Ex parte Hageman et al.

Board of Patent Appeals and Interferences

Mar 16, 2001

09038450 (B.P.A.I. Mar. 16, 2001)

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for publication and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARTIN P. HAGEMAN and THOMAS J. PALUS
____________
Appeal No. 2000-1514
Application No. 09/038,450
____________
ON BRIEF
____________
Before STAAB, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 12, 14 to 17, 19 and 20. Claims 13,
18, 21 and 22 have been objected to as depending from a non-
allowed claim. No claim has been canceled.
We REVERSE.
Appeal No. 2000-1514 Page 2
Application No. 09/038,450
BACKGROUND
The appellants' invention relates to powered wheel
chocking devices (specification, p. 1). A copy of the claims
under appeal is set forth in the appendix to the appellants'
brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Warner et al. (Warner) 5,249,905 Oct. 5,
1993
Springer 5,531,557 July 2,
1996
Claims 19 and 20 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Warner.
Claims 1 to 12 and 14 to 17 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Springer.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
Appeal No. 2000-1514 Page 3
Application No. 09/038,450
rejections, we make reference to the answer (Paper No. 17,
mailed May 9, 2000) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 16,
filed March 27, 2000) for the appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation issue
We will not sustain the rejection of claims 19 and 20
under 35 U.S.C. § 102(b).
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
Appeal No. 2000-1514 Page 4
Application No. 09/038,450
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Claim 19 reads as follows:
A combination of a wheel chocking device mounted at
a loading dock, said combination comprising:
a dock face;
a driveway;
a base frame positioned on and above said driveway
and spaced from said dock face;
a chock positioned for longitudinal movement over
said base frame, wherein said chock is movable from a
lowered inoperative position to a raised operative
position; and
a drive mechanism drivingly connected to said chock,
and at least partially positioned within said base frame
such that wheels of a vehicle positioned at said loading
dock will be positioned over at least a portion of said
drive mechanism.
Warner discloses an automatic wheel chocking apparatus
for restraining movement of a vehicle away from a loading dock
during a loading operation. The apparatus comprises an
elongated trough formed in the driveway that extends outwardly
from the front face of the loading dock and a wheel chock is
mounted in the trough for movement between a storage position,
where the wheel chock is located beneath the level of the
Appeal No. 2000-1514 Page 5
Application No. 09/038,450
driveway, and an operative position where the chock extends
upwardly above the driveway and is disposed to engage a wheel
of a vehicle. The wheel chock is moved between the storage
and operative positions by a drive mechanism that is located
within the trough and includes a lead screw. A nut is
threaded on the lead screw and is connected to the wheel chock
via a rigid link. Rotation of the lead screw will move the
chock between the storage and operative positions.
Appeal No. 2000-1514 Page 6
Application No. 09/038,450
Warner teaches (column 3, lines 23-45) that
As best shown in FIG. 1, loading dock 1 is provided with
a vertical front face 2 and an upper horizontal surface
3. A driveway or other supporting surface 4 extends
outwardly from front face 2.
. . .
In accordance with the invention, a parallel,
elongated, open-top metal trough 6 is embedded in
driveway 4. The trough 6 is generally U-shape in
cross-sectional configuration and is provided with side
flanges 7 which extend outwardly and are generally flush
with the upper surface of driveway 4.
A wheel chock 8 is mounted for movement within the
trough 6 and can be moved between a storage or recessed
position in which the wheel chock is located in a pocket
9 beneath the level of driveway 4, and a chocking or
operative position in which the chock is located above
the surface of the driveway and is engaged with the
outboard side of a wheel 10 of a truck or other vehicle
11.
The appellants argue (brief, pp. 11-13) that Warner does
not teach or suggest a base frame positioned on and above the
driveway. We agree. Warner clearly teaches that his metal
trough 6 is embedded in driveway 4 and is located beneath the
supporting surface or level of the driveway 4 as shown in
Figures 3 and 4. Thus, Warner's trough 6 is not located on
and above the supporting surface or level of the driveway 4
Appeal No. 2000-1514 Page 7
Application No. 09/038,450
and therefore is not, in our view, positioned on and above the
