatch frame; whereby a hatch tub is removably mounted in a
marine vessel hatch.

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THE REJECTION
Claims 1 and 4-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Julius (US 5,667,092, issued Sep. 16, 1997) in view of
Christoff (US 5,419,154, issued May 30, 1995).
ANALYSIS
Julius relates to a container and cover assembly where the cover 2 has
a lid 3 hingeably connected to peripheral flange 4. Julius, col. 4, ll. 23-24.
The flange 4 and container 15 are sized and shaped so that the flange 4 and
container can be slidably moved relative to each other, until the flange fits
against the container rim, being held there by lugs. Julius, col. 2, ll. 12-16;
col 4, ll. 57-62.
The Examiner recognizes that Julius discloses various shapes for
notches, and teaches interlocking notches and lugs in other embodiments but
fails to disclose a plurality of spaced downwardly tapered notches with
downwardly converging interior sides or the tapered lugs having
downwardly converging interior sides that wedge into the notches. Ans. 5
(referring to Julius Figs. 4-12). The Examiner thus cites to Christoff, which
discloses a beverage container and mounting bracket for attaching to another
structure such as a golf cart. Christoff, col. 1, ll. 60-64. Beverage container
10 has tapered lug 21 that attaches to notch 44 of mounting bracket 40 to
lock container 10 to mounting bracket 40. Christoff, col. 3, ll. 52-61.
The Examiner’s position is that it would have been obvious to a
person having ordinary skill in the art to modify the attachment members of
Julius to be like the mating notch and lugs taught by Christoff because
Christoff evidences that the use of a dovetail-shaped lug and complementary
shaped notch is known for use in sliding two components together, and that
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such a modification would involve only a change in form or shape of the
mating attachment members. Ans. 5-6, 11.
Appellants contend that neither Julius nor Christoff is for a removable
tub for a marine vessel, and present four principal points asserting there are
multiple limitations of the claimed invention that are not disclosed by either
Julius or Christoff. App. Br. 5-6.
Appellants’ first point is that neither Julius nor Christoff has “[a]
hatch frame shaped to be fitted into the hatch opening in a marine vessel.”
App. Br. 5. The Examiner submits that the flange structure 4 of Julius meets
the claimed “hatch frame” because it is a peripheral flange member that
creates an opening for receiving and supporting tub member 15. Ans. 7-8.
The Examiner notes that Appellants have not provided any further evidence
or pointed to any information in the disclosure that suggests that a “hatch
frame” as used in the current application, is anything other than a support
frame for supporting a tub. Id. at 8.
With respect to the claim limitation “shaped to be fitted into the hatch
opening in a marine vessel,” the Examiner takes the position that frame (i.e.,
flange) member 4 of Julius is shaped, without modification, such that it is
capable of fitting into a marine vessel’s hatch opening. Ans. 8. The claim
limitation does not require the frame to perform any particular function, only
that it be shaped to fit into an unclaimed and unspecified hatch opening. The
basis for the Examiner’s position is that “[t]he ‘hatch opening’ is not a
positively recited structural part of the claimed invention, and only limits the
frame to being capable of performing the claimed action.” Id. Thus, the
Examiner concludes it would be clear to one of ordinary skill in the art that
there exist hatch openings into which the unmodified Julius frame (i.e.,
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flange) 4 could be fitted therethrough. Id. As explained in the Examiner’s
Answer, “[t]here is no structure in Julius that would prevent the peripheral
flange frame from being fitted into a hatch opening that possesses the same
shape.” Id. at 12.
Appellants vaguely respond to the foregoing asserting that “[t]he
Julius . . . patent is not suited for attaching to a marine vessel hatch which
does not require a reusable cover or lid for a container.” App. Br. 7. Their
conclusory statement is not accompanied by any further explanation and
therefore provides little if any support for Appellants’ contention that the
Julius device would not fit into a hatch opening. As noted by the Examiner,
“[i]t would be clear to one of ordinary skill in the art that there exist hatch
openings that are capable of having the Julius frame 4 fit therethrough, a
suggestion that the Appellant[s] ha[ve] not rebutted.” Ans. 8. Accordingly,
in view of the lack of any positive recitation of a hatch opening, including
any language which might impart some structural limitation to the hatch
opening, we agree with the Examiner that the hatch opening could be of a
shape and size that would accommodate the fitting of the Julius flange 4
thereto.
Appellants next argue that neither reference teaches “a hatch frame
having a plurality of spaced downwardly tapered notches spaced around the
interior thereof with each tapered notch having a pair of downwardly
converging interior sides.” App. Br. 5. The Examiner’s position is that the
combination of Julius and Christoff as presented in the rejection would
include this claimed limitation based on the following. Julius “teaches the
use of a plurality of mating attachment members located around the frame
structure 4 in Fig. 9. Christoff teaches the use of a tapered notch 44 on a
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frame member (40), the notch having a pair of downwardly converging sides
(Fig. 2, Col. 3; ll. 56-59).” Ans. 8. Thus, the Examiner concludes that it
would have been obvious to modify Julius in view of Christoff to include a
plurality of notches shaped as disclosed in Christoff, located around the
frame structure, for attaching to complementary-shaped mating lugs placed
on the rim portion of the tub. Id. at 9. As noted by the Examiner,
Appellants have not provided any further evidence (or argument) as to why
the combination as presented would not include this limitation as claimed.
Appellants’ third point is that neither Julius nor Christoff teaches “a
tub shaped to fit into the hatch frame and hatch of a marine vessel nor a
hatch frame having a plurality of tapered attachment lugs on the rim portion
thereof.” App. Br. 6. In response, the Examiner correctly observes that:
(1) Julius shows tub 15 fitted into frame (flange) structure 4, (Julius, Figs. 7-
9); and (2) the limitation “a hatch frame having a plurality of tapered
attachment lugs on the rim portion thereof” is not part of the claimed
