Ex Parte Griffin

Board of Patent Appeals and Interferences

Jun 27, 2008

09893619 (B.P.A.I. Jun. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AMY R. GRIFFIN
____________

Appeal 2007-2871
Application 09/893,619
Technology Center 3600
____________

Decided: June 27, 2008
____________

Before TERRY J. OWENS, HUBERT C. LORIN, and
JOHN C. KERINS, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Amy Griffin (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-4, 7-13, 17-28, 31-35, and 39-46. Claims 5, 6,
14-16, 29, 30, and 36-38 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
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Claim 12
The Appellant made a separate argument for the patentability of claim
12 in the Brief (App. Br. 12-13). The Examiner responded by stating that
“[r]egarding the arguments for claim 12 the appellants arguments are
persuasive and the previous rejections are withdrawn.” Answer 13.
Accordingly, the rejection of claim 12 has been withdrawn by the Examiner.
Thus, the rejection of claim 12 is not before the Board and will not be
addressed in deciding this appeal.

SUMMARY OF DECISION
We AFFIRM. 1
THE INVENTION
The invention relates to an apparatus and method for positioning an
object with a lift table. Referring to Fig. 1 below, the claimed lift table (10)
comprises three sections. The first section has a mechanism capable of
movement in a vertical direction. This is shown by lift mechanism (60)
which moves middle plate (30) in the vertical direction. Referring to Fig. 7,
the second section is a sliding mechanism (70) comprising slider block (190)
having slide rails (182) and a block (198) threadably engaged with a lead
screw (196) for moving the block (198). The third section disposed over the

1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed May 9, 2005), the Examiner’s Answer (“Answer,” mailed Mar. 20,
2006), and Reply Brief (“Reply Br.,” filed May 18, 2006)
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sliding mechanism (70) is depicted in Fig. 1 as upper plate (40). Block (198)
of the sliding mechanism (60) is to be attached to the bottom surface of
upper plate (40) such that, in operation, the upper plate moves horizontally
relative to the middle plate. This occurs because the slide mechanism (70) is
situated between the upper plate (40) and the middle plate (30), thus
allowing horizontal movement of upper plate (40) relative to middle plate
(30). Concomitantly, lift mechanism (60) allows middle plate (30) to move
vertically relative to upper plate (40).
Fig. 1 of the Specification is reproduced below:

Figure 1 of the Specification is said to depict “a perspective view of a
lift and align table in accordance with an embodiment of the present
invention.” Specification 3.
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Fig. 7 of the Specification is reproduced below:

Figure 7 of the Specification is said to depict “a perspective view of a
slide mechanism in accordance with an embodiment of the present
invention.” Specification 4.
The independent claims are 1 (apparatus), 13 (apparatus), 25
(apparatus), 34 (apparatus), 35 (method), and 41 (method). Claims 1 and 35,
reproduced below, are illustrative of the subject matter on appeal.
1. An apparatus for positioning an object
comprising:
a first section having a lifting mechanism capable of
movement in a vertical direction;
a second section disposed over said lifting mechanism
capable of moving corresponding to said lifting mechanism,
said second section having a first sliding mechanism capable of
movement in a first horizontal direction, said first sliding
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mechanism comprising a block and a lead screw for moving
said block, and further comprising slider blocks having slide
rails; and
a third section disposed over said sliding mechanism and
attached to said block and in contact with said slider blocks,
capable of moving in response to movement of said sliding
mechanism and said lifting mechanism, said third section
having a surface for supporting an object.

35. A method for positioning an object
comprising:
providing a table having a support section adapted to
move vertically and horizontally;
placing an object on said support section;
moving said table toward a desired destination for said
object;
operating a lift mechanism to move said support section
vertically, wherein operating said lift mechanism comprises
manually rotating an input shaft attached to jacking
mechanisms and supplying a pressurized gas to gas
cylinder assemblies to assist moving said support section;
operating a slide mechanism to move said support section
horizontally;
said object being positioned in a desired location by said
moving and operating actions.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

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Beach
Mills
Shiiba
Bressler
Nemoto

US 2,931,519
US 4,461,455
US 4,643,630
US 6,136,375
US 6,271,657 B1

Apr. 5, 1960
Jul. 24, 1984
Feb. 17, 1987
Oct. 24, 2000
Aug. 7, 2001
The following rejections are before us for review:
1. Claims 1, 8-11, 25, 32, and 33 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Beach and Bressler.
2. Claims 2-4, 7, 26-28, and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beach, Bressler, and Mills.
3. Claims 13, 17, 19-24, and 34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beach, Mills, and Nemoto.
4. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Beach, Mills, Nemoto, and Bressler.
5. Claims 35, 39-42, 44, 45, and 46 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Beach, Mills, and Nemoto.
6. Claim 43 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Beach, Mills, Nemoto, and Shiiba.

ISSUES
The issues before us are whether the Appellant has shown that the
Examiner erred in rejecting claims 1, 8-11, 25, 32, and 33 as unpatentable
over Beach and Bressler; claims 2-4, 7, 26-28, and 31 as unpatentable over
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Beach, Bressler, and Mills; claims 13, 17, 19-24, and 34 as unpatentable
over Beach, Mills, and Nemoto; claim 18 as unpatentable over Beach, Mills,
Nemoto, and Bressler; claims 35, 39-42, 44, 45, and 46 as unpatentable over
Beach, Mills, and Nemoto; and, claim 43 as unpatentable over Beach, Mills,
Nemoto, and Shiiba, all under §103.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
The scope and content of the prior art
1. Beach describes a dolly useful for installing or removing aircraft
engines.
2. The Examiner found that Beach “teaches … a first section (10)
having a lifting mechanism (12) capable of movement in a vertical
direction; a second section (11) disposed over said lifting
mechanism (12) and capable of moving with said lifting
mechanism, said second section having a first sliding mechanism,
said first sliding mechanism comprising a block (113) and a lead
screw (110) for moving said block; and a third section (13)
disposed over said sliding mechanism and attached to said block,
capable of moving in response to said lifting and sliding
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mechanisms, wherein said third section has a surface (a) for
supporting an object.” Answer 5.
3. The Examiner’s charactererization of what Beach describes is
accurate. See Beach Figs. 1, 4, and 9
4. Beach Fig. 1 is reproduced below:

Beach Fig. 1 is said to depict “a side elevation of the truck of the
invention showing the load carrying frame in an elevated position,
with the load appearing in broken lines.” Col. 2, ll. 17-19.
5. Beach Fig. 4 is reproduced below:
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Beach Fig. 4 is said to depict “an end view of the dolly with the
scissors means and load carrying frame, etc. in the raised
condition, a portion of the load appearing in broken lines, and with
broken lines illustrating laterally extended positions of the casters.”
Col. 2, ll. 25-29.
6. Beach Fig. 9 is reproduced below:

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Beach Fig. 9 is said to depict “an enlarged fragmentary vertical
sectional view taken as indicated by line 9-9 on Figure 2.” Col. 2,
ll. 43-44.
7. Bressler is related to rotogravure printing.
8. Bressler describes guide rails and guide blocks (see elements 24
(guide rails) and 30 (guide blocks) in Fig. 1).
9. Bressler Fig. 1 is reproduced below:

Bressler Fig. 1 is said to depict “a partially sectioned view, side
elevation of apparatus for applying plastic compositions according
to the method of the present invention.” Col. 5, ll. 27-29.
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10. Mills describes an aircraft engine lifting and positioning apparatus
involving the use of jack screws and pneumatic elements. See e.g.,
dicusssion at col. 5.
11. Nemoto describes a positioner for positioning a semiconductor
device and describes a prior art jack mechanism involving the use
of a crank to lift an object. See element 31 in Fig. 6.
12. Nemoto Fig. 6 is reproduced below:

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Nemoto Fig. 6 is said to depict “a front view illustrating the
general construction of an example of the prior art jack mechanism
for moving a relatively less heavy test head vertically upwardly
and downwardly.” Col. 8, ll. 49-52.
13. Shiiba describes a heavy object loading jig involving the use of
pressurized gas to operate a pneumatic assembly. Col. 2, ll. 41-46.
Any differences between the claimed subject matter and the prior art
14. The claimed invention combines in one method and system
elements and features separately disclosed in the prior art.
The level of skill in the art
15. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of positioning an object. We will
therefore consider the cited prior art as representative of the level
of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings
on the level of skill in the art does not give rise to reversible error
‘where the prior art itself reflects an appropriate level and a need
for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985).
Secondary considerations
16. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

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PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented 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 to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) The Court in Graham
further noted that evidence of secondary considerations “might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 18.

ANALYSIS
The rejection of claims 1, 8-12, 25, 32, and 33 under 35 U.S.C. § 103(a) as
unpatentable over Beach and Bressler.
The Appellant argued claims 1, 8-12, 25, 32, and 33 as a group (App.
Br. 9-13). We select claim 1 as the representative claim for this group, and
the remaining claims 8-11, 25, 32, and 33 stand or fall with claim 1.
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37 C.F.R. § 41.37(c)(1)(vii) (2007). Claim 1 is reproduced supra.
The Examiner found that Beach describes the claimed apparatus (see
FF 2) except that “Beach does not teach the slide mechanism as having rails
and slider blocks.” Answer 5-6. The Examiner relied on Bressler to show
that the claimed slider mechanism was known (see FF 8) and determined
that “[i]t would have been obvious to one of ordinary skill in the art, at the
time of the invention to provide the device taught by Beach with the guide
rails and blocks taught by Bressler et al. in order to keep the first and second
sections in alignment at all times while allowing for linear adjustments as
needed.” Answer 6.
The Appellant argued that Beach fails to show the claim 1 limitation
“a third section disposed over said sliding mechanism and attached to said
block.” App. Br. 9. (Appellant’s emphasis.) The Appellant also argued that
there is no motivation to look to Bressler to modify Beach such that the
sliding mechanism comprises “slider blocks having slide rails.” App. Br. 10.

Regarding the Appellant’s first argument.
This argument turns on the scope of the claim.
According to the Examiner, Beach describes “a third section (13)
disposed over said sliding mechanism and attached to said block capable of
moving in response to said lifting and sliding mechanisms, wherein said
third section has a surface (a) for supporting an object.” Answer 5.
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The Appellant disputes the Examiner’s assertion that the third section
(13) is disposed over the sliding mechanism. According to the Appellant,
“‘the third section (13)’ … is the sliding mechanism.” App. Br. 10.
(Emphasis in original.) According to the Appellant, “[E]lements 113 and
110 in Beach are part of the assembly 13. See column 7, lines 10-50 and
Figure 2. The assembly 13 cannot be the claimed ‘sliding mechanism’ and at
the same time a ‘third section disposed over said sliding mechanism [per
claim 1].’” App. Br. 10. Emphasis in original. A similar argument is made in
the Reply Brief (p. 2).
The Examiner responded by arguing that “[T]he appellant is correct
that the sliding assembly (13) of beach [sic] includes the block (113) and a
lead screw (110), but this does not preclude the sliding portion of the
assembly from being located above the actuation portion of the assembly as
claimed.” Answer 12.
The issue of whether Beach discloses a “third section disposed over
said sliding mechanism” (claim 1) turns on the scope of the claim. We do
not see anything in the Specification, not does the Appellant point to such
disclosure, which defines the claimed “third section disposed over said
sliding mechanism” in a manner to lead one of ordinary skill to interpret the
phrase so as to limit the “third section” to something separate and
independent of an overall sliding assembly comprising a sliding mechanism.
Nor does the claim limit the “sliding mechanism” to all aspects of a sliding
assembly. The term “sliding mechanism” is broad and encompasses any
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mechanism of a sliding assembly. The broadest reasonable construction to
be given the claim in light of the Specification as it would be interpreted by
one of ordinary skill in the art is that the apparatus comprises a third section
disposed over a sliding mechanism, the third section being open to including
a sliding mechanism of a sliding assembly. To view the claimed “third
section” as precluding the sliding assembly (13) (see FF 5) of Beach would
require reading into the claim a limitation that the “third section” may not
include a sliding mechanism. While that may be an embodiment described in
the Specification, there is no suggestion in the claim or in the Specification
that the claim should be construed narrowly so as to define only that
embodiment. “The problem is to interpret claims ‘in view of the
specification’ without unnecessarily importing limitations from the
specification into the claims.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d
1364, 1369 (Fed. Cir. 2003). Since, to be persuasive, the Appellant’s
argument would require us to unnecessarily import limitations from the
specification into the claims, we find the Appellant’s argument unpersuasive
as to error in the rejection. Cf. In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“Many of appellant’s arguments fail from the outset because, . . . they are
not based on limitations appearing in the claims . . . .”).

Regarding the Appellant’s second argument.
This argument is directed to the claim limitation “second section …
further comprising slider blocks having slide rails.”
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The Examiner had found that Beach does not teach the slide
mechanism as having sliding rails and slider blocks but relied on Bressler as
describing these elements (see FF 8 and 9). The Examiner determined that
“[i]t would have been obvious to one of ordinary skill in the art, at the time
of invention to provide the device taught by Beach with the guide rails and
blocks taught by Bressler et al. in order to keep the first and second sections
in alignment at all times while allowing for linear adjustments as needed.”
Answer 6.
The Appellant argues that the combination is (1) based on hindsight,
(2) based on non-analogous art (i.e., Bressler is from the printing industry
while Beach is from the aircraft assembly industry), (3) lacks motivation for
its combination, and (4) it would not be within the ordinary skill to make the
combination.
We are not persuaded by the Appellant’s argument. In effect, the
Appellant is arguing that one of ordinary skill in the art would not be led to
the claimed combination, given the Beach and Bressler disclosures. We
disagree.
The Examiner, after acknowledging that the sliding assembly in
Beach does not include sliding rails and slider blocks, noted that Beach and
Bressler “are both dealing with sliding a platform, with a difference in guide
means, but they are dealing with a similar problem by using different types
of equivalent structures in the slide assemblies. As appellant concedes the
structures in question are equivalent the examiner believes one of ordinary
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skill in the art would know this. Further Bressler was used to teach blocks,
merely because the references are moving different types of heavy
equipement does not mean they are not analogous.” Answer 12.
The Appellant responded by arguing that “[T]he proposed substitution
of components would have made no practical sense, because, as the
Examiner’s Answer admits, the references use ‘different types’ of structures
for ‘moving different types of heavy equipment.’ Examiner’s Answer, page
12.” Reply Br. 3.
We agree with the Examiner.
There is no dispute that Beach and Bressler describe different
mechanisms of sliding a platform and that the claimed apparatus employs
the mechanism Bressler describes. However, the claimed subject matter is
the result of adding Bressler’s block and rail mechanism to the Beach
apparatus. No unpredictable results from such a combination have been
shown. FF 16.
Regarding the Appellant’s argument that the Examiner has not
provided adequate motivation but, rather, used hindsight to combine the
disclosures in the cited references that would lead one of ordinary skill in the
art to arrive at the claimed invention, the standard for determining
obviousness is not solely dependent on the adequacy of an Examiner’s
motivation statement.
The Supreme Court decision in KSR has clarified the test for
obviousness. In KSR, the Supreme Court emphasized “the need for caution
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in granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious without an explicit application of the teaching,
suggestion, motivation test. In particular, the Supreme Court emphasized
that “the principles laid down in Graham reaffirmed the ‘functional
approach’ of Hotchkiss, 11 How. 248.” Id. (citing Graham v. John Deere
Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed principles
based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. The operative question in this
“functional approach” is “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id. at 1740.
The question of whether an improvement is more than the predictable
use of prior art elements according to their established functions is relevant
here, given the fact that Beach describes the claimed apparatus and that
Bressler describes the sliding block and rail mechanism. The Appellant has
not argued that these two elements are not disclosed in the prior art.
Accordingly, the claimed combination is the result of adding Bressler’s
block and rail to the Beach apparatus. “When a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” Id. at 1739 (quoting Sakraida v.
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Ag Pro, Inc., 425 U.S. 273, 282, 96 S.Ct. 1532 (1976)). In that regard, the
record does not include any objective evidence of unexpected results for the
claimed combination. No evidence of unexpected results were submitted to
rebut the Examiner’s prima facie case of obviousness. Therefore, a prima
facie case of obviousness has been established for the subject matter
resulting from adding Bressler’s block and rail to Beach’s apparatus
according to its established sliding unction. Accordingly, it was not
necessary, as Appellant appears to argue, that the Examiner show a clear
suggestion to combine the teachings of the references in the references
before coming to the conclusion that the claimed combination would have
been obvious to one of ordinary skill in the art. In light of KSR, to establish a
prima facie case of obviousness under 35 U.S.C. §103(a), it is sufficient to
show that the claimed system is the combination of prior art elements
according to known methods to yield predictable results.
That is not to say that all arrangements of prior art elements are
necessarily obvious. As the Supreme Court made clear with respect to the
facts before it in KSR, “[f]ollowing these principles may be more difficult in
other cases than it is here because the claimed subject matter may involve
more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained, “[o]ften, it will be necessary for a
court to look to interrelated teachings of multiple patents; the effects of
demands known to the design community or present in the marketplace; and
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the background knowledge possessed by a person having ordinary skill in
the art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.”
Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis
should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 1741. In that regard, we are
satisfied that the Examiner articulated an apparent reasoning with sufficient
rational underpinning to support the legal conclusion of obviousness.
The argument that Beach and Bressler are from non-analogous arts is
unpersuasive as to error in the rejection because Beach and Bressler are both
directed to positioning objects and are reasonably pertinent to the problem of
positioning, the problem the instantly claimed invention is concerned with.
See In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991)(any problem in the
field of endeavor and addressed by a patent can provide a reason to combine
the elements in the manner claimed at the time of the invention). See also
KSR, 127 S.Ct. at 1742.
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The argument that it would not be within the ordinary skill to make
the combination the Examiner suggests is unpersuasive as to error in the
rejection for several reasons. First, the Briefs nowhere discuss the level of
ordinary skill in the pertinent art of positioning an object such that we are
put in a position to decide whether one of ordinary skill would or would not
look to Bressler to modify Beach. FF 15. Second, the Appellant argues that
it would not be within the ordinary skill to make the combination the
Examiner suggests but does provide supporting evidence. We find no
evidence supporting the Appellant’s contentions elsewhere in the record. See
generally, In re Glass, 474 F.2d 1015, 1019 (CCPA 1973). An Appellant's
attorney’s arguments in a brief does not take the place of evidence in the
record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Meitzner v. Mindick, 549 F.2d
775 (CCPA 1977), cert. denied, 434 US 854 (1977), and In re Schulze, 346
F.2d 600 (CCPA 1965). Lastly, since we have looked to the references as
indicative of the level of skill (FF 15), Beach and Bressler would therefore
have been within the knowledge of one of ordinary skill in the pertinent art
of positioning an object. As a result, one of ordinary skill would have had
the two disclosures in hand and thus would have been in a position to make
the combination suggested by the Examiner and thereby reach the claimed
combination.
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We have considered the Appellant’s arguments and find them
unpersuasive as to error in the rejection. Accordingly, we will sustain the
rejection of claims 1, 8-11, 25, 32, and 33.

