Ex Parte Hoffmann

Patent Trial and Appeal Board

Dec 28, 2015

11928974 (P.T.A.B. Dec. 28, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111928,974 10/30/2007
23460 7590 12/30/2015
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Mark A. Hoffmann
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
259668 8062
EXAMINER
KEENAN, JAMES W
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
12/30/2015 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. HOFFMANN
Appeal2013-003967
Application 11/928,97 4
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
ROBERT L. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
Mark A. Hoffmann ("Appellant") seeks our review under 35 U.S.C.
§ 134(a) of the Examiner's rejection of claims 1--4 and 6-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 11/928,97 4
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention "generally relates to land vehicles, including
but not limited to systems for unloading cargo carried by the vehicles."
Spec. i-f 1. More specifically, the invention involves "a land vehicle capable
of transporting and unloading aggregates via a conveyor system," which "is
included in a moveable boom that can be stowed completely within the side
edges of the vehicle." Id. at i-f 5.
Claims on Appeal
Claims 1, 10, and 16 are the independent claims on appeal. We select
independent claim 1 as illustrative. Claim 1 recites:
1. A land vehicle for transporting and distributing
aggregate material, comprising:
a completely enclosed chassis including a floor portion,
the floor portion having a generally flat and substantially
horizontal deck surface forming an opening extending through
the floor portion, the enclosed chassis being internally
traversable for loading, unloading and handling of containers of
the aggregate material manually or by use of a mechanical
device;
a funnel rotateably connected to the floor portion, the
funnel having a mouth opening communicating with the
opening in the floor portion and a spout opening;
a boom hingeably connected to the funnel, the boom
being fully stowable beneath the floor portion of the chassis
when not in use, the boom including a conveyor operable along
a major dimension of the boom, the conveyor having a
receiving end proximate to and below the spout opening;
wherein a centerline of the opening in the floor portion is
disposed offset from a longitudinal centerline of the enclosed
chassis, and wherein a flow of the aggregate material is adapted
to enter the mouth opening of the funnel, through the opening
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in the floor portion, and transfer to the receiving end of the
conveyor through the spout opening ..
App. Br. 16 (Claims App'x).
Examiner's Rejections on Appeal
The following rejections are before us for review.
1. Claims 1, 2, 7, 16, 17, 19 and 20 are rejected under
35 U.S.C. § 103(a) over Hawes (US 120,065, iss. Oct. 17, 1871),
Hansen (US 4,586,865, iss. May 6, 1986), and Downey (US
73,308, iss. Jan. 14, 1868). Office Act. 2-5 (mailed Jan. 31, 2012).
2. Claims 3 and 9 are rejected under 35 U.S.C. § 103(a)
over Hawes, Hansen, Downey, and Mengel (US 2,564,020, iss.
Aug. 14, 1951). Id. at 5-6.
3. Claims 4 and 10-12 are rejected under 35 U.S.C.
§ 103(a) over Hawes, Hansen, Downey, Mengel, and Pettijohn (US
5,443,351, iss. Aug. 22, 1995). Id. at 6-7.
4. Claims 6 and 8 are rejected under 35 U.S.C. § 103(a)
over Hawes, Hansen, Downey, and Cary (US 3,825,107, iss.
July 23, 1974). Id. at 7-8.
5. Claims 13-15 are rejected under 35 U.S.C. § 103(a) over
Hawes, Hansen, Downey, Mengel, Pettijohn, and Cary. Id. at 8-9.
6. Claim 18 is rejected under 35 U.S.C. § 103(a) over
Hawes, Hansen, Downey, and Sevits (US 5,257,893, iss. Nov. 2,
1993). Id. at 9-10.
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ANALYSIS
We affirm the Examiner's rejections of claims 1--4 and 6-20 under
35 U.S.C. § 103(a). We disagree with Appellant's contentions. We adopt as
our own (1) the findings and reasons set forth by the Examiner in the Office
Action and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellant's Appeal Brief. We concur with the
conclusions reached by the Examiner. We add the following for emphasis.
Appellant first contends "no combination of the cited references
describes or suggests a completely enclosed trailer that has a traversable
floor for loading and unloading containers of aggregate material, or any
similar structure or method." App. Br. 7 ("cited references simply
contemplate trailers and other vehicles configured for transporting loose
material"). Appellant notes "the combination of Hawes, Hansen and
Downey is used, alone or in further combination with other references, as a
basis for rejecting all pending claims." Id. at 8. Appellant alleges that the
combination of these three references fails to render the independent claims
obvious because the combination
does not describe or suggest a structure or method in which a
completely enclosed chassis including a floor portion, which is
internally traversable for loading, unloading and handling of
containers of the aggregate material manually or by the use of a
mechanical device, a funnel rotateably connected to the floor
portion, and a boom hingeably connected to the funnel,
cooperate to distribute and transport aggregate material, as
stated in claims 1, 10 or 16, or any similar device or method.
Id. (emphasis omitted). Appellant argues each reference "describes a trailer
or car that is intended to transport loose aggregate material, the loading of
which is accomplished from the top of the vehicle." Id. Appellant further
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contends Hawes and Hansen teach unloading through an opening in the
bottom using gravity to move the loose material through the opening and
Downey unloads from the same opening at the top of the car. Id. These
distinctions, 1 according to Appellant, would not have prompted one of
ordinary skill in the art to reconfigure any of the disclosed vehicles with a
completely enclosed space, or to carry containers of the aggregate material,
as required by claims 1, 10 and 16. Id. at 8.
Appellant reiterates that the combination of references fails to teach or
suggest "a vehicle, system or method that includes a completely enclosed
chassis having a floor portion that is internally traversable for loading,
unloading and handling of containers of the aggregate material manually or
by the use of a mechanical device." Id. at 10. According to Appellant, the
references "fail to describe ... an enclosed space that is traversable for
loading and unloading," because "the encloseable [sic] container of the
Downey reference is not enclosed as required in the claims, nor can it be,
since Downey requires top loading of its funnel-shaped hopper container."
Reply Br. 6 (emphasis omitted).
At the outset, the Examiner finds and we agree "Applicant is not
positively reciting aggregate material containers per se, nor a means for
handling same, nor does method claim 16 positively recite a step of
providing, loading, unloading, or otherwise handling such containers."
1 See App. Br. 8 ("Hawes describes a rail car configured to transport
grain."); see also id. at 9 ("Hansen describes a belly-dump trailer, meaning,
a trailer with a material discharge in its inclined bottom, which is not
internally traversable and is not enclosed. . . . Downey describes a rail car
onto which a hinged roof is attached to protect cargo from the weather and
from 'pilfering."').
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Ans. 3. The language of claim 1 relied upon by Appellant to differentiate
the prior art recites an intended use or purpose of the chassis of the land
vehicle. Specifically, the language "the enclosed chassis being internally
traversable for loading, unloading and handling of containers of the
aggregate material manually or by use of a mechanical device" sets forth a
stated goal for the claimed structure. App. Br. 16. Because the quoted
language ("for loading ... ") is only stating intended uses or purposes for the
claimed invention, and because such uses or purposes can be manually
achieved, the limitation does not in itself structurally limit the chassis. See
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted) ("It
is well settled that the recitation of a new intended use for an old product
does not make a claim to that old product patentable."). We focus our
analysis below on the structural limitations required by each of independent
claims 1, 10, and 16 argued by Appellant, as well as the Examiner's basis for
combining references to achieve the overall claimed invention.
A Completely Enclosed Chassis
The Examiner finds, and we agree, that the combination of Hawes
with Downey teaches or suggests a completely enclosed chassis as required
by the claims. Office Act. 4 ("obvious ... to have modified the apparatus of
Hawes by providing the car with a completely enclosed chassis, such as one
having a hinged roof, as taught by Downey, to provide weather and theft
protection of the material in the car while in transit"). Appellant's
contention that Downey does not teach or suggest this limitation because
Downey's hinged top is enclosable, but not enclosed, is unpersuasive. To be
enclosable, the chassis is capable of being enclosed. The chassis is likewise
depicted in a fully enclosed state throughout the reference. See Downey,
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Fig. 3; see also App. Br. 10 (annotated figures). See also Ans. 3 ("Further,
nothing in the claims requires the enclosed space to have a permanent or
fixedly attached roof or in any other way precludes the use of a hinged roof
as suggested by Downey.").
We also find unpersuasive the argument that Downey is distinct
because it is loadable and unloadable from the top of the vehicle. We agree
with the Examiner that "[ t ]here is simply nothing in the claims that
precludes the vehicle from being loaded from the top, nor is there any
compelling reason why containers of aggregate material, instead of (or in
addition to) loose material, could not be loaded from the top." Ans. 3.
Many of these arguments are not commensurate in scope to the claimed
invention, and thus, do not demonstrate error in the Examiner's rejection of
claims 1, 10, and 16. See In re Self, 671F.2d1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability).
Floor Portion of Chassis Internally Traversable
The Examiner relies on Hawes as teaching or suggesting the
limitations related to the floor portion of the chassis having a generally flat
and substantially horizontal deck surface. See Office Act. 2; see also Ans. 3.
