Ex parte Cowan, Jr.

Board of Patent Appeals and Interferences

Dec 21, 2001

09655092 (B.P.A.I. Dec. 21, 2001)

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for publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MAYNARD COWAN, JR.
____________
Appeal No. 2001-2566
Application No. 09/655,092
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HEARD: NOVEMBER 29, 2001
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Before McQUADE, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-12, which are all of the claims pending
in this application.
BACKGROUND
The appellant's invention relates to roadways and more
particularly to the interface of vehicle wheels and an
elevated vertical roadway along which a vehicle moves, the
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Application No. 09/655,092
improved vehicle/roadway interaction allowing steeper roadway
grade, improved roadway lifetime, reduced construction and
maintenance expense, higher vehicle acceleration and
deceleration and a smoother vehicle ride (specification, page
1). Claims 1 and 12, the only independent claims on appeal,
read as follows:
1. Apparatus for the interface of a vehicle wheel
and roadway, said roadway being supported in a
substantially fixed position with respect to the
Earth by a support means, said apparatus being
apparatus for achieving superior traction between
said wheel and said roadway independently of the
weight of said vehicle, and for minimizing
oscillation of said wheel upon said roadway, said
apparatus comprising:
said roadway having at least substantially
vertical and concave sides;
a plurality of at least substantially horizontal
wheels rotating about at least substantially
vertical axles secured to said vehicle, said wheels
having convex rims rolling along said concave sides
of said roadway; and
a compression means, connected to said wheels,
for causing said wheels to be compressed against
said sides of said roadway with compression adequate
to allow a desired amount of traction to be
maintained between said wheels and said roadway,
independently of said weight of said vehicle.
12. Apparatus for the interface of a vehicle wheel
and roadway, said roadway being supported in a
substantially fixed position with respect to the
Earth by a support means, said apparatus being
apparatus for achieving superior traction between
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Application No. 09/655,092
said wheel and said roadway independently of the
weight of said vehicle, and for minimizing
oscillation of said wheel upon said roadway, said
apparatus comprising:
said roadway having at least substantially
horizontal sides;
a plurality of at least substantially vertical
wheels rotating about at least substantially
horizontal axles secured to said vehicle, said
wheels having rims rolling along said sides of said
roadway; and
a compression means, connected to said wheels,
for causing said wheels to be compressed against
said sides of said roadway with compression adequate
to allow a desired amount of traction to be
maintained between said wheels and said roadway,
independently of said weight of said vehicle.
The examiner relied upon the following prior art
references of record in rejecting the appealed claims:
Richter et al. (Richter) 5,014,864 May 14,
1991
Getsay 5,507,679 Apr. 16, 1996
Miller et al. (Miller) 5,662,045 Sep. 2, 1997
The following rejections are before us for review.
Claims 1-12 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
appellant regards as the invention.
Claims 1-8 and 10-12 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Getsay in view of Miller.
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Application No. 09/655,092
In that claim 9 depends from claim 1, it appears that the examiner’s1
intended rejection of claim 9 is based upon Getsay in view of Miller and
Richter.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Getsay in view of Richter.1
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection and
answer (Paper Nos. 8 and 13) for the examiner's complete
reasoning in support of the rejections and to the brief and
reply brief (Paper Nos. 10 and 14) for the appellant's
arguments thereagainst.
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 references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness rejection
The examiner contends that the claims are indefinite
because “[i]t is unclear if the applicant’s invention is the
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Application No. 09/655,092
features of the roadway, the features of the wheel or the
subcombination [sic: combination] thereof” (final rejection,
page 2). We do not agree. It is apparent to us that
appellant’s claims are directed to an apparatus comprising a
combination of a roadway, a support means, a plurality of
wheels and a compression means.
The examiner’s position (answer, pages 3-4) that the
claims are vague and indefinite because appellant does not
distinctly recite in the body of the claim how the three parts
(roadway, wheels and compression means) combine together is
equally untenable. The interaction or interrelationship of
the roadway, wheels and compression means is clearly set forth
in the last two paragraphs of claims 1 and 12.
For the foregoing reasons, we shall not sustain the
examiner’s rejection of claims 1-12 under the second paragraph
of 35 U.S.C. § 112.
The obviousness rejections
Each of claims 1 and 12, the only independent claims on
appeal, requires, inter alia, a roadway having sides, a
plurality of wheels rotating about axles and a compression
means, connected to the wheels, for causing the wheels to be
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Application No. 09/655,092
It is elementary that to support an obviousness rejection, all of the2
claim limitations must be taught or suggested by the prior art applied (see In
re Royka, 490 F.2d 981, 984-85, 180 USPQ 580, 582-83 (CCPA 1974)) and that all
words in a claim must be considered in judging the patentability of that claim
against the prior art (In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
(continued...)
compressed against the sides of the roadway. Getsay discloses
a track and a plurality of spindles 90, 92, 94, 96 and a
driven wheel 154 which engage the track. However, only one of
the wheels, the driven wheel 154, is resiliently urged toward
the track side by means such as a continuous rubber band 164.
Getsay does not disclose any compression means for causing any
of the spindles to be compressed against the sides of the
track. Thus, Getsay lacks a compression means for causing a
plurality of wheels to be compressed against the sides of the
roadway, as recited in claims 1 and 12.
We have carefully reviewed the teachings of Miller but we
find nothing therein which would have suggested providing a
compression means for causing a plurality of wheels (e.g., the
spindles 90, 92, 94, 96) of Getsay to be compressed against
the sides of the track or roadway. It follows then that the
combined teachings of Getsay and Miller are insufficient to
establish a prima facie case of obviousness of the subject
matter of claims 1 and 12. Accordingly, we shall not sustain2
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Application No. 09/655,092
(...continued)2
(CCPA 1970)).
the examiner’s obviousness rejection of claims 1 and 12 or
claims 2-8, 10 and 11 which depend from claim 1.
The above-noted deficiency in the combination of Getsay
and Miller finds no cure in Richter. Thus, we also shall not
sustain the examiner’s obviousness rejection of claim 9.
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Application No. 09/655,092
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-12 under 35 U.S.C. §§ 103 and 112 is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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Application No. 09/655,092
Robert W. Harris
5906 Painted Pony Drive NW
Albuquerque, NM 87120