Ex Parte Pech et al

Patent Trials and Appeals Board

Jun 12, 2019

13712774 - (D) (P.T.A.B. Jun. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/712,774 12/12/2012
150003 7590
Ramey & Schwaller, LLP
5020 Montrose Blvd.
Suite 750
Houston, TX 77006
06/14/2019
FIRST NAMED INVENTOR
David J. Pech
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3380-1379/20137.000SCNUSO 8977
EXAMINER
ADAMS, NATHANIEL L
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
06/14/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@rameyfirm.com
wramey@rameyfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. PECH and JOSEPH R. RUCINSKI
Appeal2018-001392
Application 13/712,774
Technology Center 3600
Before FREDERICK C. LANEY, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 8-10, 12, 14, 26, 32-35, and 37--42. We have jurisdiction under
35 U.S.C. § 6(b). A hearing was held on May 28, 2019.
We reverse.
Appeal2018-001392
Application 13/712,774
CLAIMED SUBJECT MATTER
The claims are directed to a lift crane with a moveable counterweight.
Claim 1, reproduced below, is the sole independent claim:
1. A mobile lift crane adapted to be configured in both a first
configuration and a second configuration, the mobile lift crane
compnsmg:
a) a carbody;
b) moveable ground engaging members mounted on the
carbody allowing the crane to move over the ground;
c) a rotating bed rotatably connected to the carbody about
an axis of rotation; and
d) a boom pivotally mounted on the rotating bed and
including a hoist line for handling a load;
e) a counterweight support frame connected to the rotating
bed·
' f) a moveable counterweight unit;
g) wherein in the first configuration,
i. a first mast is connected to the boom;
ii. a second mast pivotally is connected to the
rotating bed, the second mast being connected to the first
mast during at least a first pick, move, and set operation;
iii. a moveable counterweight support beam is
coupled to the counterweight support frame and
configured to move relative to the counterweight support
frame while moving toward and away from the boom for
use during the at least first pick, move, and set operation;
and
h) wherein in the second configuration,
i. the first mast is absent from the mobile lift crane;
and
ii. the mobile lift crane is configured such that it can
perform at least a second pick, move, and set operation
where the first mast is absent and the second mast is
connected to the boom and the second mast can pivot in
order to change the angle of the boom; and
i) wherein in the first and second configuration, the
moveable counterweight unit is never supported by the ground
other than indirectly by the moveable ground engaging members
2
Appeal2018-001392
Application 13/712,774
on the carbody during the at least first pick, move, and set
operation and the at least second pick, move, and set operation;
m) wherein the mobile crane is adapted to be configured
according to the first and the second configuration by at least:
the moveable counterweight unit adapted to (i)
suspend below the rotating bed such that the moveable
counterweight unit is operable to support counterweights
positioned on opposing sides of the rotating bed and (ii)
couple alternatively to the moveable counterweight
support beam in the first configuration and to the
counterweight support frame in the second configuration;
and
the counterweight support frame adapted to couple
alternatively to the moveable counterweight support beam
and the moveable counterweight unit such that the
moveable counterweight support beam is operable to
move toward and away from the boom in the first
configuration and the moveable counterweight unit is
operable to move toward and away from the boom in the
second configuration.
REFERENCES
The prior art relied upon by the Examiner in the rejection is:
Yahiaoui
Kretschmer
us 6,098,823
US 6,568,547 Bl
REJECTIONS
Aug. 8,2000
May 27, 2003
Claims 1, 2, 8-10, 12, 14, 26, 32-35, and 37--42 are rejected under 35
U.S.C. § 112, second paragraph, as being indefinite.
Claims 1, 2, 8-10, 14, 26, 32-35, and 37--42 are rejected under 35
U.S.C. § 102(b) as being anticipated by Kretschmer.
Claim 12 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Kretschmer and Y ahiaoui.
3
Appeal2018-001392
Application 13/712,774
OPINION
35 u.s.c. § 112
The Examiner rejects claim 1 as being indefinite, stating that "[t]he
requirement of being adapted to be configured in first and second
configurations is vague and ambiguous." Final Act. 2. The Examiner
further explains that "[i]t is not clear what features a mobile lift crane would
have to have in order to infringe this claim." Id. The Examiner further notes
that the first mast and the movable counterweight support beam are only
required in the first configuration while the first mast is claimed as absent in
the second configuration. Id. The Examiner asks whether either element is
required by claim 1. Id.
Appellants argue that the term "adapted to" is not vague and is
generally accepted by the USPTO. Appeal Br. 8. Appellants cite to case
law that defines "adapted to" as "mean[ing] designed or constructed to be
used as." Id. (citing In re Giannelli, 739 F.3d 1375, 1378 (Fed. Cir. 2014)).
We agree with Appellants that the "adapted to" language is not indefinite.
However, the Examiner's position is that "the claim was not rejected
solely for using the term 'adapted to,' but rather because the entire claim, as
a whole, is vague and ambiguous." Ans. 3. Though Appellants state that
they "explain above ... which features are necessary and unnecessary in
each of the first configuration and the second configuration" (Appeal Br.
10), Appellants' briefing does not answer the Examiner's question of
whether claim 1 requires a first mast or movable counterweight support
beam (Ans. 3--4; Final Act. 2).
We determine that claim 1 is clear on its face in that it requires the
crane to be able to interact with the first mast, the second mast, and the
4
Appeal2018-001392
Application 13/712,774
movable counterweight support beam in the manner laid out 1. However, as
the claim does not positively recite these elements (i.e., they are not claimed
as part of the mobile lift crane), they are not required by the scope of the
claim. In other words, in order to infringe claim 1, it is required that the
mobile lift crane be adapted to be configured in both a first configuration
and a second configuration as laid out in the claim, but it is not required to
include a first mast, a second mast, or a movable counterweight support
beam. 2
We further determine that "adapted to be configured" requires certain
structure necessary to attain the various configurations in claim elements
"g" "h" "i" and "m" For example element "m" identifies specific ' ' ' . '
features required by the "moveable counterweight unit" and the
"counterweight support frame" which are both positively claimed elements
of the mobile crane.
For this reason, we do not sustain the Examiner's rejection of claim 1
or its dependents for being indefinite.
35 u.s.c. § 102(b)
The Examiner finds that Kretschmer's mobile crane of Figure 7
teaches all of the elements a-fas listed in claim 1. Final Act. 3--4. The
1 E.g.: "A mobile lift crane adapted to be configured in both a first
configuration and a second configuration ... wherein in the first
configuration."
2 We note that as the first mast, the second mast, and the movable
counterweight support beam are not positively recited in claim 1, the
dependent claims solely addressing these features (see, e.g., but not limited
to, claims 9 and 39) may not further limit the subject matter of the claim
from which they depend as required by 35 U.S.C. § 112, fourth paragraph.
5
Appeal2018-001392
Application 13/712,774
Examiner then determines that the claimed first and second configurations
are functional limitations, and states "Kretschmer is adapted to be ( capable
of being) configured in both (e.g., by an operator, engineer, etc.) a first
configuration and a second configuration" as claimed. Id. at 4. The
Examiner further explains "that the structure shown in the embodiment [ of
Figure 7] could be used to assemble a mobile lift crane in the first [sic
second] configuration of claim 1, which would be a situation akin to figure
4." Id. at 9. Further, claim 1 requires "[n]ot that the crane is configured in
any type of configuration, but that it could be so configured." Id.
Although "[a] patent applicant is free to recite features of an apparatus
either structurally or functionally ... , choosing to define an element
functionally ... carries with it a risk." In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). This risk is that Appellants bear the burden to prove that
the prior art does not possess the functional characteristic, once the
Examiner has shown a sound basis for believing the claimed structure to be
the same as the prior art structure. See In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990).
In Schreiber, the claims were directed to "[a] dispensing top for
passing only several kernels of a popped popcorn at a time from an open-
ended container filled with popped popcorn." In re Schreiber, 128 F.3d at
14 7 5. The examiner rejected the claims as anticipated over a prior art patent
directed to a spout for dispensing oil. Id. Though the prior art reference did
not teach using the spout for dispensing popcorn, the court found that "the
absence of a disclosure relating to function does not defeat the Board's
finding of anticipation" where there is no identified difference in structure.
Id. at 1477.
6
Appeal2018-001392
Application 13/712,774
Appellants first argue incorrectly that "[t]he Final Rejection refers to
[Kretschmer] Figure 4 as disclosing the claimed second configuration."
Appeal Br. 11. As noted above and stated in the Final Office Action, the
Examiner relies on Kretschmer Figure 7 and determines that this
embodiment is capable of configuring in the manner claimed which is "akin
to figure 4." Final Act. 9; see also Ans. 5---6. Thus, Appellants' argument
concerning Kretschmer Figure 4 is not directed to the rejection as set forth in
the Final Office Action. See 37 C.F.R. § 4I.37(c)(l)(iv) (Arguments
presented in an appeal must address the grounds of rejection set forth by the
Examiner.).
Appellants then argue that "Kretschmer also fails to disclose that [] in
the first configuration that 'the moveable counterweight unit is never
supported by the ground other than indirectly by the moveable ground
engaging members on the carbody during the at least first pick, move, and
set operation and the at least second pick, move, and set operation"' as
required by claim 1. Appeal Br. 13. Appellants further point to the
declaration of Fred P. Smith ("Smith Deel.") in support of their position that
"the counterweights are supported by the ground in Kretschmer. This is
shown in Figure 3 and is necessary to avoid backward tipping of the crane
during a pick, move, and set operation." Id. (citing Smith Deel. ,r 28); see
also Smith Deel. ,r 29.
The Examiner responds that "Kretschmer figure 7 is capable of being
set up without all of the counterweights shown, or with extremely light
counterweights." Ans. 7. The Examiner provides no support for this
position. Further, the Examiner does not address the teachings of
Kretschmer discussed in the Smith Declaration which are consistent with
7
Appeal2018-001392
Application 13/712,774
Appellants' position. Thus, we do not sustain the anticipation rejection of
claim 1 for this reason.
We further note that in general, because of the manner in which the
rejection is drafted3, it is unclear whether the Examiner has found that
Kretschmer teaches the structure necessary to perform all of the claimed
functions, or whether the Examiner is saying that one of skill in the art could
modify Kretschmer in a manner such that it could then perform the claimed
functions.
As discussed above, only after the Examiner has shown a sound basis
for believing the claimed structure to be the same as the prior art structure
does the burden shift to the Appellants to prove that the prior art does not
possess the structure required by the functional characteristic. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). To the extent that the
Examiner's rejection is premised on the idea that Kretschmer could be
modified by one of skill in the art to achieve the claimed invention, this is an
incorrect application of the law of anticipation.
For these reasons, we do not sustain the rejection of claim 1 or claims
2, 8-10, 14, 26, 32-35, and 37--42 which depend therefrom.
35 U.S.C. § 103(a)
Claim 12 depends from claim 1 and is not separately argued by
Appellants. See Appeal Br. 16. The rejection of claim 12 does not address
the deficiencies in the rejection of claim 1 and therefore cannot be sustained.
3 For example, statements such as "Kretschmer is adapted to be (capable of
being) configured in both (e.g. by an operator, engineer, etc.)" imply
modification by one of skill in the art, rather than a structure capable of
performing the claimed functions. Final Act. 4.
8
Appeal2018-001392
Application 13/712,774
DECISION
The Examiner's rejections of claims 1, 2, 8-10, 12, 14, 26, 32-35, and
3 7--4 2 are reversed.
REVERSED
9