12291959 (P.T.A.B. Sep. 16, 2013)

Ex Parte Roley

Patent Trial and Appeal BoardSep 16, 2013

12291959 (P.T.A.B. Sep. 16, 2013)

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. 12/291,959 11/14/2008 Robert Doyle Roley 08-714 4615 60782 7590 09/17/2013 Caterpillar Inc. c/o LIELL & MCNEIL ATTORNEYS PC P.O. Box 2417 511 South Madison Street Bloomington, IN 47402-2417 EXAMINER RISIC, ABIGAIL ANNE ART UNIT PAPER NUMBER 3671 MAIL DATE DELIVERY MODE 09/17/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT DOYLE ROLEY ____________ Appeal 2011-009480 Application 12/291,959 Technology Center 3600 ____________ Before JOHN C. KERINS, JEREMY M. PLENZLER and BEVERLY M. BUNTING, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009480 Application 12/291,959 2 STATEMENT OF THE CASE Robert Doyle Roley (Appellant) seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s invention is directed to an apron assembly for a scraper. Independent claim 1, reproduced below, is representative of the claimed subject matter: 1. An apron assembly, comprising: an apron having an apron body extending between a first apron side and a second apron side, wherein a portion of the apron includes an arcuate gear surface; and a hydraulic actuator assembly including a linear hydraulic actuator configured to actuate a drive gear, the drive gear being in mesh with the arcuate gear surface. THE REJECTIONS Appellant appeals from the following rejections: (i) claims 1-7 under 35 U.S.C. § 103(a) as being unpatentable over McLean (US 2,280,439, issued Apr. 21, 1942) in view of Massinger (US 4,282,442, issued Aug. 4, 1981); (ii) claim 8 under 35 U.S.C. § 103(a) as being unpatentable over McLean in view of Massinger and Le Tourneau (US 3,016,633, issued Jan. 16, 1962); Appeal 2011-009480 Application 12/291,959 3 (iii) claims 9-13 under 35 U.S.C. § 103(a) as being unpatentable over Le Tourneau in view of Massinger; (iv) claims 14 and 15 under 35 U.S.C. § 103(a) as being unpatentable over Le Tourneau in view of Massinger and McLean; (v) claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Le Tourneau in view of Massinger, McLean and Lichtenberg (US 2,395,334, issued Feb. 19, 1946); and (vi) claim 17 under 35 U.S.C. § 103(a) as being unpatentable over Le Tourneau in view of Massinger and Jochim (US 5,375,349, issued Dec. 27, 1994). ANALYSIS Claims 1-7--Obviousness--McLean/Massinger Appellant argues claims 1-7 as a group, in that no separate arguments directed specifically to claims 2-7 are presented. Appeal Br. 8-11. We will take claim 1 as representative of the group, with claims 2-7 standing or falling with claim 1. The Examiner takes the position that it would have been obvious to substitute the actuating assembly in Massinger for the actuating assembly in McLean, thus resulting in a device meeting the limitations in claim 1, as an obvious substitution of one known element for another, yielding predictable results. Ans. 4-5. Appellant argues that the rejection is improper, in that Massinger is nonanalogous art. Appeal Br. 8-11. The established precedent of our reviewing court sets up a two-fold test for determining whether art is analogous: “First, we decide if the reference is within the field of the inventor’s endeavor. If it is not, we Appeal 2011-009480 Application 12/291,959 4 proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved.” In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986). A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). This is consistent with the notion that “familiar items may have obvious uses beyond their primary purposes.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007). The Examiner took the position, in the final rejection, that Massinger is not within the field of Appellant’s endeavor, but nevertheless was reasonably pertinent to the particular problem faced by Appellant. Final Office Action dated Jul. 19, 2010 at 9-10. The Examiner stated in the Answer that “both the applicant and Massinger are directed to gearing systems” (Ans. 10), and it is unclear from this whether the Examiner was attempting to assert that Massinger is now considered to be within the same field of endeavor as Appellant. We need not reach the issue as to whether Massinger could reasonably be regarded as being within the same field of endeavor, because, even if it is not, the evidence of record leads us to conclude that Massinger would have been reasonably pertinent to the problem faced by Appellant. In that vein, Appellant maintains that the problem faced was not, as the Examiner posits, converting linear motion to rotary motion, but was instead “working to create an apron actuator that occupied a relatively confined spatial envelope.” Appeal Br. 10. Appellant additionally identifies Appeal 2011-009480 Application 12/291,959 5 that the actuation device was to provide improved position