Ex Parte Hutchins, Jr. et al

Patent Trial and Appeal Board

Sep 18, 2012

11428172 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte F. PETER HUTCHINS, JR. and MICHAEL S. MCCOMAS
____________

Appeal 2010-008285
Application 11/428,172
Technology Center 3600
____________

Before LINDA E. HORNER, MICHAEL L. HOELTER, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
F. Peter Hutchins, Jr. and Michael S. McComas (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-
7, 12, 13, and 17-20. Claims 8-11, 15, and 16 are canceled, and claim 14 has
been withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2010-008285
Application 11/428,172

2
We AFFIRM-IN-PART and designate our affirmance of one of the
grounds of rejection as a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b).
THE INVENTION
Appellants’ claimed invention relates to “a loading ramp that is
integrated with a tailgate of a motor vehicle.” Spec., para. [0001]. Claims 1
and 12 are independent. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A device comprising:
a tailgate defining a hollow interior;
a movable lid enclosing said hollow interior; and
a plurality of panels contained within said hollow interior
of said tailgate,
wherein said plurality of panels are extendable from said
hollow interior to form a ramp;
each panel includes a locking mechanism; and
said locking mechanism comprises a spring-loaded hinge.
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1-7, 12, 13, and 17-20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 1-7, 12, 13, and 17-20 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Appeal 2010-008285
Application 11/428,172

3
3. Claims 1-7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Burdette (US 5,205,603; iss. Apr. 27, 1993) and Meek (US 5,597,195;
iss. Jan. 28, 1997).
4. Claims 12, 13, 17, 18, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burdette and Coleman (US 2002/0140245 A1; pub.
Oct. 3, 2002).
5. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Burdette, Coleman, and Meek.
Appellants also seek the Board’s review of the Examiner’s objection
to the drawings under 37 C.F.R. § 1.83(a). App. Br. 6, 20. Ordinarily an
objection is petitionable, and a rejection is appealable to the Board. When
the issue of new matter presented is the subject of both an objection and a
rejection, the issue is appealable. Manual of Patent Examining Procedure
(MPEP) § 2163.06, II. Review of New Matter Objections and/or Rejections
(8th ed., Rev. 8, July 2010). See also MPEP § 608.04(c); 35 U.S.C.
§ 134(a); and 37 C.F.R. § 1.181(a)(1). While the Examiner has not made a
new matter rejection or objection, in this case, the objection to the drawings
for failing to show every feature of the invention specified in the claims and
the written description rejection turn on the same issue of whether the
claimed subject matter finds adequate support in the original disclosure. As
such, we will decide both the objection and the rejection.
Appeal 2010-008285
Application 11/428,172

4
ISSUES
The issues presented by this appeal are:
Does the original disclosure reasonably convey to one skilled in the
relevant art that Appellants had possession of the subject matter of each of
the claims on appeal?
Does each claim on appeal particularly point out and distinctly claim
the subject matter Appellants regard as their invention?
Did the Examiner articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
been led to modify the device of Burdette with the teachings of Meek in the
manner called for in claim 1?
Would the combined teachings of Burdette and Coleman have
rendered obvious the subject matter of claim 12 to one of ordinary skill in
the art at the time of the invention?
Would the combined teachings of Burdette, Coleman, and Meek have
rendered obvious the subject matter of claim 19 to one of ordinary skill in
the art at the time of the invention?
ANALYSIS
Written Description and Indefiniteness Rejections and Objection to the
Drawings
The Specification describes three embodiments of a tailgate ramp. In
the first embodiment, depicted in Figures 1, 2, 3A, and 3B, the ramp panels
16 are deployed from the tailgate 14 in a telescoping manner. Each panel
includes side-arm portions 24 having a track 26 on an inner surface thereof
Appeal 2010-008285
Application 11/428,172

5
and a pair of wheels 30 on an outer surface. Spec., para. [0016]; fig. 2. The
wheels 30 on one panel slide along the track 26 of another panel to telescope
one panel relative to another. Id. The Specification describes that “[t]o
accommodate each of the panels 16 in a telescoping manner into the tailgate
14, it is preferable that the first panel 16a have a width that is less than the
second panel 16b, and so on.” Spec., para. [0026]. One skilled in the
relevant art would understand this disclosure to describe a configuration in
which the mesh portion of the narrowest panel 16a slides underneath the
mesh portion of the adjacent panel 16b, and so on, so that when the ramp is
collapsed, panel 16a is nested within panel 16b, which is nested within panel
16c, which is nested within panel 16, which is slid into the hollow interior
18 of the tailgate 14. Fig. 1. When deployed in an extended fashion, the
panels form a substantially planar, albeit not completely planar, inclined
ramp, in that the plane of the mesh portion of each panel is slightly offset
from the plane of the mesh portion of its adjacent panel(s) to allow for
telescoping, i.e., nesting, of the panels relative to each other. The
Specification describes that once the wheels 30 of a panel reach the end of
the track 26 of the adjacent panel, a spring-loaded protrusion 39 on the first
panel locks into a through hole 36 located in the adjacent panel. Spec.
[0023]-[0024]; figs. 3A, 3B.
In the second embodiment, depicted in Figures 5 and 6, the ramp
panels 16 are deployed from the tailgate 14 in a telescoping manner via
tracks 26 and wheels 30, in the same manner as the first embodiment, except
that once each panel reaches the end of its length of travel, the panel may be
Appeal 2010-008285
Application 11/428,172

6
rotated orthogonally with respect to its adjacent panel and then locked in
place in its rotated position by engagement of spring-loaded protrusion 39
and orthogonal through-hole 46 to form a staircase. Spec., paras. [0030]-
[0032]; figs. 5, 6. One skilled in the relevant art would understand this
disclosure to describe a configuration in which the mesh portion of the
narrowest panel 16a slides underneath the mesh portion of the adjacent panel
16b, and so on, so that when the ramp is collapsed, panel 16a is nested
within panel 16b, which is nested within panel 16c, which is nested within
panel 16, which is slid into the hollow interior 18 of the tailgate 14. One
skilled in the relevant art would also understand this disclosure to describe a
configuration in which the mesh portion of each panel does not extend all
the way to the ends of the side-arm portions 24, so that as each panel rotates
with respect to its adjacent panel(s), the mesh portions do not interfere with
each other. Fig. 5 (showing end portions of the side-arms 24 extending
beyond the edges of the mesh portion). The Specification does not describe
with respect to this embodiment how the panels are rotatably connected to
each other. We do not understand the Specification to disclose or suggest
the use of a spring-loaded hinge in the second telescoping staircase
embodiment, in that the panels must be first telescopically extended and then
rotated, and the use of a spring-loaded hinge might interfere with the user’s
ability to extend the panels relative to each other prior to rotating.
In the third embodiment, depicted in Figure 4, the ramp panels 16 are
deployed from the tailgate 14 in a folded manner. In particular, the
Specification describes that “[t]o deploy the foldable ramp 12 from the
Appeal 2010-008285
Application 11/428,172

7
tailgate 14, the folded stack of panels is pulled from the hollow interior 18 of
the tailgate 14 as a group” and then “the plurality of panels 16 deploy
outward [sic] from the tailgate 14 in an accordion manner.” Spec., para.
[0028]; fig. 4. See also Spec., para. [0029] (“the tailgate include[s] a track
(not shown) to which the side-arms 24 of the last panel are slidably
coupled.”) The Specification further describes that the panels 16 of the ramp
12 shown in Figure 4 are connected to each other by spring-loaded hinges 46
that can lock in place upon being opened. Id. One skilled in the relevant art
would understand this disclosure to describe a configuration in which the
mesh portion of each panel does not extend all the way to the ends of the
side-arm portions 24, so that as each panel rotates with respect to its adjacent
panel(s) to unfold, the mesh portions do not interfere with each other. Fig. 4
(showing end portions of the side-arms 24 extending beyond the edges of the
mesh portion).
The Specification does not describe using spring-loaded hinges in the
first and second embodiments (i.e., the telescoping embodiments), and does
not disclose using a locking mechanism comprising a through-hole and a
spring-loaded member in the third embodiment (i.e., the foldable
embodiment).
Independent claim 1 calls for a device wherein panels are extendable
from a hollow interior of a tailgate to form a ramp and wherein each panel
includes a locking mechanism comprising a spring-loaded hinge. Since only
the third, foldable embodiment described in the Specification discloses using
a spring-loaded hinge as the locking mechanism, we understand claim 1 to
Appeal 2010-008285
Application 11/428,172

