Ex Parte Dulin

Board of Patent Appeals and Interferences

Mar 18, 2003

09375712 (B.P.A.I. Mar. 18, 2003)

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not written for publication and is not binding precedent of the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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICK DULIN
__________
Appeal No. 2002-2272
Application 09/375,712
___________
HEARD: March 11, 2003
___________
Before ABRAMS, FRANKFORT, and MCQUADE, Administrative Patent
Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Rick Dulin appeals the examiner’s decision (Paper No. 5) to
reject claims 1 through 16, all of the claims pending in the
application.
THE INVENTION
The invention relates to “a method [claim 16] and apparatus
[claims 1 through 15] for the compacting of a road shoulder”
(specification, page 1). A copy of claims 1 through 16 appears
in an appendix to the appellant’s main brief (Paper No. 7).
Appeal No. 2002-2272
Application 09/375,712
2
THE PRIOR ART
The references relied on by the examiner to support the
appealed rejections are:
Cronin 3,072,025 Jan. 8, 1963
Rogers et al. (Rogers) 3,554,291 Jan. 12, 1971
Foertsch 4,900,185 Feb. 13, 1990
Rossburger 5,395,182 Mar. 7, 1995
Hollon et al. (Hollon) 5,507,593 Apr. 16, 1996
Bergman 6,089,785 Jul. 18, 2000
THE REJECTIONS
Claims 1 through 3 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Rossburger.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Rossburger.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Rossburger in view of Cronin.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Rossburger in view of Foertsch.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Rossburger in view of Rogers.
Claims 9 through 12 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Bergman in view of Hollon.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Bergman in view of Hollon and Cronin.
Appeal No. 2002-2272
Application 09/375,712
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Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Bergman in view of Hollon and Rogers.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
obvious over Cronin.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 7 and 12) and to the examiner’s answer (Paper
No. 10) for the respective positions of the appellant and
examiner regarding the merits of these rejections.
DISCUSSION
I. The 35 U.S.C. § 102(b) rejection of claims 1 through 3
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). It is not necessary that the
reference teach what the subject application teaches, but only
that the claim read on something disclosed in the reference,
i.e., that all of the limitations in the claim be found in or
fully met by the reference. Kalman v. Kimberly Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
465 U.S. 1026 (1984).
Appeal No. 2002-2272
Application 09/375,712
4
Independent claim 1 recites a shoulder compacting apparatus
comprising, inter alia, a ram capable of substantially horizontal
linear movement, at least one arm supported for movement relative
to the ram, a roller rotatably supported by the at least one arm
and a second linear actuator “operably connecting said ram and
said at least one arm” whereby the roller is actuated by the
linear actuator in substantially vertical movement.
Rossburger discloses a shoulder compacting apparatus towed
by a grader. The apparatus includes a pivotable frame 1 on the
rear end of the grader, hydraulic cylinders 18 for pivotally
raising and lowering the frame relative to the grader, a carriage
22 having tubes 23 and 24 slidable on the frame, a hydraulic
cylinder 32 for moving the carriage laterally on the frame, a
pivot arm beam 40 on the carriage, and a plurality of compacting
wheels 75 depending from the pivot arm beam.
In rejecting claim 1 as being anticipated by Rossburger (see
pages 4 and 5 in the answer), the examiner reads the limitations
in the claim pertaining to the ram, the arm, the roller and the
second linear actuator on Rossburger’s carriage tubes 23, 24,
pivot arm beam 40, wheels 75 and hydraulic cylinders 18,
respectively. Even if the tubes 23, 24, pivot arm beam 40 and
wheels 75 respectively embody a ram, arm and roller as recited in
Appeal No. 2002-2272
Application 09/375,712
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the claim, neither of the hydraulic cylinders 18 is “operably
connecting” the ram (tubes 23, 24) to the arm (pivot arm beam 40)
under any reasonable interpretation of this term. As the
Rossburger reference does not disclose any other structure
meeting this limitation, it is not anticipatory with respect to
the subject matter recited in the claim.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of claim 1, and dependent claims 2 and 3, as
being anticipated by Rossburger.
II. The 35 U.S.C. § 103(a) rejections of claims 4 through 8
Since Rossburger, considered alone or in combination with
Cronin, Foertsch or Rogers, would not have rendered obvious a
shoulder compacting apparatus responding to the second linear
actuator limitation in parent claim 1, we shall not sustain the
standing 35 U.S.C. § 103(a) rejection of dependent claim 4 as
being obvious over Rossburger, the standing 35 U.S.C. § 103(a)
rejection of dependent claim 5 as being obvious over Rossburger
in view of Cronin, the standing 35 U.S.C. § 103(a) rejection of
dependent claim 6 as being obvious over Rossburger in view of
Foertsch or the standing 35 U.S.C. § 103(a) rejection of
dependent claims 7 and 8 as being obvious over Rossburger in view
of Rogers.
Appeal No. 2002-2272
Application 09/375,712
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III. The 35 U.S.C. § 103(a) rejection of claims 9 through 12
Independent claim 9 recites a shoulder preparing apparatus
comprising, inter alia, a vehicle, a material applicator
supported adjacent the rear end of the vehicle and a compacting
apparatus supported adjacent the front end of the vehicle. The
claim further defines the compacting apparatus as including a
guide member, a ram engaging the guide member, a ram linear
actuator supported by the guide member and operably connected to
the ram, a pair of laterally spaced arms supported for movement
relative to the ram, a roller rotatably supported intermediate
the pair of arms, and at least one arm linear actuator operably
