Ex parte RAMUN

Board of Patent Appeals and Interferences

Mar 16, 2001

08826832 (B.P.A.I. Mar. 16, 2001)

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for publication and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN R. RAMUN
____________
Appeal No. 2000-1488
Application No. 08/826,832
____________
ON BRIEF
____________
Before FRANKFORT, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 5 to 8 and 10 to 18. Claims 3, 4,
9, 19 and 20, the remaining claims pending in this
application, have been allowed.
We REVERSE.
Appeal No. 2000-1488 Page 2
Application No. 08/826,832
BACKGROUND
The appellant's invention relates to counterweights
utilized to counterbalance construction equipment, such as
excavators and cranes (specification, p. 1). A copy of the
claims under appeal is set forth in the appendix to the
appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Hughson 2,925,149 Feb. 16,
1960
Eid 3,614,135 Oct. 19,
1971
Yancey 3,860,083 Jan. 14,
1975
Denda 4,650,393 Mar. 17,
1987
Brocklebank et al. 4,679,336 July 14,
1987
(Brocklebank)
Washburn et al. 5,033,567 July 23,
1991
(Washburn)
Claims 1, 2, 5 and 10 stand rejected under 35 U.S.C. §
103 as being unpatentable over Eid in view of Brocklebank.
Appeal No. 2000-1488 Page 3
Application No. 08/826,832
Claims 6 to 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Eid in view of Brocklebank as applied
to claim 5 above, and further in view of Washburn or Yancey.
Appeal No. 2000-1488 Page 4
Application No. 08/826,832
Claims 1, 2, 5 and 11 to 16 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Denda in view of Brocklebank
and Hughson.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Denda in view of Brocklebank and
Hughson as applied to claim 11 above, and further in view of
Washburn or Yancey.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 13,
mailed December 2, 1999) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 12,
filed August 12, 1999) and reply brief (Paper No. 14, filed
January 31, 2000) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
Appeal No. 2000-1488 Page 5
Application No. 08/826,832
It appears to us that the recited bottom panel and side1
wall by themselves are insufficient to define an "aperture."
Accordingly, we view the phrase "receiving aperture" as
meaning receiving space or area.
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The 35 U.S.C. § 103 rejections utilizing Eid
Claims 1, 2, 5 and 10
We will not sustain the rejection of claims 1, 2, 5 and
10 under 35 U.S.C. § 103 as being unpatentable over Eid in
view of Brocklebank.
Independent claim 1 reads as follows:
A removable counterbalance assembly for use in
construction equipment, the counterbalance assembly
comprising:
a bottom panel attachable adjacent an aft end of the
construction equipment;
an enclosure including a side wall having a lower
portion positionable in fixed relation to the bottom
panel, the bottom panel and the side wall defining a
receiving aperture ; and [1]
a counterweight adapted to be received in the
receiving aperture.
Appeal No. 2000-1488 Page 6
Application No. 08/826,832
Independent claim 2 recites a removable counterbalance
assembly comprising, inter alia, two enclosures, each
enclosure having a back wall connected to a side wall, the
enclosures positioned so that the side walls are in
opposition; a back panel connected between the back walls of
the enclosures; a bottom panel connected to the back panel and
between the side walls of the enclosures; a receiving aperture
defined by the side walls, the back panel and the bottom
panel; and a counterweight receivable in the receiving
aperture.
Eid teaches that when tractors are used under certain
load conditions as, for example, as a bulldozer or as a snow
blower there arises often a tendency for the tractor to tilt
forward and in the use of such tractors under such conditions,
there is a serious problem of keeping the rear end of the
tractor firmly on the ground. Eid then discloses an
attachment which may quickly and conveniently be mounted on
the frame rails of a tractor to provide a weight box or
receptacle for weights whenever it is desired to weight the
rear end of a tractor. When so mounted the box provides a
Appeal No. 2000-1488 Page 7
Application No. 08/826,832
suitable receptacle in a desirable location for weights to
help maintain the rear end of the tractor on the ground
despite heavy front loads. A specific feature of the
attachment is that it may be added to an existing tractor,
already equipped with a drawbar or hitch panel at the ends of
the frame rails, without loss of the existing drawbar or hitch
plate
and without loss of the hitching feature.
