Backsaver International, Inc.

Patent Trials and Appeals Board

Jun 11, 2020

2020000047 (P.T.A.B. Jun. 11, 2020)

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.
15/678,630 08/16/2017 Ralph Norfleet 1379-011 Cont. 7813
1009 7590 06/11/2020
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
EXAMINER
PEDDER, DENNIS H
ART UNIT PAPER NUMBER
3612
NOTIFICATION DATE DELIVERY MODE
06/11/2020 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):
laura@iplaw1.net
uspto@iplaw1.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RALPH NORFLEET and JASON NORFLEET
____________

Appeal 2020-000047
Application 15/678,6301
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–7 and 9–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Backsaver
International, Inc. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s invention “relates to the vehicle arts and, more
particularly, to a handle for assisting in raising or lowering a tailgate, a fixed
guide arrangement for a tailgate lift-assist device, and safety bumpers for the
tailgate.” (Spec. ¶ 1.)
Claims 1, 11, and 19 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A tailgate lift assembly, comprising:
an elongated housing;
a spring anchored at one end at a first end of the housing;
a connector having a first end affixed to the opposite end
of said spring and extending through said housing; and
first and second stationary guides for engaging the
connector.

REJECTIONS
Claims 1–7, 10–17, 19, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Rayburn (US 6,126,223, iss. Oct. 3, 2000), and Nguyen
(US 6,126,222, iss. Oct. 3, 2000) or Ehret (US 2,572,847, iss.
Oct. 30, 1951.)
Claims 9 and 18 are rejected under 35 U.S.C. § 103 as unpatentable
over Rayburn, Nguyen or Ehret, and Norfleet (US 7,309,094 B2, iss.
Dec. 18, 2007).

ANALYSIS
Claims 1, 2, 6, 10–17, and 19
Obviousness is a legal conclusion involving a determination of
underlying facts.
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Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that Rayburn teaches “housing 20, spring 19, connector 15 and first
and second rotatable guides 22, 23 on the housing sidewalls.” (Final
Action 2; see also Rayburn, Figs. 2, 3.) The Examiner also finds that
Nguyen “teach[es] that a cable guide may be structured as a semi-circular
fixed guide 50.” (Id. (citing Nguyen, Fig. 3.) The Examiner also finds that
“Ehret teaches that a cable guide may be structured as a semi-circular
stationary guide 49, 50 fixed in position at fastener 51.” (Id.; see also Ehret,
Fig. 4.) The Examiner determines that “[i]t would have been obvious at the
time of filing of applicant to provide in Rayburn a fixed guide as taught by
either Nguyen et al. or Ehret saving material and the possibility of wear at
the roller bearing.” (Final Action 2.) The Examiner determines that it
would have been obvious to make the combination for the additional reasons
of “‘prolong[ing] the service life of the assembly and also allow[ing] for
robust performance under harsh operating conditions’, a goal of applicant,
page 10, lines 3-5.” (Id. at 2–3.)
Appellant argues that “the Examiner has failed to provide sufficient
rationale for combining the Nguyen reference with Rayburn” (Appeal Br. 5),
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and that the Examiner improperly relied on hindsight to make the
combination because the Examiner relied on “precisely the result of the
combination stated in the Appellant’s specification” (Id. (emphasis omitted);
see also Spec. ¶ 46). Thus, Appellant argues, the Examiner has not
presented a prima facie case of obviousness. (Appeal Br. 5; see also Reply
Br. 2.)
“Under the correct analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
a reason for combining the elements in the manner claimed.” KSR Int’l Co.,
550 U.S. at 420. Here, even if we were to accept Appellant’s sub silentio
contention that prolonging the assembly’s service life and allowing for
robust performance under harsh conditions were neither needs nor problems
known in the field, the Examiner still provides the separate motivation of
“saving material and the possibility of wear at the roller bearing.” (See Final
Action 2.) Appellant does not persuasively argue why “saving material and
the possibility of wear at the roller bearing” do not individually and/or
collectively provide a sufficient reason to combine the prior art elements in
the manner claimed.
The USPTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011) (brackets in original) (quoting 35 U.S.C. § 132(a)). In
view of the above, we do not agree that the Examiner failed to notify
Appellant of the reasons for the rejection.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1. Claims 2, 6, 10–17, and 19 are not separately argued and fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

