Free Brief in Opposition to Motion - District Court of Colorado - Colorado

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1 2 [email protected] Telephone: 571-272-4683 Paper 56 Entered: 11 March 2008

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ GLEN AXELROD and WALTER LEE, Junior Party (Application 09/914,047), v. SCOTT PIVONKA and JOHN TOTTLEBEN Senior Party (Patent 6,408,797 B2). ____________________ Patent Interference 105, 507 JL Technology Center 3600 ____________________

Before FRED E. McKELVEY, Senior Administrative Patent Judge, and JAMESON LEE and JAMES T. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge MEMORANDUM OPINION and ORDER 3 4 5 6

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 A. Introduction The interference is before a motions panel for consideration of Pivonka's response (Paper 53) and Axelrod's reply (Paper 54) addressing the Board's obviousness analysis (Paper 52) with respect to the subject matter of involved Pivonka claims 1-9. The issue before us is whether Pivonka has shown cause why a judgment should not be entered holding involved Pivonka claims 1-9 to be unpatentable under 35 U.S.C. § 103(a). Upon consideration of the record and Pivonka's Response, we hold that Pivonka has not shown cause why claims 1-9 should not be held unpatentable under § 103. B. Facts The following findings of fact are supported by a preponderance of the evidence. To the extent that a finding of fact is a conclusion of law, it may be treated as such. Findings of fact set forth in the Board's previous Memorandum Opinion and Order (Paper 52) are incorporated here also. Additional findings, as necessary, may appear in the Discussion portion of the opinion. As set forth in the Memorandum Opinion and Order (Paper 52), we made an initial conclusion that Pivonka's collapsible pet carrier, as claimed in U.S. Patent No. 6,408,797 B2, would have been obvious over the prior art, including Beard, Heath and Monetti. We found that Beard describes a foldable shipping container for use in transporting small animals by air. Paper 52, p. 9. We also found that when folded, the Beard structure has a relatively small dimension and is characterized by its light weight and compactness, requiring little cargo space when empty. Id. p. 10. The Beard housing structure, when expanded, has a shape that is conducive to stacking and allowing access to pets while stacked. See Beard Fig. 1. 2

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 We found that the pet containers described by Beard and Pivonka are used for essentially the same purpose, can be collapsed from a first position to a second position, and employ the same mechanical method of collapse. Id. p. 17. We determined that the fundamental difference between Beard and Pivonka relates to the shape of the device when viewed from an end (i.e., the end with the opening). While the Beard device is square or rectangular, the Pivonka device has a "barn-like" shape. Paper 52, p. 10 (comparing Beard Fig. 1 with Pivonka Fig. 1). We also found that Beard and Pivonka differ in the angles of the second positions. The second Pivonka position involves an angle of greater than 180 degrees, whereas the Beard second position involves an angle of 180 degrees. We determined that Pivonka's angle results from its "barn-like" shape. Id. pp. 17-18. We found that animal containers with "barn-like" shapes were known and described by both Heath and Monetti. Paper 52, p. 10. Heath described a collapsible, disposable litter box, having a "barn-like" shape and a roof structure characterized by two sloping sides separated by a flat top. Id. (citing Heath Fig. 1). Similarly, Monetti described a collapsible pet house structure having a barn-like shape. We determined that Heath and Monetti did not describe a roof panel extending between two walls and hingedly connected to the walls as described by Pivonka. Id. pp. 12-13. We also determined that Heath and Monetti cannot be converted from what Pivonka calls a first position to a second position. Id. p. 13. We also found that Axelrod's witness, Dr. Sam Shina, appropriately identified relevant factors for consideration when assessing the level of skill in the art. Dr. Shina stated that solutions to problems in the pet container art involve "basic mechanical considerations regarding walls, panels, and hinges and the stability of a given configuration." Ex. 2017, ¶ 14. Dr. Shina 3

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 further stated that the sophistication of the technology at issue involves basic mechanical principles in the possession of individuals having a basic knowledge of the relative movement of parts and hinges. Id. ¶ 16. Dr. Shina testified that a person of ordinary skill in the art would have experience and training in moving panels and hinges, made of different materials including plastic, cardboard, metal, etc. Id. ¶ 17. In a second affidavit, Dr. Shina further testified "that one of ordinary skill in the art would have considered an ordinary task to incorporate the barn-like shape roof of Heath or Monetti into Beard." Ex. 2018, p. 2. Dr. Shina confirmed that this combination amounts to "nothing more than the use of basic mechanical principles regarding wall, panels and hinges and readily applying such principles to achieve the barn-like shape." Id. p. 3. Additionally, Dr. Shina determined that "one of ordinary skill in the art would understand that as the barn-like shape was well-known ... the load paths, functionality and cooperation of the panels that form the Pivonka device would also have been known." Id. Dr. Shina also observed that one of ordinary skill in the art would conclude from a comparison of Pivonka and Beard that the mechanical method of collapse is the same in each device. Id. p. 6. C. Discussion In the Memorandum Opinion and Order (Paper 52), we presented a prima facie case of obviousness regarding Pivonka claims 1-9 and ordered Pivonka to show cause why judgment should not be entered against it. Subsequently, Pivonka submitted a response seeking to overcome the obviousness determination and show cause order by presenting arguments in rebuttal. On rebuttal, arguments of counsel cannot take the place of factually supported objective evidence. In re Huang, 100 F.3d 135, 139-40 4

