Ex Parte Moore et al

Board of Patent Appeals and Interferences

Sep 6, 2002

09272115 (B.P.A.I. Sep. 6, 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for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DONALD E. MOORE and STEVEN F. WILMS
____________
Appeal No. 2002-0911
Application No. 09/272,115
____________
ON BRIEF
____________
Before FRANKFORT, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-9.
Claims 10-16, the only other claims pending in this application, stand withdrawn from
consideration as being directed to a non-elected invention.
We AFFIRM-IN-PART.
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Application No. 09/272,115
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BACKGROUND
The appellants’ invention relates to a method of self-assembling a crane, without
the use of a second crane, utilizing a self-contained lifter. Independent claims 1 and 5
are illustrative of the invention and read as follows:
1. A method of self-assembling a mobile crane having a
load handling boom including a base section and at least
one extension section, comprising the steps of:
positioning said extension section adjacent the crane;
raising said extension section with a self-contained
lifter bodily movable with said base section; and
lowering and placing said extension section in a
position for connection to said base section to form said
boom,
whereby said crane can be efficiently assembled
without an assist crane.
5. A method of self-assembling a mobile crane having a
load handling boom including a base section and a plurality
of component parts to provide the complete working crane,
comprising the steps of:
positioning at least one of said component parts
adjacent said crane;
raising said at least one component part with a self-
contained lifter bodily movable with said base section;
lowering and placing said at least one component part
in a position for connection to said crane; and
connecting said at least one component part to
complete said crane,
whereby said crane can be efficiently assembled without an
assist crane.
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1 The plethora of prior art rejections set forth in the final rejection and answer is clearly not in
compliance with the instructions set forth in § 706.02 - CHOICE OF PRIOR ART; BEST AVAILABLE
(page 700-20) of the Manual of Patent Examining Procedure (MPEP). Nevertheless, in the interest of
administrative efficiency, this panel has elected to decide this appeal rather than remand the application to
the examiner to select the best prior art rejections.
The examiner relied upon the following prior art references of record in rejecting
the appealed claims:
Batson et al. (Batson) 2,784,850 Mar. 12, 1957
Newell 3,929,204 Dec. 30, 1975
Andersson 4,064,615 Dec. 27, 1977
Morrow, Sr. et al. (Morrow) 4,081,081 Mar. 28, 1978
Becker 4,660,731 Apr. 28, 1987
Walker 5,960,970 Oct. 5, 1999
(filed Oct. 15, 1997)
Carter (British patent specification) 981,129 Jan. 20, 1965
The following rejections are before us for review.1
(1) Claims 1-9 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
appellants regard as their invention.
(2) Claims 1 and 5 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Carter.
(3) Claims 5, 6 and 9 stand rejected under 35 U.S.C. § 102(e) as being anticipated
by Walker.
(4) Claim 5 stands rejected under 35 U.S.C. § 102(b) as being anticipated by
Batson.
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Application No. 09/272,115
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(5) Claims 5, 6 and 9 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Becker.
(6) Claims 5 and 9 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Newell.
(7) Claims 5-7 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Andersson.
(8) Claims 5, 6 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morrow.
(9) Claims 1-4, 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker.
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. 12) for the examiner's complete reasoning in support of the rejections and to
the brief and reply brief (Paper Nos. 11 and 13) 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
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respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The indefiniteness rejection
The second paragraph of 35 U.S.C. § 112 requires claims to set out and
circumscribe a particular area with a reasonable degree of precision and particularity.
In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
determination, the definiteness of the language employed in the claims 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. Id.
The examiner considers claims 1-9 to be indefinite because it is unclear as to
how appellants are using the terms “self-contained” and “bodily movable with said base
section” to define the claimed invention over the prior art (answer, page 3). As
discussed infra, the problem appears to be not that these terms are unclear but that
appellants, in distinguishing the claims over the applied prior art, seek to assign
interpretations to this terminology which are unduly narrow as compared to the usual
and conventional meanings of these terms without the support of any specific definition
in their specification.
In proceedings before it, the PTO applies to the verbiage of claims the broadest
reasonable meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever enlightenment by way of
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definitions or otherwise that may be afforded by the written description contained in the
appellants’ specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027
(Fed. Cir. 1997). Moreover, absent an express definition in their specification, the fact
that appellants can point to definitions or usages that conform to their interpretation
does not make the PTO's definition unreasonable when the PTO can point to other
sources that support its interpretation. Id., 127 F.3d at 1056, 44 USPQ2d at 1029.
