Ex Parte Risner

Board of Patent Appeals and Interferences

Jan 31, 2011

11488560 (B.P.A.I. Jan. 31, 2011)

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.
11/488,560 07/18/2006 Randall Keith Risner 1812-013 8689
24112 7590 01/31/2011
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
PEDDER, DENNIS H
ART UNIT PAPER NUMBER
3612
MAIL DATE DELIVERY MODE
01/31/2011 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 RANDALL K. RISNER1
____________________

Appeal 2009-015233
Application 11/488,560
Technology Center 3600
____________________

Before ROMULO H. DELMENDO, KEVIN F. TURNER, and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is R & S-Godwin Truck Body Company, LLC.
(App. Br. 2).
2 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 2009-015233
Application 11/488,560

2
The inventor (“Appellant”) appeals under 35 U.S.C. § 134(a) from a
final rejection of claims 1-18 and 20 (App. Br. 2). We have jurisdiction over
this appeal under 35 U.S.C. §§ 6(b) and 134(a).
The claimed invention is directed to a hybrid dump body for a dump
truck or trailer and a method of constructing a hybrid dump body. The
hybrid truck body is constructed of steel and aluminum. Independent claim
1, reproduced below, is representative of the subject matter on appeal (App.
Br. 16, Claims App'x.):
1. A hybrid dump body for a dump truck or trailer,
comprising:
a. a cross memberless frame structure
including at least two spaced apart and longitudinally
extending support members;
b. a steel bottom connected to the cross
memberless frame and having a flat central portion and a
pair of curved outer portions;
c. a pair of opposed aluminum side panels with
each aluminum side panel being secured to an outer
curved portion of the steel bottom and extending
upwardly therefrom;
d. a bulkhead; and
e. a tailgate.

Independent claim 12 is directed to a method of constructing a hybrid
dump body, which recites similar limitations as those in claim 1 and
additionally that the aluminum side panels are not secured to any portion of
the cross memberless frame (App. Br. 18, Claims App'x.). Independent
claim 18 is directed to a hybrid dump body for a dump truck or trailer, which
recites similar limitations as those in claim 1 and additionally a pair of
Appeal 2009-015233
Application 11/488,560

3
elongated fastening strips and a series of associated fasteners (App. Br. 20,
Claims App'x.).

THE EVIDENCE
The evidence relied upon by the Examiner in rejecting the claims:
Buckley US 3,611,864 Oct. 12, 1971
Kuhns US 4,460,214 Jul. 17, 1984
Martin US 5,681,095 Oct. 28, 1997
Leutenegger US 5,683,198 Nov. 4, 1997
Bibeau US 2004/0183334 A1 Sep. 23, 2004
Augustine US 2005/0057074 A1 Mar. 17, 2005

THE REJECTIONS
The Examiner rejects the following claims under 35 U.S.C. § 103(a)
as unpatentable over the noted combinations of references below:
1. Claims 1, 3, 4, 10, 12 and 16 over Bibeau in view of Martin;
2. Claims 5, 6, 11, 13-15, 18 and 20 over Bibeau in view of
Martin, and further in view of Buckley;
3. Claims 2, 7 and 8 over Bibeau in view of Martin or further in
view of Buckley, and further in view of Augustine and Applicant's Admitted
Prior Art; and
4. Claims 9 and 17 over Bibeau in view of Martin, and further in
view of Kuhns or Leutenegger.
We AFFIRM.
Appeal 2009-015233
Application 11/488,560

4

ISSUES
1. Whether the Examiner erred in concluding that the combination
of Bibeau and Martin would have rendered obvious the hybrid dump body of
claim 1 comprising a steel bottom and opposed aluminum side panels.
2. Whether the Examiner erred in concluding that the combination
of Bibeau, Martin and Buckley would have rendered obvious the hybrid
truck body of claim 18 comprising a pair of elongated fastening strips and a
series of fasteners.
3. Whether the Examiner erred in concluding that the combination
of Bibeau and Martin or further Buckley, and further Augustine and
Applicant's Admitted Prior Art would have rendered obvious the hybrid
truck body of claims 2, 7 and 8 which recite an aluminum tailgate.
4. Whether the Examiner erred in concluding that the combination
of Bibeau and Martin, and further Kuhns or Leutenegger would have
rendered obvious the hybrid truck body of claim 9 or the method of claim 17
reciting aluminum fastening strips.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant's specification describes that "to deal with fuel
economy and load carrying capacity," some dump bodies have
been constructed of part steel and aluminum (Spec. p. 1, l. 18 –
p. 2, l. 1).
Appeal 2009-015233
Application 11/488,560

