REV AMBULANCE GROUP ORLANDO, INC.Download PDFPatent Trials and Appeals BoardDec 30, 20202020002700 (P.T.A.B. Dec. 30, 2020) Copy Citation 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. 14/531,047 11/03/2014 Scott L. Barnes 212411-9032-US03 1359 23510 7590 12/30/2020 MICHAEL BEST & FRIEDRICH LLP (Mad) 790 N WATER ST SUITE 2500 Milwaukee, WI 53202 EXAMINER SHAIKH, MERAJ A ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 12/30/2020 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): madipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SCOTT L. BARNES, HERSCHEL W. DAVIS JR., MATTHEW W. GRAFTON, and ROBERT L. COLLINS ____________ Appeal 2020-002700 Application 14/531,047 Technology Center 3700 ____________ Before PHILLIP J. KAUFFMAN, ANNETTE R. REIMERS, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 13–17 and 20–25. Final Act. 2. The Examiner has withdrawn the final rejection of claims 1–7 and 7–12 (Ans. 3) and Appellant 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references the Specification (“Spec.,” filed Nov. 3, 2014), Information Disclosure Statement (“IDS,” filed Feb. 18, 2015), Final Office Action (“Final Act.,” mailed Dec. 13, 2018), Appeal Brief (“Appeal Br.,” filed Aug. 9, 2019), Answer (“Ans.,” mailed Dec. 23, 2019), and Reply Brief (“Reply Br.,” filed Feb. 20, 2020). Appellant identifies REV Ambulance Group Orlando, Inc., as the real party in interest. Appeal Br. 2. Appeal 2020-002700 Application 14/531,047 2 has canceled claims 4–6, 18, and 19 (Appeal Br. 11, 13). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED INVENTON Appellant’s invention concerns “external automotive condenser[s] and light assemblies for emergency vehicles.” Spec. ¶ 2. Claims 13 and 21 are the independent claims on appeal. Claim 13, reproduced below with bracketed notations added, is representative of the claimed subject matter: 13. An external automotive air-conditioning condenser comprising: [(a)] a condenser housing having a top portion defining at least one top opening and a bottom portion defining at least one bottom opening, [(b)] wherein each of said top opening and said bottom opening is configured to permit air to flow substantially vertically through said external automotive air- conditioning condenser, [(c)] wherein said condenser housing includes a substantially solid front face extending from the top portion to the bottom portion so as to permit at least one warning light to be affixed thereto, and wherein said condenser housing is configured to face a direction of travel of the vehicle, [(d)] wherein said condenser housing includes a right face extending rearward from the front face and forming an obtuse interior angle with respect to the front face, wherein said condenser housing includes a left face extending rearward from the front face and forming an obtuse interior angle with respect to the front face; and [(e)] at least one warning light affixed to an exterior of each of the front face, the right face, and the left face. Appeal 2020-002700 Application 14/531,047 3 REJECTIONS2 Claims 13, 14, 16, 17, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over “NPL-LFA1”3 “NPL2,”4 Takahashi (US 6,374,626 B1, iss. Apr. 23, 2002), Collins (US Des. 381,953, iss. Aug. 5, 1997), Datz (US 2009/0207612 A1, pub. Aug. 20, 2009), and Steele (US 2009/0211287 A1, pub. Aug. 27, 2009). Final Act. 2–8. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over NPL-LFA1, NPL2, Takahashi, Collins, Datz, Steele, and Waldschmidt (US 5,222,373, iss. June 29, 1993). Final Act. 8–9. Claims 21, 23, and 25 are rejected under 35 U.S.C. § 103(a) as unpatentable over NPL-LFA1, NPL2, and Takahashi. Final Act. 9–11. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over NPL-LFA1, NPL2, Takahashi, and Datz. Final Act. 11–12. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over NPL-LFA1, NPL2, Takahashi, and Waldschmidt. Final Act. 12–13. ANALYSIS We are persuaded by Appellant’s argument that the Examiner erred in rejecting the pending claims under 35 U.S.C. § 103(a), because the 2 The Examiner has withdrawn the rejection of claims 1–3 and 7–12 under 35 U.S.C. § 103(a). Ans. 3. 3 “NPL-LFA1” consists of three sheets of photographs arranged below typed picture dates of July 15, 2004, June 15, 2005, June 16, 2005, and December 13, 2006, respectively. 