connecting the ram and at least one of the pair of arms.
Bergman, the primary reference in the rejection of claim 9,
discloses a road repair arrangement comprising a dump-truck 20, a
material applicator 25 on the truck about midway along its
length, and a compacting apparatus in the form of one of the
truck’s rear wheels 34. The examiner (see pages 8 through 10 in
the answer) finds that the material applicator 25 is supported
adjacent the rear end of the vehicle as required by claim 9, but
concedes that the rear compacting wheel 34 lacks response to the
compacting apparatus limitations in the claim. To overcome this
admitted deficiency, the examiner turns to Hollon.
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Application 09/375,712
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Hollon discloses a compacting device (see Figures 11 through
14) comprising a pivotable frame 140 on the front end of a
vehicle, a carriage 132 movable along horizontal rails 142 on the
frame, a roller 130 on the carriage 132, a hydraulic cylinder 134
between the frame and the carriage for laterally moving the
carriage on the rails 142, and a hydraulic cylinder 138 between
the frame 140 and the vehicle for applying pressure on the roller
130.
In rejecting claim 9, the examiner concludes that it would
have been obvious to provide the Bergman arrangement with
Hollin’s compacting device “in order to expand the paving tasks
of the compacting device to include shoulders and embankments”
(answer, page 10). From the examiner’s perspective, Hollon’s
horizontal rails 142, carriage 132, roller 130, and hydraulic
cylinder 138 respectively constitute a ram, a pair of laterally
spaced arms, a roller, and a linear actuator operably connecting
the ram and at least one of the pair of arms as recited in claim
9.
This proposed reference combination is flawed for at least
two reasons. First, there is nothing in the combined teachings
of Bergman and Hollon which would have motivated the artisan to
expand the paving capability of the Bergman arrangement by adding
Appeal No. 2002-2272
Application 09/375,712
8
a compacting device of the sort disclosed by Hollon. This
rationale advanced by the examiner for combining the references
stems from hindsight knowledge impermissibly derived from the
appellant’s disclosure. Second, even if the combination were
effected, the result would not meet the compacting apparatus
limitations in claim 9 under any reasonable interpretation of
these limitations or of Hollon’s disclosure of the compacting
apparatus.
Additionally, and in the same vein, the examiner’s finding
that Bergman’s material applicator 25, which is midway along the
length of truck 20, is supported adjacent the rear end of the
vehicle as required by claim 9 rests on an unreasonable
interpretation of both the claim and the Bergman disclosure.
Thus, the combined teachings of Bergman and Hollon do not
justify the examiner’s conclusion that the differences between
the subject matter recited in independent claim 9 and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art. Accordingly, we shall not sustain the
standing 35 U.S.C. § 103(a) rejection of claim 9, and dependent
claims 10 through 12, as being unpatentable over Bergman in view
of Hollon.
Appeal No. 2002-2272
Application 09/375,712
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IV. The 35 U.S.C. § 103(a) rejections of claims 13 through 15
Because neither Cronin nor Rogers cures the shortcomings of
the Bergman-Hollon combination relative to the subject matter
recited in parent claim 9, we shall not sustain the standing 35
U.S.C. § 103(a) rejection of dependent claim 13 as being obvious
over Bergman in view of Hollon and Cronin, or the standing 35
U.S.C. § 103(a) rejection of dependent claims 14 and 15 as being
obvious over Bergman in view of Hollon and Rogers.
V. The 35 U.S.C. § 103(a) rejection of claim 16
Independent claim 16 recites a method of preparing road
shoulders comprising, inter alia, the steps of providing a
roller, providing at least one pivotally mounted arm rotatably
supporting the roller, providing an arm linear actuator “operably
connected” to the at least one arm, and actuating the arm linear
actuator for pivotally moving the arm and thereby vertically
moving the roller.
Cronin discloses a pavement roller attachment on the rear
end of a grading vehicle. The attachment comprises a telescopic
boom 12 mounted for movement about a vertical axis, a horizontal
axis and its own longitudinal axis, a vertically oriented piston-
cylinder unit shown in Figure 2 (but not described by Cronin)
ostensibly for moving the boom about the horizontal axis, a
Appeal No. 2002-2272
Application 09/375,712
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roller yoke 52 rotatably mounted at the distal end of the boom,
adjustable means 32, 36, 40' for fixing the rotational plane of
the roller yoke relative to the boom, a cylinder-piston unit 14
for rotating the roller yoke in this plane, and a pavement roller
58 on the roller yoke.
In rejecting claim 16 as being obvious over Cronin (see
pages 12 through 14 in the answer), the examiner finds that
Cronin’s steps of providing roller 58, providing roller yoke 52,
providing the vertically oriented piston-cylinder unit shown in
Figure 2, and actuating this piston-cylinder unit respectively
meet the foregoing method steps in the claim. While the
actuation of the vertically oriented piston-cylinder unit
seemingly would vertically move the roller 58, there is nothing
in Cronin to support the examiner’s determination that such
actuation would also pivotally move the arm or roller yoke 52 as
required by claim 16.
Thus, the examiner’s conclusion of obviousness relative to
the subject matter recited in claim 16, based as it is on a
faulty factual finding as to Cronin’s disclosure, is unsound.
Hence, we shall not sustain the standing 35 U.S.C. § 103(a)
rejection of claim 16 as being obvious over Cronin.
Appeal No. 2002-2272
Application 09/375,712
11
SUMMARY
The decision of the examiner to reject claims 1 through 16
is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
CHARLES E. FRANKFORT )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2002-2272
Application 09/375,712
12
RICK DULIN
2576 LINDSEY ROAD
SIDNEY, OH 45365