Ex parte McNeilus et al.

Board of Patent Appeals and Interferences

Sep 17, 1999

08752220 (B.P.A.I. Sep. 17, 1999)

Application for patent filed November 19, 1996. 1
The appellant canceled claims 1 through 18 and presented2
new claims 19 through 36 in an amendment after final rejection
(Paper No. 6, filed May 27, 1998). While the examiner has
approved entry of this amendment upon filing of a Notice of
Appeal and an Appeal Brief (see the Advisory Action, Paper No.
7, mailed June 17, 1998), we note that this amendment has not
(continued...)
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GARWIN B. McNEILUS and WILLIAM P. BARTLETT
____________
Appeal No. 1999-1535
Application No. 08/752,2201
____________
ON BRIEF
____________
Before COHEN, MEISTER, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
rejection of claims 19 through 36, which are all of the claims
pending in this application.2
Appeal No. 1999-1535
Application No. 08/752,220
(...continued)2
been clerically entered.
We AFFIRM-IN-PART.
Appeal No. 1999-1535 Page 3
Application No. 08/752,220
BACKGROUND
The appellants' invention relates generally to a self-
lubricating collection vehicle. An understanding of the
invention can be derived from a reading of exemplary claim 19,
which appears in the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Statz 4,361,367 Nov. 30,
1982
Ellingsen 4,941,671 July
17, 1990
Horning et al. 5,316,430 May
31, 1994
(Horning)
Claims 29 and 30 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 the appellants regard as the invention.
Appeal No. 1999-1535 Page 4
Application No. 08/752,220
Claims 19 through 36 stand rejected under 35 U.S.C. § 103
as being unpatentable over Horning in view of Ellingsen and
Statz.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the answer (Paper No. 10,
mailed October 2, 1998) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 9,
filed August 31, 1998) and reply brief (Paper No. 11, filed
December 7, 1998) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness issue
Appeal No. 1999-1535 Page 5
Application No. 08/752,220
In view of decision below with regard to the rejection3
of claims 19 through 36 under 35 U.S.C. § 103, we believe it
would be appropriate for the examiner to permit the appellants
to amend claims 29 and 30 to overcome the rejection under 35
U.S.C. § 112, second paragraph. For purposes of reviewing the
(continued...)
We sustain the rejection of claims 29 and 30 under 35
U.S.C. § 112, second paragraph.
The examiner determined (answer, p. 3) that claim 29 was
indefinite since it was dependent on itself and that claim 30
was indefinite since it was dependent on canceled claim 11.
The appellants responded to this rejection (reply brief,
pp. 1-2) by stating that the examiner is correct and
requesting leave to amend these claims to change the
dependency of claim 29 from claim 29 to claim 25 and to change
the dependency of claim 30 from claim 11 to claim 29 to
overcome this rejection.
Since the appellants have not contested this rejection,
we summarily sustain the rejection of claims 29 and 30 under
35 U.S.C. § 112, second paragraph.3
Appeal No. 1999-1535 Page 6
Application No. 08/752,220
(...continued)3
rejection of claims 29 and 30 under 35 U.S.C. § 103, infra, we
will assume that the dependency of claim 29 has been changed
from claim 29 to claim 25 and the dependency of claim 30 has
been changed from claim 11 to claim 29.
The obviousness issue
We will not sustain the rejection of claims 19 through 36
under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
All the claims under appeal require at least one surface
area to comprise
Appeal No. 1999-1535 Page 7
Application No. 08/752,220
See claim 19, paragraph (d); claim 25, paragraph (e);4
and claim 31, paragraph (f).
a non-metallic, low coefficient of friction material
which autogenously provides a lubricious bearing surface
requiring no separate lubricating material.4
The examiner ascertained (answer, p. 4) that Horning
discloses all the subject matter of the independent claims on
appeal (i.e., claims 19, 25 and 31) except for the above-noted
limitation. The examiner then determined (answer, pp. 4-5)
that
[i]t would have been obvious to one of ordinary skill in
the art at the time of the instant invention to have
formed the bushings and other bearing surfaces (such as
hinges and joints) of the collection vehicle of Horning
et al. from a non-metallic, self lubricating and low
coefficient of friction material because Ellingsen
teaches the use of self lubricating bearings in the
industrial vehicle environment and Statz teaches forming
a self lubricating bearing from a non-metallic
microporous polymer material.
The appellants argue (brief, pp. 10-12, reply brief, pp.
2-5) that the applied prior art does not suggest the claimed
subject matter. We agree.
Appeal No. 1999-1535 Page 8
Application No. 08/752,220
In our view, the above-noted claim limitation is not
taught or suggested by any of the applied prior art for the
reasons set forth below.
Clearly Horning does not teach or suggest any of his
surface areas comprising a non-metallic, low coefficient of
friction material which autogenously provides a lubricious
bearing surface requiring no separate lubricating material.
While Ellingsen does teach self-lubricating bushings 54
used in a vehicle, Ellingsen does not teach or suggest that
the self-lubricating bushings 54 comprise a non-metallic, low
coefficient of friction material which autogenously provides a
lubricious bearing surface requiring no separate lubricating
material.
While Statz does teach a self lubricating bearing, Statz
does not teach or suggest that the self lubricating bearing
comprise a non-metallic, low coefficient of friction material
which autogenously provides a lubricious bearing surface
requiring no separate lubricating material. In that regard,
Appeal No. 1999-1535 Page 9
Application No. 08/752,220
Statz teaches that his self lubricating bearing 14 includes a
body 16 comprised of sintered powdered metal such as powdered
iron impregnated with lubricating oil. The body 16 defines a
bore 18 housing a shaft 12. Statz further teaches that his
self lubricating bearing 14 also includes polymer bearing
members 30 housed in cavities in the body 16 (see Figures 2
and 3). Statz discloses (see column 2, last line, to column
3, line 26) that the polymer bearing members 30 are comprised
of a molded microporous polymer material impregnated with
lubricating oil having the characteristics of being comprised
of a low friction material and of secreting oil onto the
surface of the shaft 12 to form a film of oil between the
shaft and the wall of the bore 18. From these teachings we
conclude that Statz's body 16 does not comprise a non-
metallic, low coefficient of friction material which
autogenously provides a lubricious bearing surface requiring
no separate lubricating material. Likewise, we conclude that
Statz's polymer bearing members 30 do not comprise a non-
metallic, low coefficient of friction material which
autogenously provides a lubricious bearing surface requiring
no separate lubricating material.
Appeal No. 1999-1535 Page 10
Application No. 08/752,220
In our view, the only suggestion for modifying Horning in
a manner to meet the above-noted limitation stems from
hindsight knowledge derived from the appellants' own
disclosure. The use of such hindsight knowledge to support an
obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-
13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For the reasons stated above, the decision of the
examiner to reject claims 19 through 36 under 35 U.S.C. § 103
is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 29 and 30 under 35 U.S.C. § 112, second paragraph, is
affirmed and the decision of the examiner to reject claims 19
through 36 under 35 U.S.C. § 103 is reversed.
Appeal No. 1999-1535 Page 11
Application No. 08/752,220
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
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-1535 Page 12
Application No. 08/752,220
CHARLES G. MERSEREAU
HAUGEN AND NIKOLAI
820 INTERNATIONAL CENTRE
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402-3325
APPEAL NO. 1999-1535 - JUDGE NASE
APPLICATION NO. 08/752,220
APJ NASE
APJ MEISTER
APJ COHEN
DECISION: AFFIRMED-IN-PART
Prepared By: Gloria Henderson
DRAFT TYPED: 16 Sep 99
FINAL TYPED: