Ex Parte LarsenDownload PDFPatent Trial and Appeal BoardJul 19, 201613306638 (P.T.A.B. Jul. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/306,638 11129/2011 24234 7590 07/21/2016 SIMMONS PERRINE MOYER BERGMAN PLC 1150 5TH STREET, SUITE 170 CORALVILLE, IA 52241 HERBERT LARSEN UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 11800.009U 9288 EXAMINER CAMPOS, JR, JUAN J ART UNIT PAPER NUMBER 3654 NOTIFICATION DATE DELIVERY MODE 07/21/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patents@simmonsperrine.com eofficeaction@appcoll.com greg@iowapatentattorney.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HERBERT LARSEN Appeal2014-006823 Application 13/306,638 Technology Center 3600 Before JILL D. HILL, LISA M. GUIJT, and GORDON D. KINDER, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Herbert Larsen (Appellant) 1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-16. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. THE CLAIMED SUBJECT MATTER Claims 1, 8, and 13 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1 Appellant identifies the real party in interest as Terex USA, LLC. App. Br. 4. Appeal2014-006823 Application 13/306,638 1. A boom truck comprising: a commercial truck chassis having a vehicle frame and a commercial cab; a boom coupled to the commercial boom truck chassis; a plurality of rear stabilizers coupled to the commercial boom truck chassis; a plurality of substantially splayed forward front stabilizers coupled to said commercial boom truck chassis; each of said rear stabilizers being free of an indirect load bearing connection with said vehicle frame, via a sub-frame which supports from below said plurality of splayed forward front stabilizers; and the combination of said plurality of splayed forward front stabilizers and said plurality of rear stabilizers being arranged in a non-X and a non-H configuration and instead arranged in a bifurcated K configuration. THE REJECTIONS2 Claims 1-7, 12, and 16 stand rejected under 35 U.S.C. §112, second paragraph, as being indefinite. Claims 13-16 stand rejected under 35 U.S.C. § 102(b) as anticipated by Fenzl (DE 3122725 Al; pub. Dec. 23, 1982).3 2 The Examiner's rejection of claims 4, 6-12, and 18 under 35 U.S.C. § 112, first paragraph, has been withdrawn. Final Act. 3; Ans. 9. In view of the Examiner's withdrawal of the rejection, the Examiner's objection to the drawings is petitionable, not appealable. The Examiner's objection to the Specification is also petitionable, not appealable. Final Act. 2; see Ex parte Frye, 94 USPQ2d 1072, 1078 (BPAI 2010) (precedential) (for discussion of petitionable matters versus appealable matters). 3 References are to the English language translation provided in the record. 2 Appeal2014-006823 Application 13/306,638 Claims 1, 4, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fenzl and Brown (US 3,144,138; iss. Aug. 11, 1964). Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fenzl, Brown, and Luna (EP US 1 178 006 Al; pub. June 2, 2002). Claim 5 stands rejected by under 35 U.S.C. § 103(a) as unpatentable over Fenzl, Brown, and Ishii (US 2007/0132277 Al; pub. June 14, 2007). Claims 8-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fenzl. OPINION Claims 1-7, 12, and 16-Indefiniteness Independent claim 1 and dependent claims 2-6 and 12 Claim 1 recites, inter alia, that "each of said rear stabilizers [are] free of an indirect load bearing connection with said vehicle frame, via a sub- frame." App. Br. 17, Claims App. Regarding claim 1, the Examiner determines that it is unclear whether this claim language means that "the rear stabilizers are directly connected with said vehicle frame" (Final Act. 3), and that if such a direct connection is not being claimed, it is unclear what structure is being claimed (Ans. 12). Appellant responds that "a rear stabilizer which is directly coupled to the frame is intended to be covered by this claim language." Reply Br. 3 (emphasis added). Appellant further submits that this claim language does "not necessarily" mean that a direct connection is required, but rather "that there [is] NOT[] a very specific type of indirect connection." App. Br. 11. Appellant contends that "[Appellant] 3 Appeal2014-006823 Application 13/306,638 is entitled to