Ex Parte Ingram et al

Patent Trial and Appeal Board

Dec 16, 2014

10516062 (P.T.A.B. Dec. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES INGRAM, STEWART KENYON WILLIS,
and STUART MCINTYRE
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Appeal 2012-007689
Application 10/516,062
Technology Center 3600
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Before JOHN C. KERINS, ANNETTE R. REIMERS, and LISA M. GUIJT,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James Ingram et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 8, 16, 41, 52, 74–76, 78, 79,
81, 82, 84, 86, 87, and 98–100. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R § 41.50(b).

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THE CLAIMED SUBJECT MATTER
Claim 74, reproduced below, is representative of the subject matter of
this Appeal.
74. An apparatus for use on a tower structure comprising a
crane having a frame, wherein the frame comprises:
at least one upper grip assembly including at least one
clamp;
at least one lower grip assembly including at least one
clamp; and
at least one connecting member connecting the at least
one upper grip assembly and the at least one lower grip
assembly;
wherein the clamps of each grip assembly are adapted to
engage and disengage with the tower structure and, during
engagement, to support the crane on the tower structure wherein
each clamp is mounted by an articulated linkage which
accommodates a change in cross section of the tower structure.

THE REJECTIONS ON APPEAL
Claims 8, 16, 52, 74–76, 78, 82, 84, 86, and 100 are rejected under 35
U.S.C. § 102(b) as anticipated by Nakagawa (JP 11–082285 A; pub. Mar.
26, 1999).1
Claims 41, 87, and 98 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nakagawa.

1 Although the Examiner and Appellants refer to this reference as “Japanese
Patent Document No. ‘285” or “the Japanese document,” we refer to this
reference herein as “Nakagawa.” We derive our understanding of this
reference from an English translation by FLS, Inc., in September 2011,
which is available in the electronic file wrapper of the underlying
application. All references to the text of Nakagawa are to portions of the
translation.
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Claim 79, 81, and 99 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nakagawa and Peiter (DE 197 41 988 A1; pub. Apr. 1,
1999).2
ANALYSIS
Claims 8, 16, 52, 74–76, 78, 82, 84, 86, and 100 — Anticipated by
Nakagawa
Claims 8, 16, 52, 74–76, 78, 82, 84, and 86
Regarding independent claim 74, the Examiner finds that Nakagawa
discloses that “each clamp is mounted by an articulated linkage (i.e., the
fluid cylinder) which accommodates a change in cross section of the tower
structure” as recited in claim 74.3 Ans. 5. In particular, the Examiner finds
such recitation anticipated by “[Nakagawa’s] clamps (12) which are each
mounted by hydraulic or pneumatic fluid cylinders on a ring frame
(paragraph 0018).” Id. at 9–10. In support of this rejection, the Examiner

2Although the Examiner and Appellants refer to this reference as “German
Patent ‘988,’” “German Patent No. 197 41 988,” and “DE19741988,” we
refer to this reference herein as “Peiter.” We derive our understanding of
this reference from an English translation by FLS, Inc., in September 2011,
which is available in the electronic file wrapper of the underlying
application. All references to the text of Peiter are to portions of the
translation.
3Claim 74 does not expressly identify to which structure the clamps are
mounted. The Specification states that “[e]ach clamp is mounted on an
arrangement of struts, ties, and beams that can be adjusted to accommodate
changes in the tower cross section.” Spec. 17:19–22. Claim 79 recites that
the clamps comprise a flexible backing substrate, and claim 82 recites that
the articulated linkage comprises an arrangement of at least one of a struts,
[sic] a tie and a beam. Therefore, the clamp is presumably mounted by an
articulated linkage to the frame.
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further finds that Appellants’ Specification, at Paragraph 31, “broadly
discloses clamps ‘mounted on an arrangement of struts, ties and beams 42
which can be adjusted to accommodate a change in the cross section of the
tower or tower sections (see FIG. 62)’”4 and that “the disclosure lacks
detailed discussion of articulation, pivot and spread necessary to support
[Appellants’] arguments.” Ans. 10.
Appellants contend that the Examiner has applied an unreasonably
broad interpretation of the term “articulated linkage” to include the
“hydraulic ram” of Nakagawa. See Appeal Br. 12–13; Reply Br. 2-3.
Specifically, Appellants contend that
[a] hydraulic cylinder in no way operates as an articulated
linkage under any reasonable meaning of the word
“articulated.” Instead, the rejection is based on . . . an overly
broad interpretation of the . . . claim that is both contrary to
ordinary meaning [of the term “articulated”] and impermissibly
ignores the teachings of [Appellants’] disclosure.

