Ex Parte Nieto

Board of Patent Appeals and Interferences

Feb 20, 2008

10379869 (B.P.A.I. Feb. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FRANCISCO A. NIETO
____________________

Appeal 2006-2200
Application 10/379,869
Technology Center 3600
____________________

Decided: February 20, 2008
____________________

Before: TERRY J. OWENS, JENNIFER D. BAHR and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant seeks review under 35 U.S.C. § 134 (2002) of the 2
Examiner’s final rejection of claim 22 under 35 U.S.C. § 102(e) (2002) as 3
anticipated by Meabon (U.S. Patent 6,419,244) and of claims 1-3, 5, 6, 8-13, 4
15, 16, and 18-21 under 35 U.S.C. § 103(a) (2002) as unpatentable over 5
Appeal 2006-2200
Application 10/379,869

2
Meabon in view of Cox (U.S. Patent 6,109,644). Claim 22 is representative 1
of the Appellant’s claims and reads as follows: 2
3
22. A handcart, comprising: 4
a platform having a first end and a 5
second end, 6
a wheel assembly attached proximally 7
to said first end of the platform and extending 8
downwardly a predetermined distance from said 9
platform, 10
a stand attached proximally to said 11
second end of the platform and extending 12
downwardly from said platform substantially the 13
same predetermined distance as said wheel 14
assembly; and 15
handle means attached to said second 16
end of said platform, 17
wherein said wheel assembly and said 18
stand are spaced apart such that, when said 19
handcart is positioned upside down, a wheel 20
assembly of a second handcart of the invention is 21
receivable between the stand and said second end, 22
thereby positioning said handcart in substantially 23
horizontal stackable arrangement with said second 24
handcart. 25
26
(Emphasis added). We have jurisdiction under 35 U.S.C. § 6(b) (2002). 27
The determinative issue in this appeal is whether Meabon alone 28
discloses, or the combined teachings of Meabon and Cox suggest, a handcart 29
having a wheel assembly and a stand meeting the limitations of the italicized 30
clause. We reverse and enter new grounds of rejection against claims 1-3, 5, 31
6, 8-13, 15, 16 and 18-22. 32
Appeal 2006-2200
Application 10/379,869

3
A. The Rejection of Claim 22 Under 35 U.S.C. § 102(e) as Being 1
Anticipated by Meabon 2
The Examiner appears to have found that all of the carts illustrated in 3
Figs. 4-13 of Meabon anticipate the subject matter of claim 22. (Ans. 3). 4
The Appellant contends that all of these cart fail to satisfy the “wherein” 5
clause italicized above. (Reply 3-4). We agree that that the Examiner’s 6
findings do not suffice to reject claim 22 under section 102(e). 7
The Examiner concludes that: 8
9
the second handcart is not positively recited and 10
the [“wherein” clause at the end of claim 22] is an 11
intended purpose and therefore given less 12
patentable weight. The applicant also fails [to] 13
recite structure that would specifically define the 14
space relative to the [cart’s] structure . . . . 15
[T]herefore any area around the cart of Meabon 16
can be considered “space” even if it’s not designed 17
for stacking. 18
19
(Ans. 5). We disagree with the Examiner’s contention that the “wherein” 20
clause is merely an intended purpose. 21
As the Appellant points out (Reply 4), the “wherein” clause defines a 22
structural relationship in the sense that it defines the relative spacing of the 23
wheel assembly, the stand and the second end of the handcart. This 24
structural relationship is defined by the capacity of the recited handcart, 25
when positioned upside down, to receive the wheel assembly of a second 26
cart meeting all elements of claim 22 between the stand and the second end, 27
“thereby positioning said handcart in substantially horizontal stackable 28
arrangement with said second handcart.” In other words, the position of the 29
recited handcart relative to the second handcart when the wheel assembly of 30
Appeal 2006-2200
Application 10/379,869

4
the second handcart is received between the stand and the second end of the 1
recited handcart must be such that the recited cart is in “substantially 2
horizontal stackable arrangement” with the second handcart. Hence, the 3
“thereby” clause precludes reading the claim language “wherein said wheel 4
assembly and said stand are spaced apart” to include spacing apart across an 5
area around the cart not designed for stacking. 6
The “thereby” clause has two components1: the recited handcart must 7
be capable of being positioned in a “stackable arrangement with said second 8
handcart,” that is, in an arrangement in which either the recited handcart is 9
placed on top of the second handcart or the second handcart is placed on top 10
of the recited handcart; and the recited handcart must be capable of being 11
positioned in a “substantially horizontal” arrangement. With respect to the 12
latter component, we agree with the Appellant (Br. 4) that the phrase 13
“substantially horizontal” is best interpreted in light of Figs. 3A and 3B of 14
the present application. In light of Figs. 3A and 3B, we interpret the phrase 15
“substantially horizontal” to require that the platform of the cart recited in 16
the claim be horizontal or at least not be ostensibly inclined from horizontal. 17
Since the lengths of the platforms appear in Figs. 3A and 3B to be the 18
longest dimensions of the carts, our interpretation is consistent with the 19

1 We reach this result from the claim language itself. The adjective
“stackable” modifies the noun “arrangement.” Since “substantially
horizontal” is an adjectival phrase rather than an adverbial phrase,
“substantially horizontal” must also modify the noun “arrangement” rather
than the adjective “stackable.” Since “[a]ll words in a claim must be
considered in judging the patentability of that claim against the prior art,” In
re Wilson, 424 F.2d 1382, 1385 (C.C.P.A. 1970), the limiting effect of the
adjectives “substantially horizontal” and “stackable” on the noun
“arrangement” must be considered separately in construing the “thereby”
clause at the end of claim 22.
Appeal 2006-2200
Application 10/379,869

5
common meaning of the word “horizontal” as applied to mechanical devices. 1
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY at 2588 2
(G.&C. Merriam Co. 1971) (“horizontal,” entry 1, def. 1d: “placed or 3
operating chiefly along a plane parallel to the horizon”). 4
The Appellant contends that the “handle 28 clearly makes one end of 5
the cart higher than the other end of the cart. The result would be that the 6
carts cannot be put into substantially horizontal stackable arrangement and 7
instead will be disposed at clearly non-horizontal angles relative to each 8
other.” We agree with the Appellant (Reply 3-4) that the Examiner has not 9
made a finding that there exist circumstances under which one of Meabon’s 10
handcarts could be turned upside down and positioned in substantially 11
horizontal stackable arrangement with another prior art handcart having all 12
of the elements recited in claim 22. We cannot make such a finding 13
ourselves without providing the Appellant an opportunity to respond. In re 14
Kumar, 418 F.3d 1361, 1367-68 (Fed. Cir. 2006). Absent such a finding, we 15
cannot affirm the Examiner’s rejection of claim 22 under section 102(e). 16
We cannot conclude, on the basis of the Examiner’s findings, that the 17
carts illustrated in Figs. 4-13 of Meabon meet the limitations of the 18
“wherein” clause at the end of claim 22. The Appellant has shown that the 19
Examiner erred in rejecting claim 22 under 35 U.S.C. § 102(e) as anticipated 20
by Meabon. 21
Appeal 2006-2200
Application 10/379,869

6
B. The Rejection of Claims 1-3, 5, 6, 8-13, 15, 16 and 18-21 Under 1
35 U.S.C. § 103(a) as Unpatentable Over Meabon in View of Cox 2
Claims 2, 3, 5, 6, 8-10, 12, 13, 15, 16 and 18-21 each depend from 3
either claim 1 or claim 11. Claim 1 and claim 11 each include word-for-4
word the limitations of claim 22. 5
The Examiner found that Cox teaches a cart including a platform 6
extension and a locking means. The Examiner additionally found that “[i]t 7
would have been obvious to one having ordinary skill in the art at the time of 8
the invention to have provided the cart of Meabon with the platform 9
extension and lock means in order to allow the cart to transport loads of 10
varying lengths.” (Ans. 4). As discussed above, the Examiner has not made 11
a finding that there exist circumstances under which one of Meabon’s 12
handcarts could be turned upside down and positioned in substantially 13
horizontal stackable arrangement with another prior art handcart having all 14
of the elements recited in claim 22, and likewise recited in claims 1 and 11. 15
Nor does the Examiner point to any teaching in Cox which would have 16
suggested modifying a cart of any of the types shown in Meabon’s Figs. 4-17
13 so as to fall within the scope of the “wherein” clauses at the end of claims 18
1 and 11. 19
On the record before us, the Appellant has shown that the Examiner 20
erred in rejecting claims 1 and 11 under 35 U.S.C. § 103(a) as unpatentable 21
over Meabon in view of Cox. Since claims 2, 3, 5, 6, and 8-10 depend from 22
claim 1 and claims 12, 13, 15, 16, and 18-21 depend from claim 11, the 23
Appellant has shown that the Examiner erred in rejecting those claims under 24
section 103(a) as unpatentable over Meabon in view of Cox. 25
26
Appeal 2006-2200
Application 10/379,869

