Ex Parte Shotwell

Patent Trial and Appeal Board

Jun 17, 2013

11564262 (P.T.A.B. Jun. 17, 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 06/17/2013
LOWE HAUPTMAN HAM & BERNER, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
STASHICK, ANTHONY D
ART UNIT PAPER NUMBER
3781
MAIL DATE DELIVERY MODE
06/17/2013 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 APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-8, 10, 11, and 16-18. Claim 9 is cancelled
and claims 12-15 are withdrawn. App. Br. 3. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

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Claimed Subject Matter
Claims 1, 5, and 11 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal. Claim 1, recites:
1. A bin for use in a dishwasher machine,
comprising:
a pair of opposing side panels, each side
panel comprising at least one foot along a lower
edge, each side panel defining at least one
depression along an upper edge;
a rear panel connected to each of the pair of
opposing side panels;
a front panel connected to each of the pair of
opposing side panels; and
a bottom panel connected to (a) each of the
pair of opposing side panels, (b) the rear panel, and
(c) the front panel;
wherein the bin is sized to replace a rack of
a dishwasher machine.

Rejections
The following Examiner’s rejections are before us for review:
claims 1-4, 10, 11, and 16-18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Conaway (US 5,190,156, iss. Mar. 2, 1993);
claims 5 and 6 are rejected 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 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Conaway and Clipson (US 4,015,713, iss. Apr. 5, 1997).

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OPINION
Obviousness over Conaway
Claim 1 recites “[a] bin for use in a dishwasher machine,” which is the
preamble of the claim, and includes the limitation “wherein the bin is sized
to replace a rack of a dishwasher machine”1 (emphasis added), hereinafter
referred to as the “bin size limitation.” At the outset, we agree with the
Appellant that the bin size limitation refers to a “particular structural
dimensioning of the claimed bin.” Reply Br. 5-6.
The Examiner finds that Conaway discloses a bin that corresponds to
the bin of claim 1, except that Conaway does not teach the bin size
limitation. Ans. 4-5. The Examiner concludes 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 change
in the size of a component.” Ans. 5 (emphasis added). The Examiner
supports this conclusion with the statement that “[a] change in size is
generally recognized as being within the level of ordinary skill in the art.”
Ans. 5 (citing In re Rose, 220 F.2d 459 (CCPA 1955)). See also MPEP
§§ 2144.04, 2144.04(IV)(A).
The Appellant contends that “the PTO fails to set forth any rationale
for a person of ordinary skill to make the asserted modification.” App. Br.
8. The Appellant also contends that the Examiner’s conclusion:
is incorrect and appears to improperly assume away the need
for the PTO to identify a motivation to modify the Conaway
reference as asserted. The PTO has failed to identify any
teaching, suggestion, or motivation in either reference or to

1 The Appellant and the Examiner both acknowledge that the sizes of
dishwashers vary. Reply Br. 6, Ans. 8.
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articulate a reasoned rationale for the asserted modification of
the reference to obtain the claimed subject matter.
App. Br. 8-9.
The Appellant’s contentions are not persuasive. The Examiner
articulates that the modification of size of Conaway’s bin is based on a
design choice. “Design choice” is appropriate where the Appellant fails to
set forth any reasons why the differences between the claimed invention and
the prior art would result in a different function or give unexpected results.
See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995). In the case of claim 1,
the function of the “bin” is to store items.2 The Examiner finds that
Conaway’s bin is to hold items (Ans. 9), which is synonymous with a bin to
store items. See also Conaway col. 2, ll. 59-60 (“The front of each bin 11 is
generally open so that material to be stored can be readily received
therein.”). Since 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.
The Appellant also contends that the holding of Rose does not apply
in this case. See App. Br. 9-10. The Appellant points out that Rose states,
“[w]e do not feel that this limitation is patentably significant since it at most
relates to the size of the article under consideration which is not ordinarily a
matter of invention.” App. Br. 9 (citing Rose at 463 (citing In re Yount, 171

