Ex Parte Stille

Patent Trials and Appeals Board

May 3, 2019

14853366 - (D) (P.T.A.B. May. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/853,366 09/14/2015
34082 7590 05/07/2019
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
FIRST NAMED INVENTOR
Troy A. Stille
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P07635US2 7281
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
05/07/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
kconrad@zarleylaw.com
crasmussen@zarleylaw.com
emarty@zarleylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TROY A. STILLE
Appeal2018-006304
Application 14/853,366
Technology Center 3700
Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
LISA M. GUIJT, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant, Troy A. Stille, appeals under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 9, 11-15, 18-25, and 27-31. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
Appeal2018-006304
Application 14/853,366
STATEMENT OF THE CASE
The Specification
The disclosure "is directed toward a portable safety device container
and more 10 particularly to a portable container for a fire extinguisher."
Spec. 1:9-10. Figures 1 and 3 are reproduced below.
Figure 1 shows portable safety device container 10, and Figure 3 shows the
same container with upper ("second") housing removed to reveal fire
extinguisher 18. Id. at 2:5-7.
The Rejected Claims
Claims 9, 11-15, 18-25, and 27-31 are pending and rejected. Final
Act. 1. 1 Independent claims 9, 20, and 25 are representative and reproduced
below with emphasis added.
9. A safety device container comprising:
a first housing configured to receive a safety device and
having a first end, a second end, and a sidewall;
a second housing configured to receive the safety device
and having a first end, a second end, and a sidewall hingedly
connected to the first housing to form a chamber;
1 Claims 16 and 32 were cancelled. Appeal Br. 14, 16. Claim 32, which had
yet to be canceled at the time of the Final Action, was rejected in the Final
Action. Final Act. 1. The Examiner withdrew his rejection of claim 32 after
it was canceled. Ans. 9.
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Application 14/853,366
a divider positioned within the chamber having a cut-out
section that divides the chamber into a first section configured
to receive a body of the safety device and a second section
configured to receive a head of the safety device, such that the
safety device is immobilized when the safety device container
is in a closed position; and
the safety device positioned within the chamber, wherein
the safety device is a fire extinguisher.
20. A safety device container comprising:
a first housing configured to receive a safety device and
having a first end, a second end, and a sidewall;
a first divider having a cut-out section positioned within
the first housing to divide the first housing into a first section
and a second section;
a second housing configured to receive the safety device
and having a first end, a second end, and a sidewall connected
to the first housing to form a chamber;
a second divider having a cut-out section positioned
within the second housing to divide the second housing into a
first section and a second section;
a safety device positioned within the chamber such that a
neck of the safety device is received within the cut-out section
of the first divider and the second divider to immobilize the
safety device; and
wherein the first housing and second housing are formed
to tightly fit around the safety device.
25. A safety device container comprising:
a first housing having a first end, a second end, and a
sidewall;
a second housing having a first end, a second end, and a
sidewall connected to the first housing to form a chamber; and
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Application 14/853,366
a safety device received within the chamber, wherein the
first housing and second housing are formed in the shape of the
safety device to receive the safety device.
Appeal Br. 14--16 (Claims Appendix).
The Appealed Rejections
The following rejections are before us for review:
1. claims 9, 11-15, 18-25, and 27-31 are rejected under 35 U.S.C.
§ 112 i-f2 (Final Act. 3)2;
2. claims 25, 28, and 29 are rejected under 35 U.S.C. §102(e) (pre-
AIA) as anticipated by Mosley3 (id. at 4);
3. claims 9, 11-15, 18, 19, 25, and 28-30 are rejected under
35 U.S.C. § 102(b) (pre-AIA) as anticipated by Dale4 (id. at 5); and
4. claims 20-24 and 27 are rejected under 35 U.S.C. § 103(a) (pre-
AIA) as unpatentable over Dale and Dawson5 (id. at 8).
DISCUSSION
Rejection 1 - 35 U.S. C. § 112 ,I2
The Examiner rejected claims 9, 11-15, 18-25, and 27-31 under
35 U.S.C. § 112 i-f2 as indefinite.
The Examiner noted that the preambles of the independent claims
(i.e., claims 9, 20, and 25) recite merely "a safety device container" whereas
2 The Examiner did not list dependent claims 27-30 as rejected under
35 U.S.C. § 112 i-f2 (see Final Act. 3), but we understand the rejection to
necessarily include them as they depend from either of independent claims
20 and 25, both of which were rejected under 35 U.S.C. § 112 i-f2.