driveway 4.
Since all the limitations of claim 19, and claim 20
dependent thereon, are not disclosed in Warner for the reasons
set forth above, the decision of the examiner to reject claims
19 and 20 under 35 U.S.C. § 102(b) is reversed.
The obviousness issue
We will not sustain the rejection of claims 1 to 12 and
14 to 17 under 35 U.S.C. § 103.
In making the rejection of claims 1 to 12 and 14 to 17
under 35 U.S.C. § 103, the examiner ascertained (answer, p. 4)
that Springer taught all the limitations of independent claims
1, 7 and 12 except for the placement of the power mechanism
"as being outboard of an outer edge of the chock path." With
regard to this difference, the examiner then determined that
the power mechanism of Springer (i.e., motor 16) "would have
been capable of being used located outboard of an outer edge
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Application No. 09/038,450
In our view, the broadest reasonable interpretation of1
the limitation that the power mechanism is positioned
"outboard of said outer edge" as recited in claims 1-12 and 14
to 17, that is consistent with the specification (see page 15,
lines 1-12) is that the power mechanism is positioned further
from the centerline of the chock path than the outer edge of
the chock path in a direction away from the centerline of the
chock path toward the outer edge (i.e., the edge of the chock
path furthest from the centerline of the loading dock).
Evidence of a suggestion, teaching, or motivation to2
(continued...)
of the chock path for any number of reasons, such as ease of
repair when a trailer is present."
The appellants argue (brief, pp. 4-11) that the examiner
has not established a prima facie case of obviousness since
there is no suggestion or motivation to modify the position of
Springer's power mechanism to be outboard of the outer edge of
the chock path. We agree.1
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would2
Appeal No. 2000-1514 Page 9
Application No. 09/038,450
(...continued)2
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), although "the suggestion more
often comes from the teachings of the pertinent references,"
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). The range of sources available, however, does not
diminish the requirement for actual evidence. That is, the
showing must be clear and particular. See In re Dembiczak,
175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Claims 1 to 12 and 14 to 17 under appeal all require the
power mechanism to be positioned outboard of an outer edge of
the chock path. However, this limitation is not suggested by
the applied prior art (i.e., Springer). In that regard, while
Springer does teach a drive mechanism including a motor 16 and
a chain assembly 18, Springer does not teach or suggest
Appeal No. 2000-1514 Page 10
Application No. 09/038,450
positioning the power mechanism outboard of an outer edge of
the chock path. To supply this omission in the teachings of
the applied prior art, the examiner determined that this
difference would have been obvious to an artisan. However,
this determination has not been supported by any evidence that
would have led an artisan to arrive at the claimed invention.
In any event, although a prior art device "may be capable of
being modified to run in the manner claimed, there must be
suggestion or motivation in the reference to do so." In re
Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir.
1990). See also In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). In this case, there is no
suggestion and motivation provided in the applied prior art to
modify Springer in the manner indicated by the examiner.
In our view, the only suggestion for modifying Springer
in the manner proposed by the examiner to meet the above-noted
limitations stems from hindsight knowledge derived from the
appellants' own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C.
Appeal No. 2000-1514 Page 11
Application No. 09/038,450
§ 103 is, of course, impermissible. See, for example, W. L.
Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984). It follows that we cannot sustain the examiner's
rejections of claims 1 to 12 and 14 to 17.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 19 and 20 under 35 U.S.C. § 102(b) is reversed and the
decision
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Application No. 09/038,450
of the examiner to reject claims 1 to 12 and 14 to 17 under
35 U.S.C. § 103 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-1514 Page 13
Application No. 09/038,450
DAVID B. SMITH
MICHAEL BEST & FRIEDRICH
100 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202-4108
Appeal No. 2000-1514 Page 14
Application No. 09/038,450
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