4 “NPL2” consists of a working copy of three technical drawings, bearing the date March 3, 2005, and marked “EXCELLANCE, INC. CONFIDENTIAL PROPRIETARY.” Appeal 2020-002700 Application 14/531,047 4 Examiner has not established that NPL-LFAI is prior art. Appeal Br. 6–8; Reply Br. 2–3. The Examiner finds that NPL-LFA1 is admitted prior art, because Appellant submitted it to the USPTO in an Information Disclosure Statement dated February 18, 2017. Ans. 4 (citing IDS5 3). In particular, the Examiner maintains that because Appellant provided NPL-LFA1 and its availability dates to the USPTO, Appellant has the burden of proof to prove that the dates are inaccurate or that NPL was not publicly available on the provided dates. Id. We disagree. The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) makes clear that the “[m]ere listing of a reference in an information disclosure statement is not taken as an admission that the reference is prior art against the claims.” MPEP § 2129(IV). Here, Appellant indicates that a third party provided the photographs and typed dates contained in NPL-LFA1 to Appellant. Reply Br. 2; Appeal Br. 7; IDS 3. Appellant submitted the photographs and the typed dates to the USPTO to comply with Appellant’s duty of candor and good faith. Reply Br. 2; Appeal Br. 7. However, Appellant has been unable to verify the accuracy or reliability of the dates. Id. To support the finding that NPL-LFA1 is admitted prior art, the Examiner turns to NPL2. In particular the Examiner contends that NPL2 consists of “[d]esign drawings from the manufacturer of the product of NPL- 5 The Information Disclosure Statement lacks page numbers. We designate the page that includes a first citation to Sunday (US 2,263,476, iss. Nov. 18, 1941) as the first page, and number the remaining pages consecutively thereafter. Appeal 2020-002700 Application 14/531,047 5 LFA1.” Final Act. 2. However, pointing to structural differences between the structures shown in NPL-LFA1 and NPL2, Appellant argues that the Examiner erred in finding that NPL2 corroborates NPL-LFA1 as admitted prior art. Appeal Br. 7–8. Appellant’s argument is persuasive. NPL2 shows a drawing of an emergency vehicle having warning lights placed around the condenser, rather than on the condenser housing as depicted in NPL-LFA1. Id. See NPL26 1 (depicting an emergency vehicle with lights placed above a condenser housing, but not on an exterior face of the housing). This arrangement is similar to the prior art described in Appellant’s Specification with reference to Figure 1 and distinguishes from NPL-LFA1. See Spec. ¶ 23 (describing that prior art external condensers are often mounted above the cab and, thus, prevent the use of warning lights at that location), Fig. 1. Here, the Examiner does not identify any section of pre-AIA 35 U.S.C. § 102 that justifies treating NPL-LFA1 as prior art. See MPEP 2141.01(I) (citing Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987) (“Before answering Graham’s ‘content’ inquiry, it must be known whether a patent or publication is in the prior art under 35 U.S.C. § 102.”)).7 The role of the Patent Trial and Appeal Board is to review adverse decisions of Examiners. 35 U.S.C. § 6(b). Although the Board has authority to enter new grounds of rejection in appropriate cases (37 C.F.R. § 41.50(b)), the Board typically does not attempt to establish, independently of 6 NPL2 lacks page numbers. We designate the page that includes a front view of an emergency vehicle as the first page, and number the remaining pages consecutively thereafter. 7 Graham v. John Deere Co., 383 U.S. 1 (1966). Appeal 2020-002700 Application 14/531,047 6 the Examiner, a factual underpinning on which to conclude that the subject matter of a claim would have been obvious. In particular, the Board does not engage independently in the fact-finding necessary to establish that disputed references are prior art. Because NPL-LFA1 is the Examiner’s primary reference for each of the grounds of rejection entered against the appealed claims and the Examiner has not established that NPL-LFA1 is prior art, we do not sustain the rejections of the claims under 35 U.S.C. § 103(a). CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis/References Affirmed Reversed 13, 14, 16, 17, 20 103(a) NPL-LFA1, NPL2, Takahashi, Collins, Datz, Steele 13, 14, 16, 17, 20 15 103(a) NPL-LFA1, NPL2, Takahashi, Collins, Datz, Steele, Waldschmidt 15 21, 23, 25 103(a) NPL-LFA1, NPL2, Takahashi 21, 23, 25 22 103(a) NPL-LFA1, NPL2, Takahashi, Datz 22 24 103(a) NPL-LFA1, NPL2, Takahashi, Waldschmidt 24 Overall Outcome 13–17, 20–25 REVERSED Copy with citationCopy as parenthetical citation