Ex Parte Morton

Patent Trial and Appeal Board

Mar 14, 2013

11678139 (P.T.A.B. Mar. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RAYMOND BRUCE MORTON
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Appeal 2011-001043
Application 11/678,139
Technology Center 3600
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Before CHARLES F. WARREN, JEFFREY T. SMITH and
BRADFORD E. KILE, Administrative Patent Judges.

KILE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/678,139

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 19. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention is directed to “mud flaps and devices for
securing mud flaps to wheeled vehicles.” Spec. [0002].
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
l. A mounting assembly for a mud flap of a
vehicle comprising:

a mounting bracket for securing to a vehicle;

a single squeeze member having at least one
aperture formed therein;

at least one wedge member, each wedge member
having a single wedge body with a transverse
dimension that increases along the length of the
wedge body; and

at least one wedge receiving member that is
coupled to the mounting bracket and projects
through the at least one aperture of the squeeze
member, each wedge receiving member having a
wedge receiving portion configured for receiving
the single wedge body of one of the at least one
wedge member; and wherein

the single wedge body forces the squeeze member
against the mounting bracket when the wedge
body is received within the wedge receiving
portion of the wedge receiving member without
requiring a further wedging member being
received within the wedge receiving portion or
bending of the wedge body so that the mud flap
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positioned between mounting bracket and squeeze
member is frictionally held therebetween.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Tillinghast US 3,158,386 Nov. 24, 1964
Gostling US 3,707,304 Dec. 26, 1972
Monhollen US 6,186,527 B1 Feb. 13, 2001
Haynes US 7,226,086 B2 Jun. 5, 2007

Appellant, at App. Br. 7, requests review of the following rejections
from the Examiner’s final office action:
I. Claims 1, 7, and 13 stand rejected under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description requirement.
II. Claims 1-15, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Monhollen, Haynes and Gostling.
III. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Monhollen, Haynes, Gostling and Tillinghast.

OPINION

Rejection I
The Examiner rejected claims 1, 7, and 131 under §112, first
paragraph, for failing to provide support for the claim limitation “the wedge
body is received within the wedge receiving portion of the wedge receiving
member without . . . bending of the wedge body.” Ans. 4. The Examiner

1 Appellant argues claims 1, 7, and 13 as a group with respect to the
“written description” requirement of 35 U.S.C. § 112 ¶ (1). App. Br. 7-10.
We select independent claim 1 as a representative claim. See 37 C.F.R. §
41.37(c)(1)(vii)(2011).
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found that the Specification disclosure did not contain a written description
in such a way as to reasonably convey to one skilled in the relevant art that
the appellant had possession of the claimed invention at the time the
application was filed. Id. at 3-4.
Appellant points out that the original disclosure does not disclose any
bending of the wedge body. App. Br. 9. “Nowhere is it described in
paragraph 0019 or any other place within Applicant’s specification that any
bending of the wedge body is carried out.” Id.
The Examiner has failed to adequately address Appellant’s response
to the rejection. The Examiner has also failed to adequately explain his
position why the claimed subject matter fails to satisfied the written
description requirement of the statute. Indeed, the Examiner has the burden
of establishing that, as a matter of fact, the Specification would not have
reasonably conveyed to those skilled in the art that Appellant was in
possession of the claimed mounting assembly specified in claim 1 at the
time the present Application was filed as required by § 112, first paragraph,
written description requirement. In re Alton, 76 F.3d 1168, 1172, 1175-76
(Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262-64 (CCPA
1976)).
Accordingly, in the absence of prima facie case, we REVERSE the
Examiner’s rejection of claims 1, 7 and 13 as failing to satisfy the written
description requirement of 35 U.S.C. §112 first paragraph.

