Ex Parte Zabinski

Patent Trial and Appeal Board

Jun 30, 2016

13287584 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/287,584
62973 7590
JAY M, SCHLOFF
FILING DATE
11/02/2011
07/05/2016
Aidenbaum Schloff and Bloom PLLC
6960 Orchard Lake Road
Suite 250
West Bloomfield, MI 48322
FIRST NAMED INVENTOR
Andrea Zabinski
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.
ZAB11U02 8065
EXAMINER
ING,MATTHEWW
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
j schloff@aidenbaum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREA ZABINSKI
Appeal2014-003540
Application 13/287,584
Technology Center 3600
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
MARK A. GEIER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andrea Zabinski (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject under 35 U.S.C. § 103(a): (1) claims 1, 4,
and 5 as unpatentable over Quade (US 5,957,558; iss. Sept. 28, 1999) and
Clark (US 2,555,873; iss. June 5, 1951); (2) claims 2 and 6 as unpatentable
over Quade, Clark, and Crawford (US 2006/0266748 Al; pub. Nov. 30,
2006); and (3) claim 3 as unpatentable over Quade, Clark, and Worrallo (EU
0164815 A2; pub. Dec. 18, 1985). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Appeal2014-003540
Application 13/287,584
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a container system for holding
a plurality of pods or other individual items." Spec., para. 2; Figs. IA, IB.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A container system, the system comprising a tray support
unit and at least one tray,
wherein said tray support unit comprises a first arm and a
second arm biased toward one another such that the first and
second arm of the tray support may securely and removably
attach said container system to a fixed item,
wherein said tray support unit comprises at least one pair
of tray guides for removably receiving said at least one tray
within said tray support unit,
wherein said at least one pair of tray guides comprise
fastener arrangements for removably [sic] attachment of at least
one pair of tray guides to at least one other pair of tray guides,
and wherein said tray support unit and said tray comprises
complementary engagement features such that said at least one
tray may retract to\'l/ard or extend a\'l1ay from said tray support
unit when said at least one tray is received within said at least
one pair of tray guides.
ANALYSIS
Obviousness over Quade and Clark
Claims 1, 4, and 5
Independent claim 1 recites a container system that includes, in
relevant part, a tray support unit comprising "a first arm and a second arm
biased toward one another such that the first and second arm of the tray
support may securely and removably attach said container system to a fixed
item." Appeal Br. 14, Claims App. The Examiner finds that Quade
discloses the container system substantially as claimed. The Examiner finds
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Application 13/287,584
that Quade "fail(s) to teach a second arm." Final Act. 2. The Examiner
further finds that Clark "teaches adding a second arm (elongated portion of
11) to a first arm (10), and biasing said first & second arms toward each
other (col. 1, lines 41-45)." Id. The Examiner proposes to replace "screws
and holes (30, 32) in Quade's first arm (28) ... with a second arm
(elongated portion of 11 of Clark) biased toward Quade's first arm [28], as
taught by Figs. 1-2 & col. 1, lines 41-45 of Clark." Ans. 3; see also id. at 5;
Final Act. 2-3.
Appellant contends that " [ s] ecuring the storage unit system of Quade
to a fixed item requires using tools to install the system onto the fixed item
(such as by drilling holes and installing screws therein) and subsequently
reusing tools to remove it therefrom." Appeal Br. 7; see also Reply Br. 6-7.
As such, Appellant concludes that "Quade cannot be said to read on the
removable attachment disclosed by Appellant, which, contrastingly, teaches
an easily and readily attachable and detachable device that does not require
tools or hardware to be installed on or thereafter removed from a fixed
item." Id. at 7-8; see also Reply Br. 6-7. Appellant further contends that
"the attachment of Quade to a fixed item results in damage or physical
piercing of the surface of that fixed item," which is different from
Appellant's disclosure which "does not alter or in any way damage or
destroy any portion of the fixed item to which it attaches." Id. at 7-8; see
also Reply Br. 6-7.
We are not persuaded by Appellant's contentions because they
misapprehend the Examiner's rejection and are not responsive to the key
aspects of the Examiner's proposed rejection. The Examiner correctly
points out that the rejection "relies upon a proposed modification of Quade
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Application 13/287,584
in view of Clark" "[not] solely upon the Quade reference." Ans. 3. Here,
the Examiner proposes to substitute "Clark's biased second arm (elongated
portion of 11) for the screws (32) and holes (30) [attachments] of Quade."
Ans. 5. As such, Appellant's contentions regarding the "attachments" of
Quade are not responsive to the Examiner's proposed rejection.
Appellant further contends that "the Examiner asserts that the
elements of Quade involved in installing the system thereof to a fixed item
read on Appellant's elements that teach coupling two or more trays
together .... [e]lements 32, 28, and 14 of Quade are wholly unrelated to
Appellant's fastener arrangements." Appeal Br. 9. Appellant also contends
that in contrast to Quade, the fastener arrangements of the subject invention
"may,for example, comprise corresponding slots and tabs for facilitating a
snap-fit arrangement between the tray guides." Id. at 8 (emphasis added)
(citing Spec. 35, Fig. 2).
We are not persuaded by Appellant's contentions because they are not
commensurate in scope with claim 1. At the outset, we disagree with
Appellant that "Appellant's disclosure defines 'fastener arrangements' to
mean any particular embodiment for facilitating the snap-fit arrangement
between multiple tray guides (e.g. via corresponding slots and tabs)." Reply
Br. 11 (citing Spec. 35, Fig. 2). Paragraph 35 of Appellant's disclosure
states: "Exemplary fastener arrangements include corresponding slots and
tabs that facilitate a snap-fit arrangement between tray guides
320 and standalone tray guides 345" (emphasis added). Further, claim 1
merely recites that the at least one pair of tray guides "comprise fastener
arrangements for removably [sic] attachment of at least one pair of tray
guides to at least one other pair of tray guides" and does not recite anything
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Application 13/287,584
regarding the fastener arrangements "[comprising] corresponding slots and
tabs for facilitating a snap-fit arrangement between the tray guides." See
Appeal Br. 14, Claims App.; see also id. at 8; Ans. 4. 1 Limitations not
appearing in the claims cannot be relied upon for patentability. In re Self,
671F.2d1344, 1348 (CCPA 1982). In addition, we must be careful not to
read a particular embodiment appearing in the written description into the
claim if the claim language is broader than the embodiment. See
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
Further, Appellant does not apprise us of error in the Examiner's
findings. Here, the Examiner finds that Quade discloses fastener
arrangements 32 and that Quade as modified"[ would] be capable of
removably attaching the tray guides (70 & 72 of Quade) to at least one other
pair of tray guides (e.g., duplicates of 70 & 72 of Quade)." See Final Act. 2-
3. As the Examiner points out, Appellant acknowledges that element 32
(screws) of Quade are fasteners. Ans. 3, n.1; see also Appeal Br. 8. We
agree with the Examiner that "screws are reversible; and that, as such,
attachment via screws is therefore 'removable'." Ans. 2. Appellant fails to
apprise us how fasteners 32 of Quade would not "allow for the coupling of
two pairs of tray guides." See Appeal Br. 8.2
1 We note that dependent claim 4 recites "complementary engagement
features of said at least one tray and said at least pair of tray guides comprises
a slot and pin arrangement." Appeal Br. 14, Claims App. The Examiner finds
that Quade discloses this limitation. See Final Act. 3. Appellant does not
apprise us of Examiner error. See Appeal Br., generally.
2 We note that Appellant's contentions regarding the term "removable
attachment" refer to the container system's attachment to a fixed item. See
Appeal Br. 6-8; Reply Br. 6-7; see also Spec., paras. 14-16.
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Appellant contends:
[I]ncorporation of the teaching of Clark constitutes an
impermissible change in the principle of operation of Quade for
at least the reason that this suggested combination of references
would require a substantial reconstruction and redesign of the
elements shown in Quade (such as the addition of a second 'arm'
and the elimination of fasteners as the attachment means) as well
as a change in the basic principle under which Quade was
designed to operate [i.e., renders Quade unsatisfactory for its
intended purpose].
Appeal Br. 11; see also id. at 9-10, 12; Reply Br. 7-11. According to
Appellant:
[T]o the extent that Quade teaches attachment to a fixed item, the
express claim language of Quade limits such attachment to the
underside of such fixed item. (Quade, col. 8, 1. 55-57; Abstract;
Figure 1 ). However, Clark teaches the sadiron holder as only
being capable of being disposed on the top side of the fixed item
to which it attaches. Given Clark's mandatory disposition of the
sadiron holder above the fixed item to which it attaches,
modifying Quade by combining it \vith Clark \vould require the
storage unit system of Quade to be inverted thereby requiring it
to be disposed above the fixed item contrary to the principle of
operation of Quade.
Appeal Br. 10 (footnote omitted); see also id. at 11; Reply Br. 7-12.
Appellant's arguments are not persuasive. Quade expressly states:
"[a]s is shown in FIG. 1, it is preferred to mount storage unit 10 to the
underside of cabinet 12, although alternative mounting constructions are
possible." Quade, 5: 1--4 (italics added), Fig. 1.3 A reference disclosure is
3 Column 8, lines 55-57, of Quade merely discloses "frame pieces adapted for
attachment to an underside of said support structure so that said frame pieces
depend downwardly therefrom" (emphasis added). Moreover, Quade's
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not limited only to its preferred embodiments, but is available for all that it
discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545
F.2d 747, 750 (CCPA 1976). Clark discloses:
[a sadiron holder comprising] a thin flat base 10 of any suitable
material such as stamped sheet metal whose rearward end is here
shown as having integrally formed curled and springable spaced
tail members 11 whereby the base may be detachably springably
secured to any selected portion of the edge of an ironing board
12 and in a manner as best shown in Figure 1.
Clark, 1 :36-45 (italics added). Appellant does not direct us to any
discussion in Clark that limits base 10 with integrally formed curled and
springable spaced tail members 11 (the elements of Clark relied on by the
Examiner) as "only being capable of being disposed on the top side of the
fixed item." See Appeal Br. 10; see also Final Act. 2; Ans. 4.
Moreover, we fail to see how modifying Quade' s first arm to include
a second, spring-biased arm, as taught by Clark, as the Examiner proposes,
would require a substantial reconstruction and redesign of the elements
shown in Quade or render Quade unsatisfactory for its intended purpose.
Modifying Quade's first arm 28 to include a second, spring-biased arm (in
an arrangement similar to the base (first arm) 10 and springable spaced tail
members (second arm) 11 of Clark) would securely and removably attach
the container system of Quade to fixed item 14, as required by claim 1. 4 See
Abstract merely discloses "[a] storage unit includes frame pieces that attach
to a support structure."
4 We note that Quade as modified by Clark, as proposed by the Examiner,
provides "removable attachment" (i.e., "a capacity for installation and
subsequent removal [of a container system from a fixed item] without the need
of tools or hardware and without causing any damage to the fixed object to
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Ans. 3.
We agree with the Examiner that (1) "[the] modification would not
change Quade' s basic operating principle, since the tray support unit of
Quade as modified [by Clark] would still be able to attach to the cabinet
thereof, merely by a different means (i.e., a pair of spring-biased arms,
instead of screws)"; and (2) "such an alteration [would not] 'require a
substantial reconstruction and redesign', merely the inclusion of a second,
spring-biased arm, in lieu of screws, for accomplishing the aforementioned
attachment." Ans. 6; see also Final Act. 5-6; Appeal Br. 11; Reply Br. 9-
10.
We further agree with the Examiner that "the prospect of being able to
attach [Qaude's modified] tray support unit to the cabinet thereof absent
tools & hardware merely provides additional motivation to perform [the
modification]." Ans. 6; Final Act. 6; Reply Br. 9. In other words, the
ability, as here, to securely and removably attach a container system to a
fixed item without the need for tools/hardware is an improvement over the
prior art.
Further, because the Examiner's proposed modification of Quade in
view of Clark merely involves attachment of the tray support unit to the
fixed item, we fail to see how "the modified container system of Quade ...
would require ... inversion of such container system." Reply Br. 8; see also
Appeal Br. 10-11. We agree with the Examiner that "one of ordinary skill
would understand how to position the resultant tray system of Quade as
modified under the fixed item (14) thereof." Ans. 4--5; see also Reply Br. 8,
which it attaches or was attached"). See Reply Br. 6; see also Appeal Br. 6-
9.
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11. In other words, in the Examiner's proposed modification of Quade in
view of Clark, the tray system of Quade would remain unchanged and would
still depend downwardly from fixed item 14.
Appellant contends that "the limitation of Quade on the orientation of
Quade's storage unit system teaches away from the non-limiting nature of
Appellant's disclosure" and that the principles of Clark teach away from
Appellant's disclosure because "the sadiron holder of Clark cannot retain a
sadiron when upside down, the sadiron holder of Clark necessarily requires
attachment only to the topside of a fixed item." See Appeal Br. 6, 9-11; see
also Reply Br. 8, 10.
Appellant's arguments are not persuasive. "A reference may be said
to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "A reference
does not teach away, however, if it merely expresses a general preference for
an alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed." DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
(quoting In re Fulton, 391F.3d1195, 1201 (Fed Cir. 2004)). In this case, as
noted above, Quade does not "limit such attachment to the underside of such
fixed item." See Quade, 5: 1--4. We agree with the Examiner that "Quade
nowhere specifically disparages using a spring-loaded arm in place of
screws." Ans. 6. As further noted above, Appellant does not direct us to
any discussion in Clark that limits base 10 with integrally formed curled and
springable spaced tail members 11 (the elements of Clark relied on by the
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Application 13/287,584
Examiner) as "only being capable of being disposed on the top side of the
fixed item." See Appeal Br. 10; see also Final Act. 2; Ans. 4. As such, the
disclosures of Quade and Clark do not teach away from the subject
invention.
Further, to the extent that Appellant is arguing the references must be
capable of bodily incorporation in order to combine their teachings, the test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of a primary reference. In re Keller,
642 F.2d 413, 425 (CCPA 1981). "Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." Id. As noted above, the Examiner merely relies on base 10 with
integrally formed curled and springable spaced tail members 11 of Clark for
the proposed modification of Quade. See Final Act. 2.
Appellant contends that "a device capable of being interchangeably
disposed either above or below a fixed item [is claimed]." Appeal Br. 11.
Appellant's contention is not persuasive because it is not commensurate in
scope with claim 1. As pointed out by the Examiner, "the features upon
which [A]ppellant relies ... are not recited in the rejected claim(s)." Ans. 5.
Further, as noted above, limitations not appearing in the claims cannot be
relied upon for patentability. See In re Self, 671 F.2d at 1348
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 1 as unpatentable over Quade and Clark.
Appellant does not present arguments for claims 4 and 5 separate from those
presented for independent claim 1. See Appeal Br. 12. Accordingly, for the
same reasons discussed above for claim 1, we likewise sustain the
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Examiner's rejection of claims 4 and 5 as unpatentable over Quade and
Clark.
Obviousness over Quade, Clark, and either Crawford or Worrallo
Claims 2, 3, and 6
Appellant does not present arguments for claims 2, 3, and 6 separate
from those presented for independent claim 1. See Appeal Br. 12.
Accordingly, for the same reasons discussed above for claim 1, we likewise
sustain the Examiner's rejections of (1) claims 2 and 6 as unpatentable over
Quade, Clark, and Crawford; and (2) claim 3 as unpatentable over Quade,
Clark, and Worrallo.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1---6.
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
11