Ex Parte Ring

Board of Patent Appeals and Interferences

Jun 16, 2005

09399412 (B.P.A.I. Jun. 16, 2005)

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and is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL E. RING
____________
Appeal No. 2005-0354
Application No. 09/399,412
____________
ON BRIEF
____________
Before BARRETT, RUGGIERO, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-3 and
5-20, which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2005-0354
Application No. 09/399,412
2
Appellant's invention relates to a method and apparatus for enhancing the
braking efficiency of a railway freight train consist. An understanding of the invention
can be derived from a reading of exemplary claim 1, which is reproduced below.
1. A method of substantially achieving a minimum stopping distance
of a freight train consist without incurring any significant detrimental wheel
slide, said method comprising the steps of:
(a) preprogramming preselected information into a computer
disposed on a freight locomotive including velocity dependence of wheel
to rail adhesion;
(b) determining a speed of such freight train consist,
(c) communicating a signal that is indicative of said speed
determined in step (b) to such computer disposed on such freight
locomotive;
(d) determining in such computer a pressure that can be applied to
brake cylinders which will maintain substantially maximum adhesion
between wheels being braked and rail surfaces in contact with such
wheels such that braking energy is substantially evenly distributed to all of
such wheels;
(e) communicating a signal representative of such pressure
determined in step (d) to a pressure control valve in fluid communication
with such brake cylinders; and
(f) using said velocity dependence of wheel to rail adhesion in
maintaining a maximum pressure on such brake cylinders that will stop
such train consist in a shortest possible distance while simultaneously
substantially preventing wheel slide along said rails, minimizing variation in
wheel temperatures, and substantially evenly distributing braking energy
to all of such wheels.
Appeal No. 2005-0354
Application No. 09/399,412
1 We note that the examiner has not included a restatement of this rejection in the answer, but
has not expressly indicated that this rejection is overcome or withdrawn in either the final rejection or the
examiner’s answer. Therefore, we will treat the claims as rejected in the first office action.
3
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Fourie 4,671,576 Jun. 9, 1987
Matsuoka 5,544,057 Aug. 6, 1996
Cook et al. (Cook) 5,605,387 Feb. 25, 1997
Kull 5,681,015 Oct. 28, 1997
Roselli et al. (Roselli) 5,718,487 Feb. 17, 1998
Claims 1-3, 5-8, 11, 16, and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Cook in view of Fourie. Claims 9, 10, and 12-15 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Cook and Fourie in view of Kull.1
Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable over Cook and
Fourie in view of Matsuoka. Claims 19 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Cook and Fourie in view of Roselli.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 26, mailed Feb. 10, 2004) for the examiner's reasoning in support of
the rejections, and to appellant's brief (Paper No. 25, filed Nov. 20, 2003) for appellant's
arguments thereagainst.
Appeal No. 2005-0354
Application No. 09/399,412
4
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge generally available
to one of ordinary skill in the art that would have led that individual to combine the
relevant teachings of the references to arrive at the claimed invention. See In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on §
103 must rest on a factual basis with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The examiner may not, because of
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5
doubt that the invention is patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual basis for the rejection. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against
employing hindsight by using the appellant's disclosure as a blueprint to reconstruct the
claimed invention from the isolated teachings of the prior art. See, e.g., Grain
Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d
1788, 1792 (Fed. Cir. 1988).
When determining obviousness, "the [E]xaminer can satisfy the burden of
showing obviousness of the combination ‘only by showing some objective teaching in
the prior art or that knowledge generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the references.’" In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch, 972
F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). "Broad conclusory
statements regarding the teaching of multiple references, standing alone, are not
‘evidence.'” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). "Mere denials and conclusory statements, however, are not sufficient to establish
a genuine issue of material fact." Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617,
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citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d
1129, 1131 (Fed. Cir. 1993) .
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
limitations set forth in independent claim 1. Here, we note that the preamble of
independent claim 1 sets forth “a method of achieving a minimum stopping distance for
a freight train consist” wherein a computer on the train is preprogrammed with
information including “velocity dependence of wheel to rail adhesion.” The computer
determines a pressure that can be applied to the brake cylinder which will substantially
maintain maximum adhesion between wheels being braked and rail surfaces in contact
with the wheels such that braking energy is substantially evenly distributed to all of such
wheels being braked.
The examiner maintains that the combination of Cook as modified by Fourie
would have suggested the invention as recited in independent claim 1. Appellant
argues that the teachings of Cook with respect to a magnetic levitation (mag-lev) train
do not teach or fairly suggest the invention as it relates to a freight train having wheels
which run on rails. (Brief at pages 9-11.) Appellant argues that the mag-lev trains do
not operate with wheels in contact with rails and therefore are not concerned with the
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Application No. 09/399,412
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velocity dependence of wheel to rail adhesion and use thereof to determine the
maximum amount of pressure to be applied to the brake cylinders to achieve stopping
of the train while preventing wheel slide with respect to the rails. (Brief at page 10.)
While we agree with appellant that the teachings of Cook do not relate to the freight
train consist with respect to rails and adhesion thereto, we do not fully agree with
appellant that these teachings would have provided no suggestions to those skilled in
the art of braking vehicles.
The examiner relies on the teachings of Fourie as teaching the use of pre-
selected information including velocity dependence of wheel to rail adhesion in
controlling deceleration. Appellant argues that it would not have been obvious to one of
ordinary skill in the art at the time of the invention to combine the teachings of Fourie
into the teachings of Cook with respect to a mag-lev train that does not use wheels on
rails. We agree with this argument when viewed from the modification of Cook, but we
do not necessarily agree that the teachings of the two references are not combinable in
the aggregate. While the teachings of Fourie are directed to a freight train and
recognizes the wheel to rail adhesion characteristics, we find that this general teaching
does not teach or fairly suggest an implementation as recited in independent claim 1.
We find no teaching or suggestion in Fourie of the claimed “determining in such
computer a pressure that can be applied to brake cylinders which will maintain
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Application No. 09/399,412
8
substantially maximum adhesion between wheels being braked and rail surfaces in
contact with such wheels such that braking energy is substantially evenly distributed to
all of such wheels” and “communicating a signal representative of such pressure
determined in step (d) to a pressure control valve in fluid communication with such
brake cylinders.” Nor do we find that the examiner has provided a convincing line of
reasoning as to why it would have been obvious to one of ordinary skill in the art at the
time of the invention to have a determination by an on-board computer rather than to
use the predetermined speed/adhesion profile taught by Fourie. (Fourie at col. 8, lines
39- col. 9, line 39.)
Additionally, while Cook provides motivation to equalize the braking energy
absorbed by each car or truck in a mag-lev train (Cook at col. 1, lines 42-48), we do
not find a recognition or suggestion of the claimed “using said velocity dependence of
wheel to rail adhesion in maintaining a maximum pressure on such brake cylinders that
will stop such train consist in a shortest possible distance while simultaneously
substantially preventing wheel slide along said rails, minimizing variation in wheel
temperatures, and substantially evenly distributing braking energy to all of such wheels”
in the combination of Cook and Fourie. Since we do not find that the examiner has
shown how the combined teachings of Cook and Fourie either teaches or fairly
suggests the invention as recited in independent claim 1, we cannot sustain the
rejection of independent claim 1 and its dependent claims. Similarly, we do not find that
Appeal No. 2005-0354
Application No. 09/399,412
9
the examiner has shown how the combined teachings of Cook and Fourie either
teaches or fairly suggests the invention as recited in independent claim 11, and we
cannot sustain the rejection of independent claim 11 and its dependent claims.
The examiner relies on the teachings of Matsuoka, Kull, and Roselli as evidence
of various claimed features in dependent claims, but we do not find that these teachings
remedy the deficiency in the base combination nor do we find that the examiner has
provided a convincing line of reasoning thereto. Therefore, we do not find that the
examiner has shown how the combined teachings of Cook and Fourie with Matsuoka,
Kull, or Roselli teach or fairly suggest the invention as recited in the respective
dependent claims, and we cannot sustain the rejection of dependent claims.
CONCLUSION
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Application No. 09/399,412
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To summarize, the decision of the examiner to reject claims 1-3 and 5-20 under
35 U.S.C. § 103 is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JLD:pgc
Appeal No. 2005-0354
Application No. 09/399,412
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JAMES RAY & ASSOCIATES
2640 PITCAIRN ROAD
MONROEVILLE, PA 15146