Ex Parte JenkinsDownload PDFBoard of Patent Appeals and InterferencesSep 30, 200911204671 (B.P.A.I. Sep. 30, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _________________ Ex parte LLOYD J. JENKINS Appellant _________________ Appeal 2009-005028 Application 11/204,671 Technology Center 3600 _________________ Decided: September 30, 2009 _________________ Before JAMESON LEE, SALLY GARDNER LANE and SALLY C. MEDLEY, Administrative Patent Judges. LANE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-005028 Application 11/204,671 2 I. STATEMENT OF THE CASE The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of Appellant’s claims 1 and 3- 21. Claim 2 has been cancelled. (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part and enter new grounds of rejection. Appellant’s application is directed to a carrying case for fishing gear. (Spec. 2). The Examiner relied on the following references: Name Number Date Sauder 5,137,319 August 11, 1992 McAfee 5,271,520 December 21, 1993 Zielinski 5,678,348 October 21, 1997 Fraser 6,883,268 April 26, 2005 The Examiner rejected claims 1, 3, 4, 6, and 7 under 35 U.S.C. § 102(e) over Fraser. The Examiner also rejected the following claims under 35 U.S.C. § 103(a): − claims 5, 8, and 21 over Fraser and McAfee; − claims 9 and 10 over Fraser and either Zielinski or Sauder; − claims 11-17 over Fraser and McAfee; and − claims 18-20 over Fraser, McAfee, and either Zielinski or Sauder. Appellant argued separately for the patentability of claims 12 and 21. We focus on claims 1, 5, 9, 11, 12, 18, and 21. 37 C.F.R. § 1.75(i). We have reversed the Examiner’s rejection and entered a new grounds rejection as to those claims that require a storage space, i.e., claims 1, 3-10, Appeal 2009-005028 Application 11/204,671 3 12, 14, and 21. We have affirmed the Examiner’s rejection as to those claims that do not require a storage space, i.e. the remaining claims. II. PRINCIPLES OF LAW “Anticipation requires a showing that each limitation of a claim is found in a single reference, either expressly or inherently.” Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006). “One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419-20 (2007). “During examination, ‘claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted). When construing a claim, we evaluate the meaning of a term or phrase in the context of the claim. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“the context in which a term is used in the asserted claim can be highly instructive.”). III. FINDINGS OF FACT AND ANALYSIS Findings of Fact Regarding Claim 1 and Fraser 1. Appellant’s claim 1 recites: A carrying case for transporting a user's fishing equipment comprising: Appeal 2009-005028 Application 11/204,671 4 a. an external container having a solid base, an open top, and a wall extending from said solid base to said open top, said wall having an inside face and an outside face; b. an insert configured to insert into said open top of said external container, said insert further including i. a lid, said lid having a top, a bottom, a perimeter and a cutout for receiving a shaft of a fishing rod; ii. a base, said base having a top and a bottom; and iii. a support, said support attaching said lid to said base of said insert; and c. a storage space, said storage space bounded by said base of said external container, said base of said insert, and said wall of said external container when said insert is situated within said external container. (App. Br., Claims App’x). 2. Figure 2 of Appellant’s specification is reproduced below. Appeal 2009-005028 Application 11/204,671 5 Figure 2 depicts an exploded view of an embodiment of the claimed carrying case, with an external container (12), an insert (14), a lid (26), a base (28), and a support (36). (Spec. 4). 3. Figure 4 of Appellant’s specification is reproduced below. Figure 4 depicts a cut-away view of the carrying case, with a storage space (42) and a base (40). (Spec. 4). 4. Appellant’s specification states that the storage space can hold fishing tackle and knives. (Spec. 6). 