Ex Parte Searfoss

Board of Patent Appeals and Interferences

Jan 30, 2012

10664806 (B.P.A.I. Jan. 30, 2012)

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.
10/664,806 09/17/2003 Timothy K. Searfoss 135912-00001.13 3469
84346 7590 01/30/2012
MILLER, CANFIELD, PADDOCK AND STONE
277 SOUTH ROSE STREET
SUITE 5000
KALAMAZOO, MI 49007
EXAMINER
GUTMAN, HILARY L
ART UNIT PAPER NUMBER
3612
MAIL DATE DELIVERY MODE
01/30/2012 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 TIMOTHY K. SEARFOSS
____________

Appeal 2010-004931
Application 10/664,806
Technology Center 3600
____________

Before PHILLIP J. KAUFFMAN, EDWARD A. BROWN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-33. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-004931
Application 10/664,806

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REJECTIONS
The following Examiner’s rejections are before us for review:
claims 1-5, 7, 8, and 11 under 35 U.S.C. § 102(e) as being
anticipated by Swanson (US 6,513,856 B1, iss. Feb. 4, 2003);
claims 1 and 6 under 35 U.S.C. § 103(a) as being unpatentable
over Schmeichel (US 4,505,512, iss. Mar. 19, 1985) and Tomat (DE
101 20 442 A1, pub. Oct. 31, 2002);
claims 12-16, 18, 19, 22-27, 29, 30, and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Swanson and Searfoss (US
6,206,449 B1, iss. Mar. 27, 2001);
claims 12, 17, 23, and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Swanson and Schmeichel;
claims 9 and 10 under 35 U.S.C. § 103(a) as being unpatentable
over Swanson and Hall (US 5,791,714, iss. Aug. 11, 1998) or
Muirhead (US 6,588,826 B1, iss. Jul. 8, 2003); and
claims 20, 21, 31, and 32 under 35 U.S.C. § 103(a) as being
unpatentable over Swanson, Searfoss or Schmeichel, and Hall or
Muirhead.

CLAIMED SUBJECT MATTER
Claims 1, 12, and 23 are independent claims. Claim 1 is
representative of the subject matter on appeal. Claim 1, with italics added,
recites:
1. A rail for a top of a wall of a trailer, the rail comprising:
a body adapted to engage the top of the wall, the body
having a concave surface adapted to receive a cover reel.

Appeal 2010-004931
Application 10/664,806

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Claims 12 and 23 both recite an “apparatus for extending and
retracting a cover over a trailer” comprising “a rail for a top of a wall of the
trailer, the rail including a body adapted to engage the top of the wall.”

ANALYSIS
Rejections of claims as anticipated by Swanson, and unpatentable over
Schmeichel and Tomat, and Swanson and Schmeichel
The Examiner finds that Swanson’s ledge 46 and Schmeichel’s hooks
40 correspond to “body adapted to engage the top of the wall” as recited in
claim 1, where “the wall” is a wall of a trailer because Swanson’s ledge 46
and Schmeichel’s hooks 40 “are believed to be at the top.” Ans. 3, 4, 8. The
Appellant contends that the Examiner’s findings are incorrect because
Swanson’s ledge 46 is “plainly situated some distance from the top of the
wall” and Schmeichel’s hooks 40 “are situated well below the top of the
wall.” App. Br. 6, 7. The Appellant points out that Swanson’s ledge 46 is
attached on the side 15, near the top edge 19, of the container 16, and
Schmeichel’s hooks 46 are secured to the side wall 22, below the top edge,
of the truck box 12. App. Br. 6, 7, Reply Br. 1; see also Swanson, col. 4, l.
8, col. 5, ll. 63-65, and Schmeichel, col. 4, ll. 23-33. Thus it is necessary to
construe the term “top” as recited in claim 1.
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). The Appellant provides the following definition of top that we
adopt as our own, "the highest point, level, or part of something: SUMMIT,
Appeal 2010-004931
Application 10/664,806

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CROWN." Reply. Br. 1; see (MERRIAM-WEBSTER.COM
UNABRIDGED, http://www.merriam-webster.com/ dictionary/top (last
visited Jan. 16, 2012)(“top,” def. a (1)). This definition is consistent with
the Specification, which recites “[t]he top rail 38, and an opposite top rail
60, include generally depending legs 39 and 40 that are adapted to be
mounted over the top of the trailer wall 34.” Spec. 4, l. 30 – p. 5, l. 2
(emphasis added). More specifically, the Specification’s Figure 3 depicts
legs 39 and 40 as being in contact with the sides of wall 34 and over the
highest point of the wall 34, i.e., the flat portion between the sides of the
wall 34.
In the case of Swanson, the top edge 19 is the “top” of the trailer wall
because it is the highest point, level, or part of the wall. Accordingly,
Swanson’s ledge 46 is not located at the top of wall because ledge 46 is
below the container’s top edge 19. See Swanson, figs. 1, 4, 6. Thus, the
Examiner’s finding that Swanson’s ledge 46 is at the top of the trailer wall
because ledge 46 is situated at the trailer wall’s upper region, as compared
with a middle region and a lower region, is not correct. Ans. 8.
Similarly, Schmeichel’s truck box’s top edge is the “top” of the trailer
wall. Schmeichel’s hooks 46 are not at the top of the wall because hooks 46
are below the truck box’s top edge. See Schmeichel, figs. 1, 3. Thus, the
Examiner’s finding that Schmeichel’s hooks 40 are at the top of the trailer
wall because hooks 40 are situated at the trailer wall’s upper region, as
compared with a middle region and a lower region, is not correct. Ans. 8.
Additionally, the Examiner does not provide findings from Tomat’s
disclosure that remedy the deficiency of Schmeichel. Ans. 5.
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Application 10/664,806

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For the foregoing reasons the Examiner’s rejection of claims 1-5, 7, 8,
and 11 as anticipated by Swanson, and the rejection of claims 1 and 6 as
unpatentable over Schmeichel and Tomat are not sustained.
Turning to the rejection of independent claims 12 and 23, the
Examiner appears to rely on the same incorrect findings to reject claims 12
and 23. See generally Ans. 6, 8. For the same reasons as provided for
claim 1, the Examiner’s rejection of independent claims 12 and 23, as well
as dependent claims 17 and 28, as unpatentable over Swanson and
Schmeichel is not sustained.

Searfoss, Hall and Muirhead do not remedy the deficiencies of Swanson, or
Swanson and Schmeichel
The Examiner finds Searfoss teaches “an apparatus for extending and
retracting a cover over a trailer . . . [including] a rail 58.” Ans. 6. However,
the Examiner’s finding that hook 58 is a rail is not supported by a
preponderance of the evidence. Searfoss, col. 2, 58, 59, figs. 1-3. As such,
this finding does not remedy the deficiency of Swanson or Schmeichel as
discussed above. Thus, the Examiner’s rejection of claims 12-16, 18, 19,
22-27, 29, 30, and 33 as unpatentable over Swanson and Searfoss is not
sustained.
The Examiner also finds Hall and Muirhead teach “aluminum and
polymer materials for use with vehicles since these materials exhibit
advantageous properties in that they can be lightweight, anticorrosive, and
durable.” Ans. 7. This finding does not remedy the deficiencies of Swanson
or Schmeichel as discussed above. Thus, the Examiner’s rejections of
claims 9 and 10 as unpatentable over Swanson and Hall or Muirhead, and
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Application 10/664,806

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claims 20, 21, 31, and 32 as unpatentable over Swanson, Searfoss or
Schmeichel, and Hall or Muirhead are not sustained.

DECISION
We REVERSE the rejections of claims 1-33.

REVERSED

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