Ex Parte Hren

Patent Trial and Appeal Board

May 29, 2018

13831295 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/831,295 03/14/2013
23409 7590 05/31/2018
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
William Hren
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
043020-9126-USOl 6501
EXAMINER
JARRETT, RONALD P
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
05/31/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM HREN
Appeal2017-008101
Application 13/831,295
Technology Center 3600
Before: BENJAMIN D. M. WOOD, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-008101
Application 13/831,295
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
4, 6-13, 16-19, and 21-34. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The claims are directed to a boom and dipper handle assembly for an
electric rope or power shovel. Spec. i-f 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A mining machine supported on a support
surface, the mining machine comprising:
a base including a frame portion that is
rotatable relative to the support surface about a
machine axis;
a boom including a first end coupled to the
base, a second end opposite the first end, and a
sheave coupled to the second end of the boom, a first
distance being defined between the machine axis and
the second end of the boom, a first height defined
between the support surface and the second end of
the boom;
a hoist rope extending over the sheave;
a member movably coupled to the boom
about a pivot point that is positioned substantially
between the first end and the second end of the boom,
the member including a first end and a second end, a
second distance being defined between the machine
axis and the pivot point, a length ratio of the second
distance to the first distance being between 27% and
3 9%, a second height defined between the support
surface and the pivot point, a height ratio of the
second height to the first height being between 51 %
and 64%; and
a dipper coupled to the second end of the
member and being supported by the hoist rope such
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Application 13/831,295
that the hoist rope raises the dipper as the rope is
reeled in.
Bag er
Siegel
Hren
REFERENCES
us 1,599,630
us 3 ,5 80,405
US 6,434,862 B 1
REJECTIONS
Sept. 14, 1926
May 25, 1971
Aug. 20, 2002
Claims 1--4 and 6-10 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Hren. Final Act. 6.
Claims 11-13, 16, 27, and 28 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Hren and Bager. Id. at 9.
Claims 17-19, 21-26, and 29-34 are rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Hren and Siegel. Id. at 12.
ANALYSIS
Claims 1-4 and 6-10-Unpatentable over Hren
Independent claim 1 recites, inter alia, a "length ratio" between 27%
and 39%, and a "height ratio" between 51 % and 64%. App. Br. 26 (Claims
App.). The Examiner contends (Ans. 3), and Appellant does not dispute,
that these ratios quantify the location of the rope shovel's shipper shaft
relative to the boom. The Examiner finds that Hren discloses the structure
of claim 1 except for the claimed ratios. Final Act. 6-7. For these ratios, the
Examiner asserts that "where conditions of a claim are disclosed in the prior
art, discovering the optimum or workable ranges involves only routine skill
in the art." Id. at 7-8. In response to Appellant's contention that the
Examiner "failed to establish that either the length ratio or the height ratio is
known to be a result-effective variable," the Examiner asserts that the length
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and height ratios are result-effective variables because "changes in shipper
shaft location ... have recognizable results through the use of basic force,
moment, and energy balance equations known to one of ordinary skill in the
art." Ans. 5.
The Examiner is generally correct that "where the general conditions
of a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation." In re Applied
Materials, 692 F.3d 1289, 1295 (Fed. Cir. 2012) (citing In re Aller, 220 F.2d
454, 456 (CCPA 1955). But "[t]his rule is limited to cases in which the
optimized variable is a 'result-effective variable."' Id. (citing In re Antonie,
5 59 F .2d 618, 620 ( CCP A 1977) ). That is, one of ordinary skill in the art
must have been aware that the particular variable achieves a recognized
result before the determination of the optimum or workable ranges of the
variable can be characterized as routine experimentation. Antonie, 559 F.2d
at 620. Here, the Examiner has not provided evidence establishing that one
of ordinary skill in the art would have recognized either the claimed length
ratio or height ratio-----or even the relative shipper shaft location-to be
result-effective variables. The Examiner has not pointed us to any teaching
in the cited prior art references that discusses these parameters, much less
attributes to them any particular result. Moreover, the Examiner's statement
that changes in shipper shaft location "have recognizable results through the
use of basic force, moment, and energy equations known to one of ordinary
skill in the art" lacks any citation to record evidence. Accordingly, the
Examiner has not established, on the present record, that the claimed length
and height ratios are recognized by the prior art as result-effective variables.