2 See DICTIONARY.COM UNABRIDGED, accessed at
http://dictionary.reference.com/browse/bin (last visited June 5, 2013)(“bin,”
def. 1, noun) (“a box or enclosed place for storing grain, coal, or the like.”).
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F.2d 317 (CCPA 1948)). The Appellant points out that Yount cites to In re
Ayres, 83 F.2d 297 (CCPA 1936) and In re Withington, 104 F.2d 192
(CCPA 1939). The Appellant asserts that the specifications in each of
Yount, Ayres, and Withington included a statement of equivalency with
respect to a different sizes and that the specifications in both Yount and
Withington included a statement that “a change in size is of no difference.”
App. Br. 9-10. The Appellant asserts that the instant Specification does not
include such statements. See App. Br. 9-10. The Appellant also points out
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. See Spec. paras [001]-[003]. Based on the
foregoing the Appellant contends that “while ‘mere size is not ordinarily a
matter of invention’, the claims supported by the present specification recite
a patentable invention with respect to at least the particular sizing claimed.”
App. Br. 10.
Although the Appellant’s Specification did not explicitly state that a
change of size is not a matter of invention, is equivalent to, or is of no
difference, such does not make the holding of Rose unable to support the
Examiner’s conclusion of obviousness. In other words, regarding
independent claim 1, the modification of the bin’s size is not a matter of
invention and is not patentably significant. As for the Appellant’s assertion
that “the Background section [of the instant Specification] recites difficulties
associated with smaller-sized baskets and containers for use in a dishwasher
machine,” this does not provide a cogent explanation concerning the
“difficulties” of the bin size limitation, i.e., the particular sizing claimed.
The Background section of the Specification consists of paragraphs [001]-
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[003] and includes comments concerning the lack of containers to provide
their own support or their own position within a dishwasher, the separation
of items into different containers, and the ability for the containers to be
stored in a stackable manner. Thus, the Appellant’s argument is not
commensurate with the scope of claim 1, namely, a “bin [that] is sized to
replace a rack of a dishwasher machine,” which is distinct from a container
sized to be supported by a rack.
The Appellant also contends that Conaway “appears to be non-
analogous art” because “Conaway fails to relate to a bin for a dishwashing
machine, i.e., Conaway is a storage bin system.” App. Br. 10. The
Examiner finds that Conaway is analogous art. Ans. 8.
We agree with the Examiner. “The analogous-art test requires that the
Board show that a reference is either in the field of the applicant's endeavor
or is reasonably pertinent to the problem with which the inventor was
concerned in order to rely on that reference as a basis for rejection.” In re
Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d
1443, 1447 (Fed. Cir. 1992)). See also Ans. 8. In this case, the field of
endeavor of the Appellant’s claimed subject matter and Conaway’s storage
system are both related to bins. See Ans. 8. Additionally, Conaway is
reasonably pertinent to the problem with which the inventor was concerned
because Conaway deals with a storage bin system and the matter with which
it deals logically would have commended itself to an inventor’s attention in
considering his problem. See In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992).
The Appellant also asserts that Conaway “fails to suggest or even
contemplate use in a dishwashing machine.” App. Br. 10. With regard to
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the preamble of the claim, i.e., “[a] bin for use in a dishwasher machine,” the
Examiner finds that Conaway’s bin is capable of being used in a dishwasher.
Ans. 4. See also Conaway col. 2, ll. 55-56 (“Bins 11 are preferably made of
any suitable plastic material, such as polypropylene.”). See In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted) (“It is well settled
that the recitation of a new intended use for an old product does not make a
claim to that old product patentable.”). The Appellant does not provide a
cogent reason why Conaway’s bin is not capable of being used in a
dishwasher machine. See also In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997); In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
Thus, the rejection of claim 1 as unpatentable over Conaway is
sustained. As for claims 2-4 and 10, which depend from claim 1, the
Appellant does not provide further arguments for the rejection of claims 2-4
and 10. App. Br. 11. The Appellant merely relies on the arguments
presented for the Examiner’s rejection of claim 1. Accordingly, the rejection
of claims 2-4 and 10 as unpatentable over Conaway is also sustained.
Regarding the rejection of independent claim 11, the Appellant
contends that “Claim 11 is patentable over Conaway at least for reasons
similar to those advanced above with respect to claim 1.” App. Br. 11. For
the reasons given above, the Appellant’s arguments against the rejection of
claim 1 are not persuasive. For similar reasons, the Appellant’s contention
against the rejection of claim 11 is also not persuasive. Thus, the rejection
of claim 11 as unpatentable over Conaway is also sustained.
Obviousness over Conaway and Thurman
The Appellant argues claims 5 and 6 as a group. App. Br. 12-13. We
select claim 5 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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Independent claim 5 is directed to a bin for use in a dishwasher
machine, and calls for a pair of opposing side panels, each including at least
one groove extending along an inner face thereof.
The Examiner finds that Conaway discloses everything in claim 5
except for the at least one groove along an inner face of the side panel. Ans.
6. To remedy Conaway’s lack of disclosure with regard to claim 5, the
