Ex Parte Molnes

Patent Trial and Appeal Board

Jun 1, 2015

11988191 (P.T.A.B. Jun. 1, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/988,191 01/02/2008 Kjetil Molnes 53550.88 3439
7590 06/01/2015
Carella Byrne Bain
5 Becker Farn Road
Roseland, NJ 07068-1739
EXAMINER
NGUYEN, VU Q
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
06/01/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KJETIL MOLNES
____________

Appeal 2013-005148
Application 11/988,191
Technology Center 3600
____________

Before LINDA E. HORNER, CHARLES N. GREENHUT, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Kjetil Molnes (Appellant) seeks our review under 35 U.S.C. § 134(a)
of the Examiner’s decision rejecting claims 8–12, which are all of the
pending claims in the application. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
THE CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to a device for transporting
chains. Spec. 1, l. 10. Independent claim 8 is illustrative of the subject
matter on appeal.
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Application 11/988,191

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8. A device for transporting chain lengths of varying link
sizes, said device comprising
at least one side plate for fastening on a shaft for rotation about
a longitudinal axis;
at least four catching arms mounted on said side plate in
circumferentially spaced apart relation to each other; and
each said catching arm being adjustably mounted on said side
plate for movement radially of said side plate with
circumferentially alternating ones of said catching arms being
disposed at an angle of approximately 45° and 135° relative to
said side plate.
THE EVIDENCE
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Herman US 325,539 Sept. 1, 1885
Nisbet US 2,101,685 Dec. 7, 1937
THE REJECTIONS
Appellant seeks review of the Examiner’s rejection of claims 8–12
under 35 U.S.C. § 103(a) as unpatentable over Herman and Nisbet.
ANALYSIS
Independent claim 8 requires a side plate and catching arms mounted
to the side plate, with each catching arm “being adjustably mounted on said
side plate for movement radially of said side plate.” Appeal Br. App. 1. The
Specification discloses bolt holes arranged radially outward from the center
of the side plate that allow for radial movement and affixing of the catching
arms. Spec. 2, ll. 15–28, Fig. 1a. The radial adjustability of the catching
arms allows the device “to accommodate different sized chain links.” Id.
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Application 11/988,191

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The Examiner found that the combination of Herman and Nisbet
discloses all of the limitations of claim 8. Final Act. 2–3. More specifically,
the Examiner found that Herman discloses the required side plate and
catching arms at the angles specified by the claims, and that Nisbet discloses
radially adjustable catching arms, and that it would have been obvious to a
person of ordinary skill in the art to modify the arms of Herman to make the
arms adjustable. Id.
Appellant’s primary argument is that the preamble is limiting, and
neither Herman nor Nisbet states that the devices they disclose are “for
transporting chain lengths of varying link sizes.” Appeal Br. 5–6. Appellant
cites case law relevant to whether language in a preamble is limiting, but
never ties any of those legal standards to the language in the preamble of
claim 8. Id. at 6–7. Merely setting forth the legal standard is not sufficient
to apprise us of any reason why the preamble is limiting. Moreover, the
preamble of claim 8 is a broad statement of use (“for transporting chain
lengths of varying link sizes”) and the body of the claim recites a complete
device without any need to resort to the functional requirements of the
preamble. Under these circumstances, we are not convinced that the
preamble of claim 8 includes any positive limitations to the claim. Without
the premise of the preamble as a claim limitation, the bulk of Appellant’s
arguments falls away.
Appellant makes several arguments against the combination of
Herman and Nisbet. Appeal Br. 9–10. These arguments are not persuasive.
Both Herman and Nisbet are directed to devices for conveying chains, and
despite their differences, neither reference teaches away from the proposed
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Application 11/988,191

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combination. For example, Herman discloses integral teeth while Nisbet
discloses adjustable teeth, and Appellant cites this difference as a reason
why one of skill in the art would not be motivated to combine the two
references. Id. (modifying sprockets of Herman “to be adjustably mounted
. . . would destroy the teaching of Herman that the sprocket wheel is to be of
unitary one-piece construction”). Appellant relies on Nisbet’s criticism of
sprocket wheels with “integral metal teeth” such as that disclosed in
Herman, and Nisbet’s discussion of the advantages of adjustable teeth when
compared to integral teeth. Reply 3. Rather than teaching away from the
proposed combination, this teaching in Nisbet underscores the desirability of
modifying Herman to replace the integral teeth with adjustable teeth like
those disclosed in Nisbet. The Examiner correctly found that one of
ordinary skill in the art would have been motivated to modify Herman’s
catching arms to make those arms adjustable in a radial direction based on
the rationale and advantages noted in Nisbet, and that neither reference
taught away from the combination. Final Act. 3–5.
1
Accordingly, we
sustain the rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over Herman and Nisbet.
Appellant argues that dependent claims 9–11 and independent claim
12 are “allowable for similar reasons” as asserted for claim 8 without further
elaboration. App. Br. 10–11. Accordingly, claims 9–12 fall with claim 8,
and we sustain the rejection of those claims on the same basis as claim 8.

1
The combination of Herman and Nisbet also satisfies the functional
language in the preamble to claim 8, because the adjustable teeth in the
proposed combination allow for transport of chains having varying link
sizes. Ans. 3; see Appeal Br. 7-9.
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Application 11/988,191

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DECISION
The decision of the Examiner to reject claims 8–12 is AFFIRMED.
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)(1)(iv).
AFFIRMED
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