Ex Parte Spahn et al

Patent Trials and Appeals BoardJan 24, 2019

15171290 - (D) (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/171,290 06/02/2016 121691 7590 01/28/2019 Ford Global Technologies, LLC/ King & Schickli, PLLC 800 CORPORATE DRIVE, SUITE 200 Lexington, KY 40503 FIRST NAMED INVENTOR Brian Robert Spahn 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. 83663125 8149 EXAMINER PEDDER, DENNIS H ART UNIT PAPER NUMBER 3612 NOTIFICATION DATE DELIVERY MODE 01/28/2019 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): uspto@iplawl.net laura@iplawl.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN ROBERT SPAHN and PATTRICK LOEW Appeal2018-005674 Application 15/171,290 Technology Center 3600 Before EDWARD A. BROWN, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 1 seeks review under 35 U.S.C. Â§ 134 of the Examiner's decision, as set forth in the Final Office Action dated September 27, 2017 ("Final Act."), rejecting claims 1-7, 9-17, 19, and 20, which are the pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Ford Global Technologies, LLC ("Appellant") is the applicant, according to 37 C.F.R. Â§ 1.46, and is identified as the real party in interest. Appeal Br. 3. Appeal2018-005674 Application 15/171,290 CLAIMED SUBJECT MATTER Claim 1, reproduced below, represents the claimed subject matter: 1. A deployable storage system for a truck, compnsmg: a truck bed wall including a cavity; and a storage cabinet integrated into said truck bed wall, said storage cabinet configured to be displaceable between a stowed position held within said cavity of said truck bed wall and a deployed position extending above said truck bed wall. Appeal Br. 15 (Claims App.). REJECTIONS I. Claims 1 and 20 are rejected under 35 U.S.C. Â§ I02(a)(2) as anticipated by Johnson (US 9,481,403 Bl, issued Nov. 1, 2016). II. Claims 2--4 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Johnson and Vitry (US 7,798,540 Bl, issued Sept. 21, 2010). III. Claims 5-7 and 9-11 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Johnson, Vitry, and Hume (US 7,942,295 B 1, issued May 17,2011). IV. Claims 12 and 13 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Johnson, Vitry, Hume, and Simnacher (US 5,303,969, issued Apr. 19, 1994). V. Claim 14 is rejected under 35 U.S.C. Â§ 103 as unpatentable over Johnson, Vitry, Hume, Simnacher, and Calvert (US 9,156,412 Bl, issued Oct. 13, 2015). VI. Claims 15-17 are rejected under 35 U.S.C. Â§ 103, as unpatentable over Johnson and Hume. 2 Appeal2018-005674 Application 15/171,290 VII. Claim 19 are rejected under 35 U.S.C. Â§ 103, as unpatentable over Johnson and Calvert. ANALYSIS Rejection I-Anticipation of Claims 1 and 20 by Johnson As to claim 1, the Examiner finds that Johnson discloses a truck bed wall (perimeter wall 20) including a cavity, and a cabinet ( case 32) within and deployed from the truck bed wall. Final Act. 2; see also Johnson Figs. 1-2. The Examiner states, "any wall within a truck bed is considered a truck bed wall." Final Act. 2. Appellant contends that Johnson does not disclose a truck bed wall having a cavity that a storage cabinet is configured to be held within in a stowed position. Appeal Br. 9-10. Appellant contends that Johnson's cabinet/case 32 is positioned within interior space 22 of enclosure 18, not within a cavity of a truck bed wall. Id. at 10. Appellant contests the Examiner's position that "any wall within a truck bed is considered a truck bed wall" because Appellant's Specification describes a truck bed wall as part of the truck, and not as a separate element, like perimeter wall 20 of enclosure 18 in Johnson. Id.; see also Johnson Abstract; col. 1, 1. 66-col. 2, 1. 22. Appellant's contentions are persuasive. In construing claim terms: The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is ... an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is "consistent with the specification." 3 Appeal2018-005674 Application 15/171,290 In re Smith International, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (citing In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and internal quotation marks omitted). Here, the Examiner's interpretation of "a truck bed wall" as "any wall within a truck bed" does not correspond with what and how Appellant describes its invention in the Specification, that is, an interpretation that is consistent with the Specification. For example, the "Background" section of the Specification contrasts problems in the prior art with benefits of the invention, stating "[ w ]hile such a tool box provides an excellent storage space for organizing tools and the like, the tool box does interfere with the use of the truck bed." Spec. ,r 2 (emphasis added); see also Appeal Br. 13. In describing Figures 1-3, the Specification states, "[i]n the illustrated embodiment, the pickup truck 12 includes a truck bed wall 14 between the bed 16 and the cab 18 of the pickup truck 12" and "[t]he storage cabinet 20 is integrated into the truck bed wall 14 ... as illustrated in Figure 1 and ... in Figure 3." Spec. ,r,r 18-19; see also Ans. 7. That is, storage cabinet 20 is provided in truck bed wall 14. Consistent with this description in the Specification, we understand that Figures 1-3 show pickup truck 12 including an original truck bed wall 14 (i.e., one that is provided in pickup truck 12 from the truck manufacturer), rather than a truck bed wall later added to, or varying the size of, the original truck bed. As shown in Figures 1-3, truck bed wall 14 and both opposed sidewalls of pickup truck 12 are walls of pickup truck 12 that define the open space of bed 16 rearward of truck bed wall 14. In light of the Specification, we construe "a truck bed wall," as claimed, to be a truck bed wall that is an original component of a truck from the truck manufacturer that defines an original, unaltered volume of the truck bed. Although Appellant does not provide an explicit definition 4 Appeal2018-005674 Application 15/171,290 of "a truck bed wall," our construction is consistent with the Specification. It is also consistent with Appellant's position. See Appeal Br. 10, 13. Applying this construction of "a truck bed wall" to claim 1, perimeter wall 20 of Johnson's enclosure 18 is a separate element from sidewall 14, and enclosure 18 is added to truck 12 by being fixedly coupled to the top surface of bed 16 next to sidewall 14 and above bed 16. See Johnson Figs. 1-2; Abstract; col. 1, 1. 66-col. 2, 1. 22. Enclosure 18 is also shown spaced forward from the left-most wall of truck 12 in Figure 3. Perimeter wall 20 is not disclosed as a truck bed wall as we construe this term in view of the Specification. Thus, Johnson does not anticipate claim 1. For these reasons, we do not sustain the rejection of claim 1, and of dependent claim 20 as anticipated by Johnson. Rejection II-Obviousness of Claims 2--4 over Johnson and Vitry Rejection III-Obviousness of Claims 5-7 and 9-11 over Johnson, Vitry, and Hume Rejection IV-Obviousness of Claims 12 and 13 over Johnson, Vitry, Hume and Simnacher Rejection V-Obviousness of Claim 14 over Johnson, Vitry, Hume, Simnacher, and Calvert Rejection VI-Obviousness of Claims 15-17 over Johnson and Hume Rejection VII-Obviousness of Claim 19 over Johnson and Calvert The Examiner's reliance on Vitry, Hume, Simnacher, and/or Calvert in rejecting dependent claims 2-7, 9-17, and 19 (Final Act. 3-5) fails to cure the deficiencies in the rejection of parent claim 1. Thus, we do not sustain the rejections of claims 2-7, 9-17, and 19 as unpatentable over the indicated combinations of references based on Johnson. 5 Appeal2018-005674 Application 15/171,290 DECISION We reverse the rejections of claims 1-7, 9-17, 19, and 20. REVERSED 6