Ex Parte Hawes

Board of Patent Appeals and Interferences

Sep 29, 2009

10064350 (B.P.A.I. Sep. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TIMOTHY R. HAWES
____________________

Appeal 2009-003400
Application 10/064,350
Technology Center 3600
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Decided: September 29, 2009
____________________

Before LINDA E. HORNER, JOHN C. KERINS,
and STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant’s claims being twice rejected, the Appellant appeals 2
under 35 U.S.C. § 134 (2002) from the Examiner’s decision rejecting claims 3
31-39 under 35 U.S.C. § 102(e) (2002) as being anticipated by Takahashi 4
(US 6,273,631 B1, issued Aug. 14, 2001); rejecting claims 1-5, 13-19, 21 5
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and 25 under 35 U.S.C. § 103(a) (2002) as being unpatentable over Mortvedt 1
(US 4,591,178, issued May 27, 1986) and Takahashi; rejecting claims 6, 7 2
and 9-11 under § 103(a) as being unpatentable over Mortvedt, Takahashi 3
and Burrell (US 3,765,636, issued Oct. 16, 1973); and rejecting claim 30 4
under § 103(a) as being unpatentable over Mortvedt, Takahashi and 5
Rowland (US 5,511,808, issued Apr. 30, 1996). The Examiner objects to 6
claims 12, 20, 22-24, 26-29 and 40-51 but indicates that the subject matter of 7
the claims is allowable. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 8
We sustain the rejection of claims 31-39. We do not sustain the 9
rejections of claims 1-30. 10
The claims on appeal relate to a fender assembly for a heavy duty 11
vehicle such as a semi-tractor. (Spec. 1, ¶¶ 0001-02). Independent claim 31 12
recites: 13
31. A fender mounting bracket for a 14
vehicle comprising a longitudinal frame that 15
carries ground engaging wheels above which is 16
supported a fender, the fender mounting assembly 17
comprising: 18
an elongated support arm adapted to be 19
mounted to either of an upper or lower surface of 20
the fender and defining a longitudinal axis; 21
a length-adjustable link connection having a 22
first portion connected to the elongated support 23
arm and a second portion adapted to be rotatably 24
mounted to a vehicle frame at a rotational axis 25
spaced from the longitudinal axis of the elongated 26
arm, wherein the offset spacing between the arm 27
longitudinal axis and the rotational axis can be 28
changed by adjusting the length of the link. 29
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ISSUES 1
The Appellant argues independent claim 31 and its dependent claims 2
32-39 as a group for purposes of the rejection under § 102(e). (See, e.g., 3
App. Br. 5.) Claim 31 is representative of these claims. See 37 C.F.R. 4
§ 41.37(c)(1)(vii) (2008). With respect to these claims, the Appellant 5
contends that Takahashi fails to disclose either a fender mounting bracket 6
(App. Br. 5) or an elongated support arm adapted to be mounted to either of 7
an upper or lower surface of a fender (App. Br. 6). 8
Apart from claim 31, claim 1 is the only other independent claim on 9
appeal. Claim 1 recites a fender assembly combining a fender, a support 10
arm and a bracket assembly including a length-adjustable link to selectively 11
adjust the offset distance between a longitudinal axis of the elongated 12
support arm and an axis of rotation of the bracket assembly. The Examiner 13
concedes that Mortvedt does not disclose a bracket which allows an 14
adjustment of length. (Ans. 4.) The Appellant contends that the Examiner 15
has given no cogent reason why it would have been obvious to combine the 16
teachings of Mortvedt and Takahashi so as to combine a bracket assembly 17
including a length-adjustable link in a fender assembly with a fender and a 18
support arm. (App. Br. 11.) The Appellant further contends that neither 19
Burrell, in the case of claims 6, 7 and 9-11, nor Rowland, in the case of 20
claim 30, makes up the perceived deficiencies in the teachings of Mortvedt 21
and Takahashi. (App. Br. 11-12 and 13.) 22
This appeal turns on two issues: 23
Has the Appellant shown that the Examiner erred in 24
finding that Takahashi discloses a structure capable of 25
functioning as a fender mounting bracket which includes an 26
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elongated support arm adapted to be mounted to either of an 1
upper or lower surface of a fender? 2
Has the Appellant shown that the Examiner failed to 3