Claim 3
Claim 3 recites: “The assembly of claim 1, further including a pair of
fasteners for connecting each stationary guide to the housing.”
The Examiner finds that Nguyen uses multiple fasteners (Answer 5
(citing Nguyen, Fig. 4)), and that multiple fasteners are also used in Ehret
“at [rivets] 51 and [] aperture 60” (id., citing Ehret, Fig. 4). The Examiner
also finds that the use of “multiple fasteners in Ehret is deemed to be an
obvious duplication of parts.” (Final Action 3.)
Appellant argues that the Examiner provides “no rationale explaining
why a skilled artisan would combine the fasteners of Nguyen with the guide
of Rayburn. Rather, the Examiner merely notes that both Nguyen and Ehret
teach fasteners. See Examiner's Answer p. 6. Lacking is any justification
whatsoever for combining the references in this manner.” (Reply Br. 2.)
The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398 . . . (2007), explained that, “because inventions in most,
if not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known,” “it can
be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” Id. at 418–
19.

Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed. Cir.
2017). Here, the Examiner does not sufficiently identify a reason that would
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have prompted a person of ordinary skill in the art to make the claimed
combination. Therefore, we will reverse the rejection of claim 3.

Claim 4
Claim 4 recites: “The assembly of claim 1, wherein the first
stationary guide is exposed to an open end of the housing through which the
connector passes.”
Appellant argues that the Final Action “does not appear to provide a
basis for rejecting claims 4 or 5.” (Appeal Br. 6.) We agree that, in the
Final Action, the Examiner does not provide a sufficient explanation for the
rejection of claim 4. In the Answer, the Examiner determines that “figure 2
of Rayburn is self-explanatory.” (Answer 6.)
Appellant argues that “[s]imply alleging that the cited references are
‘self-explanatory’ fails to provide Appellant with any useful information
which may be used to judge the merits of the rejection[].” (Reply Br. 3.)
As an initial matter, we note the striking similarities between
Appellant’s Figures 7 and 9, and Rayburn’s Figures 2 and 3, respectively.
Appellant’s Specification describes the end of housing 120 nearest
guide 123 as “the open end of housing 120.” (See Spec. ¶ 51; see also id. at
Figs. 7, 9, 10, 12.) This corresponds to the open end of housing 20 in
Figure 2 of Rayburn (marked as aperture 27 in Figure 3 of Rayburn). (See
Rayburn, col. 5, ll. 7–10; see also id. at Figs. 2, 3.) We also note that
Appellant’s Specification discloses that “connector 50 may be a stainless
steel cable capable of withstanding high pound force” (Spec. ¶ 41); and that
Rayburn’s specification discloses that “cable 15 may be a stainless steel
cable capable of withstanding high pound force.” (Rayburn, col. 3, ll. 37–
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39.) Also, Appellant’s Figures 7 and 9 show connector 50 passing through
the open end of the housing; and Rayburn’s Figures 2 and 3 show the
connector (i.e., cable 15) passing through the open end of the housing (i.e.,
aperture 27). Moreover, there can be no question that Appellant’s Figures 7,
9, 10, and 12 show guide 123 exposed to the open end of the housing
through which the connector passes; and that Rayburn’s Figures 2 and 3
show guide 23 exposed to the open end of the housing (i.e., aperture 27)
through which the connector (i.e., cable 15) passes.
In view of the above, including the discussion of claim 1, it is clear
that claim 4 would have been obvious to one of ordinary skill in the art in
view of Rayburn, and Nguyen or Ehret.
However, we agree with Appellant that the Examiner’s minimal
explanation that “figure 2 of Rayburn is self-explanatory” (Answer 6) does
not sufficiently explain the basis for the Examiner’s rejection of claim 4. In
other words, the Examiner did not sufficiently notify Appellant of the
reasons for rejection, “together with such information and references as may
be useful in judging of the propriety of continuing the prosecution of [the]
application.” In re Jung, 637 F.3d at 1362 (brackets in original) (quoting 35
U.S.C. § 132(a)).
Therefore, we will reverse the Examiner’s rejection of claim 4, and
pursuant to our authority under 37 C.F.R. § 41.50(b), enter a NEW
GROUND OF REJECTION of claim 4 under 35 U.S.C. § 103.

