Ex Parte Grile

Board of Patent Appeals and Interferences

Feb 29, 2008

10778759 (B.P.A.I. Feb. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MERRILL L. GRILLE
____________

Appeal 2008-0398
Application 10/778,759
Technology Center 3600
____________

Decided: February 29, 2008
____________

Before TERRY J.OWENS, HUBERT C. LORIN, and JOHN C. KERINS,
Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Grille (Appellant) seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-13 and 15-16. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM-IN-PART. 1

THE INVENTION
The Appellant’s claimed invention relates to towing vehicles,
especially where the transported load is another vehicle. Claim 1 is directed
to an “articulated vehicle,” comprising the towing vehicle, a second (“rear”)
vehicle acting as a towing apparatus, and a framework connecting the two.
Claim 11 is directed to a “vehicular towing apparatus.” The salient
inventive feature in each of these claimed apparatuses involves an inflatable
device (“air bag” in claim 1 and a “gas container” in claim 11) and a means
for inflating it; the latter being specifically recited as “a means for
operatively adjusting a pressure within said air bag to pivot said framework
about said first axis and thereby raise and lower said at least one wheel
between a ground engaging position and a ground-disengaged transport
position” (claim 1) and
a means for controlling a pressure within said gas container by
selectively applying said pressurized gas to said gas container or
releasing said pressurized gas from said gas container for pivoting
said extensible shaft about said first axis to operatively raise and
lower said load supporting platform and a load supported thereon
between a roadway and a safe transporting position.

(Claim 11). Accordingly all the claims require a means for inflating a
device (air bag or gas container) to cause an element in the apparatus to

1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed Nov. 14, 2006), the Examiner’s Answer (“Answer,” mailed Mar. 30,
2007), and the Reply Brief (“Reply Br.,” filed Jun. 6, 2007).
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pivot (i.e., “to pivot … and thereby raise and lower” in claim 1 and “pivoting
… to operatively raise and lower” in claim 11). This “means” is a
pneumatic pump and control (see element 240 in Fig. 2; Specification 14:11-
21).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An articulated vehicle having a front
section with a source of motive power therein, a
rear section having at least one wheel, and a
flexible joint between said front section and said
rear section, comprising:
a framework pivotal about a first axis
relative to said front section and extending from
said first axis to said flexible joint distal to said
first axis, said flexible joint coupling said front
section to said rear section; and
a suspension assembly providing variable
forces between said front section and said
framework having an air bag, and a means for
operatively adjusting a pressure within said air bag
to pivot said framework about said first axis and
thereby raise and lower said at least one wheel
between a ground engaging position and a ground-
disengaged transport position.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
LoCodo
Fenton
Youmans
Holmes

US 4,264,262
US 5,785,341
US 5,984,616
US 4,679,978
Apr. 28, 1981
Jul. 28, 1998
Nov. 16, 1999
Jul. 14, 1987
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The following rejections are before us for review:
1. Claims 1-4, 9 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over LoCodo in view of Fenton.
2. Claims 5-7, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over LoCodo in view of Fenton and Youmans.
3. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
LoCodo in view of Fenton and Holmes.
4. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Youmans in view of Fenton.
5. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Youmans in view of Fenton and LoCodo.
We note that claim 14 is not included in the claims on appeal. The
record (Final Rejection 6-7) indicates that claim 14 was finally rejected
under the judicially created doctrine of obviousness-type double patenting.
The Appeal Brief (p. 3) indicates that “[n]o review of claim 14 is requested
in the present appeal, and so no further discussions will be provided with
regard to claim 14 herein below.” Accordingly, the Appellant has decided
not to contest the final rejection of claim 14. According to 37 C.F.R. §
41.31(c) (2007), “[a]n appeal, when taken, must be taken from the rejection
of all claims under rejection which the applicant or owner proposes to
contest.” Because the Appellant has decided not to contest the final
rejection of claim 14, the Appellant is deemed to have withdrawn the appeal
as to claim 14.
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ISSUES
The first issue is whether the Appellant has shown that the Examiner
erred in rejecting claims 1-4, 9 and 10 as unpatentable over LoCodo in view
of Fenton.
The second issue is whether the Appellant has shown that the
Examiner erred in rejecting claims 5-7, 15, and 16 as unpatentable over
LoCodo in view of Fenton and Youmans.
The third issue is whether the Appellant has shown that the Examiner
erred in rejecting claim 8 as unpatentable over LoCodo in view of Fenton
and Holmes.
The fourth issue is whether the Appellant has shown that the
Examiner erred in rejecting claims 11 and 12 as unpatentable over Youmans
in view of Fenton.
The fifth issue is whether the Appellant has shown that the Examiner
erred in rejecting claim 13 as unpatentable over Youmans in view of Fenton
and LoCodo.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
The scope and content of the prior art
1. LoCodo shows a tow truck with a hydraulic cylinders (84) for
raising and lowering a boom (36) by pivoting about the axis of the
forward end (38, Fig. 3; see also Fig. 4.) See col. 3, ll. 25-38, for
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disclosure of the raising/lowering operation independent of the
extending/retracting operation, and col. 3, ll. 61-67, for disclosure
of means 86 for pivoting boom 36 via hydraulic cylinders.
2. Fenton shows a pneumatic air spring 36 (Fig. 2) for stabilizing an
assembly incorporated in a tow vehicle. (Col. 3, ll. 29-31.)
3. Youmans discloses a “variable pivot towing device.” Like
LoCodo, Youmans shows hydraulic cylinders to raise or lower a
towing platform. This can be seen in Fig. 2 where cylinder 60 can
be made to shorten/lengthen distance “d” and thereby raise/lower
the towing platform 78. Cylinders 60 shorten/lengthen distance
“d” by pivoting underframe 50 about axis 54. (Col. 4, ll. 12-
14.)(See also col. 5, ll. 64 to col. 6, l. 20.)
4. Holmes shows a wheel lift towing assembly comprising a
hydraulic cylinder (60, Fig. 3) for raising and lowering tow bar 35.
(Fig. 2.)(See col. 2, ll. 13-17; col. 4, ll. 25-30; and col. 4, ll. 57-68.)
Any differences between the claimed subject matter and the prior art
5. The claimed subject matter is the combination resulting from the
substitution of the hydraulic cylinders in LoCodo and Youmans
with a gas-expandable device of the kind shown in Fenton.
The level of skill in the art
6. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of towing. We will therefore
consider the cited prior art as representative of the level of ordinary
skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level
of skill in the art does not give rise to reversible error ‘where the
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prior art itself reflects an appropriate level and a need for
testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985).
Secondary considerations
7. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) The Court in Graham
further noted that evidence of secondary considerations “might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 18.

