Ex Parte Giese

Patent Trial and Appeal Board

Apr 28, 2017

13453683 (P.T.A.B. Apr. 28, 2017)

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.
13/453,683 04/23/2012 Thomas Giese GIET18A 1202
41681 7590
Richard L. Miller
12 Parkside Drive
Dix Hills, NY 11746-4879
EXAMINER
YOON, SEAHEE
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
04/28/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS GIESE
Appeal 2014-004985
Application 13/453,683
Technology Center 3700
Before: WILLIAM A. CAPP, LEE L. STEPINA, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals3 under 35 U.S.C. § 134 from a rejection of claims
1—15, 17-49, and 51—59. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 This Decision includes citations to the following documents: Specification
filed Apr. 23, 2012 (“Spec.”); Non-Final Office Action mailed Jul. 10, 2013
(“Act.”); Appeal Brief filed Dec. 2, 2013 (“App. Br.”); Examiner’s Answer
mailed Jan. 24, 2014 (“Ans.”); and Reply Brief filed Mar. 17, 2014 (“Reply
Br.”).
2 Appellant provides that the real party in interest is Appellant Thomas
Giese. (App. Br. 2.)
3 The record shows that the Examiner issued a Non-Final Rejection on July
10, 2013.
Appeal 2014-004985
Application 13/453,683
CLAIMED SUBJECT MATTER
The claims are directed to “a portable and self-contained prime mover
arrangement for receiving, and thereby motorizing, a conventional and
pre-existing mechanical bottle jack or a conventional pre-existing scissor
jack[.]” (Spec. 6:2—5). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A portable and self-contained prime mover arrangement
for receiving, and thereby motorizing, a conventional and
pre-existing mechanical bottle jack having a base and for being
so stabilized and so balanced so as to be readily insertable under
a vehicle requiring lifting off a generally horizontal surface while
remaining in full contact with the generally horizontal surface
during positioning under, and lifting or lowering, the vehicle,
said arrangement comprising:
a) a base;
b) an electric motor;
c) a gear box;
d) a coupler; and
e) a handle;
wherein said base is for being positioned on the generally
horizontal surface;
wherein said base is for being so stabilized and so balanced so as
to be readily insertable under the vehicle requiring lifting off the
generally horizontal surface while remaining in full contact with
the generally horizontal surface during positioning under, and
lifting or lowering, the vehicle;
wherein said electric motor is positioned on said base;
wherein said gear box is positioned on said base;
wherein said gear box is operatively connected to said electric
motor;
wherein said coupler is positioned on said base;
wherein said coupler is for receiving, and thereby motorizing,
the conventional and pre-existing mechanical bottle jack;
wherein said handle is replaceably attached to said base;
wherein said handle is for readily inserting said portable and
self-contained prime mover arrangement under the vehicle or
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Appeal 2014-004985
Application 13/453,683
for removing said portable and self-contained prime mover
arrangement from under the vehicle; and
wherein said gear box is a right angle reducing gear box.
Claims Appendix, App. Br. 36—37 (emphasis added).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Dorough US 3,844,535 Oct. 29, 1974
Rideout US 4,676,407 June 30, 1987
Lonon US 5,085,407 Feb. 4, 1992
Hung US 5,520,400 May 28, 1996
Williams US 5,690,348 Nov. 25, 1997
Jacobsen US 5,894,618 Apr. 20, 1999
Sadow US 2005/0284791 A1 Dec. 29, 2005
Tseng US 2010/0282556 A1 Nov. 11,2010
Brick US 2010/0307270 A1 Dec. 9, 2010
Pavlic US 2011/0181065 A1 July 28, 2011
REJECTIONS
Claims 1—9 and 36-43 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lonon and Brick.
Claims 10-15 and 44-49 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lonon, Brick, and Jacobsen.
Claims 17, 18, 51, and 52 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lonon, Brick, Jacobsen, and Rideout.
Claims 19, 20, 53, and 54 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lonon, Brick, Jacobsen, Rideout, and Pavlic.
Claims 21—28 and 55—62 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lonon, Brick, Jacobsen, Rideout, Pavlic, and Williams.
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Application 13/453,683
Claims 29, 30, 63, and 64 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lonon, Brick, Jacobsen, Rideout, Pavlic, Williams, and
Dorough.
Claims 31, 32, 65, and 66 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lonon, Brick, Jacobsen, Rideout, Pavlic, Williams,
Dorough, and Hung.
Claims 33, 34, 67, and 68 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lonon, Brick, Jacobsen, Rideout, Pavlic, Williams,
Dorough, Hung, and Tseng.
Claims 35 and 69 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lonon, Brick, Jacobsen, Rideout, Pavlic, Williams,
Dorough, Hung, Tseng, and Sadow.
OPINION
Claim l4
Appellant recognizes that “the advantages of the advantageous
distinctive feature of each of independent claims 1 and 36” as a result of the
inclusion of “a right angel gear box” as recited in claim 1 “may not have
been disclosed and discussed specifically in the specification,” but
