Ex Parte Sukup

Patent Trials and Appeals Board

Apr 22, 2019

14338609 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/338,609 07/23/2014
34082 7590 04/24/2019
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
FIRST NAMED INVENTOR
Eugene G. Sukup
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.
P07518US2 8629
EXAMINER
CHEYNEY, CHARLES
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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 EUGENE G. SUKUP
Appeal2018-006177
Application 14/338,609
Technology Center 3700
Before BRETT C. MARTIN, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 7-12, 14--18, and 20-24. 2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Sukup Manufacturing Co. ("Appellant") is the applicant as provided for
under 37 C.F.R. § 1.46.
2 Appeal is taken from the Final Office Action dated June 12, 2017.
Appeal2018-006177
Application 14/338,609
STATEMENT OF THE CASE
Claims 7, 14, and 20 are the independent claims on appeal. Claim 7,
reproduced below with disputed limitations emphasized, is exemplary of the
subject matter on appeal.
7. A method of using a rotatable grain storage assembly for
the storage and controlled removal of grain, the steps comprising:
providing a grain storage assembly comprising:
a frame having front legs and rear legs;
wherein the rear legs are shorter than the front legs;
a pair of support members, having rollers rotatably
attached, are connected to the frame; and
a barrel having at least one opening in a lid, the
opening covered by a removeable cap;
filling the barrel with grain and storing grain within the
barrel;
positioning the barrel on top of the frame at a
downward angle such that the lid is positioned on a
downward facing end of the barrel;
removing grain from the barrel by removing the cap
from the lid; and
rotating the barrel on the roller as a level of the
grain within the barrel is reduced such that that [sic J the
opening moves to a lower position thereby facilitating
controlled removal of the grain at various grain levels.
THE REJECTIONS
I. Claims 7-12 and 14--18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Upham (US 3,424,440; issued Jan. 28, 1969) and Adsit
(US 4,521,116; issued June 4, 1985).
II. Claims 20-24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Upham, Adsit, and Bronston (US 8,029,425 B2; issued
Oct. 4, 2011).
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Application 14/338,609
ANALYSIS
Rejection I
Appellant argues claims 7-12 and 14--18 as a group. Appeal Br. 3-7.
We select independent claim 7 as representative, and claims 8-12 and 14--18
stand or fall with claim 7. See 37 C.F.R. § 4I.37(c)(l)(iv).
Regarding independent claim 7, the Examiner finds that Upham
discloses a grain storage assembly that performs the claimed method steps
and has a frame (i.e., cradle 16A) having front and rear legs (40B, 40C) and
a pair of support members (i.e., cradle 16A) with rollers (i.e., rollers 22A)
connected to the frame, and also a barrel (i.e., container 10) that is able to be
positioned at a downward angle to remove grain. Final Act. 5 ( citing Upham
1: 15-17, 4: 15-17); see, e.g., id. at 7:28-33, Figs. 1, 7-10, 13, 14). The
Examiner determines that Upham fails to disclose a lid on the barrel having
an opening with a cap, as claimed, and relies on Adsit for disclosing a barrel
(i.e., drum liner 8) with a lid (i.e., lid 34) having an opening (i.e., aperture
36) covered by a removable cap (i.e., cap 40). Id. (citing Adsit, Fig. 4). The
Examiner determines that it would have been obvious to modify Upham's
barrel to include a lid, as taught by Adsit, because "such a modification
allows for shipping of the barrel and controlled pouring of the barrel
contents." Id. at 6 (citing Adsit 3:35--40).
First, Appellant argues that the Examiner improperly relied on
Upham, because Upham is non-analogous art. Appeal Br. 3. In support,
Appellant submits that Upham is not in the same field of endeavor as
Appellant's invention, namely, "a rotatable grain storage assembly;" rather,
Upham's field of endeavor is "a mixing apparatus for supporting and
transporting a container such as a drum for a concrete mixer." Id. at 4.
