Ex Parte HUNG

Patent Trial and Appeal Board

May 23, 2017

13729071 (P.T.A.B. May. 23, 2017)

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.
13/729,071 12/28/2012 CHUN WAI HUNG AMSP0110PUS1 3744
22045 7590 05/25/2017
RROOKS KTTSHMAN P C EXAMINER
1000 TOWN CENTER BURGESS, MARC R
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
05/25/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THE AMES COMPANIES, INC.1
Appeal 2015-006750
Application 13/729,071
Technology Center 3600
Before EDWARD A. BROWN, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1, 3—6, 9, 11—13, 15, and 18—20. Appeal Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Chun Wai Hung is named as the inventor.
Appeal 2015-006750
Application 13/729,071
CLAIMED SUBJECT MATTER
Claims 1 and 13 are independent. Claim 1 is reproduced below.
1. A nesting planter comprising:
a body having a base assembly and a depending
sidewall, said body defining a substantially enclosed
space;
said base assembly including a generally
horizontal planar member and a stand-off feature;
said stand-off feature structured to extend
downwardly from said planar member;
wherein a substantial portion of said body sidewall
is structured to correspond to the body sidewall of
another nesting planter when two nesting planters are
nested.
REJECTIONS
Claims 1, 6, 9, 11, and 12 are rejected under 35 U.S.C. § 102(b) as
anticipated by Mickelson (US 3,949,524, issued Apr. 13, 1976).
Claims 3—5, 13, 15, and 18—20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Mickelson.
ANALYSIS
Claims 1, 6, 9, 11, and 12
as anticipated by Mickelson
Appellant argues 1, 6, 9, 11, and 12 as a group. Appeal Br. 7—14. We
select claim 1 as representative, while claims 6, 9, 11, and 12 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Mickelson discloses a nesting planter as
recited in claim 1 including body 10, sidewall 13, and stand-off feature 15
with a substantial portion of the body sidewall corresponding to the body
sidewall of another nesting planter when nested together. Final Act. 2.
2
Appeal 2015-006750
Application 13/729,071
Appellant argues that the Specification defines “correspond” to mean:
As used herein, “correspond” indicates that two structural
components have a similar cross-sectional shape and are sized
so that one component may be inserted in the other component.
That is, there is a small gap between the components. Thus, an
opening which “corresponds” to a member is sized slightly
larger than the member so that the member may pass through
the opening. A “small gap,” as used herein is proportional to
the size of the planter and the thickness of the planter body.
Generally, a “small gap”' is about the same size as the thickness
of the planter body if the planter body is made from plastic.
Appeal Br. 8 (quoting Spec. 4:14—21).2
Appellant argues that, according to this definition, for a planter to
have “a substantial portion of said body sidewall is structured to correspond
to the body sidewall of another nesting planter when two nesting planters are
nested,” the planters must have a “small gap” between the sidewalls about
the thickness of the planter body, but the Examiner has shown Mickelson’s
planters nest with a considerable gap between the sidewalls. See id. at 8—9.
Appellant also argues that Mickelson fails to disclose planters in which “a
substantial portion of said body sidewall is structured to correspond to [have
a small gap between] the body sidewall of another nesting planter when two
nesting planters are nested.” Id. at 9—10.
2 Appellant also defines the following terms in the Specification:
Further, as used herein, “narrowly correspond” means that the
gap between the two components is between about 0.01 and 0.1 inch
and may be about 0.02 inch.
Further, as used herein, “snugly correspond” means that one or
more points of the two components are in contact. That is, one
“snugly corresponding” component fits within the other component,
but the components contact each other.
Spec. 4:26-30.
3
Appeal 2015-006750
Application 13/729,071
The Examiner argues that Appellant’s definition states: “Generally, a
‘small gap’ is about the same size as the thickness of the planter body if the
planter body is made from plastic.” Ans. 3—5. Therefore, a “small gap” is
qualified by the terms “generally,” “about,” and “if the planter body is made
from plastic.” See id. The Examiner also finds that no criticality is shown
for this feature, and the claims do not require a plastic body. Id. at 4. The
Examiner finds that Mickelson shows a small gap that is generally about the
thickness of the planter body. Id. at 5. The Examiner illustrates this finding
by showing two planters 10 of Figure 2 of Mickelson nested. Final Act. 3.
