Ex Parte Lundy

Board of Patent Appeals and Interferences

Jul 23, 2009

10965583 (B.P.A.I. Jul. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL J. LUNDY
__________

Appeal 2008-005790
Application 10/965,583
Technology Center 3700
__________

Decided:1 July 24, 2009
__________

Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-5 and 9-19. We have jurisdiction
under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-005790
Application 10/965,583

STATEMENT OF THE CASE
The claims are directed to a bucket. Claims 1, 9, and 15 are
representative of the claims on appeal, and read as follows:
1. A bucket comprising:
a first volume defined by a continuous primary sidewall extending
from a periphery of a first bottom to a primary rim;
the continuous primary sidewall including a flattened portion
extending from the periphery of the first bottom to a subjacent portion of the
primary rim;
an inner surface of the flattened portion of the primary sidewall being
textured to form a paint roller grid;
a second volume defined by a continuous secondary sidewall
extending from a periphery of a second bottom to a secondary rim;
the continuous secondary sidewall including a flattened portion
extending from the periphery of the second bottom to a subjacent portion of
the secondary rim adjacent the subjacent portion of the primary rim;
an edge coupling the subjacent portion of the secondary rim and the
subjacent portion of the primary rim; and
at least one divider base extending from the second bottom, wherein
the at least one divider base extends toward secondary rim a distance less
than a stacking height of the bucket and inwardly molded grooves are
formed in the secondary sidewall adjacent the at least one divider base; and
divider panels removably engaging the at least one divider base and
receivable in the inwardly molded grooves, dividing the second volume into
a plurality of compartments.

9. A bucket comprising:
a first volume defined by a continuous primary sidewall extending
from a periphery of a first bottom to a primary rim;
the continuous primary sidewall including a flattened portion
extending from the periphery of the first bottom to a subjacent portion of the
primary rim;
an inner surface of the flattened portion of the primary sidewall being
textured to form a paint roller grid;
a second volume defined by a continuous secondary sidewall
extending from a periphery of a second bottom to a secondary rim;
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the continuous secondary sidewall including a flattened portion
extending from the periphery of the second bottom to a subjacent portion of
the secondary rim adjacent the subjacent portion of the primary rim;
an edge coupling the subjacent portion of the secondary rim and the
subjacent portion of the primary rim;
the primary rim and the secondary rim, absent the subjacent portion of
each, form a continuous periphery about the subjacent portion of the
secondary rim and the subjacent portion of the primary rim;
a collar extending from the continuous periphery adjacent the primary
sidewall and the secondary sidewall a distance defining a stacking height of
the bucket; and
the edge subjacent the continuous periphery a distance greater that
[sic] the stacking height.

15. A bucket comprising:
a first volume defined by a continuous primary sidewall extending
from the periphery of a first bottom to a primary rim;
the continuous primary sidewall including a flattened portion
extending from the periphery of the first bottom to a subjacent portion of the
primary rim;
a second volume defined by a continuous secondary sidewall
extending from a periphery of a second bottom to a secondary rim;
the continuous secondary sidewall including a flattened portion
extending from the periphery of the second bottom to a subjacent portion of
the secondary rim adjacent the subjacent portion of the primary rim;
an edge coupling the subjacent portion of the secondary rim and the
subjacent portion of the primary rim;
the primary rim and the secondary rim, absent the subjacent portion of
each, form a continuous periphery about the subjacent portion of the
secondary rim and the subjacent portion of the primary rim;
a collar extending from the continuous periphery adjacent the primary
sidewall and the secondary sidewall a distance defining a stacking height of
the bucket; and
the edge subjacent the continuous periphery a distance greater that
[sic] the stacking height.

The Examiner relies on the following evidence:
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Ippolito US 5,511,279 Apr. 30, 1996
Kent US 6,062,389 May 16, 2000
Abbey US 6,105,813 Aug. 22, 2000
Gartner US 6,622,884 B1 Sept. 23, 2003
Robertson US 7,044,424 B2 May, 16, 2006

The following grounds of rejection are before us for review:
Claims 15 and 16 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kent;
Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Abbey and Robertson;
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Abbey and Robertson, as further combined with
Ippolito;
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Abbey and Robertson, as further combined with
Gartner;
Claims 9, 10, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Abbey and Kent;
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Abbey and Kent, as further combined with Ippolito;
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Abbey and Kent, as further combined with Gartner;
and
Claims 13, 14, and 17-19 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Abbey and Kent, as further combined
with Robertson.
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We affirm.

PRINCIPLES OF LAW
As to anticipation, to anticipate, every element and limitation of the
claimed invention must be found in a single prior art reference, arranged as
in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1383 (Fed. Cir. 2001).
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), the
Supreme Court rejected a rigid application of a teaching-suggestion-
motivation test in the obviousness determination. The Court emphasized
that “the [obviousness] analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418; see also id. at 421 (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”). Thus, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982).
Further,

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[i]f a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

KSR, 550 U.S. at 418.
Finally, “it is well established that patent drawings do not define the
precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”
Hockerson-Halbertstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956
(Fed. Cir. 2000) (holding that the drawings could not be relied upon to
construe whether the term “central longitudinal groove” required that the
width of the groove be less than the combined width of the fins).
“Ordinarily drawings which accompany an application for a patent are
merely illustrative of the principles embodied in the alleged invention
claimed therein and do not define the precise proportions of elements relied
upon to endow the claims with patentability.” In re Olson, 212 F.2d 590,
592 (CCPA 1954).

ISSUE (Anticipation over Kent)
The Examiner finds that claims 15 and 16 are anticipated by Kent.
Appellant contends that the drip rim of Kent, which the Examiner
equates to the claimed collar, does not define the stacking height of the
bucket.
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Thus, the issue on appeal is: Has Appellant demonstrated that the
Examiner erred in finding that the drip rim of Kent defines the stacking
height of the bucket?

FINDINGS OF FACT
FF1 The “invention relates to buckets and painting accessories.” (Spec. 1.)
FF2 The Examiner rejects claims 15 and 16 under 35 U.S.C. § 102(b) as
being anticipated by Kent (Ans. 4).
FF3 The Examiner finds that Kent discloses a bucket with first and second
volumes, a rim and a flattened portion, wherein a stacking collar 17 defines
the stacking height (id.).
FF4 Kent teaches “a dual bucket assembly that is nestable.” (Kent, col. 1,
ll. 5-6.)
FF5 Figure 2 of Kent is reproduced below:

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Figure 2 of Kent shows a dual bucket assembly in a nested arrangement (id.
at col. 2, ll. 1-4).
FF6 As shown in the figure, the bucket includes a first container 30, a
second container 50, a connecting member 70, and a circumferential
reinforced drip rim 17 encircling the dual bucket (id. at col. 2, ll. 23-32).
FF7 According to Kent:
[T]he space, denoted generally as 73, between proximal
portions 34, 54 as well as the downward, inward taper of
containers 30, 50 facilitates storage of multiple dual buckets in
a nested arrangement by allowing one dual bucket 20 to be
nested within another dual bucket 20 to at least half, and
preferably to 75% or more, of the depth of containers 30, 50.
FIG. 2 shows dual bucket assembly 10N nested within dual
bucket 10 substantially until connecting member 70 or
reinforced drip rim 17 are encountered. Nesting is desirable
because it minimizes the space required to store and transport a
plurality of dual bucket assemblies 10.

(Id. at col. 2, l. 67-col. 3, l. 11.)

ANALYSIS
Appellant argues that claim 15 includes the limitation of “‘a collar
extending from the continuous periphery adjacent the primary sidewall and
the secondary sidewall a distance defining a stacking height of the bucket,’”
and thus the width of the collar is the stacking height (App. Br. 12).
According to Appellant, Kent teaches a dual bucket that includes a first and
second container having a drip rim 17, but that “[o]ne drip rim 17 does not
engage another to define a stacking height.” (Id.) Appellant asserts, citing
Figure 2 of Kent, that “before one drip rim engages the other, the nesting
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drip rim is going to contact either top edges 33 and 53, or vertical
component 74 containing bail attachment mechanism 71.” (Id.) Thus,
Appellant argues, claim 15 requires that the stacking height be defined by
only the width of the collar, whereas in the bucket of Kent, “the stacking
distance is substantially greater than the width of the drip rim.” (Id. at 13.)
Appellant reiterate the above arguments as to claim 16 (id.).
Appellant’s arguments have been considered, but are not convincing.
Appellant relies primarily on Figure 2 of Kent in asserting that before one
drip rim engages the other, the nesting rim is going to contact either top
edges 33 and 53, or vertical component 74 containing bail attachment
mechanism 71. Drawings, however, do not define the precise proportions of
the elements. The disclosure of Kent clearly teaches that the buckets may be
nested until the drip rim 17 is encountered (FF7), and therefore the top edges
33, 53 correspond to the top edges of the drip rim 17. Thus we agree with
the Examiner that Kent teaches a dual volume bucket wherein the stacking
height is defined by the height of the drip rim 17 (i.e., the collar defining the
stacking height as required by claim 15).

