Ex Parte Kurtz

Board of Patent Appeals and Interferences

Mar 30, 2004

09072241 (B.P.A.I. Mar. 30, 2004)

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for publication and is not binding precedent of the Board.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. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM C. KURTZ
____________
Appeal No. 2004-0191
Application No. 09/072,241
____________
ON BRIEF
____________
Before COHEN, ABRAMS, and FRANKFORT, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 18, 19
and 21-27. Claims 6, 7 and 11 have been withdrawn from consideration as being
drawn to a non-elected invention, claims 28-32 have been allowed, and the remaining
claims have been canceled.
We AFFIRM-IN-PART.
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Application No. 09/072,241
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1A rejection of claims 23-25 under 35 U.S.C. § 102(b) was withdrawn in the Answer.
BACKGROUND
The appellant's invention relates to a loader. An understanding of the invention
can be derived from a reading of exemplary claim 21, which has been reproduced in an
appendix to the Brief.
The single prior art reference of record relied upon by the examiner in rejecting
the appealed claims is:
Hoar et al. (Hoar) 2,538,000 Jan 16, 1951
Claims 18, 19 and 21-27 stand rejected under 35 U.S.C. § 112, first paragraph,
as containing subject matter which was not described in the specification in such a way
as to reasonably convey to one skilled in the relevant art that the inventor, at the time
the application was filed, had possession of the claimed invention.
Claims 21, 22 and 26 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Hoar.1
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 30) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 29) and Reply Brief (Paper No. 32) for the appellant's arguments
thereagainst.
OPINION
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Application No. 09/072,241
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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.
The appellant’s invention is directed to mobile loaders of the short wheelbase
type in which a load support is lifted and extended forward of the loader. According to
the appellant, the load supports cannot be extended very far forward without
unbalancing the loader, and the prior art solutions of providing counterweights on the
opposite end of the loader or extending the wheelbase have disadvantages. The
appellant’s invention is directed to solving this problem by providing a loader lift
mechanism and method of vertically raising a load which improves upon the prior art
machines.
The Rejection Under The First Paragraph Of Section 112
The examiner has taken the position that the original specification does not
support horizontally shifting the load responsive to and throughout the moving step in
claim 21 or throughout the movements in claims 22-25, a limitation which the examiner
states was added by amendment (Papers No. 15 and 17). According to the examiner,
the original specification discloses only forward movement of the load support, whereas
the claimed subject matter in issue requires that the load support move forward
throughout the moving step (Answer, page 4). The appellant argues that the operation
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of the device as explained on page 5 of the specification as originally filed provides
support for the disputed term because it makes it clear that extension of the power unit
14 causes stabilizer arm 17 to force arm 13 forward at the outset of the lifting operation
and thus the load support begins a horizontal movement at that point which continues
until the lifting step is terminated.
The test for determining compliance with the written description requirement is
whether the disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the specification for the claim
language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983).
It is apparent to us that, with reference to page 5 of the specification and Figures
1 and 3, link 25 is caused to pivot from the position shown in Figure 1 at the outset of
the lifting operation to that of Figure 3, wherein the lifting is terminated. As link 25
pivots, ends 21 of the loader arms, to which the load support is attached, begin an
arcuate movement which has a forward component throughout the entire lifting
operation. Thus, while this feature might not have been disclosed in the specification in
the terminology now present in the claims, it is our view that the disputed phraseology
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nevertheless is supported by the original disclosure and, applying the guidance from
our reviewing set out above, the rejection is not well taken.
The rejection of claims 18, 19 and 21-27 under 35 U.S.C. § 112, first paragraph,
therefore is not sustained.
The Rejection Under Section 102
Independent claim 21 and dependent claims 22 and 26 stand rejected as being
anticipated by Hoar. Anticipation under 35 U.S.C. § 102(b) is established only when a
single prior art reference discloses, either expressly or under the principles of
inherency, each and every element of the claimed invention. See, for example, In re
Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Anticipation by a
prior art reference does not require either the inventive concept of the claimed subject
matter or recognition of inherent properties that may be possessed by the reference.
See Verdegaal Brothers Inc. v. Union Oil Co. of California, 814 F.2d 628, 633, 2
USPQ2d 1051, 1054 (Fed. Cir. 1987). Nor does it require that the reference teach what
the applicant is claiming, but only that the claim on appeal "read on" something
disclosed in the reference, i.e., all limitations of the claim are found in the reference.
See Kalman v. Kimberly-Clark Corp, 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983), cert. denied, 465 U.S. 1026 (1984).
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Hoar discloses a propelled loader for raising a load from a first ground-level
position to a second raised position. It utilizes a linkage means comprising first,
second, third and fourth arm pivots, with the first and fourth arm pivots forming a first
diagonal line segment therebetween and the second and third forming a second
diagonal line segment therebetween, as is explained by the examiner on page 5 of the
Answer. The appellant has not contended that the Hoar machine fails to operate in the
manner recited in the first four steps of independent method claim 21. The argument
advanced by the appellant in opposition to the examiner’s rejection focuses on the final
two steps recited in the claim, which read as follows:
moving said first pivotal arm about said first arm pivot and said
second pivotal arm about said third arm pivot to vertically raise said load
from said first ground-level position to said raised unloading position; and
horizontally shifting said load support responsive to and throughout
said moving step in a direction corresponding to the direction of horizontal
displacement between said load and said mobile base.
As we understand the appellant’s argument, it is that Hoar does not disclose or
teach the step of horizontally shifting the load support in the direction of horizontal
displacement “throughout the load lifting process” because in the Hoar operation the
second pivot (at the upper end of link 28) and the proximal portion of arms 30 shift
horizontally backwards in the initial stages of operation with respect to the first pivot (at
the lower end of link 28) before moving in the direction of horizontal displacement
between the load and the mobile base (see Brief, pages 7 and 8). In support of this
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conclusion, the appellant points to the diagram of operation shown in Figure 2 of Hoar,
wherein the corresponding positions of certain of the components are shown in dashed
lines.
We do not agree with the appellant’s position, based upon the following
reasoning. Claim 21 merely recites a “load support,” which in our view is broad enough
to read on the distal portion of Hoar’s arms 30 at numeral 41, which denotes the center
of gravity of the load. This “load support” is “engaging” the first pivotal arm 28, as is
earlier specified in claim 21, through the proximal portion of arms 30. As recited in the
penultimate step of claim 21, the appellant’s method recites the step of “moving [the
first and second pivot arms] . . . to vertically raise said load from said ground-level
position to said raised unloading position.” Thus, the “moving” step commences when
the load begins to be vertically raised from the ground-level position and ends when the
load is in the raised unloading position. The final step of claim 21 states that the “load
support” is horizontally shifted in the direction corresponding to the direction of
horizontal displacement from the mobile base “throughout” the “moving step,” that is,
from the time the load begins to be lifted to the time it no longer is being lifted.
From our perspective, the diagram of operation of the Hoar mechanism actually
supports the examiner’s position that these steps read on the Hoar method of
operation. In particular, as shown in Figure 2, the path of the “load support” as
indicated by 41 moves in an arc having a constant horizontal displacement during lifting
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between points “0" and “7". It is true that during the initial stages of operation of the
Hoar system pivot arm 28 moves horizontally backward through points “1", “2" and “3",
and the proximal ends of arms 30 describe a backward arc during that same period.
Nevertheless, owing to the construction and relationship of the various components, the
distal ends of the arms, which comprise the “load support,” do not move backward at
any time during the vertical lifting operation. Thus, we find the appellant’s argument not
to be persuasive.
It is our conclusion that the subject matter recited in claim 21 reads on the
method by which the system disclosed in Hoar operates, and therefore this reference
anticipates the claim and the Section 102 rejection will be sustained.
Claim 22 adds to claim 21 further steps comprising locating the first and fourth
arm pivots to form a first diagonal line segment and the second and third arm pivots to
form a second diagonal line segment. This is present in Hoar, where the first arm pivot
(27) and the fourth arm pivot (37), and the second arm pivot (at the upper end of arm
28) and the third arm pivot (32) are so arranged. It is clear from comparing the
positions of the arm pivots in Figures 1 and 2 that they move in the manner required by
claim 22 “throughout” the step of “moving” the load. This rejection of claim 22 is
sustained.
Claim 26 adds to claim 21 the step of applying a force “primarily vertically”
between the mobile base and the load support. The appellant’s argument that this is
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not taught by Hoar because Hoar uses a horizontally oriented hydraulic cylinder that
does not directly act on the load support (Brief, page 10) is not persuasive for two
reasons. First, the claim doesn’t require a hydraulic cylinder, much less that it act
directly on the load support. Second, Hoar’s mechanism does apply a primarily vertical
force between the base and the load support, in that the force generated by hydraulic
cylinder 35, albeit not acting in the vertical direction, nevertheless causes arm pivot 37
and the load support by the application of a primarily vertical force through its
connection with link 33. The rejection of claim 26 is sustained.
CONCLUSION
The rejection of claims 18, 19 and 21-27 under 35 U.S.C. § 112, first paragraph,
is not sustained.
The rejection of claims 21, 22 and 26 under 35 U.S.C. § 102(b) as being
anticipated by Hoar is sustained.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
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IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
NEA:pgc
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ALBERT W. WATKINS
30844 NE 1ST AVENUE
ST. JOSEPH, MN 56374