Ex Parte Andrews

Patent Trial and Appeal Board

Apr 21, 2016

12720921 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121720,921 03/10/2010 Russ Darrel Andrews
21888 7590 04/25/2016
THOMPSON COBURN LLP
ONE US BANK PLAZA
SUITE 3500
ST LOUIS, MO 63101
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
49929-87538 1087
EXAMINER
POON, ROBERT
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
04/25/2016 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):
IPDOCKET@THOMPSONCOBURN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSS DARREL ANDREWS
Appeal2014-003429
Application 12/720,921
Technology Center 3700
Before ANTON W. PETTING, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant (Russ Darrel Andrews) appeals under 35 U.S.C. § 134
from the Examiner's rejections of claims 8-10. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-003429
Application 12/720,921
STATEMENT OF THE CASE
The Appellant's invention "pertains generally to a drain pan that is
configured to catch lubricant as it is drained from the wheel hub of a
vehicle." (Spec. i-f 4.)
Illustrative Claim1
8. A drain pan for draining lubricant from a vehicle, the drain
pan compnsmg:
a rear wall, the rear wall having a plurality of lug
openings extending therethrough, the lug openings being
circumferentially spaced about an axis;
a cavity that is partially bound by the rear wall and that is
open from above;
the drain pan being configured and adapted to be
supported by a wheel hub that has a plurality of wheel lugs by
positioning at least two of the wheels lugs in a manner such that
said wheel lugs extend through the lug openings of the rear wall
of the drain pan.
Takubo
Sasada
Kurtz
Brewer
References
us 4,770,276
us 4,848,293
US 5,454,121 Bl
US 7,673,658 Bl
Rejections
Sept. 13, 1988
July 18, 1989
Sept. 24, 2002
Mar. 9, 2010
I. The Examiner rejects claims 8-10 under 35 U.S.C. § 103(a) as
unpatentable over Kurtz and Brewer. (Final Action 2.)
II. The Examiner rejects claims 8-10 under 35 U.S.C. § 103(a) as
unpatentable over Sasada and Takubo. (Id. at 3.)
1 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 8-10 of the Appeal Brief.
2
Appeal2014-003429
Application 12/720,921
ANALYSIS
Rejection I
Independent claim 8 is directed to "[a] drain pan for draining lubricant
from a vehicle" wherein a rear wall has "a plurality of lug openings
extending therethrough, the lug opening being circumferentially spaced
about an axis." (Claims App.)
The Examiner finds that Kurtz discloses a drain pan as claimed,
except that it lacks lug openings on the rear wall; and the Examiner finds
that Brewer discloses a drain pan with openings circumferentially spaced
about an axis for accepting a mounting device. (See Final Action 2.) The
Examiner articulates that "[i]t would have been obvious to one of ordinary
skill in the art to implement bore openings on the Kurtz drain pan in order to
allow the container to be mounted." (Id.)
We are persuaded by the Appellant's position that the Examiner does
not sufficiently establish a prima facie case of obviousness. (See Appeal
Br. 4--5; see also Reply Br. 2.) We are persuaded because the Examiner's
rejection rests on the unsupported premise that one of ordinary skill in the art
would have a reason for Kurtz' s drain pan "to be mounted." The Examiner
does not point to, and we do not find, teachings in Kurtz that its drain pan
should or could be mounted to a vehicle. 2 As for Brewer, it relates to the
mounting of a container at a load line connection during the transfer of
liquids between storage tanks and tankers. (See Brewer, col. 2, lines 8-11.)
The Examiner does not sufficiently explain how or why one of ordinary skill
2 The lack of such teachings in Kurtz is consistent with the Appellant's
contention that "[ o ]ne does not normally attach drain pans to vehicles when
draining oil." (Reply Br. 2.)
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Appeal2014-003429
Application 12/720,921
in the art would infer that a drain pan for draining oil from a wheel hub (e.g.,
Kurtz's drain pan) could also be used for a load-line-connection application,
or any other application requiring it "to be mounted."
Thus, we do not sustain the Examiner's rejection of claims 8-10 under
35 U.S.C. § 103(a) as unpatentable over Kurtz and Brewer.
Rejection II
As indicated above, independent claim 8 requires the drain pan to
have a plurality of lug openings extending through its rear wall that are
"circumferentially spaced about an axis." (Claims App.) Independent
claim 8 further requires the drain pan to be "configured and adapted to be
supported by a wheel hub that has a plurality of wheel lugs by positioning at
least two of the wheels lugs in a manner such that said wheel lugs extend
through the lug openings of the rear wall of the drain pan." (Id.)
The Examiner determines that Sasada and Takubo together teach a
drain pan as required by independent claim 8. (See Final Action 3.) This
determination rests on a finding that these prior art references show or
suggest a rear wall having openings "circumferentially spaced about an axis
of the container." (Id.) The Examiner supports this finding by directing our
attention to Takubo's Figure 7 (id.); and this drawing does indeed show bolt
holes 23a and 23b "for the passage of respective fitting bolts 22 used to
connect the oil pan 3 to the clutch housing 4." (Takubo col. 6, lines 15-20.)
The Examiner also explains that "since the oil pans of Sasada and Takubo
have the structure of the pan as claimed, then they would be capable of
functioning as drain pans regardless of whether or not it would be obvious to
have them function as such." (Answer 7.)
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Appeal2014-003429
Application 12/720,921
We are persuaded by the Appellant's position that the Examiner does
not establish a prima facie case of obviousness. (See Reply Br. 8.) We are
persuaded because the Examiner does not adequately address how or why
the oil pan allegedly taught by Sasada and/or Takubo (i.e., an oil pan having
a rear wall with bolt openings 23 circumferentially spaced about an axis of
the container) would be configured and adapted to be supported by a wheel
hub. The Examiner does not find, for example, that an oil pan configured
and adapted to be supported by a clutch housing would likewise be
configured and adapted to be supported by a wheel hub (i.e., the oil pan is
positionable such that at least two wheels lugs could extend through its bolt
openings 23). Additionally or alternatively, the Examiner does not
sufficiently explain why one of ordinary skill in the art would infer that a
clutch-housing-supported oil pan could instead be configured and adapted to
be supported by a wheel hub (i.e., the oil pan could be modified such that at
least two wheel lugs could extend through its bolt openings 23).
Thus, we do not sustain the Examiner's rejection of claims 8-10 under
35 U.S.C. § 103(a) as unpatentable over Sasada and Takubo.
DECISION
We REVERSE the Examiner's rejections of claims 8-10.
REVERSED
5