Ex Parte Kassouni

Patent Trial and Appeal Board

Jan 29, 2018

14226026 (P.T.A.B. Jan. 29, 2018)

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.
14/226,026 03/26/2014 Van M. Kassouni KAS01 P-124 3602
15671 7590 01/31/2018
Gardner, Linn, Burkhart & Ondersma LLP
2851 Charlevoix Dr., SE, Suite 207
Grand Rapids, MI 49546
EXAMINER
ANDERSON, DON M
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
clark@gardner-linn.com
patents @ gardner-linn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VAN M. KASSOUNI
Appeal 2017-005554
Application 14/226,026
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Van M. Kassouni (Appellant) appeals under 35U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2017-005554
Application 14/226,026
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A shipping container assembly for transporting bulk
particulate material comprising:
an outer container having an outer container storage cavity
defined by an outer container base element and an outer container
wall extending upward from said outer container base element,
wherein said outer container comprises an integral construction;
an inner container having an inner storage cavity at least
partially defined by an inner container base portion and an inner
container wall extending upward from said inner container base
portion, wherein said inner container wall terminates at a
peripheral edge that defines an inner container opening to said
inner storage cavity, and wherein said inner container base
portion has a smaller cross section than said inner container
opening such that said inner container wall is tapered;
wherein said outer and inner containers each comprise a
construction of cardboard material;
wherein said inner container is configured to fit within said
outer container storage cavity of said outer container so that said
peripheral edge of said inner container wall contacts said outer
container wall; and
wherein, when said inner container is disposed in said
outer container, said tapered inner container wall provides a
lower surface of said outer container storage cavity.
REJECTIONS
I. Claims 1-3, 8-12, and 18-20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Shuert (US 2004/0118725 Al, pub.
June 24, 2004) and Rose (US 2009/0255946 Al, pub. Oct. 15,
2009).
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Application 14/226,026
II. Claims 4-7 and 13-17 stand rejected under 35 U.S.C. § 103 as
unpatentable over Shuert, Rose, and Taravella
(US 2011/0017731 Al, pub. Jan. 27, 2011).
DISCUSSION
Rejection I
Claims 1, 2, 12, and 18—20:
In rejecting independent claim 1, the Examiner finds that Shuert
discloses a container assembly including, in relevant part,
an outer container storage cavity defined by an outer container
base element (12) and an outer container wall (14) extending
upward from said outer container base element, wherein said
outer container comprises an integral construction; [and] an inner
container (16) having an inner storage cavity at least partially
defined by an inner container base portion and an inner container
wall extending upward from said inner container base portion,
wherein said inner container wall terminates at a peripheral edge
that defines an inner container opening to said inner storage
cavity, and wherein said inner container base portion has a
smaller cross section than said inner container opening such that
said inner container wall is tapered . .. (title, abstract, figures 1-
11, par. 0028, note the rejection is made over the embodiment of
figures 9 & 10, reference to the other figures is made to illustrate
common structure).
Final Act. 2-3. The Examiner acknowledges that Shuert fails to disclose
“that the inner container is constructed from cardboard.” Id. at 3. However,
the Examiner finds that Rose discloses “that it is known for large-volume
containers] to be made of cardboard (title, abstract, par. 0006),” and
determines that it would have been obvious to make Shuert’s “inner
container from cardboard since it [is] a material that is known to be suitable
for large-volumes and because cardboard has odor absorbing properties
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which would be useful for containing material such [as] kitty litter or
laundry detergent.” Id.
Appellant argues that Shuert does not disclose an outer container
having an “integral construction,” as recited in claim 1, because pallet 12
(outer container base) and sleeve 14 (outer container wall) are formed as
separate parts made of different materials. See Appeal Br. 16; Reply
Br. 3. In particular, Appellant asserts that Shuert’s “pallet 12 is made of a
rigid plastic (polyethylene) to be able to provide a trap door and a latch,
while . . . sleeve 14 is made with cardboard, which is not capable of being an
integral piece of the plastic pallet.” Appeal Br. 16; Reply Br. 4. According
to Appellant, pallet 12 and sleeve 14 “are simply ‘joined together,’ not
‘formed as a unit’ as required by the Examiner’s own definition of
‘integral.’” Reply Br. 3 (emphasis omitted) (quoting Ans. 4). This
argument is not persuasive.