invention which recites that the “tapered attachment lugs” are located on the
rim portion of the tub, not the hatch frame. See Ans. 9.
The fourth point raised by Appellants is that neither Julius nor
Christoff teaches “a plurality of attachment lugs each having a pair [of]
downward converging exterior sides aligned and sized to engage and wedge
into one of the hatch frame tapered notches to lock a storage tub into a
marine vessel hatch.” App. Br. 6. In responding, the Examiner initially
notes that the limitation presented in Appellants’ Brief is not part of the
claimed invention. Ans. 9. “There is no limitation wherein the lugs engage
the notches ‘to lock a storage tub into a marine vessel hatch.’” Id. Claim 1
requires that “the lugs be ‘sized to engage and wedge into one said hatch
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frame tapered notch when said tub is inserted into said hatch frame to
thereby lock said tub to said hatch frame’ (emphasis added)” rather than to a
“marine vessel hatch” as argued by Appellants. Id.
The Examiner also maintains that the limitation is met by the
combination of Julius and Christoff where:
Julius clearly teaches a plurality of lugs spaced around a rim
portion of the tub (Figs. 7-8). Christoff teaches a tapered lug
(21) located on a container to be supported on a frame, the
tapered lug having a pair of downwardly converging exterior
sides (Fig. 1, Col. 3; ll. 25-29) which is aligned and sized to
engage and wedge into the tapered notch (44) to thereby lock
the container to the frame member (40, Col. 3; ll. 59-61).
Ans. 10. Thus, according to the Examiner, the combined device would have
a plurality of the lugs located around the rim portion of the tub for mating
with corresponding notches in the frame structure. Id. As noted by the
Examiner, Appellants have not provided any further evidence (or argument)
as to why the combination as presented would not include this limitation as
claimed. Id.
In addition to the foregoing points, Appellants also argue that because
the Julius patent is for custom made lids for specialized containers while the
Christoff patent covers a beverage container that can be mounted to a golf
cart, “[i]t is difficult to see how a person skilled in the art of boat accessories
and boat storage would look to combine such disparate art to produce a
marine vessel hatch attachment covered by the existing hatch cover of the
vessel.” App. Br. 6. According to Appellants, it would be unobvious to a
person of ordinary skill in the art to combine the Julius patent directed to a
reusable lid for a specially designed container with the Christoff patent
directed to a beverage container attachable to a bracket strapped to a golf
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cart, and that such combination “is only done in hindsight of [Appellants’]
disclosure.” Id. at 6-7.
As noted by the Examiner, Appellants’ argument fails to address the
basis of the Examiner’s rejection which is that “the storage tub of Julius,
with the modified lugs as taught by Christoff, results in a device that
structurally and functionally meets the limitations of the claimed ‘removable
storage tub’. The Examiner has nowhere alleged that the resulting device
would be covered by an existing hatch cover of a marine vessel, as this
limitation is not found in the claimed invention.” Ans. 10.
Appellants also contend it would be unobvious to combine Julius and
Christoff and then “adapt them for a totally different purpose for a
removable storage tub for a marine vessel hatch made to provide quick
access for stored items on the deck of a marine vessel.” App. Br. 6-7.
According to Appellants, it would take an entire redesign of Julius to
incorporate the Christoff-type strapped bracket with a custom beverage
container for mounting to a post and “[t]here is no teaching, suggestion or
motivation to combine the references.” Id. at 7.
The Examiner again notes that Appellants’ argument does not address
the actual combination presented by the Examiner which merely calls for a
change in shape of the lugs of the Julius device based on the specific
teachings of Christoff. Ans. 11. Under the Examiner’s rejection, neither of
the referenced devices would be adapted for a totally different purpose.
Instead, based on the cited precedent regarding a change of shape of a
component and the teaching of Christoff that the dovetail-shaped lug is a
known shape for sliding two components together, the Examiner maintains
that it would have been obvious to modify the lugs of Julius as presented in
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the rejection. Ans. 6, 11.
In arguing that the citation of the references is improper, Appellants
contend that citable “prior art must contain some teaching, suggestion or
incentive to combine the individually known elements or features in such a
manner as to result in the claimed invention.” App. Br. 9 (citing Carella v.
Starlight Archery and Pro Line Co., 804 F.2d 135 (Fed. Cir. 1986); see also
id. at 7. The Examiner responds that the rejection utilizes both the
suggestion that the alternate mating structure of Christoff is a known
arrangement and thus substitutable, and also points to case law standing for
the proposition that a change in shape or form may well be within the level
of ordinary skill in the art. Ans. 13 (citing In re Dailey, 357 F.2d 669
(CCPA 1966)).
The decision of the Supreme Court in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007), (decided after Carella) recognized that “[t]he
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion and motivation . . . .” “What matters [in
determining whether the subject matter of a patent claim is obvious] is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” Id. at 419. Thus, the question before us is not whether
the cited art contains a teaching or suggestion to combine, but rather whether
the Examiner provided a reason with a rationale underpinning for the
proposed combination. Here, as discussed above, the Examiner did just that.
Based on the foregoing, the rejection of claim 1 is sustained.
Claims 4-10 depend directly or indirectly from independent claim 1.
Appellants do not offer separate arguments in opposition to the rejection of
these claims. App. Br. 8-10. In view of the foregoing, for the same reason
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the rejection of claim 1 over Julius in view of Christoff is sustained, the
rejection of claims 4-10, which depend from claim 1, is also sustained.

DECISION
The decision of the Examiner to reject claims 1 and 4-10 under 35
U.S.C. § 103(a) as being unpatentable over Julius in view of Christoff 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)(1)(iv).

AFFIRMED

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