CONCLUSION OF LAW
We find that Appellant has not demonstrated that the Examiner erred
in finding that the drip rim of Kent defines the stacking height of the bucket.
We therefore affirm the rejection of claims 15 and 16 under 35 U.S.C.
§ 102(b) as being anticipated by Kent.

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ISSUE (Obviousness over Abbey and Robertson)
The Examiner concludes that claims 1-3 are rendered obvious by the
combination of Abbey and Robertson; claim 4 is rendered obvious by the
combination of Abbey and Robertson, as further combined with Ippolito;
and that claim 5 is rendered obvious by the combination of Abbey and
Robertson, as further combined with Gartner.
Appellant contends that while Abbey teaches a bucket with two
volumes, converting one of those volumes employing the teachings of
Robertson would still not provide the device as claimed in claim 1.
Thus the issue on appeal is: Has Appellant demonstrated that the
Examiner erred in combing Abbey with Robertson to arrive at the bucket of
claim 1?

FINDINGS OF FACT
FF8 The Examiner rejects claims 1-3 under 35 U.S.C. § 103(a) as being
obvious over the combination of Abbey and Robertson (Ans. 5).
FF9 The Examiner finds, citing Figures 1a-1c of Abbey, that Abbey
teaches a bucket with a first volume 16, having a rim 30, and a flattened
portion 12a the top edge of which would be the subjacent rim, with an inner
surface of the flattened portion having a paint roller grid (id.). The
Examiner finds further that Abbey teaches that the bucket has a second
volume 20 having a rim 30, a flattened portion 22b of which the top edge
would be the subjacent rim, and an edge 30′ coupling the subjacent portions
of the rim (id.)
FF10 Figures 1a-1c of Abbey are reproduced below:
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Figure 1a shows a bucket that “has no internal walls, the cup compartment is
external to the bucket outer side, and a channel is formed by the straight
section rim.” (Abbey, col. 6, l. 66-col. 7, l. 3.) Figure 1b is a sectional view
of the bucket shown in 1a, and 1c shows a plan view of the bucket of 1a (id.
at col. 7, ll. 3-5).
FF11 Abbey teaches that the larger volume may be suitable for holding a
large volume of paint, while the smaller volume may be suitable for a
smaller volume of paint and/or a paint brush (id. at col. 3, ll. 22-30).
FF12 The Examiner notes that “Abbey does not teach a divider base and
dividers extending from the second bottom.” (Ans. 5.)
FF13 The Examiner cites Robertson for teaching “a bucket with a first
volume . . . and a second volume . . . that has a divider base, the portion of
groove . . . on the second bottom, and dividers . . . for dividing the second
volume into compartments for storage of different articles.” (Id.)
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FF14 The Examiner concludes that it
would have been obvious to one of ordinary skill in the art at
the time the invention was made to have incorporated the use of
a divider base and dividers as disclosed by Robertson [ ] in the
bucket disclosed by Abbey to divide the second volume into
compartments for storage of different articles.

(Ans. 5.)
FF15 The Examiner further concludes that such a divider base “would
extend toward the secondary rim a distance less than a stacking height.” (Id.
at 5-6.)
FF16 The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as being
obvious over the combination of Abbey and Robertson, as further combined
with Ippolito (id. at 6).
FF17 The Examiner also rejects claim 5 under 35 U.S.C. § 103(a) as being
obvious over the combination of Abbey and Robertson, as further combined
with Gartner (id.).