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Here, the term “integral” does not appear in Appellant’s
Specification. Instead, the Specification describes that outer container 30
includes “peripheral wall 36 defined by sides 36a, 36b, 36c and 36d, which
are connected to bottom element 34 along its periphery 37.” Spec. ^ 20
(emphasis added). Appellant does not point to anything in the disclosure to
indicate that “integral construction,” as recited in claim 1, requires
something more than the outer container base and wall being connected
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together. In this regard, Shuert discloses that outer container 10 includes
pallet 12 and sleeve 14 (see Shuert 17), and “[sjleeve 14 is received at its
lower edge 14a in pallet groove 126” (id. Tl 19; see also id., Fig. 2 (depicting
pallet groove 12b)). In other words, Shuert’s sleeve 14 and pallet 12 are
connected together via pallet groove 12b. Indeed, Appellant acknowledges
that Shuert’s base 12 and sleeve 14 are “joined together.” Reply Br. 3.
Moreover, to the extent Appellant’s argument suggests that “integral” has
the same meaning as “unitary,” which means “undivided” (Merriam-
Webster’s Collegiate Dictionary (11th ed. 2003)), we note that these terms
are not synonymous. Further, Appellant’s Specification does not appear to
support such a meaning for “integral.” See Spec. ^ 20 (describing the base
and wall being connected together). An ordinary and customary' definition
of “integral” is “formed as a unit with another part.” Id. A “unit” means a
“single thing . . . that is a constituent of a whole.” Id. In other words,
although Shuert’s pallet 12 and sleeve 14 are not “unitary,” container 10 has
an “integral” construction because pallet 12 and sleeve 14 are constituent
parts connected together to form a whole “unit” (i.e., container 10) in the
same way as Appellant’s “integral construction” of such parts. See, e.g.,
Shuert, Figs. 1,2.
Appellant argues “that the walls of the plastic bag/liner are not rigid
tapered walls.” Appeal Br. 16. Appellant asserts that Shuert’s “plastic
bag/liner 16 is easily deformable to allow the material to accumulate along
the upper surface of the pallet 12, such that neither a tapered shape nor a
rigid wall is provided.” Id. This argument is unpersuasive because it is not
commensurate with the scope of claim 1. As stated by our reviewing court
in In reHiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the
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Application 14/226,026
game is the claim.” It is well established that limitations not appearing in
the claim cannot be relied upon for patentability. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982). Here, claim 1 recites that the “inner container
wall terminates at a peripheral edge that defines an inner container opening
to said inner storage cavity, and wherein said inner container base portion
has a smaller cross section than said inner container opening such that said
inner container wall is tapered.” Appeal Br. 34 (emphasis added) (Claims
App.). However, claim 1 does not recite that the inner container wall is
rigid. With respect to the tapered inner container wall, the Examiner takes
the position that because “[w]all 16b of Shuert is angled upward and away
from the bottom of inner container 16 in a funnel like shape, in light of the
Appellant’s disclosure, this appears to be what is meant by ‘tapered’ in the
claims (see figure 3, wall 46, of the present application).” Ans. 5. The
Examiner also correctly points out that “Shuert explicitly states [that] the
inner container 16 has a ‘tapering configuration.’” Id. (quoting Shuert 21).
In this regard, Appellant does not specifically address—nor identify a
deficiency in—the Examiner’s finding that Shuert’s liner walls are tapered.
See Appeal Br., passim; Reply Br., passim.
Appellant argues that Shuert “fails to disclose or suggest the claimed
inner container wall terminating at a peripheral edge that defines an inner
container opening, where the inner container fits within the outer container
so that the peripheral edge of the inner container wall contacts the outer
container wall.” Appeal Br. 19 (citing Shuert, Figs. 9, 10). In particular,
Appellant asserts that, “[a]s plainly shown in Figure 10 of Shuert, the top
portion 16p of the plastic liner is not within the cardboard sleeve 14.” Id.
This argument is unpersuasive because it is not commensurate with the
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scope of claim 1, which does not recite that the peripheral edge of the inner
container wall is within the outer container. See In re Self, 671 F.2d at 1348
Instead, claim 1 only recites, in relevant part, that the ‘’Inner container is
configured to fit within said outer container storage cavity of said outer
container so that said peripheral edge of said inner container wall contacts
said outer container wall.” Appeal Br. 32 (Claims App.) (emphasis added).
