Ex Parte Malone

Board of Patent Appeals and Interferences

Jun 15, 2007

10448096 (B.P.A.I. Jun. 15, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM E. MALONE, JR.
____________

Appeal 2007-1324
Application 10/448,096
Technology Center 3600
____________

Decided: June 15, 2007
____________

Before WILLIAM F. PATE, III, Administrative Patent Judge, and FRED E.
McKELVEY, Senior Administrative Patent Judge, and JOSEPH A. FISCHETTI,
Administrative Patent Judge.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-12, 14-17, 21-25, and 27. Claims 18 and 26 are objected to
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and claims 13, 19, and 20 are allowed. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We affirm, but designate our affirmance as a new rejection under 37 C.F.R.
§ 41.50(b) (2006).

THE INVENTION
Appellant claims an apparatus and method of making a two wheel handcart
using a one piece plastic frame which is reversibly convertible between the two
wheel hand cart configuration to a four wheel hand cart configuration.
(Specification 14-16).
Claim 1, reproduced below, is representative of the subject matter on appeal
(drawing element letters added):
1. A frame for a two wheeled hand cart [2W] comprising a single frame
[PF] for a two wheeled hand cart constructed and designed of a molded
plastic in a single unitary piece comprising a pair of side frames [SRR and
SRL] joined by spaced apart cross rails [CR] integrally molded with each of
the side rails at pre-selected, spaced apart locations longitudinally of the
side frames to form a single, molded plastic, rigid frame, one end of said
frame being adapted for receiving and mounting a cart handle [H] and the
opposite end being adapted for receiving an axle [A] for mounting a pair of
wheels [WA] adjacent the side rails, said opposite end being further adapted
for mounting a toe plate [TP] for carrying a load to be transported.

THE REFERENCES
The Examiner relies upon the following as evidence of unpatentability:
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Patent Number Date
Mortensom US 4,563,014 Jan. 7, 1986
Stalllbaumer US 5,749,588 May 12, 1998
Stalllbaumer US 6,481,727 B1 Nov. 19, 2002

In addition to the evidence relied upon by the Examiner, we rely on the
following additional patent:
Ward US 6,786,496 B2 Sep. 7, 2004
filed Oct. 31, 2002

THE REJECTIONS
The Examiner made the following rejections:
1. Claims 1-3, 5, 8/5, 10-11, 14-17, 21, 23-24, and 27 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over U.S. Patent No. 5,749,588 issued
to Stallbaumer.

2. Claims 4, 6-7, 8/6, 9 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stallbaumer (‘588) in view of U.S. Patent No. 4,563,014
issued to Mortenson.

3. Claims 14-15 stand rejected under 35 U.S.C. 103(a) as being unpatentable
over U.S. Patent No. 6,758,482 issued to Stallbaumer.
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4. Claims 22 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stallbaumer ‘588 in view of U.S. Patent No. 6,481,727
issued to Stallbaumer.
ISSUES
Appellant contends the Examiner erred in rejecting claims 1-12, 14-17,
21-25, and 27 using Stallbaumer ‘588 as applied under 35 U.S.C. § 103(a) because
there is insufficient evidence in the record to support a finding of obviousness with
respect to teaching a single unitary piece frame in Stallbaumer ‘588. (Br. 13-15).
The Examiner, however, held it would have been obvious to one with ordinary
skill in the art to modify Stallbaumer ‘588 to result in the claimed combination
based upon common knowledge.
The principal issue before us is whether the Appellant has sustained his
burden of showing that the Examiner erred in rejecting the claims on appeal as
being unpatentable under 35 U.S.C. § 103(a) when Stallbaumer ‘588 does not
describe a one piece frame.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
Stallbaumer ‘588 discloses C-shaped cross members 14, 14 as viewed in
cross-section in Fig. 7 taken with Fig. 5 showing the bottom of the cross members
14, 14 open giving them a channel or C-shape when viewed in vertical section
taken transversely to their lengths (Stallbaumer ‘588, Figs. 5 and 7).
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Stallbaumer ‘588 discloses in Fig. 1 sockets 30, 30 in the side rails receiving
the U-shaped handle 18 (Stallbaumer ‘588 col. 2, ll. 38, 39).
Our understanding of how a truss works is that it is the obliquely extending
members in a truss which give it its strength. Both V and Y-shaped members in a
truss have obliquely extending components and thus add to the strength of the
truss.
Diagonal members 38, 38 in Stallbaumer create a V-shape and these
members connect the spaced apart longitudinally extending members 34, 36 of the
open truss side rails and extend diagonally from a common point therebetween.
(Stallbaumer ‘588 Fig. 1, col. 2, ll. 58-63).
Stallbaumer ‘588 discloses each side frame 12, 12 constituted by
longitudinally extending portions 34, 36 which are connected through the
intermediary of the diagonally directed members 38, 38. (Stallbaumer ‘588 col. 2,
ll. 61-63).
The diagonal members 38, 38 in Stallbaumer ‘588 add structural strength to
the side rails and are integral molded therewith and help to spread the load
throughout the truss. (Stallbaumer ‘588 col. 2, ll. 55-67).
Stallbaumer ‘588 discloses a substantially L-shaped plate 16 having two
arms arranged at right angle, with one arm of said plate engaging the supporting
surface for receiving and transporting loads to be carried by the hand cart and the
other arm of said plate connected to said unitary frame. (Stallbaumer ‘588 col. 2,
ll. 34-36).
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Ward discloses an integrated frame 16 constructed entirely of plastic (Ward
col. 6, ll. 1-10).
Ward discloses an integrated frame 16 frame having two parallel side frames
which carry wheels 20, 20 at the lower ends thereof and has cross members
integrally connected to the side rails. (Ward, col. 6, ll. 9-13, 45-52, Fig. 6).

