Ex Parte King et al

Board of Patent Appeals and Interferences

Jan 13, 2011

11836398 (B.P.A.I. Jan. 13, 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.
11/836,398 08/09/2007 E. Mackey King 707553US1 3116
24938 7590 01/14/2011
Chrysler Group LLC
CIMS 483-02-19
800 CHRYSLER DR EAST
AUBURN HILLS, MI 48326-2757
EXAMINER
CHENEVERT, PAUL A
ART UNIT PAPER NUMBER
3612
MAIL DATE DELIVERY MODE
01/14/2011 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 E. MACKEY KING, PAUL LESTER, and
GERARD R. OLSZEWSKI
____________

Appeal 2009-011654
Application 11/836,398
Technology Center 3600
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, 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 2009-011654
Application 11/836,398

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STATEMENT OF THE CASE
E. Mackey King et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 3-5, and 7-10. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
THE INVENTION
Appellants’ claimed invention relates to “pick up truck vehicles of the
type having a crew cab passenger compartment and a short bed cargo
compartment extending rearwardly of the passenger compartment that offers
the functional convenience of long bed cargo capability.” Spec. 1, ll. 6-9.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A vehicle body having a passenger compartment with
front and rear seats and a cargo compartment projecting
rearwardly from the passenger compartment, the body
comprising:
the passenger compartment having a rear wall and a
floor, the floor having an upwardly stepped segment integrally
formed with the rear wall under at least a portion of the rear
passenger seat to form an open space under the rear seat
external to the passenger compartment, the rear wall including a
downwardly pivotable midgate assembly that, when pivoted
into the cargo compartment to an open position, forms a second
tier cargo floor section over the open space; and
the cargo compartment provided with a fixed cargo bed
having a first portion extending rearwardly of said rear wall to
provide a short cargo bed section and a second portion
extending forwardly of said rear wall into said open space under
the rear seat to provide an extended cargo bed section.
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Application 11/836,398

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THE REJECTIONS
Appellants seek review of the following rejections:
1. The Examiner rejected claims 1, 3-5, and 7-9 under 35 U.S.C.
§ 103(a) as being unpatentable over Ward (US 5,288,124; issued
Feb. 22, 1994) and Storc (US 5,934,727; issued Aug. 10, 1999).
2. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Ward, Storc, and Burg (US 6,851,741 B1; issued
Feb. 8, 2005).
CONTENTIONS AND ISSUES
The Examiner found that Ward discloses a vehicle body having a
passenger compartment with an open space under the rear seat and a cargo
compartment that extends forwardly into this open space to provide an
extended cargo bed section. Ans. 3. The Examiner found that Storc
discloses a vehicle body having a rear wall of the passenger compartment
including a downwardly pivotable midgate assembly that, when pivoted to
an open position, combines with a passenger cargo portion to form a second
tier cargo floor section over the open space. Ans. 4. The Examiner
concluded that it would have been obvious to a person of ordinary skill in
the art to modify the vehicle body of Ward to employ a pivoted rear seat and
midgate assembly, as taught by Storc, “to provide a second tier storage floor
section, as is desired in this vehicle invention.” Ans. 5. In particular, the
Examiner explains that “when the downwardly pivotable midgate assembly
(taught by STORC et al.) is added to the rear wall of WARD, the
downwardly pivotable midgate assembly would produce a passenger
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Application 11/836,398

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compartment rear wall which pivots into the cargo compartment to an open
position, as claimed.” Ans. 8. In other words, “[t]he combination actually
made in the Final Rejection was the simple addition of an elevated midgate
assembly to the rear wall of WARD over the open space and a forwardly
pivoting seat back to form a substantially horizontal second tier floor
element.” Id.
Appellants argue claims 1, 3, 4, and 7 as a group. App. Br. 8. We
select claim 1 as representative, and claims 3, 4, and 7 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue:
Neither Ward nor Storc disclose or otherwise teach that
the passenger compartment rear wall pivots ‘into the cargo
compartment to an open position’ nor that in doing so ‘forms a
second tier cargo floor section over the open space’ defined by
the upwardly stepped floor segment of the passenger
compartment as is defined by claim 1.
App. Br. 6-7; see also Reply Br. 3. Appellants further argue that because
Ward discloses that the rigid bed liner insert 20 is “a one-piece, integrally-
formed truck-bed liner-insert 20” a person having ordinary skill in the art
“would not look to Storc et al. to add a pivotable midgate assembly. . . .”
Reply Br. 5; see also App. Br. 11-12.
Appellants argue that dependent claim 5 is separately patentable
because neither Ward nor Storc discloses or teaches that the bottom section
19 of the rear passenger seat 17 is forwardly pivotable. App. Br. 8.
Appellants argue that dependent claims 8 and 9 are separately patentable
because Storc does not disclose a structure that corresponds to the claimed
“bridging device.” App. Br. 10. Appellants present substantially the same
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Application 11/836,398

