Ex Parte Cummings

Board of Patent Appeals and Interferences

Apr 5, 2010

10852484 (B.P.A.I. Apr. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID C. CUMMINGS
____________________

Appeal 2009-005897
Application 10/852,484
Technology Center 3600
____________________

Decided: April 5, 2010
____________________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
JOHN C. KERINS and STEVEN D.A. McCARTHY, Administrative Patent
Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 1, 3-6, 9, 13-18, 20-23, 26 and 30-32 under3
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35 U.S.C. § 103(a) as being unpatentable over Cummings (US 6,857,843 1
B2, issued Feb. 22, 2005) and Wright (US 6,938,365 B2, issued Sep. 6, 2
2005). The Examiner has indicated that claims 7, 8, 10-12, 24, 25 and 27-29 3
are objected to as being dependent on rejected base claims. The Appellant 4
has cancelled claims 2 and 19. We have jurisdiction under 35 U.S.C. § 6(b). 5
We sustain the rejections of claims 1, 3, 6, 13-18, 20, 23 and 30-32. 6
We do not sustain the rejections of claims 4, 5, 9, 21, 22 and 26. 7
Pursuant to 37 C.F.R. § 41.50(b), we enter NEW GROUNDS OF 8
REJECTION against claims 4, 5, 21 and 22, under 35 U.S.C. § 112, second 9
paragraph, as being indefinite for failing to particularly point out and 10
distinctly claim the subject matter which the Appellant regards as the 11
invention. Since the scope and meaning of claims 4, 5, 21 and 22 is 12
indefinite, we do not sustain the rejections of those claims under § 103(a). 13
See In re Steele, 305 F.2d 859, 863 (CCPA 1962); see also Enzo Biochem, 14
Inc. v. Applera Corp., Appeal No. 2009-1281 slip op. at 9-10, http://www 15
.cafc.uscourts.gov/opinions/09-1281.pdf (Fed. Cir. Mar. 26, 2010). We 16
express no opinion as to the patentability of subject matter which may fall 17
within the scope of claims 4, 5, 21 and 22. 18
Claim 1 is illustrative of the subject matter of the appealed claims: 19
1. An assembly mountable on the front 20
end of a machine comprising: 21
a dipper stick operatively connectable to the 22
front end of said machine; 23
an implement pivotally connected to said 24
dipper stick; 25
means operatively interconnecting said 26
dipper stick and said implement for pivoting said 27
implement relative to said dipper stick; and 28
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an arm member having an upper section 1
pivotally connected to an underside of said dipper 2
stick for pivotal movement about a first axis 3
substantially parallel to the pivot axis of said 4
implement, a lower section connected to said upper 5
section for pivotal movement relative to said upper 6
section abut [sic, about] a second axis lying in a 7
plane disposed substantially perpendicular to said 8
first axis, means interconnecting said arm sections 9
for pivotally biasing said lower section into 10
longitudinal alignment with said upper section 11
including means for fluidly retarding the pivotal 12
movement thereof in a plane disposed 13
perpendicular to said second axis, and means 14
suspending from the underside of said dipper stick 15
to a free end of said lower arm section, cooperable 16
with said implement when said implement is 17
pivoted toward said suspending means for 18
grappling articles therebetween. 19
Claim 18, the only other independent claim on appeal, recites an arm 20
assembly mountable on a dipper stick of a machine having “means 21
interconnecting said arm sections for pivotally biasing said lower section 22
into longitudinal alignment with said upper section including means for 23
fluidly retarding eh [sic, the] biasing action thereof in a plane disposed 24
perpendicular to said second axis.” 25
26
ISSUES 27
The Appellant presents arguments addressing the rejections of claims 28
1, 3-6, 9, 13-18, 20-23 and 30-32. (App. Br. 7-8). The Appellant also 29
presents separate arguments addressing the rejections of claims 6 and 23 30
separately (App. Br. 9); the rejections of claims 9 and 26 separately (App. 31
Br. 8-9); and the rejections of claims 4, 5, 21 and 22 separately (App. Br. 9). 32
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We address the rejections of claims 1, 3, 13-18, 20 and 30-32 as a 1
group. Independent claims 1 and 18 are representative of this first group. 2
See 37 C.F.R. § 41.37(c)(1)(vii). We address the rejections of claims 6 and 3
23 as a group. Claim 6 is representative of this second group. We address 4
the rejections of claims 9 and 26 separately and we also address claims 4, 5, 5
21 and 22 separately. 6
This appeal turns on five issues: 7
First, is Wright non-analogous art? That is, would one of 8
