George Schafer

Patent Trials and Appeals Board

Jun 15, 2021

2020005771 (P.T.A.B. Jun. 15, 2021)

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.
15/872,226 01/16/2018 George J. Schafer JR. Schafer-1 6702
32132 7590 06/15/2021
LAMORTE & ASSOCIATES P.C.
P.O. BOX 434
YARDLEY, PA 19067
EXAMINER
COOK, KYLE A
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
06/15/2021 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):
mail@uspatlaw.com
malamorte@verizon.net
uspatlaw1@verizon.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE J. SCHAFER JR.
Appeal 2020-005771
Application 15/872,226
Technology Center 3700
Before DANIEL S. SONG, JOSIAH C. COCKS, and
LEE L. STEPINA, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–17. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as the
named inventor, Mr. George J. Schafer Jr. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a method of connecting a roof rack to a
vehicle. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of connecting a roof rack to a vehicle having
a first roll bar, a second roll bar, and a retractable roof, wherein
bolt holes are formed in said first roll bar and said second roll
bar, and a gap space exists between said retractable roof and both
said first roll bar and said second roll bar, said method
comprising the steps of:
providing a first mounting bar and a second mounting bar,
wherein both said first mounting bar and said second mounting
bar have flat top surfaces and contain a plurality of receptacles
periodically spaced within said flat top surfaces;
providing mounting accessories, wherein each of said
mounting accessories is configured to selectively received by any
one of said plurality of receptacles;
providing mechanical fasteners;
attaching said first mounting bar to said first roll bar with
said mechanical fasteners, wherein said mechanical fasteners
extend through said bolt holes in said first roll bar and retain said
first mounting bar within said gap space;
attaching said second mounting bar to said second roll bar
within said gap space, wherein said second roll bar is oriented
parallel to said first roll bar;
connecting at least one of said mounting accessories to at
least one of said plurality of receptacles on both said first roll bar
and on said second roll bar.
Supplemental Appeal Br. 2–3.
REFERENCES
The prior art relied upon by the Examiner is:
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Name Reference Date
Rosinski US 2010/0073691 A1 Mar. 25, 2010
McMurtrie US 2012/0193380 A1 Aug. 2, 2012
Engelmann DE 3150130 A1 June 30, 1983
TheKid25
(“NPL”)
https://www.jk-forum.com/forums/
jk-show-tell-33/sanswindshield-
249295/2
Aug. 9, 2012
Redbeard Offroad
(“YouTube”)
https://www.youtube.com/watch?v=
bpp6_SYxpZM
Sep. 16, 2015
d&t online, Knock
Down Fittings,
Brackets and
Plates (“NPL2”)
http://wiki.dtonline.org/index.php/
Knock_Down_Fittings%2C_
Brackets_and_Plates
June 24, 2016
REJECTIONS
1. Claims 1–11 are rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2.
The Examiner also rejects various claims under 35 U.S.C. § 103 as
follows:
2. Claims 1, 2, 5–7, 10, and 11 as being unpatentable over
McMurtrie in view of YouTube, NPL and NPL2. Final Act. 4.
3. Claims 3 and 4 as being unpatentable over the prior art as
applied to claim 1, and further in view of Engelmann. Final Act. 9.
4. Claims 8 and 9 as being unpatentable over the prior art as
applied to claim 1, and further in view of Rosinski. Final Act. 10.
5. Claims 12–14, 16, and 17 as being unpatentable over
McMurtrie in view of YouTube and NPL. Final Act. 11.

2 The correct webpage actually appears to be at https://www.jk-
forum.com/forums/jk-show-tell-33/sans-rollbar-covers-243017/.
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6. Claim 15 as being unpatentable over the prior art as applied to
claim 12, and further in view of Engelmann. Final Act. 13.
7. Claims 1 and 12 as being unpatentable over Applicant’s
Admitted Prior Art (“AAPA”) in view of McMurtrie and NPL2. Final Act.
13.
OPINION
We initially note that only those arguments actually made by the
Appellant have been considered in this decision. Arguments which the
Appellant could have made but chose not to make in the Appeal Brief have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv); see also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“it has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections”); Ex Parte Frye, 94 USPQ2d
1072, 1075–76 (BPAI 2010, precedential)(“The panel then reviews the
obviousness rejection for error based upon the issues identified by appellant,
and in light of the arguments and evidence produced thereon.”).

