Ex Parte Carroll

Board of Patent Appeals and Interferences

Nov 5, 2008

11360647 (B.P.A.I. Nov. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NENA A.CARROLL
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Appeal 2008-2038
Application 11/360,647
Technology Center 3600
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Decided: November 5, 2008
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Before FRED E. McKELVEY, Senior Administrative Patent Judge, and
RICHARD TORCZON and MICHAEL P. TIERNEY, Administrative Patent
Judges.

TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1-6 stand rejected under 35 U.S.C. 103 (Ans. at 3). The
appellant, Nena A. Carroll (Carroll), seeks review under 35 U.S.C. 134. We
AFFIRM.
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The examiner relied upon the following prior art in rejecting the
claims (Ans. at 2):
Humphrey et al. (Humphrey) 6,742,826 B2 1 June 2004
Walkden 5,795,125 18 August 1998
Hall et al. (Hall) 5,393,192 28 February 1995

Claims 1 and 6 are independent claims (Br. at 10,12). Claims 2-5
depend directly or indirectly from claim 1 (Br. at 11-12). The examiner held
that the subject matter of claims 1, 4, 5, and 6 would have been obvious in
view of Humphrey and Hall (Ans. at 3). The examiner also held that the
subject matter of claims 2 and 3 would have been obvious in view of
Humphrey, Hall, and Walkden (Ans. at 3).
Carroll does not offer separate arguments for the claims (Br. at 5-8).
Claims stand or fall together if they are not argued separately. 37 C.F.R.
§ 41.37(c)(1)(vii).
Carroll has raised the following issues:
(1) Did the examiner improperly reject the claims without a teaching
or suggestion to combine the cited prior art (Br. at 7)?
(2) Does the prior art teach away from the claimed invention (Br.
at 8)?
(3) Does the claimed invention meet a long-felt need not satisfied in
the prior art (Br. at 5)?
(4) Does the claimed invention exhibit synergies absent in the prior
art (Br. at 8)?
Carroll also argues (Br. at 9) that the examiner's objection to claim 6
is improper because differences between claims 1 and 6 "obviate any double
patenting concerns." Carroll does not identify where such an objection was
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made. Since claim 6 does not appear to be the subject of an objection or a
rejection for double-patenting, we will not address this argument on the
merits.
THE CLAIMED INVENTION
The claimed invention relates to a loading and an unloading system
for a truck (Spec. at 2). We select claim 1 as broadly representative of the
claims on appeal. Claim 1 defines the invention as follows (Br. at 10):
A loading and unloading system for a truck having a bed
and a pair of sidewalls, each of the pair of sidewalls extending
upwardly from opposite sides of the bed, the system
comprising:
a ramp;
a ramp storage compartment formed under the bed of the
truck and adapted to receive the ramp;
a ramp mounting assembly for mounting the ramp such
that the ramp can be moved from a stored position, wherein the
ramp is positioned within the ramp storage compartment, to an
extended position wherein the ramp extends outwardly from the
ramp storage compartment through an opening in the ramp
storage compartment;
a tailgate; and
a tailgate mounting hinge assembly for hingably [sic,
hingeably] mounting the tailgate on one of the pair of sidewalls
such that the tailgate can be pivoted between a closed position
and an open position, wherein the closed position the tailgate
lockingly engages the other of the pair of sidewalls, blocks the
opening in the ramp storage compartment, and locks the ramp
in the ramp storage compartment, and wherein in the open
position the tailgate pivots away from the other of the pair of
sidewalls such that the tailgate does not block the opening of
the ramp storage compartment and does not impede the
movement of the ramp to the extended position.

