Ex Parte Pederson

Patent Trial and Appeal Board

Feb 28, 2017

13683929 (P.T.A.B. Feb. 28, 2017)

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.
13/683,929 11/21/2012 Les Pederson P001 (80377.0001) 1254
98783 7590 03/02/2017
Perkins foie T T P - DF.N freneral
EXAMINER
P.O. Box 1247 LUTZ, JESSICA H
Seattle, WA 98111-1247
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
patentprocurement @perkinscoie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LES PEDERSON
Appeal 2015-002208
Application 13/683,9291
Technology Center 3600
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Les Pederson (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection under 35 U.S.C. § 103(a) of claims 1—172 as
unpatentable overMensch ’349 (US 4,819,349, iss. Apr. 11, 1989) and
1 According to Appellant, the real party in interest is USA TIRE
MANAGEMENT SYSTEMS, INC. Appeal Br. 2.
2 Although the Examiner states that the rejection of claims 1—16 is
maintained in the Examiner’s Answer, the originally rejection includes claim
17 and the Examiner does not withdraw the rejection of claim 17 as
unpatentable over Mensch ’349 and Weagley; therefore, we understand
claim 17 is included in this rejection. See Final Act. 2, 5; Ans. 2; Appeal Br.
11; Reply Br. 2.
Appeal 2015-002208
Application 13/683,929
Weagley (US 5,724,755, iss. Mar. 10, 1998); and of claims 1—6 and 83 as
unpatentable over Mensch ’349 and Mensch ’985 (US 5,075,985, iss. Dec.
31, 1991).4 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 9, and 14 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A scraper attachment for a mobile vehicle, comprising:
a resiliently deformable blade, having a top wall with a
rearward peripheral edge and a generally vertical blade wall
extending downwardly from the rearward peripheral edge of the
top wall; and
a mounting bracket operatively coupled with the blade, the
mounting bracket having a pair of horizontally spaced-apart
mounting jaws that extend rearwardly from the mounting bracket
and the blade;
each of the mounting jaws including first and second jaw
members that have lengths extending from the mounting bracket
to free distal end portions; the jaw members positioned to be
spaced-apart from one another to define an open receiving gap
3 Appellant does not object to claim 8 being added to this rejection in the
Answer. See Ans. 2; Reply Br. 2.
4 The rejection of claims 9—11, 14, 16, and 17 as unpatentable over Mensch
’349 and Mensch ’985 is withdrawn. See Ans. 2. The Examiner further
states that the rejection of claims 13 and 15 as unpatentable over Mensch
’349 and Mensch ’985 is also withdrawn, and the Examiner includes claim 8
under a “maintained” rejection as unpatentable over Mensch ’349 and
Mensch ’985. However, claims 8, 13, and 15 are rejected under Mensch
’349, Mensch ’985, and Holmes (US 6,493,967 B2, iss. Dec. 17, 2002) in
the Final Office Action. Final Act. 7. Thus, we understand (consistent with
Appellant) that the Examiner has withdrawn the rejection of claims 8, 13,
and 15 under Mensch ’349, Mensch ’985, and Holmes. See Ans. 2; Reply
Br. 2.
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Application 13/683,929
between the first and second jaw members; the receiving gap
extending along the length of the jaw members; the mounting
bracket being positioned so that the receiving gap opens away
from the blade wall, along a plane that is vertically spaced from
and below a plane on which the top wall of the blade resides.
ANALYSIS
Obviousness Claims 1—17 over Mensch ’349 and Weagley
Claims 1—4 and 6—17
Appellant argues claims 1—17 together in contesting the rejection of
these claims as obvious over Mensch ’349 and Weagley. See Appeal Br.
11—16; Reply Br. 7—9. We select claim 1 as the representative claim for this
group, and the remaining claims stand or fall with claim 1. See 37 C.F.R. §
41,37(c)(l)(iv). Appellant also presents a separate argument for claim 5
(Appeal Br. 15—16), which we address infra.
Regarding claim 1, the Examiner finds that Mensch ’349 teaches a
scrapper attachment for a mobile vehicle, including, inter alia, a “bucket
attachment to a rubber tire blade by use of a top plate, which allows a sturdy
surface for the attachment to be mounted,” but “does not teach [that] the
attachment comprises jaws.” Final Act. 2. However, the Examiner also
finds that
Weagley teaches a [scrapper] blade attached to a bucket, the
scraper blade including a rear plate comprising jaws with ... a
gap running the length of the jaws; the mounting bracket being
positioned so that the receiving gap opens away from the blade
wall, along a plane that is vertically spaced from and below a
plane on which the top wall of the blade resides.
Id. at 2—3 (citing Weagley, Fig. 4; channel 11 and posts 18/19).
Based on the foregoing factual analysis, the Examiner reasons that it
would have been obvious
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Application 13/683,929
to substitute the clamping bucket attachment mechanism fixed to
the mounting plate of Mensch [’349] for a rear plate with jaws as
taught by Weagley, and therefore connect the rear plate to the top
plate, as an alternate embodiment for removably attaching a
scraper blade to the lower wall of a bucket.
Id. at 3. (emphasis added).
In taking issue with the analysis and conclusions presented in the
Final Action, Appellant contends that “[t]he combination of the attachment
jaws discussed in Weagley with the mounting bracket and resiliently
deformable blade discussed in Mensch is improper,” because “such a
combination would frustrate the function and purpose of either the Mensch
device or the Weagley device.” Appeal Br. 11. In particular, Appellant
argues that “the physical engagement between the bucket and both of the
bracket and rubber blade, depicted [] in Figure 9 of the Mensch ’349
reference, is a crucial aspect of the Mensch device and its operation.” Id. at
12. (Emphasis added). Still further, Appellant contends that “Weagley
teaches three pairs of spaced-apart jaw members that simultaneously receive
the bottom wall of the bucket when mounting the scraper attachment,” but
that “the Weagley jaws do not permit the engagement between the bucket
and the rubber blade, as is crucial to the function of the Mensch device.” Id.
at 13 (citing Weagley, Fig. 4).
In response, the Examiner first explains that “Mensch teaches use of a
screw (80) connected to a support member (62) to rigidly attach a scraper to
a bucket,” so that “[t]he ‘crucial aspect’ of the Mensch device appears to be
attaching a scraper blade to a vehicle using a rigid, yet detachable,
mechanism.” Ans. 4. The Examiner also points out that “Weagley teaches a
‘quick and simple’ mounting technique (col. 1, lines 17-18) using an
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Application 13/683,929
alternate known rigid attachment of a scraper to a bucket by the use of a
reinforcement mounting bracket (reinforcement channel 11) and jaws (slots
20),” and reasons that “[substituting one rigid attachment mechanism for
another is an exemplary rationale of simple substitution of one known
element for another to obtain predictable results.” Id. We agree.
We also find Appellant’s contention to be unpersuasive because it
appears to rely upon the bodily incorporation of Weagley into Mensch ’349,
which is not the standard for an obviousness rejection. Thus, we agree with
the Examiner that the use of a portion of Weagley’s teaching is appropriate
in that all of the features of a secondary reference need not be bodily
incorporated into the primary reference. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). Based on the foregoing, the Examiner determines that
[sjince Mensch teaches the claimed device other than the jaw
attachment mechanism, and the bracket and jaws attachment
mechanism were known in the art as shown by Weagley, it would
have been obvious ... to substitute the clamp attachment of
Mensch for the back plate and jaws of Weagley to yield the
predictable result of attachment of a scraper blade to a bucket.
Ans. 4; see also id. at 5. Again we agree, noting that “[cjlaims may be
obvious in view of a combination of references, even if the features of one
reference cannot be substituted physically into the structure of the other
reference.” Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir.
1983) (citation omitted). Furthermore, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
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Appellant rephrases the same contention in the next argument stating
that “the combination of the two technologies is not possible without a
complete redesign of the mounting brackets to either device,” because “[t]he
Mensch device has a top plate but no plate extending vertically along the
blade wall. . . with which the rearwardly facing jaws may be coupled,” and
Weagley “teaches a rear vertical wall but no top, horizontal wall,” so that
“the combination thereof would frustrate the principle [of] operation of both
the Mensch and Weagley devices.” Appeal Br. 13—14. However, “it is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983) (citation omitted).
Furthermore, Appellant’s contention is unavailing as it not
commensurate with the scope of claim 1 which, as the Examiner explains,
“[does] not claim a top wall of the mounting bracket,” but merely recites
“‘the mounting bracket having a pair of horizontally spaced-apart mounting
jaws that extend rearward from the mounting bracket and the blade’, which
is taught by the substitution of the clamping attachment of Mensch for the
back bracket and jaws taught by Weagley.” Ans. 4. As we are instructed by
our reviewing court, “limitations are not to be read into the claims from the
[Specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)); see also In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
The Examiner also explains “the test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references,” but whether
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“what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” Id. at 5. The Examiner points out that
because “Mensch teaches, in col. 2, lines 61-66, the top wall (mounting
assembly 32) is used to provide support to the scraper to prevent accidental
lateral movement,” that “it would have been obvious ... to attach the back
bracket (11) and jaws (20) of Weagley to the top wall (32) of Mensch in
order to stabilize the rubber blade and prevent lateral movement.” Id. at 4—
5. Again, we agree.
Appellant next contends that
[t]he supposed “motivation to combine” (alternate embodiment
for removably attaching a scraper blade to the bucket) is actually
nothing more than a shared advantage and fails to provide any
evidence that the shared advantage actually might have
motivated one skilled in the art to combine the prior art and arrive
at the claimed invention.
Appeal Br. 14. Appellant reasons that “simply identifying a shared
advantage is useless as a means of distinguishing obvious from nonobvious
combinations,” contending that “[i]f the shared advantage approach cannot
separate obvious from nonobvious, it is not a test at all.”5 Id. at 14—15.
However, we agree with the Examiner that “the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d at 425.
