from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 13/507, 528.
Matthew Fountain, Mishawaka, IN, argued for appellants.
William LaMarca, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee Andrei Iancu. Also represented by Thomas L.
Casagrande, Thomas W. Krause, Joseph Matal, Coke Morgan
Newman, Moore, and Chen, Circuit Judges.
Fought and Martin Clanton (collectively, Appellants) are the
named inventors on U.S. Patent Application No. 13/507, 528,
filed on July 5, 2012. The examiner rejected claims 1 and 2
under 35 U.S.C. § 102(b), and the Patent Trial and
Appeal Board affirmed. Ex Parte Fought &
Clanton, No. 2017-000315, 2018 WL 4458741 (P.T.A.B. Aug.
28, 2018) (Board Decision). Because we hold the Board erred
in concluding "travel trailer" does not limit the
scope of the claims, we reverse and remand for further
proceedings consistent with this opinion.
'528 application relates to the construction of travel
trailers. The specification describes a preferred embodiment
of the trailer having two compartments, a living quarters and
a garage portion, separated by a wall assembly. The
application includes two claims:
1. A travel trailer having a first and second compartment
therein separated by a wall assembly which is movable so as
to alter the relative dimensions of the first and second
compartments without altering the exterior appearance of the
2. A travel trailer having a front wall, rear wall, and two
side walls with a first and a second compartment therein,
those compartments being separated by a wall assembly, the
wall assembly having a forward wall and at least one side
the side member being located adjacent to and movable in
parallel with respect to a side wall of the trailer, and
the wall assembly being moved along the longitudinal length
of the trailer by drive means positioned between the side
member and the side wall.
examiner rejected both claims under pre-AIA 35 U.S.C. §
102(b). The examiner rejected claim 1 as anticipated by U.S.
Patent No. 4, 049, 311 (Dietrich), which describes a
conventional truck trailer such as a refrigerated trailer,
and claim 2 as anticipated by U.S. Patent No. 2, 752, 864
(McDougal), which describes a bulkhead for shipping
compartments. Appellants responded to the rejections by
arguing that a "travel trailer" is "a type of
recreational vehicle." Appellants relied on U.S. Patent
Application Publication No. 2010/0096873 (Miller) as
extrinsic evidence regarding the meaning of "travel
trailer" and "recreational
vehicle." The examiner maintained his rejections.
Appellants appealed to the Board and cited Woodall's
RV Buyer's Guide (Woodall's) as
additional evidence to support their position. Appellants
also argued to the Board that the examiner erred by rejecting
the claims under § 102 without addressing the level of
ordinary skill in the art. The Board affirmed the
examiner's rejection, concluding the preamble term
"travel trailer" is a mere statement of ...