Ex Parte Cotsford

Board of Patent Appeals and Interferences

Aug 25, 2006

10210385 (B.P.A.I. Aug. 25, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN G. COTSFORD
____________

Appeal No. 2006-1855
Application No. 10/210,385
Technology Center 3600
____________

ON BRIEF
____________

Before FRANKFORT, CRAWFORD and HORNER, Administrative Patent
Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1, 4-6, 21, 24-26, and 40. Claims 3, 7-20, 23, and 27-391
are objected to as depending from a rejected base claim. Claims 2 and 22 have
been canceled. Claims 41-43 stand allowed.2

1 We note that in the appellant’s claims appendix attached to his brief, there are two claims numbered 31.
2 The examiner had objected to claims 41-43 in the final office action as being dependent on a rejected base claim.
The examiner subsequently indicated on page 2 of the Examiner’s Answer that claims 41-43 stand allowed. It is
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We reverse.

BACKGROUND
The appellant’s invention relates to a nipper-clipper assembly (30) for use on
a railroad track (1). The nipper clipper assembly (30) is mounted to a vehicle (10)
by a mounting bracket (22), and it includes a nipper assembly (50) and a clipper
assembly (120). (See Specification, Figure 1). The nipper assembly (50) is used to
lift the railroad tie against the lower side of the rails and to position it laterally so
as to center it under the rails. (Specification, page 3, lines 11-14). The clipper
assembly (120) is then used to install springs on tie plates to couple the rails to the
ties. (Specification, page 15, lines 13-15). The vehicle (10) includes a frame (12),
an engine (14), a cab (16), a control panel (20), rail wheels (18), and lifting pistons
(24) for lifting the nipper clipper assembly (30) off the track (1). (Specification,
page 5, lines 16-19 and 25-28). The nipper assembly (50) includes a vertical
lifting device (51) that is structured to lift the ties (2) and a lateral movement
device (53)3 that is structured to move the ties (2) laterally. (Specification, page 6,
lines 18-21). In one embodiment, the lateral movement of the tie (2) occurs due to
the force of gravity. (Specification, page 6, lines 21-26). In another embodiment,
the lateral movement device (53) includes a device for actively shifting the tie (2)
in a lateral direction. (See Specification, Figure 6 and page 12, line 21 – page 13,
line 11). The nipper assembly (50) further includes pad assemblies (72, 72A) that
are structured to contact the lateral ends of the tie (2). (See Specification, Figure 2
and page 14, lines 10-17). Independent claims 1, 5, 21, and 25 are representative

noted that claim 41 as listed in the appellant’s claims appendix contains bracketed text in line 2 that was previously
deleted by amendment.
3 Although reference numbers 51 and 53 are described in the detailed description, they do not appear in the figures.
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Application No. 10/210,385

of the subject matter on appeal, and a copy of these claims can be found in the
appendix to the appellant’s brief.

The examiner relies upon the following as evidence of unpatentability:
Theurer et al. (Theurer) 4,809,614 Mar. 07, 1989
Weber 5,586,502 Dec. 24, 1996
The examiner has rejected claims 1, 4-6, 21, 24-26, and 40 under 35 U.S.C.
§ 103(a) as being unpatentable over Weber in view of Theurer.
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellant regarding this appeal, we make reference to the
examiner's answer (mailed December 15, 2005) for the examiner's complete
reasoning in support of the rejection and to the appellant’s brief (filed December 1,
2005) and the appellant’s reply brief (filed December 22, 2005) for the appellant’s
arguments.

OPINION
In reaching our decision in this appeal, we have given careful consideration
to the appellant’s specification and claims, to the applied prior art, and to the
respective positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations that follow. It is our view
that, after consideration of the record before us, the evidence relied upon fails to
support the obviousness rejection made by the examiner.
We focus our review on independent claims 1, 5, 21, and 25. In the rejection
of independent claims 1, 5, 21, and 25, the examiner has determined that Weber
discloses all of the elements of the claimed assembly except for a nipper-clipper
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Application No. 10/210,385

assembly that has, in addition to a vertical lifting device, a lateral movement device
that is structured to contact the lateral ends of the ties to move the ties laterally.
(Examiner’s Answer, p. 3). To address this deficiency, the examiner relied on
Theurer’s teaching of a tie pulling device comprising, in addition to a vertical
lifting device, a lateral movement device for laterally withdrawing old ties from a
railroad track by contacting the lateral ends of the ties. (Examiner’s Answer, p. 3-
4, citing Theurer abstract, Figures 7 and 8, and column 7, lines 14-31). The
examiner contends,
It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify Weber to
include the use of a nipper-clipper assembly comprising,
in addition to a vertical lifting device, a lateral movement
device that is structured to contact the lateral ends of the
ties to move the ties laterally in his advantageous nipper-
clipper assembly as taught by Theurer et al in order to
replace the damaged ties during installation and removal
of rail clips while eliminating the need for two vehicles.
(Examiner’s Answer, p. 4).

