Ex parte Bullock et al.

Board of Patent Appeals and Interferences

May 22, 1998

08192055 (B.P.A.I. May. 22, 1998)

Application for patent filed February 4, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.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 ROBERT L. BULLOCK
and BRUCE M. BULLOCK
__________
Appeal No. 96-1358
Application 08/192,0551
__________
ON BRIEF
__________
Before CALVERT, COHEN, and ABRAMS, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1-14, which constitute all of the claims of
record in the application. However, the examiner indicated in
the Answer that the subject matter recited in dependent claim 13
Appeal No. 96-1358
Application No. 08/192,055
Our understanding of this reference is based on an2
English translation thereof prepared for the United States Patent
and Trademark Office. A copy of said translation is attached
hereto.
2
defines over the prior art of record, and that this claim would
be allowable if rewritten in independent form. Therefore, claims
1-12 and 14 remain before us on appeal.
The appellants’ invention is directed to a rail car bridge
plate. The subject matter before us on appeal is illustrated by
reference to claim 1, which has been reproduced in an appendix to
the Appeal Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Doyle 5,004,287 Apr. 2, 1991
Michelin (German) 806,856 Jun. 18, 19512
THE REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by the German reference.
Claims 2-5, 8-12 and 14 stand rejected under 35 U.S.C. § 103
as being unpatentable over the German reference.
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Application No. 08/192,055
3
Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the German reference in view of Doyle.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellants are set forth in
the Appeal Brief and the Reply Brief.
OPINION
The Rejection Under Section 102
It is axiomatic that anticipation is established only when a
single prior art reference discloses, either expressly or under
the principles of inherency, each and every element of the
claimed invention. See In re Paulsen, 30 F.3d 1475, 1480-1481,
31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
Independent claim 1 is directed to a portable bridge plate
assembly attachable and removable from facing ends of rail cars.
Among the limitations recited in this claim is that there be a
plate assembly including two relatively movable telescoping load
bearing plate members, and that one end of each plate member have
means thereon for removably attaching the plate member
to the end of a rail car in a manner to prevent
movement other than pivotal movement about a horizontal
axis (emphasis added).
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Application No. 08/192,055
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As disclosed in the appellants’ specification, the “means for
attaching the plate member” comprises an end connector (36 and
46) which is fixedly joined to the ends of the plurality of
telescoping tubes which constitute each plate member, with the
end connector being attached by horizontally oriented pins (52)
to the end of the rail car. As a result, movement of the plate
member is restricted to pivoting upwardly and downwardly about
the horizontally oriented pins.
The German reference discloses a connecting walkway between
two train cars. The walkway comprises two opposed sets of inter-
digitating members removably attached at one of their ends to the
end of a rail car, and in telescoping relationship with respect
to one another. The means for removably attaching each set of
members to the rail cars comprises a horizontally oriented rod
(7) which permits pivotal movement about a horizontal axis (see
Figure 4) and a plurality of vertically oriented pins (5) which
permit pivotal movement about a vertical axis (see Figure 3).
Thus, members are free to pivot about both horizontal and
vertical axes, rather than being limited to the horizontal axis,
as is required by claim 1. This being the case, the German
reference fails to disclose the required structure, and is not
anticipatory of the subject matter recited in the claim.
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Application No. 08/192,055
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The rejection of claim 1 is not sustained.
The Rejections Under Section 103
The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness
under 35 U.S.C. § 103, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have
been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte
Clapp, 227 USPQ 972, 973 (BPAI 1985).
The first rejection under this section of the statute is
that the subject matter of claims 2-5, 8-12 and 14 would have
been obvious in view of the German reference. Claims 2-5, 7 and
8 depend from claim 1. In our discussion above with regard to
the anticipation rejection, we concluded that the German
reference failed to disclose means for attaching the plate member
to the end of the rail car which are in accordance with the
requirements of the claim. Considering the teachings of the
German reference in the light of the guidance provided by our
reviewing court regarding Section 103 does not alter the fact
that this deficiency is present in the reference. One of
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Application No. 08/192,055
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ordinary skill in the art would not have found suggestion in the
German reference for attaching the plate members in the manner
required by claim 1; to do so would be contrary to the stated
objective of the German invention, which is to provide a
connecting walkway “independent of the relative position of the
two cars” (translation, page 2). As explained in the reference,
this includes both the horizontal and vertical orientation.
The teachings of the German reference therefore fail to
establish a prima facie case of obviousness with regard to the
subject matter of claims 2-5 and 8, and we will not sustain this
rejection.
Independent claim 9 recites a portable bridge plate assembly
including a plate member formed of a plurality of spaced tubular
members “rigidly joined together at opposite ends thereof by
transverse support members.” In the German reference, the
members clearly are not rigidly joined together, as can be
readily discerned by viewing Figures 1, 2 and 3. In fact, the
system for joining the telescoping members in the reference is
the antithesis of that claimed, in that it attaches the members
together loosely by rods (14) which slide in openings in the
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members in order to allow them a great deal of movement with
respect to one another so that the walkway can operate in the
manner desired.
This being the case, the teachings of the German reference
do not establish a prima facie case of obviousness with regard to
the subject matter of claim 9, and we will not sustain the
rejection of claim 9 or, it follows, of claims 10-12 and 14,
which depend therefrom.
The last rejection offered by the examiner is that claims 6
and 7, which are in the chain of dependency from claim 1, are
unpatentable in view of the combined teachings of the German
reference and Doyle. The examiner cites Doyle for its teaching
of utilizing a spring-biased latch in the attachment means of the
German reference. Be that as it may, Doyle does not alleviate
the shortcoming we pointed out in the German reference with
regard to claim 1, and therefore these two references fail to
render the subject matter of claims 6 and 7 prima facie obvious.
The rejection of claims 6 and 7 is not sustained.
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Application No. 08/192,055
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SUMMARY
The references applied by the examiner fail to establish
that the subject matter recited in claim 1 is anticipated by the
prior art, or that the subject matter of claims 2-12 and 14 is
rendered obvious by the prior art. This being the case, we have
not sustained any of the rejections.
The decision of the examiner is reversed.
REVERSED
Ian A. Calvert )
Administrative Patent Judge )
)
)
)
Irwin Charles Cohen ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Neal E. Abrams )
Administrative Patent Judge )
Appeal No. 96-1358
Application No. 08/192,055
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Kinzer, Plyer, Dorn,
Mc Eachran & Jambor
55 East Monroe St.
Chicago, IL 60603