Ex Parte Husted

Board of Patent Appeals and Interferences

Jan 31, 2012

11299407 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DALE E. HUSTED
____________

Appeal 2009-015361
Application 11/299,407
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
EDWARD A. BROWN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Dale E. Husted (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1, 7, 8 and
12-14 as unpatentable over Muir (US 5,626,468, issued May 6, 1997) and
Brink (US 4,022,550, issued May 10, 1977) and claims 2-6, 9-11 and 15-30
as unpatentable over Muir, Brink and Derlich (US 4,572,474, issued Feb. 25,
1986). We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a portable compressor assembly
including a sub-frame module 2, a containment frame module 4 and a
canopy module 44. Spec. 1, ll. 23-26 and figs. 2 and 7.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A portable compressor assembly with machinery
comprising at least a compressor driven by a prime mover,
comprising:

a sub-frame module comprising a chassis for mounting
the machinery and a lifting bail;

a containment frame module for supporting, protecting
and transporting the machinery mounted on the sub-frame
module; and

a canopy module mounted on the containment frame
module that covers and protects the machinery mounted on the
sub-frame module, comprising a plurality of ventilation louvers
and access doors.

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SUMMARY OF DECISION
We AFFIRM and ENTER NEW GROUNDS OF REJECTION PURSUANT
TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

OPINION
The obviousness rejection over Muir and Brink
Independent claim 1 requires a portable compressor assembly
including a containment frame module, and a sub-frame module having a
chassis for mounting machinery and a lifting bail. Br. Claims Appendix.
First, Appellant argues that skid 10 of Muir is the entire apparatus and does
not constitute a containment module, as required by claim 1. Br. 5.
According to Appellant, the dictionary definition of the term “module” is
“[e]ach of a series of standardised parts from which a complex structure, e.g.
a building or a piece of furniture[,] can be assembled; loosely a more or less
independent component part.” Id. We are not persuaded by Appellant’s
position for the following reasons.
Applying Appellant’s proffered definition of the term “module” to
mean “[e]ach of a series of standardised parts (i.e., an independent
component part) from which a complex structure can be assembled” (see Br.
5), like the Examiner, we find that skid 10 of Muir is one of a series of parts
(i.e., an independent component part/part of a whole) of the compressor
assembly (i.e., skid, compressor, frame etc.). Ans. 13. See also Muir, fig. 1.
As such, we agree with the Examiner that skid 10 of Muir constitutes a
containment “module,” as required by independent claim 1. Ans. 13.
Appellant further argues that plates 136 of Muir do not constitute a
sub-frame module, as required by claim 1. Br. 5. See also, Muir, fig. 3.
Specifically, Appellant argues that plates 136 of Muir (1) are multiple cover
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plates that cover the top and bottom surfaces of the skid 10 around the
mounted compressor, engine and accessories; and (2) do not offer any
support for the machinery (i.e., compressor, engine and accessories). Id.
We disagree with Appellant’s position because Muir specifically discloses
that plates 136 fit about the compressor 12 and engine 14 (prime mover)
mounted on skid 10. Ans. 14. See also Muir, col. 3, ll. 5-7 and fig. 3. In
addition, Muir also discloses that compressor 12 and engine 14 (prime
mover) can be bolted to plates 136. Muir, col. 3, ll. 45-46. Hence, we agree
with the Examiner that plates 136 of Muir constitute “a sub-frame module,”
as required by independent claim 1.
Appellant also argues that Brink fails to disclose that its compressor
assembly “is a modular structure that mounts on a containment frame
module,” as called for by claim 1. Br. 6. However, Appellant has not
shown why the Examiner’s interpretation of the combined teachings of
Muir and Brink does not disclose a canopy module mounted to a
containment frame module, as called for in claim 1. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In
re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this case,
the Examiner found, and we agree, that Muir discloses all the limitations of
claim 1 except a canopy module including louvers and doors. See Ans. 4-
5. The Examiner further found that Brink discloses a canopy module 54
including louvers 84 and doors 72, 74, wherein canopy module 54 is
mounted (i.e., via flanges 56, 58) to containment frame module 13. Ans.
5-7. See also Brink, col. 3, ll. 28-34 and figs 3-4. As such, we agree with
the Examiner that it would have been obvious to one of ordinary skill in
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the art to modify the portable compressor assembly of Muir to include the
canopy module of Brink “in order to obtain predictable results; those
results being a portable compressor assembly that is well protected and
easily transportable.” Ans. 6. Appellant has not provided any persuasive
evidence to the contrary and has not contested the Examiner’s proposed
combination of Muir and Brink.
Lastly, Appellant argues that pipes 122, 124 of Muir do not constitute
a lifting bail, as required by claim 1. Br. 5. Specifically, according to
Appellant, the dictionary definition of the term “bail” is “[a] hoop handle or
ring; especially a half-hoop for supporting the cover of a wagon; the hoop-
handle of a kettle, pail, etc.” Id. Appellant further contends that (1) in the
compressor art, a lifting bail is a hoop handle-like structure that grasps onto
machinery near its centre of gravity and has a central means for fastening
onto a hook that may lift the machinery;1 and (2) pipes 122, 124 of Muir
“may serve as lifting points underneath the skid 10, such as by a fork lift
truck, but they certainly do not serve as a lifting bail as the term is used in
the art.” Br. 5-6. In response, the Examiner takes the position that because
Muir discloses that pipes 122, 124 provide a lifting point for skid 10, pipes
122, 124 constitute a “lifting bail,” as called for by claim 1. Ans. 14.
In view of Appellant’s proffered definition of the term “bail,” which
we find to be consistent with Appellant’s Specification (see Figure 2 of
Appellant’s Drawings) we agree with Appellant that although pipes 122, 124
may serve as lifting points underneath skid 10 of Muir, pipes 122, 124 do

1 Appellant has cited to Hendrix (US 5,887,922, issued Mar. 30, 1999) (see
Evidence Appendix) to demonstrate a lifting bail 20 common to the
compressor art. Br. 5-6. See also Hendrix, col.1, ll. 16-24 and figs. 1-2.
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not constitute a “lifting bail,” as understood by a person of ordinary skill in
the art. However, we find that Muir discloses lifting plates 163 that include
a hoop handle-like structure/central means (eyes) 164 that can grasp onto
machinery near its centre of gravity or fasten onto a hook that may lift the
machinery. See Muir, col. 3, ll. 33-34 and figs. 3 and 6. As such, we find
that lifting plates 163 with holes (eyes) 164 of Muir constitute a “lifting
bail,” as called for by independent claim 1.
Accordingly, for the foregoing reasons, the rejection of independent
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Muir and Brink is
affirmed. Regarding dependent claims 7, 8 and 12-14, Appellant does not
present any additional substantive arguments separate from those presented
above with respect to the rejection of independent claim 1. Br. 6. As such,
the rejection of claims 7, 8 and 12-14 under 35 U.S.C. § 103(a) as
unpatentable over Muir and Brink is likewise sustained. However, we
denominate the affirmance of the rejection of claims 1, 7, 8 and 12-14 as a
new ground of rejection pursuant to 37 C.F.R. § 41.50(b), because our
interpretation of the disclosure of Muir as well as our interpretation of the
claim limitation directed to a “lifting bail” are different from those of the
Examiner.

The obviousness rejection over Muir, Brink and Derlich
Claims 15-30
Regarding independent claims 15 and 24, Appellant argues that
Derlich specifies fasteners for securing pump 15 and motor 16 to a stand-
alone foundation, which is not relevant to the claimed invention, and
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therefore, sheds no light on how to couple a sub-frame module to a
containment frame module. Br. 7-8.
We are not persuaded by Appellant’s argument because it does not
appear to address the Examiner’s rejection. The Examiner is not using the
teachings of Derlich to merely show how to couple a pump and a motor on a
foundation, as Appellant argues, but to show the known use of flanges,
fasteners, threaded bolts and threaded nuts for mounting components in a
modular manner. Ans. 11 and 15. Moreover, we note that obviousness does
not require that all of the features of the secondary reference be bodily
incorporated into the primary reference. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Hence, we agree with the Examiner that it would have been obvious
to one of ordinary skill in the art at the time of the invention to modify the
combination of Muir and Brink with the mounting flanges of Derlich “in
order to obtain predictable results; those results being a portable compressor
assembly with an easily-assembled, resilient structure.” Ans. 11.
In conclusion, for the foregoing reasons, the rejection of independent
claims 15 and 24 under 35 U.S.C. § 103(a) as unpatentable over Muir, Brink
and Derlich is sustained.
Appellant does not argue the rejection of dependent claims 16-23 and
25-30 separate from independent claims 15 and 24. Br. 8. As such, the
rejection of claim 16-23 and 25-30 over the combined teachings of Muir,
Brink and Derlich is likewise sustained. We denominate the affirmance of
the rejection of claims 15-30 as a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), because it relies in part on our interpretation of the
disclosure of Muir as well as our interpretation of the claim limitation
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directed to a “lifting bail,” which differ from those of the Examiner, as
discussed above.

Claims 2-6 and 9-11
Appellant makes statements in the Appeal Brief regarding claims 2-6
and 9-11 (Br. 7-8); however, these statements merely reiterate the claim
limitations and do not present separate arguments for patentability of these
claims. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”) Therefore, the rejection of claims 2-6 and 9-11
under 35 U.S.C. § 103(a) as unpatentable over Muir, Brink and Derlich is
also sustained. We denominate the affirmance of this rejection as a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b), because it likewise
relies on our interpretations of the “lifting bail” claim limitation and
disclosure of Muir that differ from those of the Examiner, as discussed
above.

DECISION
The decision of the Examiner to reject claims 1-30 is affirmed.
For the reasons discussed above, we denominate our affirmance of the
rejections of claims 1-30 as new grounds of rejection pursuant to 37 C.F.R.
§41.50(b).
Regarding the affirmed rejection(s) that have not been denominated as
new grounds of rejection, 37 C.F.R. § 41.52(a)(1) provides “Appellant may
file a single request for rehearing within two months from the date of the
original decision of the Board.”
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In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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