Ex Parte McIntyre

Board of Patent Appeals and Interferences

Feb 24, 2011

10705307 (B.P.A.I. Feb. 24, 2011)

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.
10/705,307 11/10/2003 Lynne McIntyre MCI-10002/29 4439
25006 7590 02/25/2011
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
MAI, TRI M
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
02/25/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LYNNE McINTYRE
____________________

Appeal 2009-009360
Application 10/705,307
Technology Center 3700
____________________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY and
MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009360
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STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 1, 3 and 12-19. The Examiner has 3
withdrawn claims 4-11 from consideration. An oral hearing was held on 4
February 8, 2011. We have jurisdiction under 35 U.S.C. § 6(b). 5
We sustain the Examiner’s rejections of: 6
claims 1, 3 and 13 under 35 U.S.C. § 103(a) as being as 7
being unpatentable over Cozens (US 485,612, issued Nov. 8, 8
1892), either Chisholm (US 6,000,509, issued Dec. 14, 1999) or 9
Smith (US 5,803,470, issued Sep. 8, 1998), and Tisbo (US 10
4,531,645, issued Jul. 30, 1985); 11
claim 12 under § 103(a) as being unpatentable over 12
Cozens, either Chisholm or Smith, Tisbo and Raley (US 13
4,825,584, issued May 2, 1989); and 14
claim 14 under § 103(a) as being unpatentable over 15
Cozens, either Chisholm or Smith, Tisbo and either Milionta 16
(US 6,715,594 B2, issued Apr. 6, 2004) or Tong (US 6,334,519 17
B1, issued Jan. 1, 2002). 18
We do not sustain the Examiner’s rejections of: 19
claims 15, 16 and 18 under § 103(a) as being 20
unpatentable over Cozens, either Chisholm or Smith, Tisbo and 21
Pineda; 22
claim 17 under § 103(a) as being unpatentable over 23
Cozens, either Chisholm or Smith, Tisbo, Pineda and either 24
Milionta or Tong; and 25
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claim 19 under § 103(a) as being unpatentable over 1
Cozens, either Chisholm or Smith, Tisbo, Pineda and Raley. 2
Claim 1 is illustrative of the claimed subject matter: 3
1. A configurable travel trunk, 4
comprising: 5
a body portion having an interior with a 6
depth and opposing inner side walls; 7
one or more shelves disposed within the 8
interior of the body portion, each shelf extending 9
from one of the side walls to the other; 10
a closable door portion hinged to the body 11
portion, the door portion having an interior with a 12
back wall defining a door depth; 13
a plurality of fasteners disposed on the back 14
portion of the back wall of the door; 15
a plurality of modular inserts, each insert 16
having a back surface connectable to the fasteners 17
and a front surface with compartments adapted to 18
carry a different set of items for a particular travel 19
application; 20
one or more removable and reconfigurable 21
shelves with lower tracks; and 22
a drawer configured to slide in and out on 23
the tracks. 24
25
ISSUES 26
The Appellant argues the rejection of independent claim 16 separately 27
from the rejection of independent claim 1. (App. Br. 5.) On the other hand, 28
the Appellant presents no arguments directed against the rejections of the 29
dependent claims separate from the arguments directed against the rejections 30
of independent claims 1 and 16. (See App. Br. 3-5.) 31
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Two issues raised in this appeal are: 1
First, do the evidence and technical reasoning underlying 2
the rejection of claim 1 adequately support the conclusion that a 3
configurable travel trunk including one or more removable and 4
reconfigurable shelves with lower tracks and a drawer 5
configured to slide in and out of the tracks would have been 6
obvious from the combined teachings of Cozens, either 7
Chisholm or Smith, and Tisbo? (App. Br. 3-5; Reply Br. 1.) 8
Second, do the evidence and technical reasoning 9
underlying the rejection of claim 16 adequately support the 10
conclusion that a configurable travel trunk having a pair of 11
integrated wheels and a retractable handle would have been 12
obvious from the combined teachings of Cozens, either 13
Chisholm or Smith, Tisbo and Pineda? (App. Br. 5.) 14
15
FINDINGS OF FACT 16
The record supports the following findings of fact (“FF”) by a 17
preponderance of the evidence. 18
1. We adopt and incorporate by reference the Examiner’s findings 19
in the Answer at page 3, line 14 (Cozens teaches . . .) to line 20 (“. . . 20
connectable to the front surface.”). 21
2. More specifically, Cozens describes a trunk. (Cozens 1, ll. 28-22
29.) The trunk includes an array of racks b, b′ arrayed vertically in its 23
interior and one adjustable shelf a fitted in the racks. (Cozens, col. 1, ll. 29-24
30 and fig. 1.) The shelf a is configurable in the sense that it may be raised 25
or lowered using the racks b, b′. 26
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3. Cozens discloses fitting a sliding board D in grooves inside the 1
bottom of the trunk. Cozens further discloses affixing lower ends of straps c 2
to the sliding board D. Safety pins connect hooks B fitted to the lower side 3
