Ex Parte Renken et al

Patent Trial and Appeal Board

Sep 26, 2016

11669681 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111669,681 0113112007 David J. Renken
136306 7590 09/28/2016
IR HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
Minneapolis, MN 55402-1683
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.
20420.0187US01 5806
EXAMINER
WOOD, KIMBERLY T
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
ptomail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. RENKEN, BERNARD W. BENSON,
and TOM J. NIEMI
Appeal2014-008987
Application 11/669 ,681 1
Technology Center 3600
Before JENNIFER D. BAHR, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1, 2, 4, 8-10, 14--16, 18, and 19 under 35 U.S.C.
§ 102(b) as anticipated by Bodenheimer (US 5,181,541, iss. Jan. 26, 1993).2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Thermo King Corp. as the real party in interest. App.
Br. 2.
2 Claims 1, 2, 4, 8-10, 14--16, 18, and 19 are rejected in view of the
embodiment shown in Figure 5 of Bodenheimer, and claims 8-10, 14--16,
18, and 19 are additionally rejected in view of the embodiment shown in
Figure 2b of Bodenheimer. Non-Final Act. 2-5; Ans. 2---6.
Appeal2014-008987
Application 11/669,681
CLAIMED SUBJECT MATTER
Claims 1, 8, and 14 are independent, with claims 2, 4, 9, 10, 15, 16,
18, and 19 depending from claim 1, 8, or 14. Claim 1 is illustrative of the
claims on appeal, and is reproduced below:
1. A generator assembly for mounting to a container including a
container frame having at least one of a top casting and a receiver
bracket, the generator assembly comprising:
a generator frame;
a generator coupled to the generator frame;
a clamp mounting system including a first clamp coupled
to the generator frame and configured to be coupled to the top
casting; and
a pin mounting system including a first bracket and a
second bracket repositionably coupled to the generator frame for
movement between a mounting position and a storage position
and configured to be coupled to the receiver bracket when in the
mounting position and configured to avoid interference with the
container when in the storage position,
wherein the first clamp is repositionable on the generator
frame to avoid interference with the container when the first
bracket is coupled to the receiver bracket.
OPINION
Anticipation in view of Bodenheimer Figure 5 Embodiment
The Examiner finds that the embodiment shown in Figure 5 of
Bodenheimer discloses each element of claims 1, 2, 4, 8-10, 14--16, 18, and
19. Non-Final Act. 4--5; Ans. 3--4. Independent claims 1, 8, and 14 each
recite a "clamp mounting system" and a "pin mounting system." With
respect to these limitations, the Examiner asserts that Bodenheimer discloses
"a clamp mounting system including a first clamp and a second clamp (250,
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Appeal2014-008987
Application 11/669,681
figure 5, column 7, lines 62ft)" and a "pin mounting system including a first
bracket and a second bracket (274, 278, 276 figure 5, column 8, lines 3ft)."
Non-Final Act. 4; Ans. 3--4. Appellants contend that the portions of
Bodenheimer identified by the Examiner as corresponding to the recited "pin
mounting system" are actually part of Bodenheimer' s structure that the
Examiner identifies as the "clamp mounting system." App. Br. 8. For
example, Appellants explain that "the top clamping surfaces 27 4, the bolts
276 and the nuts 278 are part of the clamps 254 for the arms 250." Reply
Br. 3. We agree.
Figure 5 of Bodenheimer is reproduced below for reference.
FIG. 5
Figure 5 of Bodenheimer is a perspective view of a "fuel storage system in
conjunction with a rigid frame structure arranged in the underslung mode."
Bodenheimer, 3:48-50. Bodenheimer explains that for the underslung
mounting arrangement shown in Figure 5, I-beam clamps 254, fixed pins
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Appeal2014-008987
Application 11/669,681
256, and removable support pins 258 are used in combination with
attachment arms 250. Id. at 7:1-8:4. Bodenheimer further explains that
"[t]he I-beam clamps 254 include top clamping surfaces 274 having oblong
cut-outs, bolts 276 which are arranged to extend through the cut-out portion
of the top clamping surfaces and through holes in the bottom clamping
surfaces, and nuts 278 for tightening the clamp around the I-beams 273." Id.
at 8:4--9. Attachment arms 250, by themselves, are not first and second
clamps. Rather, it is the combination of those arms with I-beam clamps 254
(which include top clamping surfaces, 274, bolts 276, and nuts 278) that
form the clamp mounting system in Bodenheimer.
Accordingly, the Examiner has failed to establish sufficiently that the
arrangement shown in Bodenheimer's Figure 5 has both a pin mounting
system and a clamp mounting system, and we do not sustain the Examiner's
decision to reject claims 1, 2, 4, 8-10, 14--16, 18, and 19 in view of
Bodenheimer' s Figure 5 arrangement.
Anticipation in view of Bodenheimer Figure 2b Embodiment
The Examiner finds that the embodiment shown in Figure 2b of
Bodenheimer discloses each element of claims 8-10, 14--16, 18, and 19.
Ans. 2-3. 3 Independent claim 8 recites "coupling a first bracket of a pin
mounting system to the receiver bracket" and "repositioning the first bracket
between a mounting position to couple to the receiving bracket and a storage
position to avoid interference with the container," while independent claim
14 recites that "one pair of the first and second clamps and the first and
second brackets are repositionable on the generator frame to avoid
3 The Examiner withdrew the rejection of claims 1, 2, and 4 based on the
embodiment shown in Figure 2b of Bodenheimer. Ans. 5---6.
4
Appeal2014-008987
Application 11/669,681
interference with the container." In this ground, the Examiner finds that
Bodenheimer discloses "a clamp mounting system including a first clamp
and a second clamp (200, figure 2b, see column 7, lines 30ft)" and a "pin
mounting system including a first bracket and a second bracket (180, figure
2b, column 7, lines 30ft)." Id.
With respect to claim 8, Appellants contend that "Bodenheimer fails
to disclose or suggest that the fittings 180 can be moved." Reply Br. 4. 4 In
maintaining this rejection of claim 8, the Examiner explains that, unlike
claim 1,
Claim 8 only stipulates that the first bracket is repositionable
between a mounting position and a storage position which
Boden[h ]eimer (figure 2b) inherently and clearly teaches. The
first bracket (180) is positionable in a mounting position when
the first bracket (180) is inserted within the receiver bracket
(113) and in a storage position when the first bracket (180) is
removed from the receiver bracket (113) and moved away from
the container frame ( 115) to a location for storage (such as a
shelf, floor, or cabinet) therefore in a storage position.
Ans. 6. The claim recites "repositioning the first bracket between a
mounting position to couple to the receiving bracket and a storage position
to avoid interference with the container." The claim language provides no
requirement that there is any interaction between the "pin mounting system"
and the container after "repositioning the first bracket" to "a storage
position." According! y, although the Examiner's interpretation of this
language is broad, it is not precluded by the claim. For example, the claim
does not require that the first bracket is repositionable relative to the
generator frame. Perhaps more importantly, Appellants fail to offer any
4 In the Appeal Brief, Appellants relied on the arguments presented with
respect to claim 1 for the patentability of claim 8. See App. Br. 9.
5
Appeal2014-008987
Application 11/669,681
persuasive explanation as to why the Examiner's finding is reversible error.
See Reply Br. 4 (simply alleging that "Bodenheimer fails to disclose or
suggest that the fittings 180 (or even the vertical posts 130 that include the
fittings 180) can be repositioned.").
Accordingly, Appellants have failed to apprise us of Examiner error in
the rejection of claim 8. Appellants do not provide separate arguments for
the rejection of claims 9 and 10.
As for claim 14, Appellants contend that Bodenheimer's "clamps 200
are [not] repositionable on the generator frame to avoid interference with the
container 115 when the other pair of first and second brackets are coupled to
the corresponding pair of the first and second receiver brackets." Reply Br.
6. 5 For example, Appellants contend that "no matter how far the sliding
member 204 is extended within the horizontal force clamp 200, the sliding
member 204 or the hand 206 is always in contact with the container post
111." Id. Appellants' contentions are unpersuasive.
Figure 2b of Bodenheimer is reproduced below.
FIG. 2b
11~
5 In the Appeal Brief, Appellants relied on the arguments presented with
respect to claim 1 for the patentability of claim 14. See App. Br. 9-10.
6
Appeal2014-008987
Application 11/669,681
Figure 2b is a "top view diagram[] showing fuel storage system elements in
and attached to a preferred housing." Bodenheimer, 3:40-42. Figure 4 of
Bodenheimer is reproduced below.
204
ill
202
--214
--204
we
Figure 4 is "a diagram of the horizontal force clamp of the housing shown in
FIGS. 2a and 2b." Id. at 3:46-47. As seen above, and described in
Bodenheimer, inner sliding member 204 includes clamping hand 206, and is
able to be turned ninety degrees relative to the view shown in Figure 4 via
means 212. Bodenheimer, 7:49-58. Thus, when means 212 is turned, inner
sliding member 204 may be retracted. To confirm this understanding the
Examiner points to Bodenheimer's reference to US Patent No. 4,732,360
("Bodenheimer '360"). Ans. 7. The relevant portion of Bodenheimer
explains that "[d]etails regarding the functioning of clamps 200 may be had
with reference to U.S. Pat. No. #4,732,360, previously incorporated herein."
Bodenheimer, 7:58---60. The discussion of clamps 200 in Bodenheimer '360
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Appeal2014-008987
Application 11/669,681
explains that "[t]he inner sliding member 204 is arranged to be retractable
and extendable through the outer member 202" and "by pushing forward or
pulling backward on the handle 212, the inner sliding member 204 will
extend into the refrigerated container gap, or will be retracted therefrom
respectively, with the handle 212 sliding through the slot 214."
Bodenheimer '360, 7:20-59.
Accordingly, we are not persuaded of error in the Examiner's finding
that Bodenheimer discloses "first and second clamps ... repositionable on
the generator frame to avoid interference with the container." Appellants do
not provide separate arguments for the rejection of claims 15, 16, 18, and 19,
which depend from claim 14.
For these reasons, we sustain the Examiner's decision to reject claims
8-10, 14--16, 18, and 19 in view of Bodenheimer's Figure 2b arrangement.
DECISION
We AFFIRM the Examiner's decision to reject claims 8-10, 14--16,
18, and 19.
We REVERSE the Examiner's decision to reject claims 1, 2, and 4.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
8