Although we appreciate Appellant’s observation that “the top of the plastic
liner can be folded downwardly over and outside the top of the sleeve to
hold the plastic liner open (such as for filling)” (Appeal Br. 19 (emphasis
added) (citing Shuert 28, Figs. 6, 7)), we agree with the Examiner that
Shuerf s liner 16 (i.e., inner container) is configured to fit within sleeve 14
(i.e., outer container) in the same way that a garbage bag is configured to fit
within a trash can (see Ans. 5). Furthermore, to the extent Appellant’s
argument suggests that the peripheral edge of Shuerf s liner top portion 16p
must contact the inside surface—rather than the outside surface—of the
outer container wall to meet claim 1, we note that the claim does not require
that the peripheral edge of the inner container wall contacts the inside
surface of the outer container wall. In other words, the claim does not
exclude the peripheral edge from contacting the outside surface of the outer
container wall, as is the case in Shuert.
Appellant argues that “Rose fails to provide disclosure or motivation
to modify the flexible, deformable plastic liner of Shuert to provide an inner
container made of a cardboard material.” Appeal Br. 21. Appellant asserts
that “[tjhere is no disclosure or suggestion in any of the applied art to
provide an inner cardboard container that has tapered walls, as claimed.” Id.
According to Appellant, the Examiner’s rejection is based upon
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impermissible hindsight reconstruction. See id. at 21-22. We do not find
these arguments persuasive. To the extent that Appellant appears to insist on
an explicit teaching, suggestion, or motivation in the prior art to establish
obviousness, such an argument has been foreclosed by the Supreme
Court. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007) (stating
that a rigid insistence on teaching, suggestion, or motivation is incompatible
with its precedent concerning obviousness). The Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for [an examiner] can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. Instead, the relevant inquiry is whether
the Examiner has set forth “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418. Here, as discussed above, the Examiner articulates adequate reasoning
based on rational underpinnings as to why it would have been obvious to one
of ordinary skill in the art to modify the inner container of Shuert (i.e., liner
16) to be made of cardboard. See Final Act. 3 (the Examiner explaining that
cardboard is “a material that is known to be suitable for large-volumes and
because cardboard has odor absorbing properties which would be useful for
containing material such [as] kitty litter or laundry detergent”). Appellant
does not specifically address the Examiner’s articulated reasoning or explain
why the reasoning is in error. Furthermore, the proposed modification of
Shuert to use cardboard to make liner 16 amounts to nothing more than the
simple substitution of one known material (i.e., cardboard) for another (i.e.,
plastic) or the mere application of a known technique to a piece of prior art
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ready for the improvement. See KSR, 550 U.S. at 417 (noting that such
modifications are obvious where they do no more than yield a predictable
result).
In addition, Appellant does not identify, nor do we discern, any
knowledge relied upon by the Examiner that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from [Appellant’s] disclosure, such a reconstruction
is proper.”). Thus, we do not agree with Appellant’s contention that “the
Examiner is construing the references in a manner that improperly uses
hindsight reconstruction based on Appellant’s application.” Reply Br. 8.
Appellant argues that Rose teaches away from an assembly having an
inner container within an outer container because “Rose only mentions a
single container used for holding detergent, with the handle constructed so
as not to interfere with the interior of the single container, which would be
unnecessary if an inner liner (such as disclosed in Shuert) was provided or
contemplated.” Appeal Br. 21. Appellant also argues that Shuert teaches
away from the plastic liner being made of cardboard because liner 16 is
shown as a loose bag-like shape that deforms and bulges. See id. According
to Appellant, “[i]f the plastic liner of Shuert was modified with a rigid
cardboard material it would not function with its intended use of the liner,
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which is to deform to conform to the interior of container when loaded.” Id.
at 22. These arguments are not convincing.
A reference teaches away from a claimed invention or a proposed
modification if “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). 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).
Here, Appellant does not point to, nor do we find, any disclosure in
Rose or Shuert criticizing, discrediting, or otherwise discouraging use of
cardboard material to make Shuert’s liner 16. The fact that Rose discloses a
single container without an inner container does not constitute a teaching
away from using an inner container within an outer container. Similarly, the
fact that Shuert’s figures depict liner 16 as a “loose bag-like shape” that
deforms and bulges does not does not constitute a teaching away. Shuert
simply discloses a particular material used to make the container liner.
