Ex Parte Johnston

Board of Patent Appeals and Interferences

Sep 30, 2010

10080982 (B.P.A.I. Sep. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROGER L. JOHNSTON
____________________

Appeal 2009-004993
Application 10/080,982
Technology Center 3600
____________________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Roger L. Johnston (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-23 (Non-Final
Rejection, mailed Apr. 20, 2007). An oral hearing was held on September
14, 2010. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s claimed invention pertains to a mobile gantry crane
having three booms. Spec. 3, ll. 7-10. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A triangulated mobile gantry crane, comprising:
(A) first, second, and third booms, each of which
has a vertical axis and comprises 1) a mobile base that is
independently supported on the ground, that is rotatable about
the vertical axis to steer the crane and 2) a lift leg that is
extendible about the vertical axis, that is supported on said
base, and that has an upper end, said first boom being
positioned laterally between and longitudinally remote from
said second and third booms, wherein first, second, and third
horizontal lines interconnecting said first, second, and third
booms form an acute triangle;
(B) a plurality of horizontal beams that functionally
interconnect said lift legs and that are raisable with coordinated
lifting of said first, second, and third booms to lift a load from
the ground, and wherein at least one of the beams is linearly
extendible to increase the horizontal spacing between two of
said booms;
(C) rigging that extends downwardly from the beams
and that is detachably coupleable to the load after the gantry
crane is transported to a position in which at least one of the
beams is located over the load, the rigging lifting the load from
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the ground upon subsequent extension of said booms and that
then being releasable from the load upon subsequent retraction
of the said booms.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Gonzales US 3,831,791 Aug. 27, 1974
Rulison US 4,749,324 Jun. 7, 1988
Brower US 4,897,011 Jan. 30, 1990
Tana US 4,973,094 Nov. 27, 1990
Grillet FR 2,420,502 Oct. 19, 1979
Fedorenko SU 887,434 Dec. 7, 1981
Varenne FR 2,597,460 Oct. 23, 1987

The following Examiner’s rejections are before us for review:
1. Claims 1-23 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention;
2. Claims 1-4, 7, 9-11, 17-19, and 21-23 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Fedorenko (SU 887,434),
Varenne (FR 2,597,460), and either Grillet (FR 2,420,502) or Gonzales;
3. Claim 5 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fedorenko (SU 887,434), Varenne (FR 2,597,460), and
either Grillet (FR 2,420,502) or Gonzales, and further in view of Brower;
4. Claims 6 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fedorenko (SU 887,434), Varenne (FR 2,597,460), and
either Grillet (FR 2,420,502) or Gonzales, and further in view of Brower and
Tana;
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5. Claims 12, 13, 16, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fedorenko (SU 887434), Varenne (FR
2,597,460), and either Grillet (FR 2,420,502) or Gonzales, and further in
view of Rulison;
6. Claim 14 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fedorenko (SU 887434), Varenne (FR 2,597,460), and
either Grillet (FR 2420502) or Gonzales, and further in view of Brower and
Rulison; and
7. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fedorenko (SU 887434), Varenne (FR 2,597,460), and
either Grillet (FR 2420502) or Gonzales, and further in view of Brower,
Rulison, and Tana.

