Ex parte Taylor

Board of Patent Appeals and Interferences

May 10, 1999

08493463 (B.P.A.I. May. 10, 1999)

Application for patent filed June 22, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CHARLES M. TAYLOR

_____________
Appeal No. 98-1049
Application 08/493,4631
______________
HEARD: May 4, 1999
_______________
Before FRANKFORT, McQUADE and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 98-1049
Application 08/493,463
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claims 18 and 19. Claims 1 through 12
and 14 through 17, which are the only other claims remaining
in the application, stand allowed. Claim 13 has been can-
celed.
Appellant’s invention relates to a picnic caddy for
storing and transporting articles commonly used at a picnic,
or at other outdoor or indoor activities. A copy of independ-
ent claims 18 and 19, as reproduced from Appendix A of appel-
lant’s brief, is attached to this decision.
The prior art references of record relied upon by
the examiner in rejecting the appealed claims are:
Steely et al. (Steely) 2,897,910 Aug. 4, 1959
Karoff 2,926,794 Mar. 1, 1960

Claims 18 and 19 stand rejected under 35 U.S.C. §
103 as being unpatentable over Karoff in view of Steely.
According to the examiner
Appeal No. 98-1049
Application 08/493,463
3
Karoff teaches a serving table/caddy
(Fig. 1) comprising: first and second
upright support pillars (14), a first tray
(23) extending laterally away on one side
from the support pillars, and a second tray
(21) extending laterally away from another
side of the support pillars. For claims 18
and 19, Karoff fails to teach a means for
mounting the pillars in a vertical rela-
tionship/clamp. Steely teaches a
serving table/caddy (Fig. 1) having a means
for mounting the pillars in a vertical
relationship/clamp (22) arranged at one end
of the table. It would have been obvious
to modify the serving table/caddy of Karoff
by adding a mounting means/clamp thereon
(such as the one taught by Steely), to
provide a means on the table/caddy which
would securely hold it in one position"
(final rejection, page 2).
Rather than reiterate the conflicting viewpoints
advanced by the examiner and appellant regarding the above-
noted rejection, we make reference to the final rejection
(Paper No. 8, mailed November 20, 1996) and the examiner's
answer (Paper No. 14, mailed October 28, 1997) for the exam-
iner's complete reasoning in support of the rejection, and to
appellant’s brief (Paper No. 13, filed September 29, 1997) for
appellant’s arguments thereagainst.
Appeal No. 98-1049
Application 08/493,463
4
OPINION
In reaching our decision in this appeal, we have
given careful consideration to appellant’s specification and
claims, to the applied prior art references, and to the re-
spective positions articulated by appellant and the examiner.
As a consequence of our review we have reached the determina-
tion that the examiner’s rejection of claims 18 and 19 under
35 U.S.C. § 103 will not be sustained. Our reasoning follows.
Looking to the examiner's prior art rejection of
claim 18 under 35 U.S.C. § 103, we note that claim 18 sets
forth “means for securely mounting,” which means are located
or arranged at one end of the first and second upright support
pillars of the claimed picnic caddy. As urged by appellant on
pages 5 and 6 of the brief, under 35 U.S.C. § 112, sixth
paragraph, the recited means must be construed to cover the
corresponding structure described in the specification and
equivalents thereof. From Figures 1, 2 and 3, and the de-
scription thereof in the specification, it is readily apparent
that the “means for securely mounting” of claim 18 on appeal
Appeal No. 98-1049
Application 08/493,463
5
is the clamping arrangement seen at the base portion (22) of
each of the upright pillars (14), which structure includes a
support projection (32) and a clamping leg (48) provided on
each support pillar and a clamp (50) extending upwardly
through each clamping leg (48). In use, this clamping
arrangement allows an end edge of a picnic table top or other
horizontal surface to be inserted between the projection (32)
and the clamping leg (48), with the clamps (50) then being
tightened to fixedly secure the picnic
caddy to the picnic table top or other horizontal surface.
With this understanding of what constitutes the “means for
securely
mounting” of claim 18 on appeal, we turn to the examiner’s
rejection based on the combined teachings of Karoff and
Steely.
From our perspective, neither Karoff nor Steely
discloses, teaches or suggests a “means for securely mounting”
Appeal No. 98-1049
Application 08/493,463
6
like that required in appellant’s claim 18 on appeal. The
examiner’s position that the locking structure (22) of Steely
is “an equivalent mounting means which performs the same
function as that of the disclosed invention’s means” (final
rejection, page 3) is entirely untenable. Both the structure
and function of the locking device (22) of Steely are entirely
different than the clamping arrangement disclosed and claimed
by appellant or any equivalents thereof. Thus, even if one
were to modify the serving table or cart of Karoff to have a
locking structure like that of Steely, the resulting table
or cart would not be responsive to the picnic caddy as defined
in appellant’s claim 18 on appeal. For this reason, the
examiner’s rejection of claim 18 under 35 U.S.C. § 103 as
being unpatentable over the combined teachings of Karoff and
Steely will not be sustained.
Independent claim 19 on appeal differs from claim 18
in that it specifically recites a “clamp” arranged at one end
of
Appeal No. 98-1049
Application 08/493,463
7
said first and second upright support pillars, instead of the
“means for securely mounting” as in claim 18. Again, we agree
with appellant that the examiner’s determination that the
locking structure (22) of Steely is a clamp is untenable.
Thus, for the reasons set forth on pages 7 and 8 of the brief,
we will likewise not sustain the examiner’s rejection of claim
19 on appeal under 35 U.S.C. § 103.
As is apparent from the foregoing, the decision of
the examiner rejecting claims 18 and 19 of the present
application under 35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
Appeal No. 98-1049
Application 08/493,463
8
)
JEFFREY V. NASE )
Administrative Patent Judge )
psb
Appeal No. 98-1049
Application 08/493,463
9
Evenson, McKeown, Edwards & Lenahan, P.L.L.C.
1200 G Street, N.W.
Suite 700
Washington, D.C. 20005
Appeal No. 98-1049
Application 08/493,463
- A1 -
18. A picnic caddy, comprising:
first and second upright support pillars arranged in
a parallel spaced apart relationship to one another;
means for securely mounting, arranged at one end of
said first and second upright support pillars, the first and
second support pillars in a vertical relationship;
a first tray extending laterally away on one side
from said first and second support pillars;
a second tray extending laterally away from another
side of said first and second support pillars;
wherein said first and second trays are connected to
opposite sides of said first and second upright support
pillars.
19. A picnic caddy, comprising:
first and second upright support pillars arranged in
a parallel spaced apart relationship to one another;
a clamp arranged at one end of said first and second
upright support pillars;
a first tray extending laterally away on one side
from said first and second support pillars;
a second tray extending laterally away from another
side of said first and second support pillars;
wherein said first and second trays are connected to
opposite sides of said first and second upright support
pillars.