claim the invention as broadly as permissible in view of the cited art." Reply Br. 3--4. The language of a claim satisfies § 112, second paragraph, if "one skilled in the art would understand the bounds of the claim when read in light of the specification." Exxon Research & Eng'ring Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). We determine that one skilled in the art would understand this language of claim 1 to mean that none of the rear stabilizers have an indirect, load bearing connection with the vehicle frame by way of a sub-frame. Accordingly, we do not sustain the Examiner's rejection of independent claim 1 as indefinite under 35 U.S.C. § 112, second paragraph. The Examiner does not provide any additional analysis for rejecting claims 2---6 and 12 as indefinite, but apparently relies upon their dependence on independent claim 1. Thus, we also do not sustain the Examiner's rejection of dependent claims 2-6 and 12 as indefinite under 35 U.S.C. § 112, second paragraph. Dependent claim 7 Regarding claim 7, the Examiner determines that because the claim language "said plurality of rear stabilizers are not deployed" is a negative limitation, the claim language is indefinite. Final Act. 6. The Examiner explains that "the use of 'not' does not further define structure in the claim." Ans. 12. Appellant argues that "[n]ot every time that the word 'not' appears in claims is it an inappropriate negative limitation," and that here, "the claim limitation makes a positive statement WHEN a distance comparison is to be made." App. Br. 12. Here, the Examiner has failed to show that one skilled in the art would not understand the bounds of claim 7 when read in light of 4 Appeal2014-006823 Application 13/306,638 the Specification. See A'xxon Research & Eng 'ring Co. v. United States, at 1375. Accordingly, we do not sustain the Examiner's rejection of claim 7 as indefinite under 35 U.S.C. § 112, second paragraph. Dependent claim 16 Regarding claim 16, the Examiner determines that "the claim is indefinite because the claim is not clear as to what is meant by 'a stepped up bifurcated K configuration."' Final Act. 6. Appellant responds that "[c]laim 16 itself explains that step[ped] up means that there is a step up or increase in height from the rear stabilizer to the front stabilizers," because "[ c ]laim 16 states: 'wherein a stepped up bifurcated K configuration that has the plurality of rear stabilizers disposed at a rear height below a front height above the ground of the plurality of front stabilizers."' App. Br. 12-13. The Examiner responds that claim 16 falls short of "positively claim[ing] 'that step up means that there is a step up or increase in height from the rear stabilizer to the front stabilizers."' Ans. 13. We determine that one of ordinary skill in the art would not necessarily understand the claim term "stepped up" as defined by the increase in height between the rear and front stabilizers, as further described in claim 16. Moreover, the Specification is silent with respect to the claim term "stepped up." Therefore, we sustain the Examiner's rejection of claim 16 as indefinite under 35 U.S.C. § 112, second paragraph. Claims 13-16-Anticipation Regarding independent claim 13, the Examiner finds, inter alia, that Fenzl discloses a boom truck comprising a commercial truck chassis and a 5 Appeal2014-006823 Application 13/306,638 cargo bed, wherein the cargo bed is "considered the top surface of 1." Final Act. 7 (citing Fenzl, Figs. 1---6). Appellant argues, inter alia, that the claim term "commercial truck chassis" is specifically defined in Appellant's Specification and that Fenzl's "concrete pumper truck ... is likely specifically excluded from the definition of commercial truck chassis." App. Br. 14 (citing Spec., p. 9). The Examiner responds that the definition of "commercial truck chassis" is limited only to a chassis "having a vehicle frame and a commercial cab," as recited in claim 13. Ans. 13 (emphasis omitted). The Examiner further responds that "Appellant's special definition [of commercial truck chassis] is contrary to the plain meaning of a 'Commercial Truck Chassis' because a Chassis is defined as a framework of a vehicle," and "Appellant's 'Commercial Truck Chassis' is defined in relation to a highway ready truck which includes a frame (i.e., a Chassis) and a cab, an engine, and a drive train." Id. (citing Spec., p. 9, 11. 4--14). Notwithstanding these determinations by the Examiner, the Examiner finds that "Fenzl discloses all of the structure [as required by Appellant's] special definition," in that Fenzl discloses, inter alia, that "top surface of [element] 1 is capable of supporting cargo, and there is no structure associated with the cargo section in the [S]pecification or claims." Ans. 14. Appellant disagrees, relying again on the "explicit definition" of the claim term "commercial truck chassis," as provided for in the Specification. Reply Br. 5. During examination of a patent appHcation, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). A 6 Appeal2014-006823 Application 13/306,638 patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008). However, "to be his own lexicographer, a patentee must use a 'special definition of the term that is clearly stated in the patent specification."' Laryngeal Mask Co. Ltd. v. Ambu, 618 F.3d 1367, 1372 (Fed. Cir. 2010). Appellant's Specification states that "[ c ]ommercial truck chassis" is hereby defined herein to mean the following: An operable highway ready truck which has been given a vehicle identification number, and includes a cab which is configured for use by a driver and at least one forward seated passenger seated adjacent to said driver, engine, drive train, and a frame and is manufactured and advertised for a variety of uses where non-boom truck applications exceed the boom truck uses, but specifically excludes any cranes which do not include any commercial load carrying capacity and a cargo section which is configured to carry objects which are not related to the operation or maintenance of the crane of vehicle. Spec., p. 9, 11. 7-14 (emphasis added). Appellant's special definition for the claim term "commercial truck chassis" is clearly stated in the Specification. The special definition excludes cranes which do not include any commercial load carrying capacity and includes cranes which have a cargo section configured to carry objects which are not related to the operation or maintenance of the crane of vehicle. We agree with Appellant that the Examiner erred in finding that Fenzl discloses that the "the top surface of [element] 1 is capable of supporting cargo" (Ans. 14), because Fenzl identifies element 1 as "a connecting beam," and a beam is not a cargo section configured to carry objects, as required by Appellant's special 7 Appeal2014-006823 Application 13/306,638 definition stated supra. Fenzl, p. 4, 1. 31, Figs. 1, 2. Moreover, the disclosures and depictions in F enzl appear to disclose boom truck application rather than non-boom truck applications, such as "concrete pumps[,] concrete placing booms, crane vehicles, cranes, container chargers, lifts or other in working position for tilting prone equipment." Id. at p. 1, 11. 24--25. Accordingly, we do not sustain the Examiner's rejection of independent claim 13 and claims 14--16 depending therefrom. Claims 1-12 - Obviousness Regarding independent claims 1 and 8, the Examiner again relies on Fenzl for disclosing "a commercial truck chassis," as required by claims 1 and 8. Final Act. 8, 10. For the reasons discussed supra, we agree with Appellant that Fenzl fails to disclose "a commercial truck chassis," as specially defined by the Specification. The Examiner's findings with respect to Brown, Luna, and Ishii do not cure this deficiency in the Examiner's finding with respect to Fenzl. Accordingly, we do not sustain the Examiner's rejection of independent claims 1 and 8, and claims 2-7 and 9-12 depending therefrom. DECISION The Examiner's decision to reject claims 1-7 and 12 under 35 U.S.C. § 112, second paragraph, is REVERSED. The Examiner's decision to reject claim 16 under 35 U.S.C. § 112, second paragraph, is AFFIRMED. The Examiner's decision to reject claims 13-16 under 35 U.S.C. § 102(b) as anticipated by Fenzl is REVERSED. 8 Appeal2014-006823 Application 13/306,638 The Examiner's decisions to reject claims 1-12 under 35 U.S.C. § 103(a) are REVERSED. 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)(l )(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation