Ex Parte Hicks

Board of Patent Appeals and Interferences

Apr 26, 2010

10081928 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ISREAL HICKS
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Appeal 2009-005636
Application 10/081,928
Technology Center 3600
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Decided: April 26, 2010

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Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/081,928

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STATEMENT OF THE CASE
Isreal Hicks (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner's decision rejecting claims 26, 29, 30, 48, 50, 51, 53-55, 57,
58, and 60. Claims 1-11, 21-25, 27, 28, 31-47, 49, 52, 56, 59, and 61 have
been canceled. Claims 12-20 have been withdrawn from consideration. We
have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a tire-hanging device.
Spec. 2:3.
Claim 26, reproduced below, is illustrative of the claimed invention.
26. A tire hanger comprising:
a device configured to removably engage a
horizontal support member of a vehicle hoist at a
user-selected position, the device having:
a first end arranged to be mounted by at
least partially circumscribing the horizontal
support member without the need for fasteners;
a second end having a hook configuration to
engage a wheel; and
a middle section disposed between the first
end and the second end, the middle section having
a length suitable for engaging the hook
configuration with the wheel.

The Rejections
Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 102(b) of claims 26, 29, 30, 48, 50, 51, 53-55, 57, 58, and 60 as anticipated
by US 5,816,016 issued to Zarnick (Oct. 6, 1998) and of claims 58 and 60 as
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anticipated by International Application No. WO 00/55031 of Gibson and
Starling (published Sep. 21, 2000)1.

SUMMARY OF DECISION
We AFFIRM.

ISSUES
In arguing each of the rejections, Appellant groups all the claims
together. Therefore, claims 29, 30, 48, 50, 51, 53-55, 57, 58, and 60 stand or
fall with representative claim 26 with respect to the Zarnick rejection, and
claim 60 stands or falls with representative claim 58 with respect to the
Starling rejection. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The first issue presented in this appeal is whether Zarnick's hook clip
is "arranged to be mounted by at least partially circumscribing the [vehicle
hoist] horizontal support member" and whether Zarnick's clip end has "a
hook configuration to engage a wheel."
The second issue presented in this appeal is whether Starling's plates
bolted to a vehicle hoist describes an "open end" of the hoist wrap section,
and whether Starling's wheel hanger pin is "arranged to engage a wheel."

PRINCIPLES OF LAW
Statements of intended use in an apparatus claim do not distinguish
the claim over the prior art apparatus. In re Sinex, 309 F.2d 488, 492 (CCPA
1962). If a prior art structure is capable of performing the intended use as

1 Both the Examiner and Appellant refer to this reference as "Starling,"
which we adopt for consistency of the record.
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recited in the preamble, then it meets the claim. See, e.g., In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997) (anticipation rejection affirmed based
on Board’s factual finding that the reference dispenser (a spout disclosed as
useful for purposes such as dispensing oil from an oil can) would be capable
of dispensing popcorn in the manner set forth in appellant’s claim 1 (a
dispensing top for dispensing popcorn in a specified manner)).

ANALYSIS
Issue (1) - Anticipation by Zarnick
Appellant argues that Zarnick's hook end, which hooks to an I-beam,
is only an inch-and-a-half long. Appeal Br. 7. Appellant further alleges that
there are no vehicle hoist members with such a width. Id. Therefore,
Appellant concludes that Zarnick's hook end cannot "partially circumscrib[e]
the horizontal support member [of the vehicle hoist]," as recited in claim 26.
Id.
Claim 26 does not specify any particular size for the end that
circumscribes the horizontal support member, nor does claim 26 specify the
size or shape of the horizontal support member itself. Instead, claim 26 just
mentions that the first end must "partially circumscrib[e] the horizontal
support member." Notably, the claim does not state that the horizontal
support member is the arm of an automobile hoist that holds the weight of an
automobile. Instead, the support member could be any horizontal member
of any hoist that holds any vehicle of any size. For example, a motorcycle
hoist may have a smaller horizontal support than a hoist found in an
automobile repair shop. In addition, the horizontal arm that directly supports
the weight of a vehicle is likely to be larger than a horizontal support that
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does not support the weight of the vehicle, such as a horizontal support beam
between two vertical support beams. Therefore, Appellant's arguments that
claim 26 requires a horizontal support of a particular size larger than the
hook end of Zarnick is not based on any limitations found in claim 26.
Appellant further argues that Zarnick does not describe the "second
end" as recited in claim 26. Appeal Br. 7-9. First, Appellant argues that the
hook in Zarnick faces the wrong direction. Id. However, as pointed out by
the Examiner, claim 26 does not specify which direction the hook faces.
Ans. 6. Next, Appellant argues that Zarnick's hook cannot engage a wheel
unless the wheel has a width of less than 1.06". Id. However, claim 26 does
not specify a particular wheel size or type that must fit on the hook. Instead,
claim 26 merely requires a second end that must "engage a wheel." Even
assuming Appellant's assertion that Zarnick's hook could only engage a
wheel of 1.06" were accurate, Zarnick's hook would be capable of engaging
such a wheel.

Issue (2) - Anticipation by Starling
Claim 58 requires a hoist wrap section having an "open end" arranged
to "removably engage with at least three sides of a horizontal support
member of a vehicle hoist." Appellant argues that Starling does not describe
a hoist wrap section having an "open end." Appeal Br. 11-12. The
Examiner considers the opening between the bolts 136 the "open end." Ans.
4, 8.
Claim 58 does not define the "open end" with relation to any
particular construction or orientation of the hoist wrap section. The "open
end" merely is required to be capable of removably engaging with at least
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three sides of the horizontal support member. We find that Starling
describes a tire support bracket 120 having top and bottom mount plates 130,
132 attached to opposite sides of a horizontal lift arm 26 by way of bolts
136. Starling, p. 6, ll. 10-16, fig. 4. The bolts 136 secure the tire support
bracket 120 by pulling together the two plates 130 and 132. Id. We find
that the area defined by plates 130 and 132 and the bolts 136 is an "open
end" of the tire support bracket that could removably engage with at least
three sides of a horizontal support member of a vehicle hoist. For example,
as pointed out by the Examiner (Ans. 4), the two plates 130, 132 and the
inner pair of bolts 136 are capable of engaging three sides of a support
member inserted into this open end (from the front end as depicted in fig. 4)
and secured by tightening the bolts.

CONCLUSIONS
(1) The Examiner did not err in finding that Zarnick describes a "first
end" that mounts to a horizontal support member of a vehicle hoist,
nor did the Examiner err in finding that Zarnick describes a "hook
configure[ed] to engage a wheel." Therefore, we affirm the
Examiner's rejection of claim 26 as anticipated by Zarnick, as well as
of claims 29, 30, 48, 50, 51, 53-55, 57, 58, and 60, which stand or fall
with claim 26.
(2) The Examiner did not err in finding that Starling describes "an open
end arranged to removably engage … a horizontal support member of
a vehicle hoist," as recited in claim 58. Therefore, we affirm the
Examiner's rejection of claims 58 and 60 as anticipated by Starling.

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DECISION
The Examiner's decision is affirmed as to claims 26, 29, 30, 48, 50,
51, 53-55, 57, 58, and 60. No time period for taking any subsequent action
in connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(1)(iv) (2007).

AFFIRMED

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