Ex Parte Prentice

Board of Patent Appeals and Interferences

Jan 27, 2011

11000783 (B.P.A.I. Jan. 27, 2011)

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.
11/000,783 11/30/2004 Glenn Prentice 0041.0199 4560
152 7590 01/28/2011
CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
601 SW Second Avenue
Suite 1600
PORTLAND, OR 97204-3157
EXAMINER
LOWE, MICHAEL S
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
01/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CASCADE CORPORATION
____________________

Appeal 2009-015216
Application 11/000,783
Technology Center 3600
____________________

Before RICHARD E. SCHAFER, JAMESON LEE, and
RICHARD TORCZON, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-015216
Application 11/000,783

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Cascade
Corporation (“Cascade”), under 35 U.S.C. § 134(a) from a final rejection of
claims 33-43. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Reference Relied on by the Examiner
Niiya JP 59-172399 September 29, 1984

The Rejections on Appeal
The Examiner rejected claims 33-43 under 35 U.S.C. § 112, second
paragraph, as indefinite.
The Examiner rejected claims 33-43 under 35 U.S.C. § 102(b) as
anticipated by Niiya.

The Invention
The invention relates to a fork positioner for moving load-lifting forks
of a lift truck carriage toward or away from one another. (Spec. 1: ¶ 0001.)
The fork positioner forms a unit that is separate and may be attached to
existing lift truck carriages. (Id.) Claim 33 is reproduced below (App. Br.
21 Claims App’x.):
33. A fork positioner mountable on a load-lifting carriage
having, prior to mounting of said fork positioner on said carriage, an
elongate upper transverse fork-supporting member extending
longitudinally in a transverse direction and capable of operably
vertically supporting a transversely-movable pair of load lifting forks,
and a lower transverse member below said upper transverse fork-
supporting member, said fork positioner comprising:

Appeal 2009-015216
Application 11/000,783

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(a) a pair of elongate hydraulic piston and cylinder assemblies
having respective longitudinal axes, said piston and cylinder
assemblies being interconnectable, without any mounting of said
piston and cylinder assemblies on said carriage, as an elongate,
substantially rigid unit with said axes in a substantially parallel,
longitudinally overlapping relationship, said rigid unit being operably
mountable on said carriage in an inserted position with said piston and
cylinder assemblies located vertically between said upper transverse
fork-supporting member and said lower transverse member of said
carriage and with said respective longitudinal axes extending
substantially in said transverse direction in a vertically spaced
relationship; and

(b) a pair of fork-positioning guide members, each having a
fork engagement surface, each operably mountable on said rigid unit
so as to be movable transversely by a respective one of said pair of
piston and cylinder assemblies between respective fork-positioning
locations when said rigid unit is mounted in said inserted position.
B. ISSUES
1. Were claims 33-43 properly rejected as indefinite?
2. Does Niiya disclose a pair of piston and cylinder assemblies
that are interconnectable or interconnected with one another to form a
substantially rigid unit without any mounting of the assemblies on a
carriage?
C. PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990).
The initial burden is on the examiner to establish a prima facie basis
to reject the claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appeal 2009-015216
Application 11/000,783

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D. FACTS AND ANALYSIS
The Indefiniteness Rejection
The Examiner rejected claims 33-43 under 35 U.S.C. § 112, second
paragraph, as indefinite. Claims 33 and 39 are the independent claims and
are similar in scope. Each claim is drawn to a fork positioner which includes
a load-lifting carriage and a pair of piston and cylinder assemblies. The
claims include the feature that the piston and cylinder assemblies are either
“interconnectable” (claim 33) or “interconnected” (claim 39) to form a
substantially rigid unit “without any mounting of said piston and cylinder
assemblies on said carriage.” (App. Br. 21, 23 Claims App’x.) Each claim
also recites that the rigid unit is “operably mountable on said carriage.” (Id.)
According to the Examiner, claims 33 and 39 are indefinite because
(Ans. 5:4-8):
[T]hey clearly state “without any mounting of said piston and cylinder
assemblies on the carriage” and later “said rigid unit (which comprises
the piston and cylinder assembly/assemblies) operably mountable on
said carriage”. So the claims state both that there is not to be the
capability of mounting and there is to be capability of mounting which
is contradictory.