ANALYSIS
The rejection of claims 1-4, 9 and 10 as unpatentable over LoCodo in view
of Fenton.
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The Appellant argues claims 1-4, 9 and 10 as a group (App. Br. 10).
We select claim 1 as the representative claim for this group, and the
remaining claims 2-4, 9 and 10 stand or fall with claim 1. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
The Examiner argues that LoCodo teaches an articulated vehicle
having the elements claimed but that LoCodo “does not teach the suspension
assembly as being driven by compressed gas.” (Answer 4.) LoCodo
appears to disclose all the elements of claim 1 but for the use of an inflatable
device to pivot and thereby raise and lower a platform. LoCodo uses a
pneumatic device to accomplish the same. (FF 1.)
The Examiner relies on Fenton to show an inflatable device
incorporated in a towing vehicle. Fenton shows an air spring in a towing
vehicle. (FF 2.)
The Examiner determined that “[i]t would have been obvious to one
of ordinary skill in the art … to provide the lifting device taught by LoCodo
with a compressed gas system as taught [in] Fenton … .” (Answer 4.)
The Appellant acknowledges that LoCodo teaches the use of hydraulic
cylinders (App. Br. 11) but argues that the use of compressible fluids as
opposed to hydraulic fluids (as the invention does) provides, e.g., a gentler
ride. (App. Br. 12.)(See also Reply Br. 2-3.) The Appellant also argues that
there is no motivation to combine Fenton and LoCodo because Fenton’s air
spring does not “lift” anything – it softens the contact between the hitch
point and trailer (App. Br. 13). According to the Appellant, the combination
of these teachings would lead to a hydraulic lifting with a pneumatic
softening, not pneumatic lifting as the claim requires.
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The Appellant’s argument is unpersuasive. The only difference
between LoCodo and the claimed invention is that the invention uses a
pneumatic means to lower/lift as opposed to hydraulic means. Fenton at Fig.
7 and 8 shows a gas-inflatable device that expands (compare device 36a in
the deflated (Fig. 7) and inflated (Fig. 8) conditions). Accordingly, it has the
same function as the hydraulic cylinders in LoCodo. Accordingly, the
claimed invention is to an apparatus already known in the prior art that is
altered by the mere substitution of one known element (hydraulic cylinders)
with another element (gas-inflatable device) known in the towing field for
the same function. Where, as here “[an application] claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result,” KSR, 127 S.Ct. at 1740 (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966). In that regard, substituting one
expandable device for another still yields a lowering/lifting of the
framework. There is no evidence that replacing LoCodo’s hydraulic
cylinders with Fenton’s gas-inflatable device yields an unexpected result or
was beyond the skill of one having ordinary skill in the art. The Appellant
does argue that the use of an inflatable device provides a gentler ride (App.
Br. 11) but that appears to be precisely what Fenton indicates is a benefit of
using such a device (see Fenton, col. 1, l. 58: “soften the contact”).
Accordingly, a gentler ride is not an unpredictable result but a known
advantage.

