Ex parte LYON

Board of Patent Appeals and Interferences

Oct 8, 1998

08614844 (B.P.A.I. Oct. 8, 1998)

Application for patent filed March 8, 1996. According to appellant,1
this application is a continuation of application 08/287,962, filed August 9,
1994.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GORDON LYON
_____________
Appeal No. 97-42111
Application 08/614,844
______________
ON BRIEF
_______________
Before COHEN, FRANKFORT and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1, 2, 5 and 6 as amended subsequent to the
final rejection in a paper filed April 21, 1997. Claim 3, the
Appeal No. 97-4211
Application 98/614,844
While the examiner and appellant have referred to this patent as “MAN”2
it is clear from the enclosed translation that the inventors are actually
Schmidt et al.. However, for consistency, we will continue to refer to this
2
only
other claim remaining in the application, has been indicated
to contain allowable subject matter, but is objected to as
being dependent from a rejected base claim. Claims 4 and 7
have been canceled.
Appellant’s invention relates to a storage receptacle
installation for a covered pick-up truck bed. Independent
claim 1 is representative of the subject matter on appeal and
a copy of that claim appears in the Appendix to appellant’s
brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Brady 4,752,095 Jun. 21,
1988
Peters et al. (Peters) 4,824,158 Apr. 25,
1989

MAN EP 309,692 Apr. 05, 19892
Appeal No. 97-4211
Application 98/614,844
document as “MAN.”
3
(European Patent)
Claims 1, 2 and 5 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Peters in view of Brady.
Claim 6 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Peters in view of Brady as applied to claims
1 and 2 above, and further in view of MAN.
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the examiner's answer (Paper
No. 18, mailed June 24, 1997) for the examiner's reasoning in
support of the rejections, and to appellant’s brief (Paper No.
16, filed April 21, 1997) for appellant’s arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
Appeal No. 97-4211
Application 98/614,844
4
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Turning first to the examiner's rejection of claims 1, 2
and 5 under 35 U.S.C. § 103, we note that Peters discloses a
combi-nation cargo box and bed liner for a truck bed wherein
the box/liner is substantially of the same size as the pick-up
truck bed, and the track system supporting the box is of a
length substantially equal to the length of the truck bed.
Recognizing
the shortcomings of Peters, the examiner (final rejection,
pages 3-4), takes the position that
[s]ize is not deemed to be a patentable distinction,
but an obvious choice of the designer as evidenced
by the receptacle of Brady occupying only a limited
length. While not holding as much, the receptacle's
smaller size means less cost for materials and
labor, an engineering trade-off. Forming the tracks
to have a concomitant length is deemed to be an
obvious expedient in order to save cost of
Appeal No. 97-4211
Application 98/614,844
5
manufacture. Brady teaches a cover hinged to the
receptacle at a rear wall thereof that closes onto
locking means as seen in the hasp in figure 4. The
means for removably mounting of Peters et al. are a
substantial equivalent to that disclosed by
applicant and the receptacle locking means of Brady,
while not equivalent, are simpler and hence less
costly than that disclosed by applicant. It would
have been obvious to provide in Peters et al. an
enclosed covered and lockable receptacle of small
dimensions as taught by Brady in order to carry
smaller items and for the ease of manual movement of
same.
Contrary to the examiner’s position, we do not believe
that the collective teachings of the applied references to
Peters and Brady would have in any way been suggestive of a
storage recep-tacle of the type set forth in appellant’s claim
1 on appeal mounted to the bed of a covered pick-up truck in a
rear portion thereof immediately adjacent the tailgate of the
truck and so that the receptacle occupies only said rear
portion of the truck bed at the rear thereof when in its
retracted (stowed) position.
Given the clear disclosure in Brady of the disadvantages of
having a storage receptacle mounted immediately adjacent the
Appeal No. 97-4211
Application 98/614,844
6
rear tailgate area of a truck bed (e.g., col. 1, lines 9-47)
and the clear statement that it is an objective of the
invention in Brady to “maintain the rearward portion of the
truck bed free from obstructions while the storage box is in
the forwardmost stowed position” (col. 1, lines 61-65), we
find it to be almost incomprehensible that one of ordinary
skill in the art would have contemplated sizing and
positioning the receptacle and mounting rails of the combined
storage box and bed liner of Peters in the manner urged by the
examiner. If anything, Brady clearly teaches away from a
storage receptacle positioned in the specific manner set forth
in appellant’s claims on appeal.
In our opinion, the examiner’s stated position is based
on impermissible hindsight gleaned from appellant’s own
disclosure and not from any fair teaching or suggestion found
in the applied Peters and Brady patents themselves. Absent
the disclosure of the present application, it is our opinion
that one of ordinary skill in the art would not have been
motivated to modify the
Appeal No. 97-4211
Application 98/614,844
7
storage box and bed liner of Peters in the manner urged by the
examiner so as to arrive at the subject matter set forth in
appellants’ independent claim 1 on appeal. If anything, it
is our opinion that the collective teachings of Peters and
Brady as applied by the examiner would have been suggestive of
a storage receptacle essentially like that of Brady, wherein a
smaller/shorter storage receptacle would be mounted on rails
so as to be stowed at the forward end of the truck bed
immediately adjacent the cab of the truck as seen in Figures 1
through 3 of Brady. Thus, based on the foregoing, the
examiner's rejection of appellant’s claim 1, and claims 2 and
5 which depend therefrom, under 35 U.S.C. § 103 based on
Peters and Brady will not be sustained.
We have also reviewed the patent to MAN applied by the
examiner in the § 103 rejection of dependent claim 6.
However, we find nothing in this reference which would supply
that which we have noted above to be lacking in the basic
combination of Peters and Brady. Accordingly, the examiner's
rejection of claim 6 on appeal under 35 U.S.C. § 103 will
Appeal No. 97-4211
Application 98/614,844
8
likewise not be sustained.
As should be apparent from the foregoing, the decision of
the examiner rejecting claims 1, 2, 5 and 6 of the present
application under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 97-4211
Application 98/614,844
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vsh
Appeal No. 97-4211
Application 98/614,844
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John R. Benefiel
280 Daines Street
Suite 100 B
Birmingham, MI 48009