Ex Parte Oberg

Patent Trial and Appeal Board

Jun 17, 2015

13151792 (P.T.A.B. Jun. 17, 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.
13/151,792 06/02/2011 James D. Oberg 20070757.DIV 5540
23595 7590 06/17/2015
NIKOLAI & MERSEREAU, P.A.
900 SECOND AVENUE SOUTH
SUITE 1550
MINNEAPOLIS, MN 55402
EXAMINER
TROUTMAN, MATTHEW D
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
06/17/2015 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 JAMES D. OBERG1
____________

Appeal 2013-002220
Application 13/151,792
Technology Center 3600
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.

GEIER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s rejection of claims 34, 35, and 37.2 App. Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies BAC Industries, Inc. as the real party in interest in this
Appeal. App. Br. 1.
2 The application at issue is a divisional application that the Appellant filed
with claims 34–39. App. Br. 1. Appellant canceled claims 36, 38, and 39
and those claims are not before us on this Appeal. Id. 2.
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Application 13/151,792

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THE CLAIMED SUBJECT MATTER

The claimed subject matter relates to “tools for the removal of plant
life from the ground.” Spec. ¶ 1. Claim 34 is the sole independent claim
and recites:
34. An attachment for a work vehicle to be used in removing
trees, along with its roots, from the earth, comprising:
(a) a pair of arms having first and second ends, the pair of
arms being pivotally joined to one another by a fastener pin at a
location intermediate said first and second ends and each arm
including an aperture formed through a thickness dimension
proximate its second end, a rectilinear portion extending from
the second end, beyond the location of the fastener pin, for a
distance generally equal to the distance between the second end
of the arm and the fastener pin and with an angularly offset
portion leading from the rectilinear portion to the first end, the
angularly offset portion including a tubular sleeve-affixed
thereto;
(b) a pair of linkages, each having an aperture formed
through a thickness dimension thereof proximate first and
second ends thereof;
(c) bolts passing through the apertures in the first ends of
the linkages and the apertures in the second ends of the arms for
pivotally coupling the first end of the pair of linkages
individually to the second end of the pair of arms and a tension
spring disposed between said bolts for normally urging the
tubular sleeves toward one another;
(d) a clevis member extending through the apertures in
the second ends of the linkages for pivotally coupling the
second ends of the pair of linkages to one another; and
(e) a pair of pinchers individually journaled for rotation
in the tubular sleeves in opposing relation to one another, the
pinchers each having a circular plate with a plurality of pointed
tines concentrically arranged and extending outward from a
face surface of said plate, the pair of pinchers adapted to
squeeze and penetrate into bark on the trunk of a tree or shrub
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Application 13/151,792

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placed therebetween initially due to the force exerted by the
spring and with increasing force when an increasing pulling
force is applied to the clevis member, whereby the arms are free
to align with the pulling force without disturbing the
engagement of the plurality of pointed tines with the bark of the
tree or shrub.

THE REJECTION ON APPEAL
The Examiner rejected claims 34, 35, and 37 as obvious under
35 U.S.C. § 103(a) over Barchoff (US 2,705,659; iss. April, 5, 1955) in view
of Grimes (US 5,294,162; iss. March 15, 1994) and Cveykus (US
2006/0202497; pub. Sept. 14, 2006).
ANALYSIS
Appellant argues that the Examiner erred in finding that Cveykus
discloses “a pair of pinchers journaled for rotation in a tubular sleeve affixed
to angularly offset portions of tong arms as called for in independent claim
34.” App. Br. 9. According to Appellant, Cveykus identifies two
components with reference number “152” and does not clarify which of
these is rotatable. Id. Appellant further asserts that given this ambiguity, it
is more likely that both components only rotate with respect to the unlabeled
bolt, which corresponds to the pivot pin 34 of Figure 5 of Cveykus. Id.
Appellant’s arguments do not persuade us that the Examiner erred.
As noted by the Examiner, Cveykus identifies the embodiment
depicted in Figures 25 and 26 as having “a rotatable claw attachment.”
Cveykus ¶¶ 30–31, 53; Ans. 9–10. Cveykus further specifies that this
“rotatable claw attachment 150 has rotatable claws 152 . . ..” Cveykus ¶ 53.
Although it is slightly confusing that Figure 25 has two components labeled
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Application 13/151,792

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with reference number 152, that Cveykus differentiates between the claw
attachment 150 and the rotatable claws 152 strongly suggests that the
rotation identified by Cveykus is not the rotation around the unlabeled bolt
in Figure 25. Id.; see also id. Fig. 26 (clearly delineating between claw
attachment 150 and claws 152); Ans. 9–10. In addition, as noted by the
Examiner, a comparison between the embodiment depicted in Figure 25 and
other embodiments confirms this interpretation. Ans. 10. Notably, the
embodiment of Figure 5 can pivot around bolt 34, but Cveykus does not
describe this as “rotatable.” Id.; Cveykus Fig. 5. For all these reasons, and
the additional reasons identified by the Examiner in its Answer, we agree
with the Examiner that one of skill in the art would have understood
Cveykus to have taught or disclosed rotatable claws that correspond to the
“pinchers journaled for rotation . . .” as recited in the claim. See Ans. 9–13.
The Appellant also states that the Examiner failed “to follow the
methodology dictated by the Supreme Court in Graham v. John Deere
Co.[383 U.S. 1 (1966)],” and “to resolve the level of ordinary skill in the
art.” App. Br. 8 (emphasis added). We find each of these arguments
unpersuasive in that they are general aspersions as to the form of the
Examiner’s analysis and, as such, they do not point to any particular error
made by the Examiner that constitutes reversible error.
We note that Appellant makes several arguments in its Reply Brief
that were not present in its Appeal Brief. See Reply Br. 3. Appellant did not
raise these arguments in the Appeal Brief, thereby allowing the Examiner an
opportunity to properly respond. See 37 C.F.R. § 41.41(b)(2) (2012) (“Any
argument raised in the reply brief which was not raised in the appeal brief, or
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Application 13/151,792

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is not responsive to an argument raised in the examiner’s answer . . . will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown.”). As we see no cause for making these arguments for the
first time in the Reply Brief, we do not consider them in our resolution of
this Appeal. See id; see also Ex Parte Borden, 93 USPQ2d 1473 (BPAI
2010) (informative); Ans. 9 (noting that Appellant’s argument “is entirely
centered on the assertion by Appellant that Cveykus does not teach rotatable
claws”).
Claims 35 and 37 stand or fall with claim 34. App. Br. 4. As such,
we affirm the Examiner’s rejection of claims 35 and 37 for the reasons stated
with respect to claim 34, supra.
CONCLUSION
We affirm the Examiner’s rejection of claims 34, 35, and 37 under
35 U.S.C. § 103(a).
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
pgc