Ex Parte Brockway

Board of Patent Appeals and Interferences

Jul 14, 2011

11328391 (B.P.A.I. Jul. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT JOHN BROCKWAY
____________

Appeal 2010-003500
Application 11/328,391
Technology Center 3600
____________

Before KEN B. BARRETT, MICHAEL HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Robert John Brockway (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-5, 8-13, and 16-20 under
35 U.S.C. § 103(a) as unpatentable over Greenfield (US 5,687,799; issued
Nov. 18, 1997) in view of Carrigan (US 5,209,050; issued May 11, 1993).1
We have jurisdiction under 35 U.S.C. § 6.
We affirm.

THE INVENTION
Appellant’s invention relates to an axle guard for a compactor wheel.
Spec. 1, ll. 9-11.
Claim 1 is representative of the claimed invention (emphasis added):
1. A compactor wheel mountable on an axle of a
compaction machine, said compactor wheel comprising:
a hub mountable to an axle of a compaction machine;
a rim mounted to said hub, said rim having a face;
a plurality of compaction cleats mounted to said face of
said rim;
structure for defining a recess in the rim; and
an axle guard positioned within said recess and being
capable of moving within said recess during rotation of said
compactor wheel.

1 The Examiner withdrew the rejection of claims 6 and 7 in the Answer.
Claims 6, 7, and 21 are objected to as depending from a rejected base claim,
but indicated as being allowable if rewritten in independent form. Ans. 2.
Claims 14 and 15 were withdrawn following Appellant’s response to a
restriction requirement. See Office Action mailed Nov. 14, 2007.
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ANALYSIS
Claims 1-5 and 8-12
Appellant argues claims 1-5 and 8-12 as a group. We select
independent claim 1 as representative of the group. See 37 C.F.R.
§ 41.37(c)(1)(vii). We also address Appellant’s separate arguments
regarding claim 3. See Reply Br. 5-6.
Claim 1
The Examiner found that Greenfield disclosed all of the limitations of
claim 1 except “structure for defining a recess in the rim” and “an axle guard
positioned within said recess and being capable of moving within said recess
during rotation of said compactor wheel.” Ans. 4. The Examiner found that
Carrigan disclosed a structure for defining a recess in the rim and an axle
guard positioned in the recess and capable of moving in the recess. Id. The
Examiner also found that Greenfield disclosed an axle guard 34 that prevents
wire or cable from being entrained about the axle. Ans. 11. The Examiner
concluded that it would have been obvious to a person skilled in the art to
modify the compactor wheel of Greenfield with a free floating axle guard
positioned radially off-center of the rim and within a recess, as taught by
Carrigan, to provide predictable results for clearing accumulated debris and
refuse from the wheel assembly. Ans. 6, 11-12.
We agree with the Examiner’s conclusion of obviousness. The mere
substitution of one known element for another is generally obvious absent
evidence of unexpected results or some complexity that is beyond the level
of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). As the Supreme Court stated in KSR International v. Teleflex:
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

KSR, 550 U.S. at 417.
Appellant argues that there is no teaching or suggestion in Greenfield
or Carrigan to form a structured recess within the drum of Greenfield for
placement of an axle guard. App. Br. 7, 10.2 The Supreme Court rejected
the rigid requirement of a teaching, suggestion, or motivation to combine
known elements in order to show obviousness. KSR, 550 U.S. at 418-19.
Appellant also argues that claim 1 recites the structure for defining a
recess as a separate element from a rim and a hub, and that Carrigan does
not disclose such separate structure. App. Br. 10. The Examiner found that
Carrigan discloses these elements if claim 1 is given its broadest reasonable
interpretation consistent with the specification and limitations are not read
from the specification into claim 1. Ans. 8-10. Resolution of this issue turns
largely on claim construction.
We agree with the Examiner that Carrigan discloses structure for
defining a recess, as recited in claim 1. It is well-settled that
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in

