Ex Parte McDonald et al

Patent Trial and Appeal Board

Aug 22, 2018

13090912 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/090,912 04/20/2011
53609 7590 08/24/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Ernest M. McDonald II
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.
508118 3503
EXAMINER
MALHOTRA, SANJEEV
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERNEST M. MCDONALD II, JAMES M. NEWCOMER,
MICHAEL ANDREW SMITH, SAMUEL FRANCIS COLALILLO JR.,
SHAN LENTINE, and MARCIA ANN BLEVENS
Appeal 2017-011561 1
Application 13/090,9122
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed
June 29, 2015) and Reply Brief ("Reply Br.," filed September 15, 2017), the
Examiner's Answer ("Ans.," mailed September 22, 2015), Supplemental
Answer ("Supp. Ans.," mailed July 17, 2017), and Non-Final Office Action
("Non-Final Act.," mailed March 20, 2015).
2 Appellants identify Spartan Motors, Inc. as the real party in interest. App.
Br. 2.
Appeal2017-011561
Application 13/090,912
THE INVENTION
Independent claim 1, reproduced below with added emphasis, is
illustrative of the subject matter on appeal.
1. A keyless access system for a commercial vehicle having a
cab compartment, a cargo compartment, a slideable bulkhead
door, and a bulkhead wall separating the cab compartment from
the cargo compartment, comprising:
an auto-opening bulkhead door actuator having an outer
sheath configured to attach to the bulkhead wall, and an inner
sheath configured to attach to the slideable bulkhead door, the
auto-opening bulkhead door actuator having an inner retracting
spring coupled at a first end to the outer sheath and at a second
end to the inner sheath such that the inner sheath is retracted
into the outer sheath when the inner retracting spring is in a
quiescent state, an outer dampening spring, and an inner
dampening spring;
a solenoid latch configured to attach to the bulkhead
wall, the solenoid latch operable selectively to latch the
bulkhead door in a closed position and to unlatch the bulkhead
door to allow opening thereof;
a control module operably coupled to the solenoid latch
to control operation thereof; and
a transmitter configured to relay an operator command to
the control module to open the bulkhead door.
App. Br. 14 (Claims Appendix.).
THE REJECTIONS
I. Claims 1-18 and 20-29 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Johnson (US 7,967,347 Bl, iss. June 28, 2011),
Steegmann et al. (US 2010/0052849 Al, pub. Mar. 4, 2010) (hereinafter
"Steegmann"), Henning (US 2007/0035153 Al, pub. Feb. 15, 2007),
2
Appeal2017-011561
Application 13/090,912
Magner et al. (US 2010/0321173 Al, pub. Dec. 23, 2010) (hereinafter
"Magner"), and Grumman Olson Industries Inc., FedEx Ground P-700, P-
l 000 & P-1200 Keyless Entry & Keyless Start Diagnostics Manual
(hereinafter "Grumman").
II. Claim 19 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Johnson, Steegmann, Henning, Magner, Grumman, and Wunderlich et al.
(US 6,611,232 Bl, iss. Aug. 26, 2003) (hereinafter "Wunderlich").
ANALYSIS
Prior art status of Grumman
As a preliminary matter, we address Appellants' argument that the
Grumman reference does not qualify as prior art because the Examiner has
not provided sufficient evidence that it was published prior to the critical
date of Appellants' application. See App. Br. 6-8; Reply Br. 7-10.
"Whether [a] ... document qualifies as a 'printed publication' ... is a
legal conclusion based on underlying factual determinations." Cooper
Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321 (Fed.
Cir. 2002). In determining whether a reference is a "printed publication"
within the meaning of§ 102, "the key inquiry is whether or not a reference
has been made 'publicly accessible."' In re Klopfenstein, 380 F.3d 1345,
1348 (Fed. Cir. 2004). \Ve make this factual detennination by weighing the
evidence of record to ascertain whether the preponderance of the evidence
demonstrates that the publication retrieved by the Examiner was publicly
accessible to render it a printed publication.
