Ex Parte Tindall

Patent Trial and Appeal Board

Sep 29, 2017

13500225 (P.T.A.B. Sep. 29, 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.
13/500,225 04/04/2012 Leslie Tindall 713-2422 (22907) 3536
33712 7590 10/03/2017
HAUPTMAN HAM, LLP (ITW)
2318 Mill Rd
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
HURLEY, KEVIN
ART UNIT PAPER NUMBER
3611
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
itw @ ipfirm. com
docketing @ ipfirm. com
pair_lhhb @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LESLIE TINDALL
Appeal 2015-006970
Application 13/500,225
Technology Center 3600
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
SEAN P. O’HANLON, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Leslie Tindall (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision to reject (1) claims 1—30 under 35 U.S.C. § 112, second
paragraph, for lack of essential structural elements; (2) claims 1—14 under 35
U.S.C. § 112, second paragraph, for indefiniteness; (3) claim 28 under 35
U.S.C. § 112, fourth paragraph, for failure to further limit the subject matter
of claim 22; and (4) claims 1, 2, 4—9, 14—16, and 18—23 under 35 U.S.C.
1 The Examiner indicates that “[cjlaims 3, 10-13, 17, 24—27, 29-30 would be
allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or
35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in [the] Office action and
to include all of the limitations of the base claim and any intervening claims.”
Final Act. 5 (dated Mar. 13, 2014).
Appeal 2015-0006970
Application 13/500,225
§ 102(b) as anticipated by Harkcom (US 6,273,449 Bl, iss. Aug. 14, 2001).
An Oral Hearing in accordance with 37 C.F.R. § 41.47 was held on
September 6, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a latching device for
maintaining a hinged tow bar on a towable vehicle in a towing position.”
Spec. 1:3—5, Figs. 1, 2, 8b, 8c. Claims 1 and 15 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A latch arrangement for a tow bar, the tow bar being
attached to a vehicle via a hinge, and pivotable about an axis from
a towing position to a stowed position, the latch arrangement
comprising:
a primary latch for holding the tow bar in the stowed
position;
a secondary latch for holding the primary latch in the
latched position.
ANALYSIS
Lack of Essential Structural Elements
Claims 1—30
The Examiner determines that (1) “[cjlaims 1 and 15 recite a primary
and a secondary latch but fail to recite any connection between the two”; (2)
“[cjlaims 8 and 22 recite a tow bar arrangement and a latch arrangement but
fail to recite any actual connection between the two”; (3) “[cjlaims 9, 11, 23,
and 25 recite a first interlock and a second interlock but fail to recite any
connection to the previously recite[d] structure”; (4) “[cjlaims 13 and 27
recite a brake interlock but fail to recite any connection to the previously
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Application 13/500,225
recite[d] structure”; and (5) “[cjlaims 14 and 24 recite a mobile power unit
but fail to recite any connection to the previously recite[d] structure.” Final
Act. 2—3.
Each of claims 1 and 15 requires the secondary latch to hold the
primary latch in the latched position. See Appeal Br. 41, 42, Claims App.2
We agree with Appellant that “[t]he cooperative relationship,” which is
supported by the “functional language” of the claims, “is that the secondary
latch holds the primary latch in the latched position.” Id. at 14; see also In
re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not
indefiniteness.”).
Claim 8 recites that the tow bar arrangement includes “a latch
arrangement according to claim 1.” Appeal Br. 41—42, Claims App. In the
same way, claim 22 recites that the tow bar arrangement includes “the
device of claim 15.” Appeal Br. 43, Claims App. Both claims 1 and 15
require the primary latch of the latch arrangement to hold the tow bar in the
stowed position. See Appeal Br. 41—42, Claims App.3 Similar to that
discussed above, the “cooperative relationship,” which is supported by the
“functional language” of the claims, is that the tow bar of claim 8 or claim
22 is held in the stowed position by the primary latch of claim 1 or claim 15,
respectively. See id. at 17.
2 We note that “the primary latch in the latched position” of claims 1 and 15
lacks antecedent basis. See Appeal Br. 41-42, Claims App. (emphasis added).
We interpret the primary latch to include “latched” and “unlatched/released”
positions. See Spec. 3:26—27; 5:22—24; 7:24—25.
3 We interpret the “tow bar” described in claim 8 or claim 22 to be the “tow
bar” that is held in the stowed position by the primary latch of claim 1 or claim
15, respectively. See Appeal Br. 41—42, Claims App.
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Appeal 2015-0006970
Application 13/500,225
Claim 9 depends from claim 8, which includes the latch arrangement
of claim 1. Appeal Br. 41—42, Claims App. Claim 23 depends from claim
22, which includes the latch arrangement of claim 15. Id. at 43, Claims App.
Each of claims 9 and 23 requires a first interlock “to activate the secondary
latch when a first condition is satisfied.” Id. at 42, 43, Claims App. The
“cooperative relationship,” which is supported by the “functional language”
of the claims, is that the first interlock of claim 9 or claim 23 activates the
secondary latch described in claims 1 or 15, respectively, when a first
condition is satisfied. Id. at 16.
