Ex Parte Moyna

Board of Patent Appeals and Interferences

Feb 14, 2003

09283650 (B.P.A.I. Feb. 14, 2003)

1
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is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JOHN P. MOYNA
_______________
Appeal No. 2002-0894
Application No. 09/283,650
_______________
HEARD: Jan. 21, 2003
_______________
Before STAAB, MCQUADE, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 21-26, 28-31 and 33-40, all the claims
pending in the application.
Appellant’s invention pertains to an ejector device for
ejecting load material (claims 21, 22, 28-31 and 33-36), a method
Appeal No. 2002-0894
Application No. 09/283,650
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of ejecting load material (claims 23, 24 and 40), and a ground-
driven mobile work machine having an device for ejecting load
material (claims 25, 26 and 37-39). An understanding of the
invention can be derived from a reading of exemplary claim 21,
reproduced below (with emphasis added):
21. A load-carrying body for use with a mobile work
machine, comprising:
first and second opposed side walls;
a floor joining said side walls;
a movable ejector interposed between said side walls and
having a lower margin adjacent said floor and an upper margin,
said side walls, said floor, and said ejector together defining a
load cavity open at an end thereof;
an ejector actuator connected with said ejector for moving
said ejector toward said open end to eject load material from
said cavity through said open end, movement of said ejector
against said load material causing said ejector to tilt at its
upper margin toward said open end to press the lower margin of
said ejector against the floor of said body.
The single reference relied upon by the examiner in the
final rejection is:
Neyland 2,996,202 Aug. 15, 1961
Claims 21-26, 28-31 and 33-40 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
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Application No. 09/283,650
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which applicant regards as the invention” (answer, page 3).
Claims 21-26, 28-31 and 33-40 stand further rejected under
35 U.S.C. § 103(a) as being unpatentable over Neyland.
Reference is made to appellant’s main and reply briefs
(Paper Nos. 12 and 15) and to the final rejection and examiner’s
answer (Paper Nos. 8 and 13) for the respective positions of
appellant and the examiner regarding the merits of these
rejections.
The 35 U.S.C. § 112, second paragraph, rejection
We will not sustain the standing rejection of the appealed
claims under 35 U.S.C. § 112, second paragraph.
The examiner’s rationale for this rejection is set forth on
page 3 of the answer as follows:
. . . it is not understood how the ejector’s degree of
tilting is regulated because no means (guides, etc.) to
mount the ejector have been set forth; also, in line
with the above, it is not understood how the a mount
[sic, amount] of tilting is controlled in order that
the ejector not gauge the floor and stall the ejector.
Further, it is not understood how the connection
between the actuator and ejector is made - in other
words, is the connection a pivot, a weld or what?
Lastly, it is not understood if the ejector attachment
to the actuator is made at the ejector’s height mid-
point, at a point higher than a midpoint, etc. in order
to achieve the tilting.
Appeal No. 2002-0894
Application No. 09/283,650
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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. Moreover, in
setting forth the claimed subject matter, there is nothing
intrinsically wrong with defining something in a claim by what it
does rather than by what it is. In re Hallman, 655 F.2d 212,
215, 210 USPQ 609, 611 (CCPA 1981); In re Swinehart, 439 F.2d
210, 213, 169 USPQ 226, 228 (CCPA 1971).
The examiner’s reasons for calling into question the
appealed claims’ compliance with the second paragraph of 35
U.S.C. § 112, namely, that the claims do not set forth the
particulars of the guides for regulating the tilting of the
ejector, or how the ejector is connected to the actuator, or the
attachment point of the actuator relative to the ejector’s
Appeal No. 2002-0894
Application No. 09/283,650
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height, do not indicate that the claims are indefinite in scope,
but only that they are broad. However, this is not a proper
basis for rejecting claims under § 112, second paragraph, because
the breadth of a claim is not to be equated with indefiniteness.
In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971).
The 35 U.S.C. § 103(a) rejection
We likewise will not sustain the rejection of the appealed
claims under 35 U.S.C. § 103(a).
In rejecting the appealed claims as being unpatentable over
Neyland, the examiner makes findings with respect to the load
material ejector system of Neyland and then concludes that:
As a result of the downward direction vector created by
the extension of the hydraulic cylinder [60] at point
61 on the ejector and the manufacturing clearances
created by the rollers [40, 41] in the guides [33, 34],
the fulcrum created by the lower rollers on the ejector
[42] and the greater compaction of the material near
the floor of the body, it is obvious that the ejector
is tilted forwardly in the direction of its movement in
the claimed manner. [Answer, pages 3-4, reference
numerals added.]
At the outset, we observe that the examiner has not
specifically pointed out any difference between Neyland and the
claimed subject matter. In this regard, the examiner’s use of
the word “obvious” in the explanation supra of the rejection
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Application No. 09/283,650
1Independent claims 23 and 25 contain similar language.
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appears to reflect the examiner’s view that the plate 42 of
Neyland will inherently function in the manner called for in the
claims, i.e., to tilt forwardly “in the claimed manner” as it
moves to eject load material. It is our opinion, however, that
the examiner’s position lacks any reasonable support in the
Neyland reference and is based on speculation and conjecture.
In the first place, the independent claims on appeal here,
namely claims 21, 23 and 25, do not merely call for the ejector
to tilt at its upper margin toward the open end of the load
cavity as it ejects load material, but also that said tilting
action results in the ejector moving “to press the lower margin
of said ejector against the floor of said body” (claims 21, last
line).1 While it is certainly possible that the plate 42 of
Neyland might tilt forwardly as it moves to eject load material
from the compartment, we note that it is much more problematic
that any such tilting will result in the lower margin of the
plate being pressed against the floor of the compartment, as also
required by the claims. This is particularly so in that
Appeal No. 2002-0894
Application No. 09/283,650
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Neyland’s plate 42 is dimensioned to maintain a clearance,
clearly shown in Figure 6, with the inner diameter of the body 15
of the compartment as the plate move along the compartment
(column 4, lines 51-55), and in that the compartment floor is
fitted with wear members 16 and 17 that cooperate with the wheels
47, 48 on the lower margins of the plate 42 to maintain this
clearance throughout the plate’s movement.
It is well settled that inherency may not be established by
probabilities and possibilities, but must instead be “the natural
result flowing from the operation as taught.” See In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). In the present
case, the disclosure of Neyland does not provide an adequate
factual basis to establish that the natural result flowing from
following the teachings of that reference would be an ejector
blade that tilts at its upper margins toward the open end of the
compartment to press the lower margin of the blade against the
floor of the compartment as load material is ejected, as claimed
by appellants.
It follows from the above that the rejection of the appealed
claims as being unpatentable over Neyland cannot be sustained.
Appeal No. 2002-0894
Application No. 09/283,650
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Summary
The rejections of the appealed claims under 35 U.S.C. § 112,
second paragraph, and 35 U.S.C. § 103(a) are reversed.
The decision of the examiner finally rejecting the appealed
claims is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
ljs/vsh
Appeal No. 2002-0894
Application No. 09/283,650
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John J. Cheek
Caterpillar Inc.
Intellectual Property Dept. AB6490
100 N.E. Adams Street
Peoria, IL 61629-6490