Ex Parte Linger

Board of Patent Appeals and Interferences

Jul 12, 2010

11144082 (B.P.A.I. Jul. 12, 2010)

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.
11/144,082 06/03/2005 Don F. Linger 65269-0109 9837
68768 7590 07/12/2010
NOVAK DRUCE AND QUIGG, LLP (Thule)
1000 LOUISIANA STREET
FIFTY-THIRD FLOOR
HOUSTON, TX 77002
EXAMINER
BOEHLER, ANNE MARIE M
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
07/12/2010 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 DON F. LINGER
____________

Appeal 2009-007771
Application 11/144,082
Technology Center 3600
____________

Before LINDA E. HORNER, WILLIAM F. PATE, III, and
FRED A. SILVERBERG, 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 2009-007771
Application 11/144,082
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STATEMENT OF THE CASE
Don F. Linger (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-17, which are all of the claims on
appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
Appellant’s claimed invention is a hitch assembly having a hitch ball
that is retained in a socket by a sliding bar. Spec. 1, para. [0002]. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A hitch assembly comprising:
a generally cylindrical socket with an inner diameter and
including a slot along an outer periphery of said socket;
a hitch ball selectively received within said socket and
having a radial groove about an outer periphery;
a housing for receiving said socket;
a sliding bar guide;
a spring; and
a generally cylindrical sliding member generally defined
by an axis and including a spring attachment portion and a
guide portion, wherein said sliding member is selectively
guided by said sliding bar guide, said sliding member
selectively engages said radial groove to retain said hitch ball
within said socket, said spring selectively urges said sliding
member to rotate generally about the axis, and said sliding
member selectively disengages said radial groove to allow said
hitch ball to be removed from said socket.

Appeal 2009-007771
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THE REJECTIONS
Appellant seeks review of the following rejections by the Examiner:
1. Rejection of claims 1, 3, 5, 7, and 12-14 under 35 U.S.C. § 102(e) as
anticipated by Dick (US 2004/0160037 A1).2
2. Rejection of claims 8 and 9 under 35 U.S.C. § 102(b) as anticipated
by Putnam (US 6,409,202 B1).
3. Rejection of claims 1-6 under 35 U.S.C. § 103(a) as unpatentable over
Putnam and Studebaker (US 2,639,160).
4. Rejection of claims 2, 4, 10, and 11 under 35 U.S.C. § 103(a) as
unpatentable over Putnam and Dick.
5. Rejection of claims 12 and 15-17 under 35 U.S.C. § 103(a) as
unpatentable over Putnam and Works (US 5,016,898).3
ANALYSIS
Rejection of claims 1, 3, 5, 7, and 12-14 under 35 U.S.C. § 102(e) as
anticipated by Dick
Claims 1, 3, 5, and 7
The issue before us is whether Dick discloses a spring that selectively
urges a sliding member to rotate as called for in claim 1?
Claim 1 is directed to a hitch assembly that includes a spring that
selectively urges a sliding member to rotate generally about its axis. App.
Br. 25, Claims App. The Examiner found that Dick’s spring 84 urges the

