Ex Parte McKinnon

Board of Patent Appeals and Interferences

Jun 13, 2008

09579630 (B.P.A.I. Jun. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT MCKINNON, JR.
____________

Appeal 2008-2146
Application 09/579,630
Technology Center 3700
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Decided: June 13, 2008
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's non-final rejection1 of claims 1 through 7, 9, 12, 13, 15 through
35, 37, 39, 40, and 58 through 75. Claims 42 and 44, the other claims

1 Appellant properly appeals from the Examiner's non-final rejection since
the claims on appeal have been twice rejected. 35 U.S.C. § 134(a) (stating
“[a]n applicant for a patent, any of whose claims has been twice rejected,
may appeal from the decision of the primary examiner to the Board of Patent
Appeals and Interferences.”).
Appeal 2008-2146
Application 09/579,630

pending in the above-identified application, were objected to as being
dependent upon a rejected base claim, but were indicated to be allowable if
rewritten in independent form including all of the limitations of the base
claim and any intervening claims. We have jurisdiction pursuant to 35
U.S.C. § 6.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a removable solid plastic
lid for covering a utility box, such as a water meter box, that is capable of
withstanding at least an 8,000 pound load. Spec. 4. Appellant states that
his invention involves (1) compression molding plastic material, such as
medium density polyethylene, to form a solid plastic lid and (2) reducing the
amount of plastic material used in the solid plastic lid capable of
withstanding at least an 8,000 pound load via the formation of recesses.
(Spec. 2 and 3). According to Appellant, forming a solid plastic lid having a
height of 1.5 inches by compression molding alone results in cracking
because the lid is unable to fully cure. Id. In order to manufacture a plastic
lid that can withstand an 8,000 pound load, Appellant states that recesses,
which range from 0.0875 to 1 inch, must be formed in such compression
molded lid. Id. Further details of the appealed subject matter are recited in
representative claim 5 reproduced below:

5. A lid for a utility box, comprising:

a compression molded solid member made only of
plastic material and having spaced apart upper and lower sides
and an outer edge,
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said outer edge extends around said member next to said
lower side and which faces outward of said member,

said lower side comprising a lower surface which is
contiguous with said outer edge at least on two opposite sides
of said outer edge,

a plurality of spaced apart recesses having outer edges at
said lower surface which are spaced from said outer edge of
said member such that said lower surface surrounds said outer
edges of said recesses,

said recesses being formed during the molding process to
enhance curing of the plastic material and hence the quality of
the lid,

each of said recesses comprises a surface which extends
from its said outer edges into the said member,

said outer edges of each of said recesses comprise two
spaced apart elongated outer edges and two spaced apart shorter
outer edges,

said elongated edges of said recesses are generally
parallel with each other,

said member has a given dimension along which said
elongated edges of said recesses extend,

the lengths of said elongated edges of said recesses are
greater than one half of said given dimension of said member,

said member of said lid has the strength sufficient to
withstand a load of at least 8,000 pounds applied to said upper
side when said lower side is supported by means placed around
a perimeter of said member.

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Application 09/579,630

The Examiner has relied upon the following references:
Hauffe 3,921,449 Nov. 25, 1975
Goodwin 5,564,586 Oct. 15, 1996
Bonnema 4,726,490 Feb. 23, 1988
Marthaler 5,755,350 May 26, 1998