OPINION
1. Claims 1-23 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which Appellant regards as the invention
Subsumed within the indefiniteness rejection are three different bases.
We address each in turn.
A. The Examiner first addressed claims 1, 13, 14, and 16-18, and
concluded that the claimed recitation “first, second, and third horizontal
lines interconnecting said first, second, and third booms form an acute
triangle” is vague and indefinite. Ans. 4. We disagree with the Examiner’s
conclusion. One of ordinary skill in the art would understand this quoted
language to require that, when the crane is viewed from the top, an acute
triangle is formed by three imaginary lines that connect the booms. See,
e.g., Reply Br. 21.
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B. The Examiner next addressed independent apparatus claims
1-3, 7, 13, 14, 16, and 21. Appellant argues these claims and those that
depend therefrom as a group. App. Br. 21, 23. We select claim 1 as the
representative claim, and claims 2-16, and 21 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).
The Examiner takes issue with the “rigging” limitation of claim 1,
concluding that it is not clear whether Appellant is claiming a method of
loading and unloading in combination with the gantry device or merely
reciting functional language. Claim 1 recites, in part, “the rigging lifting the
load from the ground upon subsequent extension of said booms and that then
being releasable from the load upon subsequent retraction of the said
booms.” Appellant apparently contends that this is functional language that
is appropriate for an apparatus claim, while at the same time seemingly
asserting that the limitation requires a particular operation of the device by
the performance of method steps – the lifting and lowering of the load via
rigging and boom movement. See Reply Br. 22-23.
We agree with the Examiner that the above-quoted phrase does not
clearly set forth a functional limitation, and therefore renders claim 1
indefinite. Even if one of ordinary skill might be able to make assumptions
as to Appellant’s intended meaning, the rejection is appropriate so as to
remove unnecessary ambiguity during prosecution. Ex parte Miyazaki, 89
USPQ2d 1207, 1212 (BPAI 2008) (during prosecution, the threshold
standard of ambiguity for indefiniteness is lower than it might be during
litigation of an issued patent). We affirm the rejection of claim 1 and of
claims 2-16, and 21 under § 112, second paragraph.
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C. The Examiner also rejected claim 20 (which depends from
claim 17) as lacking antecedent basis for the term “vehicle.” Non-Final Rej.
at 2. Appellant maintains that the Examiner has indicated that an
amendment to claim 20 (to replace “vehicle” with “gantry crane”) would
overcome the rejection. App. Br. 2. Appellant filed such an amendment
concurrently with the Appeal Brief on October 22, 2007, but entry of that
amendment was denied. See Reply Br. 2; Advisory Action, dated June 5,
2008. Appellant invites us to “consider such an amendment to clarify the
interpretation of claim 20.” Reply Br. 2. We review claim 20 as it stands
absent the proposed and denied amendment, and affirm the rejection of
claim 20 under § 112, second paragraph.

