Ex Parte Saieg et al

Board of Patent Appeals and Interferences

Feb 15, 2011

11141628 (B.P.A.I. Feb. 15, 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.
11/141,628 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.
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Application 11/141,628

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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
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Application 11/141,628

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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

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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
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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).
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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).
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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;
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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.
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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
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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)).
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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.
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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.
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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
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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