Ex Parte Braud

Board of Patent Appeals and Interferences

Aug 12, 2011

10914228 (B.P.A.I. Aug. 12, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARCEL-CLAUDE BRAUD
____________________

Appeal 2009-010312
Application 10/914,228
Technology Center 3600
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Before WILLIAM F. PATE III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-010312
Application 10/914,228

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STATEMENT OF THE CASE
Marcel-Claude Braud (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 14-18. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to a control device that is
interactive with the hand of an operator, particularly a machine, material
operator or driver of a multifunction engine (Spec. 6:21-34).
Claim 14, reproduced below, is representative of the subject matter on
appeal.
14. A control device that is interactive with the hand of an
operator to operate a handling means, comprising a member to
be grasped in the hand of the operator and that controls the
operation of a said handling means according to a rotated
position of said member, wherein swinging of the member
forwardly causes descent of the handling means, swinging of
the member rearwardly causes rising of the handling means,
swinging of the member to the left tilts the handling means
rearwardly and swinging of the member to the right tilts the
handling means forwardly, swinging of the member in any
other direction causing a combined action proportional to the
orientation of the member relative to the axes of forward and
rearward and left and right swinging movement.

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Application 10/914,228

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THE REJECTIONS1
The following rejections by the Examiner are before us for review:
1. Claims 14-16 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Jungheinrich (DE 94 17 838, pub. Feb. 9, 1995)2.
2. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jungheinrich in view of McLoone (US 6,556,150
B1, issued Apr. 29, 2003).
ISSUE
The issue before us is whether the Examiner erred in finding that
Jungheinrich describes a control device that swings forward, backward, left
and right to operate a handling means, as called for in independent claim 14
(App. Br. 8-9).

ANALYSIS
Rejection of claims 14-16 over Jungheinrich
Claim 14 calls for, inter alia, swinging of a member that is grasped by
the hand of an operator controls the raising and lowering as well as the
tilting of the handling means, wherein swinging movement of the member to
the left or the right tilts the handling means.

1 The Examiner stated in the Examiner’s Answer that the rejection of claim
14 under 35 U.S.C. § 112, second paragraph has been withdrawn (Ans. 6).
Since the Final rejection mailed September 24, 2007, included a rejection of
claims 14-18 under 35 U.S.C. § 112, second paragraph (FR 2), we presume
that Examiner’s reference to claim 14 as opposed to claims 14-18 was a
typographical error. For purposes of this appeal, we will presume that the
rejection of claims 14-18 under 35 U.S.C. § 112, second paragraph has been
withdrawn.
2 All references in this Decision to Jungheinrich are to the translation entered
in the IFW by the Office dated May 12, 2009.
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Application 10/914,228

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The Examiner found that (1) regarding the claim 14 limitations,
“swinging of the member to the left tilts the handling means rearwardly and
swinging of the member to the right tilts the handling means forwardly, . . .
it is noted that these limitations are functional in nature and do not recite any
further structure that distinguishes over the prior art” (Ans. 3-4).
Appellant contends that (1) “[t]here is nothing wrong with defining
some part of an invention in functional terms” (App. Br. 9).
To distinguish claim 14 over the prior art, Appellant is permitted to
define a part of the invention in functional terms. In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997) (“A patent applicant is free to recite features of
an apparatus either structurally or functionally.” (citation omitted)). In other
words, if a claim limitation is directed to functional language the claim
limitation is given weight. On the other hand, if the claim limitation is
directed to intended use, it may or may not be given weight.
The Examiner found that (1) “Jungheinrich discloses all of the
claimed structure and therefore anticipates the claim” (Ans. 4), (2) “Claim
14 does not recite any structure that is not present in the prior art” (Ans. 7),
and (3) “the prior art device is a joystick that is capable of being
programmed to operate various different functions of a handling means and
is capable of performing the function” (id.).
Appellant contends that (1) Jungheinrich “is only configured to
control the limited motions of the pallet lifting fork lift of Figure 1 of
JUNGHEINRICH AG” (App. Br. 8), (2) “the controller and fork lift of
JUNHEINRICH AG fail to have all the freedoms of movement of the
member operating handling means set forth in claim 14 of the present
invention” (App. Br. 9), and (3) “the functionality set forth in claim 14
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clearly delineates the operation of the controller of the present invention in
relation to the handling means” (App. Br. 9-10).
Jungheinrich describes a joystick-like control element E (fig. 1) for
controlling all of the functions of a handling unit A, wherein a handle
member 10 (fig. 2) corresponds to the control element E, the handle member
10 comprises a rocker switch 24 and a switch knob 34 for controlling the
functions of the handling unit A (p. 5, ll. 14-16; p. 10, ll. 10-11 and 19-21; p.
11, ll. 21-23; p. 13, ll. 1-8; figs 1-2).
Jungheinrich describes that:
The control element according to the invention is, in particular,
suited for a reach truck, in which the mast, respectively the fork
is adjustable in its inclination, and the pallet also has the
possibility of lateral motion. In this case, according to one
configuration of the invention, the control element controls the
raising and lowering of the load carrying means, as well as the
reach. On the other hand, the switch knob controls the driving
direction and the side shifting of the load carrying means. If a
rocker switch is provided, it can control the mast tilt.
(P.9, ll. 9-17) (emphasis added).
Jungheinrich describes that “[m]oving of the handle forward and
backward causes lowering or raising of the load carrying means” (p. 14, ll.
9-10).
Jungheinrich is silent as to (1) whether the handling member 10 is
capable of being tilted to the left and the right, and (2) whether the tilting of
the handling member 10 can control the mast tilt. However, since
Jungheinrich describes that the handling member 10 can move forward and
backward and that “[i]f a rocker switch is provided, it can control the mast
tilt,” a person having ordinary skill in the art would not find that
Jungheinrich’s handling member 10 is capable of being tilted to the left and
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the right to control the mast tilt. Continental Can Co. v. Monsanto Co., 948
F.2d 1264, 1268 (Fed. Cir. 1991) (“To serve as an anticipation when the
reference is silent about the asserted inherent characteristic, such gap in the
reference may be filled with recourse to extrinsic evidence. Such evidence
must make clear that the missing descriptive matter is necessarily present in
the thing described in the reference.”).
Thus we find that Jungheinrich’s handling member 10 is not capable
of swinging movement to the left or the right, as called for in claim 14.
We therefore reverse the rejection of independent claim 14 and
dependent claims 15 and 16.
Rejection of claims 17 and 18 over Jungheinrich and McLoone
The Examiner has not relied on McLoone for any teaching that would
remedy the deficiency in Jungheinrich as to independent claim 14, from
which claims 17 and 18 depend (Ans. 5-6).
Thus, for the same reasons set forth supra regarding independent
claim 14, we reverse the rejection of dependent claims 17 and 18.

CONCLUSION
The Examiner has erred in finding that Jungheinrich describes a
control device that swings forward, backward, left and right to operate a
handling means, as called for in independent claim 14.

DECISION
The decision of the Examiner to reject claims 14-18 is reversed.

REVERSED
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