PRINCIPLES OF LAW
A claimed invention is not patentable if the subject matter of the claimed
invention would have been obvious to a person having ordinary skill in the art.
35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741-42, 82
USPQ2d 1385, 1397 (2007). Graham v. John Deere Co., 383 U.S. 1, 17-18, 148
USPQ 466-67 (1966).
Facts relevant to a determination of obviousness include (1) the scope and
content of the prior art, (2) any differences between the claimed invention and the
prior art, (3) the level of skill in the art, and (4) any relevant objective evidence of
obviousness or non-obviousness. Graham, 383 U.S. at 17-18, 148 USPQ at
466-67.
The application of common sense may control the combining of references.
Common sense teaches, however, that familiar items may
have obvious uses beyond their primary purposes, and in
many cases a person of ordinary skill will be able to fit
the teachings of multiple patents together like pieces of a
puzzle.
KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397 (finding that during an
obviousness determination, the person of ordinary skill’s attempt to
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solve a problem is not limited to only those elements of the prior art
designed to solve the same problem).
ANALYSIS
We affirm the rejection of claims 1-12, 14-17, 21-25, and 27.
Appellant argues Stallbaumer’588 fails to teach a unitary plastic frame and
this feature cannot be taught by “…‘common knowledge’ in the art without
evidentiary support in the record.”1 (Br. 15). While we generally agree with the
Examiner that those skilled in the art readily recognize the use of a one-piece
frame as a substitute for a multi-piece rigid frame, we prefer to rely on some
evidence of the existence of a one-piece frame being known at the time of the
Appellant's invention. Accordingly, we rely on Ward for that purpose. As a result,
we designate our affirmance as a new rejection.
Appellant concedes independent claims 1, 5, 10, and 14 to Stallbaumer ‘588
“except that the frame 12 of Stallbaumer is not the single plastic frame recited in
claim l and the other rejected claims nor are the members (38) of a generally
Y-shape.” (Br. 16). Since claims 1, 5, 10, and 14 do not include the “generally
Y-shaped” feature, the only issue before us with respect to independent claims 1, 5,

1The Manual of Patent Examining Procedure (MPEP) § 2144.03 is directed to the
taking of Official Notice by the Examiner. However the record fails to show
where Appellant properly challenged what he considers improper use of Official
Notice as required under MPEP § 2144(c). It is only in an After Final Amendment
that statements of W.E. Malone are offered by Declaration which specifically
point out the supposed errors why the noticed fact should not be considered
common knowledge.

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10, and 14 is the one of patentability of the “single unitary piece” frame.
We reject claims 1-3, 5, 8/5, 9-11, 14-17, 21-25, 27 under 35 U.S.C. 103(a)
as being unpatentable over Stallbaumer, U.S. 5,749,588, in view of Ward, U.S.
6,786,496. From Stallbaumer’ 588 we know the scope and content of the prior art
includes hand carts which have side frames 12,12 having integrally formed truss
members 34, 36 and 38 made of plastic (Stallbaumer’ 588, col. 2, ll. 47-68). The
side frames in Stallbaumer’ 588 however are connected to each other by cross
members 14, 14 at locking joint connections as shown in Fig. 7. Single unitary
piece frames were also known at the time of the invention, one example of this is
disclosed by integrated frame 16 in Ward constructed entirely of plastic (Ward,
col. 6, ll. 1-7). Like the frame at issue, the frame 16 in Ward is an integral frame
having two parallel side frames which carry wheels 20, 20 at the lower ends
thereof and similarly has cross members integrally connected to the side rails to
give the frame a rigid configuration.
To integrate or make integral the side rails 34, 34 and cross rails 14, 14 of
Stallbaumer ‘588 with each other as taught by Ward would have been an obvious
modification because at the time of the invention, forming one-piece cross pieces
of a frame with perpendicularly disposed side rails was known as evidenced by
Ward.
Dependent claims 2 and 15 recite the open truss feature of the side frames,
but we see no difference between the open frame recited in these claims and that
disclosed by Stallbaumer ‘588. In Stallbaumer ‘588, each side frame 12, 12 is
constituted by longitudinally extending portions 34, 36 which are connected
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through the intermediary of obliquely or diagonally directed members 38, 38. The
members 38, 38 in Stallbaumer ‘588 similarly add structural strength to the side
rails and are integral therewith and create an open truss structure.
Dependent claim 3 recites the C-shape of the cross members as viewed in
cross-section to facilitate removing the rigid frame from the mold. In Stallbaumer
‘588 the cross members 14, 14 are C-shaped as shown in Fig. 7 of Stallbaumer
‘588 taken in cross section. Additionally, Fig. 7 taken with Fig. 5, show that the
bottoms of the cross members 14, 14 are open giving them a channel or C-shape
when viewed in vertical section taken transversely to its length. The additional
benefit derived in using the same C-shape of the prior art members to facilitate in
the molding process cannot sustain patentability. In re Baxter Travenol Labs., 952
F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (“Mere recognition of
latent properties in the prior art does not render nonobvious an otherwise known
invention”).
Claims 21, 22, 23, 24, 25, and 27 recite the connecting members in the open
truss as “Y-shaped.” The corresponding members 38, 38 in Stallbaumer '588 are
disclosed as "diagonal" members (Stallbaumer '588, col. 2, ll. 62). Although these
diagonal members 38, 38 create a V-shape rather than a Y-shape, it is not seen to
be of consequence. Either a V or Y-shaped member could similarly connect the
two spaced apart longitudinally extending component members of the open truss
side frames since both extend obliquely from a common point. It is the obliquely
extending members in a truss which give it its strength regardless of whether they
form a V-shape or a Y-shape in the system.
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Claims 16, 23, and 27 recite the C-shaped cross section is also formed in the
side frame and/or the Y-shaped connecting members. As found supra, the cross
members 14, 14 in Stallbaumer ‘588 have a C-shaped cross section and to carry
that shape throughout all the remaining members of the frame would make sense
because it would add uniformity and ease of manufacturing.
Claims 9, 11, and 17 recite the feature of C-shaped side rails receiving the
U-shaped handle. The upper ends of the Stallbaumer ‘588 patent clearly show
socket portions 30, 30 in each side rail which receive the corresponding shaped
ends of the handle 18. As found supra, the C-shape of the cross member 14, 14 in
Stallbaumer ‘588 would be an obvious carry over to the side rails 34, 34 in
Stallbaumer ‘588 resulting in the sockets 30 having a “C” rather than an “O”
shape. The sizing of the socket section relative to the length of handle free end
portions is not considered to be a patentable distinction given that it is a function of
loading capacity and not invention.
We further reject claims 4, 6, 7, 8/6, and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Stallbaumer, U.S. 5,749,588, and Ward, U.S. 6,786,496
and further in view of Mortenson US 4,563,014. These claims recite, inter alia,
cross rails with a curved configuration. Mortenson however discloses a hand
cart/truck having cross rails with a curved configuration, but does not disclose a
single molded plastic rigid frame (Mortenson, col.2, ll. 59, col. 3, ll. 22). As found
supra, frames made as a single unitary piece were known at the time of the
invention, one example of this is disclosed by integrated frame 16 in Ward. It
would have been obvious to one of ordinary skill in the art of hand truck
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fabrication to have given the cross members in Stallbaumer ‘588 a curved
configuration in order to receive correspondingly shaped items therein, such as, a
drum or tire stack.
A Declaration of William E. Malone, Jr., submitted August 11, 2005, has
been considered, but we decline to accord the testimony in the Declaration much, if
any, weight. Initially we note that Appellant has failed to show good cause as to
why it was not submitted earlier in the prosecution history.2 Consideration of a
declaration filed late in prosecution without a showing of good cause gives us
considerable pause. However, since the Examiner considered the Declaration and
our affirmance is a new rejection, we address the Malone testimony on its merits,
but find it lacking.
Appellant asserts the level of skill in the art “requires approximately
10-years in plastic design and must have knowledge of the strength of metals and
plastics including the stresses, both static and dynamic stresses (re brittleness) that
the elements of the cart are subjected to and the fatigue stress of the elements.”
(Decl. 4). While Mr. Malone's statements are interesting, they are not much help
to the Board in the context of this appeal. The statement does not tell us what one
learns in 10 years in plastic design and what specific knowledge one skilled in the
art has of metal and plastics stresses. Cf. Argyropoulos v. Swarup, 56 USPQ2d
1795, 1807 (Bd. Pat. App. & Int. 2000) (explaining why defining the level of skill