2. Claims 1-4, 7, 9-11, 17-19, and 21-23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fedorenko (SU 887,434), Varenne (FR
2,597,460), and either Grillet (FR 2,420,502) or Gonzales
Claims 1, 10 and 11
Claim 1 recites a gantry crane comprising: a) three vertical booms
arranged in the form of an acute triangle, with each boom having a rotatable
base for steering and extendable lift legs; b) a plurality of horizontal beams
interconnecting the legs, with at least one of the beams being extendable;
and c) rigging that extends from the beams. The beams are raisable with
coordinated lifting of the booms to lift a load.
The Examiner found that Fedorenko discloses a triangular mobile
gantry crane with three booms, three horizontal beams, and rigging. Non-
Final Rej. 3. The Examiner further found that one of the booms is a
V-shaped boom, rather than the recited vertical axis boom. Id. Fedorenko’s
gantry is rail mounted and thus lacks the recited rotatable boom base to steer
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the crane. See Fedorenko, fig. 2; Non-Final Rej. 3. The Examiner found
that Varenne discloses a three-legged powered gantry with vertical-axis
telescoping booms mounted on steerable wheels, that the booms are
adjustable by lifting jacks, and that the gantry is capable of being oriented at
different positions. Non-Final Rej. 3-4; Ans. 9-10. As Appellant
acknowledges, Varenne teaches an extendable beam which extends beyond
the triangle formed by the legs rather than between two adjacent booms.
Reply Br. 37-38; see Varenne, fig. 1. The Examiner turns to Grillet and,
alternatively, Gonzales for the disclosure that it was known in the art to
provide gantries with extendable beams and booms for adjustability. Non-
Final Rej. 4. The Examiner maintains that it would have been obvious to
modify Fedorenko’s gantry’s rail mounted legs as taught by Varenne “so
that an operator effectively and independently could control the gantry” and
to have extendible booms and beams as taught by Grillet and Gonzales “so
that the modified gantry would be capable of lifting different sizes of loads
at different locations.” Non-Final Rej. 4; see also Ans. 11-12.
Appellant argues that one would not modify Fedorenko’s rail mounted
gantry with Varenne’s teachings because providing a rail mounted gantry
with steerable legs “would be detrimental, if not catastrophic, to operation of
the crane assembly.” Reply Br. 30; see also App. Br. 25. Appellant’s
argument is not persuasive. The Examiner’s proposed combination of
teachings results in a moveable, wheeled gantry, not a rail-mounted gantry
destined for catastrophic derailment. Contrary to Appellant’s position, one
of ordinary skill would not fail to recognize that Fedorenko’s triangulated
beam configuration is applicable to gantries other than those mounted on
rails. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
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person of ordinary skill is also a person of ordinary creativity, not an
automaton.”) Further, the Examiner responds to Appellant’s argument that
Varenne’s steerable wheels are incapable of following the “generally linear
orientation” of rails (App. Br. 25) by pointing out that Varenne’s figure 5
depicts the steerable wheels following a straight, rail-like path. See Ans. 13.
We determine that the Examiner’s conclusion of obviousness is adequately
supported by articulated reasoning with rational underpinning. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
We also do not find persuasive Appellant’s argument that the
modified Fedorenko gantry will not be suitable for its purpose because the
load will be suspended offset from the center of the crane’s footprint or the
crane’s center of gravity. See App. Br. 24. Even if we were to accept as true
the unsupported attorney argument that designers avoid an offset load
situation “at all cost” (id.), we agree with the Examiner that one of ordinary
skill would recognize that the rigging point is not confined to only one
beam, and that more rigging or cranes could be used on the other beams as
necessary depending upon the size and weight of the load. See Ans. 14.
Further, we note that Appellant’s embodiment shown in Figure 2 would also
have an offset loading configuration if a rigging point R on only one beam
were utilized, which appears to be contemplated in the rigging limitation of
claim 1 (the rigging is coupleable to the load when “at least one of the beams
is located over the load”).
Appellant contends that altering Varenne’s device to include a
triangulated beam configuration would “unnecessarily complicate the
construction and operation of the machinery transporting and handling
device disclosed therein.” App. Br. 25. First, the Examiner’s proposed
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combination involves the modification of Fedorenko’s triangulated gantry,
not Varenne’s device. Second, Varenne’s powered, articulated, steerable,
extendable-legged device is relatively complicated as-is, and we are not
persuaded that one of ordinary skill in the art of crane engineering would
find a change of beam configuration to be unduly complicated.
Appellant’s arguments (App. Br. 27-28) directed to Grillet and
Gonzales are not persuasive as they focus on the purported shortcomings of
those references’ respective individual disclosures rather than the combined
teachings of all the references. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”). Appellant is also incorrect to the extent that
Appellant contends that the Examiner must incorporate the entirety of a
reference’s embodiment into the embodiment of the primary reference. See
App. Br. 28 (arguing that Gonzales’ booms are bolted or pinned after
extension or retraction thus preventing them from being extendable to lift a
load); Reply Br. 33 (asserting that the Examiner’s conclusion of obvious is
supported by “[o]nly piece-meal consideration of the disclosure[s]”). “The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981) (citations omitted).
Lastly, we disagree with Appellant’s assertion that the combined
references fail to teach a crane having a plurality of beams “that are raisable
with coordinated lifting of said first, second, and third booms to lift a load
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from the ground” as recited in claim 1. App. Br. 28. The Examiner’s
proposed modification would result in a device having this functionally
recited feature. Although claim 1 does not recite any structure for lifting the
booms or raising the beams, the Examiner correctly points out that Varenne
discloses telescoping legs or booms 12, 14, and 33, with lifting jacks inside.
Ans. 11 (citing Varenne, pg. 7-8); see also Varenne, figs. 5 and 6 (depicting
the legs extended and retracted). Thus, the modified device would be
capable of extending the booms to raise the beams in order to raise the load
via the rigging.
Appellant has not persuaded us that the Examiner erred in concluding
that the subject matter of claim 1 would have been obvious to one of
ordinary skill in the art at the time of the invention. We affirm the rejection
of claim 1, and of its dependent claims 10 and 11 for which no separate
arguments are made.

Claim 2
Independent claim 2 is similar to claim 1, but recites three beams
rather than a plurality. Although Appellant argues independent claim 2
under a separate subheading, Appellant does not appear to raise any new
arguments not already addressed above in the context of claim 1. See App.
Br. 29-30; Reply Br. 34-36. As such, we are not persuaded that the
Examiner erred in rejecting claim 2, and we sustain that rejection.

