Ex parte Burdick et al.

Board of Patent Appeals and Interferences

Nov 17, 2000

08915706 (B.P.A.I. Nov. 17, 2000)

While the examiner has approved entry of the amendment1
after final rejection (Paper No. 6, filed August 16, 1999), we
note that this amendment has not been clerically entered.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JON S. BURDICK, JERRY D. FIDLER
and
ROGER E. LAWSON
____________
Appeal No. 2000-1470
Application No. 08/915,706
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-12. Claims 13-15, the other claims
pending in this application, have been allowed.1
Appeal No. 2000-1470 Page 2
Application No. 08/915,706
We REVERSE.
BACKGROUND
The appellants' invention relates to a track assembly. A
copy of the claims under appeal is set forth in the appendix
to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Leavitt 1,112,460 Oct. 6,
1914
Ritter, Jr. et al. 3,912,336 Oct. 14,
1975
(Ritter)
Claims 1-12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ritter in view of Leavitt.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the final rejection (Paper No.
5, mailed May 11, 1999) and the answer (Paper No. 11, mailed
December 30, 1999) for the examiner's complete reasoning in
Appeal No. 2000-1470 Page 3
Application No. 08/915,706
support of the rejection, and to the brief (Paper No. 10,
filed November 9, 1999) and reply brief (Paper No. 12, filed
February 15, 2000) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1-12 under 35
U.S.C.
§ 103. Our reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
Appeal No. 2000-1470 Page 4
Application No. 08/915,706
On page 4 of the answer, the examiner refers to a number2
(continued...)
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
The appellants argue (brief, pp. 5-9; reply brief, pp. 2-
6) that the applied prior art does not suggest the claimed
subject matter. We agree.
All the claims under appeal recite a track assembly
including a chain defined by a plurality of link members,
having a wear rail, a plurality of laterally extending pin
members, and a bushing member mounted for relative rotation
about the pin member; and an idler having teeth adapted to
engage the bushing member to substantially eliminate contact
with the wear rail. However, these limitations are not
suggested by the applied prior art for the reasons set forth2
Appeal No. 2000-1470 Page 5
Application No. 08/915,706
(...continued)2
of references of record that have not been applied in the
rejection under appeal. These references will be given no
consideration since they were not included in the statement of
the rejection. See Ex parte Raske, 28 USPQ2d 1304, 1305 (Bd.
Pat. App. & Int. 1993).
The examiner may wish to consider a search in the3
following areas: Class 474, Endless Belt Power Transmission
(continued...)
by the appellants. In that regard, we agree with the
appellants that neither Ritter or Leavitt teaches or suggests
a chain defined by a plurality of link members, having a wear
rail since an artisan would have understood the claimed phrase
"wear rail" to denote more than the bottom surface of Ritter's
links 23 (as viewed in Figure 2). Additionally, while Leavitt
does teach a drive sprocket 29 and idler sprockets 19 and 20
engaging a traction chain (composed of pivotally connected
links 21), we fail to find any teaching or suggestion in
Leavitt or Ritter for modifying Ritter's idlers 14 and 15 in
the manner proposed by the examiner to meet the above-noted
limitations. In our view, the only suggestion to arrive at
the claimed invention from the teachings of the applied prior
art stems from hindsight knowledge derived from the
appellants' own disclosure. The use of such hindsight3
Appeal No. 2000-1470 Page 6
Application No. 08/915,706
(...continued)3
Systems or Component; Class 198, Conveyors: Power-Driven; and
Class 305, Wheel Substitutes for Land Vehicles, subclasses
120+, 164, 52, 196+, 200+, & 202+.
knowledge to support an obviousness rejection under 35 U.S.C.
§ 103 is, of course, impermissible. See, for example, W. L.
Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984). It follows that we cannot sustain the examiner's
rejections of claims 1-12.
Appeal No. 2000-1470 Page 7
Application No. 08/915,706
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-12 under 35 U.S.C. § 103 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-1470 Page 8
Application No. 08/915,706
WILLIAM B. HEMING
CATERPILLAR INC
AB6490
100 N E ADAMS STREET
PEORIA, IL 61629-6490
Appeal No. 2000-1470 Page 9
Application No. 08/915,706
JVN/dl