Randy A. Bickel et al.

Patent Trials and Appeals Board

Oct 2, 2019

13998673 - (D) (P.T.A.B. Oct. 2, 2019)

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.
13/998,673 11/21/2013 Randy A. Bickel 3026-008 9824
31179 7590 10/02/2019
BOTKIN & HALL, LLP
1003 N. Hickory Road
SOUTH BEND, IN 46615
EXAMINER
SHIRSAT, VIVEK K
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
glankford@bhlawyers.net
mmarston@bhlawyers.net
nseldomridge@bhlawyers.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RANDY A. BICKEL and MATTHEW J. COPELAND

Appeal 2017-010221
Application 13/998,673
Technology Center 3700
____________

Before LINDA E. HORNER, MICHELLE R. OSINSKI, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

MITCHELL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s rejections of claims 1–13 as set forth in a Final Office Action.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Dexter
Axle Company and DexKo Global, Inc. Appeal Brief (February 6, 2017)
(“Appeal Br.”) 2.
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Final Office Action (May 4, 2016) (“Final Act.”); 37 C.F.R. § 41.31(a)(1).
We have jurisdiction under 35 U.S.C. § 6(b).
The Examiner rejected all of the pending claims as unpatentable over
combinations of prior art. The Appellant asserts that the Examiner failed to
identify the level of ordinary skill in the art applied in making the rejections,
thus, rendering the rejections unclear. Appellant did not address
substantively the rejections of the claims made by the Examiner.
For the reasons explained below, we find that the Examiner provided
sufficient explanation for the rejections to enable Appellant to respond.
Thus, we AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a hinged vent unit that may be
used on the roof of a vehicle. Specification (November 21, 2013) (“Spec.)
¶¶ 7, 38. Claims 1 and 12 are the only independent claims. Appeal Br.
(Claims Appendix) 15–17. Claim 1 illustrates the subject matter on appeal
and is reproduced below.
1. A vent comprising:
a ceiling garnish for mounting with a ceiling of a vehicle space;
a roof flange for mounting with a roof of a vehicle space and with the
ceiling garnish, opposite the ceiling garnish;
a cover member hinged to the roof flange for covering a vent opening
formed by the roof flange and ceiling garnish; and
a lever slidingly connected to the cover member and pivotally
connected to the roof flange, the lever having a handle serially
engagable [sic] with a plurality of flange detents and lockable
therein; the lever pivotally moveable upon retraction of the
handle against a biasing member force.

Appeal Br. (Claims Appendix) 15.
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EVIDENCE
Ramniceanu US 3,305,168 Feb. 21, 1967
Bickel et al. US 2007/0015450 A1 Jan. 18, 2007
Perkins et al. US 2007/0184775 A1 Aug. 9, 2007
Petrossian US 2008/0113613 A1 May 15, 2008
Hua US 2010/0056035 A1 Mar. 4, 2010

OBJECTIONS AND REJECTIONS
The Final Office Action includes an objection to claim 2 because two
different terms, “a fan” and “the air movement device,” are used to refer to
the same component of the claimed apparatus. Final Act. ¶¶ 5, 7.
The Final Office Action also includes the following rejections:
1. Claims 1, 2, 5, 7, 8, and 11 are rejected under 35 U.S.C. § 103
as being unpatentable over Hua and Petrossian;
2. Claims 3 and 4 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hua, Petrossian, and Ramniceanu;
3. Claims 6, 9, and 10 are rejected under 35 U.S.C. § 103 as
being unpatentable over Hua, Petrossian, and Perkins; and
4. Claims 12 and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bickel and Petrossian.

ANALYSIS
Level of Ordinary Skill in the Art
Appellant asserts that “[t]he primary issue in this appeal is the lack of
evidence to support the Examiner’s contention regarding the level of
ordinary skill in the art.” App. Br. 3. Specifically, Appellant contends that
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the Examiner has failed to identify the applicable level of ordinary skill in
the art or any evidence to support the level of ordinary skill in the art at the
time of the invention, and thus, has made no prima facie case for
obviousness. Id. Appellant concludes that “without the context of the ‘level
of ordinary skill,’ evaluation of the obviousness rejections is stymied and the
Office Actions are rendered unclear.” Id. at 10.2
The Examiner responds that the Manual of Patent Examining
Procedure expressly states that the level of ordinary skill in the art may be
implicit. Examiner’s Answer (May 16, 2017) (“Ans.”) 7 (citing MPEP
§ 2141(II)(C)). The Examiner also notes that the references relied upon in
rejecting the claims on appeal were publically available as of the effective
filing date of the application and assumed to be known by the hypothetical
person of ordinary skill in the art. Id. The Examiner concludes that “the
hypothetical person having ordinary skill would have been aware of the
references and there is proper motivation to combine the references found in
the rejection (although not argued).” Id. at 7–8.
Appellant replies that its express request and need for the explicit
statement of the level of ordinary skill in the art necessitates that the
Examiner provide such an express statement. Reply Brief (July 19, 2017)

2 Appellant notes that it petitioned the Director to require the Examiner to
provide the level of ordinary skill in the art and that evidence upon which
the Examiner made that determination. App. Br. 5. After noting that the
level of ordinary skill in the art may be implicit in view of the applied prior
art and that the Final Office Action appeared to be complete, the Director
dismissed the Petition as the Appellant was addressing the Examiner’s
substantive position on patentability that may only be resolved on appeal
here. Decision on Petition (Aug. 1, 2016) (“Dec. on Pet.”) 1–2.
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(“Reply Br.”) 2. In responding to the Examiner’s statement concerning the
age of the asserted references, Appellant concludes that:
As a matter of common sense, old references are often not
considered by someone designing certain products today.
Ordinarily skilled artisans in many arts will likely only look
back so far in seeking information. The USPTO itself
demonstrates this with its public search records substantively
limited to word-searchable patents since 1976. . . . Does the
“ordinary skill” relied upon by the Examiner include the skill to
research old prior art? We have no way of knowing, at this
point in time with the non-information the Examiner gave.
Id. at 3–4.
As the Examiner appropriately recognized, “[t]he person of ordinary
skill in the art is a hypothetical person who is presumed to know the relevant
prior art.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (emphasis
added). Appellant’s discussion concerning which prior art particular artisans
would likely view in designing a product similar to what is claimed is not
relevant.
In determining the level of ordinary skill in the art, we are to consider
the “type of problems encountered in the art; prior art solutions to those
problems; rapidity with which innovations are made; sophistication of the
technology; and educational level of active workers in the field.” Id.
(quoting Custom Accessories Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
962 (Fed. Cir. 1986)). “A specific finding on the level of skill in the art is
not, however, required where the prior art itself reflects an appropriate level
and a need for testimony is not shown.” Litton Indus. Products, Inc. v. Solid
State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985).
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Here we find that the prior art does itself reflect an appropriate level
of ordinary skill in the art, and the Examiner’s discussion of the prior art as
applied to the claims adequately apprised Appellant of the Examiner’s
assessment of the ordinary level of skill in the art. For instance, the
Examiner explains how the majority of the limitations of claim 1 are taught
by Hua, and that Petrossian teaches the remaining limitations. See Final Act.
¶ 10. The Examiner then explains that:
It would have been obvious to one having ordinary skill in the
art before the effective filing date to have modified the
adjustment mechanism as taught by Hua by using the
adjustment mechanism as taught by Petrossian in order to
provide a position regulating which provides simple
locking/unlocking, exact locking positions, and a lock that is
simple and economical to manufacture.
Id. (citing Petrossian ¶ 6 (stating a need in the art for “a damper positioning
lock that provides a number of exact locking positions,” “that provides for
simple locking/unlocking of the lever,” and “that is simple and economical
to manufacture”). The Examiner provides similar explanations for each
combination of prior art for each rejection. See id. ¶¶ 17, 19–21, 23–24.
Implicit in the Examiner’s analysis is a resolution of the level of ordinary
skill in the art, as evidenced, for example, by the Examiner’s reference to
Petrossian’s teachings of a lock that provides simple locking/unlocking and
is simple to manufacture. Id. ¶ 10 (citing Petrossian ¶ 6).
“[T]he PTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies 35 U.S.C. § 132, in ‘notify[ing] the applicant
. . . [by] stating the reasons for [its] rejection . . . together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” In re Jung, 637 F.3d 1356,
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1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132). “That section ‘is violated
when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.’” Id. (quoting
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)). We determine that
the Examiner’s explanations concerning what each reference teaches and
why one of ordinary skill in the art would have combined such teachings is
sufficient explanation of the level of ordinary skill in the art such that
Appellant is apprised of the Examiner’s position and is able to respond to
same. If Appellant disagrees with the Examiner’s explanation as to why one
of ordinary skill in the art would have combined the teachings of the prior
art of any combination in the manner claimed, it was incumbent upon
Appellant to respond with particularity to the substance of the Examiner’s
findings and reasoning. Because Appellant has offered no substantive
response to the stated rejections of the claims, we sustain those rejections.
Objection to Claim 2
The Examiner objected to claim 2 because the claim term “the air
movement device” lacks antecedent basis although the Examiner understood
that “the air movement device” referred to the previously stated “fan.” Final
Act. ¶ 5. The Examiner suggested that “the air movement device” could be
changed to “the fan,” or “a fan” could be changed to “an air movement
device.” Id.
Appellant responds that because the claim is understood and the
Examiner put the explanation in the record that “the air movement device”
means “a fan,” nothing more is needed. Appeal Br. 13–14. Appellant asks
that the objection be withdrawn as moot. Id. at 14.
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The objection relates to a petitionable matter and not to an appealable
matter. See, e.g., In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding
that the refusal of an examiner to enter an amendment of claims is
reviewable by petition under 37 C.F.R. § 1.181, and not by appeal to the
Board); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re
Hengehold, 440 F.2d 1394, 1403–04 (CCPA 1971)) (stating that there are
many kinds of decisions made by examiners that are not appealable to the
Board when they are not directly connected with the merits of issues
involving rejections of claims, and holding that “the kind of adverse
decisions of examiners which are reviewable by the [B]oard must be those
which relate, at least indirectly, to matters involving the rejection of
claims”)); MPEP §§706.01, 1002.02(c)(4), 1201 (the Board will not
ordinarily hear a question that is reviewable by petition). Thus, the relief
sought by Appellant would have been properly presented by a petition to the
Director instead of by appeal to this Board. Accordingly, we will not
consider this issue.
DECISION
The decision of the Examiner rejecting claims 1–13 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).
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CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 2, 5, 7, 8, 11 § 103
Hua and Petrossian
1, 2, 5, 7, 8, 11
3, 4 § 103
Hua, Petrossian,
Ramniceanu
3, 4
6, 9, 10 § 103
Hua, Petrossian,
Perkins
6, 9, 10
12, 13 § 103
Bickel, Petrossian
12, 13
Overall Outcome 1–13

AFFIRMED