Ex Parte Jones

Board of Patent Appeals and Interferences

Mar 9, 2011

10865501 (B.P.A.I. Mar. 9, 2011)

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.
10/865,501 06/09/2004 Donald R. Jones 3343 6860
27727 7590 03/09/2011
PEDERSEN & COMPANY, PLLC
P.O. BOX 2666
BOISE, ID 83701
EXAMINER
GORDON, STEPHEN T
ART UNIT PAPER NUMBER
3612
MAIL DATE DELIVERY MODE
03/09/2011 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 DONALD R. JONES
____________

Appeal 2009-009836
Application 10/865,501
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009836
Application 10/865,501

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STATEMENT OF THE CASE
Donald R. Jones (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Oberg (US 6,283,554 B1, issued Sep. 4, 2001) and
Masters (US 6,450,523 B1, issued Sep. 17, 2002) and over Oberg and Pruss
(US 3,120,408, issued Fed. 4, 1964).2 Claim 2 has been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a dump truck-trailer assembly
including a tractor 20, a first dumping trailer 10, and a tow vehicle 30. Spec.
4, ll. 14-16 and fig. 2.
Claim 1, the sole claim in the instant appeal, reads as follows:
1. A tractor, semi-trailer and trailing tow vehicle combination
comprising:
a tractor for pulling a dumping semi-trailer and a trailing tow
vehicle;
the dumping semi-trailer comprising a frame separate from the
tractor, with a plurality of ground engaging wheels beneath said semi-
trailer frame and a dumping body mounted above said dumping semi-
trailer frame wherein contents of said dumping body of the dumping
semi-trailer may be emptied by actuating a tilting mechanism adapted
to lift the said dumping body substantially above a traveling height of
said dumping semi-trailer frame;
said dumping semi-trailer being adapted on its front end to be
readily connected to and towed by the tractor, and being adapted to be
readily disconnected therefrom, and said dumping semi-trailer being
adapted on its back end to connect to and tow the trailing tow vehicle,

2 The rejection of claim 1 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which appellant regards as the invention has been withdrawn
by the Examiner. Ans. 2.
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as well as receive a dumping body of the trailing tow vehicle within
said dumping body of said dumping semi-trailer; and
the trailing tow vehicle comprising also a frame separate from
the tractor and separate from the dumping semi-trailer, wherein below
said frame of said trailing tow vehicle a plurality of ground engaging
wheels are mounted and above said frame of said trailing tow vehicle
is mounted a dumping body, the dumping body of the trailing tow
vehicle being adapted to be drawn into the dumping body of the
dumping semi-trailer and tilted while inside said dumping body of
said dumping semi-trailer to dump contents of said dumping body of
said trailing tow vehicle.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The obviousness rejection over Oberg and Masters
Appellant first argues that because Masters relates to “tandem box
trailers,” Masters is not in Appellant’s field of endeavour and as such
Masters constitutes non-analogous art. App. Br. 7. We disagree that
Masters is not in Appellant’s field of endeavour. Appellant’s field of
endeavour is that of tractors and semi-trailers for hauling various materials.
See e.g., Spec. 1. Masters discloses a tractor-trailer assembly for hauling
freight. Masters, fig. 1. Therefore, the disclosure of Masters is in the
Appellant’s field of endeavor and, as such, we find that Masters is analogous
art.
Second, Appellant argues that “the Examiner has provided no logic or
any incentive for the combination” of Oberg and Masters. App. Br. 8.
According to Appellant, “there must be some logical connection in the cited
prior art” to support the legal conclusion of obviousness. App. Br. 7. We
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find Appellant’s argument unpersuasive because this argument is foreclosed
by KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), in which the Court
rejected the rigid requirement of a teaching, suggestion or motivation to
combine known elements in order to show obviousness. KSR, 550 U.S. at
418-19. The Court noted that, “there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness … [H]owever, ‘the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.’” KSR at 418 (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)). In this case, we find that the Examiner
has set forth a reasoning having rational underpinning. We agree with the
Examiner that it would have been obvious to replace the fixed connection
between the tractor and the first dumping body of Oberg with the
conventional fifth wheel connection of Masters to provide more system
flexibility, that is, to permit the change out of the tractor in case of
malfunction. See Ans. 3, 4. An improvement that is nothing more than the
predictable use of prior art elements according to their established functions
is likely to be obvious. KSR, 550 U.S. at 417.
Finally, Appellant argues that the combination of Oberg and Masters
would result in a tractor with two identical semi-trailers. Reply Br. 2. We
disagree with Appellant’s position because this argument does not address
the Examiner’s proposed combination. The Examiner found, and we agree,
that Oberg discloses all the limitations of claim 1 with the exception of a
tractor that is separate from a semi-trailer. See Ans. 4. Hence, the Examiner
is not proposing to add the trailer of Masters to the dump truck of Oberg, but
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rather, to use the conventional fifth wheel type hitch of Masters to connect
the tractor and the first dumping body of Oberg. See Ans. 4. See also,
Masters, col. 5, l. 66 through col. 6, l. 3.
To justify combining reference teachings in
support of a rejection it is not necessary that a
device shown in one reference can be physically
inserted into the device of the other. The test for
obviousness is not whether the features of a
secondary reference may be bodily incorporated
into the structure of the primary reference; nor is it
that the claimed invention must be expressly
suggested in any one or all of the references.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (internal citations omitted).
In conclusion, for the foregoing reasons, the rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Oberg and Masters is sustained.

The obviousness rejection over Oberg and Pruss
Appellant argues that Pruss teaches away from Appellant’s invention.
App. Br. 8. We do not find Appellant’s argument persuasive. Prior art does
not teach away from claimed subject matter merely by disclosing a different
solution to a similar problem unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Pruss does not in any way criticize, discredit,
or otherwise discourage a tractor that is separate from a semi-trailer, such as
that of Appellant, which may provide more system flexibility, namely, to
permit the change out of the tractor in case of malfunction. See Ans. 3, 4.
Moreover, as the Examiner found, Pruss discloses in Figure 1a vehicle 41
(truck) connected by a conventional fifth wheel 46 to dumping body 46
(dumping semi-trailer). See Ans. 5. See also, Pruss, col. 3, ll. 66-67.
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Appellant further argues that the combination of Oberg and Pruss
would result in a tractor with two semi-trailers. App. Br. 8 and Reply Br. 2.
However, as noted above, this argument does not address the Examiner’s
proposed combination. The Examiner is not proposing to add the trailers of
Pruss to the dump truck of Oberg, but rather, to use the conventional fifth
wheel 46 of Pruss to connect the tractor and the first dumping body of
Oberg. See Ans. 4. See also, Pruss, figs. 1 and 4.
As such, the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Oberg and Pruss is likewise sustained.

SUMMARY
The decision of the Examiner to reject claim 1 is affirmed.
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

mls

PEDERSEN & COMPANY, PLLC
P.O. BOX 2666
BOISE, ID 83701