REV AMBULANCE GROUP ORLANDO, INC.

Patent Trials and Appeals Board

Dec 30, 2020

2020002700 (P.T.A.B. Dec. 30, 2020)

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withdrawn the final rejection of claims 1–7 and 7–12 (Ans. 3) and Appellant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.
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Application 14/531,047

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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

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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.”

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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.
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Application 14/531,047

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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).
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Application 14/531,047

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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