Ex Parte Hausler et al

Patent Trial and Appeal Board

Aug 30, 2016

13468338 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/468,338 05/10/2012
28395 7590 09/01/2016
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Henry W. Hausler
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.
83233531 8493
EXAMINER
ARCE, MARLON ALEXANDER
ART UNIT PAPER NUMBER
3611
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRY W. HAUSLER, COREY JOHN JAROCKI,
JOSEPH L. BUCHWITZ, and ANDREW KAMMERZELL
Appeal2014-008250
Application 13/468,33 81
Technology Center 3600
Before LINDA E. HORNER, JEREMY M. PLENZLER, and
MARK A. GEIER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 1--4 and 6-10. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).
1 Appellants identify Ford Global Technologies, LLC as the real party in
interest. App. Br. 1.
Appeal2014-008250
Application 13/468,338
CLAIMED SUBJECT MATTER
Claims 1 and 6 are independent, with claims 2--4 and 7-10 depending
from claim 1 or 6. Claim 1 is illustrative of the claims on appeal, and is
reproduced below:
1. A pick-up truck comprising:
a frame including a pair of frame rails;
a plurality of cross members secured to a top surface of each
of the frame rails at spaced intervals that is limited to at least a
maximum spacing in a longitudinal direction;
a truck bed supported on the plurality of cross members; and
a fifth wheel cross member assembly secured to the frame
rails and supporting the truck bed between two intermediate
cross members wherein the two intermediate cross members are
spaced apart by more than the at least maximum spacing.
REJECTIONS
1. Claims 1, 2, 4, and 6 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Withers (US 7,828,317 B2, iss. Nov. 9, 2010); and
2. Claims 3 and 7-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Withers and Davis (US 2006/0062657 Al, pub. Mar. 23,
2006).
OPINION
New Ground of Rejection -Indefiniteness
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1--4 and 6-10 under 35 U.S.C. § 112, i-f 2 as being indefinite.
The claims each recite a plurality of cross members that are disposed
at spaced intervals, with that spacing being "limited to at least a maximum
2
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Application 13/468,338
spacing," and two intermediate cross members "spaced apart by more than
the maximum spacing."2 That language is unclear, and confusing at best,
because many of the limitations effectively have no meaning. For example,
the term "limited" effectively adds nothing to the claim. If the spacing
defined between the plurality of cross members is "limited to" a maximum
spacing or greater (i.e., "at least a maximum spacing"), then that spacing is
simply at least the maximum spacing. Because the spacing being "limited to
at least a maximum spacing" actually defines a lower limit in the claims, the
term "maximum" also adds nothing to the claim, other than more confusion.
For example, one would typically view a minimum as a lower limit, rather
than a maximum. Further adding to the confusion, the "maximum spacing"
between the plurality of cross members 3 8 is described in the Specification
as being an upper limit rather than a lower limit, which is inconsistent with
the claims. See Spec. i-f 24 ("The spacing between the cross members 3 8 is
limited to a maximum spacing.").
We additionally note that, according to the Specification, the distance
between two intermediate cross members 3 8 is greater than the spacing
between the other cross members 38. See id. According to the claims,
however, the "two intermediate cross members" may have a spacing equal to
the spacing between the "plurality of cross members" (e.g., when the
"spaced intervals" exceed the "maximum spacing," but not by more than the
amount that the spacing between the two intermediate cross members
exceeds the "maximum spacing"), a spacing greater than the spacing
2 Claim 1 includes additional language, reciting that the two intermediate
cross members are "spaced apart by more than the at least maximum
spacing."
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Appeal2014-008250
Application 13/468,338
between the "plurality of cross members" (e.g., when the "spaced intervals"
are equal to the "maximum spacing"), or even less than the spacing between
the "plurality of cross members" (e.g., when the "spaced intervals" exceed
the "maximum spacing" by an amount more than the spacing between the
two intermediate cross members exceeds the "maximum spacing").
In view of the issues outlined above, it is unclear what is meant by the
limitations directed to spacing recited in claims 1 and 6. Claims 2--4 and 7-
10 do not further clarify those limitations. Accordingly, we enter a new
ground of rejection under 35 U.S.C § 112, i-f 2 because those claims are
indefinite. In re Packard, 751F.3d1307, 1311 (Fed. Cir. 2014) (affirming
Board's conclusion, in context of ex parte appeal, that claims were indefinite
"on grounds that they 'contain[ ] words or phrases whose meaning is
unclear."'). 3
Examiner's Rejections
Although we determine that the claims are indefinite, we are still able
to determine that the Examiner's rejection of those claims cannot be
sustained. The Examiner finds that Withers discloses each limitation of
independent claims 1 and 6, and provides an annotated version of Figure 3
from Withers, reproduced below, to explain where each limitation is
disclosed. Final Act. 3--4.
3 After the indefiniteness issue is addressed, it is unclear if claim 1 will be
fully supported by the original description. Specifically, as currently
drafted, claim 1 does not require that the "two intermediate cross members"
