Ex Parte Hicks et al

Patent Trial and Appeal Board

Oct 16, 2017

12793280 (P.T.A.B. Oct. 16, 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.
12/793,280 06/03/2010 William J. Hicks HOL001 P373B 6363
277 7590 10/18/2017
PRTrF HFNFVFT F) T T P
EXAMINER
695 KENMOOR SE BOEHLER, ANNE MARIE M
P O BOX 2567
GRAND RAPIDS, MI 49501 ART UNIT PAPER NUMBER
3611
NOTIFICATION DATE DELIVERY MODE
10/18/2017 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):
ptomail @priceheneveld.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM J. HICKS, ROGER L. ELKINS,
STEVEN C. DUPAY, MARK M. AUDO, and
SAMUEL A. MARTIN
Appeal 2017-003273
Application 12/793,280
Technology Center 3600
Before JOSEPH L. DIXON, LARRY J. HUME, and AARON W. MOORE,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—13, 15—20, and 23—25. Claim 14 has been withdrawn from consideration.
Claims 21 and 22 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appeal 2017-003273
Application 12/793,280
The claims are directed to a lightweight narrow-span fifth wheel.
Claims 1 and 13, reproduced below, are representative of the claimed subject
matter:
1. In a semi-tractor including a pair of C-shaped frame rails
extending between a front of the semi-tractor and a rear of the
semi-tractor, the frame rails having a rail distance therebetween,
wherein the improvement comprises:
a fifth wheel hitch having mounting areas therein;
mounting brackets located within the mounting areas of
the fifth wheel hitch; and
a support assembly supporting the mounting brackets;
the support assembly comprising elongated first
connectors each having an L-shaped cross-sectional
configuration, second connectors each having at least a portion
located below the first connectors, and a cross-member assembly
extending laterally between the frame rails and connecting the
first connectors to the second connectors, with the first
connectors abutting side faces of the C-shaped rails and the
second connectors abutting side faces of the C-shaped rails; and
an outside distance between the mounting areas being
shorter than the rail distance.
13. In a semi-tractor including a pair of C-shaped frame
rails extending between a front of the semi-tractor and a rear of
the semi-tractor, the frame rails having a rail distance
therebetween, wherein the improvement comprises:
a fifth wheel hitch having mounting areas therein;
mounting brackets located within the mounting areas of
the fifth wheel hitch; and
a support assembly supporting the mounting brackets;
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the support assembly comprising a plate member
extending laterally between and connected to the frame rails, a
pair of side members abutting inside faces of the C-shaped frame
rails, wherein at least a portion of the plate member is located
above the side members, and a spanning structure extending
between the side members, with the plate member supporting the
mounting brackets; and
an outside distance between the mounting areas being
shorter than the rail distance.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brown
Norrie et al.
McNitt
Tagg et al.
US 3,117,772
US 3,484,852
US 3,580,611
US 4,279,430
Jan. 14, 1964
Dec. 16, 1969
May 25, 1971
July 21, 1981
REJECTIONS
The Examiner made the following rejections:
Claims 1—13, 15—20, and 23—25 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
Claims 13, 15, 17, 18, 22, and 25 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Tagg in view of Norrie.
Claims 1—13, 15—20, and 23—25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over McNitt in view of Brown and Norrie.
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ANALYSIS
35 U.S.C. § 112, second paragraph
Under 35 U.S.C. § 112, second paragraph, the Specification must
conclude with “one or more claims particularly pointing out and distinctly
claiming the subject matter” regarded as the invention. The essence of the
requirement under 35 U.S.C. § 112, second paragraph, is that the language
of the claims must make it clear what subject matter the claims encompass —
i.e., ‘“whether those skilled in the art would understand what is claimed
when the claim is read in light of the specification.’” Star Scientific, Inc. v.
R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir. 2011) (quoting
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986).
As guided by the Manual of Patent Examining Procedure, a rejection
based on the failure to claim the subject matter which the applicant regards
as the invention “is appropriate only where an inventor has stated,
somewhere other than in the application as filed, that the invention is
something different from what is defined by the claims.” MPEP § 2172(1)
(emphasis added). “Agreement, or lack thereof, between the claims and the
specification is properly considered only with respect to the first paragraph
of § 112; it is irrelevant to compliance with the second paragraph of that
section.” In re Ehrreich, 590 F.2d 902, 906 (CCPA 1979).
With respect to the second paragraph rejection, the Appellants
contend “the description need not be ipsis verbis (i.e., ‘in the same words’)
to be sufficient.” Appellants identify a correlation of the claimed features to
those disclosed in the specification for independent claim 1. (App. Br. 8—
10). Appellants further identify how the Examiner’s proffered plural
interpretations are incorrect. (App. Br. 9-10). Additionally, Appellants rely
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upon the Declaration of Mr. Dupay (one of the joint inventors) to support the
position that one of skilled in the art at the time of the invention would have
understood the claimed limitations.
The Examiner maintains:
[t]he claims are read in light of the specification and need to be
interpreted in that light. Appellant has provided no compelling
reason for using a variety of terms and appears to have also found
it difficult to correlate the terms.
Appellant is required to provide clear support in the
specification for all claim terms used. Appellant's structure
involves numerous individual parts. Many of these parts have
similar names and perform connecting, bracketing, and/or
supporting functions. Appellant has also disclosed several
different embodiments. As discussed above, in reading the
claims in light of the specification, it is not clear what structure
is being recited.
(Ans. 2—3). We find the Examiner identifies various discrepancies between
the claim language and Appellants’ arguments, but does not identify any
substantive difficulty with the broad claim language. The Examiner
maintains Mr. Dupay is not “an objective reader” and has not provided
“other evidence.” (Ans. 5, 6). The Examiner further maintains “the
question is not whether the terms themselves are understood by one of
ordinary skill in the art but rather whether it is clear what is meant by them
in the present claims.” (Ans. 6). We disagree with the Examiner and find
the two questions are similar.
The Examiner maintains “the claims are not clear given the broad,
various and inconsistent use of terms to describe the same structure.”
(Ans. 6). We disagree with the Examiner and find the language of the
various independent claims to be broad rather than indefinite. We further
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agree with Appellants that the use of varied claim language between
different groups of independent claims compounds the difficulty in
interpreting the claim language, but it does not rise to the level of any
deficiency to particularly point out or and distinctly claim Appellants’
invention in this case. As a result, we cannot sustain the indefmiteness
rejection under 35 U.S.C. § 112, second paragraph.
35U.S.C. § 103(a)
Tagg in view of Norrie
With respect to claims 13, 15, 17, 18, 22, and 25, Appellants argue the
claims together. (App. Br. 11). We select independent claim 13 as the
representative claim for the group and address Appellants’ arguments
thereto.
We have reviewed the Examiner’s rejections (Final Act. 5—9) in light
of Appellants’ contentions in the Appeal Brief (App. Br. 11—14) and the
Reply Brief (Reply Br. 3—5) that the Examiner has erred, as well as the
Examiner’s response (Ans. 6—13) to Appellants’ arguments in the Appeal
Brief. We disagree with Appellants’ conclusions.
We concur with the conclusions reached by the Examiner, and adopt
as our own (1) the findings and reasons set forth by the Examiner in the
Action from which this appeal is taken (Final Act. 5—9), and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 6—13). We highlight and amplify certain
teachings and suggestions of the references, as well as certain ones of
Appellants’ arguments as follows.
Appellants contend:
Independent Claim 13 recites, inter alia, that the pair of
side members abut the inside faces (644) of the C-shaped frame
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rails. However, in Tagg, flanges 21, 25 do not abut the inside
faces of frame 11. Norrie is merely cited to show the claimed
fifth wheel hitch and its connection to the mounting brackets and
thus does not overcome the deficiencies of Tagg. In addition,
independent Claim 13 requires that the plate member extends
laterally between and connects to the frame rails. This is not met
by Tagg because plate 16 is not connected to C-shaped frame
rails 10, 11 due to the presence of the airbag 40, and Norrie fails
to remedy this deficiency of Tagg. Moreover, the Examiner’s
rationale for making the rejection (FR, 5) is to provide a hitch
plate with adequate supports. However, there is no reason
provided as to why Tagg’s hitch plate does not already have
adequate support. Thus, there would be no suggestion to
combine the references as asserted by the Examiner, other than
through impermissible hindsight, using Appellants claims as a
template. Thus, even if, assuming arguendo, that the teachings
of the applied references were combined.
(App. Br. 11). Appellants further contend that the Examiner has not
identified any specific claims in the grounds of the rejection and has used a
“shotgun” rejection. (App. Br. 12).
The Examiner further details the grounds of rejection in the
Examiner’s Answer, but the Examiner refers to the “Norrie” reference while
discussing the Figures of the Tagg reference. (Ans. 6—9). Aside from the
typographical error, we agree with the Examiner findings. The Examiner
further identifies the broad language of independent claim 13 and how it is
met by the combination of prior art references. The Examiner further
provides individual discussion of claims 15, 17, and 25 so as to obviate the
“shotgun” argument. We agree with the Examiner and find Appellants do
not address the Examiner’s clarifications in the Reply Brief, but instead
merely contend “[t]he reasons for allowability over the cited art as discussed
above with respect to claim 13 also apply to independent claim 15.” (Reply
Br. 4). Because we find Appellants’ arguments to be unpersuasive with
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respect to independent claim 13, we similarly find those arguments
unpersuasive with respect to independent claim 15.
Appellants further argue the “support assembly supporting the
mounting brackets, wherein an outside distance between the mounting areas
is shorter than the distance between the frame rails.” (Reply Br. 3). We find
Figures 4, 5, and 7 of the Norrie reference clearly teach and suggest
supporting the mounting brackets inside the C frame rails so that the outside
distance between the mounting areas is shorter than the distance between the
frame rails. Appellants generally contend “[t]here is no reason why one
skilled in the art would choose the arrangement disclosed by Norrie et al.
over any other, including those where the outside distance between the
mounting brackets is longer than the distance between the rails.” (Reply
Br. 4). The Examiner identifies that the Tagg reference appears to partially
identify the support plate 16 between the frame rails, but the disclosure is
not clearly shown. Consequently, the Examiner relied upon the Norrie
reference to show the well-known placement of the mounting brackets
between the frame rails. We agree with the Examiner’s line of reasoning
and the combination, and find Appellants’ arguments unpersuasive with
respect to the Examiner’s factual findings or legal conclusion of obviousness
of representative independent claim 13 and claims 15, 17, 18, 22, and 25 not
separately argued by Appellants.
McNitt in view of Brown and Norrie
With respect to claims 1—13, 15—20, and 23—25, Appellants provide
separate arguments for claims 1,13, and 15. (App. Br. 13—14). We select
the independent claims 1,13, and 15 as the representative claims for the
groups and address Appellants’ arguments thereto.
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With respect to representative independent claim 1, Appellants
contend that there is no L-shaped cross-member in the McNitt reference.
(App. Br. 13). The Examiner identifies the line of reasoning for interpreting
disclosed “T” element as the claimed “L” member. (Ans. 9—12). We agree
with the Examiner’s line of reasoning and find no persuasive argument by
Appellants as to why the Examiner’s interpretation is unreasonable.
In the Reply Brief, Appellants generally contend that the Examiner is
picking and choosing from the McNitt reference and the Examiner’s
interpretation of the McNitt reference would render the McNitt “T” member
inoperable due to the attachment of mounting plate 35 with bolts 36. (Reply
Br. 4-5).
We disagree with Appellants and find that all the bolts are not
necessary to provide an operable connection between the “L”/“T” member
and the mounting plate. We find the manner and number of the bolts would
vary depending on the specific requirements of the 5th wheel connection.
With respect to the Brown reference, Appellants contend the
Examiner is arbitrarily dividing the journal box into whatever shape the
Examiner needs to support the rejection. (Reply Br. 5). Appellants disagree
with the Examiner’s statements in the Examiner’s Answer. (Reply Br. 6).
We find the Examiner’s explanation merely provides additional context
regarding the structure of the Brown journal box which incorporates a
number of structural elements disclosed in the McNitt reference into a
unitary structure which shows variations in the structural elements to support
and connect a 5th wheel. (Final Act. 6—7). Consequently, we find
Appellants’ argument unavailing because each of the Brown and McNitt
references teach similar elements. Therefore, Appellants’ argument does not
show error in the Examiner’s factual findings or conclusion of obviousness
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of representative independent claim 1 and dependent claims 2—12, not
separately argued.
With respect to independent claim 13, Appellants contend the
Examiner has not established a prima facie case of obviousness and the
Examiner refers to a “Harris” reference which is not relied upon in the
grounds of the rejection. (App. Br. 14). The Examiner clarifies that the
“Harris” reference, which is not listed in the statement of the rejection, was a
typographical error and “Harris” should instead be the “Norrie” reference.
(Ans. 13, see also Final Act. 8 for separate stated rationale). Appellants do
not provide separate arguments for patentability of independent claims 13
and 15 with respect to the combination of the McNitt, Brown, and Norrie
references. Because we found no error in the Examiner’s factual findings or
conclusion of obviousness of independent claim 1, and no separate
arguments for patentability were set forth in the Appeal Brief and Reply
Brief, we sustain the Examiner’s rejection of independent claim 13 for the
same reasons set forth with respect to independent claim 1.
With respect to independent claim 15, Appellants contend the “side
connectors are connected to an inside surface of the C-shaped frame rails”
and there is no obviousness statement or rationale for combining the
teachings of the references. (App. Br. 14). We disagree with Appellants and
find the Examiner has set forth a line of reasoning for the combination in the
Final Action at page 7, and the Examiner does not necessarily need to repeat
that for each independent claim. The Examiner additionally discusses the
prior art references with regard to the varied claim language. (Final Act. 9).
As a result, Appellants’ argument does not show error in the Examiner’s
factual findings or conclusion of obviousness of independent claim 15.
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CONCLUSIONS
The Examiner erred in rejecting claims 1—13, 15—20, and 23—25 under
35U.S.C. § 112, second paragraph, but the Examiner did not err in rejecting
claims 1—13, 15—20, and 23—25 under 35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 41.50(a)(1).
DECISION
For the above reasons, we reverse the Examiner’s indefmiteness
rejection of claims 1—13, 15—20, and 23—25, but sustain the Examiner’s two
obviousness rejections of claims 1—13, 15—20, and 23—25.
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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