11564262 (P.T.A.B. Aug. 28, 2013)

Ex Parte Shotwell

Patent Trial and Appeal BoardAug 28, 2013

11564262 (P.T.A.B. Aug. 28, 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. 11/564,262 11/28/2006 Craig R. Shotwell 4888-001 2271 22429 7590 08/29/2013 LOWE HAUPTMAN & HAM, LLP 2318 Mill Road Suite 1400 ALEXANDRIA, VA 22314 EXAMINER STASHICK, ANTHONY D ART UNIT PAPER NUMBER 3781 MAIL DATE DELIVERY MODE 08/29/2013 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CRAIG R. SHOTWELL ____________________ Appeal 2011-005097 Application 11/564,262 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, GAY ANN SPAHN, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-005097 Application 11/564,262 2 The Appellant has filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”), dated August 19, 2013. The Request seeks reconsideration of our decision of June 17, 2013 (hereinafter “Decision”) affirming the Examiner’s rejections of claims 1-4, 10, 11, and 16-18 under 35 U.S.C. § 103(a) as unpatentable over Conaway (US 5,190,156, iss. Mar. 2, 1993), claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Conaway and Thurman (US 4,113,329, iss. Sep. 12, 1978), and claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Conaway and Clipson (US 4,015,713, iss. Apr. 5, 1997). We have jurisdiction over the Request under 35 U.S.C. § 6(b). The Appellant contends that the Board has misapprehended or overlooked one point, namely, “[t]he Board’s reliance on the decision in In re Chu[, 66 F.3d 292 (Fed. Cir. 1995),] is erroneous as to the law set forth in that case.” Request 2, 3. This point is particular to the rejection of claims 1- 4, 10, 11, and 16-18 under 35 U.S.C. § 103(a) as unpatentable over Conaway.1 We grant the Request to the extent that we have considered the argument, but otherwise deny the Request because we did not misapprehend or overlook the point presented by the Appellant. The Appellant asserts that In re Chu and the presently appealed case are similar in that the Board “concluded that a change was a matter of 1 Claims 7 and 8 depend directly and indirectly, respectively, from claim 1, which is rejected under 35 U.S.C. § 103(a) as unpatentable over Conaway. As such, the Appellant’s point is also relevant to the rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Conaway and Clipson. See Ans. 10-11. However, the Appellant’s point is not pertinent to the rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Conaway and Thurman since it is not supported by the holding in Chu. See Ans. 6. Appeal 2011-005097 Application 11/564,262 3 ‘design choice.’” Request 3. The Appellant also asserts that similar to the present case, “the Board concluded that Chu’s evidence and arguments were unpersuasive, because the [S]pecification was virtually silent as to advantages of the device and as to a particular problem solved or unexpected result obtained.” Id. (italics added). However, there is a significant difference between the presently appealed case and that of Chu. Notably, in the case of Chu, During prosecution, Chu proffered multiple reasons why placement of the SCR catalyst within the bag retainer is not merely a matter of “design choice.” To support his reasoning, Chu supplied various technical articles discussing fabric filters and the stresses they undergo during pulse-jet cleaning. From this evidence, Chu contended that Szymanski does not “accommodate the frailties of the high temperature fabric” of the filter bag and therefore “one of ordinary skill in the art would not look favorably on the teachings of the Szymanski, et al[.] patent.” Accordingly, Chu concluded that one of ordinary skill in the art would not have been led to modify Szymanski from its teaching of situating the catalyst between two filter bags to placing the catalyst within the bag retainer, as claimed. Chu at 298 (emphasis added). In contrast, in the present case, the Appellant did not explain why changing the size of Conaway’s bin was outside the skill of one of ordinary skill in the art or unpredictable, nor did Appellant provide persuasive evidence, technical reasoning, or arguments in this regard. Contra Request 5 (“[The] Appellant has provided argument and evidence that is pertinent and, lacking any rebuttal from the Examiner, is sufficient to support a finding of nonobviousness.”). Although the Appellant Appeal 2011-005097 Application 11/564,262 4 does indicate that “the Background section [of the instant Specification] recites difficulties associated with smaller-sized baskets and containers for use in a dishwasher machine” (App. Br. 10), this is not persuasive evidence of Examiner error. Decision 