The Examiner has rejected the claims on appeal as follows:
1) Claims 5, 6, 13, 18, 19, 25, 39, 40, 59, 60, 62, 69, 72, 74 and 75
under 35 U.S.C. § 102(b) as anticipated by the disclosure of Hauffe;
2) Claims 1, 3, 4, 9, 12, 15-17, 37 and 58 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Hauffe and Goodwin;
3) Claim 2 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Hauffe, Goodwin, and Bonnema;
4) Claim 7 under 35 U.S.C. § 103(a) as being unpatentable over the
combined disclosures of Hauffe and Bonnema;
5) Claims 20-24, 26-35, 61, and 63-65 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Hauffe;
6) Claims 66-68, 70, 71, and 73 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Hauffe;
7) Claims 5, 6, 13, 18-35, 39, 40, and 59-75 under 35 U.S.C. § 103(a)
as unpatentable over the combined disclosures of Hauffe and Marthaler;
8) Claims 1, 3, 4, 9, 12, 15-17, 37, and 58 under 35 U.S.C. § 103(a) as
unpatentable over Hauffe in view of Goodwin and Marthaler;
9) Claim 2 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Hauffe, Goodwin, Marthaler, and Bonnema; and
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10) Claim 7 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Hauffe, Marthaler, and Bonnema.

ISSUES
1. Has the Examiner demonstrated that Hauffe teaches either expressly or
inherently each and every limitation recited in claims 5, 18, 25, 59, 60, 62,
69, and 72 within the meaning of 35 U.S.C. § 102(b)?
2. Has the Examiner identified a reason that would have prompted one of
ordinary skill in the art to employ a lid capable of withstanding 8,000
pounds as required by claims 1, 5, 18, 23, 25, 26, 31, 58, 59, 60, 61, 62, 63,
65, 66, 69, 71, and 72 within the meaning of 35 U.S.C. § 103(a)?

PRINCIPLES OF LAW, FACTUAL FINDINGS, AND ANALYSES

ANTICIPATION
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631, (Fed. Cir. 1987). “Inherency, however, may not be established
by probabilities or possibilities. In re Oelrich, 666 F.2d 578, 581-82,
(CCPA 1981). "In relying upon the theory of inherency, the examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d
1461, 1463-64 (BPAI 1990)(citations omitted).
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In applying the above principles of law to the present facts, we
determine that the Examiner has not established a prima facie case of
anticipation. The Examiner recognizes that Hauffe is silent regarding the
limitation "said lid has the strength sufficient to withstand a load of at least
8,000 pounds" as required by claims 5, 18, 25, 59, 60, 62, 69, and 72. (Ans.
7). The Examiner also recognizes that this claim limitation is a function of
the lid's dimension (e.g., thickness). Id. The Examiner, however, has not
provided any basis to support the determination that Hauffe's lid is capable
of withstanding a load of 8,000 pounds. Id. Specifically, the Examiner has
not directed us to any lid dimensions in Hauffe that are capable of
supporting a load of 8,000 pounds.
On this record, the Examiner has simply not supplied any reasoning to
support the determination that Hauffe’s lid can withstand a load of at least
8,000 pounds.
Accordingly, for the reasons stated by the Appellant in the Brief and
above, we reverse the Examiner's decision rejecting the claims on appeal
under 35 U.S.C. § 102(b).

OBVIOUSNESS
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the
subject matter of a claim would have been obvious] need not seek out
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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.” KSR Int'l Co. v. Teleflex
Inc., 127 S. Ct. 1727, 1741 (2007). "[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." KSR at 1741-42, quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006).
As discussed above, Hauffe does not expressly or inherently teach the
limitation "said lid has the strength sufficient to withstand a load of at least
8,000 pounds" in claims 1, 5, 18, 23, 25, 26, 31, 58, 59, 60, 61, 62, 63, 65,
66, 69, 71, and 72. Furthermore, on this record, the Examiner has not
provided any articulated reasoning why the making and employment of such
a feature would have been obvious to one of ordinary skill in the art within
the meaning of 35 U.S.C. § 103.
Accordingly, we are constrained to reverse the Examiner's decision
rejecting the claims on appeal under 35 U.S.C. § 103(a) as well.
ORDER
On this record, the decision of the Examiner is reversed.
REVERSED

tf/ls

DECKER, JONES, MCMACKIN, MCCLANE, HALL &
BATES, P.C.
BURNETT PLAZA 2000
801 CHERRY STREET, UNIT #46
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