Id. at 12.
In support of Appellants’ interpretation of the claim term
“articulated linkage,” Appellants explain that
the struts attaching the flexible backing to the crane
structure…do not simply meet any “place where two things or
parts are joined.” Rather, one end of the struts specifically meet
at an articulation where the struts may pivot at angles with
respect to each other to accommodate changes in the tower
diameter or cross section. In other words, as the cross section
increases, the struts spread apart via the articulated linkages;

4 Figure 62 was amended to include reference numerals, and in particular, to
include reference numeral 42 corresponding to struts, ties, and beams. See
Amendment and Response filed on July 22, 2010.
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similarly, as the cross section decreases the struts come together
via the articulated linkages.
Appeal Br. 11.
Appellants submit that “the term ‘articulated’ does not merely mean
movable but, under any standard dictionary definition, must include within
its meaning the presence of a pivot between the respective moveable
elements.” Id. Appellants conclude that “[Nakagawa’s] hydraulic rams . . .
do not pivot relative to the device’s frame because hydraulic rams typically
move linearly” and therefore, they are not articulated linkages. Id.
We are persuaded by Appellants that the Examiner’s interpretation of
the claim term “articulated linkage” to include a hydraulic or pneumatic
fluid cylinder is overly broad. Nakagawa teaches that “the climbing crane
itself is made to match the outer diameter of the tower” (Nakagawa ¶ 14)
and describes segments 10 of a ring frame 11 to which hydraulic or
pneumatic fluid cylinder clamps 12 are attached, whereby abutting portions
12a at the ends of the clamps 12 abut the exterior face of the wind power
generation device (Nakagawa ¶ 18). Because the Examiner does not present
any technical reasoning or evidence to suggest that a person of ordinary skill
in the art would understand such attachment by hydraulic or pneumatic fluid
cylinders to be an “articulated linkage,” we do not sustain the Examiner’s
rejection of claims 8, 16, 52, 74–76, 78, 82, 84, and 86 as anticipated by
Nakagawa.

Claim 100
Regarding independent claim 100, which recites that “each clamp of
each grip assembly is adapted to independently engage and disengage a
pocket in a tower structure,” the Examiner notes “that the recitation that an
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element is ‘adapted to’ perform a function is not a positive limitation but
only requires the ability to so perform” and “does not constitute a limitation
in any patentable sense.” Ans. 13, citing In re Hutchinson, 69 USPQ 138.
The Examiner finds that Nakagawa’s “clamps (12) . . . are capable of
independently engaging and disengaging a pocket in a tower structure.” Id.
Appellants contend that “there is no per se rule against the use of functional
language in a claim[,]” rather, “functional language is acceptable where, as
here, it is used to describe the structural attributes of interrelated
components.” Appeal Br. 13 (citing MPEP 2170.05(g)). Appellants argue
that the pockets are claimed inferentially as part of the environment of the
tower structure and inferentially as a result of their interrelationship with the
clamps. Id.
We are persuaded by Appellants that claim 100 recites pockets as a
structural element of the claim. The Specification describes the pockets as
“purpose built attachment points, which are adapted to receive the jacking
crane” whereby “[t]he jacking crane may have a first and second grip
assembly which are adapted to fit into the pockets.” Spec. 6:32–7:4; see
also 16:10–12 (“The grip assemblies grasp the tower using arms that fit into
pockets in the tower sections.”). Figure 62, as amended, identifies pockets
by reference 54. The Examiner has not made a finding as to any disclosure
in Nakagawa of pockets.5 Accordingly, we do not sustain the Examiner’s
rejection of claim 100.

5 Should the Examiner reopen prosecution, Peiter notably discloses that “the
crane stand has a number of movable locking elements, which can be
inserted for anchoring the crane stand in corresponding recesses in the tower
segments” to protect the crane from falling. See Peiter 10:5,12–21.
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Claims 41, 87, and 98 — Unpatentable over Nakagawa.
The Examiner’s rejection of claims 41, 87, and 98 as unpatentable
over Nakagawa (see Ans. 7–8) is based on the same deficient findings and
conclusions discussed above with respect to independent claim 74. The
Examiner’s proposed modification of Nakagawa does not remedy the
deficiencies of Nakagawa discussed above. Accordingly, for similar
reasons, we do not sustain the Examiner’s rejection of claims 41, 87, and 98
as unpatentable over Nakagawa.