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Claim 5
Claim 5 recites: “The assembly of claim 1, wherein the first
stationary guide includes a semi-circular cross-section having a rounded face
for engaging the connector.”
In the Final Action, the Examiner does not specifically discuss
claim 5. In the Answer, the Examiner states that “[t]he term semi-circular
was discussed in the rejection above [regarding claim 1]. ‘Rounded face’ is
implicit in ‘semi-circular’ and self-evident from the secondary references.”
(Answer 6.)
Appellant argues that “the Examiner has still failed to provide
rationale sufficient to maintain a rejection.” (Reply Br. 2; see also id. at 3.)
As discussed above with regard to claim 1, the Examiner has provided
sufficient reason to combine the prior art elements in the manner claimed in
claim 1. And with regard to the additional requirement of claim 5 that the
first guide include a semi-circular cross-section, the Examiner finds that both
Nguyen and Ehret teach such a guide. (See Final Action 2, Answer 4.)
In this case, Appellant does not persuasively argue why the
Examiner’s explanations in the Final Action and Answer (see Final
Action 2, Answer 4, 6), do not provide sufficient reasons for the rejection,
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.” In re
Jung, 637 F.3d at 1362 (brackets in original) (quoting 35 U.S.C. § 132(a)).
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 5.

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Claim 7
Claim 7 recites: “The assembly of claim 1, wherein the first
stationary guide comprises inwardly sloping sides, the inwardly sloping
sides configured to form a center channel to loosely guide the connector.”
Appellant argues that “[t]he Examiner completely fails to account for
the requirement of a ‘central channel’ anywhere in the rejection statement,
and such feature is not present in any of the cited references.” (Appeal
Br. 6.) Appellant further argues that, in view of Figure 3 of Nguyen, “the
cable guide 50 of Nguyen is in no way a ‘central channel,’ as required by
claim 7.” (Reply Br. 4.)
The Examiner finds that Nguyen “has a groove for engaging the cable
as seen in figure 5 with inwardly sloping sides, claim 7, the groove forming
a recess, claim 11. Ehret has a groove formed by the disclosed side flanges
52, 53, col. 3, lines 45-49.” (Final Action 3.) The Examiner also finds that
“[a]s to 7 and 17, the clearance between recess or groove and cable is an
obvious expedient to one of ordinary skill in this art . . . to avoid excessive
friction.” (Id.)
Figure 5 of Nguyen shows cable guide 50 having inwardly sloping
sides forming a center channel. (See Nguyen, Fig. 5.) Further, Ehret
discloses that, as shown in Figure 2, “[t]he bearing blocks 49 to 50 are
preferably provided with side flanges 52, 53, respectively, which extend
over the curved bearing edges of the blocks and provide bearing grooves or
channels for the cables 20 to 21.” (Ehret, col. 3, ll. 44–49.)
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 7.

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Claims 9 and 18
Claim 9 recites: “The assembly of claim 1, wherein the first
stationary guide is configured to keep the connector in an aligned position in
relation to the housing, and the second stationary guide is configured to
allow a deviation from the aligned position.” Claim 18 contains similar
language and is argued together with claim 9. Claim 18 will stand or fall
with claim 9. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that it would have been obvious
to provide in the combination [discussed above regarding
claim 1] a modified second stationary guide 52/70 as taught by
Norfleet in order to allow cable 42 deviation from aligned
position at 58, figure 4, to a deviated position at the right side of
figure 4 in order to “permit articulation between the cable 42 and
the tailgate 20 as the tailgate is moved ....”, col. 4, lines 56-60.