5
2. Bibeau discloses a dump body with a shock absorbing floor
(Abstract). Figure 3 of Bibeau is reproduced below.

Figure 3 of Bibeau is an isometric view showing a section of a
dump body having a rounded shape in cross-section (¶ [0023]).
The dump body 1 includes a floor 3 having a flat bottom
portion, and rounded side portions extending upwardly from the
side portions to flat side walls having upper edges 9;
longitudinally-extending longsills 5, 7; and a V-shaped piece 11
on the upper edge of each side wall (¶¶ [0023], [0026], [0030],
[0031]; FIG. 3).
3. Bibeau discloses that the dump body may include a front wall
and a rear door (¶ [0009]).
4. Bibeau is silent regarding the material composition of the dump
body.
Appeal 2009-015233
Application 11/488,560

6
5. Bibeau describes that a spring effect is achieved in the dump
body by the specific shape of the longsills 5, 7, which act as a
spring to absorb and spread out shocks due to impacts during
loading of the dump body (Abstract; ¶¶ [0015], [0027]).
6. Bibeau discloses that “[d]uring impacts, there is a deformation
of the whole assembly formed by the floor and the longsills and
subsequent repositioning of the whole assembly in its original
position." (¶ [0027]).
7. Bibeau discloses that the rounded shape of the side portions of
the floor permits more-uniform recentering of the load onto the
floor during impacts (¶ [0030]; FIG. 3).
8. Bibeau discloses that the upper edges 9 of the side walls add
strength to the whole assembly and contribute to the spring
effect that allows it to absorb shocks and then return to its
original position and shape (¶ [0031]; FIG. 3).
9. Martin describes that "[a]s aluminum is substantially free of
rust, and relatively light compared to steel, there is a desire to
use members made from aluminum in a dump truck body to the
greatest degree possible." (Col. 1, l. 67 – col. 2, l. 3).
10. Martin discloses that aluminum is not as abrasion resistant as
steel (col. 2, ll. 3-6).
11. Martin discloses a dump truck body 10 including a steel floor
slab 14, and aluminum side panels 16, 18 (col. 3, ll. 15-18, 49-
52; FIG. 2).
Appeal 2009-015233
Application 11/488,560

7
12. Martin discloses that "the dump body … may, by fabricating
the side and front panels from aluminum, be made relatively
light, while remaining strong." (Col. 5, ll. 58-61).
13. Martin discloses that the side panels 16, 18 are joined to the
floor slab 14 with longitudinally-extending angle irons 40, 41
(col. 3, ll. 22-27; FIG. 2).
14. Buckley describes that gang nut plates including a flat metal
strip and a plurality of nut elements for fastening sheets
together are known and used in construction applications (col.
2, ll. 28-33).
15. Buckley specifically discloses a fastening strip 2 for securing
together sheets 14, 14', with the sheet 14' sandwiched between
the sheet 14 and fastening strip 2 (col. 2, l. 59; col. 3, ll. 4-5;
FIG. 1).
16. Augustine discloses a truck 100 including a tailgate 22 having a
portion 22a formed of aluminum (¶¶ [0020], [0021]; FIG. 2).
17. Kuhns discloses sheet metal angle irons 46 joining walls 24
which meet at corners (col. 3, ll. 64-67; FIG. 2).
18. Leutenegger discloses a corner joint formed between a first
section 1 and a vertical section 2 made of aluminum (col. 2, ll.
40-44; FIG. 1).

PRINCIPLES OF LAW
"[35 U.S.C.] Section 103 forbids issuance of a patent when 'the
differences between the subject matter sought to be patented and the prior art
Appeal 2009-015233
Application 11/488,560

8
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 406 (2007).
In order to rely on a reference under 35 U.S.C. § 103, it must qualify
as analogous prior art. The two separate tests for determining whether a
prior art reference is analogous are: (1) whether the art is from the same
field of endeavor, regardless of the problem addressed; and (2) if the
reference is not within the inventor's endeavor, whether the reference is
reasonably pertinent to the particular problem with which the inventor is
involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). "A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem." In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379-80 (Fed. Cir. 2007) (citations omitted).

ANALYSIS
Rejection of claims 1, 3, 4, 10, 12 and 16 as obvious over Bibeau in view of
Martin
The Examiner's rejection is based on the finding that Bibeau discloses
a dump body 1 including a cross memberless frame having longsills 5, 7
(i.e., longitudinally extending support members); and a floor 3 having a flat
bottom at center, and curved outer portions extending upwardly to side
panels (Ans. 3; FF 2; FIG. 3). The Examiner acknowledges that Bibeau is
Appeal 2009-015233
Application 11/488,560

9
silent as to the materials used in the dump body (Ans. 3; FF 4). The
Examiner relies on Martin for the teaching of a dump body including a steel
bottom, as well as vertical side panels formed of aluminum to reduce rust
and weight (Ans. 3; see FFs 9-12). Therefore, the Examiner concludes that
it would have been obvious to provide aluminum side panels in Bibeau as
taught by Martin for the advantages of reduction in weight and rust (Ans. 3-
4).
The Appellant argues that the Examiner fails to indicate how the
aluminum sidewalls of Martin are to be incorporated into the dump body
shown in Figure 3 of Bibeau (App. Br. 8-9). The Appellant also argues that
the Examiner's motivation for combining Bibeau and Martin is unclear (Ans.
9), and that incorporating the aluminum sidewalls of Martin into Bibeau's
dump body would defeat the spring-like flexibility of the Bibeau dump body
(App. Br. 10).
We agree with the Examiner that it would have been obvious to a
person of ordinary skill in the art to construct the floor of Bibeau's dump
body of steel and construct the vertical sidewalls of aluminum. In this
regard, the Appellant's specification describes that prior art dump bodies
have already been constructed of part steel and aluminum for fuel economy
and load carrying capacity advantages (Ans. 3-4; FF 1). Martin describes
that it is desirable to use aluminum members in a dump truck body "to the
greatest degree possible" (FF 9). Martin explains that aluminum is not as
abrasion resistant as steel (FF 10). Accordingly, Martin specifically
discloses dump bodies that include a floor member composed of more-
abrasion-resistant steel and side panels composed of lighter-weight
Appeal 2009-015233
Application 11/488,560

10
aluminum (FF 11; FIG. 2). Martin explains that the use of aluminum
produces a relatively-light and strong dump body (FF 12). Hence, we agree
with the Examiner that one skilled in the art would find it desirable to
provide the known advantages of both steel and aluminum in the respective
floor and side panels of Bibeau's dump body in view of Martin (Ans. 3-4).
Regarding the Appellant's argument as to how the combination of
Bibeau and Martin would be made, the Examiner does not contend that
Martin's side panels can be physically incorporated into Bibeau (Ans. 6). In
this regard, "it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review." In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
We also agree with the Examiner that the Appellant has not
established that constructing the sidewalls of Bibeau's dump body of
aluminum would defeat the "spring effect." (Ans. 6-7; FF 5-8). Bibeau
discloses that the spring effect is achieved by the specific shape of the
longsills, allowing them to act as a spring to absorb and spread out shocks
due to impacts during loading of the dump body (FF 5). Bibeau also
discloses that during these impacts, the whole assembly formed by the floor
and longsills is deformed and subsequently repositioned in its original
position (FF 6), and that the rounded shape of the side portions of the floor
permits more-uniform recentering of the load onto the floor (FF 7). Bibeau
also discloses that the upper edges 9 of the side walls are shaped to
contribute to the spring effect (Ans. 7, FF 8). However, nothing in Bibeau
suggests that constructing the vertical side walls of Bibeau's dump body of
aluminum would somehow prevent the longsills, floor and upper edges from
Appeal 2009-015233
Application 11/488,560

