Ex Parte Smith

Patent Trial and Appeal Board

Jan 24, 2017

13351191 (P.T.A.B. Jan. 24, 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.
13/351,191 01/16/2012 Anthony Smith LUND.105C2 6421
20995 7590 01/26/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
BLANKENSHIP, GREGORY A
ART UNIT PAPER NUMBER
3612
NOTIFICATION DATE DELIVERY MODE
01/26/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY SMITH
Appeal 2015-002270
Application 13/351,191
Technology Center 3600
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and GORDON
D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
15—26 and 28—36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as Lund Motion Products, Inc.
Appeal 2015-002270
Application 13/351,191
CLAIMED SUBJECT MATTER
The claims are directed to a vehicle cargo tailgate enclosure. Claims
15, 21, and 29 are independent. Claim 15 illustrates the claimed subject
matter and is reproduced below:
15. A vehicle tailgate enclosure for use with a vehicle having
an open storage bed having a rear end, a first upstanding side
panel on one side of said bed, a second upstanding side panel on
an opposite side of said bed, and a tailgate movable between an
open position and a closed position, said tailgate enclosure
mountable in a first position when said tailgate is in said open
position in which said tailgate enclosure comprises:
a first side wall coupled to the first side panel;
a second side wall coupled to the second side panel; and
a connecting wall which connects said first side wall and
said second side wall, a bottom portion of said connecting wall
positioned above said tailgate and a top portion of said
connecting wall positioned rearward of a rear end of said tailgate
in said open position, said connecting wall above said tailgate
extending from the bottom portion to the top portion at an angle
of between about 10 and about 50 degrees from vertical;
wherein the first side wall, second side wall, and
connecting wall define a plurality of passageways that allow air
to pass through the walls.
REFERENCES
art relied upon by the Examiner in rejecting the claims on
US 5,154,470 Oct. 13, 1992
US 6,402,215 B1 June 11, 2002
REJECTIONS
The Examiner rejected claims 15—26 and 28—36 over Leitner and
Bringman.
The prior
appeal is:
Bringman
Leitner
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Appeal 2015-002270
Application 13/351,191
OPINION
Claims 15—19, 23—26, 28—31, and 33—35.
Claims 15—19, 23—26, 28—31, and 33—35 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Leitner and Bringman.
Appellant argues these claims as a group. See Appeal Br. 5, 8, and 9. We
select claim 15 as representative, and claims 16—19, 23—26, 28—31, and 33—
35 stand or fall with claim 15. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Leitner discloses all the features of claim 15
except that Leitner does not “disclose the connecting wall being angled
upward and outward from the tailgate at an angle. Bringman . . . teaches
forming the connecting wall 23 of a tailgate enclosure at an angle from
vertical as shown in Figure 4.” Non-Final Act. 4. The Examiner then
concludes
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to form the connecting wall of
Leitner et al. at an angle such that it is upward and outward
from the tailgate when in the first position as taught by
Bringman, Jr. . . . to increase the enclosed volume of the open
storage bed and resulting in the tubular members having
different lengths at the first side wall where the first side wall is
coupled of the first side panel to the rearmost section of the
connecting wall.
Non-Final Act. 4. The Examiner’s Answer explains:
The angled connecting wall of Bringman, Jr. increases the
cargo carrying capacity of the pickup truck when compared to a
truck bed extension with a vertical connecting wall that does
not extend beyond the extension panel. The rejection only uses
the teaching of the angled connecting wall providing increased
cargo capacity. The stated motivation for combining Leitner et
al. and Bringman, Jr. is to increase the enclosed volume of the
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Application 13/351,191
open storage bed. The combination set forth in the rejection
does not require an extension panel.
Ans. 2—3.
Appellant argues that one of skill in the art would not be motivated to
combine Leitner and Bringman as the Examiner proposes because Bringman
only teaches extending the length of a truck bed together with an angled rear
wall. Appeal Br. 6. “Attaching an extension to the end of the tailgate is the
only manner in which Bringman describes providing an extended cargo
carrying capacity.” Appeal Br. 6. Moreover, according to Appellant, one of
ordinary skill in the art would not take just the inclined rear wall of
Bringman because that is only part of what Bringman discloses. Appeal Br.
7.