We agree with the Examiner's finding that "the base reference Hawes has a
flat floor which is capable of being internally traversed such that performing
the functional recitation of loading, unloading and handling of containers of
aggregate material manually or by a mechanical device is possible, which is
all that the claims require." Ans. 3 (emphasis omitted). We note that the
claim language - "internally traversable ... manually" - focuses on an
objective of the structure and is somewhat subjective because a person can
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traverse almost any surface. Id. Further, we agree Hawes, in the
combinations proposed by the Examiner, teaches or suggests each structural
limitation related to the floor portion. We also agree the structure identified
by the Examiner in each reference would allow for the functionally recited
purpose of manually or mechanically handling containers of aggregate
material.
Claim 18
Appellant presents additional argument with respect to claim 18. See
App. Br. 11. Specifically, Appellant contends
that none of the cited references describe[ s] or suggest[ s] a
method in which an amount of aggregate is stored in a container
within the vehicle, the container having an opening allowing
egress of aggregate therefrom, wherein the step of passing a
flow of aggregate through the opening in the floor portion of
the vehicle includes placing the container above the opening in
the floor such that the opening of the container is at least
partially aligned with the opening in the floor.
App. Br. 11 (emphasis omitted). We find Appellant's contention
unpersuasive because Appellant fails to address the Examiner's findings
related to Sevits. Office Act. 9-10. The Examiner relies on Sevits to teach
or suggest these limitations, including its teaching of bags as containers
aligned with an opening in a floor. Id.; see also Ans. 2-3 ("the rejection of
claim 18 involved the combination of another reference (Sevits) to teach the
obviousness of placing a container of aggregate material above an opening
in the floor of a vehicle"). See also Spec. i-f 2 ("seed is packaged in bags").
We agree with the Examiner that "Appellant makes no mention of this
rejection," and therefore we determine Appellant has not presented
persuasive evidence of Examiner error. See 37 CPR§ 41.37(c)(l)(iv) ("The
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arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant. ... [A ]ny arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal.") (emphasis added).
Based on the foregoing, we determine that the Examiner has set forth
a prima facie case of obviousness for claims 1--4 and 6-20.
Secondary Considerations of N onobviousness
As noted above, we have found the subject matter of the claims on
appeal to be prima facie obvious. Whenever obviousness is found with
respect to the subject matter on appeal, and Appellant furnishes evidence of
secondary considerations, it is our duty to reconsider the issue of
obviousness anew, carefully weighing the evidence for obviousness with
respect to the evidence against obviousness. In re Eli Lily& Co., 902 F.2d
943, 945 (Fed. Cir. 1990). We are also mindful that the objective evidence
of nonobviousness in any given case may be entitled to more or less weight
depending on its nature and its relationship with the merits of the invention.
See Stratoflex Inc. v. Aeroquip, 713 F.2d 1530, 1538 (Fed. Cir. 1983). To be
given substantial weight in the determination of obviousness or
nonobviousness, evidence of secondary considerations must be relevant to
the subject matter as claimed, and therefore we must determine whether
there is a nexus between the merits of the claimed invention and the
evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985). The burden of
showing that there is a nexus lies with the applicant. See In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994). Secondary considerations may include
long-felt but unmet needs, failure of others, unexpected results, commercial
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success, copying, licensing, and praise. Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Appellant offers two declarations, and accompanying articles, as
evidence of long-felt need, praise, and commercial success. App. Br. 12-14;
see also Reply Br. 7, 8. Appellant submitted the declaration of Mark
Hoffmann ("Hoffmann Deel.") and Thomas Nobbe ("Nobbe Deel.") both
under 37 CPR§ 1.132. App. Br. 12. Appellant contends "[n]either of these
declarations appears to have been given any meaningful consideration or
weight by the Examiner." Id. Appellant alleges he has successfully sold a
number of trailer systems as described in the claims of the instant
application "with great commercial acclaim." Hoffmann Deel. i-fi-1 4--6.
Appellant next cites Mr. Nobbe's Declaration for the proposition that
"the device described and claimed in the instant application fulfills a long
felt need in the large scale agricultural business, and the design and
functional and operational flexibility of the inventive device are very
different from any known systems." App. Br. 12 (citing Nobbe Deel. i-f 12).
Appellant also alleges that Mr. Nobbe "introduced various news articles and
publications that lauded the innovation and uniqueness of Appellant's device
[] thus supporting the 'commercial success' contentions made previously in
Mr. Hoffmann's declaration." Id. at 13 (citing Nobbe Deel. i-f 13).
The Examiner addresses both declarations. The Examiner first
addresses the Hoffmann Declaration and finds
that declaration provides no factual evidence of commercial
success, such as actual sales figures in comparison to similar
devices sold in the same market, and even if it did, there is
certainly no showing that any such commercial success is
directly attributable to the specific combination of features set
forth in the claims.
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Ans. 4. The Examiner next finds the declaration of Mr. Nobbe immaterial to
the current rejection "because it is primarily directed to the issue of
modifying the belly dump trailer of Hansen (i.e., a vehicle without a flat
floor) so as to have a flat floor ... a rejection which no longer exists .... "
Id. The Examiner further notes that the Nobbe Declaration also "fails to
provide any factual evidence of a long felt need or commercial success, and
further fails to show a nexus between the alleged commercial success and
the actual combination of elements recited in the claims." Id.
Although each declaration evinces some degree of commercial
recognition, we agree with the Examiner that it remains unclear how this
recognition relates to the subject matter as claimed. We do not agree
Appellant has established a nexus between the merits of the claimed
invention and the evidence of secondary considerations, specifically long-
felt need and commercial success. For example, Mr. Hoffmann states he has
sold six prototype systems in about three years. Hoffmann Deel. i-f 5 (also
referencing filing date). Even presuming the prototypes sold encompass the
claimed invention, there is no evidence that selling six systems in this time
period would be considered successful in the market.
Further, there is mixed evidence about whether Appellant's
commercial success derives from the claimed attributes or from other factors
such as unclaimed attributes, extensive advertising, or aggressive marketing.
For example, the article by Laurie Potter accompanying Mr. Hoffmann's
Declaration appears to quote Mr. Hoffmann and convey company marketing
points, a few of which do not directly relate to the claimed subject matter.
The article also notes Mr. Hoffmann has engaged "the help of an advertising
agency" to market his invention. Further, the Potter article states that "an
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extensive list of options" is available to customize a system, such as "a
jumbo bag lifter, or spring ride trailer." Some of these options are unrelated
to the claimed invention and there is no evidence about whether they also
contribute to any commercial success. Similarly, while recognizing some
features related to the claimed subject matter, the article by Josh Flint also
discusses secondary advantages of the system unrelated to the claims such as
providing additional "lockable, portable storage to the farm operation ...
storing and delivering hay," and "outside trailer lights" that light up the work
area. "Where the offered secondary consideration actually results from
something other than what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention." In re Kao, 639 F.3d 1057,
1068 (Fed. Cir. 2011) (citation omitted). Appellant has simply not met the
burden of proving commercial success attributable to the claimed invention.
"Longfelt need is closely related to failure of others. Evidence is
particularly probative of obviousness when it demonstrates that a demand
existed for the patented invention, and that others tried but failed to satisfy
the demand." In re Cyclobenzaprine Hydrochloride Extended-Release
Capsule Patent Litig., 676 F.3d 1063, 1082 (Fed. Cir. 2012). The Nobbe
Declaration, conveys that the "device claimed in the instant application
fulfills a long felt need in the large scale agricultural business" and is "very
different from any of the known systems that were previously available to
farmers." Nobbe Deel. i-fi-f 12, 13 (also noting the invention "cut[s] the time
for refilling a planter from 30-45 minutes down to about 15 minutes"). See
Reply Br. 8.
As found by the Examiner, however, paragraph 12 of the Nobbe
Declaration concerns a since removed rejection addressing modifying the
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belly dump trailer of Hansen (i.e., a vehicle without a flat floor).
Specifically, Mr. Nobbe's statement as to long-felt need reads:
because of the inability to internally traverse the previously-
discussed structures of Hansen and Sevits for purposes of
loading and unloading, it is my opinion that the device
described and claimed in the Hoffmann application fulfills a
long felt need in the large scale agricultural business.
Nobbe Deel. i-f 12. Mr. Nobbe offers an opinion, not factual evidence, of
long-felt need. Further, because the opinion is tied to the distinction in the
combination of references that has since been modified, we do not afford the
opinion of long-felt much weight.
Accordingly, we determine that the evidence presented by Appellant
related to long-felt need, praise, and commercial success is entitled to little
weight. Thus, we determine that Appellant has not persuasively established
that the evidence of secondary considerations overcomes the prima facie
case of obviousness presented by the Examiner.
We therefore sustain the Examiner's rejection of claims 1--4 and 6-20.
DECISION
We AFFIRM the Examiner's decision in rejecting claims 1--4 and 6-
20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
rvb
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