As for the terminology “self-contained,” the definition “complete in itself” offered
therefor by appellants on page 10 of their brief appears to comport with the usual and
customary use of that terminology. Appellants’ specification further informs us that the
invention is directed to “self-assembly of a traveling crane utilizing a self-contained
lifter” (page 1), that the assembly of the crane is accomplished “with a self-contained
dedicated lifter in the boom base section” without the need for a separate, attendant
crane (page 5), that “the operations can be carried out with a self-contained lifter
permanently mounted in the base section of the boom” (pages 5-6), that hydraulic
cylinder means “are mounted in a self-contained manner within the base boom section”
(page 6), and that a pair of hydraulic cylinders form the lifter and “are self-contained in
the base section” (page 9).
Thus, while appellants’ specification does disclose that the lifter is self-contained
and is permanently mounted in the base section of the boom, it does not set forth a
definition of “self-contained” as meaning completely contained within the boom. Based
on the underlying disclosure as a whole, we understand “self-contained” as used in
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claims 1 and 5 to mean that the lifter is fully contained or mounted on the mobile crane
itself.
The terminology “bodily movable with” is not used in appellants’ specification
outside of the claims, much less expressly assigned a special definition therein. Thus,
in interpreting the claims, this terminology is given its broadest meaning in its ordinary
usage. The definition offered by appellants on page 11 of their reply brief, namely, that
it means that two related structures are “capable of being moved as a unit” appears
reasonable to us and consistent with the ordinary usage of these terms. We therefore
accept appellants’ definition and shall use it in interpreting the claims. We note,
however, that “bodily movable with” merely requires that the lifter be capable of being
moved as a unit with the base section; it does not require that each and every time one
of the lifter and base section moves the other necessarily also moves in the same
manner and over the same path. Rather, all that is required is that the lifter is capable
of being moved as a unit with the base section under some set of circumstances.
For the foregoing reasons, it is our opinion that one of ordinary skill in the art
would be able to understand the meaning of the claim terminology alluded to by the
examiner so as to ascertain the metes and bounds of the claimed subject matter,
thereby fulfilling the definiteness requirement of the second paragraph of 35 U.S.C.
§ 112. Accordingly, the examiner’s rejection of claims 1-9 under the second paragraph
of 35 U.S.C. § 112 is reversed.
The prior art rejections
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We turn our attention first to the rejection of claims 1 and 5 as being anticipated
by Carter. As illustrated in Figures 1-4, Carter’s crane is capable of being erected into
an operating condition (Figure 1) and stowed into a traveling position (Figure 4) with the
boom folded away into a compact position, without the use of a separate assembly
crane. In order to achieve the erection and stowing disclosed by Carter, the main jib
head portion 6, 13 of the boom must be attached and detached at one side, using the
lug and clevis connections provided, from the main jib hinge portion 4 of the boom. In
order to erect the boom from the stowed traveling position shown in Figure 4, the crane
is rotated on its turntable to position the main jib head portion 6 on the ground adjacent
the crane. Next, the derricking cable system 22, connected to clevis formations 26
carried by the jib head portion, acts as a lifter and raises the jib head portion (extension
section) to the position shown in Figure 3. The derricking cable system 22, connected
to the clevis formation 23 on the main jib hinge portion 4, then lowers the main jib hinge
portion 4 and the main jib head portion (extension section) 6, 13 into a position wherein
the main jib head portion 6, 13 is aligned with the main jib hinge portion 4 for
connection to the main jib hinge portion 4. The clevis pins are then inserted into the
clevis formations to connect the main jib hinge and head portions for crane operation.
With respect to appellants’ comments on page 13 of the brief, we recognize that,
in the erection method disclosed by Carter, the main jib head portion 6, 13 is hingedly
connected at one side to the main jib hinge portion 4 and is not brought to a position
adjacent the crane by a separate truck or the like (see brief, page 14). However, we
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2 Anticipation is established only when a single prior art reference discloses, expressly or under
the principles of inherency, each and every element of a claimed invention. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be
no difference between the claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
(continued...)
perceive in claims 1 and 5 neither a requirement that the boom extension or other
component part to be connected to the crane be brought to the crane by a separate
truck nor a preclusion that the boom extension or other component part be partly
connected to the base section prior to the positioning, raising, lowering and connecting
steps.
