Ex Parte Curl et al

Patent Trial and Appeal Board

Sep 22, 2017

13392283 (P.T.A.B. Sep. 22, 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.
13/392,283 06/01/2012 Michael R. Curl 18801-01001 4959
33772 7590 09/26/2017
lurnnNAT n hopktns t t r EXAMINER
600 Superior Avenue, East
Suite 2100
BRITTMAN, FELICIA LUCILLE
CLEVELAND, OH 44114-2653 ART UNIT PAPER NUMBER
3611
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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):
ipmailbox@mcdonaldhopkins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. CURL and RICHARD W. McCOY
Appeal 2016-005411
Application 13/392,283
Technology Center 3600
Before JUSTIN BUSCH, ALEX S. YAP, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1—34. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2016-005411
Application 13/392,283
CLAIMED SUBJECT MATTER
Claims 1, 15, 22, 23, 28, and 31 are independent claims. The claims
relate generally “to a towing assembly and, more particularly, to a pin box
assembly with gooseneck coupler.” Spec. 12. Claims 1 and 28 are
reproduced below with disputed limitations italicized:
1. A towing assembly comprising:
a first member capable of being secured to a towed
vehicle;
a second member pivotally coupled to said first
member about an axis of rotation relative to said first
member;
a gooseneck ball coupler having a socket
configured to engage a ball, the gooseneck ball coupler
coupled to said second member; and
a suspension system coupled to at least one of said
first and second members, said suspension system
damping motion between said first and second members.
28. A towing assembly comprising:
a first member configured to be attached to a towed
vehicle in a fixed orientation;
a second member movably coupled to said first
member;
a suspension system coupled to at least one of said
first and second members, said suspension system capable
of restricting relative movement between said first and
second members;
an indicator secured to at least one of said first and
second members wherein said indicator is capable of
identifying occurrence of said suspension system failing to
restrict relative movement between said first and second
members', and
a gooseneck ball coupler attached to said second
member and capable of moving upon movement of said
second member, said gooseneck ball coupler configured to
engage and disengage with a ball portion of a gooseneck
ball on a towing vehicle.
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REJECTIONS
Claims 28—30 and 33 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Fenton (US 5,785,341; July 28, 1998). Final Act. 2-A.
Claims 1—10, 15—22, 31, and 32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable in view of Fenton. Final Act. 4—11.
Claims 11—13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
in view Fenton and Rutter (US 2,594,592; Apr. 29, 1952). Final Act. 12—13.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable in
view of Fenton and Duncan (US 6,481,738 Bl; Nov. 19, 2002). Final
Act. 13.
Claims 23—27 stand rejected under 35 U.S.C. § 103(a) as unpatentable
in view of Fenton and Danzy (US 5,623,962; Apr. 29, 1997). Final Act. IS­
IS.
Claim 34 stands rejected under 35 U.S.C. § 103(a) as unpatentable in
view of Fenton and Sievert (US 7,097,193 Bl; Aug. 29, 2006). Final
Act. 15—16.
ANALYSIS
Appellants argue Fenton does not anticipate independent claim 28, or
claims 29—30 and 33, which depend therefrom, because Fenton does not
disclose “an indicator . . . capable of identifying occurrence of said
suspension system failing to restrict relative movement” between two
members. App. Br. 15—18; Reply Br. 5—6. Appellants also assert the
rejection of claims 1—10, 15—27, 31, and 32 as obvious in view of Fenton is
improper because the Examiner’s rationale for combining different
embodiments of Fenton is insufficient, the combination or modification
would not have been obvious to a person having ordinary skill in the art, and
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one would not have had a reasonable expectation of success. App. Br. 19—
25, 26; Reply Br. 6—11. Finally, in addition to the alleged inappropriate
combination of Fenton’s embodiments, Appellants further contend
independent claim 23, and claims 24—27, which depend therefrom, are not
obvious in view of the combination of Fenton and Danzy because “Danzy
fails to disclose, teach or suggest a pressure relief valve that automatically
adjusts when an air spring is over inflated.” App. Br. 26; Reply Br. 11.
Appellants present no separate, substantive argument for dependent claims
11—14 and 34, and instead argue for the patentability of: (1) claims 11—14
only based on their ultimate dependence from claim 1; and (2) claim 34 only
based on its dependence from claim 28. App. Br. 25—27.
We address each of Appellants’ arguments below.
Anticipation Rejection of Claims 28-30 and 33
The Examiner finds Fenton discloses each limitation recited in claims
28—30 and 33. Final Act. 2—A. Of particular note, the Examiner finds
Fenton’s shock absorber 38a and air spring 36a disclose the recited
“suspension system capable of restricting relative movement between said
first and second members.” Id. at 3. The Examiner finds Fenton’s “pins
holding shock absorber 38a onto mounting ears 122 and 124” disclose the
recited “indicator [that] is capable of identifying occurrence of said
suspension system failing to restrict relative movement between said first
and second members.” Id. The Examiner explains that the claims do not
recite whether the indicator is audible, visual, or perceptible by some other
sense and “the fasteners holding the shock absorber stabilizer assembly” as
well as “various other components of [Fenton’s] isolator stabilizing
assembly ... are capable of indicating the failure.” Ans. 3^4.
