Ex Parte Aulick

Board of Patent Appeals and Interferences

Sep 22, 2003

09552063 (B.P.A.I. Sep. 22, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte VINC L. AULICK
____________
Appeal No. 2003-1554
Application No. 09/552,063
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-19,
which are all of the claims pending in this application.
We AFFIRM-IN-PART and denominate this affirmance as a new ground of
rejection pursuant to 37 CFR § 1.196(b).
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Application No. 09/552,063
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BACKGROUND
The appellant's invention relates to a self-contained hydraulic power unit which
does not require hydraulic power supplied from an external source and which may be
used on a grain trailer or the like to power the lift cylinder on the dump unit, power the
conveyor, power the hydraulic floor or power the end gate (specification, page 1). A
copy of the claims under appeal is set forth in the appendix to the appellant's brief.
The examiner relied upon the following prior art references of record in rejecting
the appealed claims:
Bullinger 3,834,767 Sep. 10, 1974
Nelson 3,866,935 Feb. 18, 1975
Bobka 4,030,751 Jun. 21, 1977
Streeter 4,141,582 Feb. 27, 1979
Hamel 4,351,377 Sep. 28, 1982
Tharaldson 5,409,344 Apr. 25, 1995
Anderson, Jr. et al. (Anderson) 5,551,796 Sep. 3, 1996
Clark 5,839,568 Nov. 24, 1998
The following rejections are before us for review.
Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Hamel in view of Anderson, Nelson and Bullinger.
Claims 4 and 11-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hamel in view of Anderson, Nelson and Bullinger and further in view
of Streeter.
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Application No. 09/552,063
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Claims 5 and 8-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hamel in view of Anderson, Nelson and Bullinger and further in view
of Bobka.
Claims 6, 7 and 14-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hamel in view of Anderson, Nelson and Bullinger and further in view
of Tharaldson and Clark.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 13) for the examiner's complete reasoning in support of the rejections and to
the brief and reply brief (Paper Nos. 12 and 14) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Each of appellant’s claims recites a hydraulic power unit comprising, inter alia, a
hydraulic pump, a valve and a hydraulic accumulator, with the accumulator having an
inlet/outlet port which is fluidly connected both to the discharge side of the pump and to
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the inlet side of the valve. The examiner concedes on page 3 of the answer that
Hamel, the primary reference relied upon in rejecting the claims, lacks this feature. As
illustrated schematically in Figure 7, Hamel’s accumulator is connected to both the
discharge side of the pump and the inlet side of the valve. Rather than showing a single
inlet/outlet port, however, Hamel’s Figure 7 appears to show an inlet of the accumulator
connected to the discharge side of the pump and a separate outlet connected to the
inlet side of the valve.
To overcome this deficiency, the examiner points to the teaching in Anderson
(note Figure 5) of a hydraulic power unit comprising an accumulator 531 having a single
inlet/outlet line 533 fluidly connected to the discharge side of a pump 525 and the inlet
side of a solenoid valve 515. It appears to be the examiner’s position that it would have
been obvious to one of ordinary skill in the art to replace the accumulator of Hamel, with
its separate inlet and outlet ports, with an accumulator as taught by Anderson, with a
single inlet/outlet port connected to the discharge side of the pump and to the inlet side
of the valve. According to the examiner, “[t]he motivation is the known use of
equivalents” (answer, page 4).
As pointed out by appellant on page 6 of the brief, the mere fact that the prior art
could be modified as proposed by the examiner would not have made the modification
obvious unless the prior art suggested the desirability of the modification. See In re
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1 The additional references to Nelson (relied upon for its teaching of a battery-powered pump),
Bullinger (relied upon for its teaching of a wheel-driven pump for use in an auxiliary hydraulic brake
system), Streeter (relied upon for its teaching of a cylinder-operated tail gate), Bobka (relied upon for its
teaching of a cylinder-operated dump bed on a portable trailer), Tharaldson (relied upon for its teaching of
a portable grain cart auger system) and Clark (relied upon for its teaching of a reciprocating floor on a
trailer) do not overcome this deficiency.
Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Appellant (brief, page 6) is
correct that, “[i]n order for an Examiner to rely on equivalents as a rationale supporting
an obviousness rejection, the equivalency must be recognized in the prior art.” See In
re Ruff, 256 F.2d 590, 598, 118 USPQ 340, 347 (CCPA 1958). Further, rejections
based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection, the
examiner has the initial duty of supplying the requisite factual basis and may not,
because of doubts that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in the factual basis. In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968).
In this case, the examiner has not supplied any evidence1 to support his
contention that the accumulator arrangement of Anderson is a known equivalent to the
arrangement taught by Hamel. We thus conclude that the examiner’s rationale in
determining that the subject matter of appellant’s claims would have been obvious is
flawed and we cannot sustain the rejections on this basis. The examiner’s rejections of
claims 2-19 under 35 U.S.C. § 103 are therefore reversed.
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We do note, however, that claim 1 reads on Anderson in the following manner.
Anderson discloses a self-contained hydraulic power unit for powering a hydraulic
cylinder 223 comprising a hydraulic pump 525, a solenoid valve 515, a hydraulic
reservoir tank 511 and a hydraulic accumulator 531 having a single inlet/outlet port
(note line 533). As illustrated in Figure 5, the inlet side of the tank 511 is fluidly
connected to the return side of the valve 515 via line 521, the outlet side of the tank 511
is fluidly connected to the inlet side of the pump 525 via line 527, the discharge side of
the pump 525 is fluidly connected to the inlet/outlet port on the accumulator 531 via line
533, the inlet/outlet port of the accumulator 531 is fluidly connected to the inlet side of
the valve 515 via lines 533 and 535 and the outlet side of the valve 515 is fluidly
connected to the hydraulic cylinder 223 via lines 517 and 519.
As Anderson, one of the references relied upon in rejecting claim 1 under 35
U.S.C. § 103, discloses each and every limitation of claim 1, as detailed above,
Anderson anticipates claim 1 under 35 U.S.C. § 102(b). A disclosure that anticipates
under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for
"anticipation is the epitome of obviousness." Jones v. Hardy, 727 F.2d 1524, 1529, 220
USPQ 1021, 1025 (Fed. Cir. 1984). See also In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641,
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644 (CCPA 1974). Thus, we sustain the examiner's rejection of appealed claim 1 under
35 U.S.C. § 103. As is apparent from our discussion above, however, our rationale in
affirming this rejection differs substantially from the examiner’s stated rationale in
rejecting claim 1. We thus denominate our affirmance of this rejection as a new ground
of rejection under 37 CFR § 1.196(b) in order to give appellant an opportunity to
respond thereto.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-19 under 35
U.S.C. § 103 is affirmed as to claim 1 and reversed as to claims 2-19. The affirmance
of the decision to reject claim 1 is denominated as a new ground of rejection pursuant
to 37 CFR § 1.196(b) for the reasons discussed above.
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b),
which provides that, "A new ground of rejection shall not be considered final for
purposes of judicial review."
37 CFR § 1.196(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 proceedings
(§ 1.197(c)) as to the rejected claims:
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(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the application will be remanded to
the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and Interferences
upon the same record. . . .
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/vsh
Appeal No. 2003-1554
Application No. 09/552,063
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