Ex Parte McManus et al

Board of Patent Appeals and Interferences

Sep 6, 2012

10815588 (B.P.A.I. Sep. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PATRICK W. McMANUS and
MARTIN P. McMANUS
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Appeal 2010-009014
Application 10/815,588
Technology Center 3600
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Before STEVEN D.A. McCARTHY, JAMES P. CALVE and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-3, 7, 8, 12-14, 20, 25, 36, 42-46, and 49.
The Examiner rejects under 35 U.S.C. § 102(b) claims 1-3, 7, 12, 13, 20, 25,

1 The Appellants identify the real party in interest as The Riverbank,
LLC.
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Application 10/815,588
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42 and 43 as anticipated by Corey (US 6,213,531 B1, iss. Apr. 10, 2001); 1
claims 1-3 and 14 as anticipated by St. Marie (US 5,127,697, iss. Jul. 7, 2
1992); claims 1, 2 and 8 as anticipated by Hodges (4,784,429, iss. Nov. 15, 3
1988); claims 1-3 and 12 as anticipated by Fillios (4,133,571, iss. Jan. 9, 4
1979); claims 7 and 13 as anticipated by Bradford (6,367,858 B1, iss. Apr. 9, 5
2002); claims 1 and 20 as anticipated by Anderson (6,302,475 B1, iss. Oct. 6
16, 2001). The Examiner also rejects claims 25, 36, and 44-46 under 35 7
U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. 8
§103(a) as unpatentable over Fillios; claims 44-46 under 35 U.S.C. § 102(b) 9
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as 10
unpatentable over Anderson; and claim 49 under 35 U.S.C. § 103(a) as 11
unpatentable over Anderson. Claims 24, 37, 47, 48, and 50 are allowed; 12
claims 51-55 are objected to; and claims 4-6, 15-19, 21-23, 26-29, and 38-41 13
are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).2 14
We REVERSE. 15
The only issues raised in the Appeal Brief concern the claim term 16
“bumper” in claim 1. App. Br. 3-11. Independent claim 1 recites, with 17
italics added for emphasis: 18
1. A passenger vehicle, including: 19
20
a body having a longitudinal axis; 21
22
an expansion portion connected to the body and 23
configured to move substantially along the longitudinal axis 24
between a retracted position wherein the body and the 25
expansion portion define a first volume of interior space, and an 26
extended position wherein the body and the expansion portion 27

2 By Advisory Action mailed May 1, 2007, the Examiner withdrew the
final rejection of claim 51. See App. Br. 1; Ans. 2.
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Application 10/815,588
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define a second volume of interior space, the second volume 1
being larger than the first volume; 2
3
a bumper coupled to the expansion portion such that 4
movement by the expansion portion between the retracted 5
position and the extended position causes the bumper to move 6
therewith; and 7
8
a first seat supported by the body. 9
10
Claims 2, 3, 7-8, 12-14, 20, 25, 36, 42-46, and 49 depend directly or 11
indirectly from claim 1. 12
Relying on Webster’s Ninth New Collegiate Dictionary (1990), the 13
Examiner construes the claim term “bumper” in claim 1 as “a device for 14
absorbing shock or preventing damage.” Ans. 4, 11. In applying this 15
construction to the cited prior art, the Examiner reasons that any structure 16
with the inherent capability to absorb shock and prevent damage is a 17
“bumper.” The Examiner’s analysis of Corey is representative. With 18
respect to Corey’s extension rear panel 43 for movable sleeper extension 40 19
(figure 3a), the Examiner finds as follows: 20
Clearly element 43 would serve to absorb shock to the rear 21
portion 40 and prevent damage to the expandable cabin portion. 22
Note for example, if a baseball or stone were accidentally 23
thrown at portion 40 and struck element 43, element 43 would 24
clearly absorb the shock of the ball or stone and protect the 25
overall structure 40 from damage. 26
Ans. 4, 11. The Examiner similarly finds that back wall 17 for glider 27
structure 9 (figure 1) of St. Marie, rear window seal 32 for movable end 28
section 26 (figure 1) of Hodges, exterior rear wall 30 for extendible section 29
16 (figure 2) of Fillios, tailgate assembly 32 for extension assembly 12 30
(figure 1D) of Bradford and lateral wall 66 for movable pod 62a, 62b (figure 31
5) of Anderson, all satisfy the “bumper” limitation. Id. at 5-8. 32
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The Appellants argue that “none of the cited references teaches a 1
bumper coupled to the expansion portion for movement therewith.” App. 2
Br. 3. More specifically, the Appellants contend that the “bumper” 3
limitation as construed by one of ordinary skill in the art does not encompass 4
the back wall or tailgate of an expansion portion, or any similar structure. 5
Id. at 7. The Appellants additionally argue that the Examiner errs by 6
applying the term “bumper” to “structure that a bumper would be placed to 7
protect.” Id. at 10. 8
During examination of a patent application, pending claims are given 9
their broadest reasonable construction consistent with the specification. In 10
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In 11
construing claims, our reviewing court has instructed that: 12
[W]e search for the ordinary and customary meaning of a claim 13
term to a person of ordinary skill in the art. We determine this 14
meaning by looking first at intrinsic evidence such as 15
surrounding claim language, the specification, the prosecution 16
history, and also at extrinsic evidence, which may include 17
expert testimony and dictionaries. 18
L.B. Plastics, Inc. v. Amerimax Home Products Inc., 499 F.3d 1303, 1308 19
(Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314-19 20
(Fed. Cir. 2005) (en banc)). 21
The Examiner’s construction of the claim term “bumper” to include 22
elements that also form part of the expansion portion is unreasonably broad 23
in light of the surrounding claim language. As recited in claim 1, the “body” 24
and the “expansion portion” define “a first volume” and “a second volume” 25
of the “interior space” of the vehicle, and the bumper is “coupled” to the 26
expansion portion so that the two can move together between a “retracted 27
position” and an “expanded position.” Construed in light of the surrounding 28
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claim language, the “bumper” is a structurally distinct device from the 1
“expansion portion” that forms a “volume of interior space” in conjunction 2
with the body. See ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 3
(Fed. Cir. 2003) (“While certain terms may be at the center of the claim 4
construction debate, the context of the surrounding words of the claim also 5
must be considered....”); In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) 6
(where an apparatus claim recites two elements as separate, the two elements 7
cannot read on a single component of an allegedly anticipatory structure). 8
Thus, in addition to having the capacity to absorb shock and to prevent 9
damage, the “bumper” of claim 1 is structurally distinct from the “expansion 10
portion,” which in conjunction with the “body” defines a “volume of interior 11
space” of the vehicle. 12
Consistent with this construction, Appellants’ Specification describes 13
“bumper portion 54” coupled to expansion portion 12 so as to move with 14
expansion portion 12 between a retracted position and an expanded position. 15
Spec. 5-6, figs. 1-4. As shown in Figures 1-4, bumper portion 54 is 16
structurally distinct from the windows, doors, and walls that define the 17
volume of interior space of expansion portion 12.3 18
None of the wall-like structures identified as bumpers by the 19
Examiner in Corey, St. Marie, Fillios, Bradford or Anderson is structurally 20
distinct from the expansion portion because each of these elements forms 21