5. Fraser teaches a “bucket tackle system” for organizing, transporting, and storing fishing rods and equipment. (Fraser col. 1, ll. 13- 15). Appeal 2009-005028 Application 11/204,671 6 6. Figure 1 of Fraser is reproduced below. Figure 1 depicts the “bucket tackle system” showing a fishing rod and reel (11) inserted in a container or bucket (12) with a lid (54), and a base (14). (Fraser col. 4, ll. 17-37; col. 5, l. 45-46). Appeal 2009-005028 Application 11/204,671 7 7. Figure 3 of Fraser is reproduced below. Figure 3 shows an exploded view of the bucket tackle system with an insert (24) that slides into the open end (18) and has end caps (28) attached to a disc (26) with rivets. (Fraser col. 4, ll. 56-60, and col. 5, ll. 9-11). Analysis Regarding the Rejection of Claim 1 under 35 U.S.C. § 102(e) over Fraser Appellant’s claim 1 recites a carrying case with an external container, an insert with a cutout for receiving a fishing rod, and a storage space. (FF 1). We construe the claimed storage space as being bounded separately by each of the base of the external container, the base of the insert, and the wall of the external container. The issue is whether Fraser teaches a storage space, as claimed. According to the Examiner, Fraser teaches a storage space defined by the base of the container (element 14), the base of the insert (element 26), Appeal 2009-005028 Application 11/204,671 8 and the wall of the container (element 12), which is created by the thickness of the rivet heads that extend through the base. (Ans. 12; see FF 7). Fraser does not teach a storage space as claimed. Although Appellant’s claim 1 does not include express limitations on the size or dimensions of the storage space claimed, Appellant’s specification explains that the storage space is provided for holding fishing tackle and knives (FF 4). The claims are directed to “[a] carrying case for transporting a user's fishing equipment.” In the context of Appellant’s specification and claims (which are part of the specification, see Merck & Co., Inc. v. Teva Pharm. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003)), it is not reasonable to construe “storage space” as including a space defined by the thickness of a rivet head. Thus, though Fraser teaches an external container and an insert for holding fishing rods, it does not anticipate the claimed carrying case because it does not teach a storage space. See Atofina, 441 F.3d at 999. The Examiner erred in rejecting claims 1, 3, 4, 6, and 7 under 35 U.S.C. § 102(e). The Examiner also erred in rejecting claims 5, 8, and 21, which ultimately depend on claim 1, and claims 12 and 14, under 35 U.S.C. § 103 over Fraser and McAfee because the Examiner relied on Fraser as teaching a storage space, not McAfee. Finally, the Examiner erred in rejecting claims 9 and 10, which ultimately depend on claim 1, under 35 U.S.C. § 103(a) over Fraser and either Zielinski or Sauder because neither Zielinski nor Sauder were relied upon as teaching a storage space as claimed. Appeal 2009-005028 Application 11/204,671 9 Findings of Fact Regarding McAfee 8. Figure 1 of McAfee is reproduced below. Figure 1 depicts a fishing pail with trays or inserts (34 and 50), which have legs (36 and 52) and a handle (42) for removal of the inserts within the pail (12). (McAfee col. 5, ll. 24-40). 9. The fishing pail of McAfee has a storage space that is bounded by the base of the pail (12), the base of the insert (50), and the wall of the pail (12) when the insert is placed in the pail. McAfee also provides that the length of the legs (36 and 52) is longer than the length of the containers (68), thus allowing for storage in the space below the containers. (See McAfee col. 4, ll. 22-26). 10. McAfee teaches that fishing as a sport involves lots of equipment, which needs to be stored. (McAfee col. 1, ll. 18-29). Appeal 2009-005028 Application 11/204,671 10 New Grounds of Rejection for Claims 1, 3-10, 12, 14, and 21 under 35 U.S.C. § 103(a) over Fraser and McAfee McAfee teaches a fishing pail that includes a storage space formed by trays positioned inside a pail or container. (FFs 8-9). The bottom of the tray, which is an insert inside the pail, remains above the bottom of the pail when the tray is inserted in the pail because legs prevent it from reaching the bottom of the pail. (FF 9). This space can be significant, for example, large enough to hold fishing tackles or knives. Thus, McAfee teaches a storage space as claimed. Those of skill in the art would have had reason to modify the bucket tackle system of Fraser, according to the fishing pail of McAfee to include legs that would prevent the insert from reaching the bottom of the bucket because McAfee teaches there was a need in the art to store large amounts of fishing hardware (FF 10). Thus, while Fraser alone does not teach a storage space in a carrying case recited in Appellant’s claim 1, the combination of Fraser and McAfee renders the carrying case obvious, taking into account the Examiner’s findings in regard to the other elements of claim 1. See KSR, 550 US at 419- 20. Accordingly, we enter a new grounds of rejection for claims 1, 3, 4, 6, and 7 under 35 U.S.C. § 103(a) given that the combination of Fraser and McAfee teach the claimed storage space. We also enter a new ground of rejection for claims 5, 8-10, 12, 14, and 21 for the same reasons advanced by the Examiner in the final rejection of the claims except that the storage space element is taught by the combination of Fraser and McAfee and not Fraser alone. Appeal 2009-005028 Application 11/204,671 11 Findings of Fact Regarding Claim 11 11. Appellant’s claim 11 recites: A carrying case for transporting a user's fishing equipment comprising: a. an external container having a solid base, an open top, and a wall extending from said solid base to said open top, said wall having an inside face and an outside face; b. an insert configured to insert into said open top of said external container, said insert further including i. a lid, said lid having a top, a bottom, a perimeter and a cutout for receiving a shaft of a fishing rod; ii. a base, said base having a top and a bottom; and iii. a support, said support attaching said lid to said base of said insert; and c. a detachable attachment means for removably attaching said insert to said external container when said insert is insertedly situated within said external container, said detachable attachment means positionable in an attached state and a detached state; d. a handle, said handle attached to said lid of said insert; and e. wherein when said detachable attachment means is in said attached state, said external container and said insert may be transported together by lifting said handle, and wherein when said detachable attachment means is in said detached state, said insert may be lifted out of said external container by said lifting handle. (App. Br., Claims App’x). 12. The fishing pail of McAfee has handles (42 and 56) on the inserts (34 and 50), which allow the inserts to be separated from the pail (12). (McAfee col. 5, ll. 30-33 and ll. 39-42). 13. Fraser teaches that the bucket tackle system has a flange (58) on the cover (54), which can engage the lip portion (18) of the bucket (12) by Appeal 2009-005028 Application 11/204,671 12 snapping the cover over the lip, and hold the cover in place. (Fraser col. 6, ll. 6-9; Fig. 3). Analysis of Rejection of Claim 11 under 35 U.S.C. § 103(a) over Fraser and McAfee Claims 11 does not require a storage space but does require a handle attached to the lid of the insert. (FF 11). McAfee teaches handles that allow inserts to be lifted out of the pail. (FF 12). Those of skill in the art would have found it obvious to include a handle on a carrying case for easy removal of the insert holding fishing rods. Even though the lid of the system taught by Fraser is not attached to the insert, as Appellant argued (see App Br. 9-10), we are not persuaded that those in the art would not have modified the system of Fraser to include an attached lid with a handle as taught in McAfee for easy removal of the insert. (FF 8). Regarding the element of an attachment means in claim 11 (FF 11), Fraser teaches that a flange holds the lip of the bucket to secure the insert to the bucket (FF 13). Appellant argues that the lip would be insufficient to attach the bucket if it were held by a handle at the top because of weight of the container. This argument is not persuasive because it is not supported by sufficient evidence. (App. Br. 11). “Argument of counsel cannot take the place of evidence lacking in the record.” Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Appeal 2009-005028 Application 11/204,671 13 Findings of Fact Regarding Zielinski and Sauder 14. Appellant’s claim 18 recites: The carrying case of claim 11, said cutout positioned along said perimeter of said lid and forming an opening in said perimeter, said opening having a first side and a second side. (App. Br., Claims App’x). 15. Figure 1 of Zielinski is reproduced below. Figure 1 depicts a fishing rod organizer with fishing rods (32) positioned slots (18, 20, 22, 24, 26, 28, and 30), wherein the slots are formed in the top of the organizer. (Zielinski col. 3, ll. 12-18). 16. Zielinski teaches that its fishing rod organizer is less bulky that other holders, while still allowing for organization and transport of the rods. (Zielinski col. 1, ll. 18-19 and ll. 44-47). Appeal 2009-005028 Application 11/204,671 14 17. Figure 1 of Sauder is reproduced below. Figure 1 depicts a fishing rod and reel holder (10) with an upper end unit (20) having a series of radial slots (22) for receiving a fishing rod, a base (11) with a top and a bottom, and a tubular post (17) that acts as a support. (Sauder col. 1, ll. 63-68). Analysis of Rejection of Claim 18 under 35 U.S.C. § 103(a) over Fraser, McAfee, and Zielinski or Sauder Appellant’s claim 18 requires the cutout in the lid of the carrying case, which receives the fishing rod, to be positioned along said perimeter of the Appeal 2009-005028 Application 11/204,671 15 lid and to form an opening