2019005612 (P.T.A.B. May. 15, 2020)

FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals BoardMay 15, 2020

2019005612 (P.T.A.B. May. 15, 2020)

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. 15/270,633 09/20/2016 Dean M. Jaradi 83707869 3829 121691 7590 05/15/2020 Ford Global Technologies, LLC/ King & Schickli, PLLC 800 CORPORATE DRIVE, SUITE 200 Lexington, KY 40503 EXAMINER BATTISTI, DEREK J ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 05/15/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): laura@iplaw1.net uspto@iplaw1.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEAN M. JARADI, S.M. ISKANDER FAROOQ, MOHAMMED OMAR FARUQUE, and SCOTT HOLMES DUNHAM Appeal 2019-005612 Application 15/270,633 Technology Center 3700 Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4–12, and 17–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter New Grounds of Rejection pursuant to 37 C.F.R. § 41.50(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ford Global Technologies, LLC. Br. 3. Appeal 2019-005612 Application 15/270,633 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to a spare tire presentation device and method. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A spare tire presentation device, comprising: a guide; a carriage displaced along said guide; and a spare tire support, including a tire cradle and an actuator, carried on said carriage, said spare tire support being displaceable between a first position and a second position. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Lundgren US 2,547,083 Apr. 3, 1951 Altman US 7,021,884 B1 Apr. 4, 2006 Ho KR 1998-045195A2 Aug. 15, 1998 REJECTIONS 1) Claims 1, 4–9, and 17–20 are rejected under 35 U.S.C. § 103 as unpatentable over Lundgren and Ho. 2) Claims 10–12 are rejected under 35 U.S.C. § 103 as unpatentable over Lundgren, Ho, and Altman. 2 We refer to the English language (machine) translation of Ho made of record on September 20, 2016. Appeal 2019-005612 Application 15/270,633 3 ANALYSIS Rejection 1; Claims 1, 4–9, and 17–20 The Examiner finds that Lundgren discloses most of the limitations of the spare tire presentation device of claim 1, including a tire support, but does not disclose that the tire support has an actuator. Final Act. 2. The Examiner finds that Ho discloses an actuator. Id. The Examiner considers that it would have been obvious to use an actuator in the device of Lundgren so that access to the spare tire is made easier “by enabling it to move up and down.” Id. Appellant argues that the Examiner’s rejection is based on impermissible hindsight that “use[s] the current application as a guide in combining prior art references.” Br. 12. According to Appellant, the references suggest alternative approaches and it is not apparent “how the two devices disclosed in Lundgren and Ho could be specifically modified to arrive at the claimed invention.” Id. at 14. The Examiner responds that the rejection is not based on improper hindsight because it does not include knowledge gleaned only from Appellant’s disclosure. Ans. 3. According to the Examiner, the proposed combination enables both horizontal and vertical movement, and “there is no evidence in either Lundgren or Ho that would prevent such a combination.” Id. at 3–4. The Examiner concludes that because each element was known in the art and retains its respective function, and because the combination yields predictable results with respect to vertical movement to make access easier, the rationale for the combination is supported. Id. at 4. For the following reasons, we do not sustain the Examiner’s rejection. Appeal 2019-005612 Application 15/270,633 4 In the rejection, the Examiner modifies Lundgren by adding Ho’s actuator, which according to the Examiner, enables Lundgren’s spare tire “to move up and down.” Final Act. 2. Lundgren, however, discloses that the spare tire is mounted in “tire enclosing housing 3.” Lundgren 2:34; Fig. 1. Lundgren further discloses that “housing 3 is substantially of rectangular cross-section comprising side walls, a top, and a recessed bottom portion in which the tire carrier 5 is disposed.” Id. at 2:40–43. In the operation of Lundgren, strap 31 secured to a carriage of the tire carrier is pulled to extend the carrier horizontally until the carriage clears the bumper of the vehicle, and then the carriage is able to pivot to provide access to the tire. Id. at 1:55–2:4, 4:39–47; Fig. 3. In light of this disclosure in Lundgren, we determine that the rejection is not supported by a rational underpinning because the Examiner does not adequately explain how adding Ho’s actuator enables vertical movement of the spare tire in Lundgren. In fact, no vertical movement appears possible when Lundgren’s carrier is within housing 3. Specifically, Lundgren’s horizontal movement removes the spare tire from the housing, and continues until the carriage pivots to “an easy and accessible position for removal of the tire.” Lundgren, 4:35–39. In the absence of such an explanation, it appears that the Examiner has improperly relied on hindsight by adding Ho’s actuator to Lundgren to provide movement that appears incompatible with that of Lundgren. Therefore, we do not sustain the rejection of claim 1 and claims 4–9 which depend from claim 1. The Examiner’s findings in support of the rejection of independent claims 17 and 19 are substantially similar to the findings set forth for claim 1. Final Act. 2–3. Appellant’s contentions for claim 17 and claim 19 are Appeal 2019-005612 Application 15/270,633 5 also similar. Br. 14–15. For the same reasons discussed above in connection with claim 1, we do not sustain the rejection of claim 17, claim 19, and claim 20 which depends from claim 19 as unpatentable under 35 U.S.C. § 103(a) over Lundgren and Ho. Rejection 2 Claims 10–12 depend indirectly from claim 1. Appeal Br. 18 (Claims App.). The Examiner does not rely on the additional disclosure from Altman to cure the deficiencies in Lundberg and Ho discussed above. See Final Act. 4. Consequently, we do not sustain the rejection of claims 10–12. New Grounds of Rejection We exercise our discretion under 37 C.F.R. § 41.50(b) and enter new grounds of rejection against independent claims 1 and 17 under 35 U.S.C. § 103 as unpatentable over Lundgren and Ho and independent claim 19 as unpatentable over Ho and Lundgren. Claim 1 Lundgren discloses a spare tire presentation device essentially as claimed except that Lundberg uses a strap to manually pull the spare tire from a stored (first) position to an extended (second) position. See Lundgren, 4:39–42. Specifically Lundgren discloses a spare tire presentation device (tire carrier 5), comprising a guide (guide rails 11 and 12); a carriage (intermediate frame 16–19) displaced along said guide (Lundgren, 3:30–36); and a spare tire support (third sliding frame 22–25), including a tire cradle (26), carried on said carriage, said spare tire support being displaceable between a first position (storage position – Fig. 1) and a Appeal 2019-005612 Application 15/270,633 6 second position (extended position – Fig. 3). Lundgren does not disclose that the spare tire support includes an actuator. In a similar spare tire presentation device, Ho uses an actuator (hydraulically operated telescopic cylinder 6) to mechanically move a spare tire holder (3). Ho, Abst.; Fig. 1. Based on the combined disclosures of Lundgren and Ho, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to use an actuator to move Lundberg’s spare tire from the stored (first) position to the extended (second) position to improve ease of use. “[I]t is not ‘invention’ to broadly provide a mechanical or automatic means to replace manual activity which has accomplished the same result.” In re Venner, 262 F.2d 91, 95 (CCPA 1958). A mechanical actuator as in Ho would extend the spare tire holder of Lundgren in the same manner as Ho, albeit in a horizontal direction instead of a vertical direction. Accordingly, we enter a new ground of rejection of claim 1 as unpatentable over Lundgren and Ho. Claim 17 Lundgren discloses a spare tire presentation device (tire carrier 5), comprising: a guide (guide rails 11, 12) extending along a first axis (horizontal axis – longitudinal axis of the vehicle); a carriage (intermediate frame 16–19) displaceable along said guide; and a spare tire support (third sliding frame 22–25) on said carriage. Figure 3 of Lundgren discloses at least a partial vertical movement so that the tire and carrier are positioned at an angle of approximately 45 to 60 degrees to the horizontal. Lundgren, 4:35–37, Fig. 3. Lundgren does not explicitly disclose that the spare tire support is a telescoping column displaceable along a second axis substantially perpendicular to the first axis. In a similar spare tire Appeal 2019-005612 Application 15/270,633 7 presentation device, Ho discloses a spare tire support (3) that is a telescoping column (6) displaceable along a second axis substantially perpendicular to the longitudinal (first) axis of the vehicle to raise the height of the spare tire so that a user can more easily access the spare tire. Ho, abstract; Fig. 1. Based on the combined disclosures of Lundgren and Ho, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to replace Lundgren’s pivoting spare tire support with Ho’s spare tire support that is a telescoping column displaceable along a second axis substantially perpendicular to the first axis as a simple substitution of one known spare tire support for another known spare tire support with predictable results with respect to presenting the spare tire to the user in a manner that allows easier access to the spare tire. Accordingly, we enter a new ground of rejection of claim 17 as unpatentable over Lundgren and Ho. Claim 19 Ho discloses a method of accessing a spare tire (1) from a spare tire storage well (4) in a floor of a motor vehicle, comprising: lifting said spare tire from said spare tire storage well by operation of an actuator (6) held on a carriage (3). Ho does not explicitly disclose sliding said carriage (of the) motor vehicle rearward along a guide fixed to the motor vehicle. In a similar spare tire access system, Lundgren discloses sliding a carriage (intermediate frame 16–19) of the motor vehicle rearward along a guide (guide rails 11, 12) fixed to the motor vehicle (by end pieces 13, 14, and bolt holes 15). See Lundgren, 3:16–25. In the disclosed embodiment of Lundgren, there is no wheel well, so the spare tire is moved horizontally and then angled for easier access. However, in a car with a wheel well, it would have been obvious Appeal 2019-005612 Application 15/270,633 8 before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains to slide a carriage of the motor vehicle rearward along a guide fixed to the motor vehicle, as disclosed by Lundgren, after the spare tire has been raised from the wheel well to bring the spare tire closer to the rear bumper (see Lundgren, 3:7–11) to reduce physical distress with removing and replacing a spare tire. Lundgren, 4: 64–68. Indeed, Lundgren discloses use of a spare tire carriage with a recessed compartment to save space, and that the tire carrier may be adapted to the available space. Lundgren, 2:49–3:3; 4:68–74. Accordingly, we enter a new ground of rejection of claim 19 as unpatentable over Ho and Lundgren. We leave the Examiner to address the dependent claims in light of the new grounds of rejection of the independent claims. Although we decline to reject dependent claims 4–12, 17, and 20 under our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean the remaining claims are patentable. Rather, we merely leave the patentability determination of these claims to the Examiner. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 4–9, 17–20 103 Lundgren, Ho 1, 4–9, 17–20 10–12 103 Lundgren, Ho, Altman 10–12 1, 17 103 Lundgren, Ho 1, 17 19 103 Ho, Lundgren 19 Appeal 2019-005612 Application 15/270,633 9 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground Overall Outcome: 1, 4–12, 17–20 1, 17, 19 TIME PERIOD FOR RESPONSE This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. 41.50(b)