Ex Parte Fang et al

Board of Patent Appeals and Interferences

Sep 8, 2011

11538551 (B.P.A.I. Sep. 8, 2011)

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