resolution. Appeal Br. 9. Appellant further argues that, even if the problem were defined as looking to design a device for converting linear motion to rotary motion, Massinger would still be nonanalogous art. Id. We note initially that Appellant’s purported solution of providing an apron actuator that occupies a relatively confined spatial envelope and provides improved position resolution is not reflected in the scope of claim 1, which simply calls for a hydraulic actuator assembly which includes a linear hydraulic actuator configured to actuate a drive gear. Appeal Br., Claims Appendix. No positioning or size limitations, for example, are present which would evidence that the claimed hydraulic actuator would occupy only a confined space. As such, there appears to be little-to-no nexus between the invention as claimed and the problem Appellant contends was to be solved. Even accepting that the problem sought to be solved by Appellant is as Appellant contends, Massinger logically would have commended itself to Appellant’s attention in this problem. While Appellant contends that “it is simply not logical that the Massinger reference would have commended itself to the attention of a person having ordinary skill in the art, if the person were trying to solve the problems the Applicant was addressing,” Appellant presents no reasons why such is “simply not logical.” Appeal Br. 10-11. Appellant does not argue that the Massinger device would not satisfy the criteria of being capable of operating as an apron actuator that would occupy a relatively confined spatial envelope and provide improved position resolution. Rather, Appellant argues only that Massinger is disclosed as being directed to the conversion of linear energy from an actuator into Appeal 2011-009480 Application 12/291,959 6 rotational energy in a flywheel or a generator. Appeal Br. 9. The Examiner acknowledges this, but also points to the disclosure in Massinger that the device “may be used to power devices other than an electrical generator.” Massinger, col. 4, ll. 26-27. Appellant’s other principal argument is that “[i]t would be unreasonable to expect Applicant to ignore available solutions in Applicant’s field of endeavor and search for alternative solutions in non-analogous art.” Appeal Br. 10. In this regard, Appellant admits that “the conversion of linear motion into rotary motion has long been known in the art of scrapers and analogous machines.” Id. Appellant further notes that the McLean device itself finds suitable for use a system employing translation or conversion of linear motion to rotary motion in actuating a scoop 28, the element regarded by the Examiner as corresponding to the claimed apron assembly. Id.; Ans. 4; McLean, Figs. 1-3. As such, it does not appear to be unreasonable or illogical to expect Appellant to have considered not only potential solutions within the same field of endeavor, such as the linear-to- rotary motion conversion device disclosed in McLean, but also to have considered devices, including, in particular, other linear-to-rotary motion conversion devices from outside the specific field of endeavor, where such devices might be more compact and potentially provide improved position resolution. We are thus not apprised of error in the Examiner’s rejection of claim 1, and of claims 2-7 grouped therewith, as being unpatentable over McLean and Massinger. The rejection is sustained. Appeal 2011-009480 Application 12/291,959 7 Claim 8--Obviousness--McLean/Massinger/Le Tourneau Appellant relies solely on the same arguments that Massinger is nonanalogous art. Appeal Br. 11. For the reasons discussed above, we disagree and sustain the rejection of claim 8. Claims 9-13--Obviousness--Le Tourneau/Massinger Appellant relies solely on the same arguments that Massinger is nonanalogous art. Appeal Br. 11. For the reasons discussed above, we disagree and sustain the rejection of claims 9-13. Claims 14 and 15--Obviousness--Le Tourneau/Massinger/McLean Appellant relies solely on the same arguments that Massinger is nonanalogous art. Appeal Br. 11-12. For the reasons discussed above, we disagree and sustain the rejection of claims 14 and 15. Claim 16--Obviousness--Le Tourneau/Massinger/McLean/Lichtenberg Appellant relies solely on the same arguments that Massinger is nonanalogous art. Appeal Br. 12. For the reasons discussed above, we disagree and sustain the rejection of claim 16. Claim 17--Obviousness--Le Tourneau/Massinger/Jochim Appellant relies solely on the same arguments that Massinger is nonanalogous art. Appeal Br. 12. For the reasons discussed above, we disagree and sustain the rejection of claim 17. DECISION The decision of the Examiner to reject claims 1-17 under 35 U.S.C. § 103(a) is affirmed. Appeal 2011-009480 Application 12/291,959 8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh