Ex Parte McGarry et al

Patent Trial and Appeal Board

Nov 8, 2018

14038023 (P.T.A.B. Nov. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/038,023 09/26/2013
24126 7590 11/13/2018
ST. ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
John McGarry
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
02315-P0082A 7918
EXAMINER
CHU,KINGM
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
11/13/2018 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):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN MCGARRY, PAMELA JO NAEVE, and
MICHAEL GRINNALL
Appeal2017-000852
Application 14/038,023
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John McGarry et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-3, 5-7, 19, and 20. 2 An
oral hearing, pursuant to 37 C.F.R. § 41.47, was held on October 31, 2018.
We have jurisdiction under 35 U.S.C. § 6(b).
1 Custom-Pak, Inc. is identified as the real party in interest. Br. 2.
2 Claims 4, 8, 9, 21, and 22 are indicated to be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims. Final Act. 8. The Final Action does not include a
rejection of any of these claims.
Appeal2017-000852
Application 14/038,023
We REVERSE.
THE CLAIMED SUBJECT MATTER
Appellants' invention is directed to "a blow molded chain saw case."
Spec. ,r 1. Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A hybrid double and single wall case for a chainsaw
having a bar, said case comprising:
a first body section and a second body section, each having
a base wall and a peripheral side wall, said peripheral side walls
each defining an edge wherein said first body section is a single
molded piece;
said first and second body sections pivotally connected
with respect to each other and adapted to pivot between an open
position and a closed position, the open position to allow the
chainsaw to be positioned in the case, the closed position to
contain at least a majority of the chainsaw within the case;
said peripheral side wall of said first body section having
an opening with two side sections, the opening extending from
said edge and towards said base wall;
a scabbard having an end portion with two side sections,
said side sections of said end portion adapted to mate with said
side sections of said opening, said scabbard adapted to be applied
to the bar of the chain saw, said end portion adapted to be
received within the opening;
a portion of the first body section being configured as a
double wall structure; and
a portion of the first body section being configured as a
single wall structure.
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Appeal2017-000852
Application 14/038,023
REJECTION
Claims 1-3, 5-7, 19, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Anderson (US 2003/0075467 Al, published Apr. 24,
2003) and Dembicks (US 4,371,079, issued Feb. 1, 1983). 3
DISCUSSION
The Examiner finds that Dembicks discloses most of the limitations of
claim 1 "except for a portion of the first body section being configured as a
double wall structure; and a portion of the first body section being configured
as a single wall structure." Final Act. 3--4. The Examiner finds that Anderson
discloses "a single wall or double wall construction could be used to construct
panels and portions of walls of the container." Id. at 4 (citing Anderson,
,r 31 ). The Examiner concludes that it would have been obvious to one of
ordinary skill in the art "to modify Dembicks such that a hybrid construction
of single and double walls were provided for in order to save material, provide
less waste and to use other forming techniques in producing the case." Id.
Appellants' first contention is that "[a]lthough one piece in Anderson
may be single wall and others may be double wall [0031], none of the pieces
include both single and double wall structures within a single molded piece."
Br. 6-7. Appellants' second contention is that the Examiner's reason for
combining the teachings of Dembicks and Anderson, to save material, is not
disclosed in the prior art but is based on Appellants' disclosure. Br. 9-10
3 The rejection of claims 1-9 under 35 U.S.C. 112, second paragraph, as
being indefinite has been withdrawn by the Examiner. See Advisory Action
(dated Feb. 5, 2016); Final Act. 2-3.
3
Appeal2017-000852
Application 14/038,023
(citing Spec. ,r 8, 39). The Examiner responds that Anderson discloses "both
a single wall construction and a double wall construction" of the panels, and,
"Anderson as a whole teaches that the case in Figure 4 teach that these
panels could be hinged ... [and] considered one piece." Ans. 4. For the
following reasons, we do not sustain the rejection of claim 1.
Anderson discloses a chain saw case 1 OC comprising a number of
discreet flat panels that interconnect to form an enclosure for a chain saw.
See Anderson, Figs. 3--4. Anderson further discloses that the flat panels are
each blow molded and of double wall construction. Id. ,r 28. Anderson also
discloses that "one or more of the doors or panels of the case body may be of
single wall construction." Id. ,r 31. The Examiner does not, however, direct
us to any disclosure in Anderson of a single molded piece of Anderson's
chain saw case 1 OC that is configured with a single wall structure and a
double wall structure as required in claim 1. Even accepting the Examiner's
position that Anderson's individual panels connected together by hinges to
form an enclosure may be considered "one piece," that is not sufficient to
satisfy the claim limitation of a first body section that is a single molded
piece with a portion configured as a single wall structure and a portion
configured as a double wall structure. To the extent that the Examiner
asserts that this claim limitation is satisfied by the combined teachings of
Dembicks and Anderson, the reason for the combination stated by the
Examiner lacks a rational underpinning because, as Appellants correctly
point out, the Examiner does not support the reasoning with specific
findings supported by the prior art. As the rejection is based on an
erroneous factual finding, the conclusion of obviousness cannot stand. See
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that "[t]he legal
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Appeal2017-000852
Application 14/038,023
conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand."). We, thus do not
sustain the rejection of claim 1 and claims 2, 3, and 5-7 which depend
directly or indirectly from claim 1.
Independent claim 19 requires that "a portion of the first body section
being configured as a double wall structure; wherein at least a majority,
based on surface area, of the base wall of the first body section being
configured as a single wall structure." Br. 23 (Claims App.) (emphasis
added). The Examiner finds that Anderson discloses a hybrid construction
where "the majority of the side wall panels are made from a single wall
structure." Final Act. 7 ( emphasis added). We, thus, do not sustain the
rejection of claim 19 because the rejection does not address the actual claim
limitation that the majority based on surface area of the base wall is
configured as a single wall structure. We also do not sustain the rejection of
claim 20 which depends from claim 19 for the same reason.
DECISION
The Examiner's decision rejecting claims 1-3, 5-7, 19, and 20 is
reversed.
REVERSED
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