2 Claim 15 is not subject to this rejection. While Appellant’s argument
mistakenly lists claim 15 as subject to this rejection (App. Br. 7),
Appellant’s Grounds of Rejection to be Reviewed on Appeal (App. Br. 6)
and the Examiner’s Answer (Ans. 4) correctly reflect that claim 15 is not
subject to this ground of rejection.
3 The Examiner withdrew the rejection of claims 13 and 14 under this
ground of rejection. Ans. 3.
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sliding member (user-engageable rod 88, first portion 78 of pin 76, and
coupler 86) rotationally. Ans. 4.
Dick discloses that in the “use position” (with ball portion 44 of hitch
member 26 upright in housing 24), hitch member 26 is held in position
within housing 24 by spring 84 biasing pin 76 to the extended position.
Dick 3, para. [0037]; fig. 2. Thus, Dick’s spring 84 urges the sliding
member axially. However, Dick discloses that rod 88 is rotated by a user via
handle 104. Dick 3, paras. [0037], [0039]. Dick does not disclose that
spring 84 urges rod 88 to rotate about its axis. Dick, passim.
As such, we disagree with the Examiner’s finding that Dick discloses
a spring that selectively urges a sliding member to rotate as called for in
claim 1. Thus, we cannot sustain the rejection of claim 1 as being
anticipated by Dick. We likewise cannot sustain the rejection of claims 3, 5,
and 7 by virtue of their dependence from claim 1.
Claims 12-14
The issue before us is whether Dick discloses a guide pin as called for
in independent claim 12?
Independent claim 12 is directed to a hitch assembly that includes a
guide pin extending from the axis that generally defines the sliding member.
App. Br. 27, Claims App. The Examiner found that Dick discloses a sliding
member 78 and a guide pin 80. Ans. 8.
Dick discloses that pin 76 has a first portion 78 and a second portion
80 extending along a single longitudinal axis. Dick 2, para. [0033]; fig. 11.
Thus, second portion 80 of pin 76 has the same longitudinal axis as first
portion 78 of pin 76 and does not “extend[ ] from the axis” that defines the
sliding member (first portion 78) as required by independent claim 12.
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As such, we disagree with the Examiner’s finding that Dick discloses
a guide pin (second portion 80 of pin 76) as called for in independent claim
12. Thus, we cannot sustain the rejection of claim 12 as being anticipated by
Dick. We likewise cannot sustain the rejection of claims 13 and 14 by virtue
of their dependence from independent claim 12.
Rejection of claims 8 and 9 under 35 U.S.C. § 102(b) as anticipated by
Putnam
The issue before us is whether Putnam discloses a sliding member in
“double shear” as called for in claim 8?
Claim 8 is directed to a hitch assembly that includes a sliding member
in double shear to resist pullout of the hitch ball. App. Br. 26, Claims App.
Appellant’s Specification defines double shear as referring to two different
lines of section S that must fail in order for hitch ball 114 to pull out of
socket 116. Spec. 9, para. [0044]; fig. 13. Appellant’s Specification depicts
a line of shear S at each of the two lines of intersection of sliding member
150 with the outer circumference of hitch ball 114. Spec. fig. 13. We
interpret the limitation of claim 8 calling for the sliding member to be “in
double shear” to require the sliding member to intersect the circumference of
the hitch ball to create two different lines of shear.
The Examiner found that Putnam’s Figure 4 shows a sliding member
in double shear because it shows “a deep groove in the hitch ball 30 that is
deeper than the diameter of the rod 36” and “The end of rod 36 extends
through socket 24, into groove 32, and through the other side of socket.”
Ans. 9. The Examiner further found that “[w]ith two holes, there are
necessarily two shear locations, otherwise, the structure could contain only
one continuous hole in the socket.” Ans. 10.
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We cannot agree with the Examiner’s claim construction that a sliding
member extending through a socket at two points necessarily creates double
shear. When a generally cylindrical sliding member intersects a generally
cylindrical socket to pass through the radial groove of a hitch ball received
within that socket, in order to create two different lines of shear, the
longitudinal edge of the sliding member furthest from the center of the hitch
ball must be within the outer circumference of the hitch ball, i.e., the groove
in the hitch ball must be deeper than the diameter of the sliding member.4 If
instead the longitudinal edge of the sliding member furthest from the center
of the hitch ball lies beyond a point tangential to the outer circumference of
the hitch ball, then there will only be a single line of shear between the
sliding member and the circumference of the hitch ball, despite there being
two holes through the socket.
Putnam does not explicitly describe or depict that locking rod 36
passes through inner chamber 24D of container 24 so that the longitudinal
edge of locking rod 36 furthest from the center of hitch ball 28 is within the
outer circumference of the hitch ball 28. Putnam, passim. Nor is the
Examiner’s reliance on Figure 4 well founded. In re Wright, 569 F.2d 1124,
1127 (CCPA 1977) (“Absent any written description in the specification of
quantitative values, arguments based on measurements of a drawing are of
little value.”). If locking rod 36 passes through aligned holes 24E of
container 24 and engages groove 32 of hitch ball 28, with the longitudinal
edge of locking rod 36 furthest from the center of hitch ball 28 at a point
beyond tangential to the outer circumference of hitch ball 28, then locking
rod 36 will have a single line of shear. Given the absence of a description or

