Ex Parte Hyp et al

Patent Trial and Appeal Board

Dec 9, 2016

11505503 (P.T.A.B. Dec. 9, 2016)

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.
11/505,503 08/17/2006 Eric D. Hyp 288903-00384 5761
22045 7590 12/13/2016
RROOKS KTTSHMAN P C EXAMINER
1000 TOWN CENTER PERREAULT, ANDREW D
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
12/13/2016 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 ERIC D. HYP and WILLIAM J. LOGAN
Appeal 2014-009005
Application 11/505,503
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
GEORGE R. HOSKINS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Eric D. Hyp and William J. Logan (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 2—4, 6—13,
and 15—18, which are the only pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2014-009005
Application 11/505,503
THE CLAIMED SUBJECT MATTER
Claims 2 and 4, reproduced below from Appellants’ corrected Claims
Appendix,1 are illustrative of the claimed subject matter.
2. A carton for a first wheelbarrow kit, said wheelbarrow kit
having a hopper, a wheel, a frame assembly, and coupling device,
said hopper having a generally planar rim portion and a bucket
portion, said bucket portion extending out of the plane of said
rim portion, said bucket portion being generally tapered, said
carton structured to be stacked on a similar carton enclosing
second wheelbarrow kit and to engage the hopper from the
second wheelbarrow kit, said carton comprising:
a first generally planar member having a first opening and
a perimeter;
a second generally planar member having a second
opening and a perimeter;
a sidewall extending from said first planar member
perimeter to said second planar member perimeter;
wherein said first planar member, said second planar
member, and said sidewall define an enclosed carton space;
wherein said enclosed space is so dimensioned to allow a
first wheelbarrow kit hopper to be disposed therein with said
hopper rim portion within said enclosed space and with said
first wheelbarrow kit hopper bucket portion extending through
said first opening[,]
1 On August 20, 2014, Appellants submitted a Supplemental Brief to provide
a corrected Claims Appendix. Suppl. Br. 1. In deciding this appeal, we
consider only the corrected Claims Appendix provided with the
Supplemental Brief. Although the remaining sections of the Supplemental
Brief appear to be identical to the corresponding sections of the Appeal Brief
(filed Apr. 17, 2014), we do not consider these sections of the Supplemental
Brief, but, rather, base our decision on these sections of the Appeal Brief.
Any references to the “Appeal Brief’ or “Appeal Br.” in this decision are to
the Appeal Brief (not the Supplemental Brief), and any references to the
“Claims Appendix” or “Claims App.” in this decision are to the Claims
Appendix provided with the Supplemental Brief.
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said first opening is so dimensioned to conform to the
shape of a hopper bucket portion disposed in said enclosed space
and at said first planar member; and
said second opening is so dimensioned to conform to the
shape of a second wheelbarrow kit hopper bucket portion located
in another carton disposed below said carton and at said
second planar member.
4. A carton for a wheelbarrow kit, said wheelbarrow kit having
a hopper, a wheel, a frame assembly, and coupling device, said
hopper having a generally planar rim portion and a bucket
portion, said bucket portion extending out of the plane of said
rim portion, wherein said frame assembly includes two elongated
handle members, said handles having a length greater than said
hopper, said carton comprising:
a first generally planar member having a first opening and
a perimeter;
a second generally planar member having a second
opening and a perimeter;
a sidewall extending from said first planar member
perimeter to said second planar member perimeter;
wherein said first planar member, said second planar
member, and said sidewall define an enclosed carton space;
wherein said hopper may be disposed with said hopper rim
portion within said enclosed space and with said hopper bucket
portion extending through said first opening;
and wherein said enclosed space is so dimensioned to
enclose said wheelbarrow handle members, wheel, frame
assembly and coupling device; and
said enclosed space [is] so dimensioned to allow said
handle members to be disposed immediately adjacent to said
hopper rim portion.
REJECTIONS
I. Claims 2-4, 6—13, and 15—18 stand rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite.
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II. Claims 2-4 and 6—11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Patz (US 2005/0072704 Al, pub. Apr. 7, 2005)
and Lynch (US 3,620,364, iss. Nov. 16, 1971).
