Ex Parte Dick

Patent Trial and Appeal Board

Mar 14, 2013

11619642 (P.T.A.B. Mar. 14, 2013)

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.
11/619,642 01/04/2007 Bernard L. Dick POPU.130076 7875
5251 7590 03/15/2013
SHOOK, HARDY & BACON LLP
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BLVD
KANSAS CITY, MO 64108-2613
EXAMINER
BOEHLER, ANNE MARIE M
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
03/15/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte BERNARD L. DICK
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Appeal 2010-011432
Application 11/619,642
Technology Center 3600
________________

Before BIBHU R. MOHANTY, MICHAEL W. KIM, and JAMES A.
TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011432
Application 11/619,642

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STATEMENT OF THE CASE1
Bernard L. Dick (Appellant) seeks our review under 35 U.S.C § 134
of the Examiner’s final decision rejecting claims 1-6 and 21-34. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Appellant’s claimed invention relates to a gooseneck trailer hitch
mechanism that allows a user to store the hitch ball in an inverted position.
Spec., para. [0003].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A gooseneck trailer hitch mechanism comprising:
a frame;
a housing coupled with the frame, the housing having an
opening therein;
a hitch member having a portion thereof which is
selectively slidably received within the opening in the housing
in an upright position and an inverted position, and wherein the
portion of the hitch member is cylindrical and includes an
annular groove in an outer surface thereof which entirely
circumscribes the portion; and
a pin member coupled with the housing for selectively
retaining the hitch member in the housing, wherein the pin
member is selectively movable between a first position, where a
portion of the pin member extends into the opening, and a
second position, where the pin does not extend into the
opening.

1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed Jul. 14, 2008) and Reply Brief (“Reply Br.,” filed Jun. 1, 2010), and the
Examiner’s Answer (“Ans.,” mailed Mar. 30, 2010).
Appeal 2010-011432
Application 11/619,642

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The Examiner relies upon the following evidence:
Morris US 4,889,356 Dec. 26, 1989
Allen US 5,104,138 Apr. 14, 1992
Marcy US 5,472,222 Dec. 5, 1995
Roberts US 6,695,338 B1 Feb. 24, 2004
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allen and Roberts.
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allen and Marcy.
Claims 21-34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allen, Marcy, and Morris.
FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
ANALYSIS
Obviousness over Allen and Roberts
Claims 1-6
We are not persuaded by Appellant’s argument that neither Allen nor
Roberts discloses the use of a selectively movable pin member. See App.
Br. 9. Allen teaches a selectively movable pin 36 with a handle 50 for
manual positioning by a user between engaged and disengaged positions.
See Ans. 6-7.
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Appellant further contends that Allen teaches away from inverting the
hitch assembly by utilizing a plug when the hitch assembly is removed (App.
Br. 9) and that Roberts teaches away from making a hitch rotatable (Reply
Br. 9). We find Appellant’s argument unconvincing because Appellant has
not shown that either Allen or Roberts criticizes, discredits, or otherwise
discourages the solution claimed in the application. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). (“The prior art's mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed in the ... application.”). The mere
disclosure of the use of a plug or non-rotatable hitch would not give the
ordinary artisan the impression that a rotatable, invertible hitch could not be
formulated.
We also find unconvincing Appellant’s assertion that the Examiner’s
combination of Allen and Roberts reflects impermissible hindsight. App.
Br. 10. The combination of the removable hitch of Allen with the invertible
hitch of Roberts yields precisely what would be predicted. See KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”) Appellant’s contention that the
references are not combinable because Allen does not disclose an invertible
hitch and Roberts does not disclose a rotatable hitch is not persuasive.
Appellant has not addressed the combination of prior art references as a
whole but simply argues the merits of Allen and Roberts individually. See
In re Keller, 642 F.2d 413, 425 (CCPA 1981)
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The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Appellant has not overcome the Examiner’s determination that one of
ordinary skill in the art would be motivated to combine features of Allen and
Roberts to arrive at the claimed invention to produce a hitch that may be
stored when not in use. See Ans. 3.

