Ex Parte Davis

Board of Patent Appeals and Interferences

Nov 7, 2011

11618859 (B.P.A.I. Nov. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/618,859 12/31/2006 Julian W. Davis II 13082-00004 6465
757 7590 11/07/2011
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
MANSEN, MICHAEL R
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
11/07/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JULIAN W. DAVIS II
____________

Appeal 2009-014850
Application 11/618,859
Technology Center 3600
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Julian W. Davis II (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-16 and 19 under
35 U.S.C. § 103(a) as being unpatentable over Belding (US 3,519,246;
issued July 7, 1970) and Dexter (US 3,244,291; issued April 5, 1966). We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
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THE INVENTION
Appellant’s claimed invention relates to a gantry crane having a fail-
proof hold lift mechanism. Spec. 1, para. [0001]. Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. An overhead crane system comprising:
a trolley, the trolley comprising:
a support span;
a drive system carried by the support span and configured
to translate at least the support span between a first position and
a second position; and
a lift mechanism carried by the support span and
configured to releasably translate a chain between a support
position and a lift position, the lift mechanism comprising:
a fixed latch configured to engage a first link of the
chain, the fixed latch having an open position and a closed
position; and
a traveling latch movably aligned relative to the fixed
latch and configured to engage a second link of the chain, the
traveling latch having an open position and a closed position;
wherein the fixed latch is in the open position and the
traveling latch is in the closed position as the lift mechanism
translates between the support position and the lift position, and
wherein the fixed latch is in the closed position and the
traveling latch is in the open position as the lift mechanism
translates between the lift position and the support position.
CONTENTIONS AND ISSUE
Appellant argues claims 1-16 and 19 as a group. App. Br. 4-6. We
select claim 1 as representative of the group, and claims 2-16 and 19 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
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The Examiner determined that Belding discloses the crane system as
called for in claim 1 except that it does not specify that the structure which
drives the support span (i.e., the trolley) is carried by the support span, and it
states only that the trolley is moved along the tracks by means of any
suitable structure. Ans. 2-3. The Examiner determined that it would have
been obvious to one of ordinary skill in the art to use a hydraulic system
carried by the trolley, as taught by Dexter, as the structure that drives the
trolley of Belding so “as to have all of the trolley actuators as hydraulic and
powered by a common power plant, as taught by Dexter.” Ans. 3. The
Examiner further explained that Belding’s teaching that the trolley “may be
moved along the tracks by means of any suitable structure” permits “any
type of known drive means to be used for the trolley” and that Dexter shows
“a known trolley drive arrangement.” Ans. 4. The Examiner stated, “[o]ne
of ordinary skill in the art can clearly combine the trolley drive means of
Dexter with the lifting device of Belding as the combination would not
change the respective functioning of the two devices. . . . The rejection
combines conventional elements and the combination would have yielded
predictable results.” Id.
Appellant contends that “Dexter explicitly teaches away from utilizing
the flexible, chain-based hoisting unit of Belding.” App. Br. 5. In particular,
Appellant argues that “the gantry type crane of Dexter has been designed to
eliminate sway and tilt and that the relied upon combination would introduce
both sway and tilt due to the inherently flexible nature of the chain itself.”
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Id. Appellant argues that the Examiner erred by not considering Dexter in
its entirety. Reply Br. 2.
The issue presented by this appeal is whether the combined teachings
of Belding and Dexter would have rendered the crane system of claim 1
obvious to a person having ordinary skill in the art at the time of Appellant’s
invention.
PRINCIPLES OF LAW
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citing United States v. Adams, 383 U.S. 39, 51-52 (1966)). When a piece of
prior art ‘suggests that the line of development flowing from the reference's
disclosure is unlikely to be productive of the result sought by the applicant’
the piece of prior art is said to ‘teach away’ from the claimed invention.”
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
(quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In Medichem,
however, the Federal Circuit further explained:
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.
See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349
n. 8 (Fed. Cir. 2000)] (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not
nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits,
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both lost and gained, should be weighed against one another.”).
Where the prior art contains “apparently conflicting” teachings