2 In this decision, a reference to “App. Br.” is a reference to the corrected
Appeal Brief filed August 7, 2009.
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the art, taking into account whatever enlightenment by way of
definitions or otherwise may be afforded by the written
description contained in applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Although the claims are
interpreted in light of the specification, limitations from the specification
must not be read into the claims. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993). Applicants can always amend the claims to define the
invention more precisely during proceedings before the USPTO. See
Morris, 127 F.3d at 1056-57.
Appellant does not provide a claim construction for “structure for
defining a recess in the rim” or for “a rim” or “a hub” nor does Appellant
point to anything in the claims or the Specification that defines these terms.
Appellant merely asserts that claim 1 recites structure for defining a recess
as a separate element from a rim and a hub. Appellant argues that neither
Greenfield nor Carrigan discloses such structure. App. Br. 10.
We are not persuaded by Appellant’s arguments because Appellant’s
proposed construction is not consistent with the Specification. Appellant
argues that Carrigan’s support wheels are not a singular rim (App. Br. 9), but
the Specification discloses that rim 18 comprises sections 18A, 18B, and
18C. Spec. 4, ll. 24-25; fig. 2. The rim sections are spaced apart at the
recesses 40, 90 for the axle guard. See fig. 2. The structure that defines the
recess 40 is a first cone-shaped member 52, first and second ring-shaped side
plates 54, 56, a plurality of gussets 58, and a plurality of coupling bars 59.
Spec. 6, ll. 22-24; fig. 2. The first cone-shaped member 52 is weldably or
fixedly coupled to the hub 11. The first ring-shaped reinforcement plate 54
is coupled to the cone-shaped member 52 and to the rim 18 and coupling
bars 59. The second ring-shaped plate 56 is fixedly coupled to the rim and
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the coupling bars 59. Spec. 6, ll. 24-29. At most, the rim is a very small
part of the structure that defines recess 40. The other structure that defines
the recess 40 is fixedly attached to the rim and the hub. It is not a
completely separate structure, as Appellant asserts. The Specification also
discloses that recess 40 is formed by structure forming part of the wheel.
Spec. 5, ll. 9-10; fig. 2.
The second recess 90 is defined by structure 92 that comprises first
and second ring-shaped plates 94, 96 and a ring-shaped base plate 98. Spec.
7, ll. 12-13. The ring-shaped plates 94, 96 are fixedly coupled to the third
and second rim sections 18C and 18B, respectively. The base plate 98 is
fixedly coupled to the hub 11 and to the ring-shaped plates 94, 96. Spec. 7,
ll. 13-16. The rim is a very small part of the structure that defines recess 90.
The other structure that defines the recess 90 is fixedly connected to the rim
and the hub. It is not a completely separate structure, as Appellant asserts.
We agree with the Examiner that Carrigan discloses ring-shaped
sections (support wheels) that define recesses for axle guards (clearing
discs). Ans. 4-5. The support wheels define recesses in the wheel for the
clearing discs, just as the Specification discloses wheel structure that defines
recesses in the wheel for the axle guards 30, 80. Carrigan’s support wheels
have a metal rim 30 and a tire 32 mounted thereon. Carrigan, col. 3, ll. 29-
32; figs. 1, 3. Greenfield discloses a wheel having an outer rim surface 23
with teeth 24 mounted thereon. Greenfield, col. 2, l. 63 to col. 3, l. 9; fig. 2.
Appellant’s invention is an obvious combination of these teachings.
For the foregoing reasons, we find Appellant’s assertion of hindsight
to be nonpersuasive. See Reply Br. 3-4. We agree with the Examiner that a
person skilled in the art would have been motivated to include a free floating
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axle guard of Carrigan, on the compactor wheel of Greenfield to provide
predictable results for clearing debris and refuse from the wheel.
Claim 3
Claim 3 recites a compactor wheel of claim 1, where the structure for
defining a recess includes an inner base. The Examiner found that Carrigan
discloses an inner base (outer surface of element 46 in figure 5). Ans. 8.
Appellant argues that element 46 of Carrigan cannot serve as a hub and an
inner base because claims 1 and 3 recite these features as separate elements.
Reply Br. 5. Appellant also argues that Carrigan does not disclose separate
components for a hub, a rim, and an inner base. Reply Br. 5-6.
As discussed supra, the Specification discloses that the structure for
defining a recess is fixedly connected to the rim or the hub. In the case of
recess 40, the inner base comprises coupling bars 59 and plate-receiving
portions 58A of the gussets 58 that are welded to the hub 11 and rim 18.
Spec. 7, ll. 1-3; fig. 2. For recess 90, the inner base is a ring-shaped base
plate 98. The plate 98 is fixedly coupled to the hub 11 and to side plates 94,
96 that, in turn, are fixedly coupled to the third and second sections 18C,
19B of the rim 18. Spec. 7, ll. 13-16. Thus, the inner base is not separate
from the hub or the rim, as Appellant argues. We find the Examiner’s
interpretation is reasonable and consistent with the Specification.
We thus affirm the Examiner’s rejection of claims 1-5 and 8-12.