Examiner found that “Thurman discloses a similar bin with grooves (34a-
34c, Figures 1 and 2, column 2, lines 45-50) along an inner face of the side
panels parallel to the bottom panel for multiple trays.” Ans. 6. The
Examiner concludes:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to have incorporated the use of
grooves on the side panels parallel to the bottom panel as
disclosed by Thurman in the bin disclosed by Conaway to allow
the use of multiple trays in the bin to allow storage of multiple
items without having to stack them upon one another.
Id.
The Appellant contends Conaway and Thurman “appear to be non-
analogous art” because neither reference “relate[s] to a bin for a dishwashing
machine.” App. Br. 12. In response, the Examiner finds that Conaway and
Thurman are analogous art because they “relate to a bin for holding items.”
Ans. 9. As discussed above, Conaway is analogous art because Conaway’s
bin is in the same field of endeavor and is reasonably pertinent to the
problem with which the inventor was concerned. Similarly, Thurman is
analogous art since Thurman’s multi-tray basket stores items and as such, is
in the same field of endeavor and is reasonably pertinent to the problem with
which the inventor was concerned for the same reasons as discussed supra
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with respect to the Conaway reference. Hence, the Appellant’s contention is
not persuasive.
The Appellant also contends that the combination of Conaway and
Thurman is improper. App. Br. 12-13. The Appellant asserts that
Conaway’s “side walls appear to extend upward at an angle enabling nesting
of bins as depicted in FIG. 6” and “Thurman appears to be directed to
stacking multiple trays of the same size within a multi-tray basket.” App Br.
13. Based on these assertions, the Appellant contends that the combined
teachings of Conaway and Thurman would not have resulted in the
modification of Conaway’s bin having grooves, as taught by Thurman,
because the combination would not enable the stacking of same sized trays
in the storage bin of Conaway and that Thurman’s multi-basket approach
appears to negate Conaway’s nesting ability. See App. Br. 13.
In response, the Examiner explains that the Appellant is calling for the
tray of Thurman to be bodily incorporated into the bin of Conaway. See
Ans. 10. We agree. The Examiner explains that “Thurman is used to teach
the concept of incorporating grooves on the side panels parallel to the
bottom panel to allow the use of multiple trays in a bin.” Ans. 10. “The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981) (citations omitted). Moreover, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
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v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). The Examiner also
explains that:
[s]ome level of nesting of the bin of Conaway, at least to the
level of the highest groove, would still be possible with grooves
in the side wall. Additionally, the size of the grooves in the
side walls or the angle of the taper in the side walls of Conaway
could be made to facilitate nesting of the bins.
Ans. 10. We agree with the Examiner.
Thus, the rejection of claims 5 and 6 as unpatentable over Conaway
and Thurman is sustained.
Obviousness over Conaway and Clipson
The Appellant argues claims 7 and 8 as a group. App. Br. 12-13. We
select claim 7 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 7 depends from independent claim 1 and calls for the side
panels to each include at least one groove extending along an inner face
thereof.
The Examiner finds “Clipson discloses a similar bin with grooves
extending along an inner face of the side panels from the bottom panel
toward the upper edge for receiving a divider. (56, Figures 1 and 2, column
3, lines 44-48).” Ans. 7. The Examiner concludes that:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to have incorporated the use of
grooves extending along an inner face of the side panels from
the bottom panel toward the upper edge as disclosed by Clipson
in the bin disclosed by Conaway to allow the use of dividers to
divide the bin into separate compartments.
Id.
The Appellant contends Conaway and Clipson “appear to be non-
analogous art” because neither reference “relate[s] to a bin for a dishwashing
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machine.” App. Br. 14. In response, the Examiner finds that Conaway and
Clipson are analogous art because they “relate to a bin for holding items.”
Ans. 11. As discussed above, Conaway is analogous art because Conaway’s
bin is in the same field of endeavor and is reasonably pertinent to the
problem with which the inventor was concerned. Similarly, Clipson’s
stackable storage bin stores items and as such, is in the same field of
endeavor and is reasonably pertinent to the problem with which the inventor
was concerned. Hence, the Appellant’s contention is not persuasive.
The Appellant contends that the combination of Conaway and Clipson
is improper because:
a) the PTO appears to be selectively picking and choosing
elements of the references to combine using Appellant’s claims
as a roadmap instead of evaluating the teachings of the
references as a whole and b) the combination of the references
cannot render the prior art unsatisfactory for its intended
purpose.
App. Br. 14-15. Thereafter, the Appellant refers to the combination of
Conaway and Thurman rather than Conaway and Clipson. Id.
The Appellant has not provided a cogent explanation of how the
Examiner’s rejection includes improper hindsight or how Conaway, as
modified by Clipson, would render Conaway unsatisfactory for its intended
purpose. See also Ans. 11-13. As such, the Appellant’s contentions do not
persuade us of error as they do not point out how the Examiner’s findings or
conclusion of obviousness is in error.
Thus, the rejection of claims 7 and 8 as unpatentable over Conaway
and Clipson is sustained.

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DECISION
We AFFIRM the rejections of claims 1-8, 10, 11, and 16-18.
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).

AFFIRMED

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