Appellant also asserts that “[wjhile one could argue that the Office’s
shared advantage analysis in this matter may loosely quality as ‘articulated
reasoning’ under In re Kahn, it cannot be said to have the requisite rational
5We are unable to find where the Examiner based the rejection on a “shared
advantage” between Mensch ’349 and Weagley.
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underpinning because it cannot differentiate between obvious and
nonobvious combinations,” contending that “[i]t is irrational to employ an
obviousness analysis that cannot succeed in distinguishing obvious from
nonobvious combinations.” Appeal Br. 15. Furthermore, Appellant asserts
that “it is not only legally insufficient for the Office to support obviousness
rejections by simply identifying a benefit or advantage that the suggested
combination would share with the claimed invention, it amounts to logical
error as well, thus failing to meet KSR’s ‘rational underpinning’
requirement.” Id.
However, we agree with the Examiner that
[sjince Mensch teaches the claimed device other than the
attachment mechanism, and the back bracket and jaws were
known in the art as shown by Weagley, it would have been
obvious ... to substitute the clamp attachment of Mensch for the
back plate and jaws of Weagley to yield the predictable result of
attachment of a scraper blade to a bucket.
Ans. 5.
The Examiner’s findings and conclusions are supported by the record
and based on rational underpinnings. See id.', see also id. at 4; Final Act. 2—
3. Appellant does not provide persuasive evidence or argument apprising us
of error in the Examiner’s findings or conclusions. Moreover, Appellant
does not provide any evidence or argument sufficient to show that the
proposed modification would have been beyond the level of ordinary skill in
the art. Neither does Appellant provide any persuasive evidence or
argument sufficient to show that the proposed modification would have been
more than a predictable use of the prior art elements according to their
established functions. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
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predictable results.” KSR, 550 U.S. at 416. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id. at
417.
In the Reply Brief, for the first time, Appellant argues that (1) “[t]he
bracket in Mensch ’349 and that of the Weagley system teach away from
one another because they are for use in coupling different types of scrapers
to mobile platforms” and (2) “the suggested combination [of Mensch ’349
and Weagley] is a product of improper hindsight.” See Reply Br. 8—9.
However, Appellant did not present these arguments in the Appeal Brief,
and they are not responsive to any argument newly raised in the Examiner’s
Answer. Thus, Appellant did not set forth these arguments in a timely
manner prior to filing of the Reply Brief to permit the Examiner an
opportunity to fully respond. See 37 C.F.R. § 41.41(b)(2) (2014) (“Any
argument raised in the reply brief which was not raised in the appeal brief, or
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.”).
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of independent claim 1 as unpatentable over Mensch ’349 and
Weagley. We further sustain the rejection of claims 2-4 and 6—17, which
fall with claim 1.
Claim 5
Appellant additionally argues that “[cjlaim 5 recites a bracket having
a top wall and a back wall that depends down from the top wall,” and that
“Mensch ‘349 has a top wall but no back wall while Weagley teaches a back
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wall with no top wall,” so that “the two references teach away from one
another.” Appeal Br. 15—16. Appellant concludes that “[a]ny attempt to
assert a motivation to combine the two could not identify a ‘reason that
would have prompted a person of ordinary skill in the relevant field to
combine the [prior art] elements in the manner claimed.’” Id. at 16.
Appellant’s arguments are not persuasive because Appellant fails to apprise
us how Mensch ’349 and Weagley “teach away from one another.” Id. at
15—16; see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).6 Thus,
Appellant’s additional arguments amount to nothing more than a naked
assertion of patentability. See In reLovin, 652 F. 3d 1349, 1357 (Fed. Cir.
2011).
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of dependent claim 5 as unpatentable over Mensch ’349 and
Weagley.
Obviousness of Claims 1—6 and 8 over Mensch ’349 and Mensch ’985
We affirmed the rejection of claims 1—17 under 35 U.S.C. § 103(a) as
unpatentable over Mensch ’349 and Weagley. Consequently, we find it
unnecessary to reach a decision about the cumulative rejection of claims 1—6
and 8 under 35 U.S.C § 103(a) over Mensch ’349 and Mensch ’985. See 37
6 We note that the Examiner finds that “Mensch as modified teaches the
scraper attachment of [claim 1 ] wherein the mounting bracket includes a top
wall (flat braces of base mounting assembly 32), having a rearward edge
portion, and a rear wall that depends from the rearward edge portion of
the top wall (as modified in claim 1).” Final Act. 3 (emphasis added).
Appellant does not apprise us of Examiner error. See Appeal Br. 15—16; see
also Reply Br. 9.
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C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a claim on any of
the grounds specified constitutes a general affirmance of the decision of the
examiner on that claim . . . .”).
DECISION
We AFFIRM the Examiner’s rejection of claims 1—17 over Mensch
’349 and Weagley. We do not reach the additional issues raised by
Appellant regarding the cumulative rejection of claims 1—6 and 8 under 35
U.S.C § 103(a) over Mensch ’349 and Mensch ’985.
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)(l)(iv).
AFFIRMED
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