3 An ordinary, customary meaning of “volume” includes “[a] measure of the
amount of space that is enclosed by a closed surface in Euclidean 3-space.
For example, the volume of a cube having edges of length e is e3.” See
Academy Press Dictionary of Science and Technology (1996). This meaning
is consistent with Appellants’ Specification, which discloses that the body
and expansion portion define a first volume of enclosed interior space in a
retracted position (see Figs. 1, 2, 6, 13, 15) and a larger second volume of
enclosed interior space in an extended position (see Figs. 3-5, 7, 9-12, 14).
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part of the structure of the expansion portion that defines “a second volume 1
of interior space” in conjunction with the body when the expansion portion 2
is in the extended position, and thus none of those structures can also satisfy 3
the “bumper” limitation as properly construed to be an element that is 4
“coupled to the expansion portion.” Corey’s rear panel 43 defines the 5
volume of the interior space of movable extension 40. Similarly, St. 6
Marie’s back wall 17 defines the volume of the interior space of glider 7
structure 9. Fillios’ rear wall 30 defines the volume of the interior space of 8
extendible section 16. Bradford’s tailgate assembly 32 defines the volume 9
of the interior space of extension assembly 12. Finally, Anderson’s lateral 10
wall 66 defines the volume of the interior space of movable pod 62a, 62b. 11
Accordingly, we cannot sustain the rejection of claims 1-3, 7, 12, 13, 12
20, 25, 42 and 43 as anticipated by Corey; claims 1-3 and 14 as anticipated 13
by St. Marie; claims 1-3 and 12 as anticipated by Fillios; claims 7 and 13 as 14
anticipated by Bradford; claims 1 and 20 as anticipated by Anderson; 15
claims 25, 36, and 44-46 as anticipated by or, in the alternative, as 16
unpatentable for obviousness over Fillios; claims 44-46 as anticipated by or, 17
in the alternative, as unpatentable for obviousness over Anderson; or claim 18
49 as unpatentable for obviousness over Anderson. 19
With respect to the rejection of claims 1, 2 and 8 as anticipated by 20
Hodges, the Examiner finds that Hodges’ window seal 32 “would serve to 21
absorb at least some shock and prevent at least some damage to the 22
surrounding structure of the device.” Ans. 6. Although the Appellants have 23
24
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not persuaded us of error in that finding, we cannot find by a preponderance 1
of the evidence that Hodges’ rear window seal 32 satisfies the “bumper” 2
limitation as properly construed, because it does not appear to be 3
structurally distinct from rear window 38 and the other structure that 4
defines the volume of the interior space of Hodges’ movable end section 26 5
(expansion portion). Figure 1 of Hodges describes the window seal as 6
bordering the trailing edge of the rear window 38, where it serves to 7
maintain and seal the window pane 49 in the closed position. Col. 8, ll. 33-8
38. As so described, the rear window seal 32 is an integral part of the 9
structure that defines the enclosed space. 10
Accordingly, we cannot sustain the rejection of claims 1-2 and 8 as 11
anticipated by Hodges. 12
13
DECISION 14
We REVERSE the Examiner’s decision rejecting claims 1-3, 7, 8, 12-15
14, 20, 25, 36, 42-46, and 49. 16
17
REVERSED 18
19
20
mls 21