Figure 3 of Eid is a perspective view of the attachment
and Figures 4 and 5 are views showing the attachment in place
between the frame rails and the drawbar or hitch plate. As
shown in Figures 3-5, the weight box attachment is a unitary,
preassembled, three-sided, closed-bottom, open-top,
heavy-gauge sheet metal box 40 adapted to be applied as an
attachment unit to the free ends of the rails 20, these rails
being normally connected by the hitch plate 22. The box 40
comprises a front plate 42, a bottom plate 44, and two side
plates 46. The latter extend well forward of the front plate
to provide short parallel wings 48 enabling the box to be
secured to the ends 20 of the rails by the same bolts 28 as
Appeal No. 2000-1488 Page 8
Application No. 08/826,832
were previously used and as are normally used to secure the
hitch plate 22 to the rails 20. When the box 40 is mounted
upon rails 20 as is shown in Figures 4 and 5, the hitch plate
22 is adapted to be secured to the open or rear end of the box
to close such end and connect the sides 46 of the box with the
hitch plate 22 being parallel to the front plate 42. When the
parts are combined in the manner just described there is
provided a tractor including the combination of the rails 20,
the box 40, and the hitch plate 22 with such combination being
effective for receiving weights which
ensure the rear end of the tractor remaining on the ground
despite adverse front load conditions.
Brocklebank discloses in Figure 1 an earth moving machine
having a ground engaging propulsion means 11, a base frame 14
movable relative to the ground engaging propulsion means about
a first generally vertical axis V, a boom 30 and a
counterweight 20a mounted on the base frame so as to be
movable towards and away from the first vertical axis in
response to movement of the center of gravity of the machine.
As shown in Figure 2, members 18a, 18b, together provide a
Appeal No. 2000-1488 Page 9
Application No. 08/826,832
guide path for the movable counterweight 20a, contained within
a housing 20 of the upper body part mounted on the base frame
14. Also mounted on the base frame 14 on one side thereof is
an operator's cab 21 and superstructure 22, which
superstructure 22 provides a space 22a for components such as
valves and the like of a hydraulic system of the machine. The
engine 13 is housed in another superstructure 13a on the
opposite side of the machine to the cab 21 and superstructure
22. Additionally, a hydraulic reservoir may be positioned in
a space 22b located on the opposite side of the machine to the
cab 21 and superstructure 22.
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). Implicit in
this rejection (answer, p. 3) is the examiner's view that Eid
lacks the enclosure as recited in claim 1 and the two
enclosures as recited in claim 2 since the examiner determined
(answer, p. 3) that it would have been obvious at the time the
invention was made to a person having ordinary skill in the
Appeal No. 2000-1488 Page 10
Application No. 08/826,832
art to add storage enclosures adjacent the sides of Eid's
weight box in view of the teachings in Brocklebank (i.e.,
spaces 22a and 22b being provided on opposite sides of
counterweight 20a). The appellant argues that the applied
prior art does not suggest the subject matter of claims 1 and
2. We agree with the appellant. The mere fact that the prior
art may be modified in the manner suggested by the examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification. See In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 773 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). In this case, it is our
view that the only suggestion for modifying Eid in the manner
proposed by the examiner to arrive at the subject matter of
claim 1 or claim 2 stems from hindsight knowledge derived from
the appellant's own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C.
§ 103 is, of course, impermissible. See, for example, W. L.
Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984). In that regard, while Brocklebank may have
Appeal No. 2000-1488 Page 11
Application No. 08/826,832
suggested providing Eid's tractor with spaces/enclosures such
as those disclosed by Brocklebank (i.e., spaces 22a and 22b),
it is our opinion that those spaces/enclosures would not have
been located on one or both sides of Eid's weight box to
define a counterweight receiving aperture/space as set forth
in either claim 1 or claim 2, but would have been located in
the superstructure of the tractor itself as clearly taught in
Brocklebank.