This illustration is reproduced below together with Figure 2 of Mickelson.
The drawing on the left is Figure 2 of Mickelson as it appears in the
patent. The drawing on the right titled “Figure 2-Mickelson 524 Stacking
Illustration” was prepared by the Examiner to illustrate the finding that
Mickelson’s planter 10 nests with corresponding sidewalls. Final Act. 2-4.
Appellant argues for the first time in the Reply Brief that the drawing
of Figure 2 above on the right is created by the Examiner, and Mickelson
only discloses an image of a single planter, rather than features of a nested
planter. Reply Br. 5. This argument was not in response to an argument
raised in the Answer and thus is untimely. See 37 C.F.R. § 41.41(b)(2).
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Appeal 2015-006750
Application 13/729,071
Appellant also argues that claim 1 and the definition of “correspond”
require the nested planters to have a “small gap” between the sidewalls,
whereas the Examiner’s illustration shows “a considerable gap between the
sidewalls of the nested planters.” Appeal Br. 8—9. Appellant argues that the
gap between the sidewalls of the Examiner’ nested planters in the Figure 2
illustration is approximately three times the thickness of the planter body.
Id. at 9. Thus, it is not a “small gap” “about the same size as the thickness of
the planter body” in the definition of “correspond.” Id.
The Examiner’s finding that Mickelson discloses a planter that nests
with a substantial portion of the body sidewall “structured to correspond to
the body sidewall of another nesting planter when two nesting planters are
nested” is supported by a preponderance of evidence. A “claimed invention
may be anticipated or rendered obvious by a drawing in a reference, whether
the drawing disclosure be accidental or incidental.” In re Meng, 492 F.2d
843, 847 (CCPA 1974). The Examiner reasonably found that Mickelson
discloses planter 10 with a shape that nests with another planter of similar
shape. Mickelson discloses that sidewall 13 of planter 10 “is tapered in a
diverging manner from the bottom 12 upwardly . . . [to] a reverse curl or
lip 14.” Mickelson, 2:52—55. Figure 2 of Mickelson shows the taper as
circular bands of increasing diameter from bottom 12 to top lip 14. The
Examiner found that nesting one planter inside another planter would place
bottom tray 21 of the inner planter against bottom 12 of the outer planter so
the smaller diameter inner tray 21 is spaced from the larger diameter planter
sidewall at bottom 12 of the outer planter. Final Act. 3. Thus, the diameter
of each band of the inserted planter is less than the diameter of the adjacent
band of the outer planter, creating a gap between nested planters. Id. at 3^4.
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Appeal 2015-006750
Application 13/729,071
This nesting satisfies the definition of “correspond” as “two structural
components have a similar cross-sectional shape and are sized so that one
component may be inserted in the other component.” See Spec. 4:14—16.
The definition of “correspond” also states that “there is a small gap
between the components” so “an opening which ‘corresponds’ to a member
is sized slightly larger than the member so that the member may pass
through the opening.” Id. at 4:16—18. Mickelson also meets this definition.
As noted, Appellant’s definition of “correspond” further states that
A “small gap,” as used herein is proportional to the size of the
planter and the thickness of the planter body. Generally, a
“small gap” is about the same size as the thickness of the
planter body if the planter body is made from plastic.
Id. at 4:18—21. Mickelson meets this definition too. The Examiner finds
that Mickelson shows a small gap about the thickness of the planter body.
Ans. 5. Appellant argues that the Examiner’s illustration shows a gap of
approximately three times the thickness of the planter sidewall. Appeal Br.
14. Despite a disagreement over the degree of proportionality, both parties
agree that Mickelson discloses a gap that is “proportional” to planter body.
The Examiner also reasonably found that the rest of this definition of
“small gap” is limited to a plastic planter body, and claim 1 does not recite
this feature. Ans. 3—4, 5. The Examiner found that Mickelson discloses a
“small gap” that is “generally” “about” the same size as the thickness of the
planter body. Id. Appellant does not apprise us of error in the Examiner’s
interpretation that this “small gap” definition is limited to a plastic planter.
See Reply Br. 1—5. Nor has Appellant explained why the gap shown in the
Examiner’s Figure 2 illustration is not “generally” “about” the same size as
the thickness of the planter body. See Appeal Br. 14; Reply Br. 4.
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Appeal 2015-006750
Application 13/729,071
Claim 3, which depends from claim 1, recites that the side wall
includes “a corresponding portion and a narrowly corresponding portion.”
Appellant defines “narrowly corresponding” to mean “the gap between the
two components is between about 0.01 and 0.1 inch and may be about 0.02
inch.” Spec. 4:26—27. Under the doctrine of claim differentiation, claim 1
encompasses corresponding sidewalls with a gap of greater than 0.1 inch.
For all of the foregoing reasons, we determine that the Examiner has
established that Mickelson discloses a nesting planter as recited in claim 1
under a broadest reasonable interpretation. Thus, we sustain the rejection of
claims 1, 6, 9, 11, and 12.
Claims 3—5, 13, 15, and 18—20
unpatentable over Mickelson
Independent claim 13 recites a nesting planter with similar features as
claim 1, except that “a substantial portion of said body sidewall is structured
to narrowly correspond to the body of the sidewall of another nesting planter
when two nesting planters are nested” (emphasis added). The Examiner
relied on Mickelson to disclose all the features of claim 13, including body
sidewalls that “correspond” to one another but do not “narrowly correspond”
as defined in the Specification. Final Act. 6. The Examiner determined that
it would have been obvious ... to size the planters to be
whatever distance apart when nested in order to find the
optimum balance between space savings and ease of separation,
since it has been held that where the general conditions of a
claim are disclosed in the prior art, discovering the optimum or
workable ranges involves only routine skill in the art.
Id. The Examiner found that nesting containers are well-known for a very
long time, and Appellant states an obvious solution to an obvious problem.
Ans. 6.
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Appeal 2015-006750
Application 13/729,071
Appellant argues claims 3—5, 13, 15, and 18—20 as a group. Appeal
Br. 14—15. We select claim 13 as representative, with claims 3—5, 15, and
18—20 standing or falling with claim 13. Appellant argues that a prima facie
case of obviousness based on overlapping ranges can be rebutted by showing
criticality of the claimed range. Appeal Br. 14 (citing MPEP 2144.04 II).
Appellant argues that the Specification notes problems related to nested
planters and discloses that “the thickness of the sidewall, the degree of taper
of the sidewall, and the height of the stand-off feature solve the problems
set forth above.” Id. at 15 (quoting Spec. 3:2—5 (emphasis in original)).
Appellant also argues that “the shape of the planter sidewall, including the
angle thereof, is a critical feature that solves a stated problem” and thus
discovering the optimum or workable ranges through routine skill in the art
is an inappropriate basis for a rejection under 35 U.S.C. § 103(a). Id.
Appellant’s argument regarding overlapping ranges is not persuasive
because the Examiner is not relying on this basis to establish obviousness.
Appellant’s other arguments are not commensurate with the scope of claim
13, and thus are not persuasive. Claim 13 recites a nesting planter with a
body, a base assembly, a depending sidewall, and “a substantial portion of
said body sidewall is structured to narrowly correspond to the body sidewall
of another nesting planter when two nesting planters are nested.” Appeal Br.
17—18 (emphasis added). Thus, even if sidewall thickness, sidewall taper,
and stand-off height were shown to be critical features, claim 13 recites a
sidewall that “narrowly corresponds” to the sidewall of another nesting
planter. Narrowly corresponding sidewalls describe the gap between nested
planters, rather than sidewall thickness, sidewall taper, or stand-off height.
Thus, we sustain the rejection of claims 13, 15, and 18—20.
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Appeal 2015-006750
Application 13/729,071
DECISION
We affirm the rejections of claims 1, 3—6, 9, 11—13, 15, and 18—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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