The Examiner reasons that Theurer discloses an apparatus for installing new
ties and thus suggests the desirability of moving or shifting a tie laterally into a
correct position during installation for the purpose of inserting the spikes into the
tie. (Examiner’s Answer, p. 6). The Examiner has also determined that the
vertical lifting device of Theurer, i.e., the gripping means (111) and hook (129),
contact the “lateral ends” of the tie. The examiner has construed the claim
limitation “lateral ends” to not be limited to the lateral end faces of the tie.
(Examiner’s Answer, p. 7).
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Application No. 10/210,385

The appellant contends that Theurer fails to disclose any structure for lifting
a tie to be in contact with the underside of a rail. The appellant contends that the
lifting device of Theurer is structured to lift only one side of the tie so that the tie
breaks free from the ballast and that such action does not press the tie against the
rails. (Appellant’s Brief, p. 7). The appellant argues that to introduce a vertical
lifting motion of the tie in the Weber device would defeat the purpose of the
Theurer device, which is structured to lift the rails off the tie. (Appellant’s Brief,
p. 8). Based on this reasoning, the appellant contends that there is no motivation,
teaching, or suggestion to combine Weber and Theurer, because Weber is directed
to a nipper assembly structured to place a tie in close contact with a rail by lifting
the tie, and Theurer is directed to a railroad tie exchanger structured to separate a
tie from the overlaying rails. (Appellant’s Brief, p. 7-8).
The appellant further argues that the examiner has misconstrued the device
shown in Figure 8 of Theurer. The appellant notes that hook 129 is used to move
the tie laterally, not lift the tie. With regard to the gripping means (111), the
appellant admits that it acts as a pincer-like gripping device to contact the front and
back sides of the tie to lift it, but the appellant argues that it does not contact a
lateral face of the tie. Finally, the appellant argues that Theurer does not discuss
laterally adjusting the ties during their installation. (Appellant’s Reply Brief, p. 3).
The appellant argues that claims 1 and 21 are patentable, because there is no
motivation, teaching, or suggestion to combine Weber and Theurer, and neither
reference suggests a nipper-clipper assembly that is structured to lift the ties and
move the ties laterally and which includes a vertical lifting device that is structured
to lift the ties and a lateral movement device that is structured to move the ties
laterally, and one or more clipping assemblies. (Appellant’s Brief, p. 8-9). The
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Application No. 10/210,385

appellant argues that claims 5 and 25 are patentable, because there is no
motivation, teaching, or suggestion to combine Weber and Theurer, and neither
reference suggests a nipper-clipper assembly that is structured to contact both
lateral ends of a tie. (Appellant’s Brief, p. 9-10).
With regard to the appellant’s contention of a lack of motivation to combine
Weber and Theurer, we considered the requirement, as recently re-stated in In re
Kahn, 441 F.3d 977, 78 USPQ2d 1329 (Fed. Cir. 2006), for a showing of a
“teaching, suggestion, or motivation” to modify or combine the prior art teaching.
As to this test, the court explained,
[T]he “motivation-suggestion-teaching” test asks not
merely what the references disclose, but whether a person
of ordinary skill in the art, possessed with the
understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the
inventor, would have been led to make the combination
recited in the claims…. From this it may be determined
whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons
having ordinary skill in the art at the time of the
invention – support the legal conclusion of obviousness.