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Appellants assert the pins the Examiner maps to the recited indicator
are “connectors or hinges wherein the proper operation of the Fenton
[suspension system] assembly relies on the integrity of the hinge pins to
maintain its functionality.” App. Br. 16; Reply Br. 5—6.
We agree with Appellants. Fenton uses its shock absorber, which the
Examiner finds discloses a portion of the recited suspension system, to
compensate for the reverse motion of its air spring. Fenton 8:4—11.
Fenton’s shock absorber is “capable of restricting relative movement
between” its first subassembly and its second subassembly (i.e., functioning
as a part of the recited suspension system) only when it is attached to ears
122 and 124. Thus, Fenton’s pins are fasteners used to secure the shock
absorber to the two subassemblies in order for the shock absorber to serve its
intended purpose.
During examination of a patent application, pending claims are given
their broadest reasonable construction in light of the specification. In re Am.
Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). To read a
claim in light of the specification, one must interpret limitations explicitly
recited in the claim, without reading limitations from the specification into
the claim, to thereby narrow the scope of the claim by implicitly adding
disclosed limitations that are not recited in the claim. In re Prater, 415 F.2d
1393, 1404—05 (CCPA 1969).
Reviewing Appellants’ Specification, we note that it discloses tell-tale
pins as one example of an indicator. Spec. ^fl[ 88—90. Although we do not
limit the recited indicator to only tell-tale pins because we will not read an
embodiment from Appellants’ Specification into the claim, our construction
is guided by how a person of ordinary skill in the art would understand the
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recited indicator when considered in light of the specification. See Prater,
415 F.2d at 1404—05. We find Appellants’ Specification conveys to a
person having ordinary skill in the art that the indicators are structure that
indicates a problem with the recited suspension system apart from elements
essential to the suspension system’s proper functioning as a suspension
system.
We need not explicitly determine the exact bounds of the recited
“indicator” for purposes of this Decision. However, we determine that the
proper construction of the recited indicator does not encompass elements
that are essential to the suspension system’s proper functioning as a
suspension system. Because Fenton’s pins are required to attach its shock
absorber, which the Examiner finds teaches a part of the recited suspension
system, to its subassemblies, Fenton’s pins do not correspond to the recited
indicator.
Rationale for Combining Fenton’s Embodiments
The Examiner finds one embodiment of Fenton discloses every
element of independent claims 1—10, 15—22, 31, and 32, except for the
recited “gooseneck ball coupler.” Final Act. 4—11. The Examiner finds a
second embodiment of Fenton discloses a similar suspension system
including a gooseneck ball coupler. Id. at 5. The Examiner’s rationale for
modifying Fenton’s first embodiment to include the gooseneck ball coupler
of Fenton’s second embodiment is “to have a gooseneck ball coupler, as
taught in the embodiment shown in Figs 1 B, so that the device can be used
with a ball hitch in the flat bed of a tow truck.'1'’ Id. (emphasis added). The
Examiner further finds changing the coupling portion “would have allowed
the offset stabilizer assembly to be used in a pickup truck already equipped
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with a gooseneck hitch,” which “would have been a mere matter of
substituting the kingpin coupler for ball coupler, a known equivalent.”
Ans. 4. The Examiner notes Appellants provide no support for their
arguments regarding the intended purposes and capabilities of gooseneck
and king pin couplers. Id.
Appellants argue the Examiner’s rationale is conclusory, unsupported,
and based solely on impermissible hindsight. App. Br. 20—21; Reply Br. 7.
Appellants further argue the Examiner’s proposed combination “is more
tha[n] merely a ‘predictable variation’ or a ‘simple substitution’ as there
were technical challenges to the claimed invention that were beyond the skill
set of one of ordinary skill in the art.” App. Br. 21; Reply Br. 7—8.
Appellants contend the Examiner’s rationale is a conclusory, general
statement that fails to consider the technical difficulties in combining “the
stability characteristics of the king pin coupler” with “the operational
features of the gooseneck ball coupler.” App. Br. 21—24 (asserting various
purported differences in the purposes and capabilities of gooseneck couplers
and king pin couplers); Reply Br. 8—10. Finally, Appellants contend
modifying Fenton as proposed would not “lead one skilled in the art to
expect the modification to be successful.” App. Br. 24—25; Reply Br. 10.