ordinary skill in the art reasonably have been expected to refer 9
to Wright to arrive at the subject matter of claim 1 or claim 18? 10
(See App. Br. 6-7; Reply Br. 2-3). 11
Second, do the evidence and technical reasoning 12
underlying the rejections of representative claims 1 and 18 13
adequately support the conclusion that an assembly having the 14
recited means interconnecting said arm sections for pivotally 15
biasing said lower section into longitudinal alignment with said 16
upper section, including means for fluidly retarding the pivotal 17
movement or biasing action thereof in a plane disposed 18
perpendicular to said second axis, would have been obvious? 19
(See App. Br. 7). 20
Third, do the evidence and technical reasoning 21
underlying the rejection of representative claim 6 adequately 22
support the conclusion that an assembly having a pair of the 23
recited means interconnecting said arm sections for pivotally 24
biasing said lower section into longitudinal alignment with said 25
upper section, including means for fluidly retarding the pivotal 26
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movement or biasing action thereof in a plane disposed 1
perpendicular to said second axis, would have been obvious? 2
(See App. Br. 8). 3
Fourth, are claims 4, 5, 21 and 22 indefinite for failing to 4
particularly point out and distinctly claim the subject matter 5
which the Appellant regards as the invention? 6
Fifth, do the evidence and technical reasoning underlying 7
the rejections of claims 9 and 26 adequately support the 8
conclusion that an assembly including means restricting the 9
angular displacement of said lower arm member relative to said 10
upper arm would have been obvious? (See App. Br. 7-8). 11
12
FINDINGS OF FACT 13
The record supports the following findings of fact (“FF”) by a 14
preponderance of the evidence. 15
1. Cummings discloses an excavating machine including a dipper 16
stick 10 operatively connectable to the front end of said machine; a bucket 17
11 pivotally connected to the dipper stick 10; and an actuating assembly 12 18
operatively interconnecting the dipper stick 10 and the bucket 11 for 19
pivoting the bucket 11 relative to the dipper stick 10. (Cummings, col. 2, l. 20
59 – col. 4, l. 17). 21
2. Cummings’ excavating machine also includes an arm member 22
30. Cummings’ arm member 30 has an upper arm section 33 pivotally 23
connected to an underside of the dipper stick 10 for pivotal movement about 24
a first axis substantially parallel to the pivot axis of the bucket 11. 25
Cummings’ arm member 30 also has a lower arm section 34 connected to 26
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the upper arm section 33 for pivotal movement relative to the upper arm 1
section 33 about a second axis lying in a plane disposed substantially 2
perpendicular to the first axis. (Cummings, col. 3, ll. 24-44 and figs. 1 and 3
3). 4
3. Cummings discloses means in the form of two or more chains 5
31, 32 suspending from the underside of the dipper stick 10 to a free end of 6
the lower arm section 34. The chains 31, 32 cooperate with the bucket 11 7
when the bucket 11 is pivoted toward the chains 31, 32 for grappling articles 8
between the chains 31, 32 and the bucket 11. (Cummings, col. 3, ll. 24-25; 9
col. 4, ll. 11-19; and figs. 1, 6 and 6a). 10
4. Cummings teaches that side loads often will be imposed on the 11
arm member 30 during grappling which might break or bend a unitary arm. 12
Cummings discloses that the pivotal connection between the upper and 13
lower arm sections 33, 34 permits the lower arm section 34 to displace 14
transversely under laterally applied loads without bending or breaking. 15
(Cummings, col. 4, ll. 32-38). 16
5. Cummings discloses an embodiment in which a coil spring 91 17
captured between a movable plate member or piston 87 and a fixed end wall 18
90 partially enclosing a box beam defining lower arm section 72 (34) biases 19
the lower arm section 72 (34) back into alignment with the upper arm 20
section 71 (33). (Cummings, col. 5, ll. 24-30 and col. 5, l. 51 – col. 6, l. 5). 21
6. Cummings also discloses retarding the pivotal movement of the 22
lower arm section 34 relative to the upper arm section 33. In particular, 23
Cummings discloses providing the connecting pin 40a pivotally connecting 24
the upper and lower arm sections 33, 34 with friction washers or Bellville 25
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washers 40b, 40c to retard angular displacement of the lower arm section 34 1
relative to the upper arm section 33. (Cummings, col. 4, ll. 54-60). 2
7. Cummings describes several structures for either biasing the 3