Moreover, we do not agree with Appellant’s contention that the proposed
modification of Shuert’s liner 16 would prevent the liner from functioning as
intended (see Appeal Br. 22) because we find no evidence in the record
before us that Shuert’s liner would no longer operate satisfactorily if it were
made of cardboard material. Notably, Appellant does not point to any
disclosure in Rose directed to the use of rigid cardboard, nor does the
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Examiner’s rejection propose the use of rigid cardboard in Shuert. Thus,
Appellant’s argument regarding the use of rigid cardboard is not responsive
to the rejection articulated by the Examiner. Regardless of whether a liner
made from cardboard material would deform and bulge to the same extent as
a liner made from plastic, the liner would appear to serve the same purpose
as before, using the same principles of operation. Namely, the tapered walls
of the liner would continue to “facilitate^ the substantially total discharge of
the contents of the container.” Shuert ^ 6.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and its dependent
claim 2, for which Appellant relies on the same arguments (see Appeal Br.
30), under 35 U.S.C. § 103 as unpatentable over Shuert and Rose.
Independent claim 12 includes limitations similar to the limitations in
independent claim 1 discussed above. Compare Appeal Br. 36-37 (Claims
App.), with id. at 34. In contesting the rejection of claim 12, Appellant
essentially rehashes the arguments set forth with respect to claim 1. See id.
at 27-29 (Appellant asserting that Shuert “fails to disclose the tapered inner
container walls and also fails to disclose or suggest inserting the inner
container into the outer container so that the peripheral edge contacts the
outer container wall of the outer container'''’ because “the top portion 16p of
the plastic sleeve in Shuert is not in the cardboard sleeve 14”). These
arguments are unpersuasive with respect to claim 12 for the same reasons
discussed above with respect to claim 1. Accordingly, we sustain the
rejection of independent claim 12, and its dependent claims 18-20, for
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which Appellant relies on the same arguments (see id. at 30), as
unpatentable over Shuert and Rose.
Claims 3 and 8—11:
Independent claim 8 recites a shipping container insert including, in
relevant part, “attachment flaps extending from said peripheral edge of said
wall.” Appeal Br. 35 (Claims App.). Appellant argues that Shuert “fails to
disclose flaps extending from said peripheral edge of said wall.” Appeal Br.
25. We agree with Appellant.
The Examiner finds that Shuert discloses “attachment flaps (24)
extending from said peripheral edge of said wall.” Final Act. 4 (citing
Shuert, Figs 1-11, ^ 28). However, Appellant persuasively asserts that
Shuert’s tabs 24 do not extend from the peripheral edge of the liner wall.
See Appeal Br. 25. Shuert discloses, with reference to Figures 9 and 10, that
“tabs 24 are secured to the inner sleeve periphery proximate the upper edge
146 of the sleeve utilizing strings 26 and holes 14c/24a whereafter top 16p is
folded downwardly over and outside of the top of the sleeve.” Shuert 28.
As illustrated in Figures 9 and 10 of Shuert, which show liner 16, tabs 24
appear to connect to liner 16 in an area between upper portion 16a and top
portion 16p. In other words, although Shuert’s tabs 24 appear to extend from
the wall of liner 16, the tabs do not extend from the peripheral edge of the
wall, as required by claim 8. Thus, the Examiner has not established by a
preponderance of the evidence that any of the cited references, particularly
Shuert as relied upon, discloses the disputed limitation as claimed.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that claim 8 is unpatentable based
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on the cited references. On this basis, we do not sustain the rejection of
independent claim 8, or its dependent claims 9-11, as unpatentable over
Shuert and Rose.
Claim 3, which depends from independent claim 1, recites “one or
more tabs extending from said peripheral edge.” Appeal Br. 34 (Claims
App.). The Examiner’s rejection of claim 3 is deficient for the same reasons
discussed above with respect to claim 8. Namely, the Examiner’s finding
that Shuert’s tabs 24 extend from the peripheral edge (see Final Act. 3) is
not supported by a preponderance of the evidence. Accordingly, we do not
sustain the rejection of claim 3 as unpatentable over Shuert and Rose.
Rejection II
In contesting the rejection of dependent claims 4-7 and 13-17,
Appellant relies on the arguments set forth with respect to base claims 1 and
12. See Appeal Br. 30, 33. For the above reasons, Appellant’s arguments
fail to apprise us of error in the rejection of independent claims 1 and 12,
and, thus, likewise, do not apprise us of error in the rejection of dependent
claims 4-7 and 13-17. Accordingly, we sustain the rejection of claims 4-7
and 13-17 as unpatentable over Shuert, Rose, and Taravella.
DECISION
The Examiner’s decision rejecting claims 1, 2, 4-7, and 12-20 is
affirmed.
The Examiner’s decision rejecting claims 3 and 8-11 is reversed.
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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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