Ex Parte Mason

Board of Patent Appeals and Interferences

Sep 25, 2002

09496087 (B.P.A.I. Sep. 25, 2002)

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written for publication and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MILFORD K. MASON
____________
Appeal No. 2002-0234
Application No. 09/496,087
____________
ON BRIEF
____________
Before FRANKFORT, STAAB, and MCQUADE, 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 4, all of the claims pending in
this application.
As noted on page 1 of the specification, appellant's
invention relates to a tractor-mounted forklift mechanism and,
more particularly, to a forklift mechanism mounted on the front
Appeal No. 2002-0234
Application No. 09/496,087
2
of a conventional tractor which mechanism includes a wheeled
frame means positioned forwardly of the tractor to which the
weight carried by the forklift maybe transferred. A copy of
claims 1 through 4 on appeal may be found in the Appendix to
appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ferris 4,079,798 Mar. 21, 1978
Granlind et al. 4,424,872 Jan. 10, 1984
(Granlind)
Smith et al. (Smith) 5,823,629 Oct. 20, 1998
Claims 1 through 4 stand 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 his invention.
Claims 1 through 4 additionally stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Granlind in view of
Smith or Ferris.
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Application No. 09/496,087
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Rather than reiterate the details of the above-noted
rejections and the conflicting viewpoints advanced by the
examiner and appellant regarding those rejections, we refer to
the examiner's answer (Paper No. 11, mailed June 29, 2001) and to
appellant's brief (Paper No. 10, filed April 9, 2001) and reply
brief (Paper No. 12, filed July 31, 2001) for a full exposition
thereof.
OPINION
After careful consideration of appellant's specification and
claims, the teachings of the applied prior art references and
each of the arguments and comments advanced by appellant and the
examiner, we have reached the determinations which follow.
Turning first to the examiner's rejection of claims 1
through 4 under 35 U.S.C. § 112, second paragraph, the examiner
asserts that the subject matter of these claims is indefinite
because independent claims 1, 3 and 4 fail to set forth a
forklift structure (i.e., a mast, carriage moved by motive means,
etc.) thus rendering these claims incomplete. In addition, the
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Application No. 09/496,087
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examiner asserts that in lines 7-8 of claim 1, improper
alternative claiming is present.
After reviewing appellant's specification and the above
enumerated claims in light thereof, and also in light of
appellant's arguments in their brief (pages 7-8), it is our
opinion that the scope and content of the subject matter embraced
by claims 1 through 4 on appeal is reasonably clear and definite,
and fulfills the requirements of 35 U.S.C. § 112, second
paragraph. In our view, the examiner's criticism of the language
used in those claims, or the lack thereof, goes to the breadth of
the claims and not to indefiniteness. It is well settled that
breadth alone is not to be equated with indefiniteness and that
in determining whether a claim sets out and circumscribes a
particular area with a reasonable degree of precision and
particularity, the definiteness of the language employed in the
claim must be analyzed, not in a vacuum, but always in light of
the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. See In re Johnson,
558 F.2d 1008, 1016 n.17, 194 USPQ 187, 194 n.17 (CCPA 1977).
When that standard of evaluation is applied to claims 1 through 4
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Application No. 09/496,087
5
on appeal, we are of the opinion that those claims set out and
circumscribe a particular area with a reasonable degree of
precision and particularity.
Nor do we see any reason to conclude that claims 1 through 4
are in any way incomplete. The forklift apparatus broadly set
forth therein includes a wheeled frame (82) pivotally secured to
the forward end of a tractor (12), a connecting means (28), a
material handling attachment (120) mounted on the wheeled frame
and a length adjustable member (76) for bringing the wheels on
the wheeled frame into and out of contact with the ground as
needed or desired. Based on appellant's disclosure, it is
readily apparent that it is the "material handling attachment"
(120) which incorporates the elements of concern to the examiner
(i.e., a base mast section (122), a carriage or movable mast
section (124) moved by motive means, tines (144), etc.). Again,
we note that breadth alone does not equate to indefiniteness.
In addition, with regard to the examiner's assertion of
"improper alternate claiming," after reviewing appellant's
specification and claim 1 in light thereof, it is our opinion
that the examiner's criticism of the alternative language used in
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appellant's claim 1 is unwarranted. We know of no requirement
that alternative embodiments like those set forth in appellant's
claim 1, which are clearly disclosed in the specification (page
7) and readily apparent to one of ordinary skill in the art, must
necessarily be set forth in separate independent claims. Again
applying the standard set forth above in In re Johnson, we are of
the opinion that claim 1 sets out and circumscribes a particular
area with a reasonable degree of precision and particularity, and
that one of ordinary skill in the art would clearly understand
what is being claimed.
Given the foregoing, we will not sustain the examiner's
rejection of appellant's claims 1 through 4 under 35 U.S.C.
§ 112, second paragraph.
Regarding the examiner's rejection of claims 1 through 4
under 35 U.S.C. § 103(a) as being unpatentable over Granlind in
view of Smith or Ferris, we find that we are in agreement with
appellant's position as set forth in the brief and reply brief.
Apparently it is the examiner's position that it would have been
obvious to one of ordinary skill in the art at the time of
appellant's invention to somehow substitute what the examiner
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characterizes as "an equivalent pivotably mounted frame" (answer,
page 3) as taught by Smith or Ferris for the frame or cylinder
arrangement supporting the extendible wheel (8) on the forklift
truck of Granlind. However, in our opinion, the mere fact that
pivotable mounting frames for tag axle wheel assemblies on
concrete trucks or dump trucks like those in Smith or Ferris
existed in the prior art at the time of appellant's invention
provides no teaching, suggestion, motivation or incentive for the
examiner's proposed modification of the forklift mechanism of
Granlind. Moreover, we find no teaching or suggestion of a
"tractor" and forklift apparatus combination like that claimed by
appellant in any of the references applied by the examiner.
After reviewing the prior art relied upon, we are of the
opinion that the examiner has taken appellant's disclosure and
claims as a blueprint and used them to seek out and assemble
disparate elements from the prior art in an effort to arrive at
appellant's claimed subject matter. Thus, the examiner's
position in this appeal represents a clear case of impermissible
hindsight reconstruction of the claimed invention based upon
appellant's own teachings. In that regard, we note, as our court
of review indicated in In re Fritch, 972 F.2d 1260, 1264,
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23 USPQ2d 1780, 1784 (Fed. Cir. 1992), that it is impermissible
to use the claimed invention as an instruction manual or
"template" in attempting to piece together isolated disclosures
and teachings of the prior art so that the claimed invention is
rendered obvious.
Since we have concluded that the examiner has failed to set
forth a prima facie case of obviousness, we will not sustain the
rejection of claims 1 through 4 under 35 U.S.C. § 103(a).
In summary:
The examiner's decision rejecting claims 1 through 4 under
35 U.S.C. § 112, second paragraph, has not been sustained.
In addition, the examiner's decision rejecting claims 1
through 4 under 35 U.S.C. § 103(a) as being unpatentable over
Granlind in view of Smith or Ferris has not been sustained
Thus, the decision of the examiner rejecting claims 1
through 4 of the present application is reversed.
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Application No. 09/496,087
9
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
CEF/lbg
Appeal No. 2002-0234
Application No. 09/496,087
10
THOMTE, MAZOUR & NIEBERGALL, LLC
2120 S. 72ND STREET, SUITE 1111
OMAHA, NE 68124
Lesley
Appeal No. 2002-0234
Application No. 09/496,087
APJ FRANKFORT
APJ STAAB
APJ MCQUADE
DECISION: REVERSED

Prepared: August 15, 2003
Draft Final
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