Ex Parte Oh

Board of Patent Appeals and Interferences

Aug 15, 2012

11541368 (B.P.A.I. Aug. 15, 2012)

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.
11/541,368 09/30/2006 Suk Kan Oh ZIN-001 1719
47713 7590 08/15/2012
IMPERIUM PATENT WORKS
P.O. BOX 607
Pleasanton, CA 94566
EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
08/15/2012 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 SUK KAN OH
____________________

Appeal 2010-012211
Application 11/541,368
Technology Center 3700
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
JOSIAH C. COCKS, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012211
Application 11/541,368

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
13 and 20-30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant states that the invention relates to a roller box, and more
particularly to a roller box assembly for retaining and transporting a bedding
product. (Spec. Para. [0002].)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An assembly comprising:
a roller box comprising:
a box portion having a bottom portion, a plurality of
sidewalls, and a top portion, wherein the bottom portion meets
a first of the sidewalls to define a corner edge of the box
portion, and wherein the box portion has a height and a width;
a first wheel disposed along the corner edge at a first
location; and
a second wheel disposed along the corner edge at a
second location,
wherein the first wheel and the second wheel have a
common and fixed axis of rotation; and
a mattress contained in the box portion, wherein the
mattress is rolled into a cylindrical shape with a diameter
substantially equal to the width of the box portion and a length
substantially equal to the height of the box portion.
(Appeal Brief, Claims Appendix1 32.)

1 Conformed Appeal Brief filed April 30, 2010, hereinafter “App. Br.” and
Claims App’x, respectively.
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Application 11/541,368

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THE REJECTIONS
I. The Examiner rejected claims 1, 2, 6-9, 11, 12, 27, and 30
under 35 U.S.C. § 103(a) as unpatentable over Magni (US
4,711,067, issued December 8, 1987) in view of Hoiriis et al.
(US 2005/0269791 A1, published December 8, 2005).
(Examiner’s Answer, dated June 11, 2010, “Ans.” 3-6, 8, 11-
13.)

II. The Examiner rejected claims 3-5 and 13 under
35 U.S.C. § 103(a) as unpatentable over Magni in view of
Hoiriis and in further view of Achermann et al. (US 3,519,190,
issued July 7, 1970). (Ans. 6-7.)

III. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Magni in view of Hoiriis and in further view
of Rudolf et al. (US 5,934,041, issued August 10, 1999). (Ans.
7-8.)

IV. The Examiner rejected claims 20, 21, and 24-26 under
35 U.S.C. § 103(a) as unpatentable over Magni in view of
Hoiriis and in further view of Kuo (US 6,315,368 B1, issued
November 13, 2001). (Ans. 8-11.)

V. The Examiner rejected claims 22, 23, 28 and 29 under
35 U.S.C. § 103(a) as unpatentable over Magni in view of
Hoiriis and in further view of Lewis et al. (US 6,739,107 B1,
issued May 25, 2004). (Ans. 13-14.)

Appellant additionally relies on the following affidavits:
Affidavit of Youn Jae Lee, dated January 14, 2009.
Affidavit of Dokyung Kim, dated May 27, 2009
Affidavit of Cyndi Hunting, dated June 22, 2009
Affidavit of Joe Alexander, dated September 19, 2009.

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Application 11/541,368

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ISSUES
Rejection I, claim 1
The Examiner found that Magni discloses a mattress rolled into and
contained within a box, but that Magni does not disclose a roller box having
the wheel configuration as claimed. (Ans. 3-4.) The Examiner found that
Hoiriis discloses a roller box having the wheel configuration as claimed and
concluded that it would have been obvious to one of ordinary skill in the art
at the time of the invention to modify Magni in view of Hoiriis in order help
transport the box from a retail store floor to a consumer destination as taught
by Hoiriis. (Ans. 4.)
Appellant argues that the transport unit containing the wheels of
Hoiriis takes up space at the bottom of the body portion of the box and
prevents a mattress roll with a diameter equal to the box width and a length
equal to the box height from fitting into the body portion of the box. (App.
Br. 7.) Appellant contends that Magni and Hoiriis cannot be combined to
result in the claimed assembly. (App. Br. 8.)
Appellant also argues that Hoiriis does not teach the recited wheels
because: (a) the wheels of Hoiriis do not have a fixed axis of rotation; (b)
the wheels of Hoiriis do not have a common axis of rotation; and (c) the
wheels of Hoiriis are not disposed along a corner edge of the box. (App.
Br. 9.) Specifically, Appellant contends that the wheels in Hoiriis may be
moved so that they are retracted, such that when only one wheel is retracted,
the wheels do not have a common axis. (App. Br. 9-10.) Appellant argues
that the wheels in Hoiriis are not disposed along a corner edge because the
wheels are completely inside the box when stored and completely outside
the bottom of the box when deployed. (App. Br. 10-12.)
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Application 11/541,368

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Last, Appellant argues that even if the Examiner has presented a
prima facie case of obviousness, the evidence submitted by Appellant
sufficiently rebuts a prima facie case of obviousness by showing that the
wheels bear a direct relation to the commercial success of the assignee’s
Mattress-in-a-Box product. (App. Br. 14-21.)

