11158486 (B.P.A.I. Mar. 16, 2012)

Ex Parte Abel

Board of Patent Appeals and InterferencesMar 16, 2012

11158486 (B.P.A.I. Mar. 16, 2012)

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. 11/158,486 06/22/2005 Thomas E. Abel 122331.0010 9721 39905 7590 03/16/2012 Daniel J. Schlue Roetzel & Andress 222 S. Main St. Akron, OH 44308 EXAMINER COKER, ROBERT A ART UNIT PAPER NUMBER 3616 MAIL DATE DELIVERY MODE 03/16/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte THOMAS E. ABEL ____________________ Appeal 2010-004264 Application 11/158,486 Technology Center 3600 ____________________ Before: JOHN C. KERINS, CHARLES N. GREENHUT, and JAMES P. CALVE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004264 Application 11/158,486 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-4, 6-8 and 10-251,2. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to an off-road emergency utility vehicle. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An off road emergency vehicle, comprising: an all-terrain vehicle frame, the frame having front and rear portions; a suspension attached to the frame and adapted for use in traversing an uneven terrain; ground engaging maneuvering means for maneuvering the vehicle over the uneven terrain; an engine operatively attached to the vehicle frame for use in providing locomotion to the vehicle; an all wheel drive system that provides traction to the ground engaging means over the uneven terrain; a vehicle battery operatively connected to the engine; an operator compartment fixedly attached to the front portion of the vehicle frame; an equipment compartment fixedly attached to the rear portion of the frame, the equipment compartment having a length sufficiently long enough to enclose a stretcher having a length between approximately 78 inches and 84 inches; and a rechargeable, secondary power supply operatively connected to provide power to the equipment compartment. 1 Though Appellant states that claim 5 is appealed and repeatedly argues it, since the Examiner has not rejected claim 5 there has been no substantive decision adverse to Appellant. Br. 1, 11, 14, 18; Ans. 2. We thus lack jurisdiction to review claim 5. 35 U.S.C. § 6(b); MPEP §§ 1201-2. 2 We note that Carrier (US 8,025,325 B1, iss. Sept. 27, 2011) and the patents cited therein appear to be relevant to the claimed subject matter and not previously made of record. The applicability of these references is left for the Examiner’s consideration in any further prosecution. The Board is authorized to reject claims under 37 C.F.R. § 41.50(b), but no inference should be drawn when the Board does not do so. See MPEP 1213.03. Appeal 2010-004264 Application 11/158,486 3 REJECTIONS Claims 1-4, 6, 7, 10-13, 18-20, 24 and 25 are rejected under 35 U.S.C. § 103(a) as unpatentable over Griffin (US 4,785,227; iss. Nov. 15, 1988), Dong (US 5,950,750, iss. Sep. 14, 1999), Galvan (EP 0219469, pub. Apr. 22, 1987) and Curtis (US 3,340,402, iss. Sep. 5, 1967). Ans. 3. Claims 8 and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Griffin, Dong, Galvan, Curtis and Rooney (US 5,879,482, iss. Mar 9, 1999). Ans. 6. Claims 14-17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Griffin, Dong, Galvan, Curtis and Strout (US 3,876,183, iss. Apr. 8, 1975). Ans. 7. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Griffin, Dong, Galvan, Curtis and Mercier (US 7,021,664, iss. Apr. 4, 2006). Ans. 7. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Griffin, Dong, Galvan, Curtis and Origuchi (US 5,212,431, May 18, 1993). Ans. 8. OPINION Appellant argues claims 1-4, 6, 7, 10-13 and 18-20 as a group, briefly mentioning claims 7, 11 and 10.3 Br. 9-12. In arguing the remaining claims, 8, 14-17, 21 and 22, Appellant appears to be a verbatim repetition the 3 Appellant is reminded that “[a]ny claim argued separately should be placed under a subheading identifying the claim by number” and “[w]hen multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone.” 37 C.F.R. § 41.37(c)(1)(vii) (emphasis added). Appeal 2010-004264 Application 11/158,486 4 arguments presented regarding claims 1-4, 6, 7, 10-13 and 18-20. See Br. 12- 19. We interpret this as an effort to advance arguments premised on dependency. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.” (citations omitted)). We fail to see how the repetition of the comments presented regarding claims 7, 11 and 10 advances the patentability of claims 8, 14-17, 21 and 22. Additionally, we note that efforts to incorporate by reference arguments made during prosecution but not included in the Brief (Br. 12) are ineffective. See 37 C.F.R. § 41.37(c)(1)(vii) (“Any arguments or authorities not included in the brief or a reply brief filed pursuant to § 41.41 will be refused consideration by the Board”). Appellant argues that that the Examiner’s rationale for the proposed combination of Griffin and Dong is flawed because the conventional means by which a person of ordinary skill in the art improves traction of a vehicle having 4 wheels during unfavorable conditions is to either: 1) change out the type of tires (e.g., change over-the-road tires for snow tires) on the over-the-road vehicle, or 2) if available, using 4-wheel-drive on a vehicle having 4 wheels. Br. 10-11. The fact that the combined teachings of the references may render unclaimed subject matter obvious does not establish that such combination would not also render the claimed subject matter obvious. Thus, this argument is unpersuasive. Appeal 2010-004264 Application 11/158,486 5 The sole remaining issue presented for our consideration in this appeal4 is whether it was reasonable for the Examiner to consider frames such as those disclosed in Griffin or Dong5 an “all-terrain vehicle frame” as required by each independent claim on appeal. We conclude it was not. [T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). An applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s). In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). However, the lack of such an express definition, without more, does not give the Examiner license to interpret a claim term inconsistent with the ordinary meaning of that term as is used in the Specification. See In re NTP, Inc., 654 F.3d 1279, 1288-89 (Fed. Cir. 2011); see also In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). Dictionary definitions can be helpful in understanding the ordinary meaning of claim terms. In re Trans Texas 4 37 C.F.R. § 41.37(c)(1)(vii) provides that “[a]ny arguments or authorities not included in the brief or a reply brief filed pursuant to § 41.41 will be refused consideration by the Board” and means that “arguments not presented in the brief or reply brief and made for the first time at the oral hearing are not normally entitled to consideration.” See MPEP § 1205.02. 5 It is unclear whether the Examiner considers Griffin or Dong as disclosing the limitation pertaining to an all-terrain vehicle frame. Initially, the Examiner states that Griffin discloses a “frame” which may be used on a variety of terrains, and Dong discloses an “all-terrain frame.” Ans. 4-5. But, the Examiner then states that “[r]eciting that…the frame is ‘an all-terrain vehicle frame’ does not distinguish over the structure of Griffin.” Ans. 9. Appeal 2010-004264 Application 11/158,486 6 Holdings Corp., 498 F. 3d 1290, 1299 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)). An “all-terrain vehicle” or ATV is defined as “[a] small, open motor vehicle having one seat and three or more wheels fitted with large tires. It is designed chiefly for recreational use over roadless, rugged terrain.”6 From this definition, it is clear that a vehicle does not become an “all-terrain vehicle” solely based on the capability or intent to use that vehicle in an environment other than a road. It is also clear that neither Griffin nor Dong is concerned with such “all-terrain vehicle[s]”. Further, there is no evidence of record to suggest that, despite not being directed to all-terrain vehicles, the vehicle frames used by Griffin or Dong are of the type used in an “all- terrain vehicle.” For example, Appellant discloses that stock frames made by Polaris, John Deere, and Kawasaki, or extended versions of stock frames, may be used. Spec. 7, ll. 3-10. Accordingly, we cannot agree with the Examiner that one of ordinary skill in the art would interpret the term “an all-terrain vehicle frame” in claims 1, 10 and 19 as including the frames of Griffin or Dong. None of the other references, as applied by the Examiner, cure this deficiency. Since the Examiner relied on an overly broad claim construction of the term “an all-terrain vehicle frame,” we are constrained to reverse the rejections of claims 1-4, 6-8 and 10-25. DECISION The Examiner’s rejections of claims 1-4, 6-8 and 10-25 are reversed. REVERSED nlk 6 See all-terrain vehicle. AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (2007) available at www.credoreference.com/entry/ hmdictenglang/all_terrain_vehicle; see, e.g., Rooney, col. 3, ll. 21-30; see also e.g., 15 U.S.C. § 2089(e)(1).