articulate reasoning with some rational underpinning sufficient 4
to support the conclusion that the combined teachings of 5
Mortvedt and Takahashi, in the case of claims 1-5, 13-19, 21 6
and 25; of Mortvedt, Takahashi and Burrell, in the case of 7
claims 6, 7 and 9-11; or of Mortvedt, Takahashi and Rowland, 8
in the case of claim 30, would have provided one of ordinary 9
skill in the art reason to combine a bracket assembly including a 10
length-adjustable link in a fender assembly with a fender and a 11
support arm? 12
13
FINDINGS OF FACT 14
The record supports the following findings of fact (“FF”) by a 15
preponderance of the evidence. 16
1. Takahashi discloses a connecting rod with ball joints 2, 3 at 17
both ends of a rod-like connecting portion 1. (Takahashi, col. 3, ll. 37-39.) 18
2. Examples of environments for which Takahashi’s connecting 19
rod are designed include transmission control parts of automobiles and link 20
mechanism parts for height control sensors. (Takahashi, col. 1, ll. 14-19.) 21
3. The connecting portion 1 of Takahashi’s connecting rod 22
includes first and second connecting arms 5, 6 which respectively have 23
positioning teeth 4 arranged on surfaces thereof. The connecting portion 1 24
also includes a bolt 7 and a nut 8. The bolt 7 and the nut 8 cause the first 25
and second connecting arms 5, 6 to engage and the teeth 4 of the two 26
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connecting arms 5, 6 to mesh. (Takahashi, col. 3, ll. 42-48 and figs. 1(a)-1
1(c).) 2
4. The bolt 7 engages elongated holes in the connecting arms 5, 6 3
to adjust the length of the connecting portion 1. Adjusting the length of the 4
connecting portion 1 adjusts the distance between the centers of the first and 5
second ball joints 2, 3. (Takahashi, col. 3, ll. 39-41 and col. 4, ll. 35-40.) 6
5. Takahashi describes the first ball joint 2 as including a ball 7
receiving portion 21 formed integrally with an end of the arm 5. A ball-8
shank 22 includes a ball portion 24 rotatably and tiltably wrapped or 9
received in the ball receiving portion 21. The ball-shank 22 also includes a 10
shank portion 23 with a threaded shaft end 25 extending from the ball 11
portion 24 which protrudes through an opening 27 in the ball receiving 12
portion 21. (Takahashi, col. 3, ll. 48-60 and col. 4, ll. 1-4.) The second ball 13
joint 3 has a similar structure, except that the shaft ends of the respective ball 14
shanks 22, 32 extend in opposite directions. (Takahashi, col. 4, ll. 41-53.) 15
6. Figure 3 of Takahashi depicts the shank portions 22 as being 16
elongated in the sense that the shank portions 22 are longer than they are 17
wide. 18
7. Takahashi does not disclose any means for limiting the rotation 19
of the ball-shanks 22 relative to the connecting arms 5, 6. 20
8. Mortvedt discloses a farm tractor 10 with a quick attach fender 21
20. (Mortvedt, col. 2, ll. 31-34 and 36-37.) 22
9. Mortvedt’s fender 20 includes two stationary brackets 22, 24 23
and a shield assembly 26. Each of the two stationary brackets 22, 24 24
includes an elongated horizontal shaft 28, 36 and a bracket plate 30, 38 25
welded to one end of the horizontal shaft 28, 36. (Mortvedt, col. 2, ll. 37-41 26
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and 45-47.) The shield assembly 26 includes sleeves 48, 50 which fit over 1
the horizontal shafts 28, 36 to mount the shield assembly 26 to the brackets 2
22, 24. (Mortvedt, col. 2, ll. 51-53 and col. 3, ll. 11-13.) 3
10. Mortvedt describes the tractor frame 12 as having a plurality of 4
holes 18. (Mortvedt, col. 2, ll. 34-35.) Figures 1 and 2 of Mortvedt depict 5
these holes as being arranged in a horizontal line on a side of the frame 12 6
over each wheel 15. Each of the bracket plates 30, 38 includes a hole 32, 40 7
for alignment with one of the holes 18 in the tractor frame 12 to fasten the 8
two brackets 22, 24 to the tractor frame 12 by means of bolts 24, 42. 9
(Mortvedt, col. 2, ll. 41-44 and 47-50.) 10
11. Mortvedt teaches that the brackets 22, 24 may be pivoted about 11
the bolts 34, 42 so that the horizontal shafts 28, 36 are in proper positions for 12
receiving the sleeves 48, 50 of the shield assembly 26. Once the positions of 13
the brackets 22, 24 have been properly ascertained, the brackets 22, 24 may 14
be secured permanently against movement by tightening the bolts 34, 42. 15
(Mortvedt, col. 3, ll. 21-27.) 16
