Ex parte THEURER et al.

Board of Patent Appeals and Interferences

Jul 24, 1998

08284388 (B.P.A.I. Jul. 24, 1998)

Application for patent filed August 2, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOSEF THEURER and FRIEDRICH PEITL
_____________
Appeal No. 96-2142
Application 08/284,3881
______________
ON BRIEF
_______________
Before CALVERT, COHEN and ABRAMS, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 7 to
9 and 11. The other claims remaining in the application, claims
3 to 6 and 12, have been allowed.
The subject matter in issue concerns a machine for lining a
track. The appealed claims are set forth in the appendix to
appellants' brief.
Appeal No. 96-2142
Application 08/284,388
2
The references applied in the final rejection are:
Theurer et al. (Theurer '753) 4,399,753 Aug. 23, 1983
Theurer (Theurer '767) 5,113,767 May 19, 1992
Claims 1, 7 to 9 and 11 stand finally rejected under 35 USC
§ 103 as unpatentable over Theurer '767 in view of Theurer '753.
The basis of the rejection is stated on page 3 of the
examiner's answer, and need not be repeated here.
Appellants do not contend that the combination of Theurer
'767 and '753, as postulated by the examiner, would not meet all
the limitations of claim 1. However, they argue that Theurer
'753 is nonanalogous art, and therefore not properly combinable
as a secondary reference, because it is not pertinent to the
problem with which appellants were involved, viz., "the problem
of preventing vibration to be [sic: being] transmitted from a
track stabilization assembly to a lining drive" (brief, page 6).
In support of this argument, they cite Oscar Mayer Foods Corp. v.
ConAgra Inc., 35 USPQ2d 1278, 1281 (Fed. Cir. 1994), but the
citation of this decision is considered improper since, as noted
at page 1278 of the USPQ report, the Court indicated that the
Oscar Mayer decision was not citable as precedent. See Shaked v.
Taniguchi, 21 USPQ2d 1291, 1292 (1991) wherein the Commissioner
stated (original emphasis:)
Appeal No. 96-2142
Application 08/284,388
3
Unpublished (or non-precedential) opinions of the
Federal Circuit are not precedent in the Federal
Circuit and will not be cited, considered, or regarded
as precedent by the EIC, the Board, or any other
tribunal within the Patent and Trademark Office.
In any event, we do not consider appellants' argument
concerning nonanalogous art to be well taken. The test for
determining whether prior art is analogous is well established;
as set forth in In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058,
1060 (Fed. Cir. 1992) (referred to in Oscar Mayer):
Two criteria have evolved for determining whether prior
art is analogous: (1) whether the art is from the same
field of endeavor, regardless of the problem addressed,
and (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796
F.2d 436, 442, 230 USPQ 313 (Fed. Cir. 1986); In re
Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA
1979).
In the present case, Theurer '753 meets the first of these
criteria since, being directed to a mobile track correction
machine, it is clearly from the same field of endeavor as
appellants' invention. The argument in the reply brief that
appellants' "field of endeavor" is the same as the particular
Appeal No. 96-2142
Application 08/284,388
4
problem with which they were involved (i.e., preventing the
transmission of vibration to the lining drive means) places far
too restrictive an interpretation on the term "field of
endeavor", and is not sustainable in view of the statement in
In re Clay, supra, that the "field of endeavor" criterion is
applicable "regardless of the problem addressed." If appellants'
interpretation were adopted, there would be no difference between
the two criteria set forth in In re Clay.
Appellants further argue that, while Theurer '753 discloses
several benefits of the lining means (with an interposed lever)
disclosed therein, it would not have been obvious to utilize the
Theurer '753 lining means as the lining means in the Theurer '767
apparatus because one of ordinary skill would not have done so in
order to solve the vibration transmission problem faced by
appellants.
We do not agree. "As long as some motivation or suggestion
is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons
contemplated by the inventor." In re Beattie, 974 F.2d 1309,
1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). See also In re
Appeal No. 96-2142
Application 08/284,388
5
Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996),
and In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed.
Cir. 1990). Here, the numerous benefits disclosed by Theurer
'753 (e.g., at col. 2, lines 35 to 56) would have provided ample
motivation for one of ordinary skill in the art to combine the
references as proposed by the examiner, notwithstanding that the
combination would be for a different purpose than appellants'.
As the examiner correctly states at page 4 of the answer:
the fact that Applicant [sic] uses the spacing member
means in the form of a force-transmitting lever for a
different purpose [than Theurer '753] does not alter
the conclusion that its use in a prior art device would
be [sic: have been] prima facie obvious from the
purpose disclosed in the reference.
Accordingly, we conclude that claim 1 is unpatentable under
35 USC § 103. On page 3 of the brief, appellants group claims 9
and 11 with claim 1. They also state that "they will argue that
claims 7 and 8 are allowable on their own merits", but no
explanation is presented as to why these claims are believed to
be separately patentable. Claims 7 to 9 and 11 therefore fall
with claim 1. 37 CFR § 1.192(c)(7).
Appeal No. 96-2142
Application 08/284,388
6
Conclusion
The examiner's decision to reject claims 1, 7 to 9 and 11 is
affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 96-2142
Application 08/284,388
7
Kurt Kelman
Collard & Roe
1077 Northern Boulevard
Roslyn, NY 11576b