The rejection of claims 2-4, 7, 26-28, and 31 under 35 U.S.C. § 103(a) as
unpatentable over Beach, Bressler, and Mills.
The Appellant argued claims 2-4, 7, 26-28, and 31 as a group (App.
Br. 13-15). We select claim 2 as the representative claim for this group, and
the remaining claims 3, 4, 7, 26-28, and 31 stand or fall with claim 2. 37
C.F.R. § 41.37(c)(1)(vii) (2007). Claim 2 reads as follows:
2. The apparatus according to claim 1 wherein said lifting mechanism
comprises a jacking screw mechanism.
The Examiner conceded that Beach and Bressler do not teach a
jacking screw mechanism (or, for claims 3, 4, 7, 27, 28 and 31) a gas
cylinder assembly). The Examiner relied on Mills to show “a device for
lifting aircraft engines wherein a first lift assembly is a series of jack screws
… and a second lift assembly is a series of pneumatic lifts.” Answer 7. The
Examiner determined that “[i]t would have been obvious to one of ordinary
skill in the art, at the time of the invention to provide the lift assemblies
taught by Mills et al. in the device taught by Beach in order to allow the
apparatus to align the object being lifted with its intended receiver in a
manner that minimizes the chance of damage to the object while it is being
mounted.” Answer 7.
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The Appellant argued that there is no motivation to combine the prior
art teaching – “the mechanism of Beach is self sufficient and there is no
motivation to modify Beach with the teachings of Mills or vice versa.” App.
Br. 14. In the same vein, the Appellant argued that there is not only no
motivation but the result would be the addition of a redundant component.
Reply Br. 3-4. Appellant also argued that Mills is concerned with a different
problem than Beach. Appellant further argued that it would not be within the
ordinary skill to make the combination. App. Br. 14-15.
We are not persuaded by the Appellant’s arguments.
There is no dispute, and the Appellant concedes (App. Br. 14), that
Mills describes a positioning apparatus using jack assemblies. The claimed
subject matter is the result of incorporating a jacking screw mechanism in
the assembly resulting from the combination of Beach and Bressler.
The Appellant’s argument that the Examiner has provided no
motivation is inaccurate. The Examiner clearly explained that “[it]t would
have been obvious to one of ordinary skill in the art, at the time of the
invention to provide the lift assemblies taught by Mills et al in the device
taught by Beach in order to allow the apparatus to align the object being
lifted with its intended receiver in a manner that minimizes the chance of
damage to the object while it is being mounted.” Answer 7. We are satisfied
that the Examiner articulated an apparent reasoning with sufficient rational
underpinning to support the legal conclusion of obviousness.
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Furthermore, the test for obviousness does not depend solely on
finding a motivation to combine references. As we already stated, the
Supreme Court decision in KSR has clarified the test for obviousness. In
KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at
1739, and discussed circumstances in which a patent might be determined to
be obvious without an explicit application of the teaching, suggestion,
motivation test. In particular, the Supreme Court emphasized that “the
principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” Id. (citing Graham v. John Deere Co., 383 U.S. 1,
12 (1966) (emphasis added)), and reaffirmed principles based on its
precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. The operative question in this “functional approach” is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at 1740.
The question of whether an improvement is more than the predictable
use of prior art elements according to their established functions is relevant
here, given the fact that Mills describes the claimed jacking screw
mechanism. The Appellant has not argued that this element is not disclosed
in the prior art. Accordingly, the claimed combination is the result of
combining Mills’ jacking screw mechanism with the Beach/Bressler
combination. “When a patent ‘simply arranges old elements with each
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performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” Id. at 1739 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282,
96 S.Ct. 1532 (1976)). In that regard, the record does not include any
objective evidence of unexpected results for the claimed combination. No
evidence of unexpected results were submitted to rebut the Examiner’s
prima facie case of obviousness. Therefore, a prima facie case of
obviousness has been established for the claimed subject matter. In light of
KSR, to establish a prima facie case of obviousness under 35 U.S.C. §103(a),
it is sufficient to show that the claimed system is the combination of prior art
elements according to known methods to yield predictable results, and that
has been done here.
As to the argument that Mills is concerned with a different problem
than Beach, “[u]nder the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” Id. at
1742.
The Appellant further argued that it would not be within the ordinary
skill to make the combination. App. Br. 14-15. Again, the Briefs nowhere
discuss the level of ordinary skill in the pertinent art of positioning an object
to put us in a position to decide whether one of ordinary skill would or
would not look to Mills to modify Bressler. FF 15.
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Accordingly, we will sustain the rejection of claims 2-4, 7, 26-28, and
31.

The rejection of claims 13, 17, 19-24, and 34 under 35 U.S.C. § 103(a) as
unpatentable over Beach, Mills, and Nemoto.
The Appellant argued claims 13, 17, 19-24, and 34 as a group (App.
Br. 15-19). We select claim 13 as the representative claim for this group,
and the remaining claims 17, 19-24, and 34 stand or fall with claim 13. 37
C.F.R. § 41.37(c)(1)(vii) (2007). Claim 13 reads as follows:
13. An adjustable support for positioning a piece of equipment
comprising:
a base frame, a first section, and a second section;
a lifting mechanism disposed between said base frame and said
first section for lifting and lowering said first section in a vertical
direction with respect to said base frame, said lifting mechanism
comprising a jacking screw mechanism and a gas cylinder assembly,
said jacking screw mechanism having a manual drive mechanism; and
a first sliding mechanism disposed between said first section
and said second section for sliding said second section with respect to
said first section, said sliding occurring in a direction perpendicular to
said vertical direction, said second section having a surface to support
a piece of equipment.
Claim 13 is similar in subject matter to claim 2 but includes a gas
cylinder and limits the jacking screw mechanism to one having a manual
drive mechanism. The Examiner concedes that this latter feature is not
taught in Beach and Mills and relies on Nemoto for a manually turned crank
to lift an object. See FF 11.
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Appellant argues that there is no motivation to combine (App. Br. 15-
17). e.g.,: “[T]here is no motivation or reason to add to Beach’s lift assembly
extra ‘jack crews’ or ‘air bellows’of Mills. Such a ‘modification’ would be
unnecessary and impractical.” App. Br. 17. “Why would anyone replace
such a system in Mills with a ‘manually turned crank’ from Nemoto? There
is absolutely no motivation for such a drastic change.” App. Br. 17. A
similar argument is made in the Reply Brief: “there is absolutely no reason
to ‘augment’ Beach with Nemoto’s device because it would (1) be
redundant, (2) require a wholesale redesign of Beach and (3) the ‘problem’
asserted by the Examiner’s Answer does not exist.” Reply Br. 4.
We do not find these arguments persuasive as to error in the rejection.
The Examiner did in fact provide motivation to combine. See Answer 8.
Moreover, as we have already stated, the Supreme Court decision in KSR
has clarified the test for obviousness. In KSR, the Supreme Court
emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id. at 1739, and discussed
circumstances in which a patent might be determined to be obvious without
an explicit application of the teaching, suggestion, motivation test.
The question here is whether the improvement is more than the
predictable use of prior art elements according to their established functions.
The Appellant has not argued that the elements claimed are not disclosed in
cited references. Accordingly, the claimed subject matter is the result of
combining the elements variously described in the references. “When a
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patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” Id. at 1739
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282, 96 S.Ct. 1532 (1976)).
In that regard, the record does not include any objective evidence of
unexpected results for the claimed combination. No evidence of unexpected
results were submitted to rebut the Examiner’s prima facie case of
obviousness. Therefore, a prima facie case of obviousness has been
established for the claimed subject matter.
As to the Appellant’s argument that incorporating Nemoto’s air
cylinders would require a wholesale redesign of Beach, this is based on the
Appellant’s view that the “Nemoto air cylinders do not function to lift its
load.” Reply Br. 4. This is not commensurate in scope with what is claimed.
Claim 34 does not require the air cylinders to lift but rather to “assist said
jacking screws in said lifting and lowering mechanism.” Emphasis added.
As to the Appellant’s argument that the “problem” asserted by the
Examiner’s Answer does not exist, “[u]nder the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” Id. at 1742.
The Appellants also made an argument that the Examiner
misrepresented Mills. According to the Appellant, in contrast to what the
Examiner stated, “Mills does not teach or suggest that its jack assemblies
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and air bellow ‘work in tandem to raise the load.’” App. Br. 18. We do not
see the relevance of this clarification to the patentability of the claims since
the claims nowhere require the jack assemblies and air bellows to work in
tandem.
Accordingly, we will sustain the rejection of claims 17, 19-24, and 34.

The rejection of claim 18 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Beach, Mills, Nemoto, and Bressler.
Claim 18 reads as follows:
18. The support according to claim 17 wherein said sliding
mechanism comprises a lead screw and block mechanism.
The Examiner relied on Bressler to show as known the subject matter
of this claim. Answer 9. The Examiner determined that it would have been
obvious “to provide the device taught by Beach, Mills et al. and Nemoto
with the guide rails and blocks taught by Bressler et al. in order to keep the
first and second sections in alignment at all times while allowing for linear
adjustments as needed.” Answer 9.
The Appellant made a similar non-analogous art argument as that
raised with respect to the rejection of claim 1. App. Br. 19-20. E.g., “There
is absolutely no reason to substitute into Beach a sliding assembly from the
printing industry as taught by Bressler.” App. Br. 20. The argument that
Beach and Bressler are from non-analogous arts is unpersuasive as to error
in the rejection because Beach and Bressler are both directed to positioning
objects and are reasonably pertinent to the problem of positioning that the
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instantly claimed invention is concerned with. See In re Gorman, 933 F.2d
982, 986 (Fed. Cir. 1991)(any problem in the field of endeavor and
addressed by a patent can provide a reason to combine the elements in the
manner claimed at the time of the invention). See also KSR, 127 S.Ct. at
1742.