As for appellants’ arguments that Carter’s derricking cable system 22 includes a
winch carried on the upper deck of the crane and thus is not “self-contained” in the
base section (main jib hinge portion 4) and “bodily movable with” the base section, as
already pointed out above in our discussion of the meaning of these terms with respect
to the indefiniteness rejection, “self-contained” merely requires that the lifter be fully
contained on the crane, which Carter’s derricking cable system is, and “bodily movable
with” merely requires that the lifter be capable of being moved as a unit with the base
section. In this case, the derricking cable system is capable of being moved as a unit
with the main jib hinge section 4 when the crane either rotates on its turntable or is
driven along the ground. Neither claim 1 nor claim 5 calls for the lifter to be contained
within the base section.
For the foregoing reasons, we find no error in the examiner’s determination that
the subject matter of claims 1 and 5 is anticipated2 by Carter.
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2 (...continued)
1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991). It is not necessary that the reference teach what
the subject application teaches, but only that the claim read on something disclosed in the reference, i.e.,
that all of the limitations in the claim be found in or fully met by the reference. Kalman v. Kimberly Clark
Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Turning next to the examiner’s rejection of claims 5, 6 and 9 as being anticipated
by Walker, we note that the hoist line drum 48 and hoist line 46 work in conjunction with
the hydraulic boom hoist cylinders 34 and boom pendants 42, which move the mast
and hence adjust the position of the boom 26, to lift and lower components, such as the
crawlers 24, for example, into position for connection on the crane. Appellants argue
on page 15 of the brief that the winch (hoist line drum 48) is neither “self-contained”
with the boom base section (boom butt 30) nor “bodily movable with” the base section.
For the following reasons, we do not agree.
First, the hoist line drum 48, hoist line 46, hoist line cylinders 34 and boom
pendants 42 are all mounted and fully contained on the crane, which is all that claim 5
requires. Second, when the crane is rotated on its turntable or driven using its crawlers
24 along the ground, the hoist line drum 48, hoist line 46, hoist line cylinders 34 and
boom pendants 42 are all capable of being moved as a unit with the boom butt 30 and
are thus “bodily movable with” the boom butt (boom base section), as called for in
claim 5.
Accordingly, appellants’ arguments are unpersuasive of any error on the part of
the examiner in determining that claim 5 is anticipated by Walker. Thus, we shall
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sustain the rejection of claim 5 as being anticipated by Walker. As appellants have
elected not to argue the patentability of claims 6 and 9 apart from claim 5, these claims
fall with claim 5. See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed.
Cir. 1991); In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978). Thus,
we shall also sustain the rejection of claims 6 and 9 as being anticipated by Walker.
The examiner has also rejected claims 1-4, 7 and 8 as being unpatentable over
Walker. The examiner concedes that Walker does not specify that the boom sections
are also removed from transport trailers and then lowered to the ground for pre-
assembly to the boom butt 30, but contends that Walker’s broad teaching of using the
base section (boom butt 30) to lift other components from their transport trailers would
have suggested to one of ordinary skill in the art using the boom butt 30, and
presumably the hoist line drum 48, hoist line 46, hoist line cylinders 34 and boom
pendants 42, to also lift the boom extension sections (boom top 28 and any boom
inserts 32) from their transport trailers and position them for connection to the boom
butt 30 (answer, page 6). Appellants do not challenge the examiner’s position and it
seems quite reasonable to us.
With respect to claims 1, 2, 7 and 8, appellants merely repeat their argument that
the hoist line drum 48 is not “self-contained” in and “bodily movable with” the base
section (boom butt 30), as called for in claim 1. This argument is unpersuasive with
respect to these claims for the same reasons discussed above with regard to claim 5.
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We thus shall sustain the rejection of claims 1, 2, 7 and 8 as being unpatentable over
Walker.
With regard to claim 3, appellants correctly point out that the structure in Walker
which responds to the “lifter” recited in claim 3 does not include “at least one hydraulic
cylinder mounted inside the base section” as also called for in claim 3. Even if the
hydraulic boom hoist cylinders 34 are deemed to be part of the claimed “lifter,” they are
certainly not mounted inside the base section (boom butt 30). As the examiner has not
addressed this limitation specifically and we find no suggestion in Walker to so mount
the cylinders 34, Walker is insufficient to establish a prima facie case of obviousness of
the subject matter of claim 3. We thus shall not sustain the rejection of claim 3 as
being unpatentable over Walker.
As for claim 4, appellants argue that it is the hoist line drum 48, and not hydraulic
cylinders 34, which lift the component parts. We do not agree. The boom hoist
cylinders 34, by lifting and lowering the boom butt 30, also contribute, in conjunction
with the hoist line drum 48 and hoist line 46, to lifting and lowering the component parts.
Thus, appellants’ argument does not persuade us of any error on the part of the
examiner in determining that the subject matter of claim 4 is unpatentable over Walker.
We shall thus sustain the rejection of claim 4 as being unpatentable over Walker.
The appellants’ arguments with respect to the examiner’s rejections based on
Batson, Becker, Newell and Morrow, namely, that the structure in each of these
references which responds to the “lifter” in appellants’ claim 5 is not “self-contained” in
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and “bodily movable with” the base section as called for in claim 5, also stem from an
unduly narrow interpretation of the terms “self-contained” and “bodily movable with” as
discussed above and are as unpersuasive with regard to these rejections as they were
with regard to the rejections based on Carter and Walker. In particular, Batson’s
hoisting unit C, though housed within the upper deck A, is mounted and fully contained
on the crane (loader), thus being “self-contained,” and is capable of being moved as a
unit with (i.e., “bodily movable with”) the boom B when the loader is rotated about its
base 13 or when the loader is driven along the ground. Similarly, whether Becker’s
lifting cylinder 21 or the main lifting winch 44 is considered the “lifter” as recited in claim
5, both of these elements are mounted on and fully contained on the crane, thus
meeting the “self-contained” limitation, and are capable of being moved as a unit with
(i.e., “bodily movable with”) the boom 26 when the superstructure 5 is rotated about the
vertical axis 6 and when the crane is driven along the ground. Newell’s hydraulic lift
cylinders 44, which the examiner calls the “lifter,” and the winch 46 and cable 49, which
also assist in lifting component parts, such as crawlers 76a, 76b, are both mounted on
and fully contained on the crane, thus meeting the “self-contained” limitation, and are
capable of being moved as a unit with (i.e., “bodily movable with”) the main boom
section 40a (base section) when the cab 30 is rotated about its chassis 22 and when
the crane is driven using its crawlers 76a, 76b. Finally, whether Morrow’s hydraulic
cylinders 32 or drums 42, 47 are considered the “lifter” as recited in claim 5, all of these
elements are mounted on and fully contained on the crane, thus meeting the “self-
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contained” limitation, and are capable of being moved as a unit with (i.e., “bodily
movable with”) the base section (boom 24) when the upper works 13 is rotated about
the lower works 12 or when the crane is driven along the ground using traction
assemblies 15.
For the foregoing reasons, we shall sustain the rejections of claim 5 as being
anticipated by Batson, of claim 5, and claims 6 and 9 which appellants have not argued
separately from claim 5, as being anticipated by Becker, of claim 5, and claim 9 which
appellants have not separately argued apart from claim 5, as being anticipated by
Newell and of claim 5, and claims 6 and 9 which appellants have not separately argued
apart from claim 5, as being unpatentable over Morrow.
We shall not, however, sustain the rejection of claims 5-7 as being anticipated by
Andersson. Quite simply, we do not consider the tower crane of Andersson to be “a
mobile crane” or the carrying cradle, comprising counterweight 1 and frames 2-4, to be
“a handling boom including a base section” as called for in claim 5, and hence in claims
6 and 7 which depend from claim 5.
CONCLUSION
To summarize, in this decision we have:
(1) reversed the rejection of claims 1-9 under the second paragraph of 35 U.S.C. § 112;
(2) sustained the rejection of claims 1 and 5 as being anticipated by Carter;
(3) sustained the rejection of claims 5, 6 and 9 as being anticipated by Walker;
(4) sustained the rejection of claim 5 as being anticipated by Batson;
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(5) sustained the rejection of claims 5, 6 and 9 as being anticipated by Becker;
(6) sustained the rejection of claims 5 and 9 as being anticipated by Newell;
(7) reversed the rejection of claims 5-7 as being anticipated by Andersson;
(8) sustained the rejection of claims 5, 6 and 9 as being unpatentable over Morrow; and
(9) sustained the rejection of claims 1-4, 7 and 8 as being unpatentable over Walker as
to claims 1, 2, 4, 7 and 8 and reversed the rejection as to claim 3.
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
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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JDB/ki
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King & Schickli, PLLC
247 North Broadway
Lexington, KY 40507