Ex Parte Padilla et al

Patent Trial and Appeal Board

Aug 14, 2018

12928439 (P.T.A.B. Aug. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/928,439 12/10/2010
7590 08/14/2018
Kevin Wilenstein
Southwest Intellectual Property Services, LLC
9400 Holly A venue NE, Building 4
Albuquerque, NM 87122
FIRST NAMED INVENTOR
Randy M. Padilla
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.
PADILLAOOl 3453
EXAMINER
YEAGLEY, DANIELS
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
08/14/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDY M. PADILLA and ABEL S. ESQUIBEL
Appeal2017-009257 1
Application 12/928,4392
Technology Center 3600
Before BIBHU R. MOHANTY, MEREDITH C. PETRA VICK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1, 3, 4, 6, 7, 10, 11, and 14--18. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Jan. 30,
2015), the Reply Brief ("Reply Br.," filed Jan. 20, 2016), the Examiner's
Answer ("Ans.," mailed Apr. 29, 2015), and the Final Office Action ("Final
Act.," mailed July 18, 2014).
2 According to Appellants, "Randy M. Padilla and Abel S. Esquibel are the
real parties in interest." Appeal Br. 2.
Appeal2017-009257
Application 12/928,439
BACKGROUND
According to Appellants, "[t]he present invention is generally directed
towards an articulated tow hitch for a vehicle which is adapted to
mechanically couple a vehicle to a towable trailer or like device's towing
assembly." Spec. ,r 2.
CLAIMS
Claims 1, 10, and 14 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A height adjustable articulating tow hitch apparatus
compnsmg
an upper housing unit adapted for coupling to a vehicle's
receiver by a locking means,
an elongated tongue member having a near tongue portion
disposed near the receiver, a middle tongue portion and a far
tongue portion, the tongue member having one or more tongue
holes formed therethrough along a longitudinal center path, the
middle tongue portion adapted to provide a height differential
adjustment between the near tongue portion relative to the far
tongue portion, the near tongue portion being in a first elongated
horizontal plane and the far tongue portion being in a second
elongated horizontal plane, the first elongated horizontal plane
being in a different elongated horizontal plane relative to the
second elongated horizontal plane,
a lower housing unit directly attached to the upper housing
unit, the lower housing unit having a near end near the receiver
and a distal end further from the receiver, the lower housing unit
having a hollow portion formed therethrough, the hollow portion
having a generally tapered interior wall structure between a
single pair of opposite interior walls, the hollow portion's
horizontal width at the distal end defining a predetermined
horizontal articulation angle, and
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Application 12/928,439
a lock and release mechanism extending through the upper
housing, the lower housing, and engagable with any tongue hole
to achieve a locked or unlocked position,
the tongue member adapted to be slideably extendable,
slideably retractable and slideably articulated within the lower
housing's hollow portion, the tongue member's near tongue
portion having a stop mechanism adapted to prevent the tongue
member from being removed from the lower housing's hollow
portion.
Appeal Br. 27-28.
REJECTIONS
1. The Examiner rejects claim 18 under 3 5 U.S. C. § 112, first paragraph, as
failing to comply with the enablement requirement.
2. The Examiner rejects claims 1, 4, 7, 10, 11, 14, 15, and 17 under 35
U.S.C. § I02(b) as anticipated by Slatten. 3
3. The Examiner rejects claims 1 and 6 under 35 U.S.C. § I03(a) as
unpatentable over Slatten in view of Albrecht. 4
4. The Examiner rejects claims 1, 3, and 14--16 under 35 U.S.C. § I03(a) as
unpatentable over Slatten in view of Graham. 5
DISCUSSION
Enablement
With respect to claim 18, the Examiner finds:
The specification does not enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to
make and use the invention commensurate in scope with these
claims. Where the tow hitch apparatus assembly has a different
3 Slatten, US 6,328,326 Bl, iss. Dec. 11, 2001.
4 Albrecht et al., US 5,098,146, iss. Mar. 24, 1992.
5 Graham, US 2,873,982, iss. Feb. 17, 1959.
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Application 12/928,439
height differential adjustment between a near tongue portion
relative to a far tongue portion which is either increasing or
decreasing and at the same time have a height differential
adjustment between the near tongue portion relative to the far
tongue portion that is approximately equal.
Final Act. 3.
With respect to claim 18, Appellants state:
The Appellants attempted to cancel Claim 18 by amendment in
their Response to Final Office Action ( see Response to Final
Office Action, pp. 6-7), but the Examiner did not enter any of
Appellants' proposed amendments. Nevertheless, Claim 18 is
not a part of this Appeal Brief for the purposes of appeal.
Appeal Br. 3, n. 1.
Thus, Appellants do not raise arguments with respect to this rejection.
Accordingly, we summarily sustain the rejection of claim 18.
Anticipation
With respect to independent claims 1, 10, and 14, the Examiner finds
that Slatten discloses a tow hitch apparatus as claimed. Final Act. 4--5.
More specifically, in relevant part, the Examiner finds that Slatten discloses:
The tongue member is clearly shown in figure 12 having a near
tongue portion with a stop mechanism 32, wherein the near
tongue portion has an elongated horizontal plane that is in a
different elongated horizontal plane relative to the elongated
horizontal plane of the far tongue portion 38 of the tongue
member.
Id. at 4; see also id. at 5 (citing Slatten Figs. 4, 12, 15). Further, in response
to Appellants' arguments, the Examiner finds:
Slatten clearly shows and describes the claimed elements
as broadly recited by Appellants' claims and clearly anticipates
an elongated tongue member as seen for example by figure 12
and as further defined by Slatten; in at least column 10, line 55
through line 58 because these portions of Slatten teach that guide
member 50 and tongue 14 are integral elements with one another.
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Thus, the claims are anticipated since the far end (guide portion
50) is at a lower plane relative to the near end (14) of the tongue.
In summary, since the tongue and guide are an integral structure
they meet the claims in that this integral overall tongue structure
is in two different horizontal planes as claimed.
Ans. 10.
Appellants argue:
the Slatten patent fails to disclose a tongue portion having a near
tongue portion being in a first elongated horizontal plane and the
far tongue portion being in a second elongated horizontal plane,
the first elongated horizontal plane being in a different elongated
horizontal plane relative to the second elongated horizontal plane
as recited in the present claims.
Appeal Br. 16.
We are not persuaded of error. Specifically, we find that Appellants
have not clearly articulated what the proposed error is in the rejection of
these claims. To the extent that Appellants are arguing that the two portions
of Slatten's device relied upon by the Examiner may not be considered a
tongue portion as claimed, we are not persuaded. Appellants do not explain
why the claimed tongue does not read on Slatten's two-piece arrangement.
Further, we find that the Examiner's unrebutted findings, in particular those
presented in the passage from the Answer quoted above, are supported by a
preponderance of the evidence before us. More specifically, we agree with
the Examiner that Slatten discloses a device that includes a tongue with
portions on different horizontal planes as claimed, and without further
explanation, we are not persuaded that these portions may not together be
considered a tongue member as claimed. Accordingly, we sustain the
rejection of independent claims 1, 10, and 14. We also sustain the rejection
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of claims 4, 7, 11, 15, and 17, for which Appellants do not raise separate
arguments.
Obviousness over Slatten and Albrect
With respect to claims 1 and 6, the Examiner relies on Slatten as
disclosing the elements of claim 1 as with the anticipation rejection,
including the claimed stop mechanism. See Final Act. 6. The Examiner
acknowledges that Slatten does not include "a stop mechanism having a
countersunk type of stop fastening means to secure the stop device" as
required by claim 6. Id. However, the Examiner finds that Albrecht
discloses "a countersunk type of fastening means to secure [a] stop device to
[a] slideable member," and the Examiner concludes that it would have been
obvious to modify Slatten with a countersunk stop assembly as described by
Albrecht. Id.at 6-7.
As discussed below, we are not persuaded of error by Appellants'
arguments.
Appellants first argue that Slatten "does not teach, mention or suggest
any other configuration of tongue member 14 other than it being flat," and
thus, Slatten "cannot be said to obviate either Claim 1 or 6." Appeal Br. 19.
We are not persuaded by this argument for the reasons discussed with
respect to the anticipation rejection of claim 1.
Next, Appellants argue that the rejection is based on hindsight
reasoning. See id. However, Appellants do not provide any specific
explanation with respect to this allegation, and we are not persuaded that the
rejection relies on "knowledge gleaned only from [Appellants'] disclosure."
In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971).
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Appellants also argue that Slatten "teaches away from the recited
claims" because "there is absolutely no suggestion in the Slatten patent that
one of ordinary skill in the art would know or be motivated to look to the
movable floors art to combine these references, in order just to obtain a
countersink assembly." Appeal Br. 20. However, Appellants do not explain
why a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by Appellants, in order
to show that Slatten teaches away from the claims. See In re Gurley, 27
F.3d 551, 53 (Fed. Cir. 1994).
