Ex Parte Spencer

Board of Patent Appeals and Interferences

Mar 19, 2012

11927728 (B.P.A.I. Mar. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM SPENCER
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Appeal 2010-006246
Application 11/927,728
Technology Center 3600
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Before EDWARD A. BROWN, MICHAEL C. ASTORINO, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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STATEMENT OF THE CASE
William Spencer (Appellant) filed a Request for Rehearing
("Request") requesting that we reconsider our Decision on Appeal of March
20, 2012 ("Decision"). In the Decision, we affirmed the rejection of claims
1 and 3-5 under 35 U.S.C. § 103(a) as unpatentable over De Boer (US
1,790,977, issued Feb. 3, 1931) and Callender (US 4,682,389, issued Jul. 28,
1987). (Decision 2). We have jurisdiction under 35 U.S.C. § 6(b).
In the Request, Appellant contends that the Board misapprehended or
overlooked some points raised by Appellant. (Request 1).
SUMMARY OF DECISION
We grant the Request to the extent that we have considered
Appellant's contentions. Pursuant to our authority, we designate our
affirmance a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b).
ANALYSIS
Appellant contends they previously argued there would have been no
reason to combine De Boer and Callender "because De Boar would not have
benefited from the modification." (Request 1). Appellant states "Callender
is relied on to teach the resistance of upward separation, whereas De Boer
typically would not experience any upward movement unless a user intended
to cause an upward separation. In either case, De Boer would not benefit
from the resistance of upward separation, taught by Callender." (Request 1).
Appellant contends that the Board misapprehended or overlooked
their argument that, in De Boer, "'there should be no upward movement,
other than when it was used just to remove the wall pocket." (Request 1).
We stated in the Decision that "Appellant acknowledges 'that there should be
no upward movement' for De Boer's structure." (Decision 4-5). Appellant
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explains that "[t]his 'other than' portion of the sentence shows that, at a
minimum, De Boer would not desire resistance to upward separation, and in
fact suggests that De Boer teaches away from resisting upward separation
altogether." (Request 1-2).
Appellant contends that the rejection should be reversed for several
reasons. Firstly, Appellant contends that when De Boer's container 17 is
resting on the wall 3, there "would be no upward movement of the container
17 relative to the plate 1," and "De Boer would not benefit from the addition
of a feature intended to resist upward separation between the container 17
and the plate 1." (Request 2). We disagree. The Examiner explained that
the combination of De Boer and Callender would provide a means to resist
separation of the container 17 and base plate 1 during usage, as well as
provide a tightly fitting snapping joint between these elements. (Ans. 3-4).
This resistance to separation would be desirable against unintentional
separation of the container 17 from the base plate 1. Such unintentional
separation could be caused by contact by a person or object with the
container 17 that produces an upwardly-acting force on it, for example,
when the container 17 is bumped, or as an article is being withdrawn from it.
This resistance to separation would not, however, prevent intentional
separation, such as when a user desires to empty the container 17, or for
cleaning purposes. Appellant appears to argue that there would be no
upward movement of the container 17 with respect to the base plate 1 except
when someone tries to remove the container 17. However, it is not apparent
to us why unintentional upward movement of the container 17, such as
discussed supra, could not occur. Thus, we do not find Appellant's
contention that De Boer's container 17 would not benefit from adding a
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feature intended to resist upward separation of it from the base plate 1 to be
convincing.
Secondly, Appellant also contends that when De Boer’s container 17
is full, a user can empty it by upwardly separating the container 17 from the
base plate l. (Request 2). Appellant contends that, in this respect, De Boer
actually teaches away from including a feature intended to resist upward
separation. As discussed supra, the modification of De Boer in view of
Callender would not prevent intentional separation of the container 17 from
the base plate 1. Merely because some resistance to an upward separation of
the container 17 from the base plate 1 is added, does not teach away as
Appellant contends. Some resistance would be desirable to provide a
balance between an unintentional separation via upward movement of the
container 17, and an intentional separation. Moreover, Appellant does not
direct us to any particular disclosure in De Boer that criticizes, discredits, or
otherwise discourages the claimed wall mount accessory system. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). As such, this contention is
also not persuasive.
For the above reasons, Appellant's arguments in the Request do not
convince us that we erred in affirming the Examiner’s rejection of claims 1
and 3-5 as being unpatentable under 35 U.S.C. § 103(a) over De Boer and
Callender.
DECISION
Our decision to affirm the decision of the Examiner has not been
shown to have been erroneous. However, in order to provide Appellant an
opportunity to fully respond to our analysis in this Decision, we grant the
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request for rehearing only to the extent that we designate the Decision a new
ground of rejection under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides "[a] new ground of ejection pursuant to
this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner.…
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
GRANTED ONLY INSOFAR AS WE DENOMINATE THE DECISION A
NEW GROUND OF REJECTION; 37 C.F.R. § 41.50(b)

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