Claim 11 depends from claim 10, claim 10 depends from claim 9, and
claim 9 depends from claim 8. Appeal Br. 41—42, Claims App. Claim 25
depends from claim 24, claim 24 depends from claim 23, and claim 23
depends from claim 22. Id. at 42 44, Claims App. Each of claims 11 and
25 requires a second interlock “to prevent the output of power from the
mobile power unit when the tow bar is not in the stowed position.” Id. at 42,
44 Claims App. The “cooperative relationship,” which is supported by the
“functional language” of the claims, is that the second interlock of claim 11
or claim 25 prevents the output of power from the mobile power unit of
claim 10 or claim 24, respectively, when the tow bar of claim 8 or claim 22,
respectively, is not in the stowed position. Id. at 16.
Claim 13 depends from claim 8, and claim 27 depends from claim 22.
Appeal Br. 41—44, Claims App. Each of claims 13 and 27 requires a brake
interlock “to apply a brake to the wheels of the vehicle when the tow bar is
in the stowed position.” Id. at 42, 44, Claims App. The “cooperative
relationship,” which is supported by the “functional language” of the claims,
is that the brake interlock of claim 13 or claim 27 applies a brake to the
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Appeal 2015-0006970
Application 13/500,225
wheels of the vehicle when the tow bar of claim 8 or claim 22, respectively,
is in the stowed position. See id. at 17.
Claim 14 recites “[a] mobile power unit, having a tow bar
arrangement according to claim 8.” Appeal Br. 42, Claims App.4 The
“cooperative relationship” being that the mobile power unit includes the tow
bar arrangement of claim 8 and the latch arrangement of claim 1. See id.
at 17.
Claim 24 recites “[a]n apparatus, comprising: a mobile power unit;
and the tow bar arrangement of claim 22 attached to the mobile power unit.”
Appeal Br. 42, Claims App.5 The “cooperative relationship” being that the
apparatus includes a mobile power unit and the tow bar arrangement of
claim 22 attached to the mobile power unit. See id. at 17. The apparatus of
claim 24 further includes the latch arrangement of claim 15. See id.; see
also Appeal Br. 42-44, Claims App.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claims 1—30 under 35U.S.C. § 112, second
paragraph, for lack of essential structural elements.
4 We interpret the “tow bar” described in claim 8 to be the “tow bar” that is
held in the stowed position by the primary latch of claim 1. See Appeal Br.
41— 42, Claims App.
5 We interpret the “tow bar” described in claim 22 to be the “tow bar” that is
held in the stowed position by the primary latch of claim 15. See Appeal Br.
42- 44, Claims App.
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Appeal 2015-0006970
Application 13/500,225
Indefiniteness
Claims 1—14
The Examiner determines that “[i]n claim 1 it is unclear whether
[Appellant] is claiming the subcombination of a first and second latch or the
combination of the latches with a tow bar.” Final Act. 3. According to the
Examiner “[t]he preamble recites the latch arrangement is ‘for’ a tow bar
pivotally attached to a vehicle but does not clearly recite the tow bar.” Id.
Appellant “states on the record that claim 1 does not require the tow
bar.” Appeal Br. 23. We agree with Appellant that “[t]he scope of claim 1
is clear” in that “[i]t encompasses the latch arrangement” and “[i]t does not
require a tow bar.” Id. As such, we agree with Appellant that “[t]he person
of ordinary skill in the art would understand the scope of claim 1.” Id.
Accordingly, we do not sustain the Examiner’s rejection of claims 1—
14 under 35 U.S.C. § 112, second paragraph, for indefiniteness.
Failure to Further Limit the Claimed Subject Matter
Claim 28
Claim 28 recites “[a] mobile power unit, including the tow bar
arrangement according to claim 22.” Appeal Br. 44, Claims App.6 Here, we
agree with Appellant that “claim 28 further limits claim 22 in that to fall
6 We interpret the “tow bar” described in claim 22 to be the “tow bar” that is
held in the stowed position by the primary latch of claim 15. See Appeal Br.
42-44, Claims App.
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Application 13/500,225
within the scope of claim 28, there must be a mobile power unit, whereas
such a feature is not required to fall within the scope of claim 22.” Id. at 25.
Accordingly, we do not sustain the Examiner’s rejection of claim 28
under 35U.S.C. § 112, fourth paragraph, for failure to further limit the
subject matter of claim 22.
Anticipation
Claims 1, 2, 4—9, 14—16, and 18—23
Independent claim 1 is directed a latch arrangement including, inter
alia, “a secondary latch for holding the primary latch in the latched
position.” Appeal Br. 31, Claims App.7 The Examiner finds that
Harkcom’s ‘primary latch’ (27) holds the tow bar (40) in the
stowed position (i.e. when the tow bar is in the ‘lateral transport
mode 60’) at the same time as the secondary latch (40) tow bar
is in the stowed position (i.e. when the tow bar is in the ‘lateral
transport mode 60’).
Ans. 7 (citing Harkcom 4:48—6:21); see also Final Act. 4.
Appellant contends that “[cjlaim 1 recites a primary latch and ‘a
secondary latch for holding the primary latch in the latched position. ’
Nowhere does the Examiner identify where Harkcom discloses this feature.”
Appeal Br. 26. Appellant further contends that the Examiner “asserts that
element 27 of Harkcom corresponds to the recited primary latch and that
element 40 corresponds to the recited secondary latch.” Appeal Br. 37; see
1 We note that “the primary latch in the latched position” of claims 1 and 15
lacks antecedent basis. See Appeal Br. 41—42, Claims App. (emphasis added).
We interpret the primary latch to include “latched” and “unlatched/released”
positions. See Spec. 3:26—27; 5:22—24; 7:24—25.
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Appeal 2015-0006970
Application 13/500,225
also id. at 26. However, according to Appellant, “the figures [of Harkcom]
show no discemable interaction between elements 27 and 40, whether the
interaction be electrical or mechanical.” Appeal Br. 37; see also id. at 27.
As an initial matter, we agree with Appellant that the secondary latch
“for holding the primary latch in the latched position,” as recited in claim 1,
is a functional claim limitation, not a statement of intended use. See Appeal
Br. 6, 14, 29-34; see also Final Act. 5; Ans. 7.
The law governing functional limitations is well-settled:
[Wjhere the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty of the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless, before an
applicant can be put to this burdensome task, an examiner must provide
sufficient evidence or scientific reasoning to establish the reasonableness of
the examiner’s belief that the functional limitation is an inherent
characteristic of the prior art. The fact that a certain result or characteristic
may occur or be present in the prior art is not sufficient to establish the
inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534
(Fed. Cir. 1993).
Harkcom discloses that (1) lateral transport latch 27 “affixes the
tongue plate 23 to the free plate 34” (Harkcom 4:48-49); (2) “tongue 7 and
tongue plate 23 are affixed to the free plate 34 by using the lateral transport
latch 27 to insert the lateral transport pin 29 into the first pin hole 36 in the
free plate” (Harkcom 5:12—15); and (3) “[t]o safely secure the tongue 7 to
the trailframe 14 while in the lateral transport mode 60, a tongue latch
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Appeal 2015-0006970
Application 13/500,225
mechanism 40 is used. Part of the mechanism 40 is on the tongue 7 and part
of the mechanism is on the right side of the trailframe 14” (Harkcom 5:60—
63, Fig. 2).
Based on Harkcom’s disclosure, we agree with the Examiner that “the
secondary latch [(tongue latch mechanism 40)] serves to help retain the tow
bar [(tongue 7)] in the stowed position/lateral transport mode position.”
Ans. 7. However, the Examiner fails to provide sufficient evidence or
technical reasoning to establish that the secondary latch (tongue latch
mechanism 40) of Harkcom is used in any way to hold the primary latch
(lateral transport latch 27) in the latched position. See id. at 7—8.
Additionally, the Examiner does not direct us to any discussion in
Harkcom that the “latched position” of the primary latch (lateral transport
latch 27) “is dependent on the tow bar [7] staying in the stowed / lateral
transport mode position [i.e.,] if the tow bar [7] was somehow forced out of
the stowed position / lateral transport mode position, then the primary latch
[27] would necessarily no longer be in its latched position,” such that the
secondary latch (tongue latch mechanism 40) “at a minimum [would
provide] an extra degree of assistance in keeping the primary latch [27] in
the [latched] position.” See Ans. 7—8 (emphasis added). “Inherency . . .
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.’”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal quotations and
citations omitted). As such, we agree with Appellants that Harkcom fails to
disclose “expressly or inherently, that. . . secondary latch 40 is for holding
. . . primary latch 27 in the latched position.” Appeal Br. 39 (emphasis
omitted).
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Appeal 2015-0006970
Application 13/500,225
Independent claim 15 is directed to a device including a latch
arrangement having “a secondary latch configured to hold the primary latch
in the latched position.” See Appeal Br. 42, Claims App. The Examiner
relies on the same unsupported findings for claim 15 as those discussed
above for claim 1. See Final Act. 4—5. Thus, the Examiner’s findings with
respect to Harkcom are deficient for claim 15 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of independent claims 1 and 15 and their respective
dependent claims 2, 4—9, 14, 16, and 18—23 under 35 U.S.C. § 102(b) as
anticipated by Harkcom.
DECISION
We REVERSE the decision of the Examiner to reject claims 1—30
under 35 U.S.C. § 112, second paragraph, for lack of essential structural
elements.
We REVERSE the decision of the Examiner to reject claims 1—14
under 35 U.S.C. § 112, second paragraph, for indefmiteness.
We REVERSE the decision of the Examiner to reject claim 28 under
35 U.S.C. § 112, fourth paragraph, for failure to further limit the subject
matter of claim 22.
We REVERSE the decision of the Examiner to reject claims 1, 2, 4—9,
14—16, and 18—23 under 35 U.S.C. § 102(b) as anticipated by Harkcom.
REVERSED
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