Rejection 1: Indefiniteness
The Examiner rejects claims 1–11 as being indefinite, determining
that the recitation “connecting at least one of said mounting accessories to at
least one of said plurality of receptacles on both said first roll bar and on said
second roll bar” is unclear as to “whether this limitation is adding
receptacles to the roll bars or if the receptacles are referring to the mounting
bar receptacles.” Final Act. 2–3.
The Appellant disagrees, and argues that proper antecedent basis has
been established for the recited “plurality of receptacles” in independent
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claim 1, and that this recitation is also disclosed with adequate support in the
Specification. Appeal Br. 24; see also Reply Br. 3–4. According to the
Appellant, “[t]he claim phraseology has plain meaning given the context of
the claim and the supporting specification,” and also argues that “[t]he claim
is merely drafted to be broad,” but that “[b]readth of a claim is not to be
equated with indefiniteness.” Reply Br. 4.
We agree with the Examiner and note that the Appellant does not
appear to fully appreciate the rejection being made. The Appellant’s
arguments appear to be directed to antecedent basis and/or written
description, whereas the rejection is that of indefiniteness of the identified
language itself. As reproduced above, claim 1 recites that the roll bars have
“bolt holes” for attachment of “mounting bar[s],” and does not recite that the
roll bars have a “plurality of receptacles.” Instead, claim 1 recites that it is
the mounting bars that “contain a plurality of receptacles.” The portions of
the Specification reproduced by the Appellant in its Reply Brief teach that it
is the mounting bars that have a plurality of receptacles as claimed, not the
roll bars. See Reply Br. 3–4.
However, the final limitation of claim 1 at issue recites the step of
connecting mounting accessories to “at least one of said plurality of
receptacles on both said first roll bar and on said second roll bar” instead of
on the first mounting bar and the second mounting bar that are recited and
disclosed as having the receptacles. Hence, we agree with the Examiner that
this limitation is unclear as to “whether this limitation is adding receptacles
to the roll bars or if the receptacles are referring to the mounting bar
receptacles,” and accordingly, indefinite. Final Act. 2–3. Thus, we affirm
this rejection of claim 1, and of dependent claims 2–11.
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Rejection 2: Claims 1, 2, 5–7, 10, and 11
The Examiner rejects claims 1, 2, 5–7, 10, and 11 as being
unpatentable over McMurtrie in view of YouTube, NPL, and NPL2. Final
Act 4–9.3 The Examiner relies on McMurtrie for disclosing a rack that
mounts to a roll bar of a vehicle, YouTube and NPL for disclosing a second
roll bar in a vehicle, and NPL2 for disclosing fasteners, to conclude that the
invention of claim 1 would have been obvious to one of ordinary skill in the
art. Final Act. 4–7. We agree with the Examiner’s findings and conclusion
and address the Appellant’s arguments proffered in support of patentability.
The Appellant argues that in McMurtrie, “[t]he rack is five inches
high. As such, it would not be possible to fit the McMurtrie system in the
gap space between the roof of the vehicle and the roll bar,” and it “can only
be used[] when the roof is retracted or removed,” which is “the problem the
present invention is attempting to solve.” Appeal Br. 9. The Appellant
asserts that McMurtrie “makes no disclosure showing that the base plate (11)
can be separates [sic, separated] from the rack arms (12),” and as such, “the
cited prior art does not disclose roof racks that fit within the gap space
between the roll bars and the roof.” Appeal Br. 10–11. Accordingly, the
Appellant argues that the rejection is improper because it relies on only the
base plate 11 of McMurtrie as corresponding to the recited mounting bar,
whereas “the base plate (11) and the rack arms (12) are a welded assembly,”

