Ex Parte Mann

Patent Trial and Appeal Board

Dec 20, 2018

13998911 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/998,911 12/20/2013
27794 7590 12/20/2018
E. ALAN UEBLER, ESQ.
LINDELL SQUARE, SUITE 4
1601 MILLTOWN ROAD
WILMINGTON, DE 19808
FIRST NAMED INVENTOR
James W. Mann
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.
2673 (Div) 1064
EXAMINER
BATTISTI, DEREK J
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
12/20/2018 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 JAMES W. MANN
Appeal2018-004338
Application 13/998,911
Technology Center 3700
Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Decision rejecting claims 1, 2, 7-12, 17-25, 33, and 42-
47. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION in accordance with 37 C.F.R. § 41.50(b).
Appeal2018-004338
Application 13/998,911
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim, with claims 2, 7-12, 17-25, 33,
and 42--4 7 depending therefrom. Claim 1 is reproduced below:
1. Storage unit and mounting apparatus removably
attachable to a motorcycle, the apparatus comprising:
(a) a storage unit, and
(b) a single, elongate cantilevered support member having
a proximal end and a distal end, which proximal and distal ends
are separated by the length of said elongate support member, said
support member being removably and irrotationally attachable
solely at its proximal end to said motorcycle, said support
member projecting outwardly from said motorcycle and
extending into space the distance from said proximal end along
said length to said distal end, said support member supporting
upon attachment thereto,
( c) a removable and irrotational receiving member, said
receiving member having
( d) means for attaching said storage unit thereto, wherein
said receiving member and said storage unit, upon attachment
thereof, are supported and rendered completely spatially
irrotational solely by said single cantilevered support member.
REJECTIONS
1. Claim 33 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
2. Claims 1, 2, 17-25, and 42--47 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Mason (US Des. 413,769, issued Sept.
14, 1999), Bartholomae (US 5,813,646, issued Sept. 29, 1998), and
Trautman (US 2004/0104255 Al, published June 3, 2004).
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Application 13/998,911
3. Claims 7-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mason, Bartholomae, and Trautman, and Aron (US
7,278,560 B2, issued Oct. 9, 2007).
OPINION
Indefiniteness Rejection
Claim 33 depends from claim 1 and further recites that "[t]he
apparatus of claim 1 [is] attachable to said vehicle through a swivel mount."
The basis for the Examiner's indefiniteness rejection is that "[i]t is unclear
how the storage unit and receiving member are 'completely spatially
irrotational' when attached to a swivel mount." Final Act. 2.
Appellant responds by explaining that
appellant [previously] directed examiner to the specification at
p. 21 and Fig. 10, where the swivel mount limitation of
dependent claim 33 is fully explained, i.e., "The entire assembly
can be affixed, removably and lockably", "upon attachment
thereof' as required by claim 1, thereby rendering the assembly
irrotational and satisfying § 112.
Appeal Br. 19. Appellant additionally references 35 U.S.C. § 112, sixth
paragraph, but does not allege that claim 33 includes any means-plus-
function limitations. See id. (quoting In re Donaldson, 16 F.3d 1189 (Fed.
Cir. 1994) ( en bane)).
Appellant's general reference to past correspondence with the
Examiner and unexplained citation to In re Donaldson do not apprise us of
Examiner error. Appellant fails to explain why the claim language is not
indefinite as explained by the Examiner. Appellant addresses the specific
embodiment of the Specification from Figure 10, rather than addressing the
claim.
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Application 13/998,911
Claim 1 recites that the apparatus includes "a single, elongate
cantilevered support member ... irrotationally attachable solely at its
proximal end to said motorcycle." 1 That is, the "apparatus" of claim 1 is
attached to the "motorcycle" via the "support member," which is
"irrotational." The Examiner has sufficient basis to determine that claim 33
is indefinite based on the addition of the swivel mount recited in claim 33.
As explained above, Appellant fails to apprise us of error in that
determination.
Obviousness Rejections
The Examiner finds that Mason teaches the majority of the limitations
of claim 1, but "does not disclose a receiving member as claimed or a
motorcycle." Final Act. 3. The Examiner cites Bartholomae as
"disclos[ing] a removable and irrotational receiving member (25, 27), the
receiving member having means for attaching a storage unit thereto, wherein
the receiving member and the storage unit, upon attachment thereof' and
proposes
substitut[ing] the storage unit and rece1vmg member of
Bartho lomae for that of Mason's such that they are supported and
rendered completely spatially irrotational solely by the single
cantilevered support member in order to be able to remove the
storage unit and prevent any spillage that may occur if the storage
unit were to rotate.
Id. Appellant disputes the Examiner's rationale, noting the differences
between Mason's unitary beverage holder and the multi-piece storage unit
and mounting apparatus recited in claim 1. Appeal Br. 10-16. Appellant
contends that the Examiner's basis for modifying that structure is lacking,
1 It appears that the "vehicle" in claim 33 should be "motorcycle" for
antecedent basis with claim 1.
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Application 13/998,911
contending, for example, that the Examiner's rationale is based on
impermissible hindsight. Id. at 16-18. Appellant's contentions are