12. Burrell discloses a vise clamp for holding pressure containers 17
for compressed and liquefied gases. (Burrell, col. 1, ll. 6-14.) Burrell’s vise 18
clamp includes a nut 49 held loosely captive in a cage 50 recessed between 19
gussets 45. (Burrell, col. 3, ll. 16-19.) 20
13. Rowland discloses a flexible fender mount 12 including first 21
and second arms 14, 16 having ends affixed to the inside surface of a fender 22
10. The ends of the first and second arms 14, 16 opposite the fender 10 are 23
welded together and mounted on a flexible bushing 20. (Rowland, col. 2, ll. 24
44-55.) 25
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PRINCIPLES OF LAW 1
A claim under examination is given its broadest reasonable 2
interpretation consistent with the underlying specification. In re American 3
Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the 4
absence of an express definition of a claim term in the specification, the 5
claim term is given its broadest reasonable meaning in its ordinary usage as 6
the term would be understood by one of ordinary skill in the art. In re ICON 7
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 8
127 F.3d 1048, 1054 (Fed. Cir. 1997). Properties of preferred embodiments 9
described in the specification which are not recited in a claim do not limit 10
the reasonable scope of the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 11
F.3d 1364, 1369 (Fed. Cir. 2003). 12
“To anticipate a claim, a prior art reference must disclose every 13
limitation of the claimed invention, either explicitly or inherently.” In re 14
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Nevertheless, “[i]t is well 15
settled that the recitation of a new intended use for an old product does not 16
make a claim to that old product patentable.” Id. Consequently, “preambles 17
describing the use of an invention generally do not limit the claims because 18
the patentability of apparatus or composition claims depends on the claimed 19
structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, 20
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). A device 21
disclosed in a prior art reference which includes each structural limitation 22
recited in a claim and is susceptible of the use or purpose recited in the 23
preamble anticipates the subject matter of the claim. See Ex Parte Masham, 24
2 U.S.P.Q.2d 1646, 1647 (BPAI 1987). 25
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On the other hand, an examiner cannot establish a prima facie case 1
that a claim is obvious “merely by demonstrating that each of its elements 2
was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 3
550 U.S. 398, 418 (2007). In determining whether the subject matter of a 4
claim would have been obvious, an examiner may 5
look to interrelated teachings of multiple patents; 6
the effects of demands known to the design 7
community or present in the marketplace; and the 8
background knowledge possessed by a person 9
having ordinary skill in the art, all in order to 10
determine whether there was an apparent reason to 11
combine known elements in the fashion 12
claimed . . . . 13
Id. That said, “rejections on obviousness grounds cannot be sustained by 14
mere conclusory statements; instead, there must be some articulated 15
reasoning with some rational underpinning to support the legal conclusion of 16
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). 17
18
ANALYSIS 19
Either of the two shank portions 23 of Takahashi’s connecting rod 20
(see FF 5 and 6) is an “elongated support arm adapted to be mounted to 21
either of an upper or lower surface of” a fender as recited in claim 31. The 22
Appellant in representative claim 31 does not limit either the structure of the 23
fender which the claimed “fender mounting bracket” must mount or the 24
structure of the longitudinal frame to which the fender must be mounted. As 25
the Examiner points out (see Ans. 8), the shank portion at either end of 26
Takahashi’s connecting rod is “adapted to be mounted to either of an upper 27
or lower surface of the fender” in the sense that the threaded shaft portion of 28
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the shank portion is so structured that it can engage a threaded hole or sleeve 1
on either an upper or lower surface of a suitably configured fender. See In 2
re Venezia, 530 F.2d 956, 959 (CCPA 1970)(interpreting the term “each 3
sleeve of said pair adapted to be fitted over the insulating jacket of one of 4