11
providing the spring effect, and the Appellant has proffered no reason or
evidence in support of this contention.
Thus, we sustain the Examiner's obviousness rejection of claim 1.
The Appellant does not separately argue the patentability of 3, 4 and 10,
which depend from claim 1. Accordingly, we also sustain the rejection of
these dependent claims. The Appellant does not separately argue the
patentability of independent claim 12, which recites similar subject matter as
claim 1, or claim 16 depending from claim 12. Thus, we also sustain the
Examiner's obviousness rejection of claims 12 and 16 for similar reasons to
those discussed supra with respect to claim 1.

Rejection of claims 5, 6, 11, 13-15, 18 and 20 as obvious over Bibeau
in view of Martin and Buckley
The Appellant indicates that independent claim 18 is representative of
these claims (App. Br. 11). Claim 18 recites a hybrid dump body for a dump
truck or trailer comprising, inter alia, "a pair of elongated fastening strips,
each fastening strip being outwardly spaced from one curved edge portion of
the steel bottom, and wherein a portion of each aluminum side panel is
sandwiched between one curved edge portion of the steel bottom and one of
the fastening strips" and "a series of longitudinally spaced apart fasteners
extending through each curved edge portion of the steel bottom, the adjacent
aluminum side panel, and the fastening strip."
The Examiner relies on Buckley for the teachings of a gang nut plate
including a flat metal strip with a plurality of fasteners secured thereto and
extending through the strip, and that such strips can be used to secure two
panels together (Ans. 4, 7; FF 14, 15). The Examiner concludes that in view
Appeal 2009-015233
Application 11/488,560

12
of Buckley, it would have been obvious to provide in the combination of
Bibeau and Martin, a gang nut plate to fasten the side panel to the floor
panel in the manner claimed in order to speed fastening (Ans. 4, 7).
The Appellant argues that Buckley is not from the dump body art and
implies that Buckley is also unrelated to the problem faced by the inventors
(App. Br. 12); that Buckley's fastening strips are constructed of plastic and
have a waffle shape, making them inappropriate for securing metal sidewalls
to a dump truck body and use against the sidewalls of either Bibeau or
Martin (App. Br. 12-13); and that the Examiner does not explain where the
Buckley fastening strips would be placed to connect the bottom and
sidewalls in the combination of Bibeau and Martin (App. Br. 13-14).
We do not find the Appellant's arguments convincing. Although
Buckley is not in the field of dump trucks, Buckley pertains to fasteners and
in particular, fasteners for securing overlapping panels together and thus, is
also reasonably pertinent to the problem addressed by the Appellant. Surely,
the Appellant cannot be contending that use of such fastening strips is not
known in the fastening art. A person of ordinary skill desiring to secure the
sidewalls would look not only to the field of dump truck art, but also refer to
the fastener art because the problem to be addressed is that of fastening one
structure to another. In re ICON Health and Fitness, 496 F.3d at 1379-80.
Thus, we find that Buckley is analogous prior art.
As to the shape and material of Buckley's fastening strips, as
explained by the Examiner, Buckley is relied on for the teaching that a flat
metal nut plate is well known in the art, not for the specific plastic strip
disclosed (Ans. 7; FF 14). Regarding the location of the fastening strips,
Appeal 2009-015233
Application 11/488,560

13
Martin teaches fastening vertical aluminum side panels, and when applied to
Bibeau, the vertical aluminum side panels would be attached to the top of
the curved portions of the floor. Accordingly, we agree with the Examiner
that it would be obvious to position the metal strips of Buckley with respect
to the curved portions and side panels of the modified Bibeau dump body as
recited in the claim for the rational reason articulated by the Examiner.
Thus, we sustain the Examiner's obviousness rejection of claim 18.
The Appellant does not separately argue the patentability of claims 5, 6, 11,
13-15 and 20. Correspondingly, we also sustain the Examiner's obviousness
rejection of these claims.