in the perimeter of the lid. (FF 14). Zielinski and Sauder teach fishing rod carriers that have cutouts in the perimeter of the top portion, forming an opening in the perimeter of the top portion. (FFs 15 and 17). This design would be less bulky than the holders described in Fraser (FF 16), providing those in the art with a reason to have modified the carrier of Fraser. (See App. Br. 13). Appellant argues that cutouts would not allow the lid of Fraser to attach to the container, because the flange would be interrupted (App. Br. 14). However, Appellant has not directed us to evidence sufficient to show that flanges on only parts of the lid would not allow for sufficient attachment. See Meitzner 549 F.2d at 782. IV. ORDER Upon consideration of the record and for the reasons given, the rejection of claims 1, 3, 4, 6, and 7 under 35 U.S.C. § 102(e) over Fraser is REVERSED; the rejection of claims 5, 8, 12, 14, and 21 under 35 U.S.C. § 103(a) over Fraser and McAfee is REVERSED; the rejection of claims 9 and 10 under 35 U.S.C. § 103(a) over Fraser and either Zielinski or Sauder is REVERSED; the rejection of claims 11, 13, and 15-17 under 35 U.S.C. § 103(a) over Fraser and McAfee is AFFIRMED; and the rejection of claims 18-20 under 35 U.S.C. § 103(a) over Fraser, McAfee, and either Zielinski or Sauder is AFFIRMED. FURTHER ORDERED that no time period for taking any subsequent action in connection with the appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2009-005028 Application 11/204,671 16 We enter a new ground of rejection for claims 1, 3, 4, 6, and 7 under 35 U.S.C. § 103(a) over Fraser and McAfee; for claims 5, 8, 12, 14, and 21 under 35 U.S.C. § 103(a) Fraser and McAfee; and for claims 9 and 10 under 35 U.S.C. § 103(a) over Fraser, McAfee, and either Zielinski or Sauder for the reasons set forth herein. 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new grounds of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of proceedings as to the rejected claims: (1) Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner; or (2) Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record. AFFIRMED-IN-PART; NEW GROUNDS ENTERED 37 C.F.R. § 41.50(b) KMF Appeal 2009-005028 Application 11/204,671 17 John Wiley Horton Pennington, Moore, Wilkinson, Bell & Dunbar, P.A. 215 S. Monroe St., 2nd Floor Tallahassee, FL 32301 Appeal 2009-005028 Application 11/204,671 1 LEE, Administrative Patent Judge, Concurring. I do not agree with the majority’s interpretation of this claim language in claim 1: “said storage space bounded by said base of said external container, said base of said insert, and said wall of said external container when said insert is situated within said external container.” The term “bound” can mean “confine” or “enclose.” Merriam-Webster’s Collegiate Dictionary 135 (10th ed. 1999). Construing the phrase quoted above as requiring that each of the three identified surfaces forms a separate border of the storage space is not the broadest reasonable interpretation consistent with the specification. All that is required is that the identified surfaces collectively confine or enclose the storage space. Two of the surfaces can overlap and collectively form a single physical border. It is not necessary that each surface constitutes an immediate border directly contacting the storage space. If Appellant desired that very restrictive limitation, then the broad term “bounded by” should not have been used. Under either interpretation, the Examiner’s rejection of claims 1, 3-10, 12, 14, and 21 must be reversed because as the majority opinion has explained the storage space identified by the Examiner in Fraser is not a storage space. However, I would enter a new ground of rejection of claim 1 under 35 U.S.C. § 102 as anticipated by Fraser. Fraser discloses a bucket 12 with an insert assembly 24. The bucket has a bottom base 14, and the insert has a bottom circular disc 26. The bucket 12 also has a cylindrical side wall 16. When the insert is placed within the bucket, there is storage space between the bottom circular disc 26 of the insert and the lid 54, surrounded by cylindrical side wall 16. The bottom base 14 of the bucket is on the Appeal 2009-005028 Application 11/204,671 2 underside of the circular disc 26. In that configuration, the storage space is bounded by, i.e., confined and enclosed by, the three surfaces 14, 16, and 26, even though the two surfaces 14 and 26 overlap each other. The bottom surface 14 of bucket 20 still acts to confine and enclose the storage space, as it gives support to and holds disc 26 in place within the bucket. The other elements of claim 1 are met by Fraser as noted by the Examiner. Copy with citationCopy as parenthetical citation