8
be directed to the third embodiment, i.e., the species corresponding to the
embodiment of Figure 4. In other words, claim 1 is not generic to all the
species disclosed in the Specification. As such, we agree with the Examiner
that claims 2, 6, and 7, which contain features pertinent to the first and
second telescoping embodiments, lack adequate written descriptive support
and are indefinite. Ans. 3-6. In particular, the Specification does not
reasonably convey that Appellants were in possession of a foldable ramp
having spring-loaded hinges and also having the features set forth in claims
2, 6, and 7 at the time of the invention. For the same reason, claims 2, 6, and
7 fail to particularly point out and distinctly claim what Appellants regard as
their invention. We likewise agree with the Examiner’s objections to the
Figures as failing to show the subject matter of dependent claims 2, 6, and 7.
Final Office Action, p. 2.
We disagree with the Examiner’s determination of lack of adequate
written description and indefiniteness of claims 1 and 3-5. The Examiner
rejected claim 1 because the panel mesh appears to interfere in the folding
and unfolding of the panels. Ans. 4. As we found supra the Specification
adequately describes a foldable embodiment in which the mesh portions of
the panels do not interfere with one another during deployment of the ramp.
The Examiner also rejected claim 1 because “[i]t appears from the figures
that [the] locking mechanism can not comprise a spring-loaded hinge.”
Ans. 5. As we found supra, the Specification describes, with respect to the
embodiment of Figure 4, that the foldable panels are connected to each other
by spring-loaded hinges that can lock in place upon being opened. Spec.,
Appeal 2010-008285
Application 11/428,172

9
para. [0028]. The Examiner further rejected claim 3 because the
Specification fails to disclose how the panels “are extendable from said
hollow interior in a folding manner.” Ans. 5. We understand this claim
language to mean that when the panels are removed from the hollow interior,
they are in a folded configuration. This subject matter is sufficiently definite
and supported by the Specification, which describes that the folded stack of
panels is pulled from, i.e., extended from, the hollow interior 18 of the
tailgate 14 as a group. Spec., paras. [0028]-[0029]. As such, we do not
sustain the rejections of claims 1 and 3-5 under 35 U.S.C. § 112, first and
second paragraphs, and the objection to the Figures as failing to show the
subject matter of claims 1 and 3-5.
Independent claim 12 calls for a ramp wherein panels adapted to
extend from a hollow interior of a tailgate each include a locking mechanism
comprising a through hole and a spring-loaded member. Since only the first
and second telescoping embodiments described in the Specification disclose
using a through hole in combination with a spring-loaded member as the
locking mechanism, we understand claim 12 to be directed to the first and
second embodiments. In other words, claim 12 is not generic to all the
species disclosed in the Specification. As such, we agree with the Examiner
that claim 19, which contains features pertinent to the third foldable
embodiment, lacks adequate written descriptive support and is indefinite.
Ans. 4, 6. In particular, the Specification does not reasonably convey that
Appellants were in possession of a telescoping ramp having a locking
mechanism that uses a through hole and a spring-loaded member and also
Appeal 2010-008285
Application 11/428,172

10
having the feature set forth in claim 19 at the time of the invention. Ans. 3-
4. For the same reason, claim 19 fails to particularly point out and distinctly
claim what Appellants regard as their invention. Ans. 6. Further, we agree
with the Examiner’s objections to the Figures as failing to show the subject
matter of dependent claim 19. Final Office Action, p. 2.
The Examiner rejected claim 13 because the Specification fails to
disclose how the panels “extend from said tailgate to form a planar inclined
surface.” Ans. 6. As we determined supra, in order to telescope the panels
relative to each other, the planes of the mesh portions of the panels must be
offset to allow the panels to nest when collapsed. As such, we agree with
the Examiner that the Specification fails to adequately disclose that
Appellants were in possession of the ramp of claim 13 in which the panels
extend from the tailgate to form a planar inclined surface. Id. For the same
reason, claim 13 fails to particularly point out and distinctly claim what
Appellants regard as their invention. Further, we agree with the Examiner’s
objections to the Figures as failing to show the subject matter of dependent
claim 13. Final Office Action, p. 2.
We disagree with the Examiner’s determination of lack of adequate
written description and indefiniteness of claims 12, 17, 18, and 20. The
Examiner rejected claim 12 because the panel mesh appears to interfere in
the telescoping of the panels. Ans. 4. In particular, as we found supra the
Specification adequately describes the telescoping embodiments in which
the mesh portions of the panels do not interfere with one another during
deployment of the ramp and staircase. As such, we do not sustain the
Appeal 2010-008285
Application 11/428,172