We are not persuaded by Appellants' arguments. We have reviewed
the Grumman reference in detail. Grumman indicates that it is a
3
Appeal2017-011561
Application 13/090,912
"Diagnostics Manual" with "Part Number 43004527" prepared by Grumman
Olson Industries, Inc. in October, 2002. Grumman, cover page. Grumman
also indicates that revisions were made to the manual at least twice. See
Grumman, 1 ("rev C 11.05.02" and "rev D 04.29.03"). Grumman provides
"Technical Support" phone numbers and web site links (id.), as well as web
site addresses on its cover page (i.e., "www.grummanolson.com" and
"www.grummanolsonparts.com"). A photograph of a barcode of module
M866.S2 depicts a date of "06/02." Id. at 12. Grumman indicates that it
was prepared for "FedEx Ground" and, as the Examiner points out (Supp.
Ans. 8), Grumman does not contain any indication that it was confidential or
subject to any sort of non-disclosure agreement. As a matter of fact, the
Examiner avers that he called the 800 number provided on the cover page of
Grumman and that the Examiner "was connected to Mr. Larry Palmer,
Director of Fleet Sales with Grumman Olson, and Mr. Palmer confirmed that
said FedEx diagnostics manual was available to any owner and contractor at
its time of publication (from October 2002 onwards) on their web site."
Supp. Ans. 9.
Weighing Appellants' bare allegation against the totality of evidence
in the record, we find that, by a preponderance, the evidence demonstrates
that the Grumman manual relied on by the Examiner was accessible to the
public well before the critical date. The Grumman manual is titled FedEx
Ground and associated with customer FedEx, includes part number and other
information identifying truck models (i.e., P-700, P-100, P1200), and phone
numbers and website addresses for technical support. Revision dates are
listed on the cover of the manual and marked on each page. And, the
Director of Sales with Grumman indicates that the manual was sufficiently
4
Appeal2017-011561
Application 13/090,912
accessible to the interested public well before the critical date. For these
reasons, we conclude the Examiner did not err in determining that the
Grumman manual is a printed publication and prior art under§ 102.
Independent claims 1 and 21 and dependent claims 2-18, 20, and 22-28
Independent claim 1 requires, in part, an "actuator having an outer
sheath ... and an inner sheath" and "having an inner retracting spring
coupled at a first end to the outer sheath and at a second end to the inner
sheath such that the inner sheath is retracted into the outer sheath when the
inner retracting spring is in a quiescent state, an outer dampening spring, and
an inner dampening spring." See App. Br. 14 (Claims Appendix.).
The Examiner takes the position that outer tube 116 and inner
tube 113 disclosed in Henning meet the claimed "outer sheath" and "inner
sheath," respectively, of the actuator of claim 1. Supp. Ans. 4. And the
Examiner finds that seal 77, disclosed in paragraph 35 of Henning, meets the
claimed "dampening spring." Id. The Examiner also cites pages 6 and 11 of
Grumman as disclosing a "retracting spring" and "dampening spring" (id.
at 5), and the Examiner "clarifies that a combination of references Henning
and Grumman have now been used to reject the limitation of dampening
spring" (id. at 7).
Appellants argue, inter alia, that the Examiner has not established a
prima facie case of obviousness "because the Examiner failed to
demonstrate that the cited references teach or suggest all the limitations of
the claims." Reply Br. 11. According to Appellants, "[t]he Examiner seems
to cite Henning and Grumman as meeting the limitations of these three
5
Appeal2017-011561
Application 13/090,912
springs based on some general discussions of springs, retractable systems,
and dampening." Id. at 12.
We agree with Appellants.
Claim 1 calls for an actuator having a specific arrangement including
an outer sheath and an inner sheath, a retracting spring coupled to the outer
sheath and inner sheath, and inner and outer dampening springs. The
Examiner has not adequately explained how the proposed combination
discloses the claimed structural configuration.
Henning discloses a retractable cover system, wherein a rear locking
mechanism includes a telescoping mechanism that includes outer tube 116,
extension tube 113, and extension mechanism 112. See Henning Fig. 11.
The telescoping mechanism contains "a lead screw 118 engaged in a
threaded insert 120 at the end of the extension tube 113" that enables
telescopic movement. Id. ,r 46; Figs. 11 and 12. Henning also discloses "a
seal 77 situated between the beams of the bow structure and the bulkhead."