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arguments for patentability for dependent claim 10 as those made for claims
1 and 8. App. Br. 11-12.
The issues presented by this appeal are:
Would the addition of the teaching of Storc’s downwardly pivotable
midgate assembly and pivoted rear seat to Ward’s vehicle body have led one
having ordinary skill in the art to a downwardly pivotable midgate assembly
that pivots into the cargo compartment in an open position and that forms a
second tier cargo floor section over an open space formed under the rear seat
by an upwardly stepped segment, as called for in claim 1?
Would a person having ordinary skill in the art have had a reason,
based on a rational underpinning, to add the pivotable midgate assembly and
pivoted rear seat of Storc to the vehicle body of Ward, as proposed by the
Examiner?
Does Storc disclose that the bottom section 19 of the rear passenger
seat 17 is forwardly pivotable, as called for in claim 5?
Does Storc disclose a “bridging device” as called for in claims 8
and 9?
FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. We agree with the Examiner’s findings on page 3 of the Answer as
to the scope and content of Ward as it pertains to the elements of
appealed claim 1 and adopt these findings as our own.
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Application 11/836,398

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2. We find that Ward does not disclose “a downwardly pivotable
midgate assembly that, when pivoted into the cargo compartment
to an open position, forms a second tier cargo floor section over
the open space” as called for in claim 1.
3. Storc discloses a pick up truck 10 with a cab portion 12 and a
cargo box 40, wherein the truck includes a front passenger seating
arrangement 14 having one or more front seats 16 and a rear
extended cab portion 15 including one or more rear seats 17.
Storc, col. 3, ll. 31-42; figs. 1-3.
4. Storc discloses that “[t]he truck 10 includes features making it
easily adaptable for carrying longer and wider loads without
lengthening the cargo box 40 for ease of parking and maneuvering,
while also permitting the increased passenger capacity, as
described further hereinafter.” Storc, col. 3, ll. 42-46.
5. The cargo box 40 includes a front wall 41, and a lower floor
portion 37. Storc, col. 3, ll. 47-48 and ll. 54-55; figs. 1-3.
6. The front wall 41 of the cargo box 40 includes a box panel portion
42 pivotally mounted at a lower box panel edge 44 to the
surrounding stationary portion of the front wall 41, and is pivotable
to a generally horizontally oriented open condition into the cargo
box to provide a cargo box opening 45 on the front wall 41 and to
provide a first load surface 47. Storc, col. 4, ll. 18-22, ll. 24-34,
and ll. 42-55; figs. 2 and 3.
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7. Storc discloses that the rear seat 17 in the rear extended cab portion
15 includes a seat back portion 18 and bottom seat cushion 19,
where the seat back portion 18 is foldable downwardly and
forwardly and includes a seat back wall 20 which is used to
support a load, and where the seat cushion 19 is moveable to a
forward generally vertical condition behind the front seat 16 to
provide a stop surface 26 for restraining the load against moving
forward. Storc, col. 4, ll. 58-62; id. at col. 5, ll. 33-37 and ll. 49-
50; fig. 3.
8. Storc discloses that the cab portion 12 includes a rearward cab wall
21 located behind the rear seats 17 that includes a cab panel
portion 22 which is pivotally mounted on the rearward cab wall 21
and pivots to a horizontally oriented open condition into the cab
portion and rests on and is supported by the seat back wall 20 to
provide a cab opening 24 on the rearward cab wall 21. Storc,
col. 4, l. 63 – col. 5, l. 9; figs. 2 and 3.
9. “[T]he open cab panel portion 22 preferably provides a horizontal
second load surface 25 which is vertically aligned with the first
load surface 47 of the cargo panel portion 42 when both are in the
open condition.” Storc, col. 5, ll. 11-14; fig. 3. See also Storc,
col. 5, ll. 23-30 (describing “upper second tier location”).
10. Storc discloses an alternate embodiment in Figures 5 and 6 with
features similar to those in the embodiment of Figures 1-3, where
in the alternate embodiment, the cab panel portion 122 is an
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Application 11/836,398