Claim 3
Appellant argues that no single reference discloses both a three
vertical-axis boom configuration and a triangular beam configuration. App.
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Br. 31. Appellant also argues that the cited references have stable square or
rectangular footprints (four points of support) and thus teach away from the
less stable triangular gantry. Id. Appellant is again attacking the references
individually, rather than addressing the combined teachings. Varenne
teaches a three-point, vertical-axis support, and Fedorenko teaches a
triangular beam configuration. Additionally, the mere disclosure of four
point supports by some – but, contrary to Appellant’s implication, not all –
of the cited references does not constitute a teaching away as Appellant
asserts. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)) (Prior art
does not teach away from claimed subject matter merely by disclosing a
different solution to a similar problem unless the prior art also criticizes,
discredits or otherwise discourages the solution claimed.).
Claim 3 recites that the first and second beams are extendible to
increase the respective spacing between the booms. Appellant argues that
no single reference discloses this feature. App. Br. 32. This argument,
however, fails to show error in the Examiner’s rejection based on the
combined teachings of the references. Cf. Ans. 18-19 (the Examiner
responding to Appellant’s argument).
We do not find that Varenne’s disclosure of a gantry that alters boom
distance by rotating in the middle teaches away from a device with
extensible beams for that purpose. Contra App. Br. 32.
We have addressed Appellant’s lift-by-boom-extension argument
above. See App. Br. 31.
Appellant’s arguments do not persuade us of error in the Examiner’s
rejection of claim 3.

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Claim 4
Claim 4 depends from claim 3 and recites that first and second beams
comprise telescoping tubes. Appellant argues that Grillet and Gonzales only
teach a single extendable beam, not two, and that there is no reason to
modify Fedorenko’s gantry to have more than one extendable beam. App.
Br. 33-34; Reply Br. 40-41. We cannot accept Appellant’s implied assertion
that one of ordinary skill would have failed to see the applicability of the
telescoping-beams teaching to more than one beam of Fedorenko’s three
beam gantry. Appellant admits that the references teach an adjustable beam
so that the gantry would be capable of lifting different sizes of loads at
different locations. App. Br. 34. One of ordinary skill in the art would have
readily recognized that the use of more than one adjustable beam in a three
beam gantry would provide beneficial additional adjustability. We are not
persuaded of error in the Examiner’s conclusion that the subject matter of
claim 4 would have been obvious to one of ordinary skill in the art.

Claim 7
Appellant’s arguments as to claim 7 have been addressed above and
found to be unpersuasive. Contra App. Br. 38 (“As argued above with
respect to claims 1-3 ….”); id. (“As argued above with respect to claim 3
….”); id. at 39 (“As argued [above] with respect to claims 1, 2, and 3 ….”)
Accordingly, Appellant has also not persuaded us that the Examiner’s
rejection of claim 7 is in error.

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Claim 9
Claim 9 calls for the first and second beams to have multiple
mounting points for receiving the ends of the third beam. The Examiner
found that the slots in Grillet’s beam and the apertures in Gonzales’ beam
can be considered to be mounting points. Non-Final Rej. 4; see Grillet, fig.
2; Gonzales, fig. 1. However, those slots and apertures appear (particularly
with respect to Gonzales) to be holes for the hardware that locks the
respective beam’s length. We cannot find that one of ordinary skill in the art
would consider those holes to be mounting points for another beam. As
such, we are constrained to reverse the rejection of claim 9.

Claims 17 and 22
Claim 17 recites a method of using a mobile triangulated gantry crane.
Appellant impliedly argues that the Examiner made an erroneous finding
because Fedorenko’s crane lacks booms each having an independently
mobile base. App. Br. 46 (quoting Non-final Rej. 5). However, the
Examiner’s finding, as quoted by Appellant, clearly refers to the modified
Fedorenko gantry, not the single reference in isolation. That modified
structure would have mobile bases on the booms.
Appellant also alleges error in the Examiner’s conclusion that it would
have been obvious to persons of ordinary skill in the art to lower a load by
retracting the booms of Grillet. App. Br. 47 (citing Non-final Rej. 5).
Specifically, Appellant contends that one of ordinary skill would not
appreciate that the bolts or pins in Grillet’s boom could be removed so as to
lower the beam with a load supported on the beam. Id. Appellant is again
incorrectly focusing on a single reference rather than the Examiner’s
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proposed combination and, apparently, presuming that the modified crane
would have bolted booms. We see no error in the Examiner’s conclusion
that it would have been obvious to raise and lower a load by extending or
retracting the booms.
We affirm the rejection of claim 17, and of its dependent claim 22 for
which no separate arguments are made.