Rejection of claims 2, 7 and 8 as obvious over Bibeau in view of Martin or
further in view of Buckley, and further in view of Augustine and Applicant's
Admitted Prior Art
The Examiner relies on Augustine for disclosing further limitations in
claims 2, 7 and 8 reciting an aluminum tailgate, the Examiner concluding
that using an aluminum tailgate would be obvious in order to reduce weight
(Ans. 4-5). The Appellant contends that the Examiner's obviousness
analysis is conclusory; that the Bibeau dump body already appears to be of a
lightweight construction; and that the Examiner does not discuss how
Bibeau would be modified without impacting "the critical design elements
that give rise to the objects of the Bibeau design." (App. Br. 14).
We do not find the Appellant's arguments persuasive. In this regard,
Martin discloses the desire in the art to maximize the use of aluminum in
dump bodies (FF 9), and Augustine discloses a truck tailgate comprising
aluminum (FF 16). The Appellant's contention with respect to the weight of
Appeal 2009-015233
Application 11/488,560

14
Bibeau dump body is merely speculative. As such, we agree that one skilled
in the art would have found it desirable to construct the tailgate of the
Bibeau dump body from aluminum to reduce weight. Moreover, the
Appellant has not established any reason why using an aluminum tailgate in
Bibeau's dump body would impact the "critical design elements" of the
dump body (App. Br. 14). To the extent that the Appellant is alluding to the
spring effect of the Bibeau dump body, this argument is not persuasive for
similar reasons discussed above. Thus, we sustain the Examiner's
obviousness rejection of claims 2, 7 and 8.

Rejection of claims 9 and 17 as obvious over Bibeau and Martin, and further
in view of Kuhns or Leutenegger
The Examiner relies on Kuhns or Leutenegger for disclosing further
limitations of claims 9 and 17, concluding that it would have been obvious
to a person of ordinary skill in the art to provide aluminum fastening strips
in Bibeau in view of Martin to connect two perpendicular side and end panel
members for weight reduction and corrosion prevention (Ans. 5). The
Appellant contends that the Examiner has used hindsight in rejecting these
claims, in that the claimed aluminum fastening elements are not taught by
the prior art (App. Br. 15).
We agree with the Examiner that it would have been obvious to utilize
aluminum fastening strips in Bibeau's dump body. Kuhns discloses
fastening members for connecting panels together (FF 17), and Leutenegger
discloses fastening members made of aluminum (FF 18). While it may be
insufficient that aluminum fastening elements used in joints are known, the
Appeal 2009-015233
Application 11/488,560

15
Examiner has, as required, also articulated a reason (weight and corrosion
reduction) as to why one of ordinary skill in the art would have been
motivated to incorporate aluminum fastening strips in the Bibeau dump body
to connect the bulkhead to aluminum side panels (Ans. 5, 8), which is
rational and sufficient to support the conclusion of obviousness. See KSR,
550 U.S. at 418. Thus, we sustain the Examiner's obviousness rejection of
claims 9 and 17.

CONCLUSION
1. The Examiner did not err in concluding that the combination of
Bibeau and Martin would have rendered obvious the hybrid dump body of
claim 1 comprising a steel bottom and opposed aluminum side panels.
2. The Examiner did not err in concluding that the combination of
Bibeau, Martin and Buckley would have rendered obvious the hybrid truck
body of claim 18 comprising a pair of elongated fastening strips and a series
of fasteners.
3. The Examiner did not err in concluding that the combination of
Bibeau and Martin or further Buckley, and further Augustine and
Applicant's Admitted Prior Art would have rendered obvious the hybrid
truck body of claims 2, 7 and 8 which recite an aluminum tailgate.
4. The Examiner did not err in concluding that the combination of
Bibeau and Martin, and further Kuhns or Leutenegger would have rendered
obvious the hybrid truck body of claim 9 or the method of claim 17 reciting
aluminum fastening strips.

Appeal 2009-015233
Application 11/488,560

16
DECISION
Each of the Examiner's rejections is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

ack
cc:

COATS & BENNETT, PLLC
1400 CRESCENT GREEN, SUITE 300
CARY, NC 27518