441 F.3d at 988, 78 USPQ2d at 1337 (internal citations omitted). It is not just the
explicit teachings of the art itself, but also the understandings and knowledge of
persons having ordinary skill in the art, that play a role in applying the motivation-
suggestion-teaching test.
“In considering motivation in the obviousness analysis, the problem
examined is not the specific problem solved by the invention but the general
problem that confronted the inventor before the invention was made. In re Kahn,
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Application No. 10/210,385

441 F.3d at 988, 78 USPQ2d at 1336 (citations omitted). In this case, the general
problem confronting the inventor was to make a nipper-clipper assembly that
allowed for adjustment of a railroad tie if it was laterally off-center as compared to
the rails or adjacent ties. (See specification, page 2, lines 13-18).
In view of this general problem confronting the inventor, and the teachings
of the prior art, we find that there would have been no motivation absent the
teaching of the present invention for one skilled in the art at the time of the
invention to modify Weber, which relates to a nipper-clipper assembly having only
a vertical lift device, with the teachings of Theurer, which relates to a machine for
laterally removing and replacing ties.
The tie pulling and inserting device of Theurer includes two rail-lifting
devices (133) and a tie-lifting mechanism (described below). The rail-lifting
devices (133) include carriers (121) and lifting plates (40). (Theurer, col. 10, lines
50-57). Drives (122) are actuated to lower the carriers (121) until lifting plates
(40) engage the railheads. Drives (123) then actuate the plates (40) to grip the
railheads, and drives (122) are again actuated to raise the carriers (121) and lift the
track (12) slightly off of the ballast bed. (Theurer, col. 11, lines 39-43). Once the
track has been lifted, the tie-lifting mechanism is actuated.
The tie-lifting mechanism of Theurer comprises a drive (112) that raises and
lowers a guide element (110). The guide element (110) includes a guide beam
(127) telescopically mounted therein. The guide element (110) includes a tie end
gripping means (111) having a tie clamp (39). A separate drive (114) actuates the
tie clamp (39) to open and close the clamp. Tie end gripping means (111) is
pivotally mounted, and drive (131) can be used to cause the gripping means (111)
to pivot around its pivot axis to force engaging hook (115) to engage the bottom of
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Application No. 10/210,385

old tie (47) to loosen it from the ballast bed. Once the tie has been loosened, a
drive (113) causes transverse displacement of guide beam (127) and gripping
means (111) to move the tie laterally. Guide element (110) also includes a hook
(129) on the opposite end from the gripping means (111). A drive (128) can be
actuated to cause hook (129) to engage and then push the opposite end of tie (47)
in the withdrawal direction. After the tie is fully withdrawn, the drive (112) is
actuated to lift the tie, held by the gripping means (111) and hook (129), above the
rail level. Then, drive (113) is actuated in reverse to place the tie on the rails (11).
(Theurer, Figure 8 and col. 11, lines 43-67). As such, although Theurer teaches
using the hook (129) in combination with gripping means (111) and drive (112) to
raise the tie (47) above the rail level, Theurer never teaches or suggests using this
tie-lifting mechanism to raise the tie (47) into contact with the rails (11).
Naturally, during tie removal, one would want to keep the tie separate and
apart from the rails, as described in Theurer. Likewise, during tie installation, the
tie must be kept separate and apart from the rails until the new tie has been inserted
under the rails. With regard to the use of Theurer’s system to install a tie, once the
new tie is moved laterally into position under the track, Theurer suggests actuating
the drives (122) to lower the carriers (121) to reposition the track (12) on the
ballast bed. (See Theurer, col. 11, lines 39-43 and col. 12, lines 6-9 (teaching that
the tie inserting operation proceeds substantially in reverse to the tie pulling
operation)). At this stage in the new tie installation process, Theurer teaches using
a ballast-tamping device (72) mounted on a work vehicle (5) to tamp the newly
inserted tie while the work vehicle (5) continuously advances. (Theurer, col. 12,
lines 61-66). Theurer then suggests that the work vehicle (5) may be followed by a
separate work vehicle to insert tie plates and drive spikes to fasten the ties to the
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Application No. 10/210,385

