                      NOTE: This disposition is nonprecedential.


  United States Court of Appeals for the Federal Circuit
                                        2008-1413
                               (Interference No. 105,507)



                      SCOTT PIVONKA and JOHN TOTTLEBEN,

                                                    Appellants,


                                           v.


                        GLENN AXELROD and WALTER LEE,

                                                    Appellees.




      Ramon L. Pizarro, Attorney at Law, of Denver, Colorado, argued for appellants.

     Steven J. Grossman, Grossman Tucker Perreault & Pfleger, PLLC, of Manchester,
New Hampshire, argued for appellees. With him on the brief was Beth A. Filip.

Appealed from:     United States Patent and Trademark Office
                   Board of Patent Appeals and Interferences
                      NOTE: This disposition is nonprecedential.

 United States Court of Appeals for the Federal Circuit

                                       2008-1413
                              (Interference No. 105,507)



                      SCOTT PIVONKA and JOHN TOTTLEBEN,

                                                Appellants,

                                           v.

                        GLENN AXELROD and WALTER LEE,

                                                Appellees.


Appeal from the United States Patent and Trademark Office, Board of Patent Appeals
and Interferences.

                           __________________________

                           DECIDED: February 19, 2009
                           __________________________


Before MICHEL, Chief Judge, SCHALL and PROST, Circuit Judges.

PROST, Circuit Judge.

      Scott Pivonka and John Tottleben (collectively, “Pivonka”) appeal the March 11,

2008 decision of the United Sates Patent and Trademark Office, Board of Patent

Appeals and Interferences (“Board”) declaring claims 1-9 of Pivonka’s U.S. Patent No.

6,408,797 (“’797 patent”), entitled “Collapsible Pet Carrier,” unpatentable under 35

U.S.C. § 103. For the reasons set forth below, we affirm.
                                   I. BACKGROUND

       In April 2003, Glenn Axelrod and Walter Lee (collectively, “Axelrod”), the owners

of U.S. Application 09/914,047 (“’047 application”), requested that the Board declare an

interference with the ’797 patent. In his request for interference, Axelrod described a

chain of continuation applications leading to the ’047 application that, in Axelrod’s view,

positioned Axelrod as the senior party. On October 24, 2006, the Board declared an

interference. However, the Board determined that Axelrod incorrectly relied on two prior

applications to support his claim for seniority, and, without those two applications,

Pivonka was the senior party and Axelrod was the junior party for the purposes of the

interference.   Axelrod v. Pivonka, Interference No. 105,507, at 3 (B.P.A.I. Oct. 24,

2006). Because Axelrod believed he was the senior party, he did not submit prima facie

evidence of priority with his request for interference, as required of junior parties by 41

C.F.R. § 41.202(d). However, the Board granted Axelrod twenty days from the date of

its order to submit evidence satisfying § 41.202(d) because “it was not wholly

unreasonable for Axelrod to think that it would be senior party when and if the

interference is declared,” and because the declared count differed from the count

proposed by Axelrod. Id. at 3-4. Axelrod submitted evidence during the allotted time,

which the Board accepted as sufficient under § 41.202(d).            Axelrod v. Pivonka,

Interference No. 105,507, at 1 n.1 (B.P.A.I. Dec. 21, 2006).

       During the interference, Axelrod filed a motion asserting that claims 1-2 and 4-9

of the ’797 patent are anticipated under 35 U.S.C. § 102(b) by U.S. Patent No.

4,940,016 (“Heath”), and claim 3 is obvious under 35 U.S.C. § 103 in light of Heath and

U.S. Patent No. 3,195,506 (“Beard”). The Board denied Axelrod’s motion, but set forth




2008-1413                                   2
its own view that claims 1-9 of the ’797 patent are obvious and ordered Pivonka to file a

response showing why a judgment of invalidity should not be entered against claims 1-

9.      Axelrod v. Pivonka, Interference No. 105,507 (B.P.A.I. Aug. 30, 2007) (“First

Obviousness Opinion”).        After considering Pivonka’s response to the Board’s

obviousness determination and Axlerod’s reply, the Board declared the claims invalid.

Axelrod v. Pivonka, Interference No. 105,507 (B.P.A.I. Mar. 11, 2008).

         Pivonka timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

                                    II. DISCUSSION

         Pivonka alleges that the Board committed two errors. First, Pivonka argues that

the Board abused its discretion by permitting the interference to proceed in the first

instance. Specifically, Pivonka takes issue with the Board’s decision to give Axelrod a

second chance to submit evidence to show priority under 37 C.F.R. § 41.202(d), and its

decision that Axelrod’s submissions were sufficient to create a prima facie case of

priority under 37 C.F.R. § 41.202(e). Second, Pivonka argues that the Board did not

properly apply the law during its obviousness analysis. We address each argument in

turn.

                               A. 37 C.F.R. § 41.202(d)-(e)

         We conclude that Pivonka waived his objections to the Board’s decision to

proceed with the interference. With respect to the Board’s discretionary decision to give

Axelrod an additional opportunity to submit evidence of priority, Pivonka does not cite to

anything in the record that can be construed as an objection. Instead, Pivonka simply

argues that he “was not entitled to present its position” at that time. Appellant’s Reply

Br. 1. However, Axelrod pointed out at oral argument that Pivonka could have filed a




2008-1413                                   3
“miscellaneous motion” as provided for by 37 C.F.R. § 41.121(a)(3). Because Pivonka

did not present us with any reason why he could not have filed such a motion, we

conclude that this argument was waived. See In re Watts, 354 F.3d 1362, 1367 (Fed.

Cir. 2004) (“[I]t is important that the applicant challenging a decision not be permitted to

raise arguments on appeal that were not presented to the Board. We have frequently

declined to hear arguments that the applicant failed to present to the Board.”).

       Similarly, we find that Pivonka waived his objection to the Board’s decision that

the evidence submitted by Axelrod was sufficient to satisfy 37 C.F.R. § 41.202(e).

Pivonka cites part of his filing of a list of intended motions as the sole evidence that he

objected to the Board’s finding on this issue. However, the excerpt of the filing that

Pivonka relies on did not purport to object to the Board’s determination of sufficiency

under § 41.202(e). Instead, it alleged that the disclosures in Axelrod’s applications did

not satisfy 35 U.S.C. § 112 with respect to the count because they did not teach

hingedly attached endwalls. In the excerpt, Pivonka supported this argument with an

assertion that the photographs included in Axelrod’s submission did not show a door

that was hingedly attached to the floor panel. J.A. 176-77. This excerpt makes no

reference to either the Board’s § 41.202(e) determination or the bulk of the evidence

Axelrod submitted in response to the order to show cause, which included affidavits

from Axelrod himself, one of the employee’s of Axelrod’s company, and an architect

hired by Axelrod to make drawings of the pet carrier, as well as drawings of the pet

carrier made by the architect.     We cannot reasonably construe this excerpt as an

objection to the Board’s finding that the interference could proceed because Axelrod’s




2008-1413                                    4
evidence was sufficient under § 41.202(e).      Accordingly, we conclude that Pivonka

waived this argument by failing to raise it below. See Watts, 354 F.3d at 1367.

                      B. The Board’s Obviousness Determination

      On review of the Board’s obviousness determination, we review the Board’s

factual determinations for substantial evidence, and its legal conclusion de novo. In re

Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).

      Pivonka alleges three errors in the Board’s obviousness determination: (1) the

Board improperly defined the invention as having a “barn-like structure”; (2) the Board

failed to consider each of the nine claims of the ’797 patent individually; and (3) the

Board did not appreciate the structural differences and functional benefits provided by

the claimed invention as compared to the prior art.

      Claim 1 of the ’797 patent, with emphasis added, recites:

      A collapsible pet housing structure comprising:

      a floor panel having a pair of parallel sides and a pair of ends extending
      between the sides;

      a pair of generally opposing walls hingedly attached to the parallel sides of
      said floor panel, each wall comprising at least two generally planar wall
      panels connected to one another by a hinge connection, each of the wall
      panels having an external surface and an internal surface, the internal
      surface of the wall panels of one wall facing the internal surface of the wall
      panels of the opposing wall, the hinged connection between the wall
      panels allowing the wall panels to cooperate with one another to retain the
      external surfaces of the wall panels at an angle greater than 180 degrees
      relative to one another, so that the hinged connection allows movement of
      the wall panels from:

             a first position where the external surfaces of the wall panels are at
             an acute angle relative to one another to

             a second position where the external surfaces of the wall panels
             are retained at an angle greater than 180 degrees relative to one
             another;



2008-1413                                   5
      a roof panel, the roof panel being of a weight and extending between the
      walls and being hingedly connected to said walls; and

      a pair of endwalls, each endwall being hingedly attached to said floor
      panel at opposing ends of the floor panel, the endwalls pivoting to a
      generally normal position with said floor panel to cooperate with said wall
      panels when said wall panels are in said second position to retain the
      external surfaces of the wall panels at the second position relative to one
      another, so that the roof panel is supported by said endwalls when said
      wall panels are at the second position.