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upwardly and rearwardly pivoting hatch door pivotally mounted at
an upper cab panel edge 123 to a stationary portion of the rearward
cab wall 121 to provide a cab opening 124. Storc, col. 8, ll. 43-46
and 58-63; fig. 5 (see reference numbers 21-24).
11. As shown in Figure 5, cab opening 124 (24) has upper cab panel
edge 123 (23), left and right side panel edges (unnumbered), and a
lower panel edge (unnumbered), where the lower panel edge is
disposed between horizontal first load surface 47 and horizontal
second load surface 25. Storc, fig. 5.
ANALYSIS
Rejection of claims 1, 3-5, and 7-9 under 35 U.S.C. § 103(a) as being
unpatentable over Ward and Storc
Claims 1, 3, 4, and 7
Ward discloses all of the elements of claim 1, including the claimed
extended cargo bed section formed by an open space under the rear seat,
except for “a downwardly pivotable midgate assembly that, when pivoted
into the cargo compartment to an open position, forms a second tier cargo
floor section over the open space” (Facts 1, 2). Storc discloses a pick up
truck 10 with an extended cab portion 15 and discloses a technique to make
the cargo box 40 adaptable to carry longer and wider loads without
lengthening the cargo box (Facts 3, 4). In particular, the technique disclosed
in Storc uses pivotable portions of the walls of the cab portion 12 and the
cargo box 40, as well as a foldable and movable rear seat 17, to create a
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Application 11/836,398

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second tier cargo floor comprised of a first horizontal load surface 47, a seat
back wall 20, and a second horizontal load surface 25 (Facts 5-9).
Ward discloses only a single wall (36) between the passenger
compartment and the cargo compartment (Fact 1). As such, a person having
ordinary skill in the art applying the technique of Storc to the vehicle body
of Ward to provide a second tier cargo floor would modify Ward’s rear wall
(36) to provide it with a pivotable portion that pivots downwardly to create a
horizontal load surface and would also modify the rear seats of Ward to
make them foldable and movable to create another horizontal load surface.
We are not persuaded by the Appellants’ argument that the
combination fails to render the claimed subject obvious because Storc’s cab
panel portion 22, corresponding to the claimed rear wall of the passenger
compartment, pivots into the passenger compartment instead of into the
cargo compartment as claimed. App. Br. 7. “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). The artisan is not compelled
to blindly follow the teaching of one prior art reference over the other
without the exercise of independent judgment. See Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). As the Supreme Court
recognized in KSR Int'l Co. v. Teleflex Inc., “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” 550 U.S. 398, 421
(2007). We find that in applying Storc’s technique to modify the rear wall
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Application 11/836,398

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of Ward a person having ordinary skill in the art would have two options,
viz, either to make the rear wall portion pivot inwardly into the passenger
compartment or make the rear wall portion pivot outwardly into the cargo
compartment.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR, 550 U.S. at 421. It would have been obvious for a person having
ordinary skill in the art to modify Ward’s rear wall so that it pivots
outwardly into the cargo compartment to provide a second tier cargo floor
section in combination with the back of Ward’s rear seat as a matter of
ordinary skill and common sense in light of the teaching of the technique in
Storc for providing an expanded cargo box.
We are also not persuaded by Appellants’ argument that the proposed
combination would not result in a downwardly pivotable midgate assembly
that forms a second tier cargo floor section over the open space. App. Br. 7;
Reply Br. 3. The modified vehicle body of Ward discussed above would
result in a second tier cargo floor that is disposed above Ward’s open space.
Even though a person having ordinary skill in the art may modify Ward so
that the rear wall of the passenger compartment pivots into the cargo
compartment, this pivotable portion of the rear wall would still be “over the
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open space” in Ward’s vehicle body because the second tier cargo floor
section formed by the pivotable portion of the rear wall would be disposed
above the open space.
As to the reason to combine the teachings of Ward and Storc, we
agree with the Examiner that a person of ordinary skill in the art would have
been led to modify the vehicle body of Ward to employ the extended cargo
box technique of Storc “to provide a second tier storage floor section, as is
desired in this vehicle invention.” Ans. 5. “[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR, 550
U.S. at 417. While Appellants have averred generally that one of ordinary
skill would not look to combine the converted van of Ward with the crew
cab pickup truck of Storc (App. Br. 11-12; Reply Br. 5), Appellants have not
contended that application of the technique disclosed in Storc to the vehicle
body of Ward would have been beyond the skill of a person of ordinary skill
in the art. As such, we affirm the Examiner’s rejection of claim 1 as being
unpatentable over Ward and Storc. Claims 3, 4, and 7 fall with claim 1.
Claim 5
Dependent claim 5 calls for the passenger seat to include “a bottom
section and a back section, both being pivotable forward to form a cargo
portion within the passenger compartment.” The Examiner found that
Storc’s “passenger seat (17) includes a bottom section (19) and a back
section (18), both being pivotable forward to form a cargo portion (25)
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within the passenger compartment.” Ans. 7. The Examiner further found
that “[t]he pivoting movement of the seat cushion is an inherent feature of
the vehicle seat.” Ans. 9.
We agree with the Examiner that Figure 3 of Storc clearly shows that
the bottom seat cushion 19 is moveable to a forward vertical condition
behind the front seat 16 (Fact 7) and that in order to move the bottom seat
cushion 19 from its substantially horizontal position when in use as a seat
cushion to its generally vertical condition would inherently involve some
pivoting movement of the seat in a forward direction, or at least that use of
pivoting movement would have been obvious in view of the figures and
depiction of the various seat cushion positions in Storc. As such, we affirm
the Examiner’s rejection of claim 5 as unpatentable over Ward and Storc.
Claims 8 and 9
Dependent claim 8 calls for “a bridging device providing a
substantially horizontal support surface between a bottom edge of the
midgate assembly and a bottom edge of the passenger seat back section
whenever the midgate assembly and the passenger seat back are deployed to
horizontal positions.” Dependent claim 9 further limits claim 8 and calls for
the bridging device to comprise “a substantially horizontal second tier floor
element positioned in the passenger compartment between the passenger seat
and the rear wall.”
The Examiner found that Storc’s second embodiment discloses a
liftgate which fits into a door frame seal, that the lower edge of this door
frame seal forms the claimed bridging device, and that this bridging device
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Application 11/836,398