Id. ,r 35. Seal 77 is shown in Figure 6. Seal 77 "spans the perimeter of the
interface between bow structure and bulkhead and is preferably [ fastened] to
the front bulkhead" and "dampens relative movement between the bow
structure and bulkhead as the flat bed and cover system travel on the road."
Id.
The Examiner finds that outer tube 116 and extension tube 113 of
Henning' s telescoping mechanism meet the claimed outer sheath and inner
sheath, and that the seal 77 meets the claimed "dampening spring." Supp.
Ans. 4. But, as Appellants point out (Reply Br. 12), seal 77 is not part of the
telescoping mechanism discussed above.
6
Appeal2017-011561
Application 13/090,912
The Examiner additionally finds that pages 6 and 11 of Grumman
disclose a "retracting spring" and "dampening spring" as called for in
claim 1. Supp. Ans. 5. In particular, the "Examiner clarifies that 'a solenoid
spring 1 is the component that returns the plunger and the activated
mechanism to its neutral position when the solenoid is' deactivated" and that
'the spring action may be either compression or extension depending upon
the solenoid design."' Id. at 5---6. 3 But we do not see, and the Examiner
does not explain, how the cited spring or solenoid spring disclosed in
Grumman meets the claimed inner and outer dampening springs. And the
Examiner has not provided any articulated reason for modifying the
telescoping mechanism disclosed in Henning to include the spring or
solenoid spring disclosed in Grumman. For example, the Examiner offers
no explanation as to why a person of ordinary skill in the art would have
modified Henning to include a solenoid spring "coupled at a first end to the
outer sheath and at a second end to the inner sheath such that the inner
sheath is retracted into the outer sheath when the inner retracting spring is in
a quiescent state" as required by claim 1. Cf In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) ("the examiner bears the initial burden ... of presenting
a prima facie case of unpatentability .... ").
Accordingly, we do not sustain the rejection of independent claim 1,
and independent claim 21, which contains a substantially similar limitation.
For the same reasons, we also do not sustain the rejection of dependent
claims 2-18, 20, and 22-28. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
3 Quoting from http://www. wise geek. com/what-is-a-solenoid-spring.htm
7
Appeal2017-011561
Application 13/090,912
1992) ("dependent claims are nonobvious if the independent claims from
which they depend are nonobvious").
Independent claim 29
Claim 29 recites "a dampening mechanism configured to at least
reduce an impact force between the outer sheath and the inner sheath upon
retraction thereof to prevent damage thereof." App. Br. 18 (Claims
Appendix).
Notwithstanding that the above limitation is not recited in claim 1, the
Examiner's position is that "[ c ]laims 21 & 29 recite duplicates of the
limitations ( e.g., dampening spring or dampening mechanism) of above
rejected limitation of independent system Claim 1." Supp. Ans. 6.
The Examiner has not otherwise addressed the above limitation in
claim 29. There is no analysis or explanation, for example, as to how
seal 77 of Henning is "configured to at least reduce an impact force between
the outer sheath and the inner sheath" as called for in claim 29. We see no
discussion in Henning of using seal 77 to reduce an impact force between
outer tube 116 and extension tube 113. Nor has the Examiner explained
how this limitation is met by the spring or solenoid disclosed in Grumman.
For example, the Examiner offers no explanation as to why a person of
ordinary skill in the art would have modified Henning to include a solenoid
spring "configured to at least reduce an impact force between the outer
sheath and the inner sheath" as required by claim 29.
Accordingly, we do not sustain the rejection of independent claim 29.
8
Appeal2017-011561
Application 13/090,912
Dependent claim 19
Although Appellants do not argue the rejection of claim 19 apart from
its dependency on claim 1 (App. Br. 13), claim 19 is also nonobvious
because independent claim 1 from which it depends is nonobvious, and the
Examiner does not rely on Wunderlich to cure the deficiency regarding the
disclosure of Henning and Grumman discussed above. See Non-Final
Act. 10. Thus, we do not sustain the rejection of claim 19.
DECISION
The Examiner's rejections of claims 1-29 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
9