Ex Parte Lyngstad

Patent Trial and Appeal Board

Dec 12, 2012

10492867 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PER LYNGSTAD
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Appeal 2010-010805
Application 10/492,867
Technology Center 3600
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Before: LINDA E. HORNER, HYUN J. JUNG, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010805
Application 10/492,867

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from the decision of the
Examiner to reject claims 21-27, 36, and 40-45. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to a method and device for
transporting live fish and shellfish. Spec. 1:6-7. Claim 21, reproduced
below, is illustrative of the claimed subject matter:
21. A technical arrangement for transporting live marine
organisms in water, the technical arrangement comprising:
a first transport module including a storage vessel
structured to contain the live marine organisms in the water;
a second transport module including life-supporting
equipment arranged to keep the marine organisms alive during
transport thereof;
a plurality of pipe passages connecting the first transport
module with the second transport module;
a separate transport container structured to enclose the
first transport module and the second transport module, the
transport container constructed to be carried by ordinary means
of surface transport; and
moving means attached to the first and second transport
modules such that the first and second transport modules may
be moved into and out of the transport container.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Washburn
Sumida
US 2,652,807
US 3,390,898
Sep. 22, 1953
Jul. 2, 1968
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Application 10/492,867

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Epper
Sano
Manome
Wilkin
Shagott
Omizu
US 3,687,111
US 4,009,792
US 5,310,427
US 5,406,740
US 5,433,763
JP A 2000-116273
Aug. 29, 1972
Mar. 1, 1977
May 10, 1994
Apr. 18, 1995
Jul. 18, 1995
Apr. 25, 2000

REJECTIONS
Appellant seeks our review of the following rejections:
1. The rejection of claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Omizu and Epper (Ans. 3);1 and
2. The rejection of claim 40 under 35 U.S.C. § 103(a) as being
unpatentable over Omizu, Epper, Sumida, and Manome (Ans. 6).2
Although Appellant purports not to seek our review of the following
rejections:
3. The rejection of claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over Omizu, Epper, and Sano (Ans. 4);
4. The rejection of claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Omizu, Epper, Sano, and Shagott (Ans. 5);
5. The rejection of claim 36 under 35 U.S.C. § 103(a) as being
unpatentable over Omizu, Epper, Sumida, and Manome (Ans. 5);
6. The rejection of claim 42 under 35 U.S.C. § 103(a) as being
unpatentable over Omizu, Epper, Sumida, Manome, and Washburn
(Ans. 8);

1 Claims 22, 25, 26, and 27 were also rejected on this basis. Ans. 3.
2 Claims 41 and 43 were also rejected on this basis. Ans. 6.
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Application 10/492,867

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7. The rejection of claim 44 under 35 U.S.C. § 103(a) as being
unpatentable over Omizu, Epper, Sumida, Manome, and Shagott
(Ans. 8); and
8. The rejection of claim 45 under 35 U.S.C. § 103(a) as being
unpatentable over Omizu, Epper, Sumida, Manome, and Wilkin
(Ans. 9);
we nevertheless interpret Appellant’s statement that claims 21-27 and 36 are
“grouped together” and that claims 40-45 are “grouped together” (App.
Br. 5) as a request to review the rejections of claims 22-27, 36, and 41-45 on
the same arguments as presented for claims 21 and 40.

ANALYSIS
The Examiner found that Omizu discloses all limitations of claim 21
except “moving means attached to the first and second transport modules
such that the first and second transport modules may be moved into and out
of the transport container.” Ans. 3. In particular, the Examiner found that
Omizu discloses a “first transport module” (being tank A10) and a “second
transport module” (being element A20). Id. The Examiner further found
that the recited “moving means” are wheels and that Epper discloses such
wheels. Id. at 4. The Examiner concluded that it would have been obvious
to modify Omizu to include Epper’s wheels to “achieve the predictable
result of providing easier movement of the containers into and out of the
container [as would be] readily recognized by one of ordinary skill.” Id.
Appellant argues that Omizu does not disclose a “first transport
module” and a “second transport module” because elements A10 (the water
tank) and A20 (housing for equipment) are not “modules,” i.e., separable
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components. App. Br. 6-7. Appellant offers a dictionary definition of
“module” as evidence in support of this argument. App. Br. 17.
In response, the Examiner argues that the claim does not specify that
the modules be “separable,” that a “module” is not necessarily a separable
structure, that “many alternative dictionaries are available with variant
definitions,” and that Appellant’s Specification does not provide a definition
of “module” consistent with Appellant’s argument. Ans. 10. The Examiner
offers no alternative dictionary definitions as evidence in support of this
argument. The Examiner argues further that “to some degree everything is
‘separable,’ for instance being unbolted or having a weld reheated in order to
replace a defective panel.” Ans. 10-11.
In reply, Appellant notes the Examiner’s failure to cite dictionary
evidence of an alternative meaning of “module” and argues that “unbolting”
or “reheating a weld” is not a reasonable interpretation of “separable.”
Reply Br. 2.
We cannot sustain a rejection that is premised upon unsupported fact
finding. Here, Appellant has offered evidence of a reasonable meaning of
the claim term “module.” The Examiner has not explained why that
definition is incorrect; rather the Examiner argues that other definitions
exist. Yet the Examiner fails to cite any evidence of other definitions. A
preponderance of the evidence of record therefore does not support the
Examiner’s finding as to the proper construction of “module.” We agree
with Appellant that the Examiner’s finding that “to some degree everything
is ‘separable’ ” imposes an unreasonably broad interpretation on the meaning
of “modular” and in effect impermissibly reads “modular” out of the claim.
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We conclude that the Examiner’s determination of obviousness is
based upon an unsupported fact finding that Omizu discloses the claimed
first and second transport modules, which finding is based in turn upon the
error in construction of the term “module” discussed above. The Examiner’s
determination cannot stand on this record. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (“The legal conclusion of obviousness must be
supported by facts.[] Where the legal conclusion is not supported by facts it
cannot stand.”)
We are thus constrained to reverse the rejection of claim 21. We
reverse the rejection of claim 40, and those of all other claims on appeal, for
reasons similar to those given above.

DECISION
For the above reasons, the Examiner’s decision to reject claims 21-27,
36, and 40-45 is REVERSED.

REVERSED

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