Joseph SCHNEIDER

Patent Trials and Appeals Board

Dec 22, 2020

2020003524 (P.T.A.B. Dec. 22, 2020)

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.
15/450,526 03/06/2017 Joseph Scott SCHNEIDER 104035-22300US01 2257
181 7590 12/22/2020
MILES & STOCKBRIDGE PC
1751 PINNACLE DRIVE
SUITE 1500
TYSONS CORNER, VA 22102-3833
EXAMINER
KIRSCH, ANDREW THOMAS
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
12/22/2020 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):
ipdocketing@milesstockbridge.com
lmansfield@milesstockbridge.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH SCOTT SCHNEIDER

Appeal 2020-003524
Application 15/450,526
Technology Center 3700
____________

Before EDWARD A. BROWN, JAMES A. WORTH, and
MICHAEL L. WOODS, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–44, which are all pending claims. Claims 45–51
are canceled. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Joseph
Scott Schneider. Appeal Br. 2.
2 Our Decision refers to Appellant’s Appeal Brief (“Appeal Br.,” filed Oct.
21, 2019) and Reply Brief (“Reply Br.,” filed Apr. 6, 2020), the Examiner’s
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We AFFIRM.
BACKGROUND
Appellant’s application “relates to an improved insulating container,
and more particularly, to an improved insulating container having a
multilayer structure that is rigid and lightweight.” Spec. ¶ 3.
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is representative of the
subject matter on appeal:

1. An assembly comprising:
a bucket body comprising a first material and having
substantially vertical side walls;
wherein the side walls extend upwards from a closed
bottom base;
a handle connected to the side walls; and
one or more ergonomically designed feet for facilitating
gripping by a user, each of the feet being separately applied to
and extending beyond a bottom surface of the bottom base;
wherein the one or more ergonomically designed feet
comprise a second material different than the first material.

Appeal Br. 9, Claims App.
REFERENCES
The prior art relied upon by the Examiner is:

Final Office Action (“Final Act.,” mailed Mar. 22, 2019), and Answer
(“Ans.,” mailed Feb. 6, 2020).
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Name Reference Date
Perkins US 6,257,440 B1 July 10, 2001
Garone US 2006/0175340 A1 Aug. 10, 2006
Lucky US 2006/0277814 A1 Dec. 14, 2006
Carnesecca US 2014/0361026 A1 Dec. 11, 2014
Wilson US 2015/0053705 A1 Feb. 26, 2015

REJECTIONS
1. Claims 1, 2, 4–19, 22, 23, 28–33, and 42–44 stand rejected under
35 U.S.C. § 103 as being obvious over Garone and Lucky.
2. Claims 3, 20, and 21 stand rejected under 35 U.S.C. § 103 as being
obvious over Garone, Lucky, and Carnesecca.
3. Claims 24–27 stand rejected under 35 U.S.C. § 103 as being
obvious over Garone, Lucky, and Perkins.
4. Claims 34–41 stand rejected under 35 U.S.C. § 103 as being
obvious over Garone, Lucky, and Wilson.

