Ex Parte Carothers et al

Patent Trial and Appeal Board

Sep 27, 2017

12911653 (P.T.A.B. Sep. 27, 2017)

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.
YAK 3A8CIP 1631
EXAMINER
WAGGENSPACK, ADAM J
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
12/911,653 10/25/2010
7590 09/28/2017
Pierre C. Van Rysselberghe
Kolisch Hartwell, P.C.
200 Pacific Building
520 S.W. Yamhill Street
Portland, OR 97204
Jason Carothers
09/28/2017 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 JASON CAROTHERS, JEFF CASTRO, and
DOMINIC D’ANDREA
Appeal 2016-006697
Application 12/911,653
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006697
Application 12/911,653
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—11 and 15—19. Claims 12—14 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a vehicle top carrier. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A rack system for carrying cargo on top of a
vehicle comprising
a pair of crossbars, each crossbar having a
pair of coupling devices configured to secure
the crossbar on top of a vehicle in a
perpendicular orientation relative to the
vehicle’s direction of travel,
a cargo box having a long axis and including
a lid and a bottom, the bottom having clamps for
securing the bottom to the crossbars, wherein
the cargo box has a first side and a second side
substantially parallel to the long axis, the lid
being hinged to the bottom along the first side,
the second side of the cargo box having a latch
assembly including plural latch devices spaced
apart from each other along the second side, a
handle, and a bar member connecting and
coordinating operation of the latch devices
under manipulable control via the handle, the lid
having an inner surface, and
plural ribs, each rib having a long axis
perpendicular to the long axis of the cargo box,
and being chemically bonded to the inner
surface of the lid to form a continuous tubular
support structure.
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Appeal 2016-006697
Application 12/911,653
REFERENCES
Fulton
Black
Settelmayer
van Beme
US 3,208,186
US 5,478,015
US 2004/0256427 A1
Des. 334,662
Sept. 28, 1965
Dec. 26, 1995
Dec. 23, 2004
Apr. 13, 1993
REJECTIONS
Claims 1—11 and 15—19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Settelmayer, Fulton, and Black. Non-Final Act. 2—3.
Claims 6 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Settelmayer, Fulton, Black, and van Beme. Id. at 9.
ANALYSIS
Claims 1—11 and 15—19—Unpatentable over Settelmayer, Fulton, and Black
Appellants argue claims 1—11 and 15—19 as a group. Br. 13.1 We
select claim 1 as representative and decide the appeal of this rejection on the
basis of claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner relies on Settelmayer to teach the claimed vehicle
rooftop cargo box and cross bars. Non-Final Act. 2-4 (citing Settelmayer,
Figs. 1, 3—5, 8, and 9). Acknowledging that Settelmayer does not teach the
claimed perpendicular tubular ribs chemically bonded to the inner surface of
the cargo box lid, the Examiner relies on Fulton for this teaching. Id. at 4
(citing Fulton, 3:66—74, Fig. 2).2 According to the Examiner, “[i]t would
1 Claims 6 and 11 are argued separately only in the context of the second
rejection discussed below.
2 The Examiner notes that Fulton teaches adhesively attaching reinforcing
members, and asserts that “adhesive attachment is chemical bonding as
claimed.” Non-Final Act. 4. The Examiner alternatively relies on Black to
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Application 12/911,653
have been obvious to one of ordinary skill in the art at the time of the
invention, given the disclosure of Fulton, to add internal stiffening ribs
oriented perpendicular to the long axis of the cargo box as claimed in order
to further strengthen the box.” Non-Final Act. 4. The Examiner is also of
the view that a person of ordinary skill in the art would have appreciated the
benefit of strengthening the cargo box lid because, according to the
Examiner, “rooftop cargo boxes can be subjected to crushing vertical loads,
for example from being stored with objects on top of them, having objects
tied or otherwise located on top of them while attached to a vehicle roof,
and/or from weather such as hail or snow.” Ans. 2.
Appellants do not dispute the Examiner’s findings that Settelmayer
teaches the claimed cargo box and cross bars, and that Fulton teaches the
claimed plural ribs that are chemically bonded to the inner surface of the lid
of Fulton’s container to form a continuous tubular support structure. See Br.
13. Instead, Appellants assert that “Fulton is directed to the art of burial
vaults, which is a technology art disparate from that of vehicle rooftop cargo
boxes.” Id. Appellants contend that although burial vaults are subject to
crushing vertical loads, rooftop cargo boxes need only withstand horizontal
aerodynamic forces. Id. at 14. Thus, according to Appellants, a person of
ordinary skill in the art would not have considered it cost effective to add
transverse tubular ribs to the cargo box lid just to strengthen the lid against
vertical loads. Id. at 15. In support of this argument, Appellants provide the
declaration of Chris Sautter, the Director of New Product Design for Yakima
Products, Inc., the assignee of the application on appeal. See Declaration
teach chemically bonding “to the extent that it could be argued that an
adhesive exists which does not chemically bond.” Id.
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Application 12/911,653
Pursuant to 37 C.F.R. § 1.132 Accompanying Request for Continued
Examination (RCE) (“Sautter Decl.”), Tflf 1, 9-10. Appellants further allege
that attaching the claimed transverse tubular ribs to a rooftop cargo box
would not have made sense without Appellants’ discovery of an unrealized
problem: “fish-mouthing,” the partial lifting of the front of the lid by
aerodynamic forces when the vehicle on which it is mounted is moving at
high speed, potentially resulting in the cargo box lid opening. Br. 14 (citing
Sautter Decl. Tflf 3—8). Appellants also assert that a person of ordinary skill
in the art who wanted to strengthen the lid of a cargo box at the time of the
invention would likely have chosen less costly ways of doing so, such as
adding dents or creases to the lid, or making the lid from a thicker material.
Id. Appellants contend that “an invention is not obvious if one skilled in the
art would not have seen a reason to add the feature in question.” Id. (citing
In re Omeprazole Patent Litig., 536 F.3d 1361, 1381 (Fed. Cir. 2008)).
Appellants have not apprised us of Examiner error in rejecting claim 1
as unpatentable over Settelmayer and Fulton. First, we acknowledge Mr.
Sautter’s testimony that fish-mouthing was not a recognized problem at the
time of the invention. However, Appellants do not dispute the Examiner’s
assertion that rooftop cargo boxes are subject to vertical loads from, e.g.,
having objects stored on top of them, having objects tied or otherwise
located on top of them while attached to a vehicle roof, or from weather,
such as hail or snow. Ans. 2. Thus, a person of ordinary skill in the art
would have seen the benefit of increasing the stiffness and durability of such
a container and adding transverse tubular ribs was a known method of
stiffening and strengthening container lids. Id. at 3.
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Second, although we also acknowledge Mr. Sautter’s testimony that
adding Fulton’s support structures to Settelmayer’s cargo box would have
added to the cost of the cargo box, the cost of a particular modification alone
is not typically sufficient to discourage one of ordinary skill in the art from
adopting the modification. In re Farrenkopf 713 F.2d 714, 718 (Fed. Cir.
1983). As our reviewing court has stated, “a given course of action often
has simultaneous advantages and disadvantages, and this does not
necessarily obviate any or all reasons to combine [teachings].” Medichem v.
Rolabo, 437 F.3d 1157, 1165 (Fed. Cir. 2006); see Winner Int 7 Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullity its use as a basis to modify the disclosure of one reference with
the teachings of another.”).
We also agree with the Examiner that the existence of other,
potentially less expense ways to strengthen the lid of a cargo box does not
mean that a person of ordinary skill in the art would not have considered
adding Fulton’s reinforcing members. See Ans. 2—A. Appellants do not
dispute the Examiner’s assertion that adhesively bonding transverse beams
to the interior surface of a cargo box lid would have other benefits besides
stiffening the lid; for example, because the structures are added after the lid
is manufactured, a manufacturer can make different versions of the cargo
box having varying degrees of strength and cost to appeal to different market
segments. See id.
Finally, we disagree that the Omeprazole case requires a different
outcome. In Omeprazole, the court found that the prior art did not disclose a
negative interaction between the drug core and the enteric coating, and thus
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Application 12/911,653
a person of ordinary skill in the art would not have appreciated the need to
include a subcoating to prevent that interaction. Omeprazole, 536 F.3d at
1380. Here, however, a person of ordinary skill in the art would have
appreciated the need to strengthen and stiffen a rooftop cargo box lid to
withstand vertical loads from, e.g., objects carried on top of the box, snow
loads, etc. “[Tjhere is no rule that a single reference that teaches away will
mandate a finding of nonobviousness.” Medichem, S.A. v. Rolabo, S.L., 437
F.3d at 1165; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (“Rigid preventative rules that deny factfinders recourse to common
sense ... are neither necessary under our case law nor consistent with it.”).
Additionally, just because “better alternatives” may exist in the prior art
“does not mean that an inferior combination is inapt for obviousness
purposes.” In reMouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citation
omitted).
For the above reasons, we sustain the Examiner’s rejection of claims
1—11 and 15—19 as unpatentable over Settelmayer, Fulton, and Black.
Claims 6 and 11—Unpatentable over
Settelmayer, Fulton, Black, and van Berne.
Appellants do not separately argue claims 6 and 11 in responding to
the previous rejection, which arguably renders this rejection moot. See 37
C.F.R. § 41.37(c)(iv). But even if we were to consider Appellants’
arguments against this rejection, we would not find them persuasive.
Appellants argue that van Berne does not show a correspondence between
the number of latch devices and the number of ribs, as claim 6 requires, or
three latch devices and three transverse ribs, as claim 11 requires, because
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Application 12/911,653
van Beme discloses three transverse structures but only one latch. Br. 19.
This argument, however, does not address the Examiner’s proposed
rejection. As the Examiner notes, the Examiner relies on Settelmayer, not
van Beme, to teach a cargo box with three latches. Ans. 5. The Examiner
relies on van Berne’s teaching of “three ribs/indentations on a lid each
corresponding with a hinge of the lid . . . and extending parallel to the hinges
and perpendicular to the longitudinal axis of the box” (Non-Final Act. 9
(citing van Beme Figs. 4—6)) to “modify the base reference of Settelmayer,
which has three stmctures which function simultaneously as hinges and
latches.” Ans. 5. The Examiner further explains that “the combination with
[v]an Beme does not remove any of the hinge/latch stmctures or modify
them to make them no longer function as both hinges and latches,” and
“locating the ribs to be axially aligned with the hinge also causes them to be
axially aligned with the three latches.” Id. According to the Examiner, “a
person of ordinary skill in the art, seeing the rib stmctures of [v]an Beme,
would consider it obvious to use three ribs as taught by [van Beme]3 on the
container of Settelmayer, in order to save on costs (by using fewer ribs),
increase storage space (by having fewer ribs taking up interior cargo space),
and/or as a mere selection of an art appropriate number of ribs to use.” Id.
Because Appellants have not apprised us of Examiner error in this regard,
we sustain the rejection.
3 The Examiner relies on van Beme for the three ribs, not Fulton. See Non-
Final Act. 9. We consider the Examiner’s reference to Fulton to be a
typographical error. See Ans. 5.
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Application 12/911,653
DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1—11 and 15—19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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