3 As to indefiniteness of these claims, the Examiner states that “[f]or
purposes of examination, the plurality of receptacles will be interpreted to
refer to the receptacles on the mounting bars.” Final Act. 3. We review this
rejection based on the Examiner’s interpretation.
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and that it is improper to “literally cut[] the assembly apart and apply[] one
of the cut parts.” Appeal Br. 10.
The Appellant is incorrect and its arguments are unpersuasive
because, as the Examiner points out, McMurtrie explicitly “teaches the rack
arms being removably attachable to the mounting bars.” Final Act. 7;
McMurtrie ¶ 26 (“each rack arm may be permanently or removably affixed
to the base plate in any number of manners, and embodiments of the present
invention are contemplated for use with any type of method for permanently
or removably affixing the rack arms to the base plate.”); see also Ans. 17
(McMurtrie “explicitly teaches that racks 12 can be removably affixed to the
bar.”). As the Examiner also finds, McMurtrie “is silent as to the means to
removably attach the rack arms,” except generally teaching that “bolts are a
known means to attach parts of a roof rack.” Final Act. 7 (citing McMurtrie
¶¶ 11, 24, 25). This silence and the general teachings of using bolts are the
reasons for the Examiner’s reliance on, and application of, the fasteners
disclosed in NPL2. Final Act. 7.
The Appellant also argues that McMurtrie “makes no disclosure of a
mounting bars with flat top surfaces and receptacles formed in the flat top
surface at periodic positions.” Appeal Br. 10; see also Appeal Br. 12.
However, McMurtrie discloses that the base plate may be 1 inch by 2 inch
rectangular steel tubing, which would have a flat top surface. McMurtrie
¶¶ 29, 31. As also explained, “NPL2 teaches that when fastening two
components at a right angle with each other, a through-hole may be provided
in the horizontal component to secure a bolt with a nut or another lock
element,” and in the rejection, the mounting bar of McMurtrie is “modified
in view of NPL2 to provide holes within the top surface of the mounting bar
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in order to secure a nut on the end of each bolt.” Final Act. 7; Ans. 18
(citing Final Act. 7–8); see also Ans. 19 (annotated Figure 1 of McMurtrie).
Referring to the annotated Figure 1 of McMurtrie, the Appellant
responds that “[t]here is absolutely no motivation or support for such a
speculative construct. The Examiner must apply the prior art to the claims.
The Examiner cannot create prior art or read features into the prior art that
clearly do not exist.” Reply Br. 5. However, the Examiner is not creating
prior art. Rather, the Examiner is merely illustrating how a skilled artisan
would have assembled the base plate and rack arms of McMurtrie at a right
angle to each other using the well-known fastener for this purpose as
disclosed in NPL2, considering McMurtrie’s “silen[ce] as to the means to
removably attach the rack arms.” Final Act. 7.
The Appellant also argues that “[k]nock down fittings for
woodworking are clearly non-analogous to vehicle roof racks that receive
mounting accessories.” Appeal Br. 11. However, we agree with the
Examiner that NPL2 and its disclosed fittings/fasteners are reasonably
pertinent because “fasteners and affixing devices needed to attach
orthogonal components would logically commend itself to an inventor’s
attention.” Ans. 20. Pertinence of NPL2 is further evinced by McMurtrie,
which generally teaches that “bolts are known affixing devices for use with
mounting racks.” Ans. 20 (citing McMurtrie ¶¶ 11, 24, 25).
The Appellant further asserts that “[e]ven if know [sic, knock] down
fittings of the NPL2 reference were analogous, the Examiner’s proposed
modification or combination of the prior art requires a change in the
principle of operation of the prior art invention being modified,” and that the
rejection engages in impermissible hindsight by relying on “small pieces
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from each of the cited references and joins them together without a proper
showing of motivation.” Appeal Br. 12–13, 23. However, the Appellant
does not explain how the principle of operation of McMurtrie would be
changed, or how the rejection relies on impermissible hindsight, especially
considering that McMurtrie itself discloses that its rack arms are “removably
affixed” to the mounting bars. McMurtrie ¶ 26. As the Examiner rebuts,
“YouTube and NPL references are merely used to teach known structure of
a four-door Jeep Wrangler, which page 20 of the appeal brief states is
known,” and as discussed above, NPL2 is relied upon for disclosing a well-
known fastener to removably attach the rack arms to the mounting bars
orthogonally in view of McMurtrie’s silence as to the means for doing so.
Ans. 22; Final Act. 7.
Therefore, in view of the above considerations, we do not find any of
the Appellant’s arguments persuasive, and accordingly, affirm the Examiner
rejection of claim 1. The Appellant does not submit arguments specifically
directed to the rejected dependent claims 2, 5–7, 10, and 11, and thus, these
claims fall with claim 1.