III. Claims 12, 13, and 15—18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Patz, Lynch, and Praetorius (US 3,315,875,
iss. Apr. 25, 1967).2
DISCUSSION
Rejection I—Indefiniteness
The basis of the indefmiteness rejection is that independent claims 2,
4, and 6 recite several limitations as to the dimensions of the claimed
carton(s) “by reference to the size or shape of unclaimed elements of a
wheelbarrow kit, the dimensions and shapes of which unclaimed elements
are not defined.” Ans. 2. Thus, according to the rejection, these recitations
fail to delineate any dimensional requirement for the carton(s) despite
purporting to do so. Id. at 3; see Ex parte Miyazaki, 89 USPQ2d 1207, 1212
(BPAI 2008) (precedential) (holding indefinite claims defining the height of
a paper feeding unit relative to a person whose position relative to the
claimed printer was not well-defined in the claim, because the claimed
height of the paper feeding unit did not present a structural limitation on the
height at all). We understand the rejection to be premised, in part, on an
2 Although the Examiner does not include Lynch in the statement of this
rejection, the Examiner’s rejection is based explicitly on “Patz ... as applied
to claim[] 11 above.” Ans. 12; Final Act. 13. As Patz is applied in
combination with Lynch in rejecting claim 11, the rejection of claims 12, 13,
and 15—18, thus, also incorporates the combination of Patz and Lynch as
applied to claim 11.
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admission made by Appellants in their briefing in the prior appeal (Appeal
2011-011941) that “the wheelbarrow’s configuration, dimensions, etc. are
not defined” and that the “hopper may be any length, width, or depth and
with any degree of taper in the bucket portion of the hopper.”3 See Ans. 2
(stating, “As admitted by [Appellants], the wheelbarrow’s configuration,
dimensions, etc. are not defined.”). Appellants now clarity that statement by
explaining that “[t]he statement that ‘there is a nearly infinite number of
specific dimensions, or sets of specific dimensions’ means that there can be
almost any number of incremental changes to the size and shape of a
wheelbarrow, so long as the wheelbarrow is of a reasonable size.” Appeal
Br. 12. Pointing to language on pages 1—5 of their Specification, as well as
several dictionary definitions of “wheelbarrow,” Appellants argue that one
of ordinary skill in the art would understand from the description therein that
a wheelbarrow for which the claimed carton or carton system is dimensioned
is “sized so that a human would be able to lift the load in the wheelbarrow”
and is “small enough to be moved by a person ... to transport small loads.”
Id. at 14—15. Further, Appellants suggest that one of ordinary skill in the art
would understand from their Specification that a wheelbarrow hopper is
“sized to accommodate six gallons up to fifty-five gallons.” Id. at 14.
After reviewing Appellants’ explanatory commentary in light of the
language on pages 1—5 of their Specification, we conclude that persons
having ordinary skill in the art would understand that the claimed carton and
carton system is dimensioned and shaped for use with a wheelbarrow kit
3 The statements taken as such admission are reproduced on page 4 of the
prior decision of this Board in Ex parte Hyp, Appeal 2011-011941 (PTAB
Sept. 26, 2013).
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having a hopper sized so that a human would be able to lift the load in the
wheelbarrow, which, consistent with the Specification, means a hopper
“structured to hold up to 55 gallons of fluid.” Spec. 1,11. 24—25.