Rejections I and IV, claims 6, 8, 20, and 27
The Examiner found that Hoiriis discloses a common and fixed axis
of rotation extending between a parallel upper surface and bottom surface, as
recited in claim 6, and as similarly recited in claims 8, 20, and 27, when the
box depicted in Hoiriis “lays on the panel closest to the person.” (Ans. 5, 9,
12, 16, citing Hoiriis, Fig. 5.) Thus, under the Examiner’s interpretation,
one of the side panels of the box in Hoiriis would correspond to the upper
surface and the opposite side panel would correspond to the bottom surface
of the box.
Appellant argues that Hoiriis does not show common and fixed wheel
axes that extend between the upper and bottom surfaces of the box because
both of the independent and unfixed wheel axes are below the bottom of the
box. (App. Br. 12-13; Reply Brief filed August 2, 2010, “Reply Br.” 8-9.)
Appellant further argues that the Examiner’s rejection of claim 1 relies on an
interpretation of height and length that is inconsistent with the interpretation
used in dependent claim 6. (Reply Br. 9-10.)

Rejection I, claim 12
The Examiner found that Hoiriis discloses a rigid strip member,
wherein the first and second wheels are coupled to the rigid strip member,
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Application 11/541,368

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and wherein the rigid strip member is immovably attached to one of the
plurality of sidewalls when the box is laying on one end cap and the opposite
facing end cap is removed. (Ans. 5, 17.)
Appellant argues that the support member taught in Hoiriis is not
immovably attached to a single sidewall, but instead, Hoiriis discloses that
the support member is a cylinder that is “rotatably” attached to both
sidewalls. (App. Br. 13-14.)
Therefore, the dispositive issues on appeal are:
(1) Whether the Examiner erred in concluding that the prior art
discloses or suggests a roller box containing a mattress “wherein
the mattress is rolled into a cylindrical shape with a diameter
substantially equal to the width of the box portion and a length
substantially equal to the height of the box portion,” as recited in
claim 1?
(2) Whether the Examiner erred in concluding that the prior art
discloses or suggests a first and second wheel “disposed along the
corner edge” and “the first wheel and the second wheel have a
common and fixed axis of rotation,” as recited in claim 1?
(3) Whether the evidence submitted by Appellant rebuts the
Examiner’s initial determination of obviousness?
(4) Whether the Examiner erred in finding that Hoiriis discloses an
axis of rotation of the first wheel and the second wheel extending
between two parallel surfaces, as recited in claims 6, 8, 20, and 27-
30?
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Application 11/541,368

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(5) Whether the Examiner erred in finding that Hoiriis discloses
“wherein the rigid strip member is immovably attached to a single
one of the plurality of sidewalls,” as recited in claim 12?

DISCUSSION
Issue One
We are not persuaded by Appellant’s argument that in modifying
Magni with Hoiriis, the transport unit containing the wheels of Hoiriis would
not allow for a mattress roll with a diameter substantially equal to the box
width and a length substantially equal to the box height from fitting into the
body portion of Magni’s container.
Appellant appears to suggest that the term “substantially equal” would
not allow for a wheel assembly between the end and side of the mattress roll
and the bottom and side of Hoiriis’s wheeled box, such as illustrated in the
modified annotated figures in Appellant’s Reply Brief (Reply Br. 5).
However, Appellant’s Specification does not provide an express definition
of the term “substantially equal.” Therefore, we look to the “broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in applicant’s specification.” In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
“Substantially” is commonly defined as “considerable in quantity, but
not wholly.” MERRIAM WEBSTER'S COLLEGIATE DICTIONARY, TENTH
EDITION, p. 1174 (1996). Thus, one of ordinary skill in the art would
understand that the term “substantially equal,” means considerably equal,
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Application 11/541,368

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but not wholly equal. In the context of the claims one of ordinary skill in the
art would understand that the box portion recited in claim 1 is capable of
holding a mattress roll having a diameter and length that are considerably
equal, but not wholly equal to the width and height of the box portion,
respectively.
In addition, Appellant’s Figure 6 shows a roller box according to an
embodiment of the invention that contains two wheels, each including a
wheel housing and an axle. (Spec. Para. [0022]; Fig. 6.) The wheel housing
further includes two attachment extensions that attach to rigid strip members
located on the bottom insert portion at the bottom of the box portion and on
a sidewall of the box. (Spec. Paras. [0020], [0022]; Fig. 6.) In light of
Figure 6, a skilled artisan would have understood that a “mattress contained
in [a] box portion” being substantially equal in size, as recited in the claims,
would allow for a box portion that contains a wheeled assembly. (Spec. Fig.
5-7.)
Thus, taking into account the common definition of “substantially
equal” as well as Appellant’s figures, Appellant has not sufficiently
explained how the claims distinguish the difference between the size of the
wheel assembly on the inside of the box of Appellant’s illustrated
embodiment in Figure 6 and the wheel assembly on the inside of the box of
Magni, modified by Hoiriis.
Further, we are not persuaded that the configuration of a mattress
within the box of Hoiriis is limited to the particular bodily incorporation
illustrated by the Appellant. (Reply Br. 5) Appellant’s annotated Figure 1
(Reply Br. 5) does not take into account the full scope of Hoiriis’ disclosure
regarding the space occupied by the transport unit (wheel assembly) of
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Application 11/541,368

9
Hoiriis. Hoiriis describes that in the embodiment of its invention shown in
Figure 1, internal cover portion 128 is a component that simply “may” be
included. (Para. [0029].) That is, the cover portion is disclosed as optional.
Appellant’s argument, in speculating as to how a mattress would be
physically incorporated within Hoiriis’ box in Figure 1, is premised on the
presence of a component (i.e., cover portion 128) which is optional and thus
not required. Given that Hoiriis’ internal cover portion is disclosed as
optional, Appellant has not meaningfully explained how the claimed roller
box is distinct from the Examiner’s combination of Magni and Hoiriis, when
the full content of Hoiriis’ disclosure is taken into account.
Accordingly, we agree with the Examiner that the prior art discloses a
roller box containing a mattress rolled into a cylindrical shape with a
diameter and length substantially equal to the width and height of the box
portion, as recited in claim 1.

Issue Two
We are also unpersuaded by Appellant’s arguments that the prior art
does not disclose wheels disposed along a corner edge and having a common
and fixed axis of rotation.
With respect to the disposition of the wheels “along” the corner edge,
one of ordinary skill in the art would have understood “along” in accordance
with its plain and ordinary meaning. See In re Zletz, 893 F.2d at 321.
“Along” is commonly defined as “beside” and “parallel to the length or
direction of.” WEBSTER’S ENCYCLOPEDIC UNABRIDGED DICTIONARY OF THE
ENGLISH LANGUAGE 42 (1989).
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Appeal 2010-012211
Application 11/541,368

11
fixed position, such that the wheels have a common and fixed axis of
rotation when in the deployed position.
Accordingly, we agree with the Examiner that the prior art renders
obvious a first and second wheel “disposed along the corner edge” and “the
first wheel and the second wheel have a common and fixed axis of rotation,”
as recited in claim 1.

Issue Three
We are also unpersuaded by Appellant’s argument that the evidence
submitted in support of commercial success outweighs the evidence of
obviousness. While we acknowledge that the sales data submitted by
Appellant is significant (Affidavit of Youn Jae Lee, Para. 7), we
nevertheless do not agree that the data constitutes sufficient evidence to
provide a nexus between the alleged commercial success and the novel
features of the claims. Specifically, there is insufficient evidence that the
commercial success of the Mattress-in-a-Box product is related to claimed
features not already found in the prior art. Appellant’s evidence attributes
the commercial success to the wheels added to the mattress box. (Affidavit
of Youn Jae Lee, Para. 4; Affidavit of Dokung Kim, Para. 5; Affidavit of
Cyndi Hunting, Para. 4, 6; Affidavit of Joe Alexander, Para. 5.)
However, Appellant admits that a wheeled box containing a
compressed and rolled mattress was known in the art. (Spec. Para. [0004].)
Accordingly, Appellant has not shown that the commercial success achieved
by the Mattress-in-a-Box product is related to a claimed element that was
unknown in the prior art. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d
1358, 1369 (Fed. Cir. 2011) (“If commercial success is due to an element in
Appeal 2010-012211
Application 11/541,368

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the prior art, no nexus exists.”); Ormco Corp. v. Align Tech., Inc., 463 F.3d
1299, 1312 (Fed. Cir. 2006) (“[I]f the feature that creates the commercial
success was known in the prior art, the success is not pertinent.”).
Moreover, Hoiriis provides strong evidence that roller boxes having a
wheel configuration falling within the configuration recited in the claims
were well known for packaging large and heavy consumer products that are
difficult to transport. (Hoiriis, Para. [0002].) Accordingly, we agree with
the Examiner that Appellant’s evidence fails to outweigh the strong case of
obviousness presented by the Examiner.

Issue Four
We agree with Appellant that Hoiriis does not disclose “wherein the
common and fixed axis of rotation of the first wheel and the second wheel
extends . . . between the upper surface and the bottom surface,” as recited in
claim 6.
The Examiner suggests that the wheeled container in Hoiriis meets
this limitation when the container is positioned on its side. (Ans. 16.)
However, this positioning of the box is inconsistent with the orientation of
the box and the mattress therein applied by the Examiner in rejecting each of
the independent claims. (Ans. 14.) In this regard, under the Examiner’s
application of Hoiriis to claim 6, the diameter of the mattress rolled into a
cylindrical shape would no longer be substantially equal to the width of the
box, but would be substantially equal to the height of the box contrary to
what is required in claim 1, from which claim 6 depends. Likewise, the
length of the rolled mattress would no longer be substantially equal to the
height of the box, but would be substantially equal to the width of the box,
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Application 11/541,368

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which also is contrary to what is required in claim 1. The Examiner has not
adequately explained this inconsistency.
Further, the Examiner has not shown that the box of Hoiriis is capable
of operating when on its side. Accordingly, we do not sustain the
Examiner’s rejection of claim 6. Because the Examiner relied on Hoiriis for
similar limitations in claims 8, 20, 21, and 24-30, we also do not sustain the
rejections of those claims.

Issue Five
We also agree with Appellant that Hoiriis does not disclose a rigid
strip member that is immovably attached to a single one of the plurality of
sidewalls. While the Examiner suggests that this limitation would be met if
one of the end caps of the rigid member is removed, the Examiner has not
adequately explained why one of ordinary skill in the art would make such a
modification. Hoiriis discloses that the end caps both act to secure the
support member to the sidewalls. (Para. [0030].) Therefore, without an end
cap, the support member of the wheeled container would not be properly
secured. Accordingly, we agree with Appellant that the rigid support
member cited by the Examiner is not immovably attached to a single
sidewall, but instead, is engaged with and extends from the first sidewall
portion to the second sidewall portion. (Hoiriis, Para. [0026].) As a result,
we do not sustain the Examiner’s rejection of claim 12.
Rejections II, III, and V
Appellant provides similar arguments for these rejections as addressed
above. (App. Br. 21-30.) Accordingly, the discussion above applies equally
to Rejections II, III, and V as reflected in the decision detailed below.
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CONCLUSIONS
The Examiner did not err in concluding that the prior art discloses or
suggests a roller box containing a mattress “wherein the mattress is rolled
into a cylindrical shape with a diameter substantially equal to the width of
the box portion and a length substantially equal to the height of the box
portion,” as recited in claim 1.
The Examiner did not err in concluding that the prior art discloses or
suggests a first and second wheel “disposed along the corner edge” and “the
first wheel and the second wheel have a common and fixed axis of rotation,”
as recited in claim 1.
The evidence submitted by Appellant is insufficient to rebut the
Examiner’s initial determination of obviousness.
The Examiner did err in finding that Hoiriis discloses an axis of
rotation of the first wheel and the second wheel extending between two
parallel surfaces, as recited in claims 6, 8, 20, and 27-30.
The Examiner did err in finding that Hoiriis discloses “wherein the
rigid strip member is immovably attached to a single one of the plurality of
sidewalls,” as recited in claim 12.
DECISION
We affirm the Examiner’s rejection of claims 1, 2, 7, 9, and 11 under
35 U.S.C. § 103(a) as unpatentable over Magni in view of Hoiriis.
We affirm the Examiner’s rejection of claims 3-5 and 13 under 35
U.S.C. § 103(a) as unpatentable over Magni in view of Hoiriis and in further
view of Achermann.
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We affirm the Examiner’s rejection of claim 10 under 35 U.S.C. §
103(a) as unpatentable over Magni in view of Hoiriis and in further view of
Rudolf.
We affirm the Examiner’s rejection of claims 22 and 23 under 35
U.S.C. § 103(a) as unpatentable over Magni in view of Hoiriis and in further
view of Lewis.
We reverse the Examiner’s rejection of claims 6, 8, 12, 27, and 30
under 35 U.S.C. § 103(a) as unpatentable over Magni in view of Hoiriis.
We reverse the Examiner’s rejection of claims 20, 21, and 24-26
under 35 U.S.C. § 103(a) as unpatentable over Magni in view of Hoiriis and
in further view of Kuo.
We reverse the Examiner’s rejection of claims 28 and 29 under 35
U.S.C. § 103(a) as unpatentable over Magni in view of Hoiriis and in further
view of Lewis.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED-IN-PART
KMF