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Application 14/338,609
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). "Two separate tests
define the scope of analogous art: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The "field of
endeavor" test asks if the structure and function of the prior art is such that it
would be considered by a person of ordinary skill in the art because of
similarity to the structure and function of the claimed invention as disclosed
in the application. Id. at 1325-26. "A reference is reasonably pertinent ...
if it is one which, because of the matter with which it deals, logically would
have commended itself to an inventor's attention in considering his
problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). "If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in an
obviousness rejection." Id. Whether a prior art reference is "analogous" is a
question of fact. Id.
We determine that the field of endeavor of Appellant's invention is an
assembly for containing material, such as grain, for handling and storage.
Spec. 1:7 ("[t]his invention is directed to a grain storage assembly"); see
also claim 7 set forth supra (reciting "[a] method of using rotatable grain
storage assembly for the storage and controlled removal of grain"). Upham
is in the same field of endeavor as Appellant's invention because Upham is
directed to a "material handling apparatus," for example, "[an] apparatus for
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Application 14/338,609
mixing or agitating milk, concrete, grain or other material ... or to other
types of apparatus in which it is desired to move a load in azimuth through
360Q and/or to move the load in elevation about a generally horizontal tilt
axis." Upham 1: 10-21. Thus, Upham is properly relied on by the Examiner
as a prior art reference.
Second, Appellant argues that the Examiner improperly relied on
Adsit, because Adsit is non-analogous art. Appeal Br. 4---6; Reply Br. 2-3.
However, we determine that Adsit is in the same field of endeavor as
Appellant's invention, namely, an assembly for containing material, such as
grain, for handling and storage, because Adsit is directed to a material
handling apparatus "for mixing numerous types of materials" contained in a
mixing drum (i.e., drum liner 8), wherein mixing material is a form of
material handling. Adsit 1 :6-11; see also id. at 3:35--40 ("drum liner 8 may
also serve as a shipping container for such materials"). Additionally, Adsit
is reasonably pertinent to a particular problem addressed by Appellant's
invention, which is to be able to close the container of the assembly for
containing material, but still allow for the controlled flow of material from
the container, because Adsit teaches that a lid with spout and a removable
cap facilitates pouring. See Adsit 3:30-36 (disclosing that aperture 36 in lid
34 has a spout 38 "so that contents of the drum liner 8 may be poured
through that spout"). Further, Adsit addresses the problem of closing the
container for shipping (i.e., wherein the material is stored during shipping).
Id. at 3:36-38 ("[i]n this manner [(i.e., by providing a removable cap over
the aperture in the lid)], the drum liner 8 may serve as a shipping container
for such materials"); cf Claim 7, set forth supra ("storing grain within the
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Application 14/338,609
barrel"). Thus, Adsit is properly relied on by the Examiner as a prior art
reference.
Third, Appellant argues that the Examiner has failed to address the
claimed step of "storing grain within the barrel." Appeal Br. 7. The
Examiner responds that Adsit discloses closing the open end of a material
handling apparatus with lid 34, and the Examiner also further determines-
and Appellant does not challenge-that "[l]ids are widely known to prolong
and protect materials within the container when not in use."3 Ans. 3
( emphasis added).
We do not agree with Appellant that the Examiner has failed to
address the claimed step of "storing grain within the barrel;" rather, the
Examiner has expressly determined that adding Adsit's lid to Upham's
container discloses closing the container for storage of the contained
materials, because lids are known to store materials in containers. We
additionally determine that the claim limitation "storing grain within the
barrel" reads on the step of simply filling Upham's unmodified mixing
apparatus (i.e., without a lid) with grain, because such grain is initially being
kept in the Upham's barrel for future use, i.e., stored for future mixing.
Fourth, Appellant argues that the Examiner has failed to address the
claimed step of "rotating the barrel on the rollers as a level of the grain
within the barrel is reduced such that the opening moves to a lower position
thereby facilitating controlled removal of the grain at various levels."
Appeal Br. 7. Appellant submits that the prior art fails to disclose
3 We consider that the Examiner is taking Official Notice that lids are widely
known to cover containers for storage purposes (i.e., to keep materials, when
not in use or for future use).