We are unpersuaded by Appellants’ argument that the Examiner’s
rationale for combining Fenton’s embodiments is unsupported by rational
underpinnings or that the proposed combination would have lacked a
reasonable expectation of success. Appellants essentially argue
implementing the proposed combination would have involved significant
technical difficulties and required considerable resources. Appellants,
however, present only attorney argument, unsupported by evidence. It is
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well settled that mere attorney arguments and conclusory statements, which
are unsupported by factual evidence, are entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence).
Additionally, a reasonable expectation of success does not require absolute
predictability that a substitution will be successful. See In re O’Farrell 853
F.2d 894, 903-04 (Fed. Cir. 1988).
The Examiner has articulated a reason with rational underpinnings
regarding why a person of ordinary skill in the art would have used a
gooseneck coupler with Fenton’s embodiment disclosing a king pin coupler.
See Final Act. 5; Ans. 4. An obviousness 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.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398,418 (2007).
Moreover, the difference between the features relied on from one of
Fenton’s embodiments are limited, and the Examiner’s proposed
modification is limited to the type of coupler used. The only apparent
difference between Fenton’s embodiment employing a gooseneck coupler
and Appellants’ claims is that Appellants’ claims recite the second member
is “pivotally coupled to said first member.” Appellants’ attorney argument,
therefore, appears to assert that a person of ordinary skill in the art would not
have used a gooseneck coupler with a tow assembly having one member
pivotally coupled to another. However, the evidence before us indicates that
a person of ordinary skill in the art would combined a gooseneck coupler
with a second member pivotally coupled to a first member. See Sievert
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Abstract (patent directed to a gooseneck trailer hitch with one tow assembly
member pivotally coupled to a second tow assembly member).
On this record, for the reasons discussed above, we find the
preponderance of the evidence supports the Examiner’s findings and, based
on those findings, we agree that it would have been obvious to a person of
ordinary skill in the art to replace Fenton’s king pin coupler disclosed in one
embodiment with Fenton’s gooseneck coupler disclosed in a separate
embodiment. Accordingly, we sustain the Examiner’s rejection of claims 1—
10, 15—22, 31, and 32 as obvious in view of Fenton. For similar reasons, we
sustain the Examiner’s rejections of claims 11—14 and 34, which were not
substantively argued separately, as obvious in view of Fenton and one of
Duncan, Rutter, and Sievert.
Obviousness Rejection of Claims 23-27
The Examiner finds the combination of Fenton and Danzy teaches or
suggests every limitation of claims 23—27. Of particular note, the Examiner
finds “an air relief system operatively secured with the suspension system,
wherein the air relief system adjusts the pneumatic member from being over
inflated to maintain the pneumatic member in an operative state.” Final
Act. 14. The Examiner finds Fenton fails to teach the air relief system is
automatically adjusted, but that “Danzy teaches a pressure relief valve that
automatically adjusts when an air spring is over inflated.” Id. The Examiner
further explains Danzy discloses a pressure relief valve (PRV) that opens to
adjust the air pressure at a preset pressure that, in combination with Fenton’s
air spring, teaches “the air relief system automatically adjusts said pneumatic
member from being over inflated to maintain said pneumatic member in an
operative state.” Ans. 5.
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Appellants contend “Danzy discloses a fluid valve, not an air valve,”
and Danzy does not relate to preventing “an air spring from being
overinflated.” App. Br. 26; Reply Br. 11.
We agree with and adopt the Examiner’s findings regarding the
combined teachings of Danzy and Fenton with respect to the automatically
adjusting air relief system. Specifically, as the Examiner stated in the
Advisory Action mailed on July 7, 2015, air is a fluid. See, e.g., Danzy
5:19-20 (“The compressible fluid may, for example, include air contained
within an air bag.” (emphases added)). Moreover, Danzy discloses a PRV
that can be used with a line carrying pressurized fluid (such as air). Danzy
2:45-50.
The Examiner finds the combination of Danzy and Fenton as teaching
the automatically adjusting air relief system. Thus, we are unpersuaded by
Appellants’ argument that Danzy doesn’t relate to preventing an air spring
from being overinflated or that Danzy alone does not teach the automatically
adjusting air relief system. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior-art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
For the above reasons, including the reasons discussed above
regarding the combination of Fenton’s two embodiments, we are
unpersuaded the Examiner erred in rejecting claims 23—27. Therefore, we
sustain the Examiner’s rejection of claims 23—27 as obvious in view of the
combined teachings of Fenton and Danzy.
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Summary
For the reasons discussed above, we are persuaded the Examiner erred
in rejecting claims 28—30 and 33, but we are not persuaded the Examiner
erred in rejecting claims 1—27, 31, 32, and 34.
DECISION
We affirm the Examiner’s decision to reject claims 1—27, 31, 32, and
34 under 35 U.S.C. § 103(a).
We reverse the Examiner’s decision to reject claims 28—30 and 33
under 35 U.S.C. § 102(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED-IN-PART
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