Ex Parte Saieg et alDownload PDFBoard of Patent Appeals and InterferencesFeb 15, 201111141628 (B.P.A.I. Feb. 15, 2011) Copy Citation 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. 11/141,628 05/31/2005 Steven G. Saieg 60,130-1908/03MRA0453 5274 26096 7590 02/15/2011 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER WILHELM, TIMOTHY ART UNIT PAPER NUMBER 3616 MAIL DATE DELIVERY MODE 02/15/2011 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 STEVEN G. SAIEG and VERN A. CARON ____________ Appeal 2009-009873 Application 11/141,628 Technology Center 3600 ____________ Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEVEN D.A. McCARTHY, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL1 1 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 2009-009873 Application 11/141,628 2 STATEMENT OF THE CASE Steven G. Saieg and Vern A. Caron (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 7-13, 15-19, 21, and 22.2 Claims 2-6 and 20 are objected to as being dependent upon a rejected base claim, and the Examiner has indicated these claims would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellants’ claimed invention relates to a trailer slider locking system having a pin configuration that engages the body rails of the trailer. Spec. 1, para. [0001]. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A trailer slider including a body rail longitudinally slideable relative to a suspension frame side rail, one of the body and suspension frame side rails having holes providing multiple suspension positions, the holes having a first centerline, the trailer slider comprising: a pin locking system having a pin movable between retracted and locked positions, an end of said pin arranged to extend through one of the holes in said locked position, said pin having a second centerline, said end arranged to extend through the hole with said first centerline and said second centerline offset from one another in said locked position. 2 The Examiner withdrew the rejection of claim 14. Ans. 3. Appeal 2009-009873 Application 11/141,628 3 THE REJECTIONS Appellants seek review of the following rejections: 1. Rejection of claims 1, 16, and 19 under 35 U.S.C. § 102(b) as anticipated by Yurgevich (US 6,485,054 B1; issued November 26, 2002). 2. Rejection of claims 15 and 18 under 35 U.S.C. § 102(b) as anticipated by Schueman (US 5,507,511; issued April 16, 1996). 3. Rejection of claims 19 and 21 under 35 U.S.C. § 102(b) as anticipated by Pierce (US 5,642,896; issued July 1, 1997). 4. Rejection of claims 7-13 and 17 under 35 U.S.C. § 103(a) as unpatentable over Yurgevich and Blanch (US 6,122,946; issued September 26, 2000). 5. Rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable over Pierce and Blanch. ISSUES Does Yurgevich disclose a trailer slider that includes a pin arranged so that when the pin is extended through one of the holes in either the body rail or the suspension frame side rail into a locked position, the centerline of the hole (first centerline) is offset from the centerline of the pin (second centerline), as called for in independent claim 1? Does Yurgevich disclose a trailer slider that includes a pin arranged so that when the pin is in the hole of either the body rail or the suspension frame side rail in a locked position at least a portion of the pin extends beyond the outermost surface of the rail, and the centerline of the pin is Appeal 2009-009873 Application 11/141,628 4 offset from the centerline of the hole, as called for in claim 16 and independent claim 19? Does Schueman disclose a trailer slider comprising a pin locking system having pins that include apertures, as called for in independent claim 15? Does Pierce disclose at least one pin arranged to extend through one of the plurality of holes of the body rail so that at least a portion of the pin extends beyond an outer surface of the body rail to achieve a locked position in which the centerline of the hole (first centerline) is offset from the centerline of the pin (second centerline), as called for in independent claim 19? Does Pierce disclose a pin that includes an aperture formed in a direction extending generally along the centerline of the pin, as called for in claim 21? Is the proposed modification to Yurgevich based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art would have modified Yurgevich’s pin to include a tapered surface, as disclosed in Blanch, to reach the subject matter of claim 7? Is the proposed modification to Pierce based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art would have modified Pierce’s pin to include a tapered surface, as disclosed in Blanch, to reach the subject matter of claim 22? Appeal 2009-009873 Application 11/141,628 5 ANALYSIS Rejection of claims 1, 16, and 19 under 35 U.S.C. § 102(b) as anticipated by Yurgevich Claim 1 Independent claim 1 is directed to a trailer slider comprised of a pin locking system that includes a pin arranged to “extend through” one of the holes of either the body rail or the suspension frame side rail into a locked position with the centerline of the hole (first centerline) being offset from the centerline of the pin (second centerline). Appellants’ Specification describes that the claimed invention is intended to overcome the problem in which the pins do not “fully extend through the holes” in the body rails. Spec. 1, para. [0003]. Thus, Appellants’ Specification suggests that the locked position of claim 1 calls for the pin to at least fully extend through the holes in the body rail, or, in other words, so that the pin is at least flush with the outer surface of the rail. The theory of claim differentiation supports this interpretation because claim 16, which depends from claim 1, adds the limitation that when in the locked position, at least a portion of the end of the pin extends beyond the outermost face of the body rail. We interpret independent claim 1 to call for the pin of the pin locking system to be arranged so that when the pin is in the hole of either the body rail or the suspension frame side rail in a locked position the end of the pin is at least flush with the outer surface of the rail, and the centerline of the pin is offset from the centerline of the hole. Appellants argue that Yurgevich does not anticipate claim 1 because pin 35, as depicted in Figure 4, is not in a locked position, and when pin 35 Appeal 2009-009873 Application 11/141,628 6 is in a locked position, as depicted in Figure 2, the centerline of pin 35 aligns with the centerline of hole 30. App. Br. 4; Reply Br. 2. Appellants’ argument is unconvincing because it mistakenly uses the semantics of Yurgevich to define a locked position when the proper measure is what is called for in claim 1. Figures 3 and 4 of Yurgevich disclose that bogie lock pin 35 extends through bogie lock pin hole 30 to contact bolster lip 50. Yurgevich, col. 1, ll. 55-60; figs. 3, 4. Though Yurgevich does not refer to this position as “locked,” this position is “locked” as called for in independent claim 1 because when pin 35 contacts bolster lip 50, pin 35 is at least flush with the outer surface of the rail 15. Yurgevich discloses that in this “locked” position, the centerline of pin 35 is offset from the centerline of bogie lock pin hole 30. Yurgevich, figs. 3, 4. As such, we sustain the rejection of claim 1. Claims 16 and 19 Claim 16 depends from claim 1 and adds the limitation that when in the locked position, at least a portion of the end of the pin extends beyond the outermost face of the body rail. Similarly, independent claim 19 is directed to a trailer slider comprised of a pin locking system that includes at least one pin arranged to extend through one of the plurality of holes in the body rail so that at least a portion of the pin extends beyond an outer surface of the body rail to achieve a locked position in which the centerline of the hole (first centerline) is offset from the centerline of the pin (second centerline). Appeal 2009-009873 Application 11/141,628 7 The Examiner’s reliance on Figures 3 and 4 of Yurgevich (Ans. 4, 7) to disclose a pin in a locked position as called for in claims 16 and 19 is misplaced, because no portion of Yurgevich’s bogie lock pin 35 extends beyond the outer surface of rail 15. Yurgevich, col. 1, ll. 55-60; figs. 3, 4. Further, as Appellants correctly point out (App. Br. 4), Figure 2 of Yurgevich discloses bogie lock pin 35 extending beyond the outer surface of rail 15 (the locked position called for in claim 19) with the centerline of bogie lock pin 35 aligned with the centerline of bogie lock pin hole 30. Yurgevich, col. 1, ll. 32-36; fig. 2. In other words, the centerline of the hole is not offset from the centerline of the pin as called for in claims 16 and 19. As such, Yurgevich does not anticipate claims 16 and 19. Rejection of claims 15 and 18 under 35 U.S.C. § 102(b) as anticipated by Schueman Independent claim 15 is directed to a trailer slider comprising a pin locking system having pins with one end arranged to be received in the holes of the body and suspension frame side rails, and the opposite ends of the pins including apertures. Claim 15 calls for one pin to receive an actuating linkage in the aperture when that pin is in a bound position and another of the pins is in a locked position. The Examiner found that because Schueman describes link 92 as pivotally connected to pin 74, pin 74 “would require an aperture in its end to accommodate a pivot pin for pivotally connecting pin 74 to link 92.” Ans. 7-8 (citing to Schueman’s Figure 4). Appeal 2009-009873 Application 11/141,628 8 Schueman discloses that pin 74 is “pivotally connected” to link 92, but does not explicitly disclose that pin 74 includes an aperture. Schueman, col. 4, ll. 64-col. 5, l. 1; fig. 4. The connection shown in Schueman’s Figure 4 is equally likely to indicate the aperture is in link 92 as opposed to the aperture being in pin 74. Thus, we cannot conclude, based on a preponderance of the evidence, that Schueman’s pin 74 includes an aperture as called for in independent claim 15. As such, we cannot sustain the rejection of independent claim 15, or its dependent claim 18, as being anticipated by Schueman. Rejection of claims 19 and 21 under 35 U.S.C. § 102(b) as anticipated by Pierce Claim 19 The Examiner determined Pierce anticipates claim 19 based in part on a finding that Figure 6 of Pierce discloses at least one pin (49) arranged to extend through one of the plurality of holes (trailer body opening 53) in the body rail (rail 41) so that at least a portion of the pin (49) extends beyond an outer surface of the body rail (rail 41) to achieve a locked position in which the centerline of the hole (trailer body opening 53) is offset from the centerline of the pin (49). Ans. 9 (noting that Pierce’s Figure 6 is an enlarged view of Figure 4). Appellants argue that Pierce does not anticipate claim 19 because Figure 4 of Pierce discloses the centerline of the pin and the centerline of the hole are aligned, rather than offset as called for in claim 19. App. Br. 6; Appeal 2009-009873 Application 11/141,628 9 Reply Br. 3. Appellants’ argument is unpersuasive in that it fails to address the Examiner’s finding regarding Pierce’s Figure 6. Further, we find that Pierce discloses that pin 49 is in a locked position because at least a portion of pin 49 extends beyond the outer surface of rail 41. Pierce, col. 3, ll. 49- 50; fig. 6. We further find that the centerlines of pin 49 and opening 53 are offset because the foremost edge of pin 49 is adjacent the foremost edge of trailer body opening 53 so that the there is a gap between the rearmost edge of pin 49 and the rearmost edge of trailer body opening 53. Thus, in the locked position of Figure 6, the centerline of pin 49 is offset from the centerline of the trailer body opening 53. Pierce, fig. 6. As such, we sustain the rejection of claim 19 under 35 U.S.C. § 102 as anticipated by Pierce. Claim 21 Appellants present separate arguments for claim 21. App. Br. 6-7. Claim 21 depends from claim 19, adding the limitation that the end of the first and second locking pins opposite the end received in the hole of the body rail includes an aperture formed “in a direction extending generally along the second centerline” (i.e. the centerline of the pins). A person of ordinary skill in the art would interpret an aperture formed “in a direction extending generally along the second centerline” to call for the aperture to extend along its depth in the direction of the longitudinal axis of the opening. Consequently, claim 21 calls for an aperture having a depth that extends generally along the centerline of the pin. Appeal 2009-009873 Application 11/141,628 10 Pierce discloses that arm 44 is bent and pivotally attached through an aperture in the inboard end of locking pin 49. Pierce, col. 5, ll. 23-25; figs. 4-6. The bent portion of arm 44 passes through the aperture in a direction perpendicular to the centerline of pin 49. Pierce, fig. 4-6. Thus, the depth of the aperture in the end of Pierce’s locking pin 49 is formed in a direction generally perpendicular to the centerline of locking pin 49 and not “in a direction extending generally along” the centerline as called for in claim 21. Hence, we cannot sustain the rejection of claim 21. Rejection of claims 7-13 and 17 under 35 U.S.C. § 103(a) as unpatentable over Yurgevich and Blanch Appellant argues claims 7-13 and 17 as a group. App. Br. 7-9; Reply Br. 4-6. We select claim 7 as the representative claim, and claims 8-13 and 17 stand or fall with claim 7. 37 C.F.R. § 41.37(c)(1)(vii). Claim 7 depends from claim 1, and adds the limitation that the end of the pin that extends through one of the plurality of holes in the body rail includes a tapered surface. Appellants repeat the argument used against the rejection of claim 1 as anticipated by Yurgevich (App. Br. 9; Reply Br. 5-6), and for the reasons explained in the analysis of claim 1, supra, that argument is also unpersuasive here. The Examiner found that Blanch discloses a pin (latch bolt 3) having an end with tapered surface, as called for in claim 7, that permits the pin to easily slide into locked position, and that such was common and would have Appeal 2009-009873 Application 11/141,628 11 been known by a person of ordinary skill in the art. Ans. 6, 10-11. The Examiner concluded that a person of ordinary skill in the art would have modified Pierce’s pin to include a tapered surface as taught by Blanch, “to allow for the locking pins to easily slide into locked position.” Ans. 6. Appellants do not contest the Examiner’s finding that Blanch discloses a tapered surface as called for in claim 7. Nor do Appellants contest the Examiner’s finding that use of such a tapered surface was common, and would have been known by a person of ordinary skill in the art. App. Br. passim; Reply Br. passim. Rather, Appellants contend that Blanch would not have been considered by a person of ordinary skill in the art because Blanch is not analogous art. App. Br. 7-9; Reply Br. 4-6. We are unpersuaded by this argument. “The analogous-art test requires that the Board show that a reference is either in the field of the applicant’s endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). “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 Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In other words, “familiar items may have obvious uses beyond their primary purposes.” In re ICON Health & Fitness, Inc, 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)). Appeal 2009-009873 Application 11/141,628 12 In this case, Appellants sought “to provide improved locking pin engagement in a trailer slider.” App. Br. 10. Faced with this problem, common sense would dictate to a person of ordinary skill in the art that a pin having a tapered surface on the end received in a hole, such as disclosed by Blanch, would improve engagement of the hole by that pin by allowing the pin to more easily slide through the hole without jamming. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (It is proper to "take account of the inferences and creative steps that a person of ordinary skill in the art would employ."). See also id. at 421 ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). Given this, Blanch is reasonably pertinent to the problem facing Appellants at the time of the claimed invention. Appellants further argue that “[t]here is nothing in Yurgevich or Blanch to suggest that using a tapered locking pin end in Yurgevich would result in a more secure locking condition.” App. Br. 9; see also Reply Br. 5. This argument is unpersuasive in that it fails to address the Examiner’s rationale, namely, that a person of ordinary skill in the art would recognize a tapered surface as taught by Blanch would permit a locking pin to easily slide into locked position. See Ans. 6. Hence, we sustain the rejection of claim 7, and claims 8-13 and 17 fall with claim 7. Appeal 2009-009873 Application 11/141,628 13 Rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable over Pierce and Blanch Claim 22 depends from claim 19 and adds the limitation that the end of the pin that extends through one of the plurality of holes in the body rail includes a tapered surface. Appellants repeat the argument that Blanch is not analogous art. App. Br. 9-10; Reply Br. 6. For the reasons explained in the analysis of claim 7, supra, we are unpersuaded by this argument. Appellants further argue that there is no suggestion or motivation to modify Pierce with the teachings of Blanch because Pierce was seeking to provide a configuration to reduce the need for excessive force to free jammed pins, and Blanch does not provide any teachings relevant to this problem. App. Br. 10; Reply Br. 6 This argument is unpersuasive in that it fails to address the Examiner’s rationale, namely, that a person of ordinary skill in the art would recognize a tapered surface as taught by Blanch would permit a locking pin to easily slide into locked position. See Ans. 6. As such, we sustain the rejection of claim 22. CONCLUSIONS Yurgevich discloses a trailer slider that includes a pin arranged so that when the pin is extended through one of the holes in either the body rail or suspension frame side rails into a locked position, the centerline of the hole (first centerline) is offset from the centerline of the pin (second centerline), as called for in independent claim 1. Appeal 2009-009873 Application 11/141,628 14 Yurgevich does not disclose a trailer slider that includes a pin arranged so that when the pin is in the hole of either the body rail or the suspension frame side rail in a locked position at least a portion of the pin extends beyond the outermost surface of the rail, and the centerline of the pin is offset from the centerline of the hole, as called for in claim 16 and independent claim 19. Schueman does not disclose a trailer slider comprising a pin locking system having pins that include apertures, as called for in independent claim 15. Pierce discloses at least one pin having a second centerline and arranged to extend through one of the plurality of holes of the body rail so that at least a portion of the pin extends beyond an outer surface of the body rail to achieve a locked position in which the first centerline is offset from the second centerline, as called for in independent claim 19. Pierce does not disclose a pin that includes an aperture formed in a direction extending generally along the centerline of the pin, as called for in claim 21. The proposed modification to Yurgevich is based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the art would have modified Yurgevich’s pin to include a tapered surface, as disclosed in Blanch, to reach the subject matter of claim 7. The proposed modification to Pierce is based upon a sufficient reason with a rational underpinning to explain why a person of ordinary skill in the Appeal 2009-009873 Application 11/141,628 15 art would have modified Pierce’s pin to include a tapered surface, as disclosed in Blanch, to reach the subject matter of claim 22. DECISION The decision of the Examiner to reject claim 1 under 35 U.S.C. § 102(b) as anticipated by Yurgevich is AFFIRMED. The decision of the Examiner to reject claims 16 and 19 under 35 U.S.C. § 102(b) as anticipated by Yurgevich is REVERSED. The decision of the Examiner to reject claims 15 and 18 under 35 U.S.C. § 102(b) as anticipated by Schueman is REVERSED. The decision of the Examiner to reject claim 19 under 35 U.S.C. § 102(b) as anticipated by Pierce is AFFIRMED. The decision of the Examiner to reject claim 21 under 35 U.S.C. § 102(b) as anticipated by Pierce is REVERSED. The decision of the Examiner to reject claims 7-13 and 17 under 35 U.S.C. § 103(a) as unpatentable over Yurgevich and Blanch is AFFIRMED. The decision of the Examiner to reject claim 22 under 35 U.S.C. § 103(a) as unpatentable over Pierce and Blanch 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Appeal 2009-009873 Application 11/141,628 16 nlk CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM MI 48009 Copy with citationCopy as parenthetical citation