Ex Parte 7214017 et al

Patent Trial and Appeal Board

Feb 7, 2017

95000326 (P.T.A.B. Feb. 7, 2017)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,326 12/04/2007 7214017 161613-0026 2317
22850 7590 02/07/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
FLANAGAN, BEVERLY MEINDL
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/07/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

RANDALL MFG.,
Requester,

v.

FG PRODUCTS, INC.,
Patent Owner.
____________

Appeal 2016-008098
Reexamination Control 95/000,326
Patent 7,214,017 B2
Technology Center 3900
____________

Before LINDA E. HORNER, DANIEL S. SONG, and JOSIAH C. COCKS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

NEW DECISION
37 C.F.R. § 41.77(f)
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I. INTRODUCTION
In an earlier Decision in connection with inter partes reexamination
appeal 2012-005371 mailed August 8, 2014 (the “’371 Decision”), we
affirmed the Examiner’s decision to reject claims 1–4, 6, 7, 10–12, 38–40,
48–56, 75–79, and 83–91 of U.S. Patent 7,214,017 B2 (the “’017 patent”)
under 35 U.S.C. § 103(a) as unpatentable over ROM-1,1 ROM-2,2 Aquino,3
and Gibbs.4,5 We designated our affirmance as a new ground of rejection
pursuant to 37 C.F.R. § 41.77(b). ’371 Decision 15–16.
Patent Owner, FG Products, Inc. (“FG Products”), elected to reopen
prosecution.6 In making that election, FG Products submitted amendments
affecting the above-noted claims, and offered the declaration testimony of
Dr. Sudhir Sastry (“Sastry Decl.”). Third Party Requester, Randall Mfg.

1 Advertisement titled “The LoadMaker by ROM” dated February 1987
(“ROM-1”) (one page).
2Advertisement titled “The LoadMaker™ with DuroSeal™ protection” dated
February 1997 (“ROM-2”) (one page).
3 U.S. Patent No. 3,217,664 issued November 16, 1965 (“Aquino”).
4 U.S. Patent No. 1,193,254 issued August 1, 1916 (“Gibbs”).
5 The noted ’371 Decision was a second decision in connection with appeal
2012-005371 arising due to a remand by the United States Court of Appeals
for the Federal Circuit (“Federal Circuit”) based on a prior decision in the
reexamination appeal. See Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir.
2013).
6 See “Amendment, Response, and Request to Reopen Prosecution under 37
C.F.R. § 41.77(B)(1)” filed September 8, 2014 (“PO Reopen Req.”).
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(“Randall”), filed comments in response.7 As a part of those comments,
Randall urged that the amended claims remained unpatentable over the
above-noted prior art combination, and also were unpatentable as:
(1) indefinite; (2) obvious over Aquino, Gibbs, ROM-1, and McDougal;8
and (3) obvious over Aquino, Gibbs, ROM-1, McDougal, and EP ’250.9
In due course, the Examiner mailed a Determination pursuant to 37
C.F.R. § 41.77(d).10 In that Determination, the Examiner: (1) determined
that the Patent Owner’s amendment and response did not overcome the
ground of rejection applied to the claims of the ’017 patent based on ROM-
1, ROM-2, Aquino, and Gibbs; and (2) indicated that all of the additional
grounds proposed by Randall present “issues” as to the patentability of the
pertinent claims (see Ex’r Determ. 32, 38–40). FG Products responded to
the Examiner’s Determination,11 to which Randall subsequently replied.12

