George SchaferDownload PDFPatent Trials and Appeals BoardJun 15, 20212020005771 (P.T.A.B. Jun. 15, 2021) Copy Citation 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. Appeal 2020-005771 Application 15/872,226 2 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: Appeal 2020-005771 Application 15/872,226 3 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/. Appeal 2020-005771 Application 15/872,226 4 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 Appeal 2020-005771 Application 15/872,226 5 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. Appeal 2020-005771 Application 15/872,226 6 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. Appeal 2020-005771 Application 15/872,226 7 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 Appeal 2020-005771 Application 15/872,226 8 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 Appeal 2020-005771 Application 15/872,226 9 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. Appeal 2020-005771 Application 15/872,226 10 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. Appeal 2020-005771 Application 15/872,226 11 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 Appeal 2020-005771 Application 15/872,226 12 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 Copy with citationCopy as parenthetical citation