Ex Parte Storer

Board of Patent Appeals and Interferences

Oct 31, 2001

08654739 (B.P.A.I. Oct. 31, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RON D. STORER
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Appeal No. 2000-1477
Application No. 08/654,739
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ON BRIEF
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Before ABRAMS, FRANKFORT, and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-16,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2000-1477
Application No. 08/654,739
Page 2
BACKGROUND
The appellant's invention relates to a grille guard for a vehicle. An understanding
of the invention can be derived from a reading of exemplary claim 1, which appears in
the appendix to the appellant's Brief.
The prior art reference of record relied upon by the examiner in rejecting the
appealed claims is:
Go Rhino! Catalog 960, pages 1-8, 1996 (Go Rhino)
Claims 1-16 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Go Rhino.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the Answer
(Paper No. 23) for the examiner's complete reasoning in support of the rejection, and to
the Brief (Paper No. 22) and Reply Brief (Paper No. 24) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Appeal No. 2000-1477
Application No. 08/654,739
Page 3
1It appears to us that “queue” should be “cue,” in that the common applicable
definitions of the former seem to be far removed from the meaning the appellant
attaches to it, while that of the latter is “a feature indicating the nature of something
perceived.” Merriam Webster’s Collegiate Dictionary, Tenth Edition, 1996, pages 958
and 282.
The appellant’s invention relates generally to grille guards for vehicles, and more
particularly to a grill guard having a footstep for enhancing the access to the hood and
engine compartment of trucks and sport utility vehicles, which often are high off of the
ground. As manifested in independent claim 1, the invention comprises at least one
horizontal grille guard member, at least one vertical grille guard member attached to the
horizontal member, and a footstep attached to the vertical member proximate a lower
end thereof in such a fashion, and of such construction, as to support the weight of a
person. The step comprises a generally tubular horizontal member formed of a
material sufficient to resist bending under a person’s weight, and an integrated flattened
portion formed on the tubular member for providing a user with a structural “visual
queue”1 that the flattened portion is to be used for stepping upon.
The examiner has taken the position that the subject matter of claim 1 is
unpatentable over the grille guard shown on page 3 of Go Rhino. In arriving at this
conclusion, the examiner expresses the view that the lowermost horizontal component
shown in the illustration is “capable” of being used as a step, and that it would have
been obvious to one of ordinary skill in the art to form it as a tubular member having an
integrated flattened portion in view of the steps shown on the side of the truck on page
Appeal No. 2000-1477
Application No. 08/654,739
Page 4
7, because it would be “a matter of design preference, dependent upon such factors as
cost and material availability or aesthetic purposes,” and would provide greater strength
(Answer, page 4). We do not agree.
The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention. See Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill in the art and not from
the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The mere fact that the prior art structure could be modified does not make such
a modification obvious unless the prior art suggests the desirability of doing so. See In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Even if one
accepts, arguendo, the examiner’s conclusion that the lower horizontal member in
Figure 3 of Go Rhino is capable of supporting the weight of a person, it clearly does not
meet the terms of the claim, in that it is not a generally tubular member having an
Appeal No. 2000-1477
Application No. 08/654,739
Page 5
integral flattened portion that provides the user with the visual impression that it is a
step, and we fail to perceive any teaching, suggestion or incentive which would have led
one of ordinary skill in the art to modify it in the manner proposed by the examiner. The
appellant has argued in the Brief that there are specific reasons for the claimed
structure, and the examiner has provided no persuasive reasons why the artisan would
have found suggestion in the structure of a truck cab entry member to provide a step of
the type claimed on a grille guard, or evidence in support of the conclusions set forth on
page 4 of the Answer. In fact, a close scrutiny of the truck entry step pictured on page
7 reveals that it is not a generally cylindrical tubular member having a flattened portion
formed therein, and therefore even if it were incorporated into the selected grille design,
the result would not be the structure required by claim 1.
From our perspective, the only suggestion for modifying the grille guard in the
manner proposed by the examiner is found in the hindsight afforded one who first
viewed the appellant’s disclosure. This, of course, is not a proper basis for a rejection
under 35 U.S.C. § 103. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784
(Fed. Cir. 1992).
In sum, Go Rhino does not establish a prima facie case of obviousness with
regard to the subject matter recited in claim 1, and we thus will not sustain the rejection
of claim 1 or, it follows, of claims 2-8, which depend therefrom.
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Application No. 08/654,739
Page 6
Independent method claim 9 also contains the same limitations, and further
requires that the flattened portion be formed by pressing the tubular member, a
limitation about which the examiner has made no comment. For the reasons expressed
above with regard to claim 1, the rejection of claims 9-16 also is not sustained.
Although we did not need to address Mr. Storer’s declaration in the course of
evaluating the examiner’s rejection, we wish to comment in passing that we are
impressed by the fact that the claimed grille guard captured the major portion of the
market from the traditional grille guard over the course of a few years.
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Application No. 08/654,739
Page 7
SUMMARY
The rejection is not sustained.
The decision of the examiner is reversed.
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES. E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA:pgg
KIT M. STETINA
Appeal No. 2000-1477
Application No. 08/654,739
Page 8
STETINA, BRUNDA & BUYAN
24221 CALLE DE LA LOUISA
SUITE 401
LAGUNA HILLS , CA 92653