7
DECISION 1
The rejection of claims 1-3, 5, 6, 8-13, 15, 16 and 18-22 is reversed. 2
3
NEW GROUNDS OF REJECTION 4
Pursuant to 37 C.F.R. § 41.50(b) (2007), we enter the following new 5
grounds of rejection: 6
7
Claim Rejection – 35 U.S.C. § 102 8
1. The following is a quotation of the appropriate paragraphs of 35 9
U.S.C. 102 that form the basis for the new ground of rejection under this 10
section: 11
12
A person shall be entitled to a patent unless – 13
(e) the invention was described in (1) an 14
application for patent, published under section 15
122(b), by another filed in the United States before 16
the invention by the applicant for patent or (2) a 17
patent granted on an application for patent by 18
another filed in the United States before the 19
invention by the applicant for patent, except that 20
an international application filed under the treaty 21
defined in section 351(a) shall have the effects for 22
purposes of this subsection of an application filed 23
in the United States only if the international 24
application designated the United States and was 25
published under Article 21(2) of such treaty in the 26
English language. 27
28
2. Claim 22 is rejected under 35 U.S.C. 102(e) as being 29
anticipated by Meabon (U.S. Patent 6,419,244). 30
Appeal 2006-2200
Application 10/379,869

8
3. With respect to claim 22, Meabon discloses a handcart 1
including a platform 11 and 12 having a first end (adjacent the spade plate 2
14) and a second end (adjacent the third wheel assembly 34). As shown in 3
Fig. 10 of Meabon, the handcart includes a wheel assembly 21 and 22 4
attached proximally to the first end of the platform and extending 5
downwardly a predetermined distance from the platform; and a stand 51, 52, 6
53 and 58 attached proximally to the second end of the platform and 7
extending downwardly from the platform substantially the same 8
predetermined distance as said wheel assembly (as evidenced by Fig. 10, 9
which shows the rubber-tired wheels 21 and 22 along with the outrigger 10
wheels 51 and 52 resting on the ground at the same time). The handcart also 11
includes “handle means” 31 attached to the second end of said platform.2 12
(Ans. 3 and 5). 13
4. With regard to the “wherein” clause, the wheel assembly 21 and 14
22 of a first handcart of the type shown in Meabon’s Fig. 10 would be 15
receivable between the stand 51, 52, 53 and 58 and the second end of a 16
second cart of the type shown in Fig. 10 if the first cart were turned upside 17
down and the second cart were placed on a lower side of the platform of the 18
first cart with the second end of the second cart facing in an opposite 19
direction from the second end of the first cart. The first cart would thereby 20

2 The “handle means” recited in claim 22 is not a “means-plus-
function” limitation because the clause in which the phrase “handle means”
appears includes only structural recitations. The Appellants point out for the
first time in their Reply Brief that the “handle means” 31 of Meabon is not
attached directly to the platform 11 and 12. (Reply 3). While this is true,
the handle means is attached to the second end of the platform 11 and 12
indirectly via the third wheel assembly 30 (Fig. 4) and the support plate 16
(Fig. 4).
Appeal 2006-2200
Application 10/379,869