4 When seen in a sectional plan view, such as in Appellant’s figure 13.
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depiction that configures the longitudinal edge of the locking rod 36 furthest
from the center of hitch ball 28 within the outer circumference of the hitch
ball, we cannot find by a preponderance of the evidence that Putnam
discloses a sliding member in double shear.
As such, we disagree with the Examiner’s finding that Putnam
necessarily discloses a sliding member in double shear. Thus, we cannot
sustain the rejection of claim 8 as being anticipated by Putnam. We likewise
cannot sustain the rejection of claim 9 by virtue of its dependence from
independent claim 8.
Rejection of claims 1-6 under 35 U.S.C. § 103(a) as unpatentable over
Putnam and Studebaker
The issue before us is whether the proposed combination discloses “a
sliding member selectively guided by a sliding bar guide” as recited in
claim 1.
Independent claim 1 is directed to a hitch assembly wherein the
generally cylindrical sliding member is guided by a sliding bar guide. App.
Br. 25, Claims App. The Examiner found that Putnam discloses the claimed
cylindrical sliding member (locking rod 36) guided by a sliding bar guide
(hole 24F). Ans. 4. However, to meet the other limitations of claim 1, the
Examiner proposed modifying Putnam’s device so that the sliding member
(locking rod 36) moves into its engaged position by biased rotation, as
taught by Studebaker, in order to provide a compact lock for the ball mount
in the socket. Ans. 5.
As Appellant correctly points out (Reply Br. 6), in this proposed
combination, Putnam’s locking member 36, as modified, would rotate, and
would no longer slide into position, and thus would no longer be a sliding
member as called for in independent claim 1. As such, we cannot sustain the
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rejection of claim 1 as being unpatentable over the combination of Putnam
and Studebaker. We likewise cannot sustain the rejection of claims 2-6 by
virtue of their dependence from independent claim 1.
Rejection of claims 2, 4, 10, and 11 under 35 U.S.C. § 103(a) as
unpatentable over Putnam and Dick
The issue before us is whether the rejection of claims 2, 4, 10, and 11
based upon a sufficient reason with a rational underpinning to explain why a
person of ordinary skill in the art would have modified Putnam’s device to
include spring and cam elements as taught by Dick, in order to urge
Putnam’s locking rod 36 to rotate about its axis.
Claims 2, 4, 10, and 11 each contain the limitation that the spring
selectively urges the sliding member to rotate about its axis. The Examiner
concluded that “[i]t would have been obvious to one of ordinary skill in the
art to provide the Putnam sliding member with a cam and spring biasing
means, as taught by Dick, in order to facilitate movement of the sliding
member.” Ans. 6.
As discussed in the analysis of rejections 8 and 9, supra, Putnam
discloses a locking mechanism 34 that includes a compression spring 40,
and a locking rod 36 that extends into the inner chamber 24D of container
24. Putnam, col. 5, ll. 28-31; col. 7, ll. 29-30; fig. 4. Putnam describes the
motion of locking rod 36 as linear only, and no rotational motion is needed
for proper operation. Putnam, col. 8, l. 61 – col. 10, l. 15 (describing
operation of locking mechanism 34); figs. 4-7.
Given this, absent hindsight, we fail to see why a person of ordinary
skill in the art would add a spring (spring 84) and camming surfaces (sloped
surface 106 of sleeve 62, and corresponding sloped surface 108 of coupler
86), as taught in Dick, to urge rotational movement of Putnam’s locking rod
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36, when rotational movement is not needed for proper operation. Thus, the
rejection of claims 2, 4, 10, and 11 is not based upon a sufficient reason with
a rational underpinning to explain why a person of ordinary skill in the art
would have modified Putnam’s device to include spring and cam elements as
taught by Dick, in order to urge Putnam’s locking rod 36 to rotate about its
axis.
Rejection of claims 12 and 15-17 under 35 U.S.C. § 103(a) as unpatentable
over Putnam and Works
The issue before us is whether the rejection of claims 12 and 15-17 is
based upon a sufficient reason with a rational underpinning to explain why a
person of ordinary skill in the art would have modified Putnam’s device to
include a guide pin (retention stud 48) and a sliding bar guide (guide element
43 having an irregular shaped opening 47) as taught by Works, in order to
prevent unwanted movement of the sliding member (locking rod 36) through
the bar guide (guide element 43 having an irregular shaped opening 47).
The Examiner incorrectly found that first handle end 36A and hitch
ball 28 must be simultaneously pushed down to disengage the ball for the in-
use position of Putnam’s device. Ans. 13. On the contrary, Putnam
specifically discloses that the device is configured so that a single user can
move the hitch ball from the fully extended to the fully retracted position.
Putnam, col. 10, ll. 5-9. Putnam discloses that when the hitch ball 28 is in
the fully retracted position, if a user pulls first handle end 36A to move the
locking mechanism to the unlocked position, the force of compression spring
29 pushes the hitch ball to the semi-retracted position where the body
portion 28C of the hitch ball 28 prevents locking rod 36 from extending into
container 24. Putnam, col. 8, l. 61 – col. 9, l. 19; fig. 5 (semi-retracted/semi-
extended position). From the semi-retracted position, a user pulls the hitch
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ball 28 to the fully extended position where notch 32 aligns with holes 24E
of container 24, permitting locking rod 36 to extend through container 24
and lock hitch ball 28 in the fully extended position. Putnam, col. 9, ll. 19-
26, 41-49; fig. 4 (fully extended position). When the hitch ball 28 is in the
fully extended position, in order to move the hitch ball 28 to the fully
retracted position, a user pulls first handle end 36A to move the locking
mechanism, to the unlocked position, and the weight of hitch ball 28 moves
the hitch ball 28 against the force of compression spring 29 to the semi-
retracted position. Putnam, col. 2, ll. 34-38; col. 9, ll. 56-65. From the
semi-retracted position, a user pushes the hitch ball 28 to the fully retracted
position, thereby permitting the locking mechanism to engage and lock the
hitch ball in that position. Putnam, col. 2, ll. 43-47; fig. 6.
Based on this operation of Putnam, the Examiner’s rationale, namely
to add a radial stud from Works to Putnam’s sliding member to prevent
unwanted movement of the sliding member (Putnam’s locking rod 36)
through the bar guide (Works’s guide element 43 having an irregular shaped
opening 47) (Ans. 7) is insufficient in that Putnam’s hitch ball 28
automatically permits or prohibits entry of locking rod 36 into container 24.
Therefore, as Appellant correctly points out (App. Br. 20-22; Reply Br. 8-9),
Putnam’s device has no need of such a modification.
The rejection of claims 12 and 15-17 is not based upon a sufficient
reason with a rational underpinning to explain why a person of ordinary skill
in the art would have modified Putnam’s device to include a guide pin and a
sliding bar guide as taught by Works, in order to prevent unwanted
movement of the sliding member through the bar guide.
Appeal 2009-007771
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DECISION
We REVERSE the Examiner’s decision to reject claims 1-17.

REVERSED

nhl

NOVAK DRUCE AND QUIGG, LLP (Thule)
1000 LOUISIANA STREET
FIFTY-THIRD FLOOR
HOUSTON TX 77002