11690921 (P.T.A.B. Nov. 13, 2013)

Ex Parte Peota et al

Patent Trial and Appeal BoardNov 13, 2013

11690921 (P.T.A.B. Nov. 13, 2013)

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. 11/690,921 03/26/2007 Robert D. Peota 2006-005288 4789 64732 7590 11/13/2013 TARGET BRANDS, INC. 1000 NICOLLET MALL, TPS-3165 MINNEAPOLIS, MN 55403 EXAMINER CHIBOGU, CHIEDU A ART UNIT PAPER NUMBER 3631 MAIL DATE DELIVERY MODE 11/13/2013 PAPERPAPER 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT D. PEOTA, SCOTT A. MEYER, PAUL A. YUN, LEVI WILSON, JOHN W. WATKINS, and JERROD D. MULLINS ____________________ Appeal 2011-013086 Application 11/690,921 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, SCOTT A. DANIELS, and JILL D. HILL, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013086 Application 11/690,921 2 STATEMENT OF THE CASE Robert D. Peota et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-8 and 10-23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A cup holder for a shopping cart comprising: a container ring configured to removably hold a beverage container; and a securing mechanism for removably securing the container ring relative to a shopping cart, the securing mechanism including: a first portion configured for slidable mounting, in a first direction, onto a top edge of a wall of a basket of the shopping cart; and a second portion configured for slidable insertion, in a second direction generally perpendicular to the first direction, into a hole in the wall of the basket of the shopping cart, wherein the hole is disposed vertically below the top edge of the wall of the basket of the shopping cart, wherein the second portion comprises a protrusion extending in the second direction that is sized and shaped corresponding to the hole such that the protrusion contributes to vertical and lateral stability of the cup holder. Evidence The Examiner relied on the following evidence in rejecting the claims on appeal: Bergin ‘644 Bergin ‘091 Levesque US 5,813,644 US 5,938,091 US 6,299,116 B1 Sep. 29, 1998 Aug. 17, 1999 Oct. 9, 2001 Appeal 2011-013086 Application 11/690,921 3 Pablo Giampavolo US 2004/0108346 A1 US 2004/0129852 A1 Jun. 10, 2004 Jul. 8, 2004 Rejections The following rejections are before us for review: (1) Claims 1-4, 6-8, and 13-19 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Bergin ’091. (2) Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergin ’091 and Pablo. (3) Claims 10, 11, 20 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergin ‘091 and Bergin ‘6441. (4) Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergin ‘091 and Giampavolo. (5) Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergin ‘091 and Levesque. OPINION Rejection (1) Appellants argue independent claims 1, 14, and 18 as a group, and do not present any arguments for dependent claims 6, 7, 13, 15-17, and 19 apart from the independent claims. App. Br. 20. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we decide the appeal of the rejection of claims 1, 6, 7, and 13-19 on the basis of claim 1. Appellants argue that Bergin ‘091’s latch dog 108 “is not in any manner ‘sized and shaped corresponding to the hole [in the wall of the basket of the shopping cart]’ such that it contributes to vertical and lateral stability of the cup holder,” as called for in claim 1. App. Br. 18. 1 See Ans. 12, 13, 14; Final Rej. 10, 11, 12. Appeal 2011-013086 Application 11/690,921 4 The Examiner finds that the size and shape of the latch dog 108 of Bergin ‘091 permits it to fit inside the hole of the cart, thus evidencing that it corresponds with the size and shape of the hole. Ans. 19. Further, the Examiner finds that Bergin ‘091’s disclosure that the latch dog 108 is passed through the hole in the wall of the cart to “hold the cup holder very securely in place” makes clear that the latch dog has a size and shape that corresponds to that of the hole in the cart. Ans. 20; Bergin ‘091, col. 3, ll. 45, 48-50. According to the Examiner, the latch dog must vertically and laterally provide stability in order for the cup of Bergin ‘091 to be very securely held in place on the wall of the shopping cart. Ans. 20. Appellants assert that the term “correspond” means “‘to compare closely’ or ‘to be equivalent.’” Reply Br. 2. Appellants also contend that figure 6 of Bergin ’091 clearly shows that the “the cup holder is still easily movable up and down, while the latch dog 108 simply prevents the cup holder from being slid up and off.” Id. The Examiner does not contest the definition of “correspond” asserted by Appellants, and does not proffer a different definition. Thus, we accept Appellants’ asserted