said cables” as meaning that the sleeve was so structured or dimensioned 5
that it could fit over the insulating jacket). The threaded shaft portion of the 6
other shank portion is so structured that the threaded shaft portion can 7
engage a threaded hole in a suitably configured longitudinal frame. Since 8
the shank portions are elongated in the sense that they are longer than they 9
are wide (FF 6), either shank portion is an “elongated support arm adapted to 10
be mounted to either of the upper or lower surface of the fender . . . .” 11
The Examiner has not disregarded the preamble recitation that the 12
subject matter of representative claim 31 is a “fender support bracket.” 13
Neither the fender which the fender mounting bracket must mount; the 14
longitudinal frame to which the fender must be mounted; or the ground 15
engaging wheels over which the fender must be supported, is an element of 16
the claimed fender mounting bracket. As indicated in the previous 17
paragraph, the limitations reciting “an elongated support arm adapted to be 18
mounted to either of an upper or lower surface of the fender . . .” and “a 19
length-adjustable link having . . . a second portion adapted to be rotatably 20
mounted to a vehicle frame . . .” have meaning without reference to a 21
specific structure for the fender, the longitudinal frame or the wheels. This 22
implies that the preamble term “fender mounting bracket” refers to an 23
intended use of the subject matter of claim 31. 24
The Appellant has not provided evidence or argument sufficient to 25
support the conclusion that the term “fender mounting bracket” as used in 26
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claim 31 and its dependent claims is limited to a bracket which affixes a 1
fender above a wheel or wheels of a vehicle so as to prevent any movement 2
of the fender relative to the longitudinal frame. The Appellant does not 3
point to any formal definition of the term “fender mounting bracket” in the 4
Specification. Neither does the Appellant provide evidence or argument 5
sufficient to show that the term “fender mounting bracket” has a meaning 6
among those of ordinary skill in the art narrower than merely a bracket for 7
mounting a fender. Although the Specification discloses at least one 8
example of a fender mounting bracket which, once installed, restrains the 9
fender from further movement (see, e.g., Spec. 7, ¶ 0033), an example does 10
not limit the scope of a claim term unless the Specification and claim 11
language as a whole expressly disclaim a broader definition. In re Bigio, 12
381 F.3d 1320, 1325 (Fed. Cir. 2004). No such disclaimer is indicated in the 13
Specification or claim language here. 14
Takahashi’s connecting rod is a fender mounting bracket in the sense 15
that a pair of connecting rods is capable of mounting a suitable fender on a 16
suitable vehicle longitudinal frame over the vehicle’s wheels by engaging 17
threaded holes or sleeves on the fender and the longitudinal frame. 18
Takahashi does not disclose any means for limiting the rotation of the ball-19
shanks relative to the connecting arms of Takahashi’s connecting rods. (FF 20
7). As the Appellant points out (see Reply Br. 2), a fender supported by 21
Takahashi’s connecting rods over a ground engaging wheel might tend to 22
sway, and might even contact the wheels, if the vehicle were moved. Claim 23
31 is not limited to a bracket which affixes a fender above a wheel or wheels 24
of a vehicle so as to prevent any movement of the fender relative to the 25
longitudinal frame, however. Takahashi’s connecting rod is a bracket 26
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capable of mounting a fender and, as such, meets the “fender mounting 1
bracket” limitation of representative claim 31 even though a pair of such 2
connecting rods could not prevent all movement of the fender relative to the 3
longitudinal frame. 4
That said, the Examiner’s conclusion that it would have been obvious 5
“to make the bracket portion (38) taught by Mortvedt et al. adjustable using 6
the structure set forth by Takahashi et al., for the purpose of allowing the 7
angle of the fender to be adjusted” (Ans. 5) is conclusory and lacks rational 8
underpinning. Although Takahashi’s connecting rod is susceptible of use as 9
a fender mounting bracket, it is not designed for such an environment. (See 10