Claims 13 and 16-18
Appellant argues claims 13 and 16-18 as a group. We select
independent claim 13 as representative of the group and claims 16-18 stand
or fall with claim 13. See 37 C.F.R. § 41.37(c)(1)(vii).
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Claim 13 recites a compactor wheel comprising a rim and axle guard
“wherein said axle guard is positioned off-center of said rim.” The
Examiner found that Carrigan discloses an axle guard 40 positioned radially
off-center of the rim 46. Ans. 16. The Examiner also found the radially off-
center position of the axle guard causes it to continually move upward as the
mower moves to push accumulated grass off the wheel assembly. Ans. 17.
Appellant argues that Carrigan does not disclose an axle guard positioned
off-center of the rim of the compactor wheel. App. Br. 11-12. Appellant
also argues that Carrigan’s axle guard would not remove grass from the
wheel assembly if the axle guard was positioned off-center. App. Br. 11.
We agree with the Examiner and adopt the Examiner’s findings as our
own. The Examiner’s interpretation is reasonable and consistent with the
Specification, which discloses that the axle guard 30, 80 is radially off-set on
the rim 18. See Figs. 1-3. The axle guard extends beyond the rim on one
side more than the other and oscillates as the wheel rotates on a surface.
Spec. 5, ll. 2-4 and 9-15; Spec. 7, ll. 9-20.
Appellant appears to construe “off-center of said rim” to refer to the
position of the axle guard along the rim surface 19. Appellant does not point
to anything in the claims or Specification that supports this interpretation.
Appellant does not explain why the axle guards are located away from the
center of the rim surface. The Specification discloses that the axle guards
are positioned at an inner edge of the wheel and between the rows of cleats.
Spec. 5, ll. 11-12; 7, l. 21 to 8, l. 1.
Even if Appellant’s interpretation was correct, Carrigan discloses axle
guards that are positioned away from a center of the rim surface. As shown
in Carrigan’s figure 4, axle guards 16 and 34 are positioned on either side of
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a center element 27 of the wheel rim. In figure 5 of Carrigan, axle guard 42
and another unnumbered axle guard are positioned off-center of a center axle
guard 40. Therefore, Carrigan discloses axle guards positioned radially off-
center of the rim and away from the center of the rim surface. For these
reasons, we affirm the Examiner’s rejection of claims 13 and 16-18.

Claims 19 and 20
Appellant argues claims 19 and 20 as a group. We select claim 19 as
representative of the group and claim 20 stands or falls with claim 19. See
37 C.F.R. § 41.37(c)(1)(vii).
Claim 19 recites “structure for defining a recess formed in the rim, the
structure including a first ring-shaped reinforcement plate and a second ring-
shaped reinforcement plate spaced from said first plate.” The Examiner
found that Carrigan disclosed first and second ring-shaped plates. Ans. 4-6.
Appellant argues that the support wheels 12, 39A, 39B, 44 form the recess in
Carrigan. App. Br. 12-13. Appellant asserts that Carrigan does not teach or
suggest a separate structure that defines a recess formed in the rim, as called
for in claim 19. Id.
We agree with the Examiner that Carrigan discloses this structure if
claim 19 is given its broadest reasonable interpretation consistent with the
Specification. Carrigan’s ring-shaped support wheels are spaced apart to
define recesses for axle guards (clearing discs). Carrigan’s support wheels
define recesses in the wheel just as the Specification discloses wheel
structure that defines recesses 40, 90 in the wheel. Spec. 5, ll. 9-10; Spec. 6,
l. 22 to 7, l. 20; fig. 2.

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SUMMARY
The rejection of claims 1-5, 8-13, and 16-20 under 35 U.S.C. § 103(a)
as unpatentable over Greenfield in view of Carrigan 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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