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 (Fed. Cir. 1996). The burden of proof on an issue of patentability is a preponderance of the evidence. Bruning v. Hirose, 161 F.3d 681, 685 (Fed. Cir. 1998). Pivonka responds to the obviousness analysis by first challenging our characterization of the Pivonka invention as having a "barn-like" shape. Paper 53, p. 4. Pivonka asserts that this description is a "false categorization of the shape" of the invention. Id. This response is not persuasive. The response is not supported by the record or any persuasive argument by Pivonka. Pivonka has not provided any discussion as to how this characterization is inaccurate. Moreover, it appears that Pivonka has failed to appreciate that the "barn-like" language is used to distinguish the general Pivonka shape from other prior art shapes. Nor has Pivonka offered an alternate characterization for the shape of its invention. Rather, Pivonka only asserts that it was not an object of the invention to achieve a structure having a "barn-like" shape, and that "the design of a collapsible `barn-like' shape may be within the skill of the art." Paper 53, pp. 4 and 13. Pivonka's suggestion that its structure does not have a barn-like shape, without more, carries little, if any, weight with respect to rebutting our obviousness analysis. Next, Pivonka argues that the claimed invention is nonobvious because none of the prior art references, individually, provides a structure that "move[s] from a first position where the wall panels 30 are an acute angle relative to one another to a second position, where the wall panels 30 are at an angle greater than 180 relative to one another." Id. pp. 4-5. Pivonka urges that this limitation provides the "structural rigidity, structural efficiency, and ease of operation" exhibited by the invention. Id. p. 4. Pivonka further asserts that the folding of the wall panels "more than 180 5

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 degrees achieves a toggle effect that prevent[s] buckling of the walls back down into the folded, acute angle, position." Id. Pivonka urges that this is a "result that is not contemplated or achievable with the prior art." Paper 53, p. 6. Finally, Pivonka asserts that achieving this "structure and function" was not within the skill of the art. Id. p. 13. We are not persuaded by the Pivonka attempt to establish nonobviousness by separately arguing the differences between individual prior art and the claimed invention. A prima facie case of obviousness cannot be overcome by attacking references individually where the obviousness determination is based upon the teachings of a combination of references. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The obviousness analysis is based on the combination of teachings in the prior art, including teachings in Beard, Heath and Monetti. The combined teachings describe the limitations of the claimed invention. The test for obviousness is not what these references individually teach or fail to teach. Rather, the test is what the combined teachings of these cited references would have suggested to one ordinarily skilled in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Nor are we persuaded by the assertion of Pivonka's counsel that the "structure and function" of the Pivonka invention would not have been obvious to a person of ordinary skill in the art at the time of the invention. Pivonka has not presented any persuasive arguments or evidence to support this position. Specifically, Pivonka has not submitted any evidence to contradict the declaration testimony of Dr. Sammy Shina, a witness for Axelrod. See Exs. 2017, 2018. Such an assertion, without more, carries little, if any, weight toward rebutting a prima facie case of obviousness

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 /ss/ Fred E. McKelvey FRED E. McKELVEY Senior Administrative Patent Judge /ss/ Jameson Lee JAMESON LEE Administrative Patent Judge /ss/ James T. Moore JAMES T. MOORE Administrative Patent Judge ) ) ) ) BOARD OF ) PATENT ) APPEALS ) AND ) INTERFERENCES ) ) ) based upon a reasonable analysis of how one skilled in the art who reviewed the combined references would yield the claimed invention. Upon consideration of the evidence and arguments, the evidence of nonobviousness does not outweigh the evidence of obviousness. Accordingly, we sustain our initial obviousness determination and find that Pivonka claims 1-9 are unpatentable under 35 U.S.C. § 103(a). Additionally, as previously conceded by Axelrod, the unpatentability of Pivonka claims 1-9 renders the involved claims of Axelrod unpatentable. Therefore, the interference is terminated. D. Order Upon consideration of the record, and for the reasons given, it is ORDERED that involved claims 1-9 of Pivonka U.S. Patent 6,408,797 B2 are unpatentable under 35 U.S.C. § 103. FURTHER ORDERED that the involved claims 16-18 of Axelrod application 09/914,047 are unpatentable under 35 U.S.C. § 103.

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 cc (via electronic mail): Counsel for AXELROD: Steven J. Grossman, Esq. GROSSMAN, TUCKER, PERREAULT & PFLEGER 55 South Commercial Street Manchester, NH 03031 Tel: 603-668-6560 Fax: 603-668-2970 Email: [email protected] Email: [email protected]

Counsel for PIVONKA: Ramon L. Pizarro, Esq. 3515 South Tamarac Drive Suite 200 Denver, CO 80237 Tel: 303-779-9551 Direct: 303-785-2819 Fax: 303-689-9627 Email: [email protected]

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