Ex Parte BraudDownload PDFBoard of Patent Appeals and InterferencesAug 12, 201110914228 (B.P.A.I. Aug. 12, 2011) Copy Citation 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 ____________________ 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 2 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. Appeal 2009-010312 Application 10/914,228 3 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. Appeal 2009-010312 Application 10/914,228 4 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 Appeal 2009-010312 Application 10/914,228 5 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 Appeal 2009-010312 Application 10/914,228 6 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 nlk Copy with citationCopy as parenthetical citation