Ex parte Jensen

Board of Patent Appeals and Interferences

Feb 28, 2001

08994159 (B.P.A.I. Feb. 28, 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for publication and is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BRIAN D. JENSEN
____________
Appeal No. 2000-1633
Application No. 08/994,159
____________
ON BRIEF
____________
Before COHEN, NASE, and LAZARUS, 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 6, 9, 12, 13, 15 and 16. Claims 7,
8, 10, 11, 14 and 17 have been allowed. No claim has been
canceled.
We AFFIRM.
BACKGROUND
Appeal No. 2000-1633 Page 2
Application No. 08/994,159
The appellant's invention relates generally to drive
wheels and more particularly to drive wheels having pivotally
mounted bogies to drive a chain (specification, p. 1). A copy
of the claims under appeal is set forth in the appendix to the
appellant's brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Durand 3,916,708 Nov. 4,
1975
Claims 1 to 6, 9, 12, 13, 15 and 16 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Durand.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 11,
mailed October 18, 1999) for the examiner's complete reasoning
in support of the rejection, and to the brief (Paper No. 10,
filed October 1, 1999) for the appellant's arguments
thereagainst.
Appeal No. 2000-1633 Page 3
Application No. 08/994,159
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). The inquiry as to whether a reference anticipates a
claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the
claims to "'read on' something disclosed in the reference,
Appeal No. 2000-1633 Page 4
Application No. 08/994,159
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it."
Durand discloses a drive sprocket for driving an endless
track of a track-type vehicle. The drive sprocket comprises a
hub having a plurality of circumferentially-disposed teeth on
the
periphery thereof to define a notch between each pair of
adjacent teeth. A U-shaped metallic insert is disposed in
each of the notches and is secured to the hub by retaining
means. A layer of elastomeric material may be disposed
between each of the inserts and the hub to absorb shock loads
imposed on the sprocket during vehicle operation. Each insert
defines a substantially smooth and uninterrupted root profile
or bearing surface thereon adapted to engage a bushing of the
track for track driving purposes. In the embodiment of Figure
7, the drive sprocket 10c includes a hub 17c having inserts
20c cradled in notches 19c defined between pairs of
circumferentially-adjacent teeth 18c. Each insert comprises a
single pair of laterally-spaced tabs 22c each disposed in a
notch 23c formed on a respective outboard side of hub 17c. A
Appeal No. 2000-1633 Page 5
Application No. 08/994,159
laterally-extending pin 33 projects through aligned apertures
34, formed through the tabs, and a bore (not shown) formed
through the hub to retain the insert in position thereon. A
cushioning means 27c, comprising a layer of elastomeric
material, is disposed between the insert and the hub. The
apertures 34 are shown in Figure 7 to be slightly oversized,
like the apertures 30 shown in Figure 5, to permit slight
movements of the insert relative to the hub.
Claim 12 reads as follows:
A drive wheel assembly for driving a chain,
comprising:
a wheel;
a plurality of bogies each comprising a first hook;
a plurality of mounts pivotally connecting said
bogies to said wheel at pre-selected spaced
circumferential locations about said wheel; and
an impact absorbing cushion member disposed between
each of said bogies and said wheel.
In applying the above-noted test for anticipation, we
reach the conclusion that claim 12 is anticipated by Durand.
In that regard, claim 12 is readable on Durand as follows: A
drive wheel assembly for driving a chain (see Figure 1 of
Durand), comprising: a wheel (Durand's drive sprocket 10c); a
Appeal No. 2000-1633 Page 6
Application No. 08/994,159
The American Heritage Dictionary, Second College1
Edition, (1982) defines "hook" as "A curved or sharply bent
device, usually of metal, used to catch, drag, suspend, or
(continued...)
plurality of bogies each comprising a first hook (Durand's
inserts 20c); a plurality of mounts pivotally connecting said
bogies to said wheel at pre-selected spaced circumferential
locations about said wheel (Durand's hub 17c which define
notches 19c having bores which receive pins 33 to pivotally
connect the inserts 20c to the drive sprocket 10c); and an
impact absorbing cushion member disposed between each of said
bogies and said wheel (Durand's cushioning means 27 disposed
between each insert 20c and the hub 17c).
The appellant argues (brief, pp. 6-9) that the
anticipation rejection is improper since "[t]he cushioned
metallic insert in Durand is not a hook pivotally connected to
the wheel." We do not agree. In our view, the embodiment of
Durand's drive sprocket shown in Figure 7 is readable on the
claimed hook pivotally connected to the wheel. In that
regard, the claim 12 language of "a plurality of bogies each
comprising a first hook " is clearly readable on Durand's[1]
Appeal No. 2000-1633 Page 7
Application No. 08/994,159
(...continued)1
fasten something."
inserts 20c since each insert is a curved device used to catch
or engage a bushing of the track for track driving purposes.
Furthermore, the claimed language that the bogies are
pivotally connected to the wheel is, in our view, clearly
inherent in the embodiment of Durand's drive sprocket shown in
Figure 7 since each insert 20c is connected to the drive
sprocket 10c by a single pin 33. The provision of the
oversized apertures 34 and the cushioning means 27c would
inherently permit a limited amount of pivotable movement of
the inserts 20c with respect to the sprocket 10c.
Accordingly, Durand's inserts 20c are pivotally connected to
the sprocket 10c.
After the USPTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to the
appellant to prove that the subject matter shown to be in the
prior art does not possess the characteristics of the claimed
invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964,
966 (Fed. Cir. 1985); In re King, 801 F.2d 1324, 1327, 231
Appeal No. 2000-1633 Page 8
Application No. 08/994,159
USPQ 136, 138 (Fed. Cir. 1986). Hence, appellant's burden
before the USPTO is to prove that Durand's inserts 20c are not
pivotally connected to the sprocket 10c. The appellant has
not come forward with any evidence to satisfy that burden.
Compare In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977); In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563,
566-67 (CCPA 1971). Appellant's mere argument on pages 6-9 of
the brief that Durand does not disclose inserts pivotally
connected to the sprocket is not evidence. See In re Pearson,
494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974)(attorney's
arguments in a brief cannot take the place of evidence).
The argument presented by the appellant does not convince
us that the subject matter of claim 12 is novel for the
reasons set forth above and the reasons set forth by the
examiner in the response to argument section of the answer,
which we hereby incorporate. Accordingly, the decision of the
examiner to reject claim 12 under 35 U.S.C. § 102(b) is
affirmed.
Appeal No. 2000-1633 Page 9
Application No. 08/994,159
The decision of the examiner to reject claims 1 to 6, 9,
13, 15 and 16 under 35 U.S.C. § 103 is also affirmed since the
appellant has not argued separately the patentability of any
particular claim apart from the others, thus allowing claims 1
to 6, 9, 13, 15 and 16 to fall with claim 12 (see In re Young,
927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In
re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978); and
37 CFR
§§ 1.192(c)(7) and (8)(iv)).
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 6, 9, 12, 13, 15 and 16 under 35 U.S.C. § 102(b)
is affirmed.
Appeal No. 2000-1633 Page 10
Application No. 08/994,159
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD B. LAZARUS )
Administrative Patent Judge )
Appeal No. 2000-1633 Page 11
Application No. 08/994,159
JOHN J. CHEEK
CATERPILLAR INC
PATENT DEPARTMENT AB6490
100 N E ADAMS STREET
PEORIA, IL 61629-6490
Appeal No. 2000-1633 Page 12
Application No. 08/994,159
JVN/jg