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Rejection II
The Examiner rejected claims 1-15, 18 and 192 under 35 U.S.C.
§ 103(a) as unpatentable over Monhollen in view of Haynes and Gostling.
The Examiner found that Monhollen disclosed the claimed invention except
that Monhollen did not disclose “a single squeeze member or a wedge
member.” Ans. 4.
The Examiner found that Hayes teaches a mounting assembly for a
mud flap, which comprises a single squeeze member and only two fastening
members. Id. The Examiner found that in light of the teaching of Haynes
one of ordinary skill would have realized that converting the three separate
squeeze attachment members of Monhollen into a single squeeze member
would simplify manufacture and assembly. Id. at 6-7.
Appellant’s assertions that the single pressure plate of Hayes would
not be a suitable substitute for the multiple (three) separate pressure plates of
Monhollen misses the Examiner’s point. App. Br. 13-17. The Examiner is
using Hayes not as a substitute but as a teaching that converting the three
pressure pieces of Monhollen into one Monhollen pressure piece, in view of
the Hayes use of a one piece pressure plate, would be an obvious variation of
the Monhollen disclosure. Moreover, Monhollen specifically invites such a
conversion as an option at col.4, ll. 2-4. (“Of course, more or fewer
coupling shoes may be used depending upon the application; . . . “.)

2 Appellant argues claims 1-15, 18, and 19 as a group with respect to the 35
U.S.C. § 103(a) rejection. We select claim 1 as the representative claim.
See 37 C.F.R. § 41.37(c)(1)(vii).
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With respect to the specific attachment mechanism the Examiner
found that Gostling teaches a mounting assembly comprising a wedge
member. Ans. 5. The Examiner found that:
It would have been obvious to one of ordinary skill
in the art at the time the invention was made to
substitute the bolt/nut fastening means (40) taught
by Monhollen et al. with the well-known
bolt/wedge fastening means taught by Gostling to
provide for quicker disassembly of the mud flap
mounting assembly.
Id.

Appellant asserts that prior to Applicant’s invention all mud flap
assemblies used threaded fasteners, threaded fasteners provide isolated
pressure points, and that the time to install and reinstall mud flaps with
Appellant’s invention is shorter than with threaded fasteners. App. Br. 18-
19. Further Appellant asserts that the Examiner has relied on art that is well
outside the scope of Appellant’s invention. Id. at 19.
With respect to the art being outside the scope of Appellant’s
invention we agree that a reference qualifies as prior art only when the prior
art is analogous to the claimed invention. In re Klein, 647 F.3d 1342, 1348
(Fed. Cir. 2011). A reference is analogous prior art, however, if (1) the art
is in the same field of endeavor regardless of the problem addressed or (2) if
not within the same field of endeavor is reasonably pertinent to a particular
problem addressed by the inventor. In re Klein, 647 F.3d at 1348 (citing In
re Bigio 381 F. 3d 1320, 1325 (Fed. Cir. 2004). Here although the Gostling
mechanical fastner structure of a pin 8 with a fastening wedge that extends
through the pin is disclosed in a scaffolding art and thus is not within the
same field of endeavor as a mud flap the Gostling disclosure is analogous in
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the sense of the second point of being pertinent to the same problem
addressed by the inventor of coupling to mechanical members together.
The Examiner found that:
[S]imply substituting one known fastener for
another involves only routine skill in the art. * * *
The advantages of the wedge members over
threaded fasteners (i.e. speed of assembly,
resistance to corrosion) are well known and would
have been appreciated by those in the mud flap art.

Ans. 7 - citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).

We agree with the Examiner that substituting one known fastener for
another to produce an expected result would have been obvious to one of
ordinary skill in the art. Accordingly, the Examiner’s rejection of claims 1-
15, 18, and 19 is AFFIRMED.

Rejection III
Appellant identifies under a separate heading the Examiner’s
rejection of claims 16 and 17. App. Br. 22. Appellant does not, however,
separately argue the patentability of claims 16 and 17, and therefore, those
claims fall with our decision in Section II affirming the Examiner’s rejection
of claims 1-15, 18 and 19. Accordingly, the Examiner’s rejection of claims
16 and 17 is AFFIRMED.

ORDER
The rejection of claims 1, 7, and 13 under 35 U.S.C. § 112 first
paragraph is REVERSED.
The rejection of claims 1-19 under 35 U.S.C. § 103(a) is AFFIRMED.
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Application 11/678,139

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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv)(2011).

AFFIRMED-IN-PART

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