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The Examiner alternatively argues that U.S. Patent No. 6,314,667 Bl
("Rife") describes a shovel with "a length ratio and height ratio that are
substantially below 50%," and that U.S. Patent No. 1,769,991 ("Fundom")
describes a shovel with "a length ratio and height ratio that are substantially
above 50%." (Final Act. 8, 16, 17 (citing Rife Fig. 1, Fundom Fig. 1).
Appellant "disagrees with this general statement," and notes that "[t]he
Examiner did not attempt to identify values of the relevant lengths or heights
in either of these references." App. Br. 9.
"A prima facie case of obviousness typically exists when the ranges
of a claimed composition overlap the ranges disclosed in the prior art." In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (internal citations omitted).
A prima facie case of obviousness may also exist where the claimed ranges
do not overlap prior-art ranges, but are merely close. MPEP § 2144.05(1)
(citing, e.g., Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783
(Fed. Cir. 1985). In the present case, we are not persuaded that the
Examiner has made the requisite showing that the prior art discloses ranges
that overlap or are close to the claimed length-ratio and height-ratio ranges.
The Examiner does not state the particular length ratios and height ratios
disclosed in Rife and Fundom, explain how these values were determined, or
explain how they could be determined in light of the fact that the drawings
are not described as drawn to scale. Stated another way, we cannot confirm
from the cited drawings that the Examiner's findings regarding their
disclosed length and height ratios are correct. Moreover, even if we
accepted these values as correct, a prima facie case of obviousness would
require the combination of Rife and Fundom with each other and with Hren.
However, the Examiner has not articulated a reason to make these
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combinations. Therefore, we do not sustain the Examiner's rejection of
claim 1 and its dependent claims 2--4 and 6-10 as unpatentable over Hren.
Claims 11-13, 16, 27, and 28-Unpatentable over Hren and Eager
The Examiner finds that Hren teaches all of the limitations of
independent claim 11 except for the torsion box being offset from the
centerline axis of the member. Final Act. 10. The Examiner therefore relies
on Bager to teach the missing limitation. According to the Examiner, Bager
teaches a "dipper handle" corresponding to the claimed member, the dipper
handle including a torsion box positioned proximate the second end of the
dipper handle, and "the center of the torsion box (or center of bolt 29)
appears to be offset from the centerline axis." Id. (citing Bager 3, Fig. 1).
The Examiner further explains in the Answer that "Bager' s Figure 1
discloses the claimed limitation in that the torsion box depicted in a dotted
line suggests the torsion box is behind or on the other side of the member as
shown in Figure 1, and is thus offset from the member's centerline axis in a
horizontal direction." Ans. 15. Appellant disputes that Bager teaches that
the center of the torsion box is offset from the centerline axis. App. Br. 13.
We are not persuaded that Bager teaches an offset torsion box. We
understand that the Examiner's position is that Figure 1 of Bager depicts the
torsion box, represented by the dashed circle, to be behind or on the other
side of dipper handle 2. However, dipper handle 2 is comprised of two
dipper sticks, which appear to be mounted on either side of the torsion box.
Bager 3:1---6; Figs. 1, 4, 7, 8. Thus, it is at least as likely that the torsion box
is mounted in the middle of the dipper handle rather than on the side of the
dipper handle. Because we are not persuaded that Bager teaches the claimed
offset torsion box, we do not sustain the rejection.
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Claims 17-19, 21-26, and 29-34-Unpatentable over Hren and Siegel
Independent claim 17 recites a "first ratio" between 20% and 30% and
a "second ratio" between 1.7% and 14.3%. App. Br. 29 (Claims App.). The
Examiner acknowledges that Hren does not teach these ranges, but asserts
that optimizing the parameters on which the ratios are based requires only
routine skill. Final Act. 14; see also Ans. 16 (concluding that "these ratios
are result-effective variables"). As above, however, the Examiner has not
shown the relevant parameters to be result-effective variables. Likewise,
independent claim 29 recites a "radius being between approximately 20%
and 30% of the boom length" and an angle between the radius and the boom
of "between approximately 3 degrees and approximately 3 6 degrees." The
Examiner asserts that optimizing the radius length and the claimed angle
require only routine skill but, as above, has not shown these parameters to be
result-effective variables. Final Act. 12-13; Ans. 20 ("maintaining that "the
claimed radius length and ranges of theta are result-effective variables").
Accordingly, for the reasons addressed above, we do not sustain the
Examiner's rejection of claims 17-19, 21-26, and 29-34 as unpatentable
over Hren and Siegel.
DECISION
For the above reasons, the Examiner's rejection of claims 1--4, 6-13,
16-19, and 21-34 is reversed.
REVERSED
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