Notwithstanding Appellants’ assertions implying a lower limit of a 6 gallon
capacity for the hopper, we discern no definition of such a lower limit. The
reference in the Specification to “a small toy-like wheelbarrow having a 6
gallon hopper” (Spec. 5,11. 12—13) indicates cartons and carton systems
dimensioned to package kits for smaller versions of wheelbarrows sized for
use as toys are contemplated to be encompassed within the scope of
Appellants’ claimed invention. However, as Appellants’ Specification refers
to the small toy-like wheelbarrow with a 6 gallon hopper as an “example”
only and does not provide any guidance as to what the dimensional limits of
such a toy-like wheelbarrow construct might be, we decline to construe the
6 gallon example as a lower limit to the size of a wheelbarrow for which the
claimed carton or carton system is dimensioned. Accordingly, we conclude
that a person having ordinary skill in the art would understand that the carton
and carton system of Appellants’ claims is dimensioned for use with
wheelbarrow kits having the elements recited in the preambles of claims 2,
4, and 6 (i.e., a wheel, a frame assembly, a coupling device, and a hopper
having a generally planar rim portion and a bucket portion), wherein the
bucket portion has a capacity no greater than 55 gallons. Further, one
having ordinary skill in the art would understand that the first and second
openings of the cartons of claims 2 and 6 are dimensioned, relative to one
another, to conform, as claimed, and as discussed more fully below, to the
shape of tapered hopper bucket portions, as referred to in the preambles of
claims 2 and 6. Accordingly, we determine that the definition in the claims
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of dimensioning of various claimed elements of the claimed cartons with
reference to the unclaimed wheelbarrow components does not render the
claims indefinite.
For the above reasons, we do not sustain the rejection of claims 2—4,
6—13, and 15—18 under 35 U.S.C. § 112, second paragraph.
Rejection II—Obviousness based on Patz and Lynch
Claims 2, 3, and 6—11:
Independent claim 2 requires the first opening, in the first generally
planar member, to be “so dimensioned to conform to the shape of a hopper
bucket portion disposed in said enclosed space and at said first planar
member” and the second opening, in the second generally planar member, to
be “so dimensioned to conform to the shape of a second wheelbarrow kit
hopper bucket portion located in another carton disposed below said carton
and at said second planar member.” Claims App. 30. Independent claim 6
contains substantially the same limitations. See Claims App. 31—32.
Appellants’ Specification defines “an opening that ‘conforms to the
shape of of another component” as an opening that “has the same cross-
sectional shape as the component, but is slightly larger so that the opening
allows the component to pass therethrough while engaging the component in
a snug manner.” Spec. 3,11. 28—31. This definition, at least at first blush,
appears internally inconsistent, in that an opening that has the same, but
slightly larger, cross-sectional shape as a component seemingly would not
engage the component in a snug manner, but, instead, would leave a gap
between the perimeter of the opening and the component. However, when
viewed in the context of a carton having an opening intended to receive
therein a wheelbarrow hopper having a generally tapered bucket portion, a
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person having ordinary skill in the art would understand the “conform to the
shape” language to mean that the opening is slightly larger than the cross-
section of the part of the tapered bucket portion intended to pass through the
opening, to permit such part to pass therethrough, but sufficiently small to
engage a larger cross-section of the tapered bucket portion in a snug manner.
See id. at 4,1. 29-5,1. 2 (“The second opening 24 (Fig. 3) also conforms to
the shape of a hopper bucket portion 9, but... the second opening 24 may
be slightly smaller than the first opening 20 as the second opening 24 is
structured to engage a hopper bucket portion 9 of a hopper 2 disposed in
another carton 10.”).4 As further explained in Appellants’ Specification, “by
having the first carton second opening 24A fit snugly against the second
hopper bucket portion 9B, the first carton 10A resists sliding longitudinally
or laterally relative to the second carton 10B.” Id. at 7,11. 5—7.
Appellants point out (Appeal Br. 23), correctly, that Patz discloses
that, “[a]s shown in FIG. 4, by having both the top and bottom of the frame
formed with aligned openings of the same dimension, multiple packs may be
readily stacked one atop another with multiple diffusers partially located
therein.” Patz, para. 15 (boldface omitted). Appellants assert that this
disclosure in Patz “specifically teaches away from openings having different
sizes.” Appeal Br. 23.
As illustrated by analogy to the annotated reproduction of Patz’s
Figure 3 on page 22 of the Appeal Brief, with the openings in the top and
bottom of the carton having the same dimensions, when the cartons
4 Notably, Appellants’ Figure 4 is deficient in that it does not depict separate
and discernible first and second planar members for each carton and rim
portions for each bucket portion of each wheelbarrow. Thus, relative sizes
of first and second openings cannot be discerned from Figure 4.