(i.e., where some references teach the combination and others
teach away from it) each reference must be considered “for its
power to suggest solutions to an artisan of ordinary skill.…
consider[ing] the degree to which one reference might
accurately discredit another.” In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991).
Id.
ANALYSIS
The primary reference to Belding is strong evidence, by itself, of
obviousness, having only a small gap between the crane system disclosed in
Belding and the claimed crane system. As determined by the Examiner, and
uncontested by Appellant, Belding discloses every element of claim 1,
including a drive system configured to translate at least the support span
between a first position and a second position. Ans. 2-3; App. Br. 4-6. The
only gap between the crane system of Belding and the claimed crane system
is that the claim calls for the drive system to be “carried by the support
span.” Belding does not disclose the particulars of the drive system because
it did not form part of the invention. Belding, col. 1, ll. 59-61 (“The gantry
jack may be moved along said tracks by means of any suitable structure not
forming a part of the invention and consequently not shown.”). Belding’s
gantry jack is designed to support an unidentified “load.” See, e.g., Belding,
col. 1, ll. 10-15.
Appellant was concerned with designing a crane system that “could
provide for high lifting capacity and/or failure proof hold capabilities while
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simultaneously utilizing a simplified mechanical and control system” that
would include “fewer points of failure.” Spec. 3, para. [0005]. In one
example, the gantry crane system 200 may be utilized to transport “a reactor
head, a reactor vessel, fuel cask or other potentially radioactive or otherwise
hazardous load.” Spec. 4, para. [0014].
Belding teaches a hoisting unit suitable for hoisting a load, and one
skilled in the art looking to make and use a hoisting unit to hoist a load at the
time of Appellant’s invention would have been led by Belding to use its
hoisting unit and to look at other gantry jacks to find conventional means of
moving a gantry trolley along tracks. As determined by the Examiner, and
uncontested by Appellant, Dexter discloses a conventional means of moving
a gantry trolley using a hydraulic motor that is carried by the trolley. Ans. 3;
App. Br. 4-6. We agree with the Examiner that the claimed invention
combines conventional elements and that the combination would have
yielded predictable results.
Dexter’s gantry crane is designed for transporting timbers
“elevationally, sidewise and/or lengthwise in a controlled fashion” and to
“hold it against sidewise swaying and lengthwise tilting during such
movement, even though the timber is not gripped precisely symmetrically
about its center of gravity.” Dexter, col. 1, ll. 53-61. Dexter discloses that
this object can be accomplished “by a gantry type of crane, the trolley of
which carries a vertically reciprocable timber gripping frame” which is
“guided for vertical movement so that it cannot sway or tilt appreciably, and
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its elevation can be adjusted as desired by a long fluid piston and cylinder
jack or actuator.” Dexter, col. 2, ll. 5-10.
We agree with the Examiner (Ans. 4) that Dexter does not teach away
from using its trolley drive arrangement with other types of lifting
arrangements. As such, Dexter does not teach away from the Examiner’s
proposed modification of the crane system of Belding with the drive
arrangement of Dexter. Further, Appellant’s argument that the Examiner’s
proposed modification would render Dexter unsuitable for its intended
purpose does not address the modification proposed by the Examiner. As
the Examiner noted (Ans. 4), “Dexter is not be modified in view of Belding”
rather “Belding is being modified in view of Dexter . . . by the addition of
the convention[al] drive means of Dexter.”
As to Appellant’s argument that the teachings of the references as a
whole would have taught away from the Examiner’s proposed combination,
upon review of the references, we find no such teaching away. The systems
of Belding and Dexter have various advantages and disadvantages, and
Appellant has not shown that a person of ordinary skill in the art seeking a
design for a gantry crane having a simplified mechanical and control system
would have been led away from the chain-based hoisting unit of Belding
based on the teaching of Dexter. Further, Appellant failed to establish that
the problem of tilting and swaying addressed by Dexter’s timber crane,
which appears to be dependent on the size and shape of the load (e.g.,
timbers) being moved, would have been an important or overriding concern
to a person of ordinary skill in the art seeking to move other types of loads,
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such as the loads set forth in Appellant’s Specification. As such, we sustain
the Examiner’s rejection of claims 1-16 and 19 under 35 U.S.C. § 103.
CONCLUSION
The combined teachings of Belding and Dexter would have rendered
the crane system of claim 1 obvious to a person having ordinary skill in the
art at the time of Appellant’s invention.
DECISION
The decision of the Examiner to reject claims 1-16 and 19 is
AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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