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comprises a substantially horizontal second tier floor element as the central
portion of the second tier platform. Ans. 7-8 (citing Storc, fig. 5). We agree
with the Examiner’s findings set forth above and adopt them as our own. In
particular, Storc discloses an alternate embodiment in which the cab panel
portion 122 is an upwardly and rearwardly pivoting hatch door pivotally
mounted at an upper cab panel edge 123 to a stationary portion of the
rearward cab wall 121 to provide a cab opening 124, and where the lower
panel edge of the door frame seal is disposed between horizontal first load
surface 47 and horizontal second load surface 25 (Facts 10 and 11). As
such, we find that this lower panel edge of Storc forms a bridging device that
bridges the gap between the first and second load surfaces and forms a
horizontal second tier floor element of the second tier platform 30 positioned
in the passenger compartment between the passenger seat and the rear wall.
Rejection of claim 10 under 35 U.S.C. § 103(a) as being unpatentable over
Ward, Storc, and Burg
Dependent claim 10 further limits claim 8 and calls for the bridging
device to comprise “an extension of the midgate assembly.” The Examiner
relies on Burg to teach a midgate assembly having a bridging device
extension which mates with a seat back when both are lowered to form a
storage tier. Ans. 6. The Examiner concluded that it would have been
obvious to make the bridging device of the modified Ward vehicle body as
an extension of the midgate assembly, as taught by Burg, “to provide a
smooth storage surface.” Id.
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Appellants do not contest the Examiner’s findings as to the disclosure
in Burg. Rather, Appellants rely on the same arguments made for the
patentability of claim 8, from which claim 10 depends. For the same reasons
discussed supra in our analysis of claim 8, we agree with the Examiner that
Storc discloses a bridging portion. Appellants further aver generally that
one of ordinary skill would not look to combine the converted van of Ward
with the crew cab pickup truck of Storc (App. Br. 11-12) or with the
bridging device of Burg (Reply Br. 5). We find the Examiner’s articulation
of a reason to combine the teachings of Ward, Storc, and Burg to be based
on a rational underpinning. Appellants have not contended that application
of the techniques disclosed in Storc and Burg to the vehicle body of Ward
would have been beyond the skill of a person having ordinary skill in the art.
As such, we affirm the Examiner’s rejection of claim 10 as unpatentable
over Ward, Storc, and Burg.
CONCLUSIONS
The addition of the teaching of Storc’s downwardly pivotable midgate
assembly and pivoted rear seat to Ward’s vehicle body would have led one
having ordinary skill in the art to a downwardly pivotable midgate assembly
that pivots into the cargo compartment in an open position and that forms a
second tier cargo floor section over an open space formed under the rear seat
by an upwardly stepped segment.
A person having ordinary skill in the art would have been led to add
the pivotable midgate assembly and pivoted rear seat of Storc to the vehicle
body of Ward in view of the prior art, as proposed by the Examiner.
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Storc discloses that the bottom section 19 of the rear passenger seat 17
is forwardly pivotable, as called for in claim 5.
Storc disclose a “bridging device” as called for in claims 8 and 9.
DECISION
The decision of the Examiner to reject claims 1, 3-5, and 7-10 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).

AFFIRMED

nlk

Chrysler Group LLC
CIMS 483-02-19
800 CHRYSLER DR EAST
AUBURN HILLS MI 48326-2757