Ex Parte Ogburn et al

Board of Patent Appeals and Interferences

Dec 7, 2010

10903661 (B.P.A.I. Dec. 7, 2010)

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.
10/903,661 07/29/2004 Sean T. Ogburn 4193 PUS 3393
7590 12/07/2010
Konstantine J. Diamond
4010 E. 26th Street
Los Angeles, CA 90023
EXAMINER
ING, MATTHEW W
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
12/07/2010 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 SEAN T. OGBURN, WILLIAM P. APPS,
ROBERT V. GRUBER and JEFFREY L. WILKERSON
____________________

Appeal 2010-008220
Application 10/903,661
Technology Center 3600
____________________

Before LINDA E. HORNER, WILLIAM F. PATE, III, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, 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.
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STATEMENT OF THE CASE
Sean T. Ogburn et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-14, 19-24, 27-32, 34, 36 and 37. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claimed invention is directed to a snap-together pallet
(Spec. 1: para. [0001]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A pallet for use with a fork lift comprising:
a deck;
a column including an upper portion having a reduced
outer dimension, a snap-tab securing the column to the deck;
a generally planar mid-top member having an opening
through which is received the upper portion of the column, the
mid-top member between the column and the deck; and
a plurality of ribs connecting the mid-top member and the
deck.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1-3, 5-9, 11-13, 19-24 and 29 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Apps (US 2003/0075081 A1,
published Apr. 24, 2003) (hereinafter Apps ‘081) in view of Apps (US
6,006,677, issued Dec. 28, 1999 ) (hereinafter Apps ‘677).
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2. Claims 4, 10, 27 and 28 are rejected under 35 U.S.C. § 103(a) as
being as being unpatentable over Apps ‘081 in view of Apps ‘677 and
further in view of Pigott (US 5,388,533, issued Feb. 14, 1995).
3. Claim 14 is rejected under 35 U.S.C. § 103(a) as being as being
unpatentable over Apps ‘081 in view of Apps ‘677 and further in view
of Apps (US 6,250,234 B1, issued Jun. 26, 2001) (hereinafter Apps
‘234).
4. Claims 30-32, 34, 36 and 37 are rejected under 35 U.S.C. § 103(a) as
being as being unpatentable over Apps ‘081 in view of Apps ‘677 and
Apps ‘234, and further in view of Pigott.

ISSUES
The issues before us are: (1) whether the Examiner erred in
concluding that the combined teachings of Apps ‘081 and Apps ‘677 would
have led a person having ordinary skill in the art to a snap-tab that secures a
column to a deck, as called for in independent claim 1 (App. Br. 5); (2)
whether the Examiner erred in concluding that the combined teachings of
Apps ‘081, Apps ‘677 and Pigott, and the combined teachings of Apps ‘081,
Apps ‘677, Apps ‘234 and Pigott would have led a person having ordinary
skill in the art to a column having a shoulder (App. Br. 7, 8); and (3) whether
the Examiner erred in concluding that the combined teachings of Apps ‘081,
Apps ‘677 and Apps ‘234 would have led a person having ordinary skill in
the art to a mid-top member vibration welded to a plurality of ribs, as called
for in claim 14 (App. Br. 7-8).

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ANALYSIS2
Rejection of claims 1-3, 5-9, 11-13, 19-24 and 29 over Apps ‘081 and Apps
‘677
Appellants argue claims 1-3, 5-9, 11-13, 19-24 and 29 as a group
(App. Br. 5). As such, we select claim 1 as representative of the group, and
claims 2, 3, 5-9, 11-13, 19-24 and 29 will stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii) (2009).
Appellants contend that “[i]f the snap-fit connection of Apps et al.
‘677 was incorporated into the pallet of Apps patent publication ‘081, the
supports would snap-fit to the mid-top member, which is the component
closest to the supports” and “as the supports only extend minimally into
mid-top member, the snap-tab would not be able to secure the supports to
the deck as claimed as the snap-tab could not extend to the deck” (App. Br.
6). Appellants contend that “Apps patent publication ‘081 does not teach
that the embodiment of Figure 3 could be connected with the snap-fit
connection of Apps et al. ‘677” (App. Br. 6).
The Examiner found that Apps ‘081 describes a deck, a column, a
mid-top member and a plurality of ribs (Ans. 3). The Examiner found that
Apps ‘081 fails to describe the pallet as comprising a snap-tab securing the
column to the deck (Ans. 4). The Examiner found that Apps ‘081 does
describe, however, the use of the securing means taught in Apps ‘677 (Ans.
6).
The Examiner concluded that it would have been obvious to a person
having ordinary skill in the art to incorporate the snap-tab arrangement of