Claim 18, 19 and 23
Claim 18 recites a method of using a mobile triangular crane, but
Appellant’s arguments for patentability primarily pertain to the structure of
the crane itself. App. Br. 47-49.
Appellant argues that the Examiner’s proposed modification of
Fedorenko’s gantry “would yield an assembly wherein the center of gravity
of a load is positioned outside the points of support of the crane relative to
the orientation of the lift legs.” App. Br. 48. This argument appears to be a
reiteration of the unpersuasive “off-center loading” argument made earlier in
the context of apparatus claim 1. We have addressed this argument above in
the context of claim 1, and find it equally unpersuasive in the context of
method claim 18. Further, claim 18 recites “coupling at least one of first,
second, and third horizontal beams to said load” thus encompassing coupling
the load to only one beam, which is a configuration depicted in Fedorenko’s
figure 2 (with the center of gravity of the load under the beam, and which
therefore would be in line with, not outside of, the points of support in the
modified gantry).
Claim 18 calls for, in step (D), extending the beam at the front end of
the gantry (the third beam) so as to increase the spacing between two booms
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to permit the rear end of the gantry to straddle the load. Appellant argues
that there is no disclosure in the art of record of extending a third beam for
this purpose. App. Br. 48. Specifically, Appellant contends that no single
reference discloses “a three-point supported crane” with the load positioned
within the footprint of the supports. Id. Thus, Appellant is once again
unpersuasively focusing on each of the references in isolation rather than the
crane resulting from the Examiner’s proposed combination of the references’
teachings. Similarly, we do not find persuasive Appellant’s argument
(apparently also premised on the evaluation of each reference separately)
that none of the references disclose a need or desire to open the footprint by
extending the third beam prior to moving the crane over the load. Contra
App. Br. 48-49. Where the boom spacing is inadequate to permit the gantry
to straddle the load, one would readily see the need to open the modified
Fedorenko gantry footprint by expanding the particular beam that is to pass
over the load. Thus the problem suggests the solution.
We are not persuaded that the Examiner erred in concluding the
subject of claim 18 would have been obvious to one having ordinary skill in
the art. We affirm the rejection of claim 18, and of its dependent claims 19
and 23 for which no separate arguments are made.

Claim 21
As to independent apparatus claim 21, Appellant relies on and, to a
limited extent, reiterates the arguments made for claims 1, 2, and 3. See
App. Br. 49-50. Those arguments do not persuade us of error. For the
reasons discussed above, we determine that the Examiner’s conclusion of
obviousness is adequately supported by articulated reasoning, and is not
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based on impermissible hindsight as Appellant asserts. Contra App. Br. 50.
Accordingly, we sustain the rejection of claim 21.

3. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fedorenko (SU 887,434), Varenne (FR 2,597,460), and either Grillet
(FR 2,420,502) or Gonzales, and further in view of Brower
Dependent claim 5 further defines the telescoping tube of the first and
second beams as comprising an inner tube located generally centrally to the
beam and two outer tubes, each extending from the inner tube to a lift leg,
with the outer tubes extendable/retractable relative to the inner tube. The
Examiner found that Brower discloses a beam 16 having two tubes sliding
over an inner tube and maintains that it would have been obvious to further
modify the Fedorenko beams according to this teaching so as “to provide
more flexibility to adjust the spacing between booms.” Non-Final Rej. 6;
see also Ans. 21-24 (the Examiner responded to Appellant’s arguments by
further elaborating as to why one of ordinary skill in the art would modify
the references).
Appellant argues that “the Examiner has merely asserted a conclusion
as to the desirability of that which is called for in the claims.” App. Br. 35;
see also Reply Br. 43 (apparently asserting that the Examiner’s description
of the prior art lacks a reasonable basis to alter the construction of the prior
art devices). This argument does not explain why the rejection is in error as
the desirability of a modification can support the conclusion of obviousness.
See KSR Int’l Co., 550 U.S. at 417 (“When a work is available in one field
of endeavor, design incentives … can prompt variations of it … [and,] [if] a
person of ordinary skill can implement a predictable variation, § 103 likely
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bars its patentability.”) The Examiner has supported the conclusion of
obviousness with rational underpinning.
Appellant’s arguments (App. Br. 35-36) regarding the purported
shortcomings of Brower’s device are not persuasive. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”)