7 See “Third Party Requester’s Comments Pursuant to 37 C.F.R. 41.77(c) In
Response to Patent Owner’s Amendment, Response, and Request to Reopen
Prosecution” filed October 9, 2014 (“3PR Comm.”).
8 U.S. Patent 2,752,864 issued July 3, 1956 (“McDougal”).
9 EP 0 933 250 A1 published August 4, 1999 (“EP ’250”).
10 See “Determination Under 37 CFR 41.77(d)” mailed February 18, 2015
(“Ex’r Determ.”).
11 See “Response to Examiner’s Determination Under 37 C.F.R. § 41.77(E)”
filed March 18, 2015 (“PO Resp. to Determ.”).
12 See “Third Party Requester’s Reply to Patent Owner’s Response to
Examiner’s Determination Under 37 C.F.R. § 41.77(E)” filed April 20, 2015
(“3PR Reply”).
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Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to the
Board so that we may reconsider the matter and issue a new decision.13
For the reasons set forth below, we reach the same conclusion as to
the patentability of claims 1–4, 6, 7, 10–12, 38–40, 48–56, 75–79, and 83–
91 as we did in our earlier ’317 Decision, which forms part of this New
Decision. In that respect, we conclude, as we did in the ’317 Decision, that
those claims of the ’017 patent are unpatentable over the prior art.
II. THE ’017 PATENT
The ’017 patent is titled “System and Method for Partitioning Cargo
Areas” and characterizes its invention as relating “to movable partitions and
panels, and, more particularly, to partitions and bulkheads which can be used
to separate or insulate cargo during transportation or storage.” The ’017
patent, 1:19–22. Claim 1 is representative and is reproduced below, as it is
now amended:14

13 37 C.F.R. § 41.77(f) reads:
(f) After submission of any comments and any reply pursuant to
paragraph (e) of this section, or after time has expired, the
proceeding will be returned to the Board which shall reconsider
the matter and issue a new decision. The new decision is deemed
to incorporate the earlier decision, except for those portions
specifically withdrawn.

14 As is required by 37 C.F.R. § 1.530, the amendments show changes made
relative to the claims as originally issued. The amendments made relative to
the last set of claims that were before us reflect the following changes:
(1) the trailer is “refrigerated”; (2) the first and second panels are
“insulated”; (3) introduction of “seal members arranged along the top
peripheral edges, the outer peripheral edges” of the first and second
insulated panels; and (4) introduction of “a pivot mechanism that allows
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1. (Thrice Amended) An apparatus for separating cargo areas in a
refrigerated trailer, comprising:
a refrigerated trailer that includes a cargo space;
first and second insulated panels, each insulated panel extending
in a direction generally perpendicular to a longitudinal axis of the
refrigerated trailer, wherein each insulated panel has a top peripheral
edge opposite from a bottom peripheral edge, and an inner peripheral
edge opposite from an outer peripheral edge, wherein when in a first
operative position the first and second insulated panels abut one another
along adjacent inner peripheral edges of the insulated panels and are
arranged in a side-by-side configuration to provide a full-width
bulkhead that extends between opposing sidewalls of the cargo space
of the refrigerated trailer; [and]
the first and second insulated panels having seal members
arranged along the top peripheral edges, the outer peripheral edges;
fastening straps that releasably secure the first and second
insulated panels together in the side-by-side configuration to form the
full-width bulkhead;
the first and second insulated panels having seal members
arranged along the top peripheral edges, the outer peripheral edges, and
the adjacent inner peripheral edges so that the first and second panels
seal together along the adjacent inner peripheral edges when the first
and second panels are releasably secured together to form the full-width
bulkhead;
a mounting system that provides each of the first and second
insulated panels with a first degree of freedom to convey the insulated
panels in a longitudinal direction independently of one another and that
provides each of the first and second insulated panels with a second
degree of freedom to raise the insulated panels independently, the
mounting system being attached to at least one of a wall or a ceiling of
[a] the cargo space;
the mounting system comprising:

each insulated panel to pivot along an axis that is transverse to and below the
longitudinal rails” of the mounting system.
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a first set of two trolleys and two longitudinal rails to guide
movement of the first insulated panel, each longitudinal rail of
the first set receiving one of the trolleys of the first set, wherein
the two longitudinal rails of the first set are mounted to at least
one of a sidewall or the ceiling of the cargo space, and
a second set of two trolleys and two longitudinal rails to
guide movement of the second insulated panel, each longitudinal
rail of the second set receiving one of the trolleys of the second
set, wherein the two longitudinal rails of the second set are
mounted to at least one of a sidewall or the ceiling of the cargo
space and the two longitudinal rails of the second set are arranged
laterally of the two longitudinal rails of the first set;
the mounting system further comprising a pivot mechanism that
allows each insulated panel to pivot along an axis that is transverse to
and below the longitudinal rails; and
a first lift mechanism to raise the first insulated panel into
a stowed position proximate the ceiling of the cargo space of the
refrigerated trailer, at least a portion of the first lift mechanism
being mounted to a rail of the mounting system, wherein the first
lift mechanism comprises a movable cam to engage a first strap
or rope coupled to the first insulated panel proximate to a lower
edge of the first insulated panel; and
a second lift mechanism to raise the second insulated panel
into a stowed position proximate the ceiling of the cargo space
of the refrigerated trailer, at least a portion of the second lift
mechanism being mounted to a rail of the mounting system,
wherein the second lift mechanism comprises a movable cam to
engage a second strap or rope coupled to the second insulated
panel proximate to a lower edge of the second insulated panel.
III. ANALYSIS
The question of the patentability of claims of the ’017 patent is once
again before us. As noted above, the claims have been amended to include
additional features generally relating to: (1) a “refrigerated” trailer;
(2) “insulated” panels (or means for separating as recited in claim 10);
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(3) “seal members arranged along the top peripheral edges, the outer
peripheral edges,” of first and second insulated panels; and (4) “a pivot
mechanism that allows each insulated panel to pivot along an axis that is
transverse to and below the longitudinal rails” of a mounting system having
trolleys and rails. Also as noted above, the Examiner determined that those
additional features do not distinguish the claims of the ’017 patent over the
prior art of record, namely, ROM-1, ROM-2, Aquino, and Gibbs applied in
the ’371 Decision. That is a position with which Randall agrees. See 3PR
Reply. FG Products, on the other hand, contends that the claims as now
amended are patentable. See PO Resp. to Determ. FG Products’ contention
generally rests on assertions that Randall and the Examiner “fail[ed] to
consider the claims as a whole,” and that they “fail[ed] to address how any
of the references would be modified to achieve the recited invention.” Id. at
28.
There can be no meaningful dispute that all of the added features in
question are found in the prior art. For instance, ROM-1 describes a
bulkhead with “excellent thermal and sealing capability” that is used to
facilitate “back haul storage” and “split load haul[ing]” of “frozen, fresh
and/or dry load hauling combinations.” Similarly, ROM-2 describes a
bulkhead providing “[s]uperior temperature control” for use with a “trailer”
in the “food transportation industry.” In light of those disclosures a person
of ordinary skill in the art would have inferred readily that the types of
vehicles or trailers receiving the bulkheads contemplated in ROM-1 and
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ROM-2 are understood as including trailers recognizable as refrigerated.15
See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.”); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (the
obviousness analysis “can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ”). It also is plainly
evident that ROM-1 and ROM-2, in describing bulkheads with “excellent
thermal and sealing capabilities” and contributing to “[s]uperior temperature
control,” contemplate panels that are insulated.
With respect to the added claim requirement of seals arranged on the
top and outer peripheral edges of the insulated panels, such seals, too, are
described in ROM-1 and ROM-2. In particular, ROM-1 clearly provides
that its disclosed bulkhead has excellent “sealing capability,” and ROM-2
describes “exterior seals” arranged along the periphery of its disclosed
bulkhead. It follows readily that bulkheads with excellent sealing capability
and seals extending around the edges thereof, constitute insulated panels
with the recited seals along the top and outer peripheral edges of the panels.
Finally, in connection with the added feature directed to a “pivot
mechanism” permitting the panels to pivot along an axis that is transverse to
and below longitudinal rails that carry the panels, a skilled artisan would

15 Indeed, that inference is further supported by other prior art of record,
such as EP ’250, which describes bulkheads or partition walls used in
connection with the transportation and storage of “refrigerated goods [that]
must be maintained at a temperature of about +5°C” within a truck trailer.
EP ’250, 1, ¶ 4.
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have recognized that such feature resides in the prior art applied in the ’371
Decision. Gibbs is titled “Compartment Railway Car” and describes
bulkheads on the interior of the car that may be lifted so as to be swung or
pivoted from a vertical position to a horizontal position located near the roof
of the car. Gibbs, pg. 2, ll. 71–93. Also, as discussed in our earlier ’317
Decision, McDougal describes bulkhead B that may be rotated or swung
between its vertical and horizontal positions via hinge member h, which is
positioned beneath trolley track 46. ’317 Decision 9–11 (citing McDougal
Figs. 2, 4, 5 and cols. 4–5). Furthermore, the Federal Circuit observed that
ample prior art of record conveys that one of ordinary skill in the art was
well aware that raising bulkhead panels, via mechanisms such as a hinge, for
storage near the ceiling of a trailer was commonplace, and that the skilled
artisan would have appreciated that it would have been obvious for the
panels of, for instance, Aquino to have been pivoted in such manner. See
Randall Mfg. v. Rea, 733 F.3d 1355, 1363 (Fed. Cir. 2013).
We find that all of the features of the claims of the ’017 patent,
including those newly added per FG Products’ latest amendment, are found
in the prior art and do no more than operate as would be expected and
contemplated by the prior art. Such a circumstance does not lend itself
readily to a conclusion of non-obviousness, but rather, is probative of a
conclusion of obviousness. See KSR Int’l Co., 550 U.S. at 418 (“[A]
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”)
FG Products’ general contention that the Examiner and Randall failed
to provide appropriate reasoning for “how” the teachings of the prior art
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would be combined does not, in our view, appropriately consider that such
reasoning flows from the very prior art at issue. In that respect, adequate
reason exists in simply following the express teachings of the prior art when
it comes to considering the configuration of insulated panels within a
refrigerated trailer so as to be individually moveable in both vertical and
horizontal directions. Indeed, it is apparent from the record at hand that a
person of ordinary skill in the art would have appreciated the design options
or problems arising from constructing and configuring such panels, and that
those problems are addressed in the prior art via limited numbers of
predictable solutions.
For instance, it is clear from the prior art, such as ROM-1 and ROM-
2, that when seeking to provide temperature control of spaces within a
trailer, one with ordinary skill in the art would have had reason to configure
the bulkheads with insulated panels and surrounding seals as that
configuration is a known, viable option to facilitate such temperature
control. Similarly, when considering stowage arrangements for panels
within a trailer, a person of ordinary skill in the art would have recognized
that a pivoting mechanism for rotating the panels toward the trailer ceiling
was a prevalent solution recognized in the prior art. In considering the
claims at hand as a whole, including the features most recently added by FG
Products, we conclude that those claims do not demonstrate practices of
innovation, but instead relate to exercises of ordinary skill and common
sense based on the design considerations flowing from the prior art. See id.
at 421 (“When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
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ordinary skill in the art has good reason to pursue the known options within
his or her technical grasp. If this leads to the anticipated success, it is likely
the product not of innovation but of ordinary skill and common sense.”)
We take note of FG Products’ view that apparent design differences
between “refrigerated trailers” and “non-refrigerated trailers” establishes
some type of dichotomy between those classes of trailers that somehow
discourages combination of any aspects of their respective designs. See, e.g.,
PO Reopen Req. 29–33 (citing Sastry Decl. ¶¶ 20–40). In considering the
entirety of the record before us, we are not persuaded that any such
difference gives rise to a prohibition on combining elements of systems
employing moveable interior panels of a trailer. The record reflects that the
design considerations in configuring such panels for creating separated
spaces within the trailer are similar irrespective of whether the trailer is
viewed as refrigerated or not. In other words, any difference between
refrigerated trailers and non-refrigerated trailers when considering panel
configurations for interior storage is one without distinction.
IV. CONCLUSION
We have considered thoroughly the record before us, including the
teachings of the prior art, the Examiner’s Determination, and the parties’
respective comments pertaining to that Determination. We conclude that FG
Products’ amendment, and the evidence submitted in support of that
amendment, do not patentably distinguish claims 1–4, 6, 7, 10–12, 38–40,
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48–56, 75–79, and 83–91 of the ’017 patent over the prior art.16
Accordingly, those claims remain rejected as unpatentable over the prior art,
including ROM-1, ROM-2, Aquino, and Gibbs. Our prior ’371 Decision
forms part of this new Decision.

AFFIRMED

16 In reaching this conclusion, we need not consider the additional,
alternative grounds of rejection that were proposed by Randall as a part of its
comments filed October 9, 2014.
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PATENT OWNER:

OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
1940 DUKE STREET
ALEXANDRIA, VA 22314

THIRD-PARTY REQUESTER:

STEPTOE & JOHNSON
115 S. LASALLE STREET
SUITE 3100
CHICAGO, IL 60603