Ex Parte Rogers et al

Patent Trial and Appeal Board

Nov 28, 2012

12218944 (P.T.A.B. Nov. 28, 2012)

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.
12/218,944 07/18/2008 Bobby Rogers 22,497 5764
31083 7590 11/29/2012
THOMTE LAW OFFICE, L.L.C.
2120 S. 72ND STREET, SUITE 1111
OMAHA, NE 68124
EXAMINER
GUTMAN, HILARY L
ART UNIT PAPER NUMBER
3612
MAIL DATE DELIVERY MODE
11/29/2012 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 BOBBY ROGERS and RALPH ROGERS
____________

Appeal 2010-009931
Application 12/218,944
Technology Center 3600
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
HYUN J. JUNG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009931
Application 12/218,944

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STATEMENT OF THE CASE
Bobby Rogers and Ralph Rogers (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision finally rejecting claims 1-10. We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a “side dump trailer having a hitch
mounting structure at the forward end thereof to which either a ball hitch
assembly or a gooseneck hitch assembly may be selectively secured
thereto.” Spec. 1, ll. 16-19 and figs. 1 and 2.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A side dump trailer, comprising:
a wheeled frame means having a forward end, a rearward
end, a first side and a second side;
a side dump body pivotally mounted on said wheeled
frame means and having a forward end, a rearward end, a first
side and a second side;
said side dump body being pivotally movable on said
wheeled frame means from a transport position to a side
dumping position;
said wheeled frame means having a hitch mounting
structure at its forward end to which a ball hitch assembly may
be selectively secured thereto so as to extend forwardly from
said forward end of said wheeled frame means or to which a
gooseneck hitch assembly may be selectively secured thereto so
as to extend upwardly and forwardly from said forward end of
said wheeled frame means.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Appeal 2010-009931
Application 12/218,944

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Allin US 2,072,998 Mar. 9, 1937
Greer US 2,187,970 Jan. 23, 1940
Morrison US 4,645,264 Feb. 24, 1987
Mengel US 5,580,211 Dec. 3, 1996
Gottschalk US 6,715,778 B2 Apr. 6, 2004
Garvey US 2006/0006726 A1 Jan. 12, 2006

The following rejections are before us for review:
The Examiner rejected claims 1 and 2 under 35 U.S.C. § 102(b)
as anticipated by Allin.
The Examiner rejected claims 1-3 under 35 U.S.C. § 103(a) as
unpatentable over Allin and Greer.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Allin and Mengel.
The Examiner rejected claims 5, 7, 8, and 10 under 35 U.S.C. §
103(a) as unpatentable over Allin and Garvey.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Allin and Gottschalk.
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Allin and Morrison.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The anticipation rejection based upon Allin
Appellants argue that “Allin does not teach a hitch mounting structure
to which a ball hitch assembly may be selectively secured thereto or to
which a gooseneck assembly may be selectively secured thereto.” Br. 4.
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Application 12/218,944

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We are not persuaded by Appellants’ argument because like the
Examiner we find that Allin teaches a side dump trailer including a wheeled
frame means, a side dump body, and a hitch mounting structure 21 “to which
a ball hitch assembly 23, 24 is apparently secured” using a vertical pin 22.
Ans. 3; see also Allin, fig. 6. According to the Examiner, the side dump
trailer of Allin is so similar to the claimed construction that, “the hitch
mounting structure 21 of Allin is capable of performing the intended use in
that a ball hitch assembly ‘may be selectively secured thereto.’” Ans. 7.
The use of the permissive form “may”1 in independent claim 1 (“. . . may be
selectively secured . . .”) and the Examiner’s finding of structural similarity
between the trailer of Allin and the claimed side dump trailer provides the
Examiner solid ground in finding that the recited functional limitations
would also be present in Allin. As such, Appellants have the burden of
establishing that those features would not be present. In re Spada, 911 F.2d
705, 708 (Fed Cir. 1990)(“[W]hen the PTO shows sound basis for believing
that the products of the applicant and the prior art are the same, the applicant
has the burden of showing that they are not.”) Appellants have not come
forth with any evidence to satisfy that burden.
Thus, for the foregoing reasons, the rejection of claims 1 and 2 under
35 U.S.C. § 102(b) as anticipated by Allin is sustained.

1 “The Board ruled that this additional content did not narrow the scope
of the claim because these limitations are stated in the permissive form
“may.” As a matter of linguistic precision, optional elements do not narrow
the claim because they can always be omitted. We affirm the Board's
ruling.” In re Johnston, 435 F.3d 1381,1384 (Fed. Cir. 2006).
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Application 12/218,944

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The obviousness rejection based upon Allin and Greer
Appellants argue that “there is absolutely no suggestion, teaching or
motivation whatsoever in Allin or Greer that a side dump trailer could be
provided which has a hitch mounting structure” to which a ball hitch
assembly or a gooseneck assembly “may be selectively secured thereto.” Br.
6.
We are not persuaded because such an argument appears to be holding
the Examiner to the old standard that compelled finding a teaching,
suggestion, or motivation to combine in the prior art itself (the "TSM"
standard); such a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 415 (2007). Furthermore, for the reasons set forth supra, we agree
with the Examiner that Allin teaches a hitch mounting structure 21 “to which
a ball hitch assembly 23, 24 is apparently secured” using a vertical pin 22.
Ans. 3; see also Allin, fig. 6.
Lastly, in response to Appellants’ inquiry as to why claims 1 and 2 are
unpatentable over Allin and Greer if they were deemed anticipated by Allin
(see Br. 6), we note that a disclosure that anticipates under 35 U.S.C. § 102
also renders the claim unpatentable under 35 U.S.C. § 103, for “anticipation
is the epitome of obviousness.” Jones v. Hardy, 727 F.2d 1524, 1529 (Fed.
Cir. 1984).
In conclusion, for the foregoing reasons, we shall sustain the rejection
of claims 1-3 under 35 U.S.C. § 103(a) as unpatentable over Allin and Greer.

The obviousness rejection based upon Allin and Mengel
Appellants’ argue that the combined teachings of Allin and Mengel do
not disclose a hitch mounting structure to which a ball hitch assembly or a
Appeal 2010-009931
Application 12/218,944

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gooseneck assembly may be selectively secured thereto. Br. 7. However, as
noted above, we agree with the Examiner that Allin teaches a hitch mounting
structure 21 “to which a ball hitch assembly 23, 24 is apparently secured”
using a vertical pin 22. Ans. 3; see also Allin, fig. 6. Thus, we shall sustain
the rejection of claim 4 over the combined teachings of Allin and Mengel.

The obviousness rejection based upon Allin and Garvey
Appellants’ arguments presented on page 7, line 23 through page 8,
line 16 of Appellants’ Brief merely recite additional claim limitations and
baldly assert that these limitations are not taught or suggested by the applied
references. These vague statements do not constitute separate arguments for
patentability of the dependent claims pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii). See In re Lovin, 99 USPQ2d 1373, 1379 (Fed. Cir. 2011)
(holding that the Board had reasonably interpreted 37 C.F.R. §
41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art”).
Appellants also argue that “there is absolutely no suggestion,
motivation or teaching whatsoever in the references of record that the
references could be modified or combined as suggested by the Examiner.”
Br. 8. Once more, Appellants’ argument appears to be holding the
Examiner to the old TSM standard; such a standard is not required.
Moreover, the Examiner has provided a reason with rational underpinning to
combine the teachings of Allin and Garvey (“to allow the side dump body to
be easily moved between the transport and dumping positions”). See Ans. 6.
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Appellants have not come forth with any persuasive argument or objective
evidence to show error in the Examiner’s reasoning.
Thus, for the foregoing reasons, we shall likewise sustain the rejection
of claims 5, 7, 8, and 10 under 35 U.S.C. § 103(a) as unpatentable over Allin
and Garvey.

The obviousness rejections based upon Allin and Gottschalk and upon
Allin and Morrison
Appellants first argue that the combined teachings of Allin and
Gottschalk, and Allin and Morrison, respectively, do not disclose a hitch
mounting structure to which a ball hitch assembly or a gooseneck assembly
may be selectively secured thereto. Br. 9. However, as noted above, we
agree with the Examiner that Allin teaches a hitch mounting structure 21 “to
which a ball hitch assembly 23, 24 is apparently secured” using a vertical
pin 22. Ans. 3; see also Allin, fig. 6.
Appellants also argue that they are the first to utilize an engine driven
hydraulic pump, as recited by claim 9. Br. 9. However, as discussed above,
such a statement without more does not constitute a separate argument for
the patentability of claim 9. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants further argue that, “there is no suggestion, motivation or
teaching” that Allin and Gottschalk, and Allin and Morrison, “could be
combined and modified as suggested by the Examiner.” Br. 9 and 10.
Once again, Appellants’ argument appears to be holding the Examiner to the
old TSM standard; such a standard is not required. Moreover, the Examiner
has provided a reason with rational underpinning to combine the teachings
of Allin and Gottschalk (“to add additional convenience to an occupant of
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Application 12/218,944

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the trailer”) and of Allin and Morrison (“to allow the dumping of the side
body without the need for batteries”). See Ans. 6. Appellants have not
come forth with any persuasive argument or objective evidence to show
error in the Examiner’s reasoning.
Thus, the rejections under 35 U.S.C. § 103(a) of claim 6 as
unpatentable over Allin and Gottschalk and of claim 9 as unpatentable over
Allin and Morrison are also sustained.

SUMMARY
The Examiner’s decision to reject claims 1-10 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)(1)(iv).

AFFIRMED

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