2 The application has been previously before this Board, however, the issue
as to whether the subject mater of the claims would have been obvious in
light of the applied prior art has not been previously considered.
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Apps ‘677 into the pallet of Apps ‘081 to provide a firm connection between
the column, the mid-top member and the deck (Ans. 6).
In support thereof, the Examiner proffered an annotated Figure 33 of
Apps ‘081, reproduced infra, which includes labeling for a deck H, a column
I, a mid-top member J, an opening K, and a plurality of ribs L (Ans. 3-4).
Figure 3 of Apps ‘081, as annotated by the Examiner, is reproduced
below:

The annotated Figure 3 of Apps ‘081 labels unidentified elements.
Claim 1 calls for, inter alia, “a snap-tab securing the column to the
deck.”
Apps ‘081 describes that “[j]oining the pallet components to each
other may be performed by means known to those in the art,” as “[f]or
example, the columns . . . may be snapped together into the decks by a snap
attachment (one type is shown in U.S. Pat. No. 6,006,677)” (emphasis
added) (p. 2, para. [0026]).

3 The Examiner’s reference to Figure 4 in Apps ‘081 (Ans. 3-4) appears be a
typographical error since Apps ‘081 does not include a Figure 4 (Apps ‘081,
p. 1, paras. [0015]-[0018]). The referenced figure is actually Figure 3.
Further, Appellants in their Reply Brief interpreted the Examiner’s reference
as being to Figure 3 (Reply. Br. 3).
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Accordingly, we find that Apps ‘081 describes snap-fitting a column
to the deck, wherein the pallet includes a mid-top member J.
Since Apps ‘081 describes that the columns may be snapped into the
decks by the snap attachment of Apps ‘677, we find that when the pallet of
Apps ‘081 is modified to include the snap-ft arrangement of Apps ‘677 the
columns would be snapped into the deck H, not the mid-top member J as
contended by Appellants (see Apps ‘081, p. 2, para. [0026], reproduced
supra).
Appellants contend that neither Apps ‘081 nor Apps ‘677 describes a
plurality of ribs that connect a mid-top member and a deck, as called for in
claim 1 (App. Br. 6).
The ordinary meaning of the word “connect” includes “to become
joined.”4 In Figure 3 of Apps ‘081, when the pallet is assembled, the ribs L,
which are below the deck H and above the mid-top member J, join the deck
H with the mid-top member J. Thus, we find that Apps ‘081 ribs L connect
the mid-top member J and the deck H.
We conclude that it would have been obvious to a person having
ordinary skill in the art to combine the teachings of Apps ‘081 and Apps
‘677 by incorporating the snap arrangement of Apps ‘677 into the pallet of
Apps ‘081.
We find that the provision of a snap arrangement could have been
reasonably predicted to yield the result of a firm connection between the
column I, the mid-top member J and the deck H. See KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (holding that “[i]f a technique has
been used to improve one device, and a person of ordinary skill in the art

4 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1999)
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would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”)
We affirm the rejection of independent claim 1, and claims 2, 3, 5-9,
11-13, 19-24 and 29 which stand with claim 1.

Rejection of claims 4, 10, 27 and 28 over Apps '081, Apps ‘677 and Pigott;
and the rejection claims 30-32, 34, 36 and 37 over Apps ‘081, Apps ‘677,
Apps ‘234 and Pigott
Appellants contend that it would not be obvious to include a shoulder
on the column of Apps ‘081 (App. Br. 7, 8).
The Examiner found that Apps ‘081 describes a shoulder M located
on the mid-top member J (Ans. 8-9). The Examiner found that the
combined teachings of Apps ‘081 and Apps ‘677 do not describe a shoulder
on an outer surface of the column I, with the mid-top member J being
disposed to rest thereon (Ans. 9). The Examiner concluded that to locate the
shoulder on column I instead of mid-top member J would be a mere reversal
of parts which would have been obvious to a person having ordinary skill in
the art (Ans. 9). The Examiner further found that Pigott describes a column
80 including a shoulder (Ans. 10). The Examiner further concluded that it
would have been obvious to a person having ordinary skill in the art to
provide the column I of Apps ‘081 with a shoulder as taught by Pigott in
order to provide mid-top member J with a secondary support structure (id.).
Claims 4, 10, 27, 28, and independent claim 30 recite that the column
includes a shoulder.
Apps ‘081 is silent as to whether the element the Examiner labeled as
M is in fact a shoulder. As such, it becomes incumbent upon the Examiner
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to provide an adequate rationale, that is, an adequate basis in fact and/or
technical reasoning that would support the finding that element M is in fact a
shoulder. We find that the Examiner has not provided an adequate rationale
that would support a finding that the element the Examiner labeled as M is
in fact a shoulder. Thus, we conclude that the Examiner has not provided an
adequate rationale why the provision of a shoulder on the column I of Apps
‘081 would have been a mere reversal of parts which would have been
obvious. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (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.”) In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The
legal conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.”.)
Neither the pallet column I nor mid-top member J of Apps ‘081, nor
the support 505 of Apps ‘677, includes a shoulder for the upper deck to rest
on. The Examiner has not provided an adequate rationale, and it is unclear
to us how the snap arrangement of Apps ‘677 when incorporated in Apps
‘081 would function with a shoulder.
Regarding claims 30-32, 34, 36 and 37; the Examiner has not relied
on Apps ‘234 for any teaching that would remedy the deficiency in Apps
‘081 (Ans. 10).
Thus, we are constrained to reverse the rejection of claims 4, 10, 27,
28, 30-32, 34, 36 and 37.

5 We find that in Apps ‘677 the support 50 is a column.
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Rejection of claim 14 over Apps '081, Apps ‘677 and Apps ‘234
Claim 14 recites that “the mid-top member is vibration welded to the
plurality of ribs.”
Appellants contend that if the deck H were attached to the mid-top
member J, the ribs of the two components would be attached (App. Br. 8).
Appellants contend that ribs transverse to the direction of vibration cannot
be vibration welded, and as such, in Apps ‘081, the top portion would have
to be hot plate welded to the mid-top member to connect the deck H and the
mid-top member J (id.).
The Examiner found that the combined teachings of Apps ‘081 and
Apps ‘677 do not describe vibration welding of the ribs L of the deck H to
the mid-top member J (Ans. 10). The Examiner found that Apps ‘234
describes vibration welding for joining components of pallets in order to
provide structural reinforcement (id.).
The Examiner concluded that it would have been obvious to a person
having ordinary skill in the art to use vibration welding to join the ribs L to
the mid-top member J as taught by Apps ‘234 (id.).
We find Appellants’ rationale that ribs transverse to the direction of
vibration can not be vibration welded to be persuasive.
In the alternative, the Examiner found that assuming, arguendo, that
Appellants were correct that it would not be obvious to vibration weld the
free ends of the deck H to the mid-top member J, claim 14 is a product-by-
process claim, wherein the welds between the ribs L and the deck H do not
depend on the process of making them (Ans. 15).
We agree with the Examiner that claim 14 is a product-by-process
claim since the product, the pallet, is defined at least in part in terms of the
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method or process, the particular type of welding, by which it is made.
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315, 1317
(Fed. Cir. 2006) (“A product-by-process claim is ‘one in which the product
is defined at least in part in terms of the method or process by which it is
made.’ . . . The patentability of a product does not depend on its method of
production.”).
We agree with the Examiner that Apps ‘234 describes known
connection methods of welding (Ans. 14), that is, we find that Apps ‘234
describes vibration welding and hot plate welding as viable alternatives (col.
3, l. 62-col. 4, l. 7).
Since Apps ‘234 describes a known connection method of welding
(e.g., hot plate welding) and the Appellants admit that in Apps ‘081 the top
portion would have to be hot plate welded to the mid-top member to connect
the deck H and the mid-top member J, we conclude that it would have been
obvious to modify the combined teachings of Apps ‘081 and Apps ‘677 by
hot plate welding in Apps ‘081, the ribs L to the mid-top member J as taught
by Apps ‘234. Further, the Examiner found that the vibration welding
process “would not be expected to impart distinctive structural
characteristics to the welds.” Ans. 15. Since Appellants have not pointed to
any structural difference in the weld produced by hot plate welding and the
weld produced by vibration welding, Appellants have failed to show how the
claimed invention distinguishes over the prior art.
We find that welding the ribs L to the mid-top member J could have
been reasonably predicted to yield the result of reinforcing the connection
between the columns I and the mid-top member J.
We affirm the rejection of claim 14.
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CONCLUSIONS
The Examiner has not erred in concluding that the combined teachings
of Apps ‘081 and Apps ‘677 would have led a person having ordinary skill
in the art to a snap-tab that secures a column to a deck, as called for in
independent claim 1.
The Examiner has erred in concluding that the combined teachings of
Apps ‘081, Apps ‘677 and Pigott, and the combined teachings of Apps ‘081,
Apps ‘677, Apps ‘234 and Pigott would have led a person having ordinary
skill in the art to a column having a shoulder.
The Examiner has not erred in concluding that the combined teachings
of Apps ‘081, Apps ‘677 and Apps ‘234 would have led a person having
ordinary skill in the art to a mid-top member vibration welded to a plurality
of ribs, as called for in claim 14 (App. Br. 7-8).

DECISION
The decision of the Examiner to reject claims 1-3, 5-9, 11-14, 19-24
and 29 is affirmed. The decision of the Examiner to reject claims 4, 10, 27,
28, 30-32, 34, 36 and 37 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

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mls

KONSTANTINE J. DIAMOND
4010 E. 26TH STREET
LOS ANGELES, CA 90023