ANALYSIS
Appellant argues that claim 1 requires “inwardly molded grooves
formed in the secondary sidewall . . . to permit stacking or nesting of
buckets,” but that Robertson teaches “an article holder for a barrel cooler
with no mention of nesting or recognition of any desire to provide that
capability.” (App. Br. 14.) Appellant assets that the “grooves 38 of
Robertson extend outwardly from the sidewalls, inwardly into the volume,”
which would prevent nesting of the containers (id.). Thus, Appellant asserts,
“[w]hile Abbey teaches a bucket with two volumes, converting one of those
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volumes employing the teachings of Robertson, would still not provide the
device as claimed in claim 1.” (Id.) Appellant reiterates these arguments as
to claims 2, 3, 4, and 5 (id. at 15).
Appellant’s arguments have been considered, but are again not found
to be convincing. Claim 1 only requires “at least one divider base extending
from the second bottom, wherein the at least one divider base extends
toward secondary rim a distance less than stacking height of the bucket,” and
thus any ability to stack would meet that limitation. In addition, the ordinary
artisan would understand that an ability to stack or nest the buckets would
save on storage room, and the ordinary artisan would also be aware that
outward projections should be at a distance less than the stacking height, and
as noted above, claim 1 does not require any particular level of stacking, and
thus reads on any level of stacking. We also agree with the Examiner that
the ordinary artisan would understand the advantages of adding the dividers
of Robertson to the bucket of Abbey, as it would allow the second volume to
be divided into more compartments for different articles, such as different
brushes.

CONCLUSION OF LAW
We conclude that Appellant has not demonstrated that the Examiner
erred in combining Abbey with Robertson to arrive at the bucket of claim 1.
We thus affirm:
The rejection of claims 1-3 under 35 U.S.C. § 103(a) as being obvious
over the combination of Abbey and Robertson;
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The rejection of claim 4 under 35 U.S.C. § 103(a) as being obvious
over the combination of Abbey and Robertson, as further combined with
Ippolito; and
The rejection of claim 5 under 35 U.S.C. § 103(a) as being obvious
over the combination of Abbey and Robertson, as further combined with
Gartner.

ISSUE (Obviousness over Abbey and Kent)
The Examiner concludes that claims 9, 10, 15, and 16 are rendered
obvious by the combination of Abbey and Kent; claim 11 is rendered
obvious by the combination of Abbey and Kent, as further combined with
Ippolito; claim 12 is rendered obvious by the combination of Abbey and
Kent, as further combined with Gartner; and that claims 13, 14, and 17-19
are rendered obvious by the combination of Abbey and Kent, as further
combined with Robertson.
Appellant contends that there is nothing to suggest that the
combination of Abbey and Kent can or should be made, as Abbey does not
suggest the desirability of stacking, and the paint roller grid of Abbey may
prevent stacking as taught by Kent.
Thus, the issue on appeal is: Has Appellant demonstrated that the
Examiner erred in combining Abbey and Kent?

FINDINGS OF FACT
FF18 The Examiner rejects claims 9, 10, 15, and 16 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Abbey and Kent (Ans. 7).
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FF19 Abbey is relied upon as set forth in the previous rejection (id.; see
FF9-FF11).
FF20 The Examiner notes that “Abbey does not teach a collar extending
from the continuous periphery defining a stacking height or that the edge is
subjacent the continuous periphery a distance greater than the stacking
height” (Ans. 7).
FF21 The Examiner relies on Kent for teaching “a similar container with a
collar (17) that defines a stacking height (column 3, lines 8-11) and an edge
as discussed above, and the edge is subjacent a continuous periphery a
distance greater than the stacking height.” (Id.)
FF22 The Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to have incorporated the use
of a stacking collar with the edge subjacent the continuous
periphery a distance greater than the stacking height as
disclosed by Kent in the bucket disclosed by Abbey to provide
for stacking of the buckets while controlling stacking height to
prevent the buckets from nesting too tightly.

(Id. at 7-8.)
FF23 The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as being
obvious over the combination of Abbey and Kent, as further combined with
Ippolito (Ans. 8).
FF24 The Examiner also rejects claim 12 under 35 U.S.C. § 103(a) as being
obvious over the combination of Abbey and Kent, as further combined with
Gartner (id.).
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FF25 The Examiner then rejects claims 13, 14, and 17-19 under 35 U.S.C. §
103(a) as being obvious over the combination of Abbey and Kent, as further
combined with Robertson (id. at 9).