definition of “correspond” in construing the limitation “sized and shaped corresponding to the hole” in claim 1. Applying such a construction, Appellants are correct that Bergin ‘091 does not support the Examiner’s position that the latch dog 108 is sized and shaped corresponding to the opening in the cart in which it is placed. However, the Examiner also points out that claim 1 does not positively recite the shopping cart, and thus does not positively recite the hole in the shopping cart. Ans. 20. Appellants allege that this contention of the Examiner “amounts to a new ground of rejection.” Reply Br. 3. Appeal 2011-013086 Application 11/690,921 5 However, “[a]ny allegation that an examiner’s answer contains a new ground of rejection not identified as such is waived if not timely raised (i.e., by filing the petition within two months of the answer) by way of a petition under 37 CFR 1.181(a).” Manual of Patent Examining Procedure (MPEP) § 1207.03 IV (8th ed., Rev. 9, Aug. 2012). Our review of the electronic record of the present application reveals that Appellants did not file such a petition, and thus have waived any allegation that the Examiner’s contention is a new ground of rejection. Appellants argue that, in any event, the Examiner’s position that claim 1 fails to positively recite the shopping cart and the hole is “misplaced” because, as discussed throughout the prosecution of the present application, a size of the protrusion is an important feature of the invention and reference to a hole in the shopping cart serves as a basis to define the size of the protrusion. Reply Br. 3. These arguments do not identify error in the Examiner’s position, because claim 1 does not positively recite the shopping cart nor define the size and shape of the hole to which the recited protrusion is sized and shaped to correspond. The phrase “for a shopping cart” is directed to the intended use of the cup holder, and thus does not present a structural limitation on the size and shape of the protrusion at all. For the above reasons, we sustain the rejection of claim 1 and of claims 6, 7, and 13-19, which fall with claim 1, as anticipated by Bergin ‘091. In contesting the rejection of claim 2 as anticipated by Bergin ‘091, Appellants do not point out any additional distinction between the claimed subject matter and the structure of Bergin ‘091 aside from those asserted for claim 1. Rather, Appellants allege that the Examiner’s rejection references a Appeal 2011-013086 Application 11/690,921 6 depth of the space and a depth of the support hanger of Bergin ‘091 while claim 2, in contrast, refers to the width of these components. App. Br. 20. Appellants’ allegation is not accurate. The Examiner’s rejection alludes to the widths of these components and includes an annotated representation of figure 6 of Bergin ‘091 to show these dimensions. See Ans. 5-6, 22; Final Rej. 3-4. Thus, Appellants do not present any argument pointing out error in the Examiner’s rejection of claim 2 as anticipated by Bergin ‘091. We therefore sustain the rejection. Appellants separately contest the rejection of claim 3, arguing that the cylindrical pockets of Bergin ‘091 “do not amount to the claimed walls extending between the container ring and the securing mechanism to define the spacer, where the walls are generally parallel to each other and spaced apart.” App. Br. 21. Appellants’ argument does not show error in the Examiner’s rejection, because it is not commensurate with the scope of claim 3. Claim 3 does not require that the claimed walls “define” the spacer. Rather, claim 3 recites that “the spacer comprises” the walls, that the walls extend between the container ring and the securing mechanism, and that the walls be generally parallel to each other and spaced apart from each other in a third direction generally parallel to the first direction (i.e., the direction in which the container ring and securing mechanism are spaced apart from one another). Appellants’ argument does not specifically point out why the cylindrical pockets 92 of Bergin ‘091 fail to satisfy these limitations. We sustain the rejection of claim 3 as anticipated by Bergin ‘091. In contesting the rejection of claim 4 as anticipated by Bergin ‘091, Appellants argue that the elements 83, 84, relied upon by the Examiner to Appeal 2011-013086 Application 11/690,921 7 satisfy the claimed non-circular portion of the container ring (Ans. 7), “are not part of the container ring.” App. Br. 21. We do not agree with Appellants. While the side walls 83 and front wall 84 of Bergin ‘091 may not define the central opening of the container ring, i.e. cup receptacle 