11
rejections of claims 12, 17, 18, and 20 under 35 U.S.C. § 112, first and
second paragraphs, and the objection to the Figures as failing to show the
subject matter of claims 12, 17, 18, and 20.
Rejection of claims 1-7 as unpatentable over Burdette and Meek
The Examiner found that Burdette discloses the device of claim 1,
including a locking mechanism 38, but fails to disclose, inter alia, that the
locking mechanism comprises a spring-loaded hinge. Ans. 7. The Examiner
determined that it would have been obvious to one of ordinary skill to
modify Burdette to include a locking mechanism comprising a spring-loaded
hinge, in view of the disclosure in Meek of a locking mechanism comprising
a spring-loaded hinge 48, “to lock the panels in [an] extended position while
supporting a load on the mesh.” Ans. 8.
We agree with Appellants (App. Br. 16) that Burdette’s element 38 is
a magnetic member mounted within tailgate cavity 17 to maintain retraction
of the ladder assemblies within the cavity. Burdette, col. 4, ll. 43-47; fig. 7.
As such, the Examiner’s proposed modification to replace Burdette’s
magnetic member 38 with a spring-loaded hinge is not based on rational
underpinnings because such a modification would destroy the operation of
Burdette’s retention mechanism. App. Br. 17.1 For this reason, we do not

1 We note that Burdette discloses ladder members 25, 26 slidable relative to
each other and discloses a latch pin 34 and leg slots 36 to secure the second
ladder member 26 relative to the first ladder member 25. Burdette, col. 4, ll.
29-34; figs. 1, 3. The Examiner’s rejection, however, fails to articulate any
reason why one of ordinary skill would have been led to modify this locking
mechanism of Burdette to use a spring-loaded hinge, as called for in claim 1.
Appeal 2010-008285
Application 11/428,172

12
sustain the rejection of independent claim 1 or its dependent claims 2-7 as
unpatentable over Burdette and Meek.
Rejection of claims 12, 13, 17, 18, and 20 as unpatentable over Burdette and
Coleman
Appellants argue all the claims subject to this rejection as a group.
App. Br. 18-19. We select claim 12 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claims 13, 17, 18, and 20 stand or fall with
claim 12.
The Examiner’s rejection proposed modifying the magnetic member
38 of Burdette with a through-hole and spring-loaded member, as taught by
Coleman, to render obvious the subject matter of claim 12. Ans. 9-10. For
the reasons provided in Appellants’ Brief (App. Br. 19), we agree that the
Examiner’s proposed modification of magnetic member 38 with a through-
hole and spring-loaded member would not result in the claimed ramp
wherein each of the panels includes such a locking mechanism. We
nonetheless sustain the rejection of claim 12 as unpatentable over Burdette
and Coleman on grounds different from those relied on by the Examiner as
explained infra.
In particular, with respect to claim 12, Burdette discloses panel
members (ladder members 25, 26) that are adapted to fit within a hollow
interior 17 defined by a tailgate 12 having a movable lid 44 that encloses the
hollow interior. Burdette, col. 3, l. 50; col. 3, l. 68 – col. 4, l. 1; col. 4, ll. 47-
49; figs. 1, 3. Burdette discloses that the panel members 25, 26 are adapted
to extend from the hollow interior 17 of the tailgate 12. Burdette, col. 3, l.
Appeal 2010-008285
Application 11/428,172

13
57 – col. 4, l. 27; figs. 1, 3. Burdette also discloses “[a]t least one latch pin
34 is mounted within the ladder leg 27 cooperative for intersection and
engagement with one of a plurality of third extension leg slots 36 formed to
a bottom surface of the third extension leg to lock and secure the second
ladder member 26 relative to the first ladder member 25.” Burdette, col. 4,
ll. 29-34; figs. 1, 3. As such, Burdette discloses each panel (ladder members
25, 26) includes a locking mechanism that comprises a through hole (slots
36) and a latch pin 34. Burdette appears to show that the latch pin 34 is
spring loaded. Burdette, fig. 4 (see element 35 pointing to a spring). As
such, Burdette anticipates claim 12. A disclosure that anticipates under
35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103
since anticipation is the epitome of obviousness. See In re Fracalossi, 681
F.2d 792, 794 (CCPA 1982); and In re Pearson, 494 F.2d 1399, 1402
(CCPA 1974) (citation omitted).
Further, to the extent Burdette does not explicitly describe element 35
as being a spring, Coleman discloses a locking mechanism comprising a
through hole (57, 58) and a spring loaded member (62, 64). Coleman, paras.
[0084]-[0085]; figs. 6-8. It would have been obvious to one having ordinary
skill in the art at the time the invention was made to improve the latch pin 34
of Burdette to make it spring-loaded, as taught by Coleman, so that when the
ladder member 26 reaches its fully extended position, the latch pin 34
automatically engages the slot 36 to lock ladder member 26 in position
relative to ladder member 25 for ease of use. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“if a technique has been used to improve one
Appeal 2010-008285
Application 11/428,172

14
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”). For these reasons,
we sustain the rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Burdette and Coleman. Claims 13, 17, 18, and 20 fall
with claim 12. We designate our affirmance of the rejection of these claims
as a new ground of rejection to afford Appellants a full and fair opportunity
to react to the thrust of the rejection. See In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976) (“the ultimate criterion of whether a rejection is considered
‘new’ in a decision by the board is whether appellants have had [a] fair
opportunity to react to the thrust of the rejection.”).
Rejection of claim 19 as unpatentable over Burdette, Coleman, and Meek
The Examiner determined that it would have been obvious to one of
ordinary skill in the art to modify the device of Burdette, as modified by
Coleman, so that the panels are adapted to extend from the tailgate in a
folding manner, as taught by Meek “to facilitate ramp formation from the
tailgate.” Ans. 10-11. We note that the ramp in Meek does not extend from
the tailgate; rather, it forms the tailgate. Meek, figs. 1, 2 (showing folded
ramp serving as the tailgate). As such, Meek does not disclose how to make
a folding ramp that fits within a hollow interior of a tailgate. Were one to
make the proposed combination, the panels of the resulting foldable ramp
would no longer be adapted to fit within a hollow interior defined by a
tailgate, as called for in independent claim 12, from which claim 19 depends.
As such, we do not sustain the Examiner’s rejection of claim 19.
Appeal 2010-008285
Application 11/428,172

15
CONCLUSIONS
The original disclosure reasonably conveys to one skilled in the
relevant art that Appellants had possession of the subject matter of claims 1,
3-5, 12, 17, 18, and 20, but not of claims 2, 6, 7, 13, and 19.
Claims 1, 3-5, 12, 17, 18, and 20 particularly point out and distinctly
claim the subject matter Appellants regard as their invention; however,
claims 2, 6, 7, 13, and 19 are indefinite.
The Examiner did not articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
been led to modify the device of Burdette with the teachings of Meek in the
manner called for in claim 1.
The combined teachings of Burdette and Coleman would have
rendered obvious the subject matter of claim 12 to one of ordinary skill in
the art at the time of the invention.
The combined teachings of Burdette, Coleman, and Meek would not
have rendered obvious the subject matter of claim 19 to one of ordinary skill
in the art at the time of the invention.
DECISION
We AFFIRM the decision of the Examiner to reject claims 2, 6, 7, 13,
and 19 under 35 U.S.C. § 112, first and second paragraphs, and we
REVERSE the decision of the Examiner to reject claims 1, 3-5, 12, 17, 18,
and 20 under 35 U.S.C. § 112, first and second paragraphs. Likewise, we
AFFIRM the decision of the Examiner to object to the Figures for failing to
show the subject matter of claims 2, 6, 7, 13, and 19, and we REVERSE the
Appeal 2010-008285
Application 11/428,172

16
decision of the Examiner to object to the Figures for failing to show the
subject matter of claims 1, 3-5, 12, 17, 18, and 20. We AFFIRM the
decision of the Examiner to reject claims 12, 13, 17, 18, and 20 under
35 U.S.C. § 103(a), and we REVERSE the decision of the Examiner to reject
claims 1-7 and 19 under 35 U.S.C. § 103(a).
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant[s] may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
Appeal 2010-008285
Application 11/428,172

17
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

hh