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"controlled pouring." Id. Appellant further argues that the Examiner's
rationale for combining Upham and Adsit lacks support because neither
reference discloses "rotation of the barrel for controlled pouring." Appeal
Br. 7 ( emphasis added).
Appellant's argument, however, does not apprise us of error in the
Examiner's determination that Upham's grain mixing apparatus, as modified
to include Adsit' s lid, results in the claimed structure, which would also
perform the recited method steps. Ans. 3. In other words, rotating Upham's
modified grain mixing apparatus on its rollers results in moving the spout in
the aperture of its lid to a lower position, thereby facilitating removal of the
grain at various levels, as claimed. Regarding controlled removal of the
grain, as discussed supra, Adsit discloses that adding lid 34 having aperture
36 with spout 38 and cap 40 allows the contents to be "poured through the
spout," which suggest pouring the materials in a controlled manner via the
spout. See Ans. 3 ( wherein the Examiner determines that placing a lid on
Upham's device results in "a more precise dispensing operation").
Finally, Appellant argues that the Examiner improperly relied on
hindsight. Appeal Br. 7. We disagree, in that the Examiner's rationale for
modifying Upham's grain mixing apparatus to have a lid, as taught by Adsit,
is supported by Adsit and the Examiner's Official Notice, as set forth supra,
that lids provide a covering for open ended containers, for example, for
storage and shipping, as discussed supra.
Accordingly, we sustain the Examiner's rejection of claim 7 and
claims 8-12 and 14--18 fall therewith.
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Rejection II
Appellant argues claims 20-24 as a group. Appeal Br. 8-9. We
select independent claim 20 as representative, and claims 21-24 stand or fall
with claim 20. See 37 C.F.R. § 4I.37(c)(l)(iv).
Regarding independent claim 20, the Examiner applies Upham and
Adsit, as applied to independent claim 7 as set forth supra. Final Act. 7.
The Examiner further determines that Upham fails to disclose "shipping the
grain storage [assembly] with the frame and support members positioned
within the barrel to facilitate easier transporting," as claimed, and relies on
Bronston for disclosing shipping a frame (i.e., lateral extension bars 13a,
13b) positioned within the barrel (i.e., resilient covering 12) to facilitate
easier transporting. Final Act. 7-8 ( citing Bronston, Figs. 7-9).
Appellant argues that Upham and Adsit are non-analogous art,
however, for the reasons set forth supra, we determine that Upham and
Adsit are both in the same field of endeavor as Appellant's invention, as
recited in claim 20, and therefore, Upham and Adsit are properly relied on
by the Examiner. Appeal Br. 3---6.
Appellant also argues that Bronston is not analogous art, and
therefore, improperly relied on by the Examiner. Appeal Br. 8-9; Reply Br.
3. We agree that Bronston is not in the same field of endeavor as
Appellant's claimed invention, because the Bronston's field of endeavor is
exercise and therapeutic equipment. Bronston 1:9-10. However, we
determine that Bronston is reasonably pertinent to a particular problem with
which the inventor is involved, namely, providing an easily transportable
storage assembly. See, e.g., Spec. 2:21-25 ("[t]o transport or ship the
storage assembly 10, the frame 12 is disassembled and along with the jack
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Application 14/338,609
38 placed inside the barrel 24"). Bronston discloses that "[t]he disclosed
embodiments of a portable multi-purpose whole body exercise device can
easily be transported with minimal effort." Bronston 2:66-3:2. Thus,
Bronston, because of the matter with which it deals (i.e., the portability of
component parts of an assembly), logically would have commended itself to
an inventor's attention in considering the problem of transporting an
assembly. In sum, Bronston is properly relied on by the Examiner as
analogous art.
Accordingly, we sustain the Examiner's rejection of independent
claim 20, and claims 21-24 fall therewith.
DECISION
The Examiner's decision rejecting claims 7-12, 14--18, and 20-24 is
AFFIRMED.
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)(l )(iv).
AFFIRMED
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