      We find no reversible error in the Board’s use of the term “barn-like shape” to

distinguish Pivonka’s invention from the rectangular collapsible pet carrier disclosed in

Beard. Pivonka is correct that the Board must analyze the claim language, not its own

interpretation of what the claim covers. We conclude, however, that the Board simply

used the term “barn-like shape” to distinguish between collapsible pet carriers with

external wall surfaces at an angle of exactly 180 degrees relative to each other, such as

the one in Beard, and those with external wall surfaces at an angle greater than 180

degrees relative to each other, as described in claim 1. We discern no harm in the

Board’s use of this shorthand.

      We also conclude that, before the Board, Pivonka waived any argument that

claims 2-9 do not stand or fall with claim 1. In his response to the first obviousness

opinion, Pivonka did not make any arguments that any of claims 2-9 contained

additional limitations that rendered those claims nonobvious. Instead, Pivonka focused

his entire response on the Board’s allegedly improper use of the term “barn-like shape”

and the prior art’s failure to disclose a container that collapses from a second position

where the wall panels are at an angle greater than 180 degrees relative to each other to

a first position where the wall panels are at an acute angle relative to each other. J.A.




2008-1413                                  6
184-94.   Therefore, Pivonka cannot now argue that claims 2-9 contained additional

limitations that warrant a conclusion of nonobviousness. See Watts, 354 F.3d at 1367.

       Finally, we agree with the Board that claims 1-9 are obvious in light of Heath,

Beard, and U.S. Patent No. 5,465,686 (“Monetti”). The first affidavit of Axelrod’s expert,

Dr. Shina, provides substantial evidence to support the Board’s finding that ordinary skill

in the pertinent art consists of knowledge of basic mechanical principles, including

knowledge of the relative movement of parts and hinges, and “experience and training

in moving panels and hinges, made of different materials.” First Obviousness Opinion

at 14; see also J.A. 237-38. The prior art disclosed a pet container that collapsed from

a position where the side walls were fixed at an angle of exactly 180 degrees relative to

one another. See Beard, figs.1, 3. It also disclosed pet containers that, while they did

not collapse in the same manner as Pivonka’s invention, had side walls that were fixed

at an angle greater than 180 degrees relative to each other. See Monetti, fig.1; see also

Heath, fig.1. Dr. Shina’s second affidavit, which was unrebutted, stated that one of

ordinary skill in the art would have recognized the benefits of a container that can

maintain a position where the side walls are at an angle greater than 180 degree

relative to each other. J.A. 317-18. Specifically, Dr. Shina’s second affidavit described

why a person of ordinary skill in the art would recognize that such a container would, as

compared to Beard, be more resistant to buckling when forces were applied to the side

walls. J.A. 320-21. Dr. Shina’s affidavit also stated that one of ordinary skill in the art

would have recognized that a collapsible container with side walls at an angle greater

than 180 degrees relative to each other would be more stable because the weight of the

roof would help to hold the side walls in place in the second position and the sidewalls




2008-1413                                   7
must, prior to collapse, pass through a position in which they are at an angle of exactly

180 degrees relative to each other. J.A. 323. Finally, Dr. Shina’s unrebutted affidavit

stated that a person of ordinary skill in the art would have had no difficulty building a

container that could collapse in the manner shown in Beard from a position in which the

external walls were, as in Heath and Monetti, at an angle greater than 180 degrees

relative to each other to a position where those walls formed an acute angle, as in the

collapsed Beard container. J.A. 317-18.

      Under KSR International Co. v. Teleflex, Inc. “[t]he combination of familiar

elements according to known methods is likely to be obvious when it does no more than

yield predictable results.”   550 U.S. 398, 1739 (2007).       According to Dr. Shina’s

unrebutted affidavit, both the structural benefits and the way in which to build the

container claimed by Pivonka were readily apparent to a person of ordinary skill in the

art. Accordingly, we find no error in the Board’s conclusion that claims 1-9 are obvious.

                                   III. CONCLUSION

      For the foregoing reasons, we affirm the Board’s determination that claims 1-9 of

the ’797 patent are unpatentable under 35 U.S.C. § 103.




2008-1413                                   8