are a subset of the "plurality of cross members." Original claim 5, where the
"two intermediate cross members" first appeared, had such a requirement.
The "spacing limitations discussed above" appear that they will require
those "two intermediate cross members" to be a subset of the "plurality of
cross members" to have support in the original written description.
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Application 13/468,338
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The annotated version of Figure 3 from Withers is the rear perspective view
of the tn.1ck frame and support stn.1cture from \Vithers with the Examiner's
annotations as to the portions of that Figure considered to correspond to the
claim elements.
Claims 1 and 6 each recite "a plurality of cross members" and
separately recite "a fifth wheel cross member assembly." Appellants
contend that support structure assembly 10 in Withers cannot reasonably be
considered both the "plurality of cross members" and the "fifth wheel cross
member assembly." App. Br. 2--4; Reply Br. 1-3. We agree.
Figure 1 of Withers is reproduced below for reference, as we address
specific elements in Withers having corresponding reference numerals
shown in that Figure, which are not labeled in Figure 3.
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Appeal2014-008250
Application 13/468,338
lFlg-1
Figure 1 from Withers is a perspective view of only the support structure
shown in Figure 3 from Withers, without the additional truck frame features
shown in Figure 3. Withers explains that Figure 1 illustrates "an integrated
support structure 10 for either a fifth wheel hitch or a gooseneck trailer hitch
(hereinafter the support structure assembly 10)." Withers, 2:61---63. The
support structure is described as including H-shaped body portion 12 that is
"fabricated in one piece or ... as a layered two-piece structure." Id. at 2:64--
66. H-shaped body portion 12 includes front transverse bar portion 28, rear
transverse bar portion 30, and central bridging portion 32 between the front
and rear transverse bar portions 28, 30. Id. at 3: 13-16. According to
Withers, "the support structure assembly 10 is secured to the frame rails 42."
Id. at 3:31-33. As seen in the annotated version of Figure 3 above, Withers
discloses additional cross members (not specifically discussed therein)
extending between frame rails 42, which are labeled "intermediate cross
members" by the Examiner.
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Appeal2014-008250
Application 13/468,338
As seen in the annotated version of Figure 3 from Withers reproduced
above (and with reference to the numerals shown in Figure 1 ), the Examiner
considers front and rear transverse bar portions 28, 30 as corresponding to
the "plurality of cross members" recited in the claims, and central bridging
portion 32 as corresponding to the "fifth wheel cross member assembly."
Final Act. 4. The Examiner considers central bridging portion 32 to be
"secured to the frame rails," as required by the claims, by virtue of its
integral formation with front and rear transverse bar portions 28, 30, which
are coupled to frame rails 42.
Reading the "fifth wheel cross member assembly" limitation in a
manner consistent with the Specification requires that assembly to actually
be some sort of cross member (i.e., it must actually span between the frame
rails). Based on the record before us, a fifth wheel cross member assembly
is understood to take on the function of a typical cross member spanning a
vehicle frame. See, e.g., Spec. i-f 22 ("The cross member 3 8 shown in
phantom lines in Figure 2 is normally provided on the truck bed 36 if the
fifth wheel cross member assembly option is not provided."); see also
Withers, Fig. 3 (depicting front and rear transverse bar portions 28, 30
spanning the distance between frame rails 42).
Accordingly, the Examiner has improperly mapped two distinct claim
elements to the same structure in Withers. Although claims 2 and 7 further
define the fifth wheel cross member assembly, the Examiner's rejection of
those claims does not cure the deficiencies noted above regarding claims 1
and 6. Rather, that rejection compounds the error in the rejection of claims 1
and 6. See Final Act. 3 (confirming that the structure considered to
correspond to the plurality of cross members, front and rear box beams 28,
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Application 13/468,338
30, is the same as the structure considered to correspond to the fifth wheel
cross member assembly).
Accordingly, the Examiner has failed to establish sufficiently that
claims 1, 2, 4, and 6 are unpatentable under 35 U.S.C. § 102. Claims 3 and
7-10 depend from claim 1 or 6, and the rejection of those claims suffers
from the same deficiencies noted above.
DECISION
We REVERSE the Examiner's decision to reject claims 1, 2, 4, and 6
as unpatentable under 35 U.S.C. § 102;
We REVERSE the Examiner's decision to reject claims 3 and 7-10 as
unpatentable under 35 U.S.C. § 103; and
We also enter a NEW GROUND OF REJECTION of claims 1--4 and
6-10 on the basis that these claims are indefinite under 35 U.S.C. § 112 i-f 2.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ...
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Appeal2014-008250
Application 13/468,338
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ...
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure §1214.01.
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)(l)(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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