Ex Parte 5234564 et al

Board of Patent Appeals and Interferences

May 27, 2010

90008447 (B.P.A.I. May. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CONSTRUCTION EQUIPMENT COMPANY1
____________________

Appeal 2009-005265
Reexamination Control 90/008,447
Patent 5,234,5642
Technology Center 3900
____________________

Decided: May 28, 2010
____________________

Before LINDA E. HORNER, SCOTT R. BOALICK and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 Construction Equipment Company is the real party in interest (App. Br. 1).
2 Roger G. Smith, Mobile Screen Assembly for Rubble and Debris, U.S.
Patent No. 5,234,564 (filed July 24, 1992) (issued August 10, 1993).
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The Patent Owner (hereinafter "Appellant") filed a Request for
Rehearing (hereinafter "Request") of our Decision on Appeal of August 31,
2009 (hereinafter "Original Decision"), in which we affirmed the Examiner's
rejection of the appealed claims.
We grant the Appellant's Request to the extent that we consider and
address the Appellant's arguments set forth therein, but DENY the
Appellant's request to modify our Original Decision.

STATEMENT OF THE CASE
In our Original Decision, we affirmed the Examiner's Final Rejection
of claims 1, 2, 5-10, 13, 14, 19 and 20. While the Examiner's rejection of
claims 5 and 6 based on certain grounds of rejection were reversed, we
affirmed the rejection of these claims based on another ground (Original
Decision 37-38). Claims 3 and 4 were not subject to reexamination while
claims 11, 12 and 15-18 were previously canceled (App. Br. 2; Ans. 3).
In the Request, the Appellant states that we overlooked and/or
misapprehended the argument "that the Examiner's proposed combinations
discussed on pages 17-18, 21, 24-26, 33, and 39 of the Brief of Appellant
would produce an inoperative device, and thus, under In re Sponnoble, 405
F.2d 578 (CCPA 1969), requires finding that the rejected claims of this
application are nonobvious." (Request 2, 3; citing Reply Brief 3). In
Sponnoble, prior art was found to teach away from the combination
suggested because the material of the prior art was not suitable for use in the
claimed invention due to the material’s fundamental frictional properties
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which would have resulted in an inoperative device if applied to the claimed
invention. See In re Sponnoble, 405 F.2d at 587.
The Appellant states that although we considered and addressed the
Appellant's argument based on Sponnoble with respect to the combination
discussed on pages 17-18 (combination of Douglas and Eriksson), we did
not do so for the arguments in pages 21, 24-26, 33 and 39 of the Appeal
Brief which address rejections of the Examiner based on different
combinations of references (Request 3-4). The identified pages 21, 24-26,
33 and 39 of the Appeal Brief pertain to the Examiner's rejections 3, 5, 7 and
9 as set forth in the Original Decision (Original Decision 6-7). The
Appellant also again asserts that the prior art references teach away from the
proposed combinations (Request 4).

ISSUES
Hence, the following issues are raised in the present Request for
Rehearing.
1. Whether we failed to consider and address the Appellant's
argument that the prior art references teach away from the combination
suggested by the Examiner because such combination results in an
inoperable device.
2. Whether the Appellant's inoperability and teaching away
arguments necessitate modification of our Original Decision.
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ANALYSIS
We disagree with the Appellant and address the Appellant's arguments
for Examiner's rejections 3, 5, 7 and 9 as set forth in the Original Decision
(Original Decision 6-7).

Rejection 3: Claims 2 and 7 as unpatentable over the Möckeln SvH-5
Brochure and Eriksson
With respect to this rejection, the Appellant argued in its Appeal Brief
that ". . . Eriksson teaches away from modifying the screen box to incline
downwardly towards the trailer's opposite end because such a modification
would make the screening apparatus inoperable." (App. Br. 21).
However, in rejecting these claims, the Examiner stated:
. . . Möckeln does not explicitly teach that the structure that
receives material from the lower deck is a lateral conveyor
adjustable from an operational position to an inoperable
position during transport. Eriksson teaches that it is known in
the art to adjustably mount lateral conveyors on a screen
apparatus so that the lateral conveyors can be moved to an "out-
of-use" position during transport of the screening apparatus (see
column 1 line 62 to column 2 line 8). It would have been
obvious to one of ordinary skill in the art to adjustably mount
the lateral conveyors, as taught by Eriksson, because it allows
for positioning the lateral conveyors along the side of the screen
apparatus during transport and when not in use.
(Ans. 11).
Therefore, the Examiner was not suggesting a modification to the
screen box as alleged by the Appellant. Correspondingly, in affirming the
Examiner's rejection of independent claims 2 and 7, we stated:
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. . . Moreover, the Appellant’s argument that Eriksson teaches
away from modifying the screen box to incline in the manner
claimed because such a modification would make the screen
apparatus inoperable (App. Br. 21; Reply Br. 3) is not
persuasive because the Examiner does not rely on Eriksson for
disclosing an inclined screen box, but rather, for describing
adjustable conveyors (Ans. 11).
(Original Decision 22).
Hence, although we did not specifically refer to Sponnoble by name,
we addressed the Appellant's substantive argument regarding teaching away
due to inoperability, as being misdirected since the Examiner's rejection did
not suggest the modification for which the Appellant asserted inoperability.
Furthermore, our consideration of the Appellant's other arguments that
the references teach away from the suggested combination for various
reasons was set forth in the Original Decision (Original Decision 22-23).
The Appellant's Request for Rehearing does not specifically point out where
we erred in our disposition of these teaching away arguments. Therefore, in
view of the above, we do not discern any error or deficiency in our Original
Decision with respect to this rejection.

Rejection 5: Claims 1, 5, 6 and 8 as unpatentable over the Möckeln
SvH-5 and SvH-3 Brochures, the RSTI Brochure, and Eriksson
With respect to this rejection, the Appellant again argued in the
Appeal Brief that "[a]dditionally, Eriksson teaches away from modifying the
screen box to incline downwardly towards the trailer's opposite end because
such a modification would make the screening apparatus inoperable." (App.
Br. 27).
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In rejecting the argument, we stated:
. . . Moreover, the Appellant’s various arguments that the RSTI
Brochure and Eriksson teach away from various modifications
to the disclosed devices (App. Br. 25-28) are not persuasive
because the Examiner does not suggest making the
modifications argued against by the Appellant.
(Original Decision 28).
Again, the Examiner's rejection did not suggest the modification for
which the Appellant asserted inoperability, and thus, the Appellant's
teaching away argument based on inoperability and Sponnoble was
misdirected and unpersuasive. Our consideration of the Appellant's other
teaching away arguments was set forth in the Original Decision (Original
Decision 25, 28-29).
The Appellant also contends that the screen assemblies of the
Möckeln Brochures have "differences in capacity, maintenance
requirements, and applications" as compared to the trammel screen assembly
of the RSTI Brochure, these differences further teaching away from their
combination (Request 4). However, these differences are immaterial to the
rejection at hand which does not substitute the screen of the Möckeln
Brochures with the trammel screen assembly of the RSTI Brochure.
Therefore, in view of the above, we do not discern any error or
deficiency in our Original Decision with respect to this rejection.

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Rejection 7: Claims 1, 2, and 5-8 as unpatentable over the RSTI
Brochure, the Möckeln SvH-5 Brochure, and Eriksson
While the Appellant refers to page 33 of the Appeal Brief in
contending that we failed to address Sponnoble (Request 3), the argument
asserting teaching away due to inoperability of the combination was made
on page 34 (App. Br. 34). The Appellant's argument was again based on
application of Eriksson and "modifying the screen box to incline
downwardly towards the trailer's opposite end . . ." (App. Br. 34) which was
not a modification suggested in the Examiner's rejection (Ans. 16). As such,
we stated:
. . . . In addition, the Appellant again submits arguments
contending that the Möckeln Brochures and Eriksson teach
away from the claimed invention (App. Br. 32-36). However,
these arguments are unpersuasive for the reasons already
discussed supra.
(Original Decision 31).
Therefore, we sufficiently addressed the Appellant's argument while
avoiding repetition. Our consideration of the Appellant's other arguments
that the references teach away from the suggested combination for various
reasons was set forth in the Original Decision (Original Decision 31-32).
Furthermore, the Appellant's argument that "differences in capacity,
maintenance requirements, and applications" between the screen assemblies
of the Möckeln Brochures and the trammel screen assembly of the RSTI
Brochure teach away from their combination (Request 4) is unpersuasive in
that it fails to establish why one of ordinary skill would not take such factors
into consideration in making the combination suggested, or that the
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combination would require skills beyond that of ordinary skill in the art.
Appellant's arguments regarding trammel screen assembly of the RSTI
Brochure actually presented in its Appeal Brief was fully addressed in the
Original Decision (Original Decision 31-32).
Thus, in view of the above, we do not discern any error or deficiency
in our Original Decision with respect to this rejection.

Rejection 9: Claims 1, 2, and 5-8 as unpatentable over the Möckeln
SvH-5 and SvH-3 Brochures, and Royer
The Appellant refers to page 39 of the Appeal Brief in contending that
we failed to address Sponnoble (Request 3), but there does not appear to be
an inoperability argument made with respect to this rejection. To the extent
that the Appellant is referring to the argument that "Royer teaches away
from providing such a screen assembly because it would defeat the purpose
of the shredding device that is explicitly included to shred larger material
before material enters the rotating screen drum[]" (App. Br. 39), we stated
that "the Appellant’s argument is not persuasive because the Examiner’s
rejection does not propose such a modification to Royer, but instead, relies
on Royer merely for teaching the under-screen conveyor and the adjustable
conveyor (Ans. 18)." (Original Decision 34). Again, the Appellant's
argument was misdirected.
Our consideration of the Appellant's other teaching away arguments
based on Royer and/or the Möckeln Brochures was set forth in the Original
Decision (Original Decision 34). Thus, we do not discern any error or
deficiency in our Original Decision with respect to this rejection.
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CONCLUSIONS
1. We sufficiently considered and addressed in our Original
Decision, the Appellant's arguments asserting teaching away from the
suggested combinations due to inoperability.
2. The Appellant's inoperability and teaching away arguments do
not necessitate modification of our Original Decision.

DECISION
While we have reconsidered our original Decision in light of the
Appellant's Request, we decline to modify our original Decision in any
respect.

DENIED

ack

cc:

KOLISCH HARTWELL, P.C.
200 Pacific Building
520 SW Yamhill Street
Portland, OR 97204

THIRD PARTY REQUESTOR:

Appeal 2009-005265
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Patent 5,234,564

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Edwin R. Acheson, Jr.
Frost Brown Todd LLC
220 PNC Center
201 E. 5th Street
Cincinnati, OH 45202