DISCUSSION
1. Obviousness Over Garone and Lucky
Claims 1, 2, 4–12, 16–18, 22, 23, 32, and 42
Appellant argues claims 1, 2, 4–12, 16–18, 22, 23, 32, and 42 as a
group. We select claim 1 as representative, such that claims 2, 4–12, 16–18,
22, 23, 32, and 42 stand or fall therewith. See 37 C.F.R. § 41.37(c)(iv).
The issue in this case is whether a person of ordinary skill in bucket-
making at the time of the invention would have sought to modify a bucket
(as taught by Garone) to add feet of a different material (as taught by
Lucky).
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Obviousness must be determined in light of all of the facts.
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). “A
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.” Id.
The Examiner finds that Garone essentially describes the bucket with
ergonomic feet (of claim 1) but does not describe feet of a different material,
as recited in claim 1, i.e., “wherein the one or more ergonomically designed
feet comprise a second material different than the first material.” Final Act.
4–5. The Examiner finds that Lucky describes feet of a different material,
i.e., rubber feet. Id. at 5–6 (citing Lucky ¶ 15). We agree. In particular,
Lucky describes a bucket preferably made of a plastic material such as PVC,
or alternatively a non-corrosive metal, and describes mounting a number of
spaced feet preferably made of rubber. Lucky ¶¶ 14–15.
Appellant argues that the Examiner must provide more than a mere
showing that an adaptation could be made and more than mere platitudes
regarding reasons to combine. See Appeal Br. 4–5. However, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to have modified the material of the ergonomic feet of Garone to have been
a second material (i.e., rubber) as taught by Lucky, for the predictable
purpose of providing increased stability to the bucket. Final Act. 6. Indeed,
the cited portion of Lucky states: “The rubber feet 40 provide stability to the
bucket 12, particularly when in use on a boat, and such stability may be
enhanced by mounting a weight 42 to the exterior surface of the bottom wall
16 as shown in FIG. 3.” Lucky ¶ 15.
Appellant argues that it would not have been obvious to modify
Garone to include Lucky’s separately applied feet because Garone does not
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teach or suggest that its sections 22, 24 could be separately applied to the
drum body, and only suggests that its handles can be made separately.
Appeal Br. 4. However, the Examiner relies instead on Lucky for the
suggestion to modify Garone by separately applying feet. See Final Act. 5–6
Appellant provides six additional considerations to be weighed in the
analysis of whether a person of ordinary skill would have modified Garone
with the teachings of Lucky. First, Appellant argues that Garone explicitly
states that its “drum is preferably molded as a unitary member.” Appeal Br.
4 (citing Garone ¶ 27). “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 preference for an alternative,
expressed in prior art, does not teach away from the invention. See Polaris
Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018). Such a
preference may, nonetheless, be relevant in determining whether a person of
ordinary skill would have combined prior art teachings. Id. Here, Garone
expresses a preferences for a unitary molded member (Garone ¶ 27), which
is not a teaching away from the invention but is relevant to considering
whether a person of ordinary skill would have combined the teachings of
Garone and Lucky.
As second and third additional considerations, Appellant argues that
modifying Garone by adding rubber feet would have added to the cost of
Garone’s drum and possibly compromised its strength. Appeal Br. 4.
Appellant argues that these considerations teach away from the invention.
See Reply Br. 2. Appellant does not identify any portion of the prior art that
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discourages a person of skill from following the teachings of Lucky and
therefore Appellant has not identified a teaching away from the reference in
those terms.
Nevertheless, we consider as relevant Appellant’s arguments that the
Examiner’s proposed modification would have added cost and possibly
compromised the strength of the bucket. At the same time, we agree with
the Examiner that Appellant provides insufficient evidence for these
arguments (see Ans. 2), and we give them less weight. Appellant appears to
argue that the Specification’s embodiments disclosed in paragraph 88
support the argument that adding feet are more costly because they are more
complex. Reply Br. 2. We have reviewed paragraph 88, which discloses
how to mount feet with screws, nuts and bolts, or adhesive; we find that
there is no disclosure of cost therein. For purposes of this discussion, we
understand Appellant to argue that adding an additional material will add
some cost. However, Appellant has not quantified how much cost would be
added. Even assuming that adding an additional material would incur
additional cost, Appellants have not provided any persuasive reasoning as to
why this additional expense would discourage one skilled in the art from
seeking benefits provided by the modification. See In re Farrenkopf, 713
F.2d 714, 718 (Fed. Cir. 1983) (“We agree with the board that additional
expense associated with the addition of inhibitors would not discourage one
of ordinary skill in the art from seeking the convenience expected
therefrom.”). Accordingly, Appellants have provided no persuasive
reasoning or evidence as to why one skilled in art would have been
discouraged for economic reasons to add an additional material as taught by
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Lucky. As to strength, Appellant has adduced no evidence that adding
rubber feet will compromise the strength of the bucket.
Fourth, Appellant contends that adding feet would constitute a
substantial reconstruction and redesign of Garone. Appeal Br. 4 (citing
MPEP 2143.01(VI)). However, Appellant does not support this contention
beyond the arguments that we have already identified. At the end of the day,
every proposed modification by an examiner could be argued to be a
reconstruction or redesign of some degree, but Appellant has not persuaded
us that adding rubber feet would constitute a “substantial” redesign.
Fifth, Appellant makes an additional argument with respect to
dependent claim 13 (which we consider here as applicable to independent
claim 1), arguing that there is no evidence that Garone’s bucket was unstable
and in need of improvement because the Examiner construed Garone’s feet
22, 24 as “non-skid.” Appeal Br. 6 (citing Final Act. 8 ¶ 21). However, the
Examiner determines that “one of ordinary skill in the art would recognize
that anti-skid [feet], or prevention of shearing movement through friction
does not equate to overall stability by itself, and that just because the bucket
of Garone may not skid, does not mean that it is immune to wobbling or
rotational movement, which is understood as another component of overall
stability which is improved through the modification with Lucky.” Ans. 3.
The Examiner further determines that the rubber feet of Lucky would not
only serve to hold the bucket in place when set upon an uneven surface, but
also account for small surface height discrepancies during placement on the
uneven surface. Id. We agree with the Examiner’s findings. Indeed, Lucky
discloses feet with or without rubber, expresses a preference for rubber feet
in order to provide stability, and indicates that rubber feet are particularly
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advantageous on a boat. See Lucky ¶ 15. Thus, we determine that a person
of ordinary skill in the art would have been motivated to further improve the
stability of Garone’s bucket by using a rubber material. See In re Ethicon,
844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to
improve upon what is already generally known can provide the motivation to
optimize variables . . . .”) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”)).
Sixth, Appellant also states that its Specification at paragraph 86
teaches that separately applied feet have a useful advantage of being non-
skid. Reply Br. 2. However, Appellant does not argue unexpected results
for its non-skid feet.
We consider all of the above-identified relevant arguments and
evidence in reaching a determination as to obviousness. See Polaris Indus.,
Inc., 882 F.3d at 1069. Appellant has identified several relevant design
considerations in observing that Garone expresses a preference for a unitary
molded bucket and arguing that adding feet of a different material might
increase cost or adversely affect strength. However, Appellant has not
provided evidence to quantify these potential disadvantages and Appellant
does not argue that they would have prohibited a person of ordinary skill
from modifying Garone with the teaching of Lucky. On the other hand, the
Examiner’s reasoning that rubber feet would have added stability is
supported by the express teachings of Lucky. See Lucky ¶ 15.
After weighing the evidence, we conclude that Lucky’s express
teaching of added stability would have outweighed the potential
disadvantages of adding feet of a different material. Although a person of
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ordinary skill would have weighed the tradeoffs, e.g., of potential additional
cost, for various applications of a bucket, we determine that it would have
been obvious to add rubber feet to Garone’s bucket for additional stability,
e.g., for use on a boat that wobbles or on a surface of uneven height. See
Medichem, S.A., 437 F.3d at 1165; In re Urbanski, 809 F.3d 1237, 1243
(Fed. Cir. 2016) (“On this record, the Board properly found that one of
ordinary skill would have been motivated to pursue the desirable properties
taught by Wong, even at the expense of foregoing the benefit taught by
Gross”). Accordingly, we determine that claims 1, 2, 4–12, 16–18, 22, 23,
32, and 42 would have been obvious under § 103 over Garone and Lucky.
Claims 15, 19, 28, 33, and 43
Appellant’s arguments as to claims 15, 19, 28, 33, and 43 are similar
to those for independent claim 1, and we are unpersuaded for the same
reasons. Accordingly, we determine that claims 15, 19, 28, 33, and 43
would have been obvious under § 103 over Garone and Lucky.
Claims 13, 14, 29, 30 and 31
Appellant argues claims 13, 14, 29, 30, and 31, as a group. We select
claim 13 as representative, such that claims 14, 29, 30, and 31 stand or fall
therewith. Appellant’s arguments as to claim 13 are largely similar to those
for independent claim 1 (including the addition argument on motivation
already discussed above in the section on claim 1), and we are unpersuaded
for the same reasons. Accordingly, we determine that claims 13, 14, 29, 30,
and 31 would have been obvious under § 103 over Garone and Lucky.
Claim 44
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Appellant does not argue the patentability of claim 44 separately from
that of independent claim 1, and we determine that it would have been
obvious under § 103 over Garone and Lucky for the same reason.
2. Obviousness Over Garone, Lucky, and Carnesecca
Claims 3, 20, and 21 stand rejected under § 103 over Garone, Lucky,
and Carnesecca. Appellant’s arguments as to claims 3, 20, and 21 are
similar to those for independent claim 1, and we are unpersuaded for the
same reasons. Accordingly, we determine that claims 3, 20, and 21 would
have been obvious under § 103 over Garone, Lucky, and Carnesecca.
3. Obviousness Over Garone, Lucky, and Perkins
Claims 24–27 stand rejected under § 103 over Garone, Lucky, and
Perkins. Appellant’s arguments as to claims 24–27 are similar to those for
independent claim 1, and we are unpersuaded for the same reasons.
Accordingly, we determine that claims 24–27 would have been obvious
under § 103 over Garone, Lucky, and Perkins.
4. Obviousness Over Garone, Lucky, and Wilson
Claims 34–41 stand rejected under § 103 over Garone, Lucky, and
Wilson. Appellant’s arguments as to claims 34–41 are similar to those for
independent claim 1, and we are unpersuaded for the same reasons.
Accordingly, we determine that claims 34–41 would have been obvious
under § 103 over Garone, Lucky, and Wilson.

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CONCLUSION
In summary:

Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4–19, 22,
23, 28–33,
42–44
103 Garone, Lucky 1, 2, 4–19,
22, 23, 28–
33, 42–44

3, 20, 21 103 Garone, Lucky,
Carnesecca
3, 20, 21
24–27 103 Garone, Lucky,
Perkins
24–27
34–41 103 Garone, Lucky,
Wilson
34–41
Overall
Outcome
1–44

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)(1)(iv).

AFFIRMED