Ex Parte Tompkins

Patent Trial and Appeal Board

Jul 18, 2017

13191312 (P.T.A.B. Jul. 18, 2017)

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.
13/191,312 07/26/2011 Blaine Kevin Tompkins 1618.0101 3843
66313 7590
DOCKET CLERK
P.O. BOX 12608
DALLAS, TX 75225
EXAMINER
COLLADO, CYNTHIA FRANCISCA
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
07/20/2017 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):
docket, clerk @ kelly-krause. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BLAINE KEVIN TOMPKINS
Appeal 2016-003482
Application 13/191,312
Technology Center 3700
Before STEVEN D.A. McCARTHY, LISA M. GUIJT, and
BRENT M. DOUGAL, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision1 rejecting claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM—IN—PART.
CLAIMED SUBJECT MATTER
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1 Appeal is taken from the Final Office Action dated February 13, 2015
(“Final Act.”), as supplemented by the Advisory Action dated May 1, 2015.
Appeal 2016-003482
Application 13/191,312
1. An apparatus for protectively supporting an object, said
apparatus comprising:
an outer shell formed of a nonstretchable material; and
an inner shell positioned within said outer shell, said inner
shell comprising an inflatable bladder that, when the object is
seated at said inner shell and an inflation fluid is provided to
inflate the inflatable bladder, resistance, caused by the outer shell
to outward expansion of the inflatable bladder, preventing the
outward expansion of the inflatable bladder and forcing the
inflatable bladder into position about the object to fill in voids
around the object and to conform to and to protectively support
the object, said outer shell supporting and carrying said inner
shell and the object when the object is seated at said inner shell,
and said outer shell and said inner shell together collapsible when
not in use into reduced dimension to facilitate compact storage.
REJECTIONS
I. Claims 1—3, 6—9, 12—14, and 17—19 stand rejected under
35 U.S.C. § 102(b) as anticipated by Pivert (US 4,905,835; issued Mar. 6,
1990).
II. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pivert and Miner (US 6,176,408 Bl; issued Jan. 23,
2001).
III. Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pivert and Dickinson (US 7,383,953 B2; issued June 10,
2008).
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Application 13/191,312
IV. Claims 5 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pivert, Dickinson, and Choi (US 2010/0294682 Al;
published Nov. 25, 2010).
ANALYSIS
Rejection I
Claims 1, 2, 6, 9, 12, 13, and 19
Regarding independent claim 1, the Examiner finds, inter alia, that
Pivert’s box 100 corresponds to the claimed outer shell and Pivert’s two
inflatable assemblies 200, 300 correspond to the claimed inner shell. Final
Act. 2-4 (citing Examiner’s Annotated Fig. la); see Pivert 3:68-4:2, Fig. la.
The Examiner determines that Pivert also discloses “forcing the inflatable
bladder into position about the object to fill in voids around the object and to
conform to and to protectively support the object,” as claimed. Id. at 2.
Appellant argues that there is no disclosure in Pivert that inflatable
assemblies 200, 300 are forced into position about the object to fill in voids
around the object and to conform to and protectively support the object, as
recited in claim 1, and as similarly recited in claim 12. Br. 11. In support,
Appellant submits that “Pivert states that truncated pyramid configurations
are utilized . . . [and] indicates that the tips of the pyramid-shaped cushions
have tips that reach points close to geometrical centers of the inside volume
of the box.” Id. (citing Pivert 5:25—27, 6:29-34, Figs. 2A, 2B, 3B, 9).
Appellant contends that, with respect to Pivert’s inflatable cushion
packaging, “significant voids are formed between the inflatable assembly
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Application 13/191,312
and the article 400 that is supported.” Id. Appellant further contends that
Pivert fails to disclose a “support” as claimed, namely, “an inner shell that
conforms to the supported object.” Id. Appellant submits that the claimed
invention provides “protective support about an entire object.” Id.
(emphasis added).
The Examiner responds that, in Pivert, “during inflation, each cushion
fits itself closely against the facing wall of the packaged article.” Ans. 9
(citing Pivert 6:19—28).
Independent claim 1 recites, in relevant part,
an inner shell. . . comprising an inflatable bladder that, when the
object is seated at said inner shell and an inflation fluid is
provided to inflate the inflatable bladder, resistance . . . forcing
the inflatable bladder into position about the object to fill in voids
around the object and to conform to and to protectively support
the object.
Br. 15 (Claims App.) (emphasis added).2 Notably, claim 1 does not require
all voids around the inflatable bladder to be filled, or for the inflatable
bladder to conform to all surfaces of any object. As determined by the
Examiner, Pivert discloses that “during inflation, each cushion [(or inflatable
assembly)] fits itself closely against the facing wall of the packaged article.”
Ans. 9 (citing Pivert 6:19—28). Thus, Pivert’s inflatable assembly is forced
around the object to fill at least some voids and to conform to at least some
2 Similarly, independent claim 12 recites “applying an inflation fluid to the
inflatable bladder ... to force the inflatable bladder into position about the
object to fill in voids around the object and to conform the inflatable bladder
to the object.” Br. 16 (Claims App.).
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Application 13/191,312
surfaces of the article, as required by claim 1. To the extent Appellant is
arguing that Pivert’s inflatable assembly must fill all such voids or conform
to all object surfaces, Appellant’s argument is not commensurate in scope
with the claims. See In re Self 671 F.2d 1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability).
Appellant also argues that “Pivert fails to provide for collapsibility of
its inflatable assemblies together with the box in which the inflatable
assemblies are positioned through release of an inflation fluid,” as claimed.
Br. 12. Appellant contends that “Pivert fails to disclose any manner by
which to reuse the inflatable cushion packaging.” Id. In support, Appellant
argues that, in Pivert, “[e]ven if a user were to flatten the outer shell, this is
not the equivalent of storage and in any event, at least one of the inflatable
assemblies would have to be removed prior to subsequent reuse of the
packaging.” Id.
The Examiner responds that, in Pivert, “[t]he inner shell 274, 374 is
deflatable” and that “once the inner and outer shells are deflated, the walls
collapse inward[ly].” Ans. 9 (citing Pivert 5:34-46, 7:57—61).
Independent claim 1 recites, in relevant part, “said outer shell and said
inner shell together collapsible when not in use into reduced dimension to
facilitate compact storage.” Br. 15 (Claims App.).3 * 5Pivert discloses that re-
3 Similarly, independent claim 12 recites, in relevant part, “the outer shell
and the inner shell together collapsible, through release of the inflation fluid,
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opening the box is normally accomplished by “initially deflating one of the
two inflatable assemblies.” Pivert 8:43—45. Pivert also discloses that the
“closure system [(i.e., flaps of the box)] is adequately locked only when
pressure is applied against all four flaps from inside the box,” by inflating
the two inflatable assemblies, and “[w]hen such pressure is exerted the
closure can no longer be unlocked from outside [(the box)].” Id. at 4:41—45.
In other words, Pivert teaches that for the flaps to be unlocked, at least one
of the inflatable bladders must be deflated. Thus, the box (the outer shell)
and at least one inflatable bladder (the inner shell) are together collapsible,
through deflation of the inflatable bladder (release of the inflation fluid),
such that the flaps of the box are unlocked and the box may be flattened into
a reduced dimension. To the extent Appellant is arguing that the claims
require “reuse” or that the inflatable bladders must not be removeable from
the outer shell prior to subsequent reuse, Appellant’s argument is not
commensurate in scope with the claims. See In re Self, 671 F.2d at 1348
(limitations not appearing in the claims cannot be relied upon for
patentability).
Accordingly, we sustain the Examiner’s rejection of independent
claims 1 and 12, and claims 2, 6, 9, 13, and 19 depending therefrom, under
35 U.S.C. § 102(b) as anticipated by Pivert.
when not in use into reduced dimensions to facilitate compact storage.” Br.
16—17 (Claims App.).
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Claims 3 and 14
Claim 3, which depends from independent claim 1, requires, in
relevant part, “said outer shell comprises a support bag” (Br. 15 (Claims
App.)), and claim 14, which depends from independent claim 12, similarly
requires, in relevant part, “positioning the inner shell in a support bag” {id. at
17 (Claims App.)). The Examiner construes the claim term “bag” to mean
“a container or receptacle of leather, plastic, cloth, paper, etc., capable of
being closed at the mouth; pouch.” Final Act. 5 (emphasis omitted) (citing
Webster’s Collegiate Dictionary.com); see also id. at 6. Appellant submits
that the claim term “bag” means “a non-rigid container made of fabric paper,
leather, etc., with an opening at the top that can be closed.” Br. 12 (citing
Webster’s New World College Dictionary, 4th Ed.). Appellant argues that
Pivert’s box 100 “is not equivalent to the closable bag or support bag,” as
claimed. Br. 12.
We accept Appellant’s definition of the claim term “bag” and agree
with Appellant that the Examiner erred by finding that Pivert’s rectangular,
corrugated cardboard box 100 is a bag. See, e.g., Pivert 4:3—8 (“The box
100 is made of a single piece of corrugated cardboard . . . and is rectangular
in shape . . . having four side walls 111, 112,113, and 114, and two closure
assemblies 120 and 130 integral therewith and serving to close the bottom
and the top.”). Even if we had accepted the Examiner’s definition, we
would not have agreed that a corrugated cardboard box is a pouch or bag.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claims 3 and 14 under 35 U.S.C. § 102(b) as anticipated by Pivert.