FF 2.) In particular, a mere substitution of one of Takahashi’s mounting 11
rods for Mortvedt’s bracket 24 would not allow the angle of the fender to be 12
adjusted. Mortvedt discloses adjusting the position and angle of the fender 13
by pivoting the brackets 22, 24 about bolts 34, 42 and then tightening the 14
bolts 34, 42 to permanently secure the brackets 22, 24 against pivotal 15
movement. (See FF 11.) Takahashi’s connecting rods have no means for 16
permanently securing the rods against pivotal movement. (See FF 7). A pair 17
of Takahashi’s connecting rods could not be merely substituted for 18
Mortvedt’s brackets 22, 24 because the connecting rods would not permit 19
the angle of the fender to be adjusted in the manner disclosed by Mortvedt. 20
Although Takahashi’s connecting rod is susceptible of use as a fender 21
mounting bracket, it is not designed for such an environment. (See FF 2.) 22
The existence of a connecting rod, designed for use in a different 23
environment, which was capable of rotational movement about its ball-24
shanks as well as extension or contraction in length does not imply that one 25
of ordinary skill in the art would have recognized the utility of combining all 26
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of these degrees of freedom when mounting a fender. Without such a 1
recognition, which appears only in the Appellant’s Specification, there was 2
no apparent reason to combine the elements of claim 1 in the fashion 3
claimed. Since the Examiner provides no other apparent reason for 4
combining the teachings of Takahashi and Mortvedt, the conclusion that the 5
subject matter of claims 1-5, 13-19, 21 and 25 would have been obvious is 6
not supported. 7
In rejecting claims 6, 7, 9-11 and 30, the Examiner does not rely on 8
either Burrell or Rowland in articulating any reason why it would have been 9
obvious to combine a bracket assembly including a length-adjustable link 10
with a fender and an elongated support arm as recited in independent claim 11
1. (See Ans. 5-6.) The teachings of Burrell and Mortvedt (see FF 12 and 12
13) do not make up the deficiencies in the teachings of Takahashi and 13
Mortvedt so as to support a conclusion that the subject matter of claims 6, 7 14
and 9-11 would have been obvious from Takahashi, Mortvedt and Burrell or 15
that the subject matter of claim 30 would have been obvious from 16
Takahashi, Mortvedt and Rowland. 17
18
CONCLUSIONS 19
The Appellant has not shown that the Examiner erred in finding that 20
Takahashi discloses a structure capable of functioning as a fender mounting 21
bracket which includes an elongated support arm adapted to be mounted to 22
either of an upper or lower surface of a fender. Therefore, the Appellant has 23
not shown that the Examiner erred in rejecting claims 31-39 under 24
§ 102(e) as being anticipated by Takahashi. 25
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The Appellant has shown that the Examiner failed to articulate 1
reasoning with some rational underpinning sufficient to support the 2
conclusion that the combined teachings of Mortvedt and Takahashi, in the 3
case of claims 1-5, 13-19, 21 and 25; of Mortvedt, Takahashi and Burrell, in 4
the case of claims 6, 7 and 9-11; or of Mortvedt, Takahashi and Rowland, in 5
the case of claim 30, would have provided one of ordinary skill in the art 6
reason to combine a bracket assembly including a length-adjustable link in a 7
fender assembly with a fender and a support arm. Therefore, the Appellant 8
has shown that the Examiner erred in rejecting claims 1-5, 13-19, 21 and 25 9
under § 103(a) as being unpatentable over Mortvedt and Takahashi; in 10
rejecting claims 6, 7 and 9-11 under § 103(a) as being unpatentable over 11
Takahashi, Mortvedt and Burrell; and in rejecting claim 30 under § 103(a) as 12
being unpatentable over Takahashi, Mortvedt and Rowland. 13
14
DECISION 15
We AFFIRM the Examiner’s decision rejecting claims 31-39. 16
We REVERSE the Examiner’s decision rejecting claims 1-7, 9-11, 17
13-19, 21, 25 and 30. 18
No time period for taking any subsequent action in connection with 19
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 20
§ 1.136(a)(1)(iv) (2007). 21
22
AFFIRMED-IN-PART 23
24
25
26
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LV 9
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MCGARRY BAIR PC 11
32 MARKET AVE. SW 12
SUITE 500 13
GRAND RAPIDS, MI 49503 14