3 US 2014/0090993 Al; published Apr. 3, 2014 ("Mosley").
4 US 2,781,897, issued Feb. 19, 1957 ("Dale").
5 US 2,487,528, issued Nov. 8, 1949 ("Dawson").
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Application 14/853,366
the bodies of those claims recite, not merely components of the container,
but also the content of the container (i.e., "a safety device positioned
within"). Final Act. 3. The Examiner thus rejected all of the claims as
indefinite because the bodies of the independent claims exceed the scope of
the preambles. Id.
Appellant argues that "no basis of any kind has been given why the
inclusion of a safety device fails to reasonably apprise those skilled in the art
as to the scope of Applicant's invention." Appeal Br. 3. We agree with
Appellant, and we determine that the distinction between the preambles and
the bodies of the independent claims does not render those claims indefinite.
Accordingly, we reverse the rejection of claims 9, 11-15, 18-25, and
27-31 are rejected under 35 U.S.C. § 112 i-f2.
Rejection 2- 35 U.S.C. §102(e)
The Examiner rejected claims 25, 28, and 29 are rejected under
35 U.S.C. §102(e) as anticipated by Mosley.
Figure 1 of Mosley is reproduced below.
Figure 1 of Mosley, reproduced above, shows safety kit 10 having a housing
12 consisting of body portion 14 and front cover 16. Mosely i-f7. As seen,
eye wash holder 50 is positioned within the body portion. Id. i-fl2.
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Independent claim 25 recites "wherein the first housing and second
housing are formed in the shape of the safety device to receive the safety
device." Appeal Br. 16 (Claims Appendix). Claims 28 and 29 depend from
claim 25. Id. at 16.
The Examiner asserts Mosley's eye wash holder as the first housing
and its body portion as the second housing. However, Mosley does not
disclose that the body portion is formed in the shape of the safety device
(i.e., eye wash bottle 52). Rather, it appears that only the eye wash holder is
formed in the shape of the eye wash bottle.
Accordingly, we reverse the rejection of claims 25, 28, and 29 as
anticipated by Mosley.
Rejection 3 - 35 U.S.C. §102(b)
The Examiner rejected claims 9, 11-15, 18, 19, 25, and 28-30 are
rejected under 35 U.S.C. § 102(b) as anticipated by Dale.
Figure 1 of Dale is reproduced below.
Figure 1 of Dale, reproduced above, shows "a perspective view of a
commercial rigid gun case with the cover or closure section partially opened
and showing a typical gun in dot-and-dash lines mounted within the base or
main section of the casing." Dale 1:65---68.
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The Examiner found that Dale teaches all of the limitations of the
rejected claims, including a first housing ( 6), second housing (7), divider (9),
cut-out section (20), and safety device (13). See, e.g., Final Act. 5.
Claims 9, 11-15, 18, 19, and 28
Independent claim 9 and dependent claim 28 recite that "the safety
device is a fire extinguisher." Claims 11-15, 18, and 19 depend from claim
9. For these claims, the Examiner finds that Dale's gun is a fire extinguisher
because it "can be used to shoot out a flame of a match [and] the butt of the
gunstock can be used to stamp out a fire." Final Act. 5.
Appellant argues that this is an unreasonable interpretation of "fire
extinguisher." Appeal Br. 4. We are persuaded by Appellant.
Accordingly, we reverse the rejection of claims 9, 11-15, 18, 19, and
28 as anticipated by Dale.
Claims 25, 29, and 30
Independent claim 25 recites that "the first housing and second
housing are formed in the shape of the safety device to receive the safety
device." Claims 29 and 30 ultimately depend from claim 25. The Examiner
finds that Dale's rectangular housings ( 6 and 7) are formed in the shape of
the gun that is housed therein because "the right end of cover section 7 and
base section 6 is flat to correspond to the flat butt of the gun stock; the flat
top and bottom interior surfaces correspond to flat sides of the gun 13."
Appellant argues that that this is an unreasonable interpretation of the
claim language. Appeal Br. 8-9. Although we agree with the Examiner that
the housings need not be formed perfectly in the shape of the safety device
(see Ans. 16-17), there must be some meaningful congruence between the
shape of the housings and the safety device. Otherwise, as Appellant argues,
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the limitation loses all meaning. See Appeal Br. 8. Correspondence
between Dale's housings 6 and 7 and purportedly flat surfaces of Dale's gun
does not teach "the first housing and second housing are formed in the shape
of the safety device to receive the safety device," as recited in claim 25 and
incorporated by reference into claims 29 and 30.
Accordingly, we reverse the rejection of claims 25, 29, and 30 as
anticipated by Dale.
Rejection 4 - 35 U.S.C. §103(a)
The Examiner rejected claims 20-24 and 27 are rejected under
35 U.S.C. § 103(a) as unpatentable over Dale and Dawson. Appellant
argues claims 20, 21, and 27 separately and does not present any arguments
with respect to claims 22-24. See Appeal Br. 9-12. Claims 22-24 will
stand or fall with claim 20. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 20 and 22-24
The Examiner found that Dale teaches all of the subject matter of
claim 20 except for "a second divider having a cut-out section positioned
within the second housing to divide the second housing into a first section
and a second section." Final Act. 8-9. To be clear, the Examiner found that
Dale teaches a second divider (12), just not one having a cut-out section. Id.
at 9; see also Dale Fig. 1, ref. 12.
The Examiner thus relied on Dawson for teaching a cut-out section in
a second divider. Id. at 9. Figure 1 of Dawson is reproduced below.
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FIG,/
Figure 1 of Dawson, reproduced above, shows gun case 10 with gun G
therein. The Examiner found that "Dawson teaches a first divider 26 having
a cut out section 27 and a second divider 25 having a cut out section 27 to
closely embrace ( column 2, line 28) safety device 15." Final Act. 9. We
adopt this finding. See Dawson 2:25-29 ("The hand grip supporting cushion
member 17 comprises an upper block 25 and lower block 26 which together
provide a cavity 27 adapted to closely embrace the hand grip 15a of the gun
G."), Figs. 1 and 3.
The Examiner determined that it "would have been obvious to a
person having ordinary skill in the art at the time of the invention to have
provided a cut out section to the second divider of Dale as taught by Dawson
to improve securing the safety device by providing a close embrace."
Appellant argues that the proposed combination does not render the
claims obvious because it lacks "a neck of the safety device [being] received
within the cut-out section[s] of the first divider and the second divider to
immobilize the safety device." Appeal Br. 10-11 (emphasis added). This is
so, Appellant argues, because the Examiner asserted in a different rejection
(i.e., the rejection of claims 9 and 15 as anticipated by Dale) that the portion
of Dale's gun that would be received within the cut-out sections of the
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dividers was the body of a safety device and not the neck. Id. ( citing Final
Act. 5).
We are not persuaded by Appellant's arguments. First, we are not
bound by the factual findings undergirding the rejection of claims 9 and 15
as anticipated by Dale, as we are reversing that rejection.
Second, as the Examiner notes, independent claims 9 and 15 are
different in scope than independent claim 20 and were not subject to the
same prior art rejection. Ans. 18. Accordingly, we agree with the
Examiner's response that "[t]here is nothing that requires the head and neck
of independent claims to read on the same elements in the prior art." Id.
Third, the terms "head," "neck", and "body" of a safety device are not
defined in the Specification. Instead, they are employed broadly, with the
term "neck" encompassing a portion of the safety device that is narrower
than adjacent portions. The portion of the gunstock that would be secured
by the cut-out portions in the proposed modification of Dale in view of
Dawson is narrower than either adjacent portion, thus making it a "neck"
within the meaning of the claim. See Dale Fig. 1, ref. 21.
Accordingly, we affirm the rejection of claims 20 and 22-24 as
unpatentable over Dale and Dawson.
Claim 21
Claim 21 recites: "The safety device container of claim 20 wherein
the cut-out of the first divider is centrally located." Appeal Br. 15 (Claims
Appendix). The Examiner finds this limitation would be met by the
proposed modification because the existing cut-out section (21) in Dale is
centrally located. Final Act. 9.
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Appellant argues that Dale's cut-out section 21 is "offset and not
centrally located." Appeal Br. 11. We are not persuaded. See Dale Fig. 1,
refs. 10 and 21. Cut-out section 21 clearly encompasses the exact center or
midpoint along divider 10. Id. That is sufficient to meet the "centrally
located" limitation. Although cut-out section 21 is not symmetrically
positioned about the exact center of divider 10 ( or "offset" as Appellant puts
it), the claim does not require such positioning. Appellant has not
established a basis to so narrowly construe the claim.
Accordingly, we affirm the rejection of claim 21 as unpatentable over
Dale and Dawson.
Claim 27
Claim 27 recites: "The safety device container of claim 20 wherein
the safety device is a fire extinguisher." Here, the Examiner again
unreasonably interprets "fire extinguisher" to encompass Dale's gun. Final
Act. 10. It does not.
Accordingly, we reverse the rejection of claim 27 as unpatentable
over Dale and Dawson.
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DECISION
The Examiner's rejection of claims 9, 11-15, 18-25, and 27-31 as
indefinite is reversed.
The Examiner's rejection of claims 25, 28, and 29 as anticipated by
Mosley is reversed.
The Examiner's rejection of claims 9, 11-15, 18, 19, 25, and 28-30 as
anticipated by Dale is reversed.
The Examiner's rejection of claims 20-24 as unpatentable over Dale
and Dawson is affirmed; the Examiner's rejection of claim 27 as
unpatentable over Dale and Dawson is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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