The rejection of claims 35, 39-42, 44, 45, and 46 are rejected under
35 U.S.C. § 103(a) as unpatentable over Beach, Mills, and Nemoto.
The Appellant argued claims 35, 39-42, 44, 45, and 46 as a group
(App. Br. 20-21). We select claim 35 (see supra) as the representative claim
for this group, and the remaining claims 39-42, 44, 45, and 46 stand or fall
with claim 35. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Appellant argues that Mills teaches using either jacking screws or
hydraulic pneumatic cylinders, not cylinders assisting the jacking screws as
required by the claims. App. Br. 20 (see also the Reply Br. 6). However, the
Examiner also relied on Nemoto as showing cylinders assisting jacking
screws. See Answer 10 and 16. This can be evidenced in Fig. 2A of Nemoto,
as discussed at col. 14. This is not addressed.
Appellant also argues that limitations of claims 41, 42, 44, 45, and 46
are not taught or suggested in the references. App. Br. 21. However, nothing
more is said. A general allegation that the art does not teach any of the claim
limitations is no more than merely pointing out the claim limitations. A
statement which merely points out what a claim recites will not be
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considered an argument for separate patentability of the claim. 37 C.F.R.
41.37(c)(1)(vii).

The rejection of claim 43 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Beach, Mills, Nemoto, and Shiiba.
Claim 43 reads as follows:
43. The method according to claim 41 wherein operating said lift
mechanism comprises supplying a pressurized gas to said gas cylinder
assemblies.
The Examiner relied on Shiiba as describing the subject matter of
claim 43. Answer 11.
The Appellant argued that there is no motivation to combine the
references to reached the claimed invention. App. Br. 22 and Reply Br. 7.
The Appellant appears to take issue with the Examiner’s statement of
motivation, i.e., “in order to make use of readily available source of power
that requires no special knowledge to tap and use” (Answer 11) and “to
positively cite providing a pressurized gas to a lifting device” (Answer 16).
However, as we have already stated, the Supreme Court decision in KSR has
clarified the test for obviousness. In KSR, the Supreme Court emphasized
“the need for caution in granting a patent based on the combination of
elements found in the prior art,” id. at 1739, and discussed circumstances in
which a patent might be determined to be obvious without an explicit
application of the teaching, suggestion, motivation test.
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The question here is whether an improvement is more than the
predictable use of prior art elements according to their established functions.
The Appellant has not argued that the elements claimed are not disclosed in
cited references. Accordingly, the claimed subject matter is the result of
combining the elements variously described in the references. “When a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” Id. at 1739
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282, 96 S.Ct. 1532 (1976)).
In that regard, the record does not include any objective evidence of
unexpected results for the claimed combination. No evidence of unexpected
results were submitted to rebut the Examiner’s prima facie case of
obviousness. Therefore, a prima facie case of obviousness has been
established for the claimed subject matter.

CONCLUSIONS OF LAW
We conclude the Appellants have failed to show that the Examiner
erred in rejecting claims 1, 8-11, 25, 32, and 33 as unpatentable over Beach
and Bressler; claims 2-4, 7, 26-28, and 31 as unpatentable over Beach,
Bressler, and Mills; claims 13, 17, 19-24, and 34 as unpatentable over
Beach, Mills, and Nemoto; claim 18 as unpatentable over Beach, Mills,
Nemoto, and Bressler; claims 35, 39-42, 44, 45, and 46 as unpatentable over
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Beach, Mills, and Nemoto; and, claim 43 as unpatentable over Beach, Mills,
Nemoto, and Shiiba, all under §103.

DECISION
The decision of the Examiner to reject claims 1-4, 7-11, 13, 17-28,
31-35, and 39-46 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) (2007).

AFFIRMED

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