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Claims 7, 17, and 18
Claim 7, which depends from independent claim 1, requires, in
relevant part, “an inflation fluid applicator connectable to [an inflation-fluid
receiving port of the inflatable bladder] to apply the inflation fluid to inflate
said inflatable bladder.” Br. 16 (Claims App.). Claim 17, which depends
from independent claim 12, requires, in relevant part, “applying the inflation
fluid to an inflation fluid receiving port,” and claim 18, which depends from
claim 17, requires, in relevant part, “wherein said applying further comprises
connecting an inflation fluid applicator to the inflation fluid receiving port.”
Br. 17 (Claims App.). The Examiner finds that Pivert’s connection 372 at
the inflatable assembly to flexible pipe 370 corresponds to the claimed
inflation receiving port and Pivert’s end piece 374 corresponds to the
claimed inflation fluid applicator. Final Act. 5 (citing the Examiner’s
Annotated Figure 1 a of Pivert at Final Act. 4); see also id. at 6.
Appellant argues that Pivert’s disclosure of “a flexible pipe 270 that
has a free end fitted with a valve 274 including an inflation end piece” or
“analogous structure^] of the inflatable assembly 300,” does not disclose or
suggest “an inflation applicator.” Br. 12. The Examiner responds that Pivert
“states that ‘a flexible pipe 370 is connected at 372 to the inflatable
assembly and is provided at its free end with an assembly including a valve
and an end piece 374 for inflation purposes enabling the assembly 300 to be
inflated.’” Ans. 10 (citing Pivert 5:63—68, Fig. 1 a).
Appellant’s argument does not apprise us of error in the Examiner’s
findings. In other words, Appellant does not identity any structure or
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function of the claimed inflation fluid applicator that is not met by Pivert’s
flexible pipe 270, 370 and end piece 274, 374, or any structure or function of
the claimed inflation-fluid receiving port of the inflatable bladder that is not
met by Pivert’s connection 272, 372. Moreover, Pivert supports the
Examiner’s finding that Pivert’s flexible pipe 270, 370 and end piece 274,
374 are connected to connection 272, 372. See, e.g., Pivert, Fig. 1 a.
Accordingly, we sustain the Examiner’s rejection of claims 7, 17, and
18 under 35 U.S.C. § 102(b) as anticipated by Pivert.
Claim 8
Claim 8, which depends from independent claim 1, requires, in
relevant part, “wherein the inflatable bladder of said inner shell further
comprises a pressure relief valve.” Br. 16 (Claims App.). The Examiner
finds that Pivert discloses this limitation at column 5, lines 34 to 40. Final
Act. 5. Appellant argues that Pivert’s disclosure of “a flexible pipe 270 that
has a free end fitted with a valve 274 including an inflation end piece” or
“analogous structure [s] of the inflatable assembly 300,” does not disclose or
suggest “a pressure relief valve.” Br. 12.
The passage in Pivert relied on by the Examiner for disclosing a
pressure relief valve states:
The single internal volume defined by the three cushions
communicates with the outside via a flexible pipe 270 which is
connected to the inflatable assembly 200 in air-tight manner at
272 and whose free end is fitted with a valve 274 including an
inflation end piece, with a pushbutton or the like being provide
in order to open the valve and deflate the assembly when so
desired.
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Pivert 5:34-40. Thus, although Pivert discloses a valve, or even a valve
with a pushbutton for opening the valve, Pivert fails to disclose a pressure
relief valve, which is a valve that opens or closes when pressure exceeds a
certain threshold.
Accordingly, we do not sustain the Examiner’s rejection of claim 8
under 35 U.S.C. § 102(b) as anticipated by Pivert.
Rejections II—IV
Appellant chose not present separate arguments for the patentability
of claims 4, 5, 10, 11, 15, and 16, which depend from independent claims 1
and 12, apart from arguing that the secondary and tertiary references cited by
the Examiner fail to remedy deficiencies in the teachings of Pivert as applied
to the independent claims. Br. 13. Accordingly, for the reasons stated
supra, we sustain the Examiner’s rejection of claims 4, 5, 10, 11, 15, and 16
under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision to reject claims 1, 2, 6, 7, 9, 12, 13, and 17—
19 under 35 U.S.C. § 102(b) as anticipated by Pivert is affirmed.
The Examiner’s decision to reject claims 3, 8, and 14 under 35 U.S.C.
§ 102(b) as anticipated by Pivert is reversed.
The Examiner’s decision to reject claims 4, 5, 10, 11, 15, and 16
under 35 U.S.C. § 103(a) is affirmed.
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C
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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-IN-PART
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