of the shelf a to upper ends of the straps c. The straps c allow garments 4
stored in the trunk to hang firmly and independently of other such garments 5
in whatever position the trunk may be placed. (Cozens 1, ll. 30-42.) 6
4. Figures 1 and 2 of Cozens appear to depict casters pivotally 7
mounted in journals at the corners of the bottom of the trunk. The figures 8
also appear to depict a handle mounted on top of the trunk. 9
5. In addition, we adopt the Examiner’s findings that: 10
Cozens also teach[es] pocket “d” on the door, but 11
does not show the plurality of fasteners disposed 12
on the pockets. Smith ‘470 teaches that it is 13
known in the art to provide a plurality of pockets 14
54 (see Fig. 5) with hook and pile fasteners (col. 4, 15
ln. 63). . . . In the alternative to Smith, Chisholm 16
also teaches that it is known in the art to provide 17
pockets (Fig. 5, see pockets 61, 62). 18
(Ans. 3-4.) 19
6. Chisholm teaches that it was known to provide suitcases with 20
separate compartments. (Chisholm, col. 1, ll. 10-11.) Chisholm also teaches 21
that, oftentimes, it was found desirable to separate certain articles such as 22
cosmetics and toiletries from other articles within a suitcase. (Chisholm, 23
col. 1, ll. 14-16.) 24
7. We agree with the Examiner in finding “Tisbo teaches that it is 25
known in the art to provide a shel[f] 192 with tracks 204 to accommodate 26
drawers 206.” (Ans. 4.) 27
8. Tisbo discloses a cabinet 24. The interior of Tisbo’s cabinet 24 28
includes a plurality of parallel tray ledges 144 positioned at opposite sides of 29
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the interior. (Tisbo, col. 3, ll. 9-13; col. 4, ll. 13-15 and 29-32; and fig. 1.) 1
A plurality of trays is mounted on the tray ledges 144. (Tisbo, col. 5, ll. 18-2
19.) 3
9. As the Examiner points out (see Ans. 4), Tisbo describes a tray 4
192 which 5
includes a plurality of elongated supports 202 6
which have support ledges 204 formed thereon. 7
Tray 192 includes a plurality of elongated 8
containers 206 which have support lips 208 formed 9
on opposed sides for mounting on ledges 202[.] 10
Thus tray 192 may carry several containers 206, 11
for holding a variety of items. 12
(Tisbo, col. 5, ll. 2-8.) 13
10. Pineda describes a retractable handle mounting mechanism for 14
a file cabinet 12. The mechanism includes a pair of spaced channel tracks 15
80, 82 and a pair of wheels 62 secured to the bottom surface 68 of the file 16
cabinet 12 and a pair of slide blocks 76, 78 received in the channel tracks 80, 17
82. The slide blocks 76, 78 pivotally mount support bars 72, 74 of the 18
handle 70. By pivoting the handle 70, the support bars 72, 74 and the slide 19
blocks 76, 78 can be retracted into the tracks 80, 82. (Pineda, col. 4, ll. 65-20
67 and col. 5, ll. 12-24.) 21
22
PRINCIPLES OF LAW 23
Obviousness under § 103(a) is an issue of law but must be decided on 24
the basis of factual inquiries set out by the Supreme Court in Graham v. 25
John Deere Co., 383 U.S. 1, 17-18 (1966). 26
The test of obviousness vel non is statutory. It 27
requires that one compare the claim’s “subject 28
matter as a whole” with the prior art “to which said 29
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subject matter pertains.” 35 U.S.C. § 103. The 1
inquiry is thus highly fact-specific by design. 2
In re Ochiai, 71 F.3d 1565, 1569 (Fed. Cir. 1995). Just as there are no per 3
se rules of obviousness, Id. at 1572, there are no per se rules of patentability. 4
In KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007), the 5
Supreme Court recognized that, “when the prior art teaches away from 6
combining certain known elements, discovery of a successful means of 7
combining them is more likely to be nonobvious.” Id. (citing United States 8
v. Adams, 383 U.S. 39, 51-52 (1966) (emphasis added). For example, our 9
reviewing court in Re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), stated 10
that a prior art reference in effect taught away from claimed subject matter 11
where the modification proposed by the examiner would have rendered the 12
device disclosed in the reference inoperable for its intended purpose. 13
Nevertheless, the court held open the possibility that a persuasive reason for 14
modifying the prior art device as proposed by the Examiner might have 15
provided sufficient underpinning for a conclusion that the claimed subject 16
matter was obvious. Apart from its discussion as to the reference’s effective 17
teaching away from the proposed modification, the court also held that the 18
“mere fact that the prior art could be so modified would not have made the 19
modification obvious unless the prior art suggested the desirability of the 20
modification.” Id. 21
22
ANALYSIS 23
First Issue 24
The Appellant contends that the Examiner has not articulated a 25
persuasive reason why the substitution of shelves and drawers similar to 26
those described by Tisbo would have been obvious. More specifically, the 27
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Appellant points out that Cozens describes only one shelf a in the interior of 1
Cozens’ trunk. (See FF 2.) The Appellant also points out that Cozens 2
describes the use of straps c extending downwardly from hooks B fitted to 3