4. Claims 6 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fedorenko (SU 887,434), Varenne (FR 2,597,460), and
either Grillet (FR 2,420,502) or Gonzales, and further in view of Brower
and Tana
Claim 6 recites a pair of cylinders operable to extend and retract the
two extendible beams of claim 5. For this feature, the Examiner points to
Tana’s boat hoist having cylinders to extend/retract beams. Ans. 6; see
Tana, fig. 2.
We are not persuaded by Appellant’s argument that, because Tana is
directed to a boat hoist for use with a crane and not a gantry crane, Tana is
unrelated to the claimed invention. App. Br. 37. Tana pertains to lifting
apparatuses generally, and one of ordinary skill in the art would recognize
the applicability of Tana’s teachings to gantry beams.
Appellant contends that there is no disclosure of an outboard outer
beam “that is independently extendable and retractable and [sic, as] required
by claim 5 [from which claim 6 depends].” App. Br. 37. The language of
claim 5 does not recite “independently” extendable/retractable beams and it
is unclear as to which limitation of claim 5 is allegedly missing from the
references.
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Appellant’s remaining arguments regarding claim 6 (App. Br. 36-38)
do not persuade us of error as those arguments appear to address the
purported shortcomings of Tana in isolation rather than the Examiner’s
proposed combination of all the references’ teachings, or are premised on
the erroneous belief that the structure of Tana must be bodily incorporated
into the Fedorenko gantry.
Appellant has not pointed to an error in the Examiner’s rejection of
claim 6 as unpatentable over Fedorenko, Varenne, and either Grillet or
Gonzales, and further in view of Brower and Tana. We sustain that
rejection. Appellant does not offer separate arguments for claim 8, and thus
we also sustain the rejection of that claim.

5. Claims 12, 13, 16, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fedorenko (SU 887434), Varenne (FR 2,597,460),
and either Grillet (FR 2,420,502) or Gonzales, and further in view of
Rulison
Claim 13
Appellant maintains that “it [is] disingenuous to assert that a person of
ordinary skill in the art would consider a carpet hoist as disclosed by
Gonzale[s] or a construction material positioning apparatus as disclosed by
Rulison to be material and relevant to gantry crane construction.” App. Br.
41. Appellant suggests that the Examiner is engaging in impermissible
hindsight by relying on purportedly “isolated disclosures.” Id. at 41-42.
The references relied upon by the Examiner are all directed to gantries
or to other lifting devices. We find these references to be analogous art and,
contrary to Appellant’s assertion, find that the references’ teachings would
have been considered by one of ordinary skill in the art. See In re Kahn, 441
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F.3d 977, 986-87 (Fed. Cir. 2006) (citation omitted) (A reference is
considered to be in an analogous art where it “is either in the field of the
applicant’s endeavor or is reasonably pertinent to the problem with which
the inventor was concerned[.]”) Further, we determine that the Examiner
did not rely on impermissible hindsight, as Appellant suggests, but rather
relied on the knowledge of those skilled in the art at the time of the
invention.
We have addressed Appellant’s remaining arguments above, and
found them to be unpersuasive. We sustain the rejection of claim 13.