The rejection of claims 5-7, 15, and 16 as unpatentable over LoCodo in view
of Fenton and Youmans.
Claims 5-7
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The same arguments made above with respect to claim 1 appear to
have been made with respect to the rejection of these claims. (App. Br. 15.)
Youmans, like LoCodo, shows hydraulic cylinders to raise or lower a towing
platform. Here, too, the only difference between Youmans and the claimed
invention is that the invention uses a pneumatic means to lower/lift as
opposed to hydraulic means. For the same reasons we found the argument
unpersuasive as to error in the rejection of claim 1, we find them
unpersuasive as to error in the rejection of these claims.

Claims 15 and 16
These claims are directed to the inclusion of shock absorbers in the
suspension assembly “operative to allow said framework to raise easily but
resist the lowering thereof” (claim 15) and specifically the use of a “90-10”
shock absorber.
The Examiner argued that Youmans shows “shock absorbers (66) as
resisting movement of pivoting about the shaft (68)” (Answer 5) and that a
90-10 shock absorber is well known (Answer 6).
We will not sustain this rejection.
The Examiner does not articulate an apparent reason with logical
underpinning for incorporating a “shock absorber operative to allow said
framework to raise easily but resists the lowering thereof” in the Youmans
structure. Albeit shock absorbers such as a 90-10 shock absorber were
known in the art, the Examiner does not explain why one of ordinary skill in
the art would modify the Youmans structure to include one. Nothing in
Youmans would suggest the desirability of easily raising framework but
resisting its lowering. Furthermore, the Examiner states that Youmans
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shows “shock absorbers (66) as resisting movement of pivoting about shaft
(68),” suggesting that Youmans teaches the claimed shock absorbers.
However, we do not see any suggestion in Youmans of shock absorbers (66)
resisting movement of pivoting about shaft (68). Youmans only discloses
that shock absorbers 66 connect link 62 and headstock 46 (Figs. 1 and 2 )
“resiliently biasing the link 62 toward one end of the bearing box 64.” (Col.
4, ll. 27-29.) Shock absorbers 66 are not functioning to resist movement
about shaft 68. Looking at Fig. 3, shock absorbers 66 may affect
movements about axis 54 but not about shaft 68, which is parallel to them.

The rejection of claim 8 as unpatentable over LoCodo in view of Fenton and
Holmes.
The same arguments made above with respect to claim 1 appear to
have been made with respect to the rejection of claim 8. (App. Br. 21.) For
the same reasons we found the argument unpersuasive as to error in the
rejection of claim 1, we find them unpersuasive as to error in the rejection of
claim 8.

The rejection of claims 11 and 12 as unpatentable over Youmans in view of
Fenton.
The same arguments made above with respect to claim 1 appear to
have been made with respect to the rejection of claim 8. (App. Br. 26.) For
the same reasons we found the argument unpersuasive as to error in the
rejection of claim 1, we find them unpersuasive as to error in the rejection of
claims 11 and 12.

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The rejection of claim 13 as unpatentable over Youmans in view of Fenton
and LoCodo.
The same arguments made above with respect to claim 1 appear to
have been made with respect to the rejection of claim 13. (App. Br. 31.)
For the same reasons we found the argument unpersuasive as to error in the
rejection of claim 1, we find them unpersuasive as to error in the rejection of
claims 13.

CONCLUSIONS OF LAW
We conclude the Appellant has failed to show that the Examiner erred
in rejecting:
• Claims 1-4, 9 and 10 under 35 U.S.C. § 103(a) as unpatentable
over LoCodo in view of Fenton;
• Claims 5-7 under 35 U.S.C. § 103(a) as unpatentable over
LoCodo in view of Fenton and Youmans;
• Claim 8 under 35 U.S.C. § 103(a) as unpatentable over LoCodo
in view of Fenton and Holmes;
• Claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable
over Youmans in view of Fenton; and,
• Claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Youmans in view of Fenton and LoCodo.
We conclude that the Examiner erred in rejecting claims 15 and 16
under 35 U.S.C. § 103(a) as unpatentable over LoCodo in view of Fenton
and Youmans.
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DECISION
The decision of the Examiner to reject claims 1-13 is affirmed. The
decision of the Examiner to reject claims 14 and 15 is reversed.
We authorize the Examiner to cancel withdrawn claim 14 from the
application. (See the Manual of Patenting Examining Procedure (MPEP §
1215.03).
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) (2007).
AFFIRMED-IN-PART

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Quill & Disc Incorporated
30844 NE 1st Avenue
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