9
be positioned in “substantially horizontal stackable arrangement” with the 1
second cart if the two carts were placed at the edge of a raised area such as a 2
loading dock with the handle 28 of the first cart hanging over a side of the 3
raised area. 4
5
Claim Rejections – 35 U.S.C. § 103(a) 6
5. The following is a quotation of 35 U.S.C. 103(a) which forms 7
the basis for all obviousness rejections set forth below: 8
9
(a) A patent may not be obtained though the 10
invention is not identically disclosed or described 11
as set forth in section 102 of this title, if the 12
differences between the subject matter sought to be 13
patented and the prior art are such that the subject 14
matter as a whole would have been obvious at the 15
time the invention was made to a person having 16
ordinary skill in the art to which said subject 17
matter pertains. Patentability shall not be 18
negatived by the manner in which the invention 19
was made. 20
21
6. Claims 1-3, 6, 8, 10-13, 16 and 18-21 are rejected under 35 22
U.S.C. 103(a) as being unpatentable over Meabon and in further view of 23
Cox (U.S. Patent 6,109,644). 24
7. With respect to claims 1 and 11, Meabon teaches a handcart 25
including a platform of spaced apart rails 11 and 12 each having a first end 26
(adjacent the spade plate 14) and a second end (adjacent the third wheel 27
assembly 34). As shown in Fig. 10 of Meabon, the handcart includes a 28
wheel assembly 21 and 22 attached proximally to the first end of the 29
platform and extending downwardly a predetermined distance from the 30
Appeal 2006-2200
Application 10/379,869

10
platform; and a stand 51, 52, 53 and 58 attached proximally to the second 1
end of the platform and extending downwardly from the platform 2
substantially the same predetermined distance as said wheel assembly (as 3
evidenced by Fig. 10, which shows the rubber-tired wheels 21 and 22 along 4
with the outrigger wheels 51 and 52 resting on the ground at the same time). 5
The handcart also includes “handle means” 31 attached to the second end of 6
said platform. 7
8. With regard to the “wherein” clause, the wheel assembly 21 and 8
22 of a first handcart 10 of the type shown in Meabon’s Fig. 10 would be 9
receivable between the stand 51, 52, 53 and 58 and the second end of a 10
second cart of the type shown in Fig. 10 if the first cart were turned upside 11
down and the second cart were placed on a lower side of the platform of the 12
first cart with the second end of the second cart facing in an opposite 13
direction from the second end of the first cart. The first cart would thereby 14
be positioned in “substantially horizontal stackable arrangement” with the 15
second cart if the two carts were placed at the edge of a raised area such as a 16
loading dock with the handle 28 of the first cart hanging over a side of the 17
raised area. 18
9. Claims 1 and 11 each recite “a lock means for holding said 19
platform extension in a predetermined position.” The “lock means” 20
disclosed in the present specification consists of a pull pin 23 and a 21
removable bolt 24. (Br. 3, citing Specification 7, ll. 2-4 and Fig. 1). “[T]he 22
position of the platform extension 14 is determined by locking the pull pin 23
23 and removable bolt 24 into a desired hole 26” in the platform extension 24
14. (Specification 7, ll. 2-4 and Fig. 1). 25
Appeal 2006-2200
Application 10/379,869

11
10. With respect to claim 1, Meabon alone does not teach “a 1
platform extension slidably connected to said first end of said platform in 2
coaxial alignment therewith” or “a lock means for holding said platform 3
extension in a predetermined position.” Meabon does teach a platform 4
including first and second longitudinal metal support bars 11 and 12, 5
however. (Meabon, col. 3, lines 6-9). Figure 5 of Meabon suggests that the 6
first ends of these longitudinal support bars 11 and 12 abut against the spade 7
plate 14 and that the ends of the support bars are not otherwise obstructed. 8
Cox teaches a transport handcart 10 (Fig. 1) including a platform constructed 9
from a main wagon support beam 28. (Cox, col. 1, l. 8 and col. 2, ll. 13-15). 10
Cox additionally teaches 11
12
an extensible tail member 32 [which] has a tail 13
beam 33 sized to slidably fit within the tail 14
opening 34 at an opposite end of main support 15
beam 28. Tail member 32 has an upwardly 16
extending rear arm 36 affixed to the distal end 38 17
of tail beam 33. . . . [T]he tail member 32 is held 18
in place by tail locking bolt 40 (or a detent locking 19
pin) extending through the underside of beam 28 20
and urging against a portion of the tail beam 33 21
inside the main beam 28. A detent pin would pass 22
through both the main beam 28 and the tail beam 23
33. 24
25
(Cox, col. 2, ll. 23-32). 26
11. “[I]f a technique has been used to improve one device, and a 27
person of ordinary skill in the art would recognize that it would improve 28
similar devices in the same way, using the technique is obvious unless its 29
actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 30
Appeal 2006-2200
Application 10/379,869