lower arm section (34 or 72) back into alignment with the upper arm section 4
(33 or 71) or retarding the pivotal movement of the lower arm section 34 5
relative to the upper arm section 33. One of ordinary skill in the art would 6
observe that each of these structures is symmetric, both with respect to the 7
direction of alignment between the upper and lower arm sections 33, 34 and 8
with respect to the plane in which the lower arm section 34 pivots. 9
8. Cummings fails to describe any mechanical stops for restricting 10
the angular displacement of the lower arm section 34 relative to the upper 11
arm section 33. 12
9. Wright discloses the use of a damping means such as a 13
hydraulic or pneumatic cylinder to limit the pendulation, that is, the pivotal 14
movement, of a tool such as a drilling augur suspended from a boom arm or 15
other form of support. (Wright, col. 1, ll. 16-26 and 37-52). 16
10. More specifically, Wright discloses a structure including a 17
frame 1 mounted on the boom arm, an elbow or upper section 2 pivotally 18
connected to frame 1 for pivotal movement about a first axis and a lower 19
section, namely, the tool 3, connected to the elbow or upper section 2 for 20
pivotal movement relative to the elbow 2 about a second axis lying in a 21
plane disposed substantially perpendicular to the first axis. (See Wright, col. 22
2, ll. 24-30 and fig. 1). 23
11. Wright discloses pivotally connecting the cylinder casing 15 of 24
a hydraulic or pneumatic damper 14 to the elbow or upper section 2 and the 25
piston rod 19 of the damper 14 to the tool or lower section 3 to damp the 26
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pendulation or pivotal movement of the tool 3 relative to the elbow 2. 1
(Wright, col. 2, l. 61 − col. 3, l. 11). 2
12. Neither Cummings nor Wright discloses a piston head provided 3
with restricted passageways therethrough including one-way valves. 4
Instead, Wright describes a system including restricted passageways which 5
extend through the retarding mechanism as a whole but not through the 6
piston or head portion in particular. (See Wright, figs. 5-7). 7
8
PRINCIPLES OF LAW 9
10
The established precedent of our reviewing court sets up a two-fold 11
test for determining whether art is analogous: “First, we decide if the 12
reference is within the field of the inventor’s endeavor. If it is not, we 13
proceed to determine whether the reference is reasonably pertinent to the 14
particular problem with which the inventor was involved.” In re Deminski, 15
796 F.2d 436, 442 (Fed. Cir. 1986). 16
The sixth paragraph of 35 U.S.C. § 112 permits expressing an element 17
of a claim for a combination as a “means” for performing a specified 18
function “without the recital of structure, material, or acts in support 19
thereof.” The sixth paragraph requires that “such claim shall be construed to 20
cover the corresponding structure, material, or acts described in the 21
specification and equivalents thereof.” 22
When an applicant uses the term “means” to describe an element of a 23
claimed apparatus which performs a recited function, the interpretation of 24
the claim is presumed to be subject to the requirement of the sixth paragraph 25
of § 112. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 26
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(Fed. Cir. 2000). This presumption can be overcome only by a showing that 1
the claim recites sufficiently definite structure to perform the recited 2
function. Id. Any interpretation of a claim subject to interpretation under 3
the sixth paragraph of § 112 which is not consistent with the requirement of 4
that paragraph is unreasonably broad. In re Donaldson, 16 F.3d 1189, 1194-5
95 (Fed. Cir. 1994). 6
Under the sixth paragraph of § 112, a limitation recited in “means-7
plus function” format covers only structure which performs the identical 8
function recited in the limitation and which is identical or equivalent to the 9
corresponding structure described in the specification. Odetics, Inc. v. 10
Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999). Equivalency is 11
an issue of fact determined by assessing whether the prior art structure 12
performs the recited function in substantially the same way as the 13
corresponding structure so as to produce substantially the same result. Id. 14
The definiteness requirement under the second paragraph of § 112 is 15
met only if “one skilled in the art would understand the bounds of the claim 16
when read in light of the specification.” Exxon Research & Eng’g Co. v. 17
United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). A claim is indefinite if 18