rails. As such, Theurer does not teach or suggest using the tie-lifting mechanism
of its tie pulling and inserting devices to fasten the ties to the rails. Rather, Theurer
suggests using a separate work vehicle to insert the tie plates and the spikes once
the work vehicles containing the tie pulling and inserting devices and the ballast-
tamping device have advanced down the track. As such, one skilled in the art
would not have been motivated at the time of the invention absent the teaching of
the present invention to use the tie-lifting mechanism of Theurer for the nipping
device of Weber.
We find that examiner has failed to set forth a prima facie case of
obviousness. From our perspective, the Examiner's rejection appears to be
premised on impermissible hindsight reasoning. On the record of this appeal, it is
our view that the Examiner has not carried the burden of establishing a prima facie
case of obviousness with respect to the subject matter defined by the appealed
claims.
Further, with regard to claims 5 and 25, the appellants argue that the claim
element “lateral ends,” should be interpreted to mean the lateral faces of the tie and
that neither Weber nor Theurer teach or suggest a nipper assembly constructed so
as to act on the lateral faces of a tie. (Appellants’ Brief, pages 9-10). Specifically,
both claims 5 and 25 recite, “a right side nipper assembly having a pad assembly
coupled to said main beam assembly,” “a left side nipper assembly having a pad
assembly coupled to said main beam assembly,” and “said right side pad assembly
and said left side pad assembly structured to act upon said tie by contacting the
lateral ends of said tie.”
We first construe the meaning of the term “lateral ends” as used by the
appellants in the claims. We determine the scope of the claims in patent
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applications “not solely on the basis of the claim language, but upon giving claims
their broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d
1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (quoting In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004)).
Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood by a
person of experience in the field of the invention.” Multiform Desiccants Inc. v.
Medzam Ltd., 133 F.3d 1473, 1477, 45 USPQ2d 1429, 1432 (Fed. Cir. 1998).
Although the common meaning of “lateral ends” could be construed broadly
to mean all of the exterior surfaces at the two end regions of the tie, in this case we
find that the appellant gave the term a special definition. The appellant clearly
defined the term “lateral ends” to mean the lateral end faces of the tie, when he
distinguished his invention from the prior art nipper assemblies stating, “the
invention … provides a nipper assembly structured to grip a tie by the lateral ends
as opposed to the forward and aft sides or the bottom surface.” (Specification, p. 2,
lines 25-27). This interpretation of the term “lateral ends” is consistent with all of
the embodiments shown and described in the specification, see e.g., Figures 2 and
6 in which right pad (78) contacts the right lateral face of tie (2) and left pad (78A)
contacts the left lateral face of tie (2). As such, we find that the broadest
reasonable interpretation of the term “lateral ends” as used in the claim language,
and as would be interpreted by one of ordinary skill in the art in light of the
specification, is the lateral end faces of the tie.
Neither Weber nor Theurer teach or suggest right and left side nipper
assemblies coupled to a main beam assembly and each having a pad assembly
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Application No. 10/210,385

where “said right side pad assembly and said left side pad assembly [are]
structured to act upon said tie by contacting the lateral ends of said tie.” In Weber,
the jaws (164) of rail nipper (162) clamp around and grasp the fore and aft sides of
the tie (18). (Weber, Figure 10). In Theurer, the gripping means (111) clamp onto
the fore and aft sides of the tie (47) and the hook (129) engages the opposite lateral
end of the tie. Neither Weber nor Theurer teach or suggest left and right pad
assemblies that act upon the lateral ends of the tie.
As such, the Examiner has failed to establish a prima facie case of
obviousness of claims 5 and 25, because he has failed to show where the claim
limitation of “said right side pad assembly and said left side pad assembly
structured to act upon said tie by contacting the lateral ends of said tie” is taught or
suggested in either Weber or Theurer.
Accordingly, we find that the subject matter of claims 1, 5, 21, and 25 would
not have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains in view of the
combination of Weber and Theurer. Thus, we reverse the Examiner’s rejection of
independent claims 1, 5, 21, and 25 under 35 U.S.C. § 103(a).
With regard to remaining rejected dependent claims 4, 6, 24, 26, and 40,
because these claim rejections rely upon the underlying rejection of independent
claims 1, 5, 21, and 25 based on the combination of Weber and Theurer, we must
also reverse the examiner’s rejection of these claims. See In re Fine, 837 F.2d
1071, 5 USQP2d 1596 (Fed. Cir. 1988) (If an independent claim is nonobvious
under 35 U.S.C. 103, then any claim dependent therefrom is nonobvious).

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Application No. 10/210,385

CONCLUSION
To summarize, for the reasons set forth above, we reverse the rejection of
claims 1, 4-6, 21, 24-26, and 40.
REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal No. 2006-1855 Page 13
Application No. 10/210,385

David C. Jenkins
Eckert, Seamans, Cherin & Mellott, LLC
44th Floor
600 Grant Street
Pittsburgh, PA 15219