Ex Parte Boms et alDownload PDFPatent Trial and Appeal BoardMay 31, 201612279678 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/279,678 09/18/2008 28289 7590 06/02/2016 THE WEBB LAW FIRM, P,C ONE GATEWAY CENTER 420 FT. DUQUESNE BL VD, SUITE 1200 PITTSBURGH, PA 15222 FIRST NAMED INVENTOR Manfred Borns 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3988-121298 3313 EXAMINER DA VIES, SAMUEL ALLEN ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): patents@webblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MANFRED BOMS, HANS-JOACHIM REICHE, and THEO NIJSSEN Appeal2014-003380 Application 12/279,678 Technology Center 3700 Before MICHELLE R. OSINSKI, MARK A. GEIER, and GORDON D. KINDER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Manfred Borns et al. (Appellants) 1 appeal under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is Hegenscheidt-Mfd Gmbh & Co. KG. App. Br. 2. Appeal2014-003380 Application 12/279,678 THE CLAIMED SUBJECT MATTER Claim 1, the sole independent claim on appeal is reproduced below and is representative of the claimed subject matter on appeal. 1. A mobile wheelset reprofiling device for machining wheelsets which are mounted in a bogie such that the wheelsets can rotate, compnsmg: a wheelset lathe, a service container connected to the wheelset lathe, a device on the service container for supporting one wheelset of the bogie which is currently not being reprofiled while the other wheelset is being machined on the wheelset lathe, and a common support frame mounted on rollers movable along a workshop track, wherein the wheelset lathe and the service container are mounted on the common support frame which is movable along the workshop track. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Cooper Benson Masamichi Hegenscheidt us 4,263,797 us 5,212,911 JP07-039781 A DE 203 19 063 REJECTIONS Apr. 28, 1981 May 25, 1993 Feb. 10, 1995 Mar. 4, 20042 I. Claims 1 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hegenscheidt and Cooper. Final Act. 2-3. II. Claims 2-7 and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hegenscheidt, Cooper, and Masamichi. Id. at 3-7. 2 References in this opinion to "Hegenscheidt" will be to the English- language machine translation attached as Exhibit A of the Evidence Appendix of the Appeal Brief. 2 Appeal2014-003380 Application 12/279,678 Ill. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hegenscheidt, Cooper, and Benson. Id. at 7-8. OPINION Rejection I The Examiner finds that Hegenscheidt teaches all of the limitations of independent claim 1, except for "a common support frame mounted on rollers movable along a workshop track, wherein the wheel set lathe and the service container are mounted on a common support frame which is movable along the workshop track." Final Act. 2. Instead of a common support frame upon which a wheel set lathe and service container both are mounted, Hegenscheidt teaches that wheelset 1 with tools 6 is "connected detachably" "[v]ia a coupling rod 4" to service container 5. Hegenscheidt i-f 24. The Examiner finds that Cooper teaches "a device for performing work on a railway ([F]ig. 1) with a common support frame (12) upon which multiple components serving different functions that contribute to the overall functionality of the machine are mounted." Final Act. 2-3 (citing Cooper 2:60-3:4). The Examiner concludes that it would have been obvious to one having ordinary skill in the art "to modify the device of Hegenscheidt with the teaching of Cooper in order to improve the efficiency of the device by reducing the setup and maintenance times as a result of all working components of the device being mounted together on one singular frame." Id. at 3 (citing Cooper, 1:7-12, Fig. 1). In the Answer, the Examiner further finds that "it is old and well known across many fields of endeavor and types of art to have operating systems formed by separate components or as one singular unit." Ans. 3. 3 Appeal2014-003380 Application 12/279,678 The Examiner explains that "[p ]roducts and systems designed as [separate] components give the user the ability to customize their set up or replace a components if it breaks or becomes out of date," whereas "products designed with multiple components built into one system gives the user a simplistic design that is easy to move around." Id. The Examiner concludes that market forces will prompt variations between separate components "for easy replacement or versatility" and integral components "on the same platform for ease of handling and simplicity." Id. at 15. Appellants argue that Hegenscheidt relies on a second application DE 202 14 918.8 (attached as Exhibit B of the Evidence Appendix of the Appeal Brief) (hereinafter referred to as "the '918 publication") for its description of a service container, and that the '918 