Ex Parte Jenkins

Board of Patent Appeals and Interferences

Sep 30, 2009

11204671 (B.P.A.I. Sep. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LLOYD J. JENKINS

Appellant
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Appeal 2009-005028
Application 11/204,671
Technology Center 3600
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Decided: September 30, 2009
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Before JAMESON LEE, SALLY GARDNER LANE and SALLY C.
MEDLEY, Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
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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,
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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:
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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.

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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).
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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).
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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),
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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.
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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).
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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.
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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
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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).
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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).
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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
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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).
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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
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John Wiley Horton
Pennington, Moore, Wilkinson, Bell & Dunbar, P.A.
215 S. Monroe St., 2nd Floor
Tallahassee, FL 32301

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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
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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.