the underside of the shelf a to allow garments stored in the trunk to hang 4
firmly and independently of other such garments in whatever position the 5
trunk may be placed. (See FF 3.) The Appellant argues that the substitution 6
proposed by the Examiner would render the trunk inoperable for the purpose 7
of allowing garments stored in the trunk to hang firmly and independently of 8
other such garments according to the principle of operation described by 9
Cozens. 10
“[I]f a technique has been used to improve one device, and a person 11
of ordinary skill in the art would recognize that it would improve similar 12
devices in the same way, using the technique is obvious unless its 13
application is beyond his or her skill.” KSR Int’l at 417. Cozens describes a 14
trunk having racks b, b′ arrayed vertically in its interior for receiving a shelf. 15
(FF 1 and 2.) Tisbo describes a cabinet 24 including tray ledges 144 arrayed 16
vertically in its interior for receiving trays or shelves. (FF 8 and 9.) To this 17
extent, the trunk described by Cozens and the cabinet described by Tisbo are 18
similar devices. As the Examiner points out (see Ans. 8), this similarity 19
alone suggests that it would have been obvious to improve Cozens’ trunk by 20
either providing an additional shelf similar in structure to the trays or shelves 21
192 and the containers or drawers 206 on Cozens’ racks b, b′ or substituting 22
a shelf similar in structure to the trays or shelves 192 and the containers or 23
drawers 206 for Cozens’ shelf a. The Appellant provides no persuasive 24
reason why the implementation of these modifications would have been 25
beyond the level of ordinary skill in the art. 26
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Furthermore, the disclosures of Cozens and Chisholm indicate that 1
one of ordinary skill in the art would have known that trunks might be used 2
for purposes other than solely as wardrobes. Citing a known problem 3
similar to that addressed by Chisholm (see FF 6), the Examiner states that 4
the proposed modification of Cozens’ trunk “would address the need for 5
holding additional contents and to segregate the contents easily.” (Ans. 7.) 6
This statement articulates a reason why one of ordinary skill in the art might 7
have modified Cozens’ trunk to include a shelf similar in structure to the 8
trays or shelves 192 and the containers or drawers 206, even at the risk of 9
sacrificing improvements taught by Cozens itself. 10
We sustain the rejection of claims 1, 3 and 13 under § 103(a) as being 11
as being unpatentable over Cozens, either Chisholm or Smith, and Tisbo. 12
Since the Appellant provides no persuasive argument explaining why claim 13
12 or claim 14 might be patentable if claim 1 is not, we sustain the rejection 14
of claim 12 under § 103(a) as being unpatentable over Cozens, either 15
Chisholm or Smith, Tisbo and Raley; and the rejection of claim 14 under 16
§ 103(a) as being unpatentable over Cozens, either Chisholm or Smith, 17
Tisbo and either Milionta or Tong. 18
19
Second Issue 20
Claims 15 and 16 claim configurable travel trunks. The trunk recited 21
in each claim has integrated wheels and a retractable handle. The Appellant 22
is correct in contending that the Examiner has not provided a persuasive 23
reason for modifying Cozens’ trunk to include these limitations. The 24
Examiner concludes that it would have been obvious “to provide a 25
retractable handle along with wheels in Cozens as taught by Pineda to 26
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provide an alternative means [to] transport the case and to allow one to 1
transport the case easily.” 2
Cozens’ case already includes wheels and a handle. (FF 4.) A simple 3
substitution of a retractable handle support mechanism of the type described 4
by Pineda (see FF 10) for the wheels and handle depicted in the drawing 5
figures of Cozens might be awkward for the user. The Examiner has not 6
provided sufficient explanation as to how the teachings of Pineda would be 7
applied to Cozens’ trunk in order to provide a combination of integral 8
wheels and a retractable handle actually capable of allowing one to transport 9
the trunk easily. In the absence of such an explanation, we do not sustain the 10
rejections of claims 15, 16 and 18 under § 103(a) as being unpatentable over 11
Cozens, either Chisholm or Smith, Tisbo and Pineda. Since the Examiner 12
does not explain how Raley, Milionta or Tong might remedy this deficiency, 13
we do not sustain the rejection of claim 17 under § 103(a) as being 14
unpatentable over Cozens, either Chisholm or Smith, Tisbo, Pineda and 15
either Milionta or Tong; or the rejection of claim 19 under § 103(a) as being 16
unpatentable over Cozens, either Chisholm or Smith, Tisbo, Pineda and 17
Raley. 18
19
DECISION 20
We AFFIRM the Examiner’s decision rejecting claims 1, 3 and 12-14. 21
We REVERSE the Examiner’s decision rejecting claims 15-19. 22
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED-IN-PART 5
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Klh 10
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GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C. 13
PO BOX 7021 14
TROY, MI 48007-7021 15