Ex Parte Lundgreen et al

Board of Patent Appeals and Interferences

Nov 17, 2003

09375713 (B.P.A.I. Nov. 17, 2003)

1
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not written for publication and is not binding precedent of the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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES M. LUNDGREEN and LARRY W. BETCHER
__________
Appeal No. 2003-1327
Application 09/375,713
___________
ON BRIEF
___________
Before FRANKFORT, McQUADE, and BAHR, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 8, which are all of the claims
pending in this application.
As set forth on page 1 of the specification, appellants’
invention is directed to a work-holding device of the type that
permits a mechanic or other artisan to conveniently perform
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Application 09/375,713
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maintenance operations on an object held by the device in an
elevated position above a floor and, more particularly, to a
mobile self-supporting stand and work-holding device that can be
quickly and easily moved between storage and work locations yet
remain stable and secure during the above-noted maintenance
operations. At page 1, lines 20-25, while recognizing the
desirable aspects of having a stand of the type noted above which
is highly mobile, appellants indicate that it is “imperative”
that such stands be extremely sturdy and stable, “i.e.,
‘immobile’ during the time that the holding equipment on the
stand is actually in use.” Independent claim 1 is representative
of the subject matter on appeal and a copy of that claim may be
found in Appendix 1 of appellants’ brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Donovan 3,501,037 Mar. 17, 1970
Rolnicki et al. (Rolnicki) 5,378,103 Jan. 3, 1995
Amstutz 5,967,493 Oct. 19, 1999
Claims 1, 2 and 6 through 8 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Donovan in view of Amstutz.
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Application 09/375,713
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Claims 3 through 5 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Donovan in view of Amstutz as applied
to claims 1 and 2 above, and further in view of Rolnicki.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellants
regarding those rejections, we make reference to the examiner's
answer mailed November 13, 2002 for the reasoning in support of
the rejections, and to appellants’ brief filed August 27, 2002
for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellants and the examiner. As a consequence of
our review, we have made the determinations which follow.
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Application 09/375,713
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Looking first at the examiner’s rejection of claims 1, 2 and
6 through 8 under 35 U.S.C. § 103(a) as being unpatentable over
Donovan in view of Amstutz, we note that on pages 3-4 of the
answer the examiner has urged that Donovan shows a stand for
supporting an object in an elevated position above a floor,
wherein the stand includes a rigid frame comprising a base and
mast arrangement like that generally set forth in claim 1 on
appeal (e.g., base members 11-14 and mast members 16, 17, 22),
but lacking a plurality of floor-engaging stabilizer feet
arranged in the manner required in appellants’ claims on appeal
and a pair of laterally spaced wheels of the type required in
claim 1 arranged in relation to the stabilizer feet so that the
wheels do not contact the floor when all of the feet are engaging
the floor and wherein a pair of said feet are disposed forwardly
of the wheels to serve as a fulcrum about which the frame may be
selectively tilted back to bring the wheels down into contact
with the floor so that the frame is supported by the wheels and
the stand can be easily moved between work locations.
To account for the above-noted differences, the examiner has
looked to the Amstutz patent, urging that this patent teaches use
of a mobile stand having a plurality of floor-engaging stabilizer
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feet (143 of Figs. 9 and 13) projecting downwardly from a base
(119) and a pair of wheels (133) arranged in relation to the
stabilizer feet so that the wheels do not contact the floor when
all of the feet are engaging the floor and wherein a pair of said
feet are disposed forwardly of the wheels to act as a fulcrum
(Fig. 13).
Based on the combined teachings of Donovan and Amstutz, the
examiner has concluded that it would have been obvious to one of
ordinary skill in the art at the time appellants’ invention was
made to provide Donovan with the floor-engaging stabilizer feet
and raised transport wheels of Amstutz, “because the stabilizer
feet help provide a more stable working position for the device,
wherein the feet prevent the device from moving when movement is
not desired” (answer, page 4).
Appellants assert (brief, pages 7-12) that the examiner has
failed to establish a prima facie case of obviousness, because
there would be no reason or motivation for one skilled in the art
to combine Amstutz with Donovan since the Donovan device is made
for mobility, and already has a means for moving the tractor tire
transport holder from one location to another, i.e., the castors