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-BlackRock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 550 U.S. at 417. We agree with the Examiner that a “connecting wall.
. . extending at an angle of between about 10 and 50 degrees from vertical”
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Application 13/351,191
(Appeal Br. 15 Claims App.) is taught by Bringman. See Non-Final Act. 4
(“at an angle from vertical, as shown in Figure 4.”) Bringman also states
that his bed extender is intended to “permit[] extended cargo carrying
capacity.” Bringman, Col. 1,11. 21—22, see also Ans. 2—3. The Examiner
correctly found that modifying Leitner’s device to include an inclined rear
wall would have been obvious at the time of the invention on appeal (Non-
Final Act. 4). The result is an improvement that is no more than the
predictable use of prior art elements according to their established functions.
Appellant also speculates that the rear wall of Bringman is inclined
for aerodynamic purposes only. Not only is there no support whatsoever for
this theory, as the Examiner found (Non-Final Act. 6), but such a motivation
would not be relevant to the proposed combination. In re Kahn, 441 F.3d
977, 987-88 (Fed. Cir. 2006).
In view of the foregoing, we are not persuaded of error in the rejection
of claim 15. Claims 16—19, 23—26, 28—31, and 33—35 fall with claim 15.
See App Br. 8—9.
Claims 20 and 22.
Appellant argues claims 20 and 22 together. We select claim 20 as
representative, and claim 22 stands or falls with claim 22. 37 C.F.R. §
41.37(c)(l)(iv). Claim 20 depends from claim 17, adding “wherein each of
the plurality of tubular members has a different length from a first bend at
the first side wall to a second bend at the rear most section of said
connecting wall.” Appeal Br. 16 (Claims App.). The Examiner conceded
that Leitner does not disclose this limitation but concludes,
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Application 13/351,191
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to form each tubular member
of Leitner et al., as modified, with a different length between
the rear most section of the connecting wall and the first side
wall to provide a greater slope to the connecting wall to
increase storage space when the tailgate is down and the tailgate
enclosure is positioned substantially on the tailgate.
Non-Final Act. 4—5.
Appellant argues that Bringman does not teach the claimed way of
making the rear wall inclined. Appeal Br. 9—10. We agree with the
Examiner. “The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner finds that
[o]ne of ordinary skill in the art would recognize the additional
length of the tube could be provided anywhere in front of the
rear most portion of the connecting wall including between the
rear most section of a connecting wall and a first side wall and
between a first bend at a side wall to a second bend at the rear
most section of a connecting wall.
Ans. 4. Appellant’s argument points out that there is at least one other
way to achieve an inclined rear wall by the modification of Leitner,
but the Examiner’s finding that other ways, including that claimed,
would have been obvious stands unrebutted.
Accordingly, we find no error in the rejection of claims 20 and 22.
Claims 21 and 36.
Appellant argues independent claim 21 separately. Appeal Br. 11—12.
Specifically, Appellant argues that the combination of Leitner as modified
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Application 13/351,191
by Bringman would not result in tubular members “having the same length
at the first side wall.” Instead, Appellant proposes that combining Leitner
with the angled rear wall of Bringman would be accomplished “by varying
the length of the side wall at its top relative to its bottom,” (Appeal Br. 12)
and this would not meet the quoted limitation.
The Examiner responds that “the additional length of the tube could
be provided anywhere in front of the rear most portion of the connecting [i.e.
rear] wall including between the rear most section of a connecting wall and a
first side wall and between a first bend at a side wall and a second bend at
the rearmost section of a connecting wall.” Ans. 4—5. Following the same
reasoning as in connection with claim 20, we agree with the Examiner that
lengthening the tube of Leitner could be done, e.g., in the middle of
Leitner’s 90 degree bends, in a manner that would meet the limitations of
claim 21, and that to do so would have been obvious to one of ordinary skill
in the art at the time of the invention. Accordingly, we are not persuaded of
error in the rejection of claim 21. Claim 36 falls with claim 21. Appeal Br.
13.
DECISION
For the above reasons, the Examiner’s rejection of claims 15—26 and
28—36 is affirmed.
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) See 37
C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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