Claims 79, 81, and 99 — Unpatentable over Nakagawa and Peiter
The Examiner’s rejection of claims 79 and 81 as unpatentable over
Nakagawa and Peiter (see Ans. 8–9) is based on the same deficient findings
and conclusions discussed above with respect to independent claim 74.
The addition of Peiter is not relied upon to remedy the deficiencies of
Nakagawa discussed above. Accordingly, for similar reasons, we do not
sustain the Examiner’s rejection of claims 79 and 81 as unpatentable over
Nakagawa and Peiter.
Regarding independent claim 99, which recites that “each clamp
compris[es] a compliant pad mounted on a flexible backing substrate,” the
Examiner finds that Peiter “teaches rollers (66) which serve as clamps and
comprise compliant padding mounted on [a] flexible backing substrate (70;
i.e., the rubber-coated running surface), wherein the rollers are adapted to
engage and disengage with the tower structure via fluid cylinders (72), and,
during engagement, to support the crane on the tower structure.” Ans. 11–
12 (citing Peiter 9:15–10:4; 13:7–23; Fig. 1). The Examiner reasons that
“[i]t would have been obvious to one having ordinary skill in the art . . . to
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substitute for the clamps of [Nakagawa] the clamps of [Peiter], since the
modification would have merely required the substitution of one known
element (i.e., the [Peiter] clamps) for another (i.e., the [Nakagawa] clamps)
without any change in their intended functions.” Id. at 9.
Appellants do not dispute that Peiter’s conveyor belt, which is
elastically yielding and rubber-coated to avoid damage to the tower’s surface
and to provide a high coefficient of friction, discloses the compliant pad
mounted on a flexible backing substrate, as recited in claim 99. See Peiter
9:8–10; 13:10–11. Rather, Appellants argue that “because [Peiter] drives up
the tower it never disengages with the tower structure as required by instant
Claim 99.” Appeal Br. 12. However, as the Examiner explains, “[Peiter]
teaches rollers (78) mounted to pivots (74), wherein the rollers (78) are
pressed or clamped against the tower structure in response to actuation of the
fluid cylinders (72).” Ans. 12. Indeed, crane stand 18, as disclosed in
Peiter, is clamped to and released from the tower segments by clamping and
releasing guide rollers 66 and optionally supporting rollers 78 to move the
crane stand upwardly along the tower by reeling in holding cable 62. See,
e.g.,, Peiter 15:12–16:18.
Appellants also argue that “no explanation is provided for how the
[Nakagawa] device, which uses hydraulic cylinders, could be modified to
include the treadmill of the [Peiter] device to thereby arrive at [Appellants’]
claimed invention.” Appeal Br. 12. Although the Examiner identifies
Peiters’ rollers 66 as the multiple clamps recited in claim 99, and Peiter’s
belt conveyor 70 as the recited compliant pad mounted on a flexible backing
substrate (Ans. 12), we are persuaded by Appellants’ argument that the
Examiner fails to explain, for example, whether Peiter’s clamps, or rollers
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66 and 78, which are driven by hydraulic cylinders, may be “substituted” by
being driven by Nakagawa’s hydraulic or pneumatic fluid cylinder clamp 12,
or whether Peiter’s conveyor belt 70, or a piece thereof, may be looped
about or affixed to Nakagawa’s rollers 12a to prevent damaging the tower.
Thus, the Examiner failed to articulate reasoning having sufficient rational
underpinning regarding the substitution of elements to support the legal
conclusion of obvious, in the manner described in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398 (2007). Accordingly, we do not sustain the Examiner’s
rejection of claim 99.

