Ex Parte Fang et alDownload PDFBoard of Patent Appeals and InterferencesSep 8, 201111538551 (B.P.A.I. Sep. 8, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte XIANG FANG and ALLEN SHOUYUN ZHANG ____________________ Appeal 2009-010669 Application 11/538,551 Technology Center 3700 ____________________ Before JOHN C. KERINS, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-010669 Application 11/538,551 2 STATEMENT OF THE CASE Xiang Fang and Allen Shouyun Zhang (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1 and 5-10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ claimed invention is directed to hydraulic jacks that are used to raise and lower loads (Spec. 1: para. [0001]). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A hydraulic jack comprising: a saddle mounted on a frame movable from a first lowered position to a second lifted position; hydraulic power means on the frame engaging said saddle adapted to raise and lower the same when actuated; lowering control means on said frame for controlling the descent of said saddle during lifting of the same in case of failure or malfunction of said power means during raising of said saddle, said frame including a pair of horizontally extending spaced side walls each having an upper edge and each having substantially vertical planer inside and outside walls and said lowering control means including a plurality of spaced grooves extending horizontally along at least one of the inside walls of one of said side walls of said frame below the upper edge thereof and forming an integral part of said inside wall, and at least one cylindrical roller mounted on said frame between said side walls directly engaging said spaced grooves and movable horizontally along said spaced grooves in a rolling motion when said saddle is raised to a lifted position; and release means engaging said lowering control means for releasing the same when said saddle is in a raised position, said release means including a pivotally mounted lever movable Appeal 2009-010669 Application 11/538,551 3 from a first stored position disengaged from said lowering control means to a second position engaging said lower control means to release the same. THE REJECTIONS The following rejections by the Examiner are before us for review: 1. Claims 1 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chung (US 5,618,029, issued Apr. 8, 1997) in view of Kameda (US 4,289,299, issued Sep. 15, 1981) and Nicolaus (US 4,505,167, issued Mar. 19, 1985). 2. Claims 5-9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chung in view of Kameda and Nicolaus, and further in view of Tibbetts (US 2,114,788, issued Apr. 19, 1938). ISSUE The issue before us is whether the Examiner erred in concluding that the combined teachings of Chung, Kameda and Nicolaus would have rendered obvious a cylindrical roller mounted on the frame between the side walls directly engaging the spaced grooves, as called for in claim 1 (Reply Br. 4). ANALYSIS Rejection of claims 1 and 10 under 35 U.S.C. § 103(a) over Chung, Kameda and Nicolaus Appellants contend that the Examiner has failed in his burden to explain any compelling reason why a person of ordinary skill would have substituted the roller of Nicolaus for the hook of Chung (Reply Br. 4). The Examiner concluded that Appeal 2009-010669 Application 11/538,551 4 [t]o provide a roller for the portion of the lowering control means of Chung to engage the spaced grooves would have been obvious for one skilled in the art at the time the invention was made in view of the disclosure of Nicolaus [, and] [t]he reason for doing this is to provide a smoother frictionless operation of the lowering control means. (Ans. 4). The Examiner opined that (1) “[t]he claims very very broadly suggest using a roller in notches and the references demonstrate that applicant's broad claim is obvious” (Ans. 6), and (2) “[t]o add complexity where it does not exist is found to be merely an attempt by applicant to ‘fog’ the simple issues that exist in this case” (id.). The Examiner, in proffering the conclusion of obviousness, has not (1) provided us with an adequate reason with rational underpinning as to why the provision of Nicolaus’ roller in Chung would “provide a smoother frictionless operation,” or (2) identified other evidence (e.g., a particular portion in Nicolaus with reference to the relevant column or page number(s) and line(s)) which would support the Examiner’s conclusion of obviousness, that is, that the provision of Nicolaus’ roller in Chung would “provide a smoother frictionless operation.” It is entirely possible that a roller would not have (1) a smooth rolling surface, and (2) a frictionless operation. Thus, we do not find any support for the Examiner’s conclusion of obviousness. The Examiner’s conclusion of obviousness is based upon a conclusory statement, which does not provide a sound basis for a conclusion of obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning Appeal 2009-010669 Application 11/538,551 5 with some rational underpinning to support the legal conclusion of obviousness.”) In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand.”) We reverse the rejection of independent claim 1 and dependent claim 10. Rejection of claims 5-9 over Chung, Kameda, Nicolaus and Tibbetts The Examiner has not relied on Tibbetts for any teaching that would remedy the deficiency in the underlying rejection based on Chung, Kameda and Nicolaus (Ans. 4-5). Thus, for the same reasons set forth supra regarding independent claim 1, we reverse the rejection of dependent claims 5-9. CONCLUSION The Examiner has erred in concluding that the combined teachings of Chung, Kameda and Nicolaus would have rendered obvious a cylindrical roller mounted on the frame between the side walls directly engaging the spaced grooves, as called for in claim 1. DECISION The decision of the Examiner to reject claims 1 and 5-10 is reversed. REVERSED mls Copy with citationCopy as parenthetical citation