The Examiner’s assessment of the requirements of claims 33 and 39 is
incorrect. The claims do not require that the piston and cylinder assemblies
be simultaneously capable of and incapable of mounting to the carriage.
Rather, the claims recite that the piston and cylinder assembly pairs are
connected to one another to form a rigid unit without necessitating that the
unit first be mounted onto the load-lifting carriage. Once assembled as a
rigid unit, that unit is then “operably mountable” onto the carriage. The two
requirements are not contradictory. That the piston and cylinder assemblies
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Application 11/000,783

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are connectable or connected to form a rigid unit apart from any mounting to
the carriage does not mean that the rigid unit, once formed, cannot then be
mounted to the carriage.
We do not sustain the Examiner’s rejection of claims 33-43 under 35
U.S.C. § 112, second paragraph.
The Anticipation Rejection
The Examiner rejected claims 33-43 as anticipated by Niiya. Each of
independent claims 33 and 39 requires a pair of piston and cylinder
assemblies that are either interconnectable or interconnected to one another
without any mounting of the assemblies on a carriage. The Examiner finds
that Niiya discloses a fork positioner with its elements 1 and 2 forming a
carriage and its elements 5 and 6 forming a pair of piston and cylinder
assemblies. (Ans. 4:1-14.) The Examiner submits that Niiya’s piston and
cylinder assemblies 5 and 6 form a substantially rigid unit before being
mounted to its carriage 1, 2. (Id.) As support for that position, the Examiner
points to Niiya’s Figures 1 and 2. (Id. at 5:19-6:6.)

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Application 11/000,783

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Niiya’s Figures 1 and 2 are reproduced below:

The figures above depict an exploded view (Fig. 2) and an assembled
view (Fig. 1) of a fork shifting apparatus for a fork lift

Element 1 is disclosed as a carriage and element 2 as a guide shaft.
(Niiya 2:23-24.) 2 Elements 5 and 6 are hydraulic cylinders and elements 5a
and 6a are operating rods, i.e., pistons, of the cylinders. (Id. at 3:2-7.) The
cylinders and pistons are arranged between fork supports 7 and 8. (Id.) The
fork supports include pins 7a and 8a. (Id.) The end of each piston 5a and 6a
is described as being connected to a respective pin 7a and 8a. (Id. at 3:7-8.)
In that manner, piston 5a and cylinder 5 are connected to fork support 7
while piston 6a and cylinder 6 are connected to fork support 8. Each piston,
cylinder, and fork support may together form an assembly, however, each of

2 References in this opinion to page and line numbers in Niiya are to the
English translation of that document that is of record and dated February
1988.
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Application 11/000,783

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those assemblies remain unattached to one another. In that unattached state,
the assemblies are not interconnected or interconnectable and do not form a
substantially rigid unit. It is not until those assemblies are mounted to
carriage 1 and secured, along with forks 3 and 4, via guide shaft 2 that they
become interconnected as shown in Niiya’s Figure 1. Thus, Niiya discloses
that its piston and cylinder assembly 5a, 5 and its piston and cylinder
assembly 6a, 6 only form a rigid unit when they are mounted to carriage 1.
On the other hand, the claims require that the pair of piston and cylinder
assemblies are interconnectable or interconnected with one another to form a
substantially rigid unit without any mounting of the assemblies on the
carriage.
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d at
708. The initial burden is on the examiner to establish a prima facie basis to
reject the claims. In re Oetiker, 977 F.2d at 1445. On this record, the
Examiner has not met that burden as he has not demonstrated how or where
Niiya discloses a pair of piston and cylinder assemblies that are
interconnectable or interconnected to form a substantially rigid unit without
any mounting of the assemblies on a carriage. We do not sustain the
rejection of claims 33 and 39 as anticipated by Niiya.
Claims 34-38 are ultimately dependent on and include all the
limitations of claim 33. Claims 40-43 are ultimately dependent on and
include all the limitations of claim 39. We also do not sustain the rejection
of claims 34-38 and 40-43 as anticipated by Niiya.
E. CONCLUSION
1. Claims 33-43 were not properly rejected as indefinite.
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Application 11/000,783

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2. Niiya does not disclose a pair of piston and cylinder assemblies
that are interconnectable or interconnected with one another to form a
substantially rigid unit without any mounting of the assemblies on a
carriage.
F. ORDER
The rejection of claims 33-43 under 35 U.S.C. § 112, second
paragraph, as indefinite is reversed.
The rejection of claims 33-43 under 35 U.S.C. § 102(b) as anticipated
by Niiya is reversed.

REVERSED

CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
601 SW Second Avenue
Suite 1600
PORTLAND OR 97204-3157