the language of the claim is susceptible of no reasonable interpretation. Id. 19
Alternatively, a claim under examination susceptible of more than one 20
reasonable interpretation may be indefinite if the scope of the claim differs 21
significantly depending on which of the reasonable interpretations one 22
adopts. Ex Parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008). 23
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ANALYSIS 1
First Issue 2
Wright is analogous art. In other words, one of ordinary skill in the 3
art reasonably would have been expected to refer to Wright to arrive at the 4
subject matter of claim 1 or claim 18. Assuming for purposes of this appeal 5
only that Wright may not be within the Appellant’s field of endeavor, 6
Wright is reasonably pertinent to a problem with which the Appellant was 7
involved. 8
One manner in which the subject matter of claims 1 and 18 differs 9
from the front end assembly disclosed by Cummings is in the claims’ 10
recitation of means for fluidly retarding the pivotal movement thereof in a 11
plane disposed perpendicular to said second axis. Wright provides a 12
solution to the problem of retarding the pendulation or pivotal movement of 13
a tool pivotally connected to a boom arm. (FF 9). In other words, as the 14
Examiner points out (see Ans. 5), Wright provides a solution, namely, a 15
fluid damper, for the problem of retarding the pivotal movement of a lower 16
section pivotally coupled to an upper section, the upper section being 17
pivotally coupled to a stick or arm. (see FF 10). Since the problem 18
addressed by Wright is essentially the same as a problem with which the 19
Appellant was involved, Wright is reasonably pertinent to that problem and 20
would have commended itself to the attention of one of ordinary skill in the 21
art. 22
23
Second Issue 24
Claim 1 recites “means interconnecting said arm sections for pivotally 25
biasing said lower section into longitudinal alignment with said upper 26
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section including means for fluidly retarding the pivotal movement thereof 1
in a plane disposed perpendicular to said second axis.” Claim 18 recites 2
“means interconnecting said arm sections for pivotally biasing said lower 3
section into longitudinal alignment with said upper section including means 4
for fluidly retarding eh [sic, the] biasing action thereof in a plane disposed 5
perpendicular to said second axis.” Both recitations are presumed to be 6
subject to interpretation consistent with the requirement of the sixth 7
paragraph of § 112. Neither the Appellant nor the Examiner point to any 8
structure recited in claim 1 or claim 18 which might rebut this presumption. 9
The structure disclosed in the Specification corresponding to the 10
“means interconnecting said arm sections for pivotally biasing said lower 11
section into longitudinal alignment with said upper section” is the biasing 12
mechanism 32. (See, e.g., App. Br. 3 and 5). The biasing mechanism 32 13
includes first and second sections 50, 52 pivotally connected to the upper 14
and lower arm sections 30, 31, respectively; a coil spring (not shown in the 15
drawing figures) interconnecting sections 50, 52; and a piston member (not 16
shown in the drawing figures) having a head portion received within section 17
50. (See Spec. 5-6). 18
When a lateral force is applied tending to displace the lower arm 19
section 31 out of alignment with the upper arm section 30, the coil spring of 20
the biasing mechanism 50 biases the lower arm section 31 back into 21
alignment with the upper arm section 30. As the lower arm section 31 22
angularly displaces relative to the upper arm section 30, causing the spring 23
of the biasing mechanism 32 to expand or contract, the piston of the biasing 24
mechanism displaces relative to the cylinder portion. Restriction of the flow 25
of fluid within the first and second sections 50, 52 through the piston head 26
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fluidly retards the angular displacement of the lower arm section 31 toward 1
or away from alignment with the upper arm section 30. (See Spec. 6-7). 2
Cummings discloses an excavating machine having an arm member 3
30 including upper and lower arm sections 33, 34 corresponding to the upper 4
and lower arm sections 30, 31 disclosed in the Appellant’s Specification. 5
(See FF 2). Cummings also discloses structure for biasing the lower arm 6
section 72 (34) back into alignment with the upper arm section 71 (33) and a 7
structure for retarding angular displacement of the lower arm section 34 8
relative to the upper arm section 33. (FF 5 and 6). It would have been 9
obvious to combine known structures for performing both functions on a 10
single arm member 30 in order to better control the displacement of the 11
lower arm section 34 relative to the upper arm section 33. See KSR Int’l Co. 12
v. Teleflex, Inc., 550 U.S. 398, 416 (2007)(“The combination of familiar 13
elements according to known methods is likely to be obvious when it does 14
no more than yield predictable results.”). 15
The friction or Bellville washers disclosed by Cummings (FF 6) and 16
the hydraulic or pneumatic dampers disclosed by Wright (FF 8 and 10) are 17
alternative options for retarding the angular displacement of one part 18
pivotally connected to another. As the Examiner finds (see Ans. 5) and the 19
Appellant does not appear to contest, Wright’s hydraulic or pneumatic 20
dampers are the more durable and more controllable of the two options. 21
When one of ordinary skill in the art combined known structures for biasing 22
the lower arm section 72 (34) back into alignment with the upper arm 23
section 71 (33) and retarding angular displacement of the lower arm section 24
34 relative to the upper arm section 33, it would have been obvious to 25
combine the coil spring disclosed by Cummings (see FF 5) with the more 26
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durable and more controllable hydraulic or pneumatic damper disclosed by 1
Wright. 2
The combination of the coil spring disclosed by Cummings with the 3
hydraulic or pneumatic cylinder disclosed by Wright would have performed 4
the functions of pivotally biasing the lower arm section 34 into longitudinal 5
alignment with the upper arm section 33 and fluidly retarding the pivotal 6
movement of the lower arm section 34 in a plane disposed perpendicular to 7
the second axis in substantially the same way, to achieve substantially the 8
same results, as the retarding mechanism 32 disclosed in the Specification. 9
Both would use the bias of a coil spring to perform the biasing function and 10
both would use variable pressure acting on a piston head to perform the 11
retarding function. Even assuming for purposes of this appeal only that one 12
of ordinary skill in the art had no apparent reason to combine the coil spring 13
and the hydraulic or pneumatic damper into a single unit as the Appellant’s 14
Specification discloses, the separate units disclosed in the prior art would 15
nonetheless be equivalent to the single unit disclosed in the Specification in 16
the sense of performing the same function in substantially the same way to 17
produce substantially the same result. 18
19
Third Issue 20
Furthermore, it would have been obvious to provide the assembly a 21
pair of such “means” as recited in representative claim 6. In other words, it 22
would have been obvious to provide a pair of coil springs to perform the 23
same biasing function and a pair of associated hydraulic or pneumatic 24
dampers to perform the same retarding function. 25
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Our reviewing court has held it well settled that “the mere duplication 1
of parts has no patentable significance unless a new and unexpected result is 2
produced.” In re Harza, 274 F.2d 669, 671 (CCPA 1960). The Appellant 3
claims no new and unexpected result from providing a pair of “means 4
interconnecting said arm sections for pivotally biasing said lower section 5
into longitudinal alignment with said upper section” rather than a single such 6
“means.” Indeed, as the Examiner points out, one of ordinary skill in the art 7
would have had apparent reason to combine a pair of such “means” to 8
provide a more robust and durable design. (See Ans. 6). 9
In addition, each of the structures disclosed by Cummings for either 10
biasing the lower arm section (34 or 72) back into alignment with the upper 11
arm section (33 or 71) or retarding the pivotal movement of the lower arm 12
section 34 relative to the upper arm section 33 is symmetric, both with 13
respect to the direction of alignment between the upper and lower arm 14
sections 33, 34 and with respect to the plane in which the lower arm section 15
34 pivots. (FF 7). As the Examiner points out (see Ans. 6), it would have 16
been obvious to provide a pair of coil springs to perform the same biasing 17
function and a pair of associated hydraulic or pneumatic dampers to perform 18
the same retarding function in order to maintain the symmetry or balance of 19
the structures disclosed by Cummings. In light of all of these 20
considerations, it would have been obvious to provide the assembly a pair of 21
“means interconnecting said arm sections for pivotally biasing said lower 22
section into longitudinal alignment with said upper section, each including 23
means for fluidly retarding the pivotal movement thereof.” 24
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Fourth Issue 1
Claim 4 recites “[a]n assembly according to claim 1 wherein said 2
retarding means includes a cylinder filled with a fluid and a piston having a 3
head portion displaceable in said cylinder, provided with restricted 4
passageways therethrough including one-way valves.” Claim 21 similarly 5
recites “[a]n assembly according to claim 18 wherein said retarding means 6
includes a cylinder filled with a fluid and a piston having a head portion 7
displaceable in said cylinder, provided with restricted passageways 8
therethrough including one-way valves.” Claim 5 depends from claim 4 9
and claim 22 depends from claim 21. It is unclear from the structure of 10
claims 4 and 21 what element is modified by the phrase “provided with 11
restricted passageways therethrough including one-way valves.” 12
Claims 4 and 21 each recite a retarding means, a cylinder, a piston and 13
a head portion. The phrase “provided with restricted passageways 14
therethrough including one-way valves” is separated from all of these 15
recitations by a comma. Given the grammatical structure of claims 4 and 21, 16
the phrase might modify any one or more of the retarding means, the 17
cylinder, the piston and the head portion. Wright, for example, discloses 18
restricted passageways provided through a retarding means but not through a 19
piston or head portion. (See FF 11). Therefore, the effect of the ambiguity 20
as to what element the phrase “provided with restricted passageways 21
therethrough including one-way valves” modifies significantly affects the 22
scope of claims 4, 5, 21 and 22. This ambiguity implies that claims 4, 5, 21 23
and 22 are not susceptible of a reasonable interpretation. 24
The Specification discloses a preferred embodiment in which the head 25
section or portion of the piston “has a pair of restricted passageways 26
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intercommunicating opposite sides of the cylinder, which are provided with 1
one-way valves.” (Spec., p. 6, ll. 9-11). While this sentence of the 2
Specification bears on the interpretation of claims 4 and 21, it does not 3
resolve the ambiguity. The sentence describes a preferred embodiment. A 4
preferred embodiment is not to be imported into a claim as a limitation 5
unless the claim language requires such a limitation. E-Pass Techs., Inc. v. 6
3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Notwithstanding this 7
description of a preferred embodiment in the Specification, one of ordinary 8
skill in the art would not understand the bounds of claims 4, 5, 21 and 22 9
when read in light of the specification. 10
11
Fifth Issue 12
Claims 9 and 26 each recite an assembly having a lower arm section 13
including “means restricting the angular displacement of said lower arm 14
member relative to said upper arm” member or section. The recitations of 15
both claims are presumed to be subject to interpretation consistent with the 16
requirement of the sixth paragraph of § 112. Neither the Appellant nor the 17
Examiner point to any structure recited in claim 1 or claim 18 which might 18
rebut this presumption. 19
The Examiner has not shown that the “means restricting the angular 20
displacement of said lower arm member relative to said upper arm” member 21
or section would have been obvious from the combined teachings of 22
Cummings and Wright. The means disclosed in the Specification is a 23
mechanical stop 60 with angularly displaced abutment surfaces 61, 62. 24
(Spec. 8; see also App. Br. 4). The Examiner finds that Cummings’ chains 25
31, 32 (see FF 3) “would inherently limit the range of relative pivotal 26
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movement between the upper and lower arm sections as broadly as recited in 1
claim 9 and 26.” (Ans. 6). The Examiner finds no mechanical stops 2
described in Cummings (FF 8) and provides no explanation as to how the 3
chains 31, 32 might be equivalent to the mechanical stop 60. The Examiner 4
provides no reasoning which might explain why one of ordinary skill in the 5
art might have had reason to modify Cummings’ excavating machine to 6
include such “means.” 7
8
CONCLUSIONS 9
Wright is not non-analogous art. 10
The evidence and technical reasoning underlying the rejections of 11
representative claims 1 and 18 adequately support the conclusion that an 12
assembly having the recited means interconnecting said arm sections for 13
pivotally biasing said lower section into longitudinal alignment with said 14
upper section, including means for fluidly retarding the pivotal movement or 15
biasing action thereof in a plane disposed perpendicular to said second axis, 16
would have been obvious. Therefore, we sustain the rejections of 17
representative claims 1 and 18, and of grouped dependent claims 3-5, 13-17, 18
20-22 and 30-32 under §103(a) as being unpatentable over Cummings and 19
Wright. 20
The evidence and technical reasoning underlying the rejection of 21
representative claim 6 adequately support the conclusion that an assembly 22
having a pair of the recited means interconnecting said arm sections for 23
pivotally biasing said lower section into longitudinal alignment with said 24
upper section, including means for fluidly retarding the pivotal movement or 25
biasing action thereof in a plane disposed perpendicular to said second axis, 26
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would have been obvious. Therefore, we sustain the rejections of grouped 1
claims 6 and 23 under §103(a) as being unpatentable over Cummings and 2
Wright. 3
Claims 4, 5, 21 and 22 are indefinite for failing to particularly point 4
out and distinctly claim the subject matter which the Appellant regards as 5
the invention. Therefore, we do not sustain the rejections of claims 4, 5, 21 6
and 22 under §103(a) as being unpatentable over Cummings and Wright. 7
See Steele. Instead, we enter NEW GROUNDS OF REJECTION against 8
claims 4, 5, 21 and 22 under 35 U.S.C. § 112, second paragraph, as being 9
indefinite for failing to particularly point out and distinctly claim the subject 10
matter which Appellant regards as the invention. 11
The evidence and technical reasoning underlying the rejection of 12
claims 9 and 26 do not adequately support the conclusion that an assembly 13
including means restricting the angular displacement of said lower arm 14
member relative to said upper arm would have been obvious. Therefore, we 15
do not sustain the rejections of claims 9 and 26 under §103(a) as being 16
unpatentable over Cummings and Wright. 17
18
DECISION 19
We AFFIRM the Examiner’s decision rejecting claims 1, 3, 6, 13-18, 20
20, 23 and 30-32 21
We REVERSE the Examiner’s decision rejecting claims 4, 5, 9, 21, 22
22 and 26. 23
Pursuant to 35 U.S.C. § 41.50(b), we enter NEW GROUNDS OF 24
REJECTION against claims 4, 5, 21 and 22. 25
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Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides 1
“Appellant may file a single request for rehearing within two months from 2
the date of the original decision of the Board.” 3
In addition to affirming the Examiner's rejection(s) of one or more 4
claims, under 37 C.F.R. § 41.50(b) a new ground of rejection has been 5
entered. 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection 6
pursuant to this paragraph shall not be considered final for judicial review.” 7
Regarding the new ground of rejection, the Appellant must, WITHIN 8
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of the 9
following options with respect to the new ground of rejection, in order to 10
avoid termination of the appeal as to the rejected claims: 11
(1) Reopen prosecution. Submit an appropriate 12
amendment of the claims so rejected or new 13
evidence relating to the claims so rejected, or both, 14
and have the matter reconsidered by the examiner, 15
in which event the proceeding will be remanded to 16
the examiner . . . [; or] 17
18
(2) Request rehearing. Request that the 19
proceeding be reheard under § 41.52 by the Board 20
upon the same record . . . 21
22
Should the Appellant elect to prosecute further before the Examiner 23
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek 24
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 25
the effective date of the affirmance is deferred until conclusion of the 26
prosecution before the Examiner unless, as a mere incident to the limited 27
prosecution, the affirmed rejection is overcome. 28
If the Appellant elects prosecution before the Examiner and this does 29
not result in allowance of the application, abandonment or a second appeal, 30
Appeal 2009-005897
Application 10/852,484

20
this case should be returned to the Board of Patent Appeals and Interferences 1
for final action on the affirmed rejection, including any timely request for 2
rehearing thereof. 3
No time period for taking any subsequent action in connection with 4
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 5
§ 1.136(a)(1)(iv) (2007). 6
7
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 8
9
Klh 10
11
12
NOVAK, DRUCE & QUIGG LLP 13
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WASHINGTON, DC 20005 16