Ex Parte Morath

Patent Trial and Appeal Board

Sep 23, 2016

11986421 (P.T.A.B. Sep. 23, 2016)

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.
11/986,421 11/21/2007 Erwin Morath 298-369 2430
28249 7590 09/23/2016
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
MORTELL, JOHN F
ART UNIT PAPER NUMBER
2689
MAIL DATE DELIVERY MODE
09/23/2016 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 ERWIN MORATH
____________

Appeal 2015-004688
Application 11/986,421
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and
JUSTIN BUSCH, Administrative Patent Judges.

Opinion for the Board by COURTENAY, Administrative Patent Judge.

Opinion concurring by BUSCH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 2, 4, 5, and 7–38. Claims 3 and 6 were cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2015-004688
Application 11/986,421

2
Invention
The disclosed and claimed invention on appeal “relates to a radio
remote control for controlling one or more functions of a crane, preferably of
a mobile crane.” (Spec. 1.)
Representative Claim
1. A radio remote control for controlling one or more
functions of a crane, wherein the radio remote control
comprises a hand-held transmitter, [L1] whose hardware
components are not adapted to the type or configuration of the
crane and thus are identical for a plurality of cranes differing
in type or configuration, and which is programmable for the
purpose of adaptation to the type or configuration of the crane
whose function or functions should be controlled by the hand-
held transmitter,
[L2] wherein the hand-held transmitter includes one or
more function keys of a two-channel type and which include at
least two actuating elements, one of which is an on/off key and
another one of which is an analogue key responding to the
actuating pressure for operating analog functions by means of
a varying actuating force, and
wherein the hand-held transmitter includes a receiver for
receiving signals.

(Contested limitations L1 and L2 are emphasized.)

Rejections
A. Claims 1 and 19 are rejected under pre-AIA 35 U.S.C.
§ 112, second paragraph, as being indefinite.
B. Claims 1, 2, 4, 5, 8, 10, 11, 14, 17, and 24–29 are rejected under
35 U.S.C. § 103(a) as being obvious over the combined teachings
and suggestions of Bachman et al. (US 2002/0043510 Al; Apr. 18,
2002) in view of Morimoto (US 7,064,561 B2; June 20, 2006).
Appeal 2015-004688
Application 11/986,421

3
C. Claims 7, 9, 12, 16, 18–21, 23, 33, 34, and 35 are rejected under
35 U.S.C. § 103(a) as being obvious over the combined teachings
and suggestions of Bachman, Morimoto, and Quigley (US
7,831,363 B2; Nov. 9, 2010).
D. Claim 13 is rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of Bachman,
Morimoto, and Edgar, II et al. (US 6,994,223 B1; Feb. 7, 2006).
E. Claim 15 is rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of Bachman,
Morimoto, and Baker (US 2002/0115433 A1; Aug. 22, 2002).
F. Claim 22 is rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of Bachman,
Morimoto, Quigley, and Wierzba et al. (US 7,252,299 B2; Aug. 7,
2007).
G. Claims 30, 31, 36, and 37 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of
Bachman and Hofer et al. (US 2006/0229040 A1; Oct. 12, 2006).
H. Claims 32 and 38 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Bachman
and Quigley.
Grouping of Claims
We address rejection A under § 112 of claims 1 and 19, infra. Based
on Appellant’s arguments: we decide the appeal of all claims rejected under
§ 103 rejection B on the basis of representative claim 1; we decide the
appeal of all claims rejected under § 103 rejection C on the basis of
representative claim 19; we decide the appeal of claim 30 and associated
Appeal 2015-004688
Application 11/986,421

4
dependent claim 36, both rejected under § 103 rejection G, on the basis of
representative claim 30; we decide the appeal of claim 31 and associated
dependent claim 37, both rejected under rejection G, on the basis of
representative claim 31; and we decide the appeal of claim 32 and associated
dependent claim 38, both rejected under § 103 rejection H, on the basis of
representative claim 32. We address rejections D–F, infra. See 37 C.F.R.
§ 41.37(c)(1)(iv).
ANALYSIS
Rejection A of Claims 1 and 19 under 35 U.S.C. § 112, second paragraph

Issue: Under Pre-AIA 35 U.S.C. § 112, second paragraph, did the
Examiner err in concluding the claim language “one or more function keys
of a two-channel type and which include at least two actuating elements” is
indefinite? (Emphasis added.)
In the Final Action (page 3), the Examiner concludes: “Claims 1 and
19 are indefinite because they recite, ‘one or more function keys of a two-
channel type,’ and the addition of the word ‘type’ to an otherwise definite
expression extends the scope of the expression so as to render it indefinite.
(See MPEP § 2173.05(b)(E)).”
We note the Examiner has followed the guidance set forth in MPEP
§ 2173.05(b)(E)), reproduced below:
E. “Type”
The addition of the word “type” to an otherwise definite
expression (e.g., Friedel-Crafts catalyst) extends the scope of
the expression so as to render it indefinite. [Ex parte
Copenhaver,] 109 USPQ 118 (Bd. Pat. App. & Inter. 1955).
Likewise, the phrase “ZSM-5-type aluminosilicate zeolites”
was held to be indefinite because it was unclear what “type”
was intended to convey. The interpretation was made more
Appeal 2015-004688
Application 11/986,421

5
difficult by the fact that the zeolites defined in the dependent
claims were not within the genus of the type of zeolites defined
in the independent claim. [Ex parte Attig,] 7 USPQ2d 1092
(Bd. Pat. App. & Inter. 1986).

Turning to the Brief, Appellant urges that “relative terminology in
claim language, including terms of degree, does not automatically render the
claim indefinite.” (Br. 8 (emphasis added).) In support, Appellant cites to
“Seattle Box Co., Inc., v. Industrial Crating & Packing, Inc., 731 F.2d 818
(Fed. Cir. 1984) (Acceptability of the claim language depends on whether
one of ordinary skill in the art would understand what is claimed, in light of
the specification.).” (Br. 8.) We note the court in Seattle Box Co., Inc., 731
F.2d at 826, held that the term of degree “substantially equal to” was not
indefinite, when considered in light of an example in the specification. The
court in Seattle Box Co., Inc. guides (id.):
[d]efiniteness problems often arise when words of degree are
used in a claim. That some claim language may not be precise,
however, does not automatically render a claim invalid. When a
word of degree is used the district court must determine
whether the patent’s specification provides some standard for
measuring that degree. The trial court must decide, that is,
whether one of ordinary skill in the art would understand what
is claimed when the claim is read in light of the specification.

Based on this authority (id.), Appellant contends (Br. 8):
The recitation in [c]laims 1 and 19 of “one or more function
keys of a two-channel type” is clearly defined on page 3 of the
[S]pecification to mean the function key consists of at least two
actuating elements, one of which constitutes an on/off key and
another one constitutes an analogue key responding to the
actuating pressure. Thus, “one or more function keys of a two-
channel type” is clearly defined and definite; one skilled in the
art would understand what is claimed.
Appeal 2015-004688
Application 11/986,421

6
(Emphasis added.)
The Examiner disagrees (Ans. 3):
Absent the use of the word “define,” the disclosure in the
[S]pecification does not exclude other actuators from qualifying
as “two-channel type” actuators, but the [S]pecification also
does not identify the boundaries of what other actuators could
qualify as “two-channel type” actuators. For the foregoing
reasons, the term, “two-channel type” is indefinite.
Furthermore, the word ‘type’ is indefinite. The indefiniteness
of the word ‘type’ is not removed merely because the word
appears in the [S]pecification.
To the extent the recited language “one or more function keys of a
two-channel type and which include at least two actuating elements” (claims
1 and 19 (emphasis added)) could arguendo be considered as a “term of
degree,” our reviewing court recently reaffirmed (post Nautilus) that claim
terms of degree “necessarily calls for a comparison against some baseline.”
Liberty Ammunition, Inc., v. U.S., Nos. 2015-5057, 2015-5061, 2016 WL
4488151, at *5 (Fed. Cir. August 26, 2016). Specifically, the court in
Liberty guides (id.):
Terms of degree are problematic if their baseline is unclear to
those of ordinary skill in the art. We especially take caution
when presented with terms of degree following the Supreme
Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120 . . . (2014), which instructs that a claim must
“inform those skilled in the art about the scope of the invention
with reasonable certainty” to meet the definiteness requirement
of 35 U.S.C. § 112, ¶ 2, id. at 2129. While our post-Nautilus
cases indicate that terms of degree are not “inherently
indefinite” in light of the Supreme Court’s decision, we have
recognized that claims having terms of degree will fail for
indefiniteness unless they “provide objective boundaries for
those of skill in the art” when read in light of the specification
Appeal 2015-004688
Application 11/986,421

7
and the prosecution history. Interval Licensing LLC v. AOL,
Inc., 766 F.3d 1364, 1370–71 (Fed. Cir. 2014), cert. denied, 136
S. Ct. 59 . . . (2015).
In Interval Licensing LLC, the claim term “unobtrusive manner” was
considered by the court as a term of degree. See Interval Licensing LLC,
766 F.3d at 1373 (“After reviewing the specification and prosecution
history, we find that the ‘unobtrusive manner’ phrase has too uncertain a
relationship to the patents’ embodiments. Contrary to Interval's suggestion,
the wallpaper embodiment does not provide a reasonably clear and exclusive
definition, leaving the facially subjective claim language without an
objective boundary.”).
In Liberty Ammunition, Inc. the court considered the claim language
“reduced area of contact” as a term of degree, and found the trial court
below failed “to properly apply the exacting ‘objective boundaries’ standard
from Interval.” See Liberty Ammunition, Inc., Nos. 2015-5057, 2015-5061,
at *7.
Thus, the subjective nature of a term of degree is a factor that our
reviewing court additionally considers in patent claims:
When a claim term “depend[s] solely on the unrestrained,
subjective opinion of a particular individual purportedly
practicing the invention,” without sufficient guidance in the
specification to provide objective direction to one of skill in the
art, the term is indefinite. Datamize, LLC v. Plumtree Software,
Inc., 417 F.3d 1342, 1350 (Fed.Cir.2005) (finding “aesthetically
pleasing” to be indefinite because the specification lacked any
objective definition of the term). For some facially subjective
terms, the definiteness requirement is not satisfied by merely
offering examples that satisfy the term within the specification.
See Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371–
73 (Fed.Cir.2014) (finding a single example of the term
“unobtrusive manner” in the specification did not outline the
Appeal 2015-004688
Application 11/986,421

8
claims to a skilled artisan with reasonable certainty). For other
terms like, for example, terms of degree, specific and
unequivocal examples may be sufficient to provide a skilled
artisan with clear notice of what is claimed. See Enzo Biochem,
Inc. v. Applera Corp., 599 F.3d 1325, 1334–35 (Fed.Cir.2010)
(finding the phrase “not interfering substantially” to be definite
where intrinsic evidence provided multiple examples that would
allow a skilled artisan to determine whether a particular
chemical bond linkage group would “interfer[e] substantially”
with hybridization).
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed.
Cir. 2014).
Here, we give the claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). Turning to Appellant’s Specification (page 3)
for context, we find an example or exemplary embodiment in the description,
but not a limiting definition per se.1 (as cited by Appellant (Br. 8)):
In a further aspect of the invention it is provided that the hand-
held transmitter includes one or more function keys which
consist of at least two actuating elements, one of which
constitutes an on/off key and another one constitutes an
analogue key responding to the actuating pressure. Thus, the
actuator is of the two-channel type.

1 Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention.” Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.”).
Appeal 2015-004688
Application 11/986,421

9
(Spec. 3 (second paragraph) (emphasis added).)
We additionally observe the language recited in Appellant’s claims 1
and 19 is of different scope than the subjective claim terms of degree
considered by the Federal Circuit in the three cases cited supra. (e.g., where
the court considered the terms of degree “substantially equal to”,
“unobtrusive manner”, and “reduced area of contact”).
Given the clear differences between the aforementioned subjective
terms of degree considered by the Federal Circuit, and Appellant’s claim
language (“one or more function keys of a two-channel type and which
include at least two actuating elements”), we find Appellant’s contention
that the aforementioned language of claims 1 and 19 should be considered as
a “term of degree” is not supported by Seattle Box Co., Inc., as cited by
Appellant (App. Br. 8), nor by the three additional Federal Circuit cases we
have discussed supra. See our discussion of Interval Licensing LLC, Liberty
Ammunition, Inc., and DDR Holdings, LLC, supra.
In considering the claim term “two-channel type” as a purported “term
of degree” (as argued by Appellant (Br. 8)), we further consider the question
of whether the “baseline” reference or “objective boundary” would have
been clear to an artisan possessing an ordinary level of skill, because of the
additional claim language: “which include at least two actuating elements . .
. .” (Claims 1 and 19 (emphasis added).) Although not subjective, we
conclude the only reasonable “baseline” reference or “objective boundary”
for a “two-channel type” function key, as claimed, would be the base case
where there are only two actuators (i.e., an “on/off key” and “analogue
key”).
Appeal 2015-004688
Application 11/986,421

10
But the scope of claims 1 and 19 is not limited to only two actuators
under a broad but reasonable interpretation, because of the claim language:
“which include at least two actuating elements . . . .”
Thus, we conclude the scope of a “two-channel type” having three or
more actuating elements would be unclear, because the possible mappings
between the claimed two-channels and the particular types of actuators
(on/off key or analogue key) where the number of actuators could be {3, 4,
5, . . . n } are infinite, and therefore indefinite under the lower threshold of
indefiniteness applied by the USPTO and PTAB under the holding of Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).
During examination before the USPTO, “if a claim is amenable to two
or more plausible claim constructions, the USPTO is justified in requiring
the applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim . . . indefinite.” Ex parte Miyazaki, 89
USPQ2d at 1211 (BPAI 2008) (precedential).2
Here, regarding the claim 1 language (“wherein the hand-held
transmitter includes one or more function keys of a two-channel type and
which include at least two actuating elements, one of which is an on/off
key and another one of which is an analogue key . . . . ”) we conclude an
infinite number of combinations of on/off actuators and analog actuators
could be envisioned such that the above-recited language of claim 1 does
not, in fact, impose a structural limitation on the “two-channel type” of the

2 See also In re Packard, 751 F.3d 1307, 1324 (Fed. Cir. 2014), (J. Plager
concurring) (“In my view (and that of the per curiam court), it is within the
authority of the USPTO to so interpret the applicable standard. Further, it is
my view that, as a policy matter, this court should support the USPTO in so
doing.”).
Appeal 2015-004688
Application 11/986,421

11
one or more function keys of the hand-held transmitter. Therefore, we
conclude the contested claim language under § 112 rejection A is amenable
to two or more plausible claim constructions under the holding of Miyazaki.
Even considering that the supporting embodiment relied on by
Appellant in the Specification3 may provide a specific and unequivocal
example of “one or more function keys of a two-channel type and which
include at least two actuating elements” (claims 1 and 19), we apply a lower
threshold for indefiniteness in the USPTO for pending patent application
claims under examination than is applied under the narrower Phillips
standard of claim construction, as applied to (issued) patent claims in federal
court, and as considered under Nautilus, Inc. v. Biosig Instruments, Inc., 134
S. Ct. 2120, 2124 (2014) (“we hold that a patent is invalid for indefiniteness
if its claims, read in light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable certainty, those skilled in
the art about the scope of the invention.”) (emphasis added).4
Because we conclude claims 1 and 19 are amenable to two or more
plausible claim constructions under the lower threshold of indefiniteness
applied by the USPTO (Miyazaki, 89 USPQ2d at 1211 (precedential)), we
sustain the Examiner’s rejection A under § 112, second paragraph.

3 See Br. 8; Spec. 3 (second paragraph).

4 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).

Appeal 2015-004688
Application 11/986,421

12
Rejections B–H under § 103
Regarding the remaining rejections B–H under § 103, we have
considered all of Appellant’s arguments and any evidence presented. We
disagree with Appellant’s arguments, and we adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Answer in
response to Appellant’s arguments. (See Ans. 2–15, as pertinent to the
rejections under § 103.) However, we highlight and address specific
findings and arguments for emphasis in our analysis below.

Rejection B of Independent Claim 1 under 35 U.S.C. § 103(a)
Combinability under 35 U.S.C. § 103(a)
As a threshold matter, we decide the question of whether the
Examiner erred by improperly combining the cited references under
35 U.S.C. § 103.
Appellant urges that one would not look to Morimoto to improve
Bachman, because “Bachman ONLY discloses a system with on/off
functions.” (Br. 10.) Appellant advances a “teach[ing] away” argument
(id.), and contends “there is no hint or reason for a skilled person to combine
a resistance type sensor of Morimoto with the remote control of Bachman as
Bachman only operates on/off function.” (Br. 11.)
Our reviewing court guides: “A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.”
Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir.
Appeal 2015-004688
Application 11/986,421

13
2008) (citations omitted). However, a reference does not teach away if it
merely expresses a general preference for an alternative invention from
amongst options available to the ordinarily skilled artisan, and the reference
does not discredit or discourage investigation into the invention claimed.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, Appellant has not shown how Bachman or Morimoto discredit
or discourage investigation into the invention claimed. When combining
references to establish obviousness, the appropriate consideration is whether
the proposed combination would work for its intended purpose, not whether
the combination is inconsistent with the stated goal of one of the references,
as argued by Appellant (Br. 11). See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009); cf. with Br. 11
(“Bachman only discloses a system with on/off function, there is no hint or
reason for a skilled person to combine a resistance type sensor of Morimoto
with the remote control of Bachman as Bachman only operates on/off
function.”).
The Supreme Court guides: “when a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,
282 (1976)).
This reasoning is applicable here. Moreover, Appellant has not
persuaded us the Examiner’s proffered combination of Bachman and
Morimoto would have been uniquely challenging or difficult for one of
ordinary skill in the art, or represents an unobvious step over the prior art.
Appeal 2015-004688
Application 11/986,421

14
See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418).
Accordingly, for at least the aforementioned reasons, we are not
persuaded the Examiner erred in combining the cited references under § 103.

Contested Limitations under § 103 (Rejection B of Claim 1)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination of Bachman and Morimoto would have taught or
suggested contested limitations L1 and L2:
A radio remote control for controlling one or more
functions of a crane, wherein the radio remote control
comprises a hand-held transmitter, [L1] whose hardware
components are not adapted to the type or configuration of the
crane and thus are identical for a plurality of cranes differing
in type or configuration, and which is programmable for the
purpose of adaptation to the type or configuration of the crane
whose function or functions should be controlled by the hand-
held transmitter,

[L2] wherein the hand-held transmitter includes one or more
function keys of a two-channel type and which include at least
two actuating elements, one of which is an on/off key and
another one of which is an analogue key responding to the
actuating pressure for operating analog functions by means of
a varying actuating force,
within the meaning of claim 1? 5

5 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See Morris, 127 F.3d at
1054.

Appeal 2015-004688
Application 11/986,421

15
Regarding limitation L1, Appellant urges that in Bachman, “[i]t is
only the one hoist that the transmitter can control. Bachman is silent as to
any other system that its transmitter can be used to control. Morimoto does
not cure the defects of Bachman.” (Br. 11.)
However, we find a preponderance of the evidence supports the
Examiner’s findings: “Bachman discloses a crane of unspecified type, so
the hand-held transmitter of Bachman is not adapted to the type or
configuration of the crane. ([0038]) Moreover, the applicant's argument is
directed to the intended use of the claimed radio remote control, which is not
further limiting.” (Ans. 8.)
Regarding apparatus claims generally, our reviewing court guides the
patentability of an apparatus claim “depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Marketing Int’l., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). “It is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable.” In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (citations omitted).
This reasoning is applicable here. Moreover, Appellant has not filed a
Reply Brief to further rebut the Examiner’s findings. (Ans. 8.) Therefore,
on this record, we find Appellant’s arguments unpersuasive regarding
limitation L1.
Regarding limitation L2, Appellant does not substantively contest
limitation L2, but instead merely attacks the Examiner’s proffered rationale
for the combination, which we have fully addressed supra. (Br. 9–11.)
However, the test for obviousness is not what the references show
individually but what the combined teachings would have suggested to one
Appeal 2015-004688
Application 11/986,421

16
of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986); see also Merck & Co., Inc. v. Biocraft Laboratories, Inc.,
874 F.2d 804, 807–08 (Fed. Cir. 1989) (“[T]he question under 35 U.S.C.
[§] 103 is not merely what the references expressly teach but what they
would have suggested to one of ordinary skill in the art at the time the
invention was made.”). Therefore, we find Appellant’s arguments
unpersuasive regarding limitation L2.
On this record, we find a preponderance of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness for claim 1. Because we are not persuaded the Examiner erred,
we sustain rejection B of representative claim 1, and the associated grouped
claims, also rejected under rejection B, which fall with claim 1. See
Grouping of Claims, supra.

Rejection C of Independent Claim 19 under 35 U.S.C. § 103(a)
Regarding the rejection of claim 19, Appellant essentially restates the
same arguments advanced previously regarding claim 1 (rejected under
rejection B), that we do not find persuasive for the reasons discussed above
regarding claim 1. (Br. 12–14.)
Rejection C of independent claim 19 additionally cites the tertiary
Quigley reference. Regarding Quigley, Appellant contends: “Quigley does
not specifically teach or suggest that its subsystems include any analog
functions. Quigley does not cure the defects of Bachman and Morimoto.”
(Id. at 14.)
However, Appellant is arguing the references separately, because the
Examiner relies on Morimoto (e.g., col. 9, ll. 54–58) for teaching an analog
Appeal 2015-004688
Application 11/986,421

17
function. (Final Act. 10.) We note Appellant has not filed a Reply Brief to
further rebut the Examiner’s findings.
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness regarding claim 19. Because we are not
persuaded the Examiner erred, we sustain rejection C of representative claim
19, and the associated grouped claims, also rejected under rejection C, which
fall with claim 19. See Grouping of Claims, supra.

Rejection G of Independent Claim 30 under 35 U.S.C. § 103(a)
To the extent Appellant contests the recited “hand-held transmitter . . .
not adapted to the type or configuration of the crane and identical for a
plurality of cranes differing in type or configuration” (Br. 14–15, 24), we
note the first clause of claim 30 is commensurate in scope to limitation L1 of
claim 1, that we have fully addressed above. Therefore, we agree with and
adopt the Examiner’s response and findings as articulated on page 10 of the
Answer.
Regarding the docking station limitations recited in claim 30, we
agree with and adopt the Examiner’s findings regarding Hofer as teaching or
suggesting these limitations. (Ans. 11, citing, inter alia, Hofer ¶ 18: “A
remote control FEB of this kind which can be hand-held by an operator is
temporarily fixed, as shown in FIG. 1, to a docking point AND of the device
GER, either only mechanically using a suitable retainer, or by means of a
magnetic mount which will be explained below.”) Appellant has not filed a
Reply Brief to further rebut the Examiner’s findings.
Appeal 2015-004688
Application 11/986,421

18
On this record, we find a preponderance of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness for claim 30. Because we are not persuaded the Examiner
erred, we sustain rejection G of representative claim 30, and grouped claim
36, also rejected under rejection G, which falls with claim 30. See Grouping
of Claims, supra.

Rejection G of Independent Claim 31 under 35 U.S.C. § 103(a)
To the extent Appellant contests the “hand-held transmitter . . . not
adapted to the type or configuration of the crane and identical for a plurality
of cranes differing in type or configuration” (Br. 16, 25), we note the first
clause of claim 31 is commensurate in scope to limitation L1 of claim 1, that
we have fully addressed above. Therefore, we agree with, and adopt, the
Examiner’s findings regarding rejection G of claim 31. We disagree with
Appellant’s contention that “Hofer does not cure the defects of
Bachman” (id. at 16) for the same reasons we addressed above regarding
claim 30.
On this record, we find a preponderance of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness for claim 31. Because we are not persuaded the Examiner
erred, we sustain rejection G of representative claim 31, and grouped claim
37, also rejected under rejection G, which falls with claim 31. See Grouping
of Claims, supra.

Appeal 2015-004688
Application 11/986,421

19
Rejection H of Independent Claim 32 under 35 U.S.C. § 103(a
We note independent claim 32 is the broadest claim on appeal.
Appellant contends: “Quigley does not teach or suggest assigning one or
more functions of a first radio remote control to a second radio remote
control if there is a connection between the control units.” (Br. 17.) We
note claim 32 is silent regarding the argued “assigning” (id.). Regarding the
contested two “wherein” clauses of claim 32, we find a preponderance of the
evidence supports the Examiner’s findings, e.g., “Quigley teaches wireless
control systems 202 and 302, and Quigley teaches that a mobile crane may
include a control system ‘capable of using both control systems 202 and 302
to both control subsystems 206 and send vehicle data to monitoring system
320.’ (col. 9, lines 9-12).” (Ans. 14.) Given this evidence (id.), we agree
with and adopt the Examiner’s findings, as articulated on pages 13–15 of the
Answer.
On this record, we find a preponderance of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness regarding claim 32. Because we are not persuaded the
Examiner erred, we sustain rejection H of representative claim 32, and
grouped claim 38, also rejected under rejection G, which falls with claim 32.
See Grouping of Claims, supra.

Remaining Claims rejected under rejections D–F
Appellant advances no separate arguments regarding the remaining
claims rejected under rejection D–F. Arguments not made are considered
waived. See 37 C.F.R. § 41.37(c)(1)(iv). Therefore, we sustain the
Examiner’s rejections D–F of claims 13, 15, and 22.
Appeal 2015-004688
Application 11/986,421

20

DECISION
We affirm the Examiner’s rejection of claims 1 and 19 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s rejections of claims 1, 2, 4, 5, and 7–38
under 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

Appeal 2015-004688
Application 11/986,421

1

BUSCH, Administrative Patent Judge, concurring:

The majority determines that Appellants have not apprised us of
Examiner error with respect to any of the pending rejections. I join the
panel’s decision in that regard. Specifically, with respect to the Examiner’s
rejection of claims 1 and 19 under 35 U.S.C. § 112, second paragraph, I
agree Appellants have not demonstrated error in the Examiner’s
determination that the claims are unclear. See In re Packard, 751 F.3d 1307,
1310, 1314 (Fed. Cir. 2014) (the Board did not err by holding a claim
indefinite as failing to comply with 35 U.S.C. § 112, second paragraph,
“when it contains words or phrases whose meaning is unclear.”); see also id.
at 1313 (“As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’
indicates, claims are required to be cast in clear--as opposed to ambiguous,
vague, indefinite--terms.”). I write separately to note that I disagree with the
majority’s holding that “claims 1 and 19 are amenable to two or more
plausible claim constructions” and the majority’s application of Miyazaki in
that regard.
Specifically, the majority finds the recited “one or more function keys
of a two-channel type and which include at least two actuating elements”
(the “disputed limitation”) is amenable to more than one plausible claim
construction. I respectfully disagree with my colleagues that the disputed
limitation is amenable to at least two plausible constructions. Accordingly, I
do not think the holding in Miyazaki—specifically, the holding that the
USPTO is justified in finding a claim that “is amenable to two or more
Appeal 2015-004688
Application 11/986,421

2
plausible constructions” unpatentable as indefinite—is applicable in this
case.
The majority correctly finds the scope of claims 1 and 19 “is not
limited to only two actuators,” but may include three or more actuating
elements. Majority Opinion 10. The fact that there may be more than two
actuators makes the claim no more amenable to multiple plausible
constructions than the fact that the claim recites “one or more function
keys.” The majority states that, in instances where there are more than two
actuating elements, the scope of the claims is unclear because “the possible
mappings between the claimed two-channels and the particular types of
actuators . . . are infinite, and therefore indefinite.” Id. (emphasis omitted).
However, even though such a mapping may be unclear, that does not result
in multiple plausible constructions; at most, it would merely render the one
broadest reasonable interpretation of the disputed limitation unclear. Any
potential reasonable construction of the disputed limitation (e.g., a “two-
channel type” function key with three or more actuating elements) is
narrower than, and thus subsumed by, the plain and reasonable, but broader,
construction (i.e., a “two-channel type” function key with two or more
actuating elements).
Nevertheless, as stated above, Appellants have not persuaded me of
error in the Examiner’s rejection of claims 1 and 19 as indefinite under
35 U.S.C. § 112, second paragraph. Thus, I would also sustain the
Examiner’s rejection of claims 1 and 19 as indefinite and, accordingly,
concur in the result reached by the majority.