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containing wheelbarrow kits are stacked, the opening in the top planar
member of a carton engages the tapered bucket portion of a wheelbarrow
hopper disposed in that carton in a snug manner. However, neither opening
in that carton engages in a snug manner (i.e., in a manner that resists any
lateral or longitudinal sliding) the tapered bucket portion of a similar
wheelbarrow kit located in another carton disposed below that carton. In
order to do so, as explained by Appellants’ Specification, the second
opening would need to be smaller than the first opening. See Spec. 4,1. 29-
5,1. 2; 6,1. 28-7,1. 2.
We do not agree with Appellants that Patz’s teaching of first and
second openings of the same dimension teaches away from first and second
openings having different dimensions. Prior art does not teach away from
claimed subject matter merely by disclosing a different solution to a similar
problem unless the prior art also criticizes, discredits or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). However, the Examiner does not articulate any reason why
a person having ordinary skill in the art, in adapting the geometry of Patz’s
cardboard frame, would have been prompted to provide openings in the top
and bottom planar members having different dimensions, instead of the same
dimensions as taught by Patz, so that the opening in one of said planar
members conforms to the shape of the bucket portion of a wheelbarrow
hopper disposed in the enclosed space of the carton and the opening in the
other of said planar members conforms to the shape of the bucket portion of
a wheelbarrow hopper located in a carton stacked below the carton. See
Ans. 4—6, 8—10, 19—21. Thus, the Examiner fails to establish that the subject
matter of independent claims 2 and 6, and their dependent claims 3 and 7—
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11, would have been obvious. Accordingly, we do not sustain the rejection
of claims 2, 3, and 6—11 under 35 U.S.C. § 103(a) as unpatentable over Patz
and Lynch.
Claim 4:
Independent claim 4 does not contain the aforementioned limitations
with respect to the first and second openings being dimensioned to conform
to the shapes of the bucket portions of wheelbarrow hoppers contained in the
carton and in a carton stacked below the carton, respectively. See Claims
App. 30-31. Thus, the arguments directed to these limitations are not
germane to the rejection of claim 4.
Appellants contend that “as Lynch fails to disclose a package for a
wheelbarrow tray, it is unclear how any combination of Patz and Lynch
would prompt one skilled in the art to alter the Patz package.” Appeal Br.
27 (italics omitted); see also Reply Br. 9 (italics omitted) (emphasizing that
Lynch discloses stacking “naked, i.e., unpackaged, wheelbarrow trays”).
This argument is unavailing because the Examiner does not rely on Lynch
for a teaching of a wheelbarrow tray package. Rather, the Examiner relies
on Patz as disclosing a package for products that can be stacked (Ans. 6—7)
and on Lynch as “evidence that stacking the hopper portion of a
wheelbarrow during shipping was known in the art” (id. at 7). In view of
these teachings, the Examiner determines it would have been obvious to
adapt the geometry of Patz’s carton “to conform to the shape of whatever
product they wished to protect,” such as “wheelbarrows stacked one on
another for transport, also shown by Patz, or display in order to prevent
damage such as scratching the paint of the wheelbarrow.” Id.
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Patz teaches that the principles of the light diffuser carton “may
obviously be applied to other bulbous products of a cup or bowl shape such
as bowls, pots, reflectors, radio wave antennas and the like.” Patz, para. 16.
As wheelbarrow trays or hoppers are generally bulbous or bowl-shaped, and,
as evidenced by Lynch, are known to be stacked for storage, one of ordinary
skill in the art would have immediately appreciated the applicability of the
teachings of Patz’s carton to wheelbarrows. Moreover, Patz emphasizes
that, although providing less protection for the product than a fully encasing
box, the disclosed carton does protect the rim, while rendering most of the
product visible and permitting stacking in a compact, space saving manner.
Id., paras. 5, 14, 15. Most notably, as illustrated in Figure 4 of Patz, the
cartons of Patz protect the regions of the bulbous or bowl-shaped products
that would otherwise contact one another when stacked. Thus, the
Examiner’s articulated reason for the proposed modification has rational
underpinnings.