5-6. Additionally, in the Request, the Appellant asserts that paragraphs 7, 10, and 32 were identified to provide support for the sizing of the bin. Request 5; App. Br. 5. The identified support comes from the “Summary of Claimed Subject Matter” section in the Appeal Brief. However, these paragraphs do not explain why changing the size of Conaway’s bin was outside the skill of one of ordinary skill in the art or would have been unpredictable. Indeed, these paragraphs recite: [007] In at least one embodiment, cleansing bin 100 is sized to replace a lower rack of a dishwasher machine. For example, a lower rack of a dishwasher machine may be removed from the dishwasher machine and replaced by cleansing bin 100. If cleansing bin 100 comprises toys, a wash cycle of the dishwasher machine may be executed in order to clean the toys in the cleansing bin. [010] In at least one embodiment, cleansing bin 100 is approximately twenty-one inches (21") wide, approximately twenty-two inches (22") deep and approximately eleven inches (11") in height. [032] In at least one embodiment, cleansing bin 100 may be used to replace an upper rack and/or a lower rack of a dishwasher machine. Spec. 3-4, 9. These paragraphs lack adequate evidence to convince us that changing the size of Conaway’s bin was not a matter of design choice as concluded by the Examiner. Decision 3; Ans. 4-5. Appeal 2011-005097 Application 11/564,262 5 Additionally, the Appellant asserts that “[c]ontrary to the Board’s Decision in the present case, In re Chu did not eviscerate the requirement of a proper obviousness determination and certainly did not allow Examiner’s [sic] the ability to merely assert ‘design choice’ as an articulation for a teaching or suggestion of the required motivation to modify.” Request 3 (emphasis added). At the outset, we note that the Supreme Court held that a rigid application of such a mandatory formula as teaching, suggestion and motivation (TSM test) was incompatible with its precedent concerning obviousness. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (“[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.”). Rather, the Supreme Court instructed that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, . . . [but] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Additionally, the Appellant acknowledges that “‘[R]ejections on obviousness grounds . . . [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Request 5 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418). See also App. Br. 9. In this case, the Examiner articulated reasoning with some rational underpinning. Decision 3-4. The Examiner concluded that “[i]t would have been an obvious matter of design choice to have sized the bin to replace a rack of a dishwasher, since such a modification would have involved a mere Appeal 2011-005097 Application 11/564,262 6 change in the size of a component.” Ans. 5 (emphasis added). The Examiner supported this reasoning by stating, “[a] change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).” Ans. 5 (emphasis added). See also MPEP §§ 2144.04, 2144.04(IV)(A).” As discussed in the Decision, [s]ince the functions of the claimed bin and Conaway’s bin are the same, i.e., to store items, the Examiner’s application of design choice as a reasoning with rational underpinning to support the conclusion of obviousness was appropriate here, particularly since the Appellant has not set forth any reasons why the differences between the claimed invention and the prior art to Conaway would result in a different function. Decision 4 (emphasis added). In other words, the Appellant does not explain why changing the size of Conaway’s bin was outside the ordinary skill in the art or unpredictable, nor has the Appellant provided any evidence, technical reasoning, or arguments that persuaded this Board of Examiner error or otherwise rebutted the Examiner’s prima facie case. See Decision 3-4. Contra Request 5. Instead, the Appellant reiterates the necessity for a teaching or suggestion emanating from the prior art. See Request 3-5. As discussed above, the lack of a specific teaching or suggestion from the prior art is not dispositive of Examiner error. KSR, 550 U.S. at 418. Hence, the Appellant does not cogently explain why the Examiner’s conclusion of obviousness is in error. Thus, the Board has not misapprehended or overlooked the point presented by the Appellant. Appeal 2011-005097 Application 11/564,262 7 DECISION We grant the Request to the extent that we have considered the arguments but otherwise deny the Request. 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)(iv). DENIED Klh