NEW GROUND OF REJECTION
Claims 8, 16, 52, 74–76, 78, 82, 84, 86, 87, and 98 —35 U.S.C. § 112, First
Paragraph, Written Description
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). Claims 8, 16, 52, 74–76, 78, 82, 84, 86, 87, and 98 are rejected
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. The purpose of the written description requirement
of 35 U.S.C. § 112, first paragraph, is to “‘clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.’”
Aria Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed.
Cir. 1991). “Adequate written description means that, in the specification,
the applicant must ‘convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [claimed]
invention.”’ Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007) (citing
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Vas-Cath, Inc., at 1563–64). “When no such description can be found in the
specification, the only thing the PTO can reasonably be expected to do is to
point out its nonexistence.” Id. (citing In re Alton, 76 F.3d 1168, 1175 (Fed.
Cir. 1996)). “In the context of the written description requirement, an
adequate prima facie case must therefore sufficiently explain to the applicant
what, in the examiner's view, is missing from the written description.” Id.
The burden then shifts to the Appellants to demonstrate where adequate
written description can be found. Id. at 1371.
The issue before us is whether the disclosure in the Specification as
originally filed reasonably supports each clamp being mounted by an
“articulated linkage,” as now required by claim 74.6 At the outset, we note
that Appellants have not identified, nor can we find, disclosure in the
Specification that each clamp of the claimed invention is mounted by an
“articulated linkage.” See Appeal Br. 10. Appellants refer to the
Specification at page 17, lines 19–33 and/or amended Figure 62 to support
their assertions that “[e]ach clamp also includes an arrangement of struts,
ties and beams (42, 44) that move relative to each other, increasing or
decreasing the angle between them” and that “[t]he struts, ties, and beams
(42, 44) may do this because they are attached to an articulated pivot or
linkage located in each corner of the grip assemblies (38a, 38b).” Appeal
Br. 7. However, the Specification discloses that “one or more clamps are
mounted on an arrangement of struts, ties and beams which can be adjusted
to accommodate a change in the cross section of the tower,” but does not
explain the mechanics of adjusting such an arrangement. Spec. 7:20–23; See

6 The “articulated linkage” limitation was added to claim 74 in an
amendment filed July 22, 2010.
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also id. at 17:19–22. Nonetheless, the absence of a recited term in the
Specification is not dispositive so long as the disclosure reasonably supports
the limitation. The drawings in an application can be relied upon to show
that an inventor was in possession of the claimed invention as of the filing
date. See Vas-Cath, 935 F.2d at 1563-64 (“[D]rawings alone may be
sufficient to provide the ‘written description of the invention’ required by §
112, first paragraph.”). However, we find that each clamp being mounted by
an articulated linkage, including a pivot, is not expressly depicted in
amended Figure 62. As such, we find that Appellants’ original disclosure
fails to provide adequate written descriptive support for the claimed each
clamp being mounted by an “articulated linkage.”
Although Appellants contend that “the drawings are part of the
application and one skilled in the art reading the description and looking at
the drawings would immediately grasp that struts, ties, and beams are joined
at an articulation or a pivot[,]” (Appeal Br. 10–11), Appellants cannot rely
on the knowledge of one of ordinary skill in the art to supply the written
description support for the claimed subject matter. See In re Barker, 559
F.2d 588, 593 (CCPA 1977), cert. denied, 434 U.S. 1064 (1978)(The mere
fact “[t]hat a person skilled in the art might realize from reading the
disclosure that such a step is possible is not a sufficient indication to that
person that that step is part of appellants’ invention.”). Further, to the extent
that Appellants are contending that one of ordinary skill in the art would
know that each clamp must necessarily be mounted by an articulated
linkage, Appellants have not provided any persuasive reasoning or evidence
to support this contention.
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Accordingly, we enter a New Grounds of Rejection rejecting
independent claim 74, and claims 8, 16, 41, 52, 75, 76, 78, 79, 81, 82, 84,
86, 87, and 98 ultimately depending therefrom, under 35 U.S.C. § 112, first
paragraph, as failing to meet the written description requirement set forth
therein.

DECISION
We REVERSE the Examiner’s rejection of claims 8, 16, 52, 74–76,
78, 82, 84, 86, and 100 under 35 U.S.C. § 102(b).
We REVERSE the Examiner’s rejection of claims 41, 87, and 98
under 35 U.S.C. § 103(a).
We REVERSE the Examiner’s rejection of claim 79, 81, and 99 under
35 U.S.C. § 103(a).
We enter a NEW GROUND OF REJECTION of claims 8, 16, 41, 52,
74–76, 78, 79, 81, 82, 84, 86, 87, and 98 under 35 U.S.C. § 112, first
paragraph, pursuant to our authority under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial
review[,]” and that Appellants, WITHIN TWO MONTHS FROM THE
DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of
proceedings (37 C.F.R. § 1.197(b)) 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,
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and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner; or
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record.
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). See 37
C.F.R. § 41.50(f).

REVERSE; 37 C.F.R. § 41.50(b)

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