Ex Parte Ross

Board of Patent Appeals and Interferences

Sep 19, 2002

09299452 (B.P.A.I. Sep. 19, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KURT D. ROSS
__________
Appeal No. 2002-0209
Application 09/299,452
___________
ON BRIEF
___________
Before FRANKFORT, McQUADE, and BAHR, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 7. Claim 8, the only other claim
pending in the application, stands objected to as being dependent
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Application 09/299,452
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upon a rejected base claim, but has been indicated to be
allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims.
Appellant's invention is directed to a palletized container
for bulk materials including a bulk bag having a flexible bottom
and flexible sides, with an inflatable stand mounted to the bag
bottom. As noted on page 1 of the specification, these bags are
usually made of flexible reticulated materials such as woven
polypropylene and are capable of holding large, heavy quantities
of bulk materials, typically weighing a ton or more. By
providing a bulk bag and integral inflatable stand, appellant
avoids the need for using a conventional wooden pallet for
support of the bulk bag, and provides a container wherein prior
to and between uses, the container may be compactly stored with
its sides furled and its stand deflated. Independent claims 1
and 5 are representative of the subject matter on appeal and a
copy of those claims can be found in the CLAIMS appendix attached
to appellant’s brief.
Appeal No. 2002-0209
Application 09/299,452
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The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ziemba 4,116,344 Sep. 26, 1978
Taylor 5,685,644 Nov. 11, 1997
Claims 1 through 7 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Taylor in view of Ziemba.
Rather than reiterate the examiner's explanation of the
above-noted rejection and the conflicting viewpoints advanced by
the examiner and appellant regarding the rejection, we make
reference to the examiner's answer (Paper No. 14, mailed August
13, 2001) for the examiner's reasoning in support of the
rejection, and to appellant's brief (Paper No. 13, filed June 19,
2001) for the arguments thereagainst.
OPINION
In reaching our decision on the obviousness issues raised in
this appeal, we have carefully considered appellant's
specification and claims, the applied references, and the
respective viewpoints advanced by appellant and the examiner. As
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Application 09/299,452
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a consequence of our review, we have made the determination that
the examiner's rejection of the appealed claims under 35 U.S.C.
§ 103(a) will not be sustained. Our reasons for this
determination follow.
Appellant argues, and we strongly agree, that Taylor and
Ziemba, whether considered alone or in combination, do not teach,
and would not have reasonably suggested to one of ordinary skill in
the art at the time of appellant’s invention, a bulk bag and
integral inflatable stand as set forth in the claims before us on
appeal. Like appellant, we consider that it is only by looking to
the disclosure of the present application that one of ordinary
skill in the art would have found a suggestion to selectively
combine the applied references in the manner urged by the examiner
to arrive at appellant’s claimed subject matter.
In our opinion, the examiner’s position represents a clear
case of impermissible hindsight reconstruction of the claimed
invention based upon appellant’s own teachings. In that regard, we
note, as our court of review indicated in In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992), that it is
impermissible to use the claimed invention as an instruction manual
Appeal No. 2002-0209
Application 09/299,452
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or "template" in attempting to piece together isolated disclosures
and teachings of the prior art so that the claimed invention is
rendered obvious. Moreover, and more to the point in the present
appeal, we observe that the mere fact that some prior art reference
(i.e., Taylor) may be modified in the manner suggested by the
examiner does not make such a modification obvious unless the
applied prior art suggested the desirability of the modification.
See In re Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir
1984). Here, the prior art relied upon by the examiner contains no
such suggestion.
At best, it would appear that the applied prior art references
would have provided a suggestion to entirely replace the pallet
(42) seen in Figure 6 of Taylor with a system of separate,
individually inflatable, elongate tubes (10) and a separate deck or
platform (28) temporarily placed on the tubes to allow stacking or
storage of goods thereon, as taught in Ziemba.
Since we have determined that the teachings and suggestions
found in Taylor and Ziemba would not have made the subject matter
as a whole of independent claims 1 and 5 on appeal obvious to one
of ordinary skill in the art at the time of appellant’s invention,
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Application 09/299,452
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we must refuse to sustain the examiner’s rejection of those claims
under 35 U.S.C. § 103(a). It follows that the examiner’s rejection
of dependent claims 2 through 4, 6 and 7 will likewise not be
sustained.
Accordingly, the decision of the examiner to reject claims 1
through 7 under 35 U.S.C. § 103(a) is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF:pgg
Appeal No. 2002-0209
Application 09/299,452
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Robert B. Kennedy
Kennedy Davis & Hodge, LLP
Five Concourse Parkway
Suite 900
Atlanta, GA 30328