publication "expressly discloses that it is particularly advantageous to connect the wheelset lathe ( 1, 15) with the service container (13) via a coupling (22)" so that service container 13 can be disconnected and "used with other machines." App. Br. 8. Appellants then argue that Hegenscheidt, through the '918 publication referenced therein, "teaches away from mounting the wheelset lathe and the service container on a common support frame" as this would be "entirely contrary to the express disclosure in the '918 publication that the service container should be separable from the wheelset lathe such that it can be used with other machines." Id. We are not persuaded that Hegenscheidt (and the '918 publication referenced therein) teach away from integrating the wheelset lathe and service container on a common support frame merely through their statement of an advantage associated with separate components, when they do not expressly criticize integration of the lathe and service container. "A 4 Appeal2014-003380 Application 12/279,678 reference does not teach away ... if it merely expresses a general preference for an alternative invention but does not 'criticize, discredit, or otherwise discourage' investigation into the invention claimed."' DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004)). Appellants also argue that "the Examiner is improperly reconstructing the claimed device using hindsight." App. Br. 7. The Examiner, however, reasons that one of ordinary skill in the art would have been led to integrate a prior art wheelset lathe and service container on a common support frame, rather than have separate components connected via a coupling rod in order to improve the efficiency of the device (Final Act. 3) and to give a "user a simplistic design that is easy to move around" (Ans. 3). 3 The Examiner further reasons that one of ordinary skill in the art would be led by his or her priorities in light of market forces to either integrate components on a single platform to achieve certain benefits or to maintain separate components to achieve certain other benefits. Ans. 15. The Examiner's reasoning is sound. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (stating "[w]hen a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another ... [i]f a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so"). Because the Examiner has articulated adequate reasoning having rational underpinnings in support of the 3 We note that in In re Larson, 340 F.2d 965, 968 (CCPA 1965), the court affirmed a rejection holding that a claimed integral structure was obvious over a separable structure of the prior art because "the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice." 5 Appeal2014-003380 Application 12/279,678 conclusion of obviousness, we determine that the combination is not based on impermissible hindsight, but rather the reasoning advanced by the Examiner. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418) ("[R ]ejections on obviousness grounds . . . [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."). Appellants also argue that "Cooper is non-analogous art to Appellant's field of endeavor." App. Br. 9. The established precedent of our reviewing Court sets up a twofold test for determining whether art is analogous: "'(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved."' In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The "field of endeavor" test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of the similarity to the structure and function of the claimed invention as disclosed in the application. Bigio, 381 F.3d at 1325-27. Appellants contend that the claimed invention relates to railway vehicle maintenance (specifically working on wheelsets of a bogie) in which operation takes place in the upper area of and/or above the railway vehicle maintenance device, and the railway vehicle maintenance device remains in position during operation. App. Br. 9. In contrast, Appellants contend that Cooper is directed to railroad track maintenance in which operation takes place in the lower area of and/or underneath the railroad track maintenance 6 Appeal2014-003380 Application 12/279,678 device, and the railroad track maintenance device moves forward during operation. Id. According to Appellants, "[t]he differences in structure and function of the devices ... far exceed any remote connection they have to the railroad industry." Id. at 10. Appellants appear to be seeking to narrowly define the field of endeavor as limited to devices for the machining of wheelsets of a rail vehicle bogie. App. Br. 9. Our reviewing court has stated: The Supreme Court's decision in [KSR] directs us to construe the scope of analogous art broadly, stating that "familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle." Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 402) (emphasis omitted). In light of the Federal Circuit's admonishment to construe the scope of analogous art broadly, we broadly define the field of endeavor as a wheel-mounted or roller-mounted mobile device moved along a track for supporting equipment used in the service of the railroad industry. See Spec. i-f 2; Cooper, 2:60-3:4. Because Cooper's device and Appellants' device are structurally similar in that they are each a mobile device moved along a track on wheels or rollers and are functionally similar in that they each support equipment used in the railroad industry, we determine that a person of ordinary skill in the art would have considered the prior art of Cooper. See Bigio, 381 F.3d at 1325-26 (affirming Board's finding that prior art toothbrush was in same field of endeavor as patentee's hairbrush where Board concluded that "the structural similarities between toothbrushes and small brushes for hair would have led one of ordinary skill in the art working in the specific field of hairbrushes to consider all similar 7 Appeal2014-003380 Application 12/279,678 brushes including toothbrushes" and that a toothbrush could be used to brush facial hair). In this case, one of ordinary skill in the art would have been led to look to other wheel-mounted or roller-mounted mobile devices moved along a track for supporting equipment used in the service of the railroad industry. We are not persuaded that one of ordinary skill in the art would be dissuaded from looking to the teachings of Cooper because it is concerned with equipment for railroad track maintenance, as opposed to railway vehicle maintenance, when they both require mobility along a track through rollers or wheels to support several different pieces of equipment in the railroad industry. Because we have determined that Cooper is within the field of the inventor's endeavor, we do not consider whether Cooper is reasonably pertinent to the particular problem with which the inventor is involved under the second part of the twofold test. Appellants also raise an additional argument in the Reply Brief that was not presented in the Appeal Brief. See Reply Br. 3 (arguing that modifying Hegenscheidt "would render it unsatisfactory for its intended purpose because of an express indication that connection by way of a coupling, rather than a common frame, is particularly advantageous for connecting various other machines to the service container"). This argument is not timely, and Appellants do not present evidence or explanation to show good cause why this argument should be considered by the Board at this time. See 37 C.F.R. § 41.41(b)(2) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer ... will not be considered by the Board ... unless good cause is shown."). 8 Appeal2014-003380 Application 12/279,678 Even if this argument were timely, we do not find it persuasive. Requiring a disconnectable coupling between the service container and other equipment is not a fair characterization of the intended purpose of Hegenscheidt. Hegenscheidt aims to address providing support for "both individual wheels of carriages, which have only single wheels or pairs of individual wheels, or single axles of bogies, which have two or more sets of wheels," with "bogies hav[ing] spacings that can be completely different for different types." Hegenscheidt i-f 4. One of ordinary skill in the art would recognize that this operation is accomplished through the design of the supports (id. i-fi-15-8), and that the means of attachment of a service container would not negatively affect this operation. Thus, we cannot agree with Appellants that a modification to attach a service container to the reprofiling device via a common support frame, rather than via a detachable coupling, would defeat the intended purpose of Hegenscheidt' s device. For the foregoing reasons, we sustain the Examiner's rejection of independent claim 1, and claim 10 for which Appellants rely on the same arguments and reasoning. See App. Br. 10. Re} ections 11-111 Appellants' arguments in support of the patentability of claims 2-9 relate to the perceived deficiencies in the combined teachings of Hegenscheidt and Cooper. App. Br. 10-11. Because we have found no such deficiencies in the combination of Hegenscheidt and Cooper, we are not persuaded of error in the Examiner's rejections of claims 2-9. Accordingly, we sustain the rejections, under 35 U.S.C. § 103(a), of: claims 2-7 and 9 as unpatentable over Hegenscheidt, Cooper, and Masamichi and claim 8 as unpatentable over Hegenscheidt, Cooper, and Benson. 9 Appeal2014-003380 Application 12/279,678 DECISION The Examiner's decision to reject claims 1-10 under 35 U.S.C. § 103(a) 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)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation