Ex parte Payne

Board of Patent Appeals and Interferences

Feb 20, 2002

08786373 (B.P.A.I. Feb. 20, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES M. PAYNE
____________
Appeal No. 2000-1487
Application No. 08/786,373
____________
ON BRIEF
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Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS and BAHR,
Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-13,
which are all of the claims pending in this application.
Appeal No. 2000-1487 Page 2
Application No. 08/786,373
It appears that “sides” should be “side,” as the light associated with the sole step and associated1
skirt portion and lamp recited in claim 1 is projected outwardly only from the front and one side of the trailer,
not from both sides of the trailer.
BACKGROUND
The appellant's invention relates to a trailer step which facilitates access to the load
being carried on the trailer, and which includes a lamp. Representative claim 1 reads as
follows:
1. In a trailer adapted for connection to a towing vehicle and
having a front, a side, and a step for facilitating access to the
trailer or a load being carried by the trailer, the step having an
upper horizontal surface and a vertical skirt portion facing
outwardly from the trailer, the improvement comprising:
means forming indicia to be displayed carried by said
outwardly facing skirt portion of said step for visual
observation of said means forming indicia from the side and
front of said trailer, and
a lamp positioned behind said means forming indicia to
backlight said means forming indicia carried by said outwardly
facing skirt portion of said step to project light outwardly from
the front and the sides of said trailer through said means1
forming indicia to enable observation of said trailer step and
means forming indicia from the towing vehicle when said
trailer is parked and in motion being towed behind the towing
vehicle.
The examiner relied upon the following prior art references of record in rejecting the
appealed claims:
Rubin 3,935,654 Feb. 3, 1976
Koch 5,154,564 Oct. 13, 1992
Chudzik 5,157,591 Oct. 20, 1992
Barry 5,615,940 Apr. 1, 1997
Lamparter 5,634,287 Jun. 3, 1997
Appeal No. 2000-1487 Page 3
Application No. 08/786,373
Godbersen Des. 314,735 Feb. 19, 1991
The following rejections are before us for review.
Claims 1, 2, 6-9 and 11-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koch in view of Barry.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Koch
in view of Barry and Lamparter.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Koch
in view of Barry and Chudzik.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Koch
in view of Barry and Godbersen.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Koch in view of Barry and Rubin.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the answer (Paper
No. 19) for the examiner's complete reasoning in support of the rejections and to the brief
and reply brief (Paper Nos. 18 and 22) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
Appeal No. 2000-1487 Page 4
Application No. 08/786,373
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Claim 1 requires means forming indicia carried by the outwardly facing skirt portion
of the step for visual observation of the means forming indicia from the side and front of the
trailer and a lamp positioned behind the means forming indicia. As acknowledged by the
examiner (answer, page 3), Koch, the primary reference relied upon in rejecting claim 1,
lacks these features. The examiner looks to the teachings of Barry to supply the missing
lamp and means forming indicia.
As stated by our reviewing court in In re Kotzab, 217 F.3d 1365, 1369-70, 55
USPQ2d 1313, 1316 (Fed. Cir. 2000):
Most if not all inventions arise from a combination of old
elements. Thus, every element of a claimed invention may
often be found in the prior art. However, identification in the
prior art of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention. Rather, to
establish obviousness based on a combination of the
elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of making
the specific combination that was made by the applicant
[citations omitted].
In this instance, Barry does disclose means forming indicia (panels 24, 26 with
openings 25, 27 therein) and a lamp (illumination means 42, 48) positioned behind the
means forming indicia of the type called for in claim 1. From our perspective, however,
one skilled in the art would have found no suggestion whatsoever in Barry’s teaching of an
Appeal No. 2000-1487 Page 5
Application No. 08/786,373
illuminated motorcycle gas tank or shell, formed by removable panels 24, 26 having
openings 25, 27 of a desired design therein and illumination means 42, 48 disposed
behind the openings, to provide means forming indicia carried by the vertical skirt portion
of the step of Koch’s trailer and a lamp positioned behind the means forming indicia.
Barry’s invention “relates generally to motorcycles and more particularly to installing
illumination means within the gasoline tank area of a motorcycle” (column 1, lines 10-12).
Barry provides no teaching or suggestion to apply the illumination means disclosed therein
to other types of vehicles, such as trailers, much less to the particular location on the trailer
called for in claim 1. In our view, the only suggestion for putting the selected pieces from
the references together in the manner proposed by the examiner is found in the luxury of
hindsight accorded one who first viewed the appellant’s disclosure. This, of course, is not
a proper basis for a rejection. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992). Accordingly, we shall not sustain the examiner’s rejection of claim
1 or claims 2, 6-9 and 11-13 which depend from claim 1 as being unpatentable over Koch
in view of Barry.
The additional references relied upon by the examiner to support the obviousness
rejections of the dependent claims also do not cure the above-noted deficiencies of the
Koch-Barry combination. Godbersen discloses a boat trailer fender design which appears
to include non-slip steps projecting from the front and rear thereof, but provides no
teaching or suggestion to provide any indicia or lamp on the trailer. Lamparter discloses
Appeal No. 2000-1487 Page 6
Application No. 08/786,373
an illuminated sign housing assembly particularly for a school bus; Chudzik discloses a
removable auxiliary taillight assembly for use on trailers or on vehicles equipped with racks
or carriers for various objects, such as bicycles, skis, etc. which can obstruct the taillights
of the vehicle; and Rubin discloses an illuminated vehicle sign adapted for mounting on the
sides of a vehicle, such as a panel truck or a truck trailer. None of Lamparter, Chudzik and
Rubin provides any teaching or suggestion to provide an illuminated sign or lights on a
trailer in the particular location called for in claim 1. Accordingly, we shall not sustain the
examiner’s rejections of claim 3 as being unpatentable over Koch in view of Barry and
Lamparter, claim 4 as being unpatentable over Koch in view of Barry and Chudzik, claim 5
as being unpatentable over Koch in view of Barry and Godbersen and claim 10 as being
unpatentable over Koch in view of Barry and Rubin.
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Application No. 08/786,373
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-13 under 35 U.S.C. §
103 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2000-1487 Page 8
Application No. 08/786,373
August E. Roehrig Jr.
Hancock & Estabrook, LLP
1500 Mony Tower 1
P.O. Box 4976
Syracuse, NY 13221-4976