12
127 S.Ct. 1727, 1740 (2007). The prior art contains a base device, namely, 1
the cart shown in Meabon’s Fig. 10, and a comparable device, namely, the 2
handcart shown in Cox’s Fig. 1. The base device includes a platform 3
constructed from first and second longitudinal metal support bars. The 4
comparable device includes a platform constructed from a main wagon 5
support beam which is improved by (1) slidably fitting a tail beam of a tail 6
member into an opening in the main support beam and (2) passing a detent 7
pin through both the main support beam and the tail beam. One of ordinary 8
skill in the art could have improved the cart shown in Meabon’s Fig. 10 in 9
the same way by mounting the spade plate at the end of two tail beams to 10
form a tail member, slidably fitting the tail beams of the tail member into 11
openings in the longitudinal metal support bars and passing a detent pin 12
through both the main support beam and the tail beam. The one of ordinary 13
skill in the art could have predicted that the improvement to the cart shown 14
in Meabon’s Fig. 10 would permit the length of the cart to be varied in the 15
same manner that the tail member of the handcart of Cox’s Fig. 1 would 16
allow the length of that cart to be varied (see Cox, col. 1, ll. 24-26). 17
12. Cox’s detent pin would be a “lock means” as that term is used 18
in claim 1. Passing the detent pin through both the main support beam and 19
the tail beam would hold the tail member in place in the same way that 20
locking a pull pin and a removable bolt into a desired hole in a platform 21
extension would hold the platform extension disclosed in the present 22
specification in place. The handcart obtained by improving the cart shown 23
in Meabon’s Fig. 10 in the manner described in the previous paragraph 24
would include all elements recited in claim 1. 25
Appeal 2006-2200
Application 10/379,869

13
13. With respect to claim 11, Meabon does not disclose “a platform 1
extension slidably connected in coaxial alignment to said first end of each 2
rail of said platform, said platform extension held in a predetermined 3
position by lock means” or “a lock means for holding said platform 4
extension in a predetermined position.”3 Nevertheless, the subject matter of 5
claim 11 would have been obvious from the teachings of Meabon and Cox 6
for the reasons given in preceding paragraphs 9-12 with respect to claim 1. 7
14. Neither the Brief on Appeal nor the Reply Brief stated any basis 8
for concluding that claims 2, 3, 6, 8, 10, 12, 13, 16 and 18-21 might be 9
patentable if the subject matter of independent claims 1 and 11 were 10
determined to have been obvious to one of ordinary skill in the art from the 11
teachings of Meabon and Cox. While the Brief on Appeal rehearsed 12
language from at least some of these dependent claims, we do not consider a 13
“statement which merely points out what a claim recites” to be “an argument 14
for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii). 15
Therefore, with respect to claims 2, 3, 6, 8, 10, 12, 13, 16 and 18-21, we 16
adopt for purposes of these new grounds of rejection the reasons for 17
rejecting these claims given by the Examiner in the Office Action mailed 18
May 5, 2005. 19
20
REVERSED; 37 C.F.R. § 41.50(b) 21
22
23

3 Claim 11 positively recites “a lock means” after inferentially reciting
“lock means” in the previous clause. We interpret the two recitations as
referring to the same “lock means” rather than as requiring two “lock
means.”
Appeal 2006-2200
Application 10/379,869

14
1
2
3
hh 4
5
6
QUARLES & BRADY STREICH LANG, LLP 7
ONE SOUTH CHURCH AVENUE 8
SUITE 1700 9
TUCSON, AZ 85701-1621 10