Ex Parte Rosser

Board of Patent Appeals and Interferences

Nov 29, 2007

10352032 (B.P.A.I. Nov. 29, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte F. F. ROSSER, JR.
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Appeal 2007-0238
Application 10/352,032
Technology Center 3700
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Decided: November 29, 2007
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Before WILLIAM F. PATE III, HUBERT C. LORIN
JOSEPH A. FISCHETTI, Administrative Patent Judges.

JOSEPH A. FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. §§ 6(b) and 134(a) from the final
rejection of claims 1-3, 5-12 and 20. Claim 4 has been canceled. Claims 13-
19 are withdrawn from consideration.
Representative claim 1 reads as follows:

1. Apparatus for fragmenting scrap materials,
comprising:

a transportable platform;

Appeal 2007-0238
Application 10/352,032

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a fragmenter mounted on said platform for fragmenting scrap
materials deposited therein;

a first discharge conveyor mounted on said platform for
receiving fragmented scrap materials from said fragmenter;

an inspection conveyor mounted on said platform for receiving
and sorting fragmented scrap materials from said first discharge
conveyor; and

a second discharge conveyor mounted on said platform for
receiving fragmented scrap materials from said inspection
conveyor and transporting them to a container for recycling or
disposal;

said second discharge conveyor being movably mounted on
said platform for lateral movement about a substantially vertical
axis to enable it to transport fragmented and sorted scrap
materials to a container spaced from said platform

The references set forth below are relied upon as evidence of
obviousness:
Stephanek US 3,647,150 Mar. 07, 1972
Frick US 5,460,332 Oct. 24, 1995
Nojima US 5,802,747 Sep. 08, 1998.
Moriya US 6,752,339 Jun. 22, 2004

In addition to the prior art cited by the Examiner, we also refer to the
following additional prior art.

Smith US 5,564,205 Oct. 15, 1996

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Claim 1 is the sole independent claim from which all of the other
appealed claims depend. Claim 1 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Stephanek in view of Frick.1 All other rejections
made by the Examiner address claim 1 using the combination of Stephanek
in view of Frick under 35 U.S.C. § 103(a).
The Examiner found that Stephanek teaches the features of claim 1
except for “a movably mounted conveyor for lateral movement about a
substantially vertical axis.” (Answer 3)
Claim 1 requires:
said second discharge conveyor being movably mounted on said
platform for lateral movement about a substantially vertical axis to
enable it to transport fragmented and sorted scrap materials to a
container spaced from said platform.

We read this phrase as requiring the second discharge conveyor to be
supported by the platform so as to be “movably mounted” thereon and be
laterally movable, i.e., side to side, relative to the platform and about a
substantially vertical axis. Thus, one or both of Stephanek and Frick must
disclose movement of a discharge conveyor in this manner.
The Examiner relies on Frick to show “a mobile crusher with a
movably mounted or pivotally mounted conveyor (column 2, lines 39-50) in

1 The Examiner indicates in an Office Action dated February 8, 2006 that
the Final Office Action dated July 19, 2005 erroneously listed the rejection
of claims 1-3, and 20 under 35 U.S.C. § 102 (b) when in fact they should
have been listed under 35 U.S.C. § 103(a). We therefore will follow the
corrected version of the Final Office Action rejecting these claims under
35 U.S.C. § 103(a).
Appeal 2007-0238
Application 10/352,032

4
order to allow lateral movement about a substantially vertical axis.” (Final
Rejection 3). However, a review of Frick indicates that the conveyor 15,
comprised of sections 16 and 17, is disclosed pivotally connected to the
frame 12 only “about a horizontal axis”, and that the connection between
conveyor sections 16 and 17 is likewise so constrained (Frick col. 4, ll. 6,
12-14). Thus, there is no disclosure that the conveyor 15 in Frick is
mounted for lateral movement about a vertical axis in the manner required
by claim 1. Even the passage in Frick cited by the Examiner states
unequivocally that pivotal movement is disclosed only in the context of
vertical movement, i.e., “vertically pivoting the conveyor belt.” (Frick col. 2,
ll. 45-47). Thus, neither Stephanek or Frick disclose the claim limitation of :
said second discharge conveyor being movably mounted on said
platform for lateral movement about a substantially vertical axis to
enable it to transport fragmented and sorted scrap materials to a
container spaced from said platform.

The “reference[s] must describe the applicant's claimed invention
sufficiently to have placed a person of ordinary skill in the field of the
invention in possession of it.” In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990). Therefore, we cannot sustain the rejection of claim 1, and
claims 5-12 and 20 which depend therefrom, under 35 U.S.C. § 103 over
the prior art of record.
The decision of the Examiner is reversed.
Appeal 2007-0238
Application 10/352,032

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REMAND
We remand this application to the Examiner for consideration of
Smith, US Patent No. 5,564,205. Smith discloses a second conveyor 54
which is movably mounted via turn table 74 on a platform 18 for lateral
movement (Smith, col. 6, ll. 5-10) about a substantially vertical axis (turn
table 74) to enable it to transport materials to a container T spaced from the
platform. As such, we remand this application to the Examiner to consider
whether any of the subject matter of the pending claims would have been
obvious to one having ordinary skill in the art at the time of the invention in
view of the teachings of Smith in combination with the other pertinent art
which the Examiner is or becomes aware of.

CONCLUSIONS OF LAW
We reverse the rejection of claims 1-3, 5-12 and 20 under 35 U.S.C.
§ 103(a) as being unpatentable based on the combination of Stephanek and
Frick.
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Application 10/352,032

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DECISION
The decision of the Examiner to reject claims 1-3, 5-12 and 20 is
reversed.
The application is remanded to the Examiner pursuant to 37 C.F.R.
§ 41.50(a)(1) (2006) for consideration of the disclosure in Smith relative to
the patentability of claims 1-3, 5-12 and 20.
This remand to the examiner pursuant to 37 CFR § 41.50(a)(1) is
made for further consideration of a rejection. Accordingly, 37 CFR
§ 41.50(a)(2) applies if a supplemental examiner's answer is written in
response to this remand by the Board.

REVERSED AND REMANDED

vsh

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