nonetheless argues that these advantages including “reducing the chance of
injury,” “a smaller footprint,” and “a significantly higher operating
efficiency” show patentable distinction over the combined teachings (App.
Br. 23.)
Appellant, however, does not dispute the Examiner’s finding that
Brick teaches both “a right angel reducing gear box” and the associated
4 Claims 2—9 and 36-43 stand or fall with claim 1. (App. Br. 30.)
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Application 13/453,683
advantages. (Compare Ans. 2—3 with Reply Br. 3—4, 9.) Because “the
patentability of apparatus or composition claims depends on the claimed
structure, not on the use or purpose of that structure” (Catalina Mktg. Int 7,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002)), because
Appellant has not shown that the recited device is structurally
distinguishable from the prior art teachings, and because Appellant
acknowledges that the purported advantages are not disclosed in the ’683
Specification, no reversible error has been identified in this aspect of the
obviousness analysis.5
Appellant next argues that Lonon cannot be combined with Brick.
(App. Br. 30.) Appellant argues that the device in Lonon “use[s] a coupler 5
that allows the motor 3 and the jack 2 to be collinear” and concludes that
modifying Lonon to include “a right angel reducing gear box” would “alter
the placement of the mechanical coupling means (5, 25)” resulting in “a
much more complex and bulky construction.” (Reply Br. 8.)
Even assuming, arguendo, without deciding, that the disadvantages
discussed by Appellant would occur as a result of the Examiner’s proposed
combination, Appellant’s argument on this point is unavailing. “[J]ust
because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes.” In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012). Appellant here argues only that the
reconfiguring Lonon’s device would result in a different device, but does not
present evidence showing that modifying Lonon’s device with the right
angle reducing box would render Lonon’s device inoperable for its intended
5 Appellant invites us to require the Examiner to provide an affidavit related
to the purported advantages. (App. Br. 25—27.) We decline as Appellant
provides no legal authority to support such a request.
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Application 13/453,683
purpose — that is — not functioning “for collaborating with a type of jack
which is conventionally furnished as standard equipment for certain types of
vans[.]” (App. Br. 29-30; Reply Br. 6—8; see also Lonon 1:36—38.)
Appellant also argues that the Examiner’s proposed combination
would alter the “salient feature” of coupling means 5 in Lonon and therefore
renders Lonon inoperable. (App. Br. 30 (citing Lonon 8:40-65); Reply 8.)
Lonon, however, states:
Thus, the projecting member 24a mates with the slot 25c in the
mechanical coupling means 25 as shown in LIG. 4.
The latter, which is a salient feature of the present
invention, is formed from a steel slug of rectangular section,
and is of the same general form and shape as mechanical
coupling means 5 described in detail with reference to LIG. 9.
(Lonon 8:63—9:2.)
The disclosure in Lonon, when read in full context, does not provide
that the salient feature is the placement of coupling means 5 as Appellant
asserts. In any case, Appellant does not refute the Examiner’s reasoning that
the above cited discussion in Lonon is directed to an embodiment not replied
upon by the Examiner for the obviousness rejection. (Compare Ans. 3 with
Reply Br. 6—8.) No reversible error has been identified in this aspect of the
obviousness analysis.
In summary, Appellant does not persuasively dispute the Examiner’s
finding that all claim limitations are found in the prior art. (Compare App.
Br. 23—29 and Reply Br. 1—5 with Act. 3^4 and Ans. 2—3.) Appellant does
not address the Examiner’s rationale to combine the references, i.e., a skilled
artisan would have combined the prior art teachings because Brick teaches
that the use of a right angle gear box would have “a significantly higher
operating efficiency.” (Compare App. Br. 23—29 and Reply Br. 1—5 with
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Act. 4 (citing Brick 125) and Ans. 3 (citing Brick 125).) “[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way” as
shown in the prior art in this case, “using the technique is obvious” “unless
its actual application is beyond his or her skill” — which Appellant neither
contests nor provides supporting evidence. KSRInt’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). The Examiner’s rejection of claim 1 based on
Lonon and Brick is therefore sustained.
Claims 2—9 and 36—43
Appellant does not argue for the separate patentability of claims apart
from arguments presented with respect to claim 1 that we have previously
considered and found unpersuasive and which are equally unpersuasive here.
See App. Br. 30 (Claims 2—9 and 36-43 stand or fall with claim 1).
Consequently, we sustain the Examiner’s rejection of claims 2—9 and 36-43.
DECISION
The Examiner’s rejections of claims 1—15, 17-49, and 51—59 are
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)(l)(iv).
AFFIRMED
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