For the reasons set forth above, the decision of the
examiner to reject independent claims 1 and 2, and claims 5
and 10 dependent thereon, under 35 U.S.C. § 103 as being
unpatentable over Eid in view of Brocklebank is reversed.
Claims 6 to 8
We have also reviewed the references to Washburn and
Yancey additionally applied in the rejection of dependent
claims 6 to 8 but find nothing therein which makes up for the
deficiencies of Eid and Brocklebank discussed above.
Accordingly, the decision of the examiner to reject claims 6
Appeal No. 2000-1488 Page 12
Application No. 08/826,832
to 8 under 35 U.S.C. § 103 as being unpatentable over Eid in
view of Brocklebank and Washburn or Yancey is reversed.
The 35 U.S.C. § 103 rejections utilizing Denda
Claims 1, 2, 5 and 11 to 16
We will not sustain the rejection of claims 1, 2, 5 and
11 to 16 under 35 U.S.C. § 103 as being unpatentable over
Denda in view of Brocklebank and Hughson.
Denda discloses a machine for excavating work. As shown
in Figures 1-3, an excavator includes a turn base 14, a
traveling device 12, a boom 16 and a bucket 28.
The teachings of Brocklebank have been set forth above.
Hughson discloses a lift truck having a counterweight.
As shown in Figures 1-3, the side and rear body walls 21, 23
and 25, together define a pocket that receives counterweight
41.
Appeal No. 2000-1488 Page 13
Application No. 08/826,832
The examiner determined (answer, p. 4) that it would have
been obvious at the time the invention was made to a person
having ordinary skill in the art to provide compartments at
the rear corners of Denda's turn base 14 in view of the
teachings in Brocklebank (i.e., spaces 22a and 22b being
provided on opposite sides of counterweight 20a) and to
provide a counterweight cavity in the center of the rear of
Denda's turn base 14 in view of the teachings in Hughson. The
appellant argues that the applied prior art does not suggest
the subject matter of independent claims 1, 2 and 11. We
agree with the appellant. As in the previous rejection of
claims 1 and 2, we fail to find any suggestion for modifying
Denda in the manner proposed by the examiner to arrive at the
subject matter of claims 1, 2 or 11. Accordingly, we must
conclude that this rejection stems from the use of
impermissible hindsight knowledge derived from the appellant's
own disclosure. In that regard, while Brocklebank may have
suggested providing Denda's machine with spaces such as those
disclosed by Brocklebank (i.e., spaces 22a and 22b) and
Hughson may have suggested providing Denda's machine with a
pocket containing a counterweight, it is our opinion that
Appeal No. 2000-1488 Page 14
Application No. 08/826,832
those spaces would not have been located on the sides of a
pocket containing a counterweight to define a counterweight
receiving aperture/space as set forth in claims 1, 2 or 11.
For the reasons set forth above, the decision of the
examiner to reject independent claims 1, 2, and 11, and claims
5 and 12 to 16 dependent thereon, under 35 U.S.C. § 103 as
being unpatentable over Denda in view of Brocklebank and
Hughson is reversed.
Claims 17 and 18
We have also reviewed the references to Washburn and
Yancey additionally applied in the rejection of dependent
claims 17 and 18 but find nothing therein which makes up for
the deficiencies of Denda, Brocklebank and Hughson discussed
above. Accordingly, the decision of the examiner to reject
claims 17 and 18 under
35 U.S.C. § 103 as being unpatentable over Denda in view of
Brocklebank, Hughson and Washburn or Yancey is reversed.
Appeal No. 2000-1488 Page 15
Application No. 08/826,832
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 2, 5 to 8 and 10 to 18 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2000-1488 Page 16
Application No. 08/826,832
RICHARD L. BYRNE
700 KOPPERS BUILDING
436 SEVENTH AVENUE
PITTSBURGH, PA 15219-1818
Appeal No. 2000-1488 Page 17
Application No. 08/826,832
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