90, they do form part of the outer periphery of the cup receptacle 90. See Bergin col. 3, ll. 15-22, Figs. 5, 6. We sustain the rejection of claim 4 as anticipated by Bergin ‘091. In contesting the rejection of claim 8 as anticipated by Bergin ‘091, Appellants contend that “[i]t is clear from Fig. 6 . . . that the latch dog 108 does not have a width equal to a gap between components 86 and 100.” App. Br. 21. Appellants’ argument does not show error in the rejection, because it is not commensurate with claim 8, which requires that at least a portion of the protrusion have a width “substantially equal to a gap between the spring arm of the clasp and the body of the support arm.” Claims App’x. (emphasis added). Appellants’ Specification discloses that “[i]n another aspect, gap 90 has a width (represented by W1 in Figure 2) that is substantially equal to a width (also represented by W2 in Figure 2) of first side 62 of ring protrusion 51 of support arm 50.” Spec. 7:16-18. The only guidance provided in the present application for what is meant by “substantially equal” is the illustration of these two dimensions in figure 2, which depicts the dimension “W1” as slightly larger than the dimension “W2.” The relative sizes of the width of the latch dog 108 and the gap between the base or rear wall 86 and the hanger bracket wall 100 shown in figure 5 of Bergin ‘091 look comparable to the relative dimensions W2 and W1 shown in figure 2 of Appellants’ application. Moreover, Bergin ‘091 discloses that the “latch dog Appeal 2011-013086 Application 11/690,921 8 is of size to leave a minimum clearance with wall 100 that is less than the diameter of the top rod or rail 96 [of the supermarket cart].” Col. 3, ll. 50- 52. Thus, the Examiner’s finding that the latch dog width and the gap between walls 86 and 100 are substantially equal has sound basis. We sustain the rejection of claim 8 as anticipated by Bergin ‘091. Rejection (2) Appellants simply rely on their arguments asserted for claim 1 in contesting the rejection of claims 4 and 5 as unpatentable over Bergin ‘091 and Pablo. App. Br. 21-22. These arguments are not convincing, for the reasons set forth above. Thus, we sustain the rejection of claims 4 and 5 as unpatentable over Bergin ‘091 and Pablo. Rejection (3) In contesting this rejection, Appellants argue claims 10 and 11 together, and provide a separate argument for claim 21. App. Br. 22-23. Appellants do not present an argument directed specifically to claim 20. Thus, we decide the appeal of the rejection as to claims 10, 11, and 20 on the basis of representative claim 10, and we separately consider the rejection of claim 21. Turning first to claim 10, Appellants argue that the definition of the term “rib” applied by the Examiner is contrary to the meaning of the term as readily discerned from the description and drawings of the present application. App. Br. 22; Reply Br. 5. Appellants do not elaborate on why the Examiner’s construction of the term is improper. Appellants assert only that the Examiner’s construction and extrinsic evidence is inconsistent with its use in the Specification, and that “the meaning of the term can be readily discerned from the description and drawings.” App. Br. 22. This argument Appeal 2011-013086 Application 11/690,921 9 fails to point to any particular meaning or definition in the Specification, or offer any interpretation of the drawings providing an alternative explanation or definition, and thus fails to convince us that the Examiner erred in considering “the structural portion of the support arm element 86, extending away from element 86 towards element 100” to be a “rib.” See Ans. 11. Appellants also contend that “nothing in the Bergin [‘091] patent resembles a ring shaped rib as claimed.” App. Br. 22. This argument does not identify error in the Examiner’s rejection, which does not rely on a finding that Bergin ‘091 discloses such a rib, but, rather, concedes that Bergin ‘091 fails to disclose “the rib being generally ring shaped . . . .” Ans. 12. The Examiner determined that it would have been an obvious matter of design choice to make the rib generally ring shaped or any other shape considered suitable for the design, “since a change in the shape of a member or component of a claimed invention is generally recognized as being within the level of ordinary skill in the art.” Ans. 12. The Examiner additionally found that “it is very old and well known within the art to make the rib of a cup holder have a generally ring shaped [sic.],” as evidenced by Bergin ‘644. Ans. 12 (citing Bergin ‘644, figs. 4, 7 (item 150)). Appellants allege that Bergin ‘644 “is not