Rejection 3: Claims 3 and 4
The Examiner rejects claims 3 and 4 as being unpatentable over the
prior art as applied to claim 1, and further in view of Engelmann. Final Act.
9–10. The Appellant argues that the Engelmann “does not address the
deficiencies of the McMurtrie” as applied to claim 1. Appeal Br. 15.
However, because we are not persuaded by the Appellant’s arguments as to
the asserted deficiencies of McMurtrie, we affirm this rejection as well.

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Rejection 4: Claims 8 and 9
The Examiner rejects claims 8 and 9 as being unpatentable over the
prior art as applied to claim 1, and further in view of Rosinski. Final Act.
10–11. The Appellant asserts that Rosinski is non-analogous art, but even if
it is analogous, Rosinski “does not address the deficiencies of the
McMurtrie” as applied to claim 1. Appeal Br. 15–16. We are not persuaded
by the Appellant’s assertions in view of the Examiner’s explanation that:
Since automobile roof racks may have substantial forces
applied thereto depending on the load placed thereon, the
vehicle speed, and the wind speed, art directed to providing a
stronger and more durable bolt connection would also logically
commend itself to an inventor. Rosinski is directed to welded
fasteners for automobiles and teaches that welded fasteners
such as bolts are relatively strong and durable compared to non-
welded fasteners.
Ans. 21 (citing Rosinski ¶¶ 2, 3).
The Appellant does not present any persuasive arguments in rebuttal
to the Examiner’s above-noted explanation. Moreover, we are not
persuaded by the Appellant’s arguments as to the asserted deficiencies of
McMurtrie. Thus, we affirm this rejection.

Rejection 5: Claims 12–14, 16, and 17
The Examiner rejects claims 12–14, 16, and 17 as being unpatentable
over McMurtrie in view of YouTube and NPL. Final Act. 11–13. The
Appellant’s arguments against this rejection are substantively the same as
the unpersuasive arguments submitted with respect to Rejection 2 discussed
above. Appeal Br. 18–20. Accordingly, we affirm this rejection of claims
12–14, 16, and 17.

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Rejection 6: Claim 15
The Examiner rejects claim 15 as being unpatentable over the prior art
as applied to claim 12, and further in view of Engelmann. Final Act. 13.
The Appellant does not set forth specific arguments directed to claim 15, but
merely relies on its dependency on claim 12 for patentability. Appeal
Br. 20. Accordingly, claim 15 falls with claim 12.

Rejection 7: Claims 1 and 12
The Examiner rejects claims 1 and 12 as being unpatentable over
Applicant’s Admitted Prior Art (“AAPA”) in view of McMurtrie and NPL2.
Final Act. 13–16. The Appellant admits that “there are vehicles with roll
bars and retractable roofs, where a gap space exists between the roll bars and
the roof,” and clarifies that “[t]he Applicant makes no claim that this
structure is novel.” Appeal Br. 20. According to the Appellant, it is
“claiming a method of mounting a roof rack within the gap space of this
existing structure.” Appeal Br. 20. In support thereof, the Appellant
submits arguments that are substantively the same as the unpersuasive
arguments submitted with respect to Rejection 2 discussed above. Appeal
Br. 21–22. Accordingly, we affirm this rejection as well.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–11 112 Indefiniteness 1–11
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1, 2, 5–7,
10, 11
103 McMurtrie,
YouTube, NPL,
NPL2
1, 2, 5–7,
10, 11

3, 4 103 McMurtrie,
YouTube, NPL,
NPL2, Engelmann
3, 4
8, 9 103 McMurtrie,
YouTube, NPL,
NPL2, Rosinski
8, 9
12–14, 16,
17
103 McMurtrie,
YouTube, NPL
12–14, 16,
17

15 103 McMurtrie,
YouTube, NPL,
Engelmann
15
1, 12 103 AAPA,
McMurtrie, MPL2
1, 12
Overall
Outcome
1–17
TIME PERIOD FOR RESPONSE
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