2 The Declaration was submitted as part of an After Final Amendment dated
November 11, 2005 without any statement of the required good and sufficient
reasons why it was necessary and was not earlier presented in compliance with 37
C.F.R. § 1.116(e).
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in the art in terms of degrees obtained is less helpful than defining it in terms of
what such a person would have known and what the person would have been able
to do). The level of skill in the art is best established by reference to documents
showing what was known. We learn directly from Ward, that one skilled in the art
would have known how to make and use a unitary plastic at the time of the
Appellant’s invention. We credit the objective statements in Ward over the broad
conclusory statements in the Malone Declaration. Cf. J.C. Equipment Corp. v.
England, 360 F.3d 1311, 1315 (Fed. Cir. 2004) (court knew of no authority, and
J.C. cited none, that requires the trier of fact to credit expert testimony over
conflicting non-expert testimony); Velander v. Garner, 348 F.3d 1359, 1371, 68
USPQ2d 1769, 1778 (Fed. Cir. 2003) (references are generally entitled to great
weight because they are almost always prepared without regard to their use as
evidence in the particular examination in which they are used).
Furthermore, the benefits e.g., strength and stability, of the unitary design
advanced by Appellant on page 6 of the Declaration are the same as those
identified for the unitary frame disclosed in Ward. (Ward col. 5, ll. 64-67, col. 6,
ll. 1-8). Thus, it would appear that the Appellant has used a known technique for
its intended purpose.
The Declaration additionally fails to provide any objective evidence of the
asserted commercial success (Decl. 7). The Declaration does not discuss in any
cogent manner, or rely on, relevant matters, such as, (1) accounting ledgers of the
store sales comparing year by year advances in the sales of the product, (2) the
nature and extent of advertising, (3) pricing (e.g., were carts sold at a low price to
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gain a market share?), and/or data showing how the product out performed other
like products which did not have the integrally formed frame, such as found in
Stallbaumer 5,749,588. The Declaration fails to provide any credible nexus
between the novel features of the claimed invention and the alleged commercial
sales. In re Fielder, 471 F.2d 640, 642-43, 176 USPQ 300, 302 (CCPA 1973).
The alleged commercial success here, as in KSR, cited above, fails to carry the day.
Accordingly, the Declaration fails to convince us that the claimed invention of
claims 1-12, 14-17, 21-25, and 27 would not have been obvious under 35 U.S.C.
§ 103(a).
CONCLUSIONS OF LAW
Pursuant to 37 C.F.R. § 41.50(b) (2006) we enter the following new
rejections.
Claims 1-3, 5, 8/5, 9-11, 14-17, 21-25, 27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Stallbaumer, U.S. 5,749,588, in view of Ward,
U.S. 6,786,496.
Claims 4, 6, 7, 8/6 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stallbaumer, U.S. 5,749,588, and Ward, U.S. 6,786,496 and
further in view of Mortenson US 4,563,014.
Appellant is not entitled to a patent containing the claims on appeal.

DECISION
It is hereby ORDERED that the decision of the Examiner rejecting
claims 1-12, 14-17, 21-25 and 27 over the prior art is AFFIRMED.
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It is FURTHER ORDERED that since our rationale differs from the
rationale of the Examiner, our affirmance is designated as a new ground of
rejection. 37 C.F.R. § 41.50(b) (2006).
It is FURTHER ORDERED that our decision is not a final agency action.
It is FURTHER ORDERED that within two (2) months from the date of our
decision Appellant may further prosecute the application on appeal by exercising
one of the two following options:
1. Request that prosecution be reopened by submitting an
amendment or evidence or both. 37 C.F.R. § 41.50(b)(1) (2006).
2. Request rehearing on the record presently before the Board.
37 C.F.R. § 41.50(b)(2) (2006).
It is FURTHER ORDERED that the time for taking action under either 37
C.F.R. §41.50(b)(1) or 41.50(b)(2) is not extendable under the provisions of 37
C.F.R. § 1.136(a) (2006).
AFFIRMED – 37 C.F.R. § 41.50(b)

hh

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