15492029 - (D) (P.T.A.B. Jul. 16, 2020)

LARRY VERBOWSKI

Patent Trials and Appeals BoardJul 16, 2020

15492029 - (D) (P.T.A.B. Jul. 16, 2020)

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. 15/492,029 04/20/2017 LARRY VERBOWSKI MSH-1057 7078 8131 7590 07/16/2020 MCKELLAR IP LAW, PLLC 784 SOUTH POSEYVILLE ROAD MIDLAND, MI 48640 EXAMINER WILHELM, TIMOTHY ART UNIT PAPER NUMBER 3616 MAIL DATE DELIVERY MODE 07/16/2020 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 LARRY VERBOWSKI Appeal 2020-001054 Application 15/492,029 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, JAMES A. WORTH, and TARA L. HUTCHINGS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–5. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as the inventor. Appeal Br. 2. Appeal 2020-001054 Application 15/492,029 2 STATEMENT OF THE CASE Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 1. Kit for suspension travel and increasing front and ground clearance of a vehicle, said kit comprising: (i.) at least one strut mount extender; (ii.) at least one shim, (iii.) an adjustable relocation bracket and, (iv.) instructions with regard to using said at least one strut mount extender, or said at least one shim, or a combination of at least one strut mount extender and said at least one shim, to provide lift to said vehicle ranging from 0.1 inches to 3.6 inches. Rejections Claims 1 and 2 are rejected under 35 U.S.C. § 103 as being unpatentable over Pankau (US 6,796,569 B2, iss. Sept. 28, 2004), Carlson (US 7,144,021 B2, iss. Dec. 5, 2006), and Spivey et al. (US 5,967,536, iss. Oct. 19, 1999) (“Spivey”). Claims 3–5 are rejected under 35 U.S.C. § 103 as being unpatentable over Pankau, Carlson, Spivey, and Miller et al. (US 9,233,588 B2, iss. Jan. 12, 2016) (“Miller”). ANALYSIS The Appellant disagrees with the Examiner’s finding that Pankau’s generally planar plate 62 corresponds to the claimed “at least one strut mount extender” because generally planar plate 62 does not extend the strut mount. Appeal Br. 4. In support of this position, the Appellant points out Appeal 2020-001054 Application 15/492,029 3 that generally planar plate 62 is part of mounting assembly 26 and the entirety of the mounting assembly 26 “is used to mount the suspension to the vehicle chassis.” Id. In response, the Examiner explains that Pankau’s generally planar plate 62 is capable of fulfilling the function of the claimed “strut mount extender,” i.e., “to extend the strut mount.” Ans. 5. Therefore, the claimed “strut mount extender” reads on generally planar plate 62. Id. Most notably, the Examiner determines, “as the mounting assembly 26[, which includes generally planar plate 62,] attaches to the original spring/damper seating it can be considered to extend said strut mount and therefore applies to the claim language.” Id. The Examiner explains that “[planar plate 62] does not need to be a separate component from assembly 26 in order to read on the claim.” Final Act. 4. The Appellant has the better position. Pankau’s invention “relates to replacement suspensions and more particularly to suspension kits that replace the original suspension on old cars with a modem suspension design.” Pankau, col. 1, ll. 5–7. Pankau’s mounting assembly 26 replaces the original mounting structures. See Pankau, col. 2, l. 53 – col. 3, l. 8, Figs. 5–9. Accordingly, one of ordinary skill in the art would understand that mounting assembly 26, including generally planar plate 62, is a strut mount. Therefore, generally planar plate 62 cannot be said to extend the strut mount, because it is part of the strut mount. Further, the Examiner fails to rely on Carlson, Spivey, or Miller in any manner that would remedy the deficiency in the Examiner’s rejection as discussed above. Thus, we do not sustain the Examiner’s rejection of independent claim 1 and claims 2–5, which depend therefrom. Appeal 2020-001054 Application 15/492,029 4 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 2 103 Pankau, Carlson, Spivey 1, 2 3–5 103 Pankau, Carlson, Spivey, Miller 3–5 Overall Outcome 1–5 REVERSED