ANALYSIS
Appellant argues that “claim 9 includes ‘a collar extending from the
continuous periphery adjacent the primary sidewall and the secondary
sidewall a distance defining a stacking height of the bucket,’” thus the collar
defines the stacking height. (App. Br. 16.)
Abbey, Appellant asserts, “teaches a bucket with two volumes, but
makes no mention of or suggests the desirability of stackability.” (Id.)
According to Appellant, there is only a possibility of stacking in the
embodiments shown in Figures 1a-1c of Abbey, but again, Abbey does not
teach that they may be stacked or the desirability of stacking (id. at 17).
As to Kent, Appellant reiterates the arguments made as to the
anticipation rejection, that is, that one drip rim of the bucket of Kent does
not engage a drip rim of the second bucket to define the stacking height (id.).
Appellant argues further that Kent does not teach or suggest a paint roller
grid formed on the surface, instead teaching the sidewalls in close
engagement while nesting (id. at 18). Thus, Appellant asserts, “[t]here is no
suggestion or teaching of this limitation or of how it could be incorporated
therein without preventing nesting.” (Id.)
Appellant asserts further that “there is nothing to suggest that the
combination of Abbey and Kent can or should be made,” as Abbey does not
suggest the desirability of stacking (id. at 19). Appellant reiterates the above
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arguments as to claim 10 (id. at 20), as well as to claims 11 and 12 (id. at
23).
We do not find Appellant’s arguments convincing. While Abbey may
not specifically teach or suggest the desirability of stacking, the ordinary
artisan would understand, and as recognized by Kent, that stacking
minimizes the storage space required for multiple buckets.
As to Kent, as set forth in the response to the anticipation argument
over that reference, Kent specifically teaches that the buckets may be nested
until the drip rim 17 is encountered (FF7), and thus Kent teaches a dual
volume bucket wherein the stacking height is defined by the height of the
stacking rim 17. In addition, Appellant has provided no evidence that it
would be beyond the level of skill of the ordinary artisan to add a collar to
the bucket of Abbey, which includes the paint roller grid, such that the collar
defines the stacking height as taught by Kent. “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
421.
We have considered Appellant’s arguments as to independent claim
15, as well as claim 16 (App. Br. 20-23), but as we have already found that
claim 15 is anticipated by Kent, and as anticipation is the epitome of
obviousness, In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002), we do
not find the arguments persuasive for the same reasons we did not find
Appellant’s arguments persuasive as to the anticipation rejection.
As to the rejection of claims 13, 14, and 17-19 over the combination
of Abbey, Kent, and Robertson, Appellant reiterates the arguments made
with respect to claim 15 (App. Br. 24). Appellant also argues that the
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combination of Robertson and Kent is improper as Kent discloses stacking
buckets, and Robertson teaches a structure that would prevent stacking,
rendering Kent inoperable for its intended purpose (id.).
As noted above, the ordinary artisan would understand that any
divider would have to be below the level of the stacking height of the
buckets. That is demonstrated by Kent, because when the drip rim defines
the stacking height, the connecting member, which extends up between the
two volumes, is below the stacking height of the buckets.

CONCLUSION OF LAW
We conclude that Appellant has not demonstrated that the Examiner
erred in combining Abbey and Kent.
We thus affirm:
The rejection of claims 9, 10, 15, and 16 under 35 U.S.C. § 103(a) as
being obvious over the combination of Abbey and Kent;
The rejection of claim 11 under 35 U.S.C. § 103(a) as being obvious
over the combination of Abbey and Kent, as further combined with Ippolito;
The rejection of claim 12 under 35 U.S.C. § 103(a) as being obvious
over the combination of Abbey and Kent, as further combined with Gartner;
and
The rejection of claims 13, 14, and 17-19 under 35 U.S.C. § 103(a) as
being obvious over the combination of Abbey and Kent, as further combined
with Robertson.

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SUMMARY
All of the rejections on appeal are affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

ROBERT A. PARSONS
4000 N. CENTRAL AVENUE, SUITE 1220
PHOENIX AZ 85012

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