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(19). In this regard, appellants further assert (brief, page 10)
that the examiner’s proposed combination would require the
Donovan device to be completely reconfigured and that such
extensive modification of the Donovan device would impermissibly
change the operation of the tractor tire transport holder
therein. In particular, appellants contend that providing
Donovan’s device with a stable base and then adding a separate
dolly to permit movement of the device would not make any sense,
and would make Donovan’s device unsatisfactory for its intended
use as a completely mobile transport device.
Having considered the two applied patents to Donovan and
Amstutz, we share appellants’ view that there is no motivation,
teaching or suggestion in the applied references, whether
considered individually or collectively, for the examiner’s
proposed combination thereof. In our opinion, the examiner has
used impermissible hindsight derived from appellants’ own
teachings in seeking to combine selected portions of the base
structure and dolly arrangement of the spring compressor stand in
Amstutz with the mobile tractor tire transport holder of Donovan.
In that regard, we note that, as our court of review indicated in
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed.
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Cir. 1992), it is impermissible to use the claimed invention as
an instruction manual or "template" to piece together isolated
disclosures and teachings of the prior art so that the claimed
invention is rendered obvious. That same Court has also
cautioned against focussing on the obviousness of the differences
between the claimed invention and the prior art rather than on
the invention as a whole as 35 U.S.C. 103 requires, as we believe
the examiner has done in the present case. See, e.g., Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1383, 231
USPQ 81, 93 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987).
Donovan’s transport holder is specifically designed for
retaining and moving large, heavy rimmed tractor tires, sometimes
weighing in excess of two tons (col. 1, line 39), from one
location to another. To that end, the support frame therein
includes a generally U-shaped base (11, 12, 13, 14) arranged to
straddle a tractor tire (Fig. 1), castors (19) secured at remote
corners of the base for providing ease of movement of the
transport holder, and an upwardly extending mast (16, 17, 22)
welded to the base and having a vertically movable carrier frame
(25) secured thereto with means (40) for clampingly holding a
rimmed tractor tire in position and means (62) for elevating the
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tractor tire above the ground surface. By contrast, Amstutz
discloses a support stand for a spring compressor, wherein the
stand includes a vertical post (5) carrying the spring clamping
members and a cruciform base (119) with what appears from Figure
9 to be screw adjustable, floor-engaging feet (143) for leveling
the stand. At column 5, line 50, et seq., Amstutz discusses
having the cruciform base of the stand therein further
constructed to receive a two wheel dolly (126) so that one person
can easily move the spring compressor from one location to
another. In this regard, note Figures 12 and 13 of Amstutz.
Simply stated, there would be no reason for one of ordinary
skill in the art to consider eliminating the castors (19) on the
mobile tractor tire transport holder of Donovan and replacing
them with a plurality of floor-engaging feet like those seen at
(143) in Figure 9 of Amstutz, and to then provide a two wheeled
dolly similar to that seen in Figures 10-12 of Amstutz for
facilitating movement of the tractor tire transport holder of
Donovan in a tilted position like that depicted in Figure 13 of
Amstutz, especially remembering that the rimmed tractor tires to
be handled by Donovan’s transport holder are “exceptionally large
and heavy” (col. 1, lines 35-36), e.g., in excess of two tons.
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Since we have determined that the teachings and suggestions
found in Donovan and Amstutz would not have made the mobile stand
of claims 1, 2 and 6 through 8 on appeal obvious to one of
ordinary skill in the art at the time of appellants’ invention,
we must refuse to sustain the examiner’s rejection of those
claims under 35 U.S.C. § 103(a).
As for the examiner’s rejection of claims 3 through 5 under
35 U.S.C. § 103(a) as being unpatentable over Donovan in view of
Amstutz and Rolnicki, we have additionally reviewed the Rolnicki
patent, but find nothing therein that provides for that which we
have indicated above to be lacking in the examiner’s basic
combination of Donovan and Amstutz. Moreover, we see no basis
whatsoever for even attempting to modify the tractor tire
transport holder of Donovan in light of the “swing-type door
transporting and elevating apparatus” of Rolnicki. Accordingly,
the examiner’s rejection of claims 3 through 5 under 35 U.S.C.
§ 103(a) will likewise not be sustained.
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In light of the foregoing, the decision of the examiner to
reject claims 1 through 8 of the present application under
35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF:pgc
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