included in the grounds of rejection nor applied against the rejected claims. It is not clear whether the Examiner intends to set forth new grounds of rejection.” App. Br. 23. Appellants’ allegation is not accurate, as Bergin ‘644 was explicitly relied upon by the Examiner both in the Final Rejection, mailed Oct. 4, 2010, at pages 10, 11, and in the non-final Office Action mailed April 23, 2010, at pages 10-11, with the use of italics and bold text for emphasis, as Appeal 2011-013086 Application 11/690,921 10 evidence that ring shaped ribs (i.e., protrusions) were very old and well known in the cup holder art at the time of Appellants’ invention. Appellants further take issue with the Examiner’s finding that “Bergin [‘091] ‘defines a shape (fig. 6) which depends on the shape of the hole.’” App. Br. 23 (quoting Ans. 11). According to Appellants, “no portion of [the structure of Bergin ‘091] is dependent on a shape of the cart to which the cup holder is to be attached.” App. Br. 23. This argument is not convincing, because it is not commensurate with the scope of claim 10, which does not positively recite the cart as part of the claimed invention. Moreover, the argument fails to specifically address the Examiner’s explanation for this finding. Ans. 11 (explaining that the rib of Bergin ‘091 depends on the shape of the hole, “as defined by the rib being disposed in the hole of the wall of the shopping cart, to restrict movement to the cup holder on the wall of the shopping cart”). Appellants’ argument also fails to take into account the teachings of Bergin ‘644 relied upon by the Examiner. For the above reasons, Appellants’ arguments fail to apprise us of error in the Examiner’s rejection of claim 10. We thus sustain the rejection of claim 10 and of claims 11 and 20 as unpatentable over Bergin ‘091 and Bergin ‘644. With respect to claim 21, the Examiner finds that the portions of the base wall 86 of Bergin ‘091 disposed near the latch dog 108 correspond to the claimed “apron” and limit the insertion depth of the protrusion (i.e., latch dog 108) in the hole and anchor the second portion (i.e., the latch dog 108) relative to the wall of the basket of the shopping cart. Ans. 13. The Examiner further finds that the apron substantially surrounds the latch dog 108. Id. Appellants do not contest these findings. Appeal 2011-013086 Application 11/690,921 11 The Examiner concedes that Bergin ‘091 “fails to explicitly teach . . . the apron entirely surrounding the protrusion,” but determines that “the apron surrounding the protrusion is merely an obvious variation of the apron substantially surrounding the protrusion, as taught by Bergin [‘091]” and that it “would have been an obvious matter of design choice to make the apron entirely surround the protrusion, since Appellant has not disclosed that the apron surrounding the protrusion solves any stated problem or is for any particular purpose.” Ans. 13-14. The Examiner further finds that “it appears that the invention would perform equally well with the apron of Bergin [‘091].” Ans. 14. Appellants argue that “the latch dog 108 in Bergin [‘091] is distinguishable from the claimed protrusion, and no part of the latch dog 108 would benefit from an apron surrounding it entirely.” App. Br. 23. Appellants’ argument is not convincing, because the Examiner does not allege a “benefit” from the modification. Rather, the Examiner finds that the Bergin ‘091 device as modified “would perform equally well” with the unmodified device of Bergin ‘091. Appellants also argue that Bergin ‘091 does not suggest the modification proposed by the Examiner. App. Br. 23. This argument is not convincing, because “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. Appeal 2011-013086 Application 11/690,921 12 2006) (cited with approval in KSR, 550 U.S. at 418).. Bergin ‘091 discloses the use of “a bump or latch dog 108 that is near the open end of the U- shaped receptacle 102.” Col. 3, ll. 48-49. This supports both the Examiner’s finding that the device of Bergin ‘091 would perform equally well, whether the base wall 86 surrounds the latch dog 108 substantially or entirely, and the Examiner’s determination that the modification to have the wall entirely surround the latch dog is merely an obvious design variation or an obvious matter of design choice. We thus sustain the rejection of claim 21. Rejection (4) Claim 12 requires that the support arm length be substantially greater than a length of the spring arm of the clasp and that the spring arm length be less than a thickness of the container ring. The Examiner finds that Bergin ‘091 fails to disclose these relationships. Ans. 14. The Examiner finds that Giampavolo discloses a cup holder for a shopping cart satisfying these relationships, and determines it would have been obvious to modify the device of Bergin ‘091 “with Giampavolo, to provide a means for mounting the cup holder on a shopping cart with ease.” Ans. 15; see Giampavolo, fig. 18. The Examiner’s finding that in Giampavolo’s cup holder the length of the spring arm is less than a thickness of the container ring is predicated in part on the finding that “the thickness of the container ring is defined by the length of element 183 that is disposed distal from element 181.” Ans. 15. Appellants argue that Giampavolo’s element 183 is not a container ring, but, rather, vertical legs extending from the ring 182. App. Br. 24. Appeal 2011-013086 Application 11/690,921 13 In response, the Examiner posits that “[t]he container ring of Giampavolo comprises irregularly shaped thickness defined by 183 along the container ring of Giampavolo” and reiterates that “the thickness of the container ring is defined by the length of element 183 that is disposed distal from element 181.” Ans. 30. Appellants’ contention that “Giampavolo rather describes that vertical legs 183 extend from the ring 182” (App. Br. 24) does not adequately explain why the Examiner’s consideration of the ring 182, ring 184, and the vertical leg 183 disposed distal from the clip 181 together as comprising a container ring of irregularly shaped (i.e., varying) thickness is unreasonable or improper. Thus, Appellants do not apprise us of error in the Examiner’s rejection of claim 12 as unpatentable over Bergin ‘091 and Giampavolo. We sustain the rejection. Rejection (5) In contesting this rejection, Appellants do not advance any argument for claim 23 apart from the argument asserted for claim 22. See App. Br. 24. Thus, we decide the appeal of this rejection on the basis of claim 22, with claim 23 standing or falling with claim 22. Claim 22 recites that the spacer is divided into two side-by-side sections separated by a planar wall, with each section including a planar back wall substantially perpendicular to the planar wall. The Examiner finds that Bergin ‘091 discloses the spacer being divided into two side-by-side sections, defined by cylindrical pockets 92 separated by a wall (i.e., the respective proximal and vertically extending wall portion of pockets 92), but does not disclose the wall separating the two Appeal 2011-013086 Application 11/690,921 14 side-by-side sections being a planar wall, and each planar back wall. Ans. 16. The Examiner finds that Levesque discloses a cup holder for a shopping cart comprising a spacer divided into two side-by-side sections separated by a planar wall, with each section comprising a planar back wall substantially perpendicular to the planar wall. Ans. 16-17 (with reference to an annotated version of Levesque’s figure 2, labeled “Fig. 2´,” pointing out the two side- by-sections and the planar wall). The Examiner determines it would have been obvious to modify the cup holder of Bergin ‘091 “with Levesque, to provide a means for improving the two side-by-side sections of Bergin [‘091] as a means for making the two side-by-side sections of Bergin [‘091] capable of being used for receiving a wider variety of regular and irregularly shape[d] items.” Ans. 17-18. Appellants do not dispute the Examiner’s determination that it would have been obvious to modify the cup holder of Bergin ‘091 in view of the teachings of Levesque. Rather, Appellants “disagree that the openings in the top wall 22 [of Levesque] are separated by a planar wall as claimed.” App. Br. 24. Appellants contend that the Examiner’s rejection is based on an unreasonable inference “that the space between the openings amounts to a ‘planar wall’ as claimed.” Id. Appellants’ contention is not correct. Levesque’s figure 1, especially when viewed in combination with figure 2, clearly depicts a vertically extending planar wall separating the two side-by-side sections. Levesque’s figure 1, annotated to show the vertically extending planar wall, is reproduced below. App App Exam Leve with this § 1.1 Vsh eal 2011-0 lication 11 Appellan iner’s rej sque. We claim 22. The Exa No time appeal may 36(a)(1)(i 13086 /690,921 ts’ argum ection of c sustain th miner’s de period for be extend v). ent thus do laim 22 as e rejection DE cision reje taking any ed under AF 15 es not app unpatenta of claim 2 CISION cting claim subseque 37 C.F.R. FIRMED rise us of ble over B 2 and of c s 1-8 and nt action i § 1.136(a) error in th ergin ‘09 laim 23, w 10-23 is n connect . See 37 C e 1 and hich falls affirmed. ion with .F.R.