Ex Parte Zernec

Patent Trial and Appeal Board

Feb 28, 2017

12931006 (P.T.A.B. Feb. 28, 2017)

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.
MSH-704 3220
EXAMINER
GUTMAN, HILARY L
ART UNIT PAPER NUMBER
3612
MAIL DATE DELIVERY MODE
12/931,006 01/21/2011
8131 7590 02/28/2017
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVTT.TE ROAD
MIDLAND, MI 48640
Daniel M. Zernec
02/28/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL M. ZERNEC1
Appeal 2014-008752
Application 12/931,006
Technology Center 3600
Before JAMES P. CALVE, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel M. Zemec (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s final rejection of claims 4—7, 9, 10, 12—16, and 18—22.2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, Daniel M. Zemec is the Real Party in Interest. Br.
2 (filed May 21, 2014).
2 Claims 1—3, 8, 11, and 17 have been cancelled. Id. at 7—8 (Claims App.).
Appeal 2014-008752
Application 12/931,006
CLAIMED SUBJECT MATTER
The invention concerns auxiliary carriers for truck beds. Spec. 12.
Claim 20 is illustrative of the subject matter on appeal, and recites:
20. A tray for a truck bed, the tray comprising:
a front wall;
a rear wall;
a left side wall extending between the front and rear walls;
a right side wall extending between the front and rear
walls;
an open top established by upper surfaces of the walls;
a bottom established at least partially by a floor extending
between the walls;
a width of each tray is at least one of about twenty-four
inches, sixteen inches, twelve inches, or eight
inches and, a length about equal to an interior length
of the truck bed,
wherein the trays are wheel-less, bearing-less, trackless,
and rail-less.
Br. 8 (Claims App.). Independent claims 21 and 22 recite a “tray system for
a truck bed” comprising a “plurality of trays,” each of which is similar to
that recited in claim 20, wherein claim 22 additionally recites a plurality of
retaining and reinforcement ribs. Id. at 8—9 (Claims App.).
REJECTIONS
The claims stand rejected as follows:
I. Claims 4—7, 9, 10, 13—15, 19, and 20—22 under 35 U.S.C.
§ 103(a) as unpatentable over Darbishire3 and Chandler.4
3 US D452,472 S, iss. Dec. 25, 2001.
4 US 2007/0158968 Al, pub. July 12, 2007.
2
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Application 12/931,006
II. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over
Darbishire, Chandler, and Roush.5
III. Claims 12 and 18 under 35 U.S.C. § 103(a) as unpatentable
over Darbishire and Chandler.
IV. Claims 4—7, 9, 10, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Gower6 and Chandler.7
ANALYSIS
Rejection I
Regarding claim 20, the Examiner finds that Darbishire discloses a
tray for a truck bed substantially as claimed, which is wheel-less, bearing­
less, trackless, and rail-less. Final Act. 2—3. The Examiner relies on
Chandler as teaching two trays, each of which is 24 inches wide. Id. at 3.
Appellant contends that the tray disclosed by Darbishire is not
trackless or rail-less because “Figure 6 of Darbishire shows very clearly that
the tray slides on rails which are formed by the top edge of the tray on each
side and depends on the sliding frame as the bottom rail.” Br. 5.8
5 US 3,794,208, iss. Feb. 26, 1974.
6 US 5,269,447, iss. Dec. 14, 1993.
7 In the Final Office Action, the heading of the Examiner’s rejection
references Darbishire, not Gower, but the body of the rejection refers to
Gower. Final Act. 5 (mailed Dec. 6, 2013); Ans. 10 (mailed June 6, 2014).
In the Examiner’s Answer, the Examiner corrected the heading of the
rejection to refer to Gower instead of Darbishire. Ans. 5.
8 Although Appellant presents this argument only for claim 20, see Br. 4—5,
independent claims 21 and 22 also contain the disputed limitation.
Therefore, we consider this argument for each of claims 20—22.
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Application 12/931,006
The Examiner responds that a sliding frame is not shown in Figure 6,
that tracks or rails are not visible in Darbishire’s tray, and that “the sliding
frame upon which the tray moves is not part of the tray.” Ans. 6—7.
We are not persuaded by Appellant’s argument. Appellant’s
independent claims 20, 21, and 22 do not recite any kind of mounting or
relationship between the tray and the truck bed. Although Darbishire
discloses that its “tray [is] mountable to a sliding frame for mounting to a
vehicle bed,” the tray is a structure separate from the truck bed, or the truck
bed’s sliding frame, as shown in Figures 1—5. Darbishire, Claim, Figs. 1—5
(depicting tray standing alone). Appellant has not identified any rail or track
that forms a part of Darbishire’s tray when it stands alone, for example, prior
to mounting to a truck bed sliding frame, or when mounted elsewhere.
Rather, Appellant’s argument that “the tray slides on rails . . . formed by the
top edge of the tray on each side and depends on the sliding frame as the
bottom rail” depends on the interaction of the tray with a separate
structure—the sliding frame—which is not claimed and need not be present.
Br. 5; see also id. at 8—9 (Claims App.) (wherein the independent claims do
not require the tray be mounted to the truck bed).
Moreover, Appellant’s argument that Figure 6 of Darbishire shows
that the tray slides on rails formed by the top edge of each tray is not
persuasive in view of Darbishire’s teaching that the tray is mountable to a
sliding frame and Figure 6 shows the tray sliding out and away from the
truck bed on a sliding frame that is shown in dashed lines atop of the
lowered tail gate of the truck. The tray, itself, lacks wheels, bearings, tracks,
and rails and, as a consequence, must be mounted to a sliding frame.
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Application 12/931,006
We are also unpersuaded by Appellant’s argument that Chandler
“does not teach the system of the instant invention.” Id. at 5. The Examiner
does not rely on Chandler as teaching a “system.” Final Act. 3. The
Examiner finds that Chandler teaches two truck bed trays, each having width
of 24 inches. Id. Appellant does not identify error in this regard and, in fact,
admits that “[Chandler] teaches two trays.” Br. 5. Appellant does not argue
the claimed width is lacking. Therefore, whether Chandler fails to teach a
“system” is irrelevant to the Examiner’s combination.
We are also unpersuaded by Appellant’s argument that the
combination of Darbishire and Chandler does not “teach the simplicity and
ease of use of the instant invention.” Id. Appellant does not identify any
features of the claim that it alleges to be lacking in the proposed
combination. See In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Accordingly, we are not persuaded of error in the Examiner’s
rejection.
Rejection II
With respect to claim 16, the Examiner finds that Darbishire, modified
in view of Chandler, does not teach reinforcement ribs. Final Act. 4. The
Examiner finds that Roush teaches such ribs and concludes that it would
have been obvious to have “provided such ribs ... for the trays of Darbishire
in order to improve strength and load carrying capacity.” Id.
Appellant contends that claim 16 depends from claim 21, and “[t]he
examiner has not given the Appellant specific details of the rejection of
claim 21.” Br. 5. Accordingly, Appellant contends that Appellant “cannot
respond to this rejection.” Id.
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Application 12/931,006
Claim 21 is substantially similar to claim 20, except that it recites a
“plurality of trays,” instead of a single tray as recited in claim 20, and that it
specifies that the tray bottom is “closed.” Id. at 8 (Claims App.). The
Examiner rejects both of claims 20 and 21 as unpatentable over Darbishire
and Chandler. Final Act. 2. Although the Examiner does not discuss claim
21 separately in the Final Office Action, the Examiner’s findings with
respect to claim 20 and its dependent claims apply clearly and equally to
claim 21 as well. Ans. 8—9. For example, claim 21 recites a plurality of
trays. Br. 8 (Claims App.). When treating claim 20, the Examiner relied
upon Chandler’s teaching of two trays, which likewise satisfies claim 21.
Final Act. 3. Additionally, claim 21 recites that the bottom of the tray is
closed. Br. 8 (Claims App.). When treating claim 9, the Examiner relied
upon Darbishire’s teaching of a closed tray bottom, which likewise satisfies
claim 21. Final Act. 3. Accordingly, the Examiner’s treatment of claim 20
and its dependent claims addresses all limitations of Appellant’s claim 21
and apprises Appellant of the Examiner’s findings as to where the prior art
teaches these claimed features. See Final Act. 2—3; Ans. 8—9.
Appellant presents no other substantive argument against this
rejection. Br. 5. Accordingly, we are not persuaded of error in the
Examiner’s rejection.
Rejection III
With respect to claims 12 and 18, the Examiner finds that Darbishire,
modified in view of Chandler, does not teach three distinct trays each having
a width of sixteen inches. Final Act. 4. The Examiner finds that the “mere
duplication of parts has no patentable significance unless a new and
unexpected result is produced” and, here, “adding an additional tray to result
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Application 12/931,006
in three trays each with further reduced width to correspond to the width of
the bed . . . would not produce in a ‘new and unexpected result.’” Id.
Therefore, the Examiner concludes that “adding a third tray . . . has no
patentable significance.” Id. at 4—5; Ans. 9—10.
We are unpersuaded by Appellant’s argument that “no details are
given by the examiner and therefore, the appellant cannot respond to this
rejection.” Br. 5. The Examiner’s factual findings and legal conclusions are
summarized in the preceding paragraph, and are sufficiently detailed to
warrant a response. Appellant fails to articulate specific deficiencies in the
rejection. Accordingly, we are not persuaded of error in the Examiner’s
rejection.
Rejection IV
The Examiner finds that Gower discloses a tray for a truck bed
substantially as claimed, which is wheel-less, bearing-less, trackless, and
rail-less. Final Act. 5; Ans. 5. The Examiner relies on Chandler as teaching
two trays, each of which is 24 inches wide. Final Act. 6.
Appellant contends that “the examiner cites Gower et al. However,
Gower et al[.] does not show up anywhere in the office action so that the
appellant has a patent number for Gower et al[.] and therefore, cannot
respond to this rejection.” Br. 6.
We are not persuaded by Appellant’s argument. Although the
heading of the Examiner’s Final Office Action cites incorrectly to
Darbishire, the body of that rejection clearly cites to “Gower et al.” Final
Act. 5. The Examiner identified the Gower reference to Appellant prior to
the December 6, 2013 Final Office Action. See Notice of References Cited,
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Application 12/931,006
(hereinafter “PTO-892”), 2 (mailed Jan. 30, 2013).9 Therefore, the
Examiner’s factual findings and legal conclusions with respect to Gower and
Chandler were sufficiently identified to warrant a response. Appellant
presents no other substantive argument against this rejection in its Appeal
Brief. See Br. 6.
Furthermore, the Examiner corrected the rejection heading in the
Examiner’s Answer to specifically identify Gower and its patent number.
Ans. 5,10. In response, Appellant filed neither a Petition to request
designation of a new ground of rejection nor a Reply Brief to present
substantive argument against the rejection over Gower and Chandler. See
MPEP 1207.03(b) (explaining that if appellant seeks to have a rejection
designated as a new ground of rejection, appellant must file a petition under
37 C.F.R. § 1.181).
Accordingly, we are not persuaded of error in the Examiner’s
rejection.
DECISION
The rejection of claims 4—7, 9, 10, 12—16, and 18—22 is AFFIRMED.
9 There is only one reference to “Gower et al.” in the listings of prior art
submitted by Appellant and the Examiner. See Information Disclosure
Statement by Applicant, PTO/SB08a, substitute for PTO-1449 (filed Jan. 21,
2011); PTO-892 (mailed Mar. 22, 2012); PTO-892 (mailed July 20, 2012);
PTO-892 (mailed Jan. 30, 2013) (identifying US 5,269,447 to Gower et al.);
PTO-892 (mailed Dec. 6, 2013).
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Application 12/931,006
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
9