Ex Parte Searfoss

Patent Trial and Appeal BoardMar 28, 2019

14608784 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/608,784 01/29/2015 Timothy K. Searfoss 34456 7590 04/01/2019 LARSON NEWMAN, LLP 8200 N. MOP AC EXPY. SUITE 280 AUSTIN, TX 78759 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1294-0003 5872 EXAMINER LE,MARKT ART UNIT PAPER NUMBER 3617 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): docketing@larsonnewman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY K. SEARFOSS Appeal2018-007480 Application 14/608, 784 Technology Center 3600 Before LINDA E. HORNER, DANIEL S. SONG, and JEFFREY A. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134(a) from the Examiner's Final Office Action ("Final Act.") rejecting claims 1, 4--9, 11- 15, and 17-21, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). For the reasons explained below, we AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION of claims 1 and 15. Appeal2018-007480 Application 14/608,784 Claimed Subject Matter Claims 1, 9, and 15 are independent. The independent claims are reproduced below, and illustrate the claimed subject matter. 1. A railcar comprising: a pair of opposed side walls; a cover including a plurality of panels extending between the side walls; a take up spool where the panels may be stored; a motor drivingly engaged with the panels to move the cover between a retracted position and an extended position; a side rail mounted to each side wall, each side rail accepting an end of the panels; and a plurality of slides interconnecting the panels, wherein each pair of opposed slides is spaced the same distance apart. 9. A railcar comprising: a pair of opposed side walls; a cover including a plurality of panels extending between the side walls; a take up spool upon which the panels may be wound; a motor drivingly engaged with the panels to move the cover between a retracted position and an extended position; and a plurality of slides interconnecting the panels, wherein adjacent panels are not parallel when the cover is in the retracted position. 15. A cover for a railcar having a pair of opposed side walls, the cover comprising: a plurality of panels extending between the side walls; a take up spool upon which the panels may be wound; a motor drivingly engaged with the panels to move the cover from a retracted position to an extended position; and a plurality of slides interconnecting the panels, wherein each pair of opposed slides is spaced the same distance apart. 2 Appeal2018-007480 Application 14/608,784 Rejections I. Claims 15, 17-19, and 21 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Copp (US 9,296,285 B2, issued Mar. 29, 2016), Lasier (US 4,864,686, issued Sept. 12, 1989), Pettibone (US 2016/0194010 Al, published July 7, 2016), Russell (US 5,040,843, issued Aug. 20, 1991), McKeon (US 4,138,154, issued Feb. 6, 1979), and Searfoss (US 5,829,819, issued Nov. 3, 1998). Final Act. 2-3. II. Claims 1, 4--9, 11-14, and 20 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Copp, Lasier, Pettibone, Russell, McKeon, Searfoss, and Kashiwase (US 6,352,035 Bl, issued Mar. 5, 2002). Final Act. 4. DISCUSSION Rejection 1-35 US.C. Â§ 103 Claims 15, 17-19, 21 In rejecting independent claim 15, the Examiner finds Copp teaches a vehicle cover including a plurality of panels 154, 156 extending between sidewalls of the vehicle, panel joints 200A (including parts 21 OA, 240A, 270A, and 330A), and right and left rails 110 provided on the sidewalls for receiving the panel ends and the panel joints. Final Act. 2 ( citing Copp Figs. 10, 20). The Examiner finds panel joints of the type 200A are roller structures that interconnect panels 154, 156, and "each pair of opposite roller parts 330A is spaced the same distance apart (see Fig. 10 of Copp), or at least that it would have been obvious to one of ordinary skill in the art to place them spaced the same distance apart because these are roller structures of the same type, i.e. type A." Id. The Examiner finds Lasier teaches that 3 Appeal2018-007480 Application 14/608,784 rollers and sliders are well known alternatives, and that one of ordinary skill would have had reason to "alternatively construct the panel joints of Copp to operate with sliders instead of rollers," namely, "for performing generally the same expected operation and to achieve the expected advantages of sliders, such as simple construction." Id. at 2-3. 1 The Examiner finds Copp' s cover as modified can be used on a railcar, and finds other references such as Russell, McKeon, Searfoss, and Pettibone teach "well known drive components" such as the take up spool and motor recited in claim 15. Final Act. 3. The Examiner determines "[i]t would have been obvious to one of ordinary skill in the art to combine such well known drive components into a suitable drive system for operating the cover of Copp" and "[ s ]uch task of putting together known drive components to form a suitable drive system for extending/retracting a cover is merely an obvious matter of routine engineering." Id. Appellant argues each pair of opposed slides is not spaced the same distance apart in Copp because "[ s ]tructure 200A clearly extends further than structure 200B" in Figure 14. Appeal Br. 6. Appellant further states that "[ t Jo modify this design as the Examiner proposes (in the alternative) would render it inoperable for its intended purpose," citing in support In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Appeal Br. 6. The Examiner responds that "while it is true that [Copp's] rollers of type 200A and the rollers of type 200B do not extend out the same distance, the plurality of pairs of opposed rollers of type 200A (i.e. the longer 1 We note also Copp's teaching that guide element 330 is not limited to rollers, and may be a guide block, which does not necessarily rotate as the guide block travels along the path of the side rails. Copp, col. 18, 11. 63----67, Fig. 15 (depicting guide block 330B). 4 Appeal2018-007480 Application 14/608,784 extending rollers) are in fact extending the same distance as claimed." Ans. 7. We note that Appellant and the Examiner appear to interpret the "distance" recited in claim 15 to refer to the distance between two slides on opposing ends of a panel, rather than to the distance between two adjacent slides along the length of the cover. We adopt the same interpretation. The Examiner's findings and explanation in the Answer also indicate agreement with Appellant that the relevant "distance" in Copp is the distance between opposed rollers. See, e.g., Ans. 7. 2 Based on this finding, the Examiner must ignore Copp'sjoints 200B, because the rollers in two "B" type joints on opposing ends of a panel have a smaller distance between them than the distance between the rollers on two "A" type joints on opposing ends of a panel. We agree with Appellant, however, that ignoring Copp's "B" type joints ignores the term "each" in claim 15, which effectively requires that any pair of slides have the same distance between them as any other pair of slides. See In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) (interpreting claim limitation requiring that "each wire leg" have an offset to apply to all structures that meet the limitations of a "leg"). Although the open-ended transition "comprising" in claim 15 "means that the device may contain elements in addition to those explicitly mentioned in 2 Because Copp'sjoints 200 interconnect the panels, and include parts 210, 240, 270, and 330, the entire joint corresponds to the slide recited in the claim. Copp shows that the distance between each pair of joints on opposing ends of a panel is the same as the distance between all other pairs of joints because the innermost parts of each joint, i.e., member 210 and the inner end of shaft 270, are aligned with the innermost ends of adjacent joints. See id. at Figs. 10, 14. The Examiner did not make this finding, however, and we consider the rejection as set forth in the Final Office Action. 5 Appeal2018-007480 Application 14/608,784 the claim," the claim requires that any pair of opposed slides that is present has the same distance between the two slides in the pair as any other pair. See id. at 1268. Thus, the Examiner has adopted an unreasonably broad interpretation of the phrase "each pair of opposed slides" in claim 15. For the foregoing reasons, we do not sustain the Examiner's rejection of claim 15 under 35 U.S.C. Â§ 103, or the rejection of claims 17-19 and 21, which depend from claim 15. Rejection 11-35 USCÂ§ 103 Claims 1, 4-8 Appellant argues the rejection of claim 1 is in error for the same reasons as claim 15. Appeal Br. 7. Like claim 15, claim 1 recites that "each pair of opposed slides is spaced the same distance apart." Because the rejection of claim 1 is based on the same deficiency discussed above for claim 15, we do not sustain the rejection of claim 1, or the rejection of claims 4--8, which depend from claim 1. Claims 9, 11-14, 20 Appellant argues the rejection of claims 9, 11-14, and 20 as a group based on independent claim 9. Appeal Br. 7. We select claim 9 as representative, and decide the appeal of these claims based on claim 9. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Claim 9 is rejected on the same basis as claim 1, with the additional finding "that the cover of Copp, as modified, [is] arranged for retracting onto 6 Appeal2018-007480 Application 14/608,784 a spool, wherein upon retracting the adjacent panels onto the spool, the adjacent panels are inherently not parallel as claimed." Final Act. 4. 3 Appellant argues "Copp repeatedly notes that the purpose of his invention is compact storage, achieved by folded panels," and that modification of Copp's design to retract the cover onto a spool would render Copp inoperable for its intended purpose. Appeal Br. 7; Reply Br. 3. In the case of In re Gordon, 733 F.2d 900 (Fed. Cir. 1984), the claims were directed to a blood filter assembly that permitted entry and exit of the blood at the bottom end of the filter assembly. 733 F .3d at 900. The claims were rejected based on French, a reference that described a liquid strainer for removing dirt and water from gasoline and other light oils, which entered and exited the strainer at the top end. Id. at 901. The court determined that because French relied on gravity to work, "it is not seen that French would have provided any motivation to one of ordinary skill in the art to employ the French apparatus in an upside down orientation." Id. at 902. The court explained that "[t]he mere fact that the prior art could be so modified would not have made the modification obvious unless the prior art suggested the desirability of the modification." Id. The court noted that "if the French apparatus were turned upside down, it would be rendered inoperable for its intended purpose" because the gasoline would collect at the top, water would come out the outlet, and the screen would become clogged. Id. "In effect," the court found, "French teaches away from the board's proposed modification." Id. 3 Unlike claims 1 and 15, Claim 9 does not recite that "each pair of opposed slides is spaced the same distance apart." 7 Appeal2018-007480 Application 14/608,784 Unlike Gordon, in this case there are other references that show a retractable cover can be wound onto a spool with other drive components rather than folded as in Copp. See Final Act. 3 ( citing McKeon, Searfoss, and Pettibone). The Examiner determines one of ordinary skill in the art would have had reason to combine such components "into a suitable drive system for operating the cover of Copp," namely, because such components were well known and combining them with Copp's cover involved only routine engineering. Id. We agree with the Examiner. "[A] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed by the patent applicant is the preferred, or most desirable, combination." In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). As the Fulton court explains: [O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention. "[T]he question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination," not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available. See In re Beattie, [974 F.2d 1309, 1311 (Fed. Cir. 1992)] (internal quotation omitted; emphasis added). A case on point is In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994), in which we upheld the Board's decision to reject, on obviousness grounds, the claims of a patent application directed to one of two alternative resins disclosed in a prior art reference, even though the reference described the resin claimed by Gurley as "inferior." Far from requiring that a disclosed combination be preferred in the prior art in order to be motivating, this court has held that "[a] known or obvious composition does not become patentable 8 Appeal2018-007480 Application 14/608,784 simply because it has been described as somewhat inferior to some other product for the same use" and the reference "teaches that epoxy is usable and has been used for Gurley's purpose." Id. 391 F.3d at 1200. Here, similar to Gurley, even if Copp indicates an advantage to a folded cover, using a spool was known and would not render Copp inoperable for its overall purpose of providing a retractable cover. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner's rejection of claim 9 under 35 U.S.C. Â§ 103(a). For the same reasons, we sustain the rejection of claims 11-14 and 20, which are rejected on the same ground and not argued separately. New Grounds of Rejection Pursuant to the Board's authority under 37 C.F.R. Â§ 4I.50(b), we enter a new ground of rejection of claims 1 and 15. Claims 1 and 15 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Pettibone and Copp. Pettibone teaches a cover assembly for covering an open-top railroad freight car in which the cover 112 may be rolled onto a spool in the retracted position, and "[ t ]he spool may be driven by any appropriate driver to produce movement of the cover 112 to advance or retract the cover along the track 118." Pettibone ,r 35; see also ,r 39 ("Motion of the cover 112 may be produced by various means ... includ[ing] pneumatic drive, an electric motor, or other means."). The rail car has a pair of opposed side walls. Id. at Fig. 1. The cover assembly has a side rail mounted to each side wall (opposing sideboards 114), and the side rails accept an end of the cover 112. Id. ,r 34, Fig. 3. Pettibone teaches that "[e]ach sideboard 114 includes a 9 Appeal2018-007480 Application 14/608,784 track 118," that "[ e ]ngagement of the track may be through a corresponding engagement structure on the cover 112," and that "[a]n engagement structure may, for example, be adapted to slide in tracks 118 to facilitate movement." Id. ,r 34. Because Pettibone's cover 112 is depicted with a constant width, each pair of opposed slides is spaced the same distance apart. Pettibone teaches that cover 112 may comprise a single piece of reliable cover material that extends substantially over the entire length of the containment volume of the freight car when the cover is in an open position. Id. ,r 51. For example, the cover may be a single piece of polycarbonate material with laterally extending ribs on the underside that provide added structural strength. Id. One of ordinary skill in the art would have recognized that other alternative covers could be used. For example, Copp teaches a retractable cover system for a vehicle, where the cover includes a plurality of panels 154, 156 extending between the side walls. Copp Abstract, Figs. 1, 10. The panels of Copp's cover are interconnected by a plurality of joints 200A and 200B. Id. at Fig. 10, col. 13, 1. 47---col. 15, 1. 10. Each of the joints includes member 210, which connects to one of the panels, member 240, which connects to another panel, and one or more shafts that connect to members 210, 240 at one end and a guide element 3 3 0 at another end. See id. at Figs. 14, 27 (joint 200A), 40 (joint 200B), col. 13, 1. 47---col. 15, 1. 49. Guide elements 330 are supported by side rails and allow movement along the fore-aft direction by the panel assembly. Id. at col. 12, 11. 38--43. Guide element 330 is not limited to rollers, and may be a guide block 330B, which does not necessarily rotate as the guide block travels along the path of the side rails. Id. at col. 18, 11. 63----67, Fig. 15. Joint assemblies 200A and 200B, including elements 210, 240, 270, and a guide 10 Appeal2018-007480 Application 14/608,784 block 330B, are slides as recited in claim 15 because they interconnect the panels and slide along the track for the cover. One of ordinary skill in the art would have had reason to substitute Pettibone's cover material with panels interconnected by joints as taught by Copp, namely, to provide other options for materials, including those with greater strength. "[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). One of ordinary skill in the art would have understood that a cover formed of interconnected panels, as taught by Copp, would be suitable for winding on a spool as evidenced by Russell (US 5,040,843, issued Aug. 20, 1991). See Russell Abstract, Figs. 1, 3, col. 3, 11. 48-58. Using panels interconnected by joints that slide in the rails of Pettibone, and guide the cover as it is wound onto a spool as in Pettibone, results in slides that interconnect panels as claimed, and "each pair of opposed slides is spaced the same distance apart" to fit into Pettibone's rails. We note the Patent Trial and Appeal Board is a review body, rather than a place of initial examination. We have rejected independent claims 1 and 15 based on our authority under 37 C.F.R. Â§ 4I.50(b). We have not, however, reviewed the remaining claims to the extent necessary to determine whether those claims are unpatentable under 35 U.S.C. Â§ 103. We leave it to the Examiner to ascertain whether the dependent claims should be rejected based on similar grounds to those set forth herein or in combination with additional prior art. 11 Appeal2018-007480 Application 14/608,784 DECISION We affirm the Examiner's decision to reject claims 9, 11-14, and 20 under 35 U.S.C. Â§ 103. We reverse the Examiner's decision to reject claims 1, 4--8, 15, 17- 19, and 21 under 35 U.S.C. Â§ 103. We enter a new ground of rejection of claims 1 and 15 under 35 U.S.C. Â§ 103. This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). "A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 4I.50(b). Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of 12 Appeal2018-007480 Application 14/608,784 rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART; 37 C.F.R. Â§ 4I.50(b) 13