(Final Action 3.)
Appellant argues that
[t]he Examiner’s citation to col. 4, lines 56-60 of Norfleet as
indicating that this arrangement “permit[s] articulation between
the cable 42 and the tailgate 20 as the tailgate is moved” has
absolutely no bearing on whether the guide itself is “configured
to allow a deviation from the aligned position” achieved by
another guide, as claims 9 and 18 require. Indeed, the
arrangement [shown in Figure 4 of Norfleet] would actually
prevent the lateral displacement from occurring.

(Appeal Br. 8.) We are not persuaded of error.
Norfleet teaches “[a] lift assembly [to] assist[] in raising or lowering a
tailgate, such as one found on a utility trailer.” (Norfleet, Abstract.)
Figure 4 of Norfleet is reproduced below.

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Figure 4 shows “a side elevational view in section of the rearward end of the
elongated enclosure housing with an insert or grommet extending
therethrough to function as a cable guide therein.” (Id. at col. 3, ll. 64–67.)
In particular, Figure 4 shows flexible cable 42 (in dotted outline) in an
aligned position in relation to the housing 30. After cable 42 passes through
the insert/grommet (from left to right in Figure 4), the cable deviates from
the aligned position. In short, the insert/grommet performs the function of
the second stationary guide as recited in claim 9, i.e., “to allow a deviation
from the aligned position.” Thus, we agree with the Examiner that “guide
52[] as taught by Norfleet . . . allow[s] cable 42 deviation from aligned
position at 58, figure 4, to a deviated position at the right side of figure 4.”
(See Final Action 3.)
We do not find persuasive Appellant’s argument that the arrangement
shown in Figure 4 of Norfleet would “prevent the lateral displacement from
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occurring.” (See Appeal Br. 8.) Claim 9 recites “a deviation from the
aligned position.” It is not limited to a lateral displacement. Appellant’s
argument is not commensurate with the scope of the claim.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 9. Claim 18 falls with claim 9. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Claim 20
Claim 20 recites: “The assembly of claim 19, further including a pair
of fasteners for fixing the position of one of at least the first and second
stationary guides.”
Appellant argues that “[t]he Examiner fails to address this claim in the
Office Action, in violation of Section 132 of the Patent Act. Hence, reversal
is in order.” (Appeal Br. 8.)
The Examiner determines that “[c]laims 1-7, 10-17, 19-20 is/are
rejected under 35 U.S.C. 103 as being unpatentable over Rayburn, US
6,126,223 in view of Nguyen et al. or Ehret.” (Final Action 2, Answer 3.)
The Examiner does not otherwise refer to claim 20 in either the Final Action
or the Answer. We note that although claim 20 is similar to claim 3, the
Examiner’s discussion of claim 3 does not include any reference to claim 20.
(See Final Action 5, Answer 5.)
In view of the above, we will reverse the Examiner’s rejection of
claim 20.
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CONCLUSION
The Examiner’s rejections of claims 1, 2, 5–7, and 9–19 under
35 U.S.C. § 103 are affirmed.
The Examiner’s rejection of claims 3, 4, and 20 under 35 U.S.C. § 103
is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against claim 4 under 35 U.S.C § 103.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) further provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS 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
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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Specifically:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–7, 10–
17, 19, 20
103 Rayburn, Nguyen,
Ehret
1, 2, 5–7,
10–17, 19
3, 4, 20 4
9, 18 103 Rayburn, Nguyen,
Ehret, Norfleet
9, 18
Overall
Outcome
1, 2, 5–7,
9–19
3, 4, 20 4

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-IN-PART; 37 C.F.R. § 41.50(b)