Obviousness over Allen and Marcy
Claims 1-6
With respect to the asserted combination of Allen and Marcy,
Appellant raises essentially the same issues addressed above with respect to
the asserted combination of Allen and Roberts. Allen teaches a selectively
movable pin member, and Appellant has not shown that Marcy teaches away
from making a hitch rotatable. Accordingly, we conclude that Appellant has
not overcome the Examiner’s determination that claims 1-6 are unpatentable
over Allen and Marcy for the same reasons discussed above with respect to
the combination of Allen and Roberts.
Obviousness over Allen, Marcy, and Morris
Claims 21-30
In addition to the issues raised with respect to Allen and Marcy,
addressed above, Appellant further argues that Morris does not disclose a
selectively movable pin member as claimed. As discussed above, Allen
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teaches a selectively movable pin. The Examiner also relies on Morris for
the disclosure of a pin (retainer screw 31) that extends radially relative to the
housing opening, as set forth in claim 21. Ans. 4.
We are also not persuaded by Appellant’s contention that the retainer
screw 31 of Morris functions differently than the present invention by
securing a ball to a post, and not securing an entire trailer hitch assembly
within a bed of a truck. See Reply Br. 13. Morris is not cited for this aspect;
a combination of Allen and Tracy are. Appellant has therefore not overcome
the Examiner’s determination that one of ordinary skill in the art would be
motivated to combine features of Allen, Marcy, and Morris to arrive at the
claimed invention to produce a hitch that may be stored when not in use and
to simplify the locking mechanism. See Ans. 3-5.
Claims 31-34
We are not persuaded by Appellant’s argument that the Examiner has
not identified the claimed element of a groove with a generally uniform
depth and width that is positioned generally equidistant from upper and
lower surfaces of the base portion of the hitch in the cited prior art. App. Br.
17. Allen Figures 2 and 5 disclose a groove having a generally uniform
depth and width. While the groove of Allen is concave, the depth remains
generally uniform, which is all that is required by the language of the claim.
Marcy Figures 5 and 6 further disclose an invertible hitch with a groove
positioned generally equidistant from upper and lower surfaces of the base
portion of the hitch. Accordingly, we find Appellant has not overcome the
Examiner’s determination that the claimed elements are disclosed in
combination by Allen, Marcy, and Morris.
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Secondary Considerations
We recognize that evidence of secondary considerations, such as that
presented by Appellant, must be considered en route to a determination of
obviousness or non-obviousness under 35 U.S.C. § 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing the evidence relied upon by the Examiner, any
other evidence of obviousness, and the objective evidence of non-
obviousness provided by Appellant. See In re Eli Lily & Co., 902 F.2d 943,
945 (Fed. Cir. 1990) (holding that “[a]fter a prima facie case of obviousness
has been made and rebuttal evidence submitted, all the evidence must be
considered anew.”)
Appellant provided the following evidence of secondary
considerations in rebuttal to the prima facie case of obviousness: (1)
Declaration of Bernard L. Dick discussing certain sales information, and (2)
copies of correspondence from Dennis Webster, Doreen and John Powers,
Jeff Gibson, and John Ruffalo touting the benefits of the claimed invertible
hitch.
Appellant provided figures comparing the percentage of sales by Pop
Up Industries of trailer hitches with and without the invertible feature of the
present application. The figures indicate that between March, 2003 and
April, 2005, the number of invertible hitches sold per month ranged from
11.68% to 201.90% of the number of all other hitches sold during that
month. Further, the correspondence provided by Appellant indicates that
customers have identified the rotatable feature of the hitch as a functional
benefit.
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The Examiner found that the declaration and correspondence was
insufficient to show commercial success because there was no indication of
the overall number of hitches sold with respect to the percentage of
increased sales for Pop Up Industries, and no information was provided on
sales relative to the overall market. Ans. 9. The Examiner further noted that
for sales figure provided, there was no linear progression in sales of the
invertible hitch, and no information on peripheral factors that may have
influenced the sales numbers, such as promotions and advertising. Ans. 9-
10. Based on the limited sales information from a single company and
correspondence provided by Appellant, we conclude that Appellant has not
demonstrated the commercial success of the claimed invention.
Moreover, asserting that what makes an invention commercially
successful is a claimed feature that is well known in the art fails to establish
a nexus because “the asserted commercial success of the product must be
due to the merits of the claimed invention beyond what was readily available
in the prior art.” J.T. Eaton & Co., Inc. v. Atl. Paste & Glue Co., 106 F.3d
1563, 1571 (Fed. Cir. 1997) citing to Richdel, Inc. v. Sunspool Corp., 714
F.2d 1573, 1580 (Fed. Cir. 1983) (claims held obvious despite purported
showing of commercial success when patentee failed to show that “such
commercial success as its marketed system enjoyed was due to anything
disclosed in the patent in suit which was not readily available in the prior
art.”) Since Allen and Morris both described a rotatable hitch, we find that
the declaration and correspondence provide little probative evidence that any
commercial success was directly attributed to the claimed invention.
Thus, we find that after reviewing all of the evidence before us, it is
our conclusion that, on balance, the evidence of non-obviousness fails to
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Application 11/619,642

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outweigh the evidence of obviousness and, accordingly, the subject matter of
independent claims 1, 21, and 31 would have been obvious to one of
ordinary skill in the art, within the meaning of 35 U.S.C. § 103, at the time
Appellant’s invention was made.
CONCLUSIONS OF LAW
We conclude that Appellant has not overcome the Examiner’s
rejection of claims 1-6 under 35 U.S.C. § 103(a) as unpatentable over Allen
and Roberts.
We further conclude that Appellant has not overcome the Examiner’s
rejection of claims 1-6 under 35 U.S.C. § 103(a) as unpatentable over Allen
and Marcy.
We further conclude that Appellant has not overcome the Examiner’s
rejection of claims 21-34 under 35 U.S.C. § 103(a) as unpatentable over
Allen, Marcy, and Morris.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-6 and
21-34.
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) (2011).
AFFIRMED

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