Appellants further argue that the reasoning provided by the Examiner
is conclusory and that "the Examiner has not provided any clear and
convincing evidence of why a person of ordinary skill in the art of hitches
would tum to the art of movable floors in order to obtain a stop mechanism"
or identified "anywhere in the Slatten patent where there is a suggestion or
teaching for the need or use of a countersunk assembly." Appeal Br. 20-21.
We are not persuaded by this argument for the reasons provided by the
Examiner in the rejection and the Answer. See Final Act. 6-7; see also Ans.
12-13. In particular, the rejection indicates not only that the use of a
countersunk stop mechanism would have been an obvious design choice, but
the Examiner also explains at length why one of ordinary skill in the art
would have recognized that the use of a countersunk stop would have been
desirable. Final Act. 6-7. For example, the Examiner explains that a
countersunk stop would provide a flush assembly that prevents snagging and
the accumulation of dirt and debris around the stop means. Id. at 7. Further,
the Examiner explains that Albrecht's device "is used in a setting that
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provides a slidable member that can be slidably extended from and retracted
into its housing and similarly provided with a stop mechanism that prevents
the slidable member from being withdrawn from its housing beyond a limit
by the use of a stop." Ans. 12. We agree with the Examiner that one of
ordinary skill in the art would have recognized that the countersunk stop
device would be a suitable alternative stop device that provides the benefits
discussed, and we disagree with Appellants' indication that the reason for
the proposed combination must be expressly found in the art. See KSR Int 'l
Co. v. Teleflex, Inc., U.S. 398,418 (2007 ("the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.")
Based on the foregoing, we are not persuaded of error in the rejection
of claims 1 and 6 as obvious over Slatten and Albrecht. Accordingly, we
sustain this rejection.
Obviousness over Slatten and Graham
Appellants discuss claims 1, 3, and 14--16 together as a single group
with respect to this rejection. See Appeal Br. 21-24. We select claims 1 and
3 as representative of this group, and claims 14--16 fall therewith.
Claim 3 depends from claim 1 and further recites, "wherein the height
differential adjustment between the near tongue portion relative to the far
tongue portion is increasing." Appeal Br. 28. With respect to claim 3, the
Examiner finds that Slatten discloses the limitations of claim 1, and the
Examiner acknowledges that Slatten does not disclose the height differential
adjustment required by claim 3. Final Act. 8. However, the Examiner finds
Graham discloses a tongue member with a height differential that is
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increasing or decreasing depending on the orientation of the tongue member,
and the Examiner concludes that it would have been obvious to incorporate
such an increasing/decreasing height differential adjustment into Slatten's
tongue member. Id. at 8-10.
As discussed below, we are not persuaded of error by Appellants'
arguments regarding this rejection.
First, to the extent Appellants argue that Slatten teaches only a flat
tongue member, we are not persuaded of error for the reasons discussed
above with the respect to the anticipation rejection of claim 1. Specifically,
we are not persuaded that Slatten teaches only a flat tongue member.
Second, Appellants argue that "the Examiner fails to provide any
evidence that the Graham patent's tongue 'would have been a simple
obvious matter of design choice dependent upon user['s] preference and
intended use."' However, the Examiner provides specific reasons for why
one of ordinary skill would have found it obvious to incorporate a height
differential adjustment as in Graham into Slatten's device. Final Act. 9-10.
For example, the Examiner finds that it would have been obvious in order to
provide a tongue portion that could be rearranged to "provid[ e] further
height adjustments for the tongue member." Id. at 10. Further, we note that
the reason for the proposed combination need not be expressly found in the
art and the Examiner, as was done here, may rely on the knowledge of a
person of ordinary skill in the art to support the conclusion of obviousness.
Finally, Appellants argue that the rejection is based on impermissible
hindsight, that the "present invention is not inherently or expressly taught or
suggested" by Slatten, and Slatten teaches away. See Appeal Br. 23-24.
However, these argument appear to be premised on Appellants' assertion
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that Slatten teaches only a flat tongue, and thus, we are not persuaded of
error here for the same reasons discussed above.
Based on the foregoing, we are not persuaded of error with respect to
the rejection of claims 1 and 3 as obvious over Slatten and Graham.
Accordingly, we sustain the rejection of claims 1 and 3 here. We also
sustain the rejection of claims 14--16, which fall with claims 1 and 3, as
noted above.
CONCLUSION
We AFFIRM the rejections of claims 1, 3, 4, 6, 7, 10, 11, and 14--18.
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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