Claim 4 requires that the enclosed space defined by the first planar
member, the second planar member, and the sidewall of the carton be “so
dimensioned to enclose said wheelbarrow handle members, wheel, frame
assembly and coupling device” and “to allow said handle members to be
disposed immediately adjacent to said hopper rim portion.” Claims App.
30-31. Appellants point out that Patz discloses a package “for a single
element, the light diffuser,” and, thus, the package is not “structured to
enclose additional elements.” Appeal Br. 23. Appellants note, additionally,
that Lynch teaches packaging all wheelbarrow assembly components, except
the tray, in a wheelbarrow parts package, and teaches shipping and storing
the trays “in a naked, stacked configuration, while the other components are
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packaged together,” which, Appellants assert, is “as is known in common
practice.” Id. (citing Lynch, Abstract; col. 1,11. 9-13; col. 2,11. 12—16).
Appellants’ observations do not identify error in the Examiner’s
rejection, which does not rely on either Patz or Lynch as teaching packaging
of the additional wheelbarrow assembly components (handle members,
wheel, frame assembly, and coupling device) with the wheelbarrow hopper
(i.e., tray). Rather, the Examiner reasons that it would have been obvious to
modify Patz’s carton by “adapting the size of the carton to enclose the other
elements of the wheelbarrow kit because a change in shape was recognized
as being within the level of ordinary skill in the art, absent any showing of
unexpected results.” Ans. 7.
Lynch elects to stack the wheelbarrow trays by themselves for storage
and shipment, and to package the remaining wheelbarrow assembly
components, excluding the trays, together in a separate wheelbarrow parts
package. Lynch, col. 1,11. 4—13; col. 2,11. 5—15. However, as it is well
understood that the wheelbarrow assembly parts and the wheelbarrow tray
will be assembled together to form an assembled wheelbarrow, we agree
with the Examiner that it would have been obvious to package the
wheelbarrow assembly parts (handle members, wheel, frame assembly, and
coupling device) together with the wheelbarrow tray in a single package for
the convenience of having all required components of the assembly together.
The packaging together of a complete set of kit components required to
assemble a usable device is a well-established and common practice, and, as
such, modifying Patz’s package to accommodate all wheelbarrow kit
components involves no innovation, yields no unexpected results in
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comparison to the packaging concept taught by Lynch, and was well within
the technical grasp of a person of ordinary skill in the art.
For the above reasons, Appellants fail to apprise us of error in the
rejection of claim 4. Accordingly, we sustain the rejection of claim 4 under
35 U.S.C. § 103(a) as unpatentable over Patz and Lynch.
Rejection III—Obviousness based on Patz, Lynch, and Praetorius
Claims 12, 13, and 15—18 all depend, indirectly, from claim 6, and,
thus, incorporate the limitations of claim 6 directed to “said first opening
[being] so dimensioned to conform to the shape of said hopper bucket
portion disposed within the associated enclosed space” and “said second
opening [being] so dimensioned to conform to the shape of said hopper
bucket portion disposed in a lower carton.” Claims App. 31—32 and 33—34.
In rejecting claims 12, 13, and 15—18, the Examiner determines it would
have been obvious, in view of the teachings of Praetorius, to place the
stacked cartons of Patz (as modified to accommodate wheelbarrow kits) in
an outer carton. Ans. 13—14. The Examiner does not articulate any
additional findings or reasoning that would remedy the deficiency in the
combination of Patz and Lynch, discussed above, vis-a-vis the
aforementioned limitations in claim 6 directed to the dimensioning of the
first and second openings. Accordingly, we do not sustain the rejection of
claims 12, 13, and 15—18 under 35 U.S.C. § 103(a) as unpatentable over
Patz, Lynch, and Praetorius.
DECISION
The Examiner’s decision rejecting claims 2—4, 6—13, and 15—18 under
35 U.S.C. § 112, second paragraph is REVERSED.
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The Examiner’s decision rejecting claims 2-4, 6—13, and 15—18 under
35 U.S.C. § 103(a) is AFFIRMED as to claim 4 and REVERSED as to
claims 2, 3, 6—13, and 15—18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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