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Carroll argues (Br. at 7) that Humphrey "does not teach that a
stowable tailgate can be used to facilitate the use of a ramp device." We will
focus on this contested limitation. In re Translogic Tech., Inc., 504 F.3d
1249, 1256 (Fed. Cir. 2007) (doing just that). We note that "stowable
tailgate" is not a limitation of the claim.
We understand the contested limitation to refer to the last two
"wherein" clauses, which define the interaction between the tailgate and the
ramp in the ramp storage compartment. When closed, the tailgate must
block the opening of the ramp storage compartment such that the ramp is
locked into the storage compartment. When open, the tailgate must pivot
away from a sidewall such that the opening of the ramp storage
compartment is not blocked and the extension of the ramp is not impeded.
During examination, when a claim may be amended, we give a claim
its broadest reasonable construction consistent with the specification.
Consistency with the specification does not, however, mean limited to
embodiments in the specification. Keeping these principles of claim
construction in mind, we note that claim 1 is directed to a "truck", but is not
limited to a pick-up truck.
FINDINGS OF FACT
1. Humphrey describes a tailgate assembly 100 for a pickup truck 110
(Humphrey at 1: 9-12).
2. According to Carroll, a difference between prior art and the claimed
invention is that Humphrey "does not teach that a stowable tailgate can
be used to facilitate the use of a ramp device" (Br. at 7).
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3. Hall describes an extendable and retractable ramp mounted under the
floor of a vehicle that provides easy loading and unloading (Hall at 2:15-
18).
4. When Hall's rear door D is open, the ramp 30 can be extended from the
tray 20 (Hall at 3:27-39; Hall FIGS. 1 & 2, shown below).

Hall FIG. 1 illustrates a perspective view of a vehicle having an underfloor
ramp. Hall FIG. 2 illustrates a vehicle where the ramp is retracted.

5. In the illustrated embodiment, Hall's rear door D is mounted to the roof
and both sidewalls such that when opened it is pivoted away from both
sidewalls and the opening of the ramp tray 20 (figures above).
6. In the illustrated embodiment, when the rear door D is closed, the tray 20
containing the ramp 30 would be blocked (Hall FIG. 2, above).
7. We take official notice that those skilled in vehicular design would be
familiar with hingeably mounting doors on sidewalls as well.
8. Carroll has not cited, and we do not see, any teaching in the cited
references away from the combination the examiner proposed.
9. Carroll relies on several patents (Br. at 6), only one of which (Walkden)
has been cited as part of the rejection.
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10. Carroll has not directed us to any evidence in support its arguments
regarding unpredicted synergies from its invention. (Br. at 13:
"No evidence has been submitted.").
ANALYSIS
In analyzing obviousness, the scope and content of the prior art must
be determined, the difference between the prior art and the claim
ascertained, and the ordinary level of skill in the art resolved. Graham v.
John Deere Co., 383 U.S. 1, 17 (1966). Secondary considerations, such as a
long-felt need, may give light to the circumstances surrounding the origin of
the subject matter sought to be patented. Id. at 17-18. The teachings of each
cited prior art must not be picked apart in isolation, but rather must be
considered for what they collectively would have taught or suggested to
those in the art. Nat'l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d
1319, 1336-37 (Fed. Cir. 2004); In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Teaching or suggestion to combine
Carroll acknowledges that "the combination of the references teaches
the critical limitations of claims 1-6", but urges that the art does not teach or
suggest a motivation for the particular combination. Moreover, Carroll
urges that Humphrey "does not teach that a stowable tailgate can be used to
facilitate the use of a ramp device" (Br. at 7). We cannot, however, consider
Humphrey in isolation.
The Hall reference shows a rear door on a truck-like vehicle that is
hingeably mounted such that it blocks a ramp tray when closed, but does not
impede the extension of the ramp when open. Thus, Hall would have
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suggested to those skilled in vehicular design the advantages of mounting a
rear door so it would lock the ramp in when closed, but avoid impeding the
ramp when open. The trade-offs associated with how such a door is to be
mounted would be familiar to those in the relevant art.
Teaching away
Carroll argues that the prior art teaches away from the claimed
combination (Br. at 8), but does not point to any specific teaching in the
cited references that would teach away from the combination. To be
considered a "teaching away", the teaching must plainly discourage the
combination. The lack of an anticipating reference is not, in itself, a
teaching away. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380
(Fed. Cir. 2005).
Long-felt need and unpredicted synergy
Carroll argues that the case for obviousness is negated by the long-felt
need in the art (Br. at 7) and the unpredicted synergies of the claimed
invention (Br. at 8). Carroll bears the burden of production for secondary
considerations. E.g., In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996).
Carroll's argument regarding long-felt need is not persuasive because
it fails to account for the teachings of Hall, which we find suggested the
contested limitation. We have no evidence regarding any synergies of the
invention or their predictability. We cannot rely on the argument of counsel
as a substitute for evidence. In short, Carroll has not met its burden of
production for either of these contentions.
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CONCLUSION
Carroll has not shown that the examiner erred in rejecting the claims
1-6 over the cited prior art. Consequently, the rejection of all the pending
claims under 35 U.S.C. 103(a) is —
AFFIRMED

rvb

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