Claim 16
Appellant refers to the arguments directed to claims 13 and 14. App.
Br. 45. We address those arguments elsewhere in this decision, and find
them unpersuasive.2 See supra (discussing claim 13); infra (claim 14).
Appellant argues that “there is no disclosure or suggestion in the
references of record to provide a hydraulic cylinder that extends between a
pair of horizontal beams and is connectable to each of a pair of beams at
multiple discrete locations.” App. Br. 45. Appellant also argues that the
Examiner has failed to provide support for the position that it would have
been obvious to those skilled in the art to provide a pair of cylinders on the
beams of Fedorenko’s gantry to conveniently extend or retract the beams.
Id. (quoting Non-Final Rej. 7). We disagree with Appellant. While the

2 Appellant, in the Appeal and Reply briefs, addresses the rejected claims in
numerical order rather than by rejection. Thus, claim 14, which is the
subject of the sixth rejection, was argued before claim 16, which is the
subject of the fifth rejection.
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Examiner does not find that any single reference cited in the rejection
discloses a hydraulic cylinder for extending a beam, the Examiner correctly
finds that Varenne teaches a lifting jack 13 for telescoping a boom. See Ans.
9 (discussing Varenne in the context of the rejection of claim 1); id. at 27
(incorporating, into the rejection of claim 16, the discussion of the references
as applied to claim 1). Lifting jack 13 is hydraulic. Varenne 7-8. The
Examiner relies on either Grillet or Gonzales for the teaching of an
extendable boom. Ans. 14-18. Further, we note that the Tana reference,
although not relied upon by the Examiner in this rejection, demonstrates that
the use of hydraulic cylinders for extending and retracting beams was known
in the art. See Tana, fig. 2; Ans. 25-26 (discussing Tana’s teachings). Given
the level of skill and knowledge in the art, we do not discern error in the
Examiner’s conclusion that it would have been obvious to provide hydraulic
cylinders on Fedorenko’s beams.
Additionally, we find that the Examiner’s proposed modification
results in a device having the recited “rear cross beam … operatively
connectable to each of said first and second lift beams at multiple discrete
mounting locations.” This language functionally defines the rear cross
beam, and merely requires a beam capable of being connected to the other
two beams at multiple locations. Appellant appears to assert, correctly, that
Fedorenko’s three beams connect to each other only at their ends. See App.
Br. 45. However, Appellant does not argue, and we decline to find, that
Fedorenko’s beams lack the capability of being connected elsewhere.
We affirm the rejection of claim 16.

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Claims 12 and 20
Appellant does not provide arguments for claims 12 or 20, which
depend from claims 1 and 17, respectively. As we affirm the rejection of
those parent claims, we also affirm the rejections of claims 12 and 20.

6. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fedorenko (SU 887434), Varenne (FR 2,597,460), and either Grillet
(FR 2420502) or Gonzales, and further in view of Brower and Rulison
Appellant reiterates the unpersuasive arguments previously made for
claims 1, 2, 3, and 5. See App. Br. 43, 44. We have addressed those
arguments above.
Appellant also argues that Brower discloses inner and outer tubes that
are pinned or bolted, and therefore Bower fails to disclose extendable and
retractable beams as recited in claim 14. App. Br. 44. This argument is not
persuasive as it focuses on one reference rather than the references’
combined teachings and appears to be based on the erroneous assumption
that the embodiment of Brower must be bodily incorporated into the
modified Fedorenko gantry. See In re Merck & Co., 800 F.2d at 1097; In re
Keller, 642 F.2d at 425.
We are not persuaded that the Examiner erred in concluding that the
subject matter of claim 14 would have been obvious in light of Fedorenko,
Varenne, and either Grillet or Gonzales, and further in view of Brower and
Rulison.

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7. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fedorenko (SU 887434), Varenne (FR 2,597,460), and either Grillet
(FR 2420502) or Gonzales, and further in view of Brower, Rulison, and
Tana
Claim 15 depends from claim 14, the rejection of which we affirm for
the reasons discussed above. Appellant does not offer separate arguments
for claim 15. Accordingly, we also affirm the rejection of claim 15.

CONCLUSIONS
We affirm the rejection of claims 1-16, 20, and 21 under § 112,
second paragraph. We reverse the rejection of the remaining claims subject
to that rejection, claims 17-19, 22, and 23.
We affirm the rejections of claims 1-8 and 10-23 under § 103 as being
unpatentable over the respective references upon which each ground of
rejection is based.
We reverse the rejection of claim 9 under § 103 as being unpatentable
over Fedorenko, Varenne, and either Grillet or Gonzales.

DECISION
The decision of the Examiner to reject claims 1-23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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BOYLE FREDRICKSON S.C.
840 NORTH PLANKINTON AVENUE
MILWAUKEE, WI 53203