persuasive.
The Examiner's rationale is lacking. The basis for the proposed
modifications is not based on rational underpinnings. For example, Mason's
"storage unit" is already irrotational relative to the "cantilevered support" by
virtue of the unitary construction. We are apprised of no persuasive reason,
outside of impermissible hindsight, to modify that unitary structure to
include an intermediate "receiving member" that also provides irrotational
connection between the "storage unit" and the "cantilevered support."
Accordingly, the Examiner has failed to establish that claim 1, or claims 2,
17-25, and 42--47, which depend from claim 1, are unpatentable under 35
U.S.C. § 103(a).
New Ground
We exercise our authority to enter a new ground of rejection in
accordance with 37 C.F.R. § 4I.50(b). Specifically, we reject claim 1 under
35 U.S.C. § 102(b) as anticipated by Tomososki (US 5,038,983, issued Aug.
13, 1991) and under 35 U.S.C. § 103(a) as unpatentable over Tomososki and
La Roque (US 5,727,805, issued Mar. 17, 1998). Tomososki "relates to a
vehicle cargo carrier attachment and, more particularly, to an attachment
adapted to connect to a receiver-type trailer hitch." Tomososki 1 :5-8.
Figures 1-3 of Tomososki are reproduced below, with our annotations
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Application 13/998,911
indicating the portions corresponding to the various elements recited in
claim 1.
FIG.I
..... ,,,_
·1
; '.,_;.,_ .:.-; .. ;~ :,=~- ~: )':;',' ,:J.:.-t --- :
FIG.3
~
.... 11.· 35. 7 48 3'2
16-:--- 34
4G 36
Figure 1 is a perspective view of a cargo carrier; Figure 2 is a side view of
the cargo carrier; and Figure 3 is a rear view of a mounting plate for the
cargo carrier. Id. at 3 :25-3 6.
Tomososki's cargo box 14 corresponds to the recited "storage unit,"
sleeve 36 corresponds to the recited "cantilevered support member," bracket
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Application 13/998,911
assembly 16 corresponds to the "receiving member," and bolts 50 (with
corresponding nuts and washers, not shown but discussed in Tomososki
column 5, lines 43--45) correspond to the means for attaching. 2
The recitations of the apparatus being attachable to a motorcycle are
an intended use. We find that the cargo carrier of Tomososki is capable of
being attached to a motorcycle. The recited arrangement requires a bracket
( not recited in claim 1 ), such as Appellant's bracket 14, to mount the
apparatus to a motorcycle, just as Tomososki requires a bracket (hitch
receiver to mount its cargo carrier). The arrangement of Tomososki is
attachable to a motorcycle when such a bracket is mounted to the motorcycle
in the same manner that Appellant's apparatus is attachable to a motorcycle
when its bracket is first attached to that motorcycle.
T omososki states that its sleeve 3 6 is fixed in some manner to
elongate member 34, but does not require any particular type of fixation.
See Tomososki 5: 11-14 ( explaining that sleeve 3 6 is positioned over the first
end portion of the member, extending axially a short distance (e.g., 1 inch)
beyond the first end). Tomososki explains that "[t]he first end of the
member has a transversely aligned pair of holes 54 through the member and
sleeve 36 for receiving a pin 38." Id. at 5:24--26.
For the reasons set forth above, we find that Tomososki discloses each
limitation of claim 1.
Although Tomososki does not require permanent fixation between
member 34 and sleeve 36, it provides an example of permanent fixation,
2 We note the recited "means for attaching" invokes 35 U.S.C. § 112, sixth
paragraph. The structure in Tomososki is the same as that disclosed in
Appellant's Specification. See Spec. 13.
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Application 13/998,911
noting a welded connection. See id. at 5: 11-14. Nevertheless, we find that
La Roque teaches a "cantilevered support member" (hitch extension arm
90). Figure 2 of La Roque is reproduced below.
Figure 2 of La Roque is a perspective view of a hitch extension arm.
La Roque 3:58-59. It would have been obvious to use La Rogue's hitch
assembly (without end plate 110/ball mount bracket 130) with Tomososki's
sleeve 36 engaged with extension arm 90 to provide for adjustability when
mounting of Tomososki' s cargo carrier. Such an arm is removable and the
square shape secures against rotation.
That we only reject claim 1 does not necessarily mean that the
remaining dependent claims are patentable. Claim 27, for example, recites
that "said storage unit is independently lockable," and Tomososki explains
that "[t]he lid 18 [of its storage unit] is secured to the tub 15 in the closed
position by at least one latch 22" and "the latches are key-lockable for
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security." Tomososki 4:17-19. As another example, claim 33 further
recites that the "apparatus [is] attachable to said vehicle through a swivel
mount." As seen above, La Roque teaches a swivel mount 190 for
connection of its extension arm 90. We leave it to the Examiner's discretion
to determine the appropriate rejections for any of the dependent claims.
DECISION
We AFFIRM the Examiner's decision to reject claim 33 under 35
U.S.C. § 112, second paragraph, as indefinite.
We REVERSE the Examiner's decision to reject claims 1, 2, 7-12,
17-25, and 42--47 under 35 U.S.C. § 103(a).
We enter a NEW GROUND OF REJECTION for claim 1 on the basis
that claim 1 is unpatentable under 35 U.S.C. § 102(b) as anticipated by
Tomososki and unpatentable over Tomososki and La Roque under 35 U.S.C.
§ 103(a).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner.
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Application 13/998,911
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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