Ex Parte Weiss

Board of Patent Appeals and Interferences

Jun 15, 2011

10610545 (B.P.A.I. Jun. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LOTHAR WEISS
____________

Appeal 2009-011748
Application 10/610,545
Technology Center 3600
____________

Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011748
Application 10/610,545

2
STATEMENT OF THE CASE
Lothar Weiss (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 56,
58, 60-68, 72, 73, 86, 87, and 94 as unpatentable over Krilanovich (US
2,766,007, issued Oct. 9, 1956) and Hansen (US 4,790,441, issued Dec. 13,
1988); claims 56, 59, 88, 90, and 91 as unpatentable over Hansen and
Krilanovich; and claims 57 and 93 as unpatentable over Krilanovich,
Hansen, and Sakamoto (US 4,734,979, issued Apr. 5, 1988). Claims 1-55
have been canceled and claims 69-71, 74-85, 89, 92, and 95-115 have been
withdrawn. Appellant’s representative presented oral argument on June 7,
2011. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a transport system including at least
one movement unit 3, at least one holding device 4, and at least one lifting
and lowering device 2. Spec., para. [0002] and fig. 1.
Claim 56 is representative of the claimed invention and reads as
follows:
56. A transport system for the transport of components between a
plurality of stations on transport vehicles and along a transport path,
comprising:
at least one movement unit;
at least one holding device for holding the plurality of
components;
at least one lifting and lowering device for lifting and/or
lowering the at least one holding device,
wherein the at least one lifting and lowering device comprises
at least one lifting drive and a number of substantially rigid
constructional elements connected to one another by at least a first
joint,
Appeal 2009-011748
Application 10/610,545

3
wherein the number of substantially rigid constructional
elements comprises at least first and second constructional elements
connected to one another by at the least a first joint to be arranged, at
least in one lifting position, in a Y shape,
wherein first ends of the first and second constructional
elements are connected to the movement unit by second and third
joints, a second end of the first constructional element is coupled to
the holding device by a fourth joint, and a second end of the second
constructional element is pivotably coupled between the first and
second ends of the first constructional element at the first joint;
a guide device structured and arranged to rotatably support and
guide one of the first ends of the first and second constructional
elements; and
a point of action of the lifting drive being arranged one of on
the holding device or in a vicinity of an attachment point of the
holding device to the at least one lifting and lowering device, which
is located on a constructional element coupled to the holding device,
wherein a spacing between the point of action and the attachment
point corresponds to a distance of less than one-half of a length of a
longest constructional element coupled to the holding device.

SUMMARY OF DECISION
We AFFIRM.
ANALYSIS
The obviousness rejection over Krilanovich and Hansen
The Examiner found that Krilanovich discloses all the limitations of
claim 56 with the exception of “the point of action as being between the mid
point of a construct element and the holding member attachment point.”
Ans. 4. The Examiner further found that Hansen discloses a lifting and
lowering device having a point of action 53b located near the point of
attachment of the holding device 56. Id. Accordingly, the Examiner found
that it would have been obvious for a person of ordinary skill in the art to
locate the point of action 33 of Krilanovich closer to the attachment pivot
Appeal 2009-011748
Application 10/610,545

4
point 25 of the holding device 26, that is, somewhere in-between pivot
points 13 and 25. See Krilanovich, fig. 2.
Appellant first argues that the Examiner has not shown any disclosure
in either Krilanovich or Hansen to support the Examiner’s proposed
modification . App. Br. 13. We do not find Appellant’s argument
persuasive because it appears to be holding the Examiner to the old TSM
standard; such a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 415 (2007) ("We begin by rejecting [TSM]").
Appellant further argues that the Examiner’s proposed modification
would change the mode of operation of Krilanovich’s lifting device because
in Krilanovich the load is pushed upward, whereas in Hansen the load is
pulled upward. App. Br. 14-15. In other words, it appears that Appellant
considers Hansen to teach away from the Examiner’s proposed modification
of Krilanovich. However, simply that there are differences between two
references is insufficient to establish that such references "teach away" from
any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed.
Cir. 1992). Prior art does not teach away from claimed subject matter
merely by disclosing a different solution to a similar problem unless the
prior art also criticizes, discredits or otherwise discourages the solution
claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this
case, while Hansen may disclose a linkage system for lifting a load that
differs from that of Krilanovich, Hansen in no way criticizes, discredits, or
otherwise discourages modifying the location of the point of action 33 of
Krilanovich to be closer to the attachment pivot point 25 of the holding
device 26, as proposed by the Examiner. Furthermore, as noted by
Appellant, the device of Krilanovich pushes the load in a vertical path.
Appeal 2009-011748
Application 10/610,545

5
App. Br. 13. See also, Krilanovich, col. 3, ll. 25-32 and figs. 2 and 3.
Modifying the location of the point of action 33 of Krilanovich to be closer
to the attachment pivot point 25 of the holding device 26, as proposed by the
Examiner, would likewise result in pushing the load in a vertical path.
Hence, we do not agree with Appellant’s position that that the Examiner’s
proposed modification would change the mode of operation of Krilanovich’s
lifting device because in both situations the load follows a vertical path.
Lastly, we are not persuaded that the Examiner’s proposed
modification renders “the linkage network [of Krilanovich] essentially non-
functioning” because piston drive 32 solely lifts the entire load. Reply Br. 5.
Although we appreciate that the load in the system of Krilanovich as
modified by Hansen is absorbed by the piston drive 32, we find that the
linkage system still has a guide function for guiding the load along a vertical
path. Moreover, even assuming that the proposed combination of
Krilanovich and Hansen would render “the linkage network [of Krilanovich]
essentially non-functioning,” Appellant has not proffered evidence or a line
of reasoning tending to show that the alleged non-functionality would have
discouraged a person of ordinary skill in the art from making the
combination to attain the potential advantage of reducing the bending
moment required to lift the load, “which can reduce the size of the device as
well as manufacturing costs.” See Ans. 8. If there are tradeoffs involved
regarding features, costs, manufacturability, or the like, such things do not
necessarily prevent the proposed combination. See Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine."). Consequently, we are not
Appeal 2009-011748
Application 10/610,545

6
persuaded that the Examiner's conclusion that the subject matter of
independent claim 56 is obvious in view of the teachings of Krilanovich and
Hansen was in error. Accordingly, we sustain the rejection.
With respect to independent claim 94, Appellant makes the same
arguments as those presented above in the rejection of independent claim 56.
App. Br. 16-21. For the same reasons, we are not persuaded, and as such,
we shall sustain the rejection of independent claim 94 under 35 U.S.C. §
103(a) as unpatentable over Krilanovich and Hansen.
Finally, Appellant does not present any additional substantive
arguments regarding the rejection of dependent claims 58, 60-68, 72, 73, 86,
87. App. Br. 21. Therefore, the rejection of claims 58, 60-68, 72, 73, 86, 87
over the combined teachings of Krilanovich and Hansen is likewise
sustained.

The obviousness rejection over Hansen and Krilanovich
Regarding the rejection of claims 56, 59, 88, 90, and 91 as
unpatentable over Hansen and Krilanovich, we note that,
where a rejection is predicated on two references
each containing pertinent disclosure which has
been pointed out to the applicant, we deem it to be
of no significance, but merely a matter of
exposition, that the rejection is stated to be on A in
view of B instead of on B in view of A, or to term
one reference primary and the other secondary.
In re Bush, 296 F.2d 491, 496 (CCPA 1961). Therefore, we shall likewise
sustain the rejection of claims 56, 59, 88, 90, and 91 over Hansen and
Krilanovich.

Appeal 2009-011748
Application 10/610,545

7
The obviousness rejection over Krilanovich, Hansen, and Sakamoto
Independent claim 56 is drawn to “[a] transport system for the
transport of components between a plurality of stations.” App. Br., Claims
Appendix. Emphasis added. Claim 57 adds that the “the components
comprise vehicle bodies and the stations comprise production stations.” Id.
When we look at the preamble of Appellant’s claimed invention, we
note that a preamble will not usually limit the scope of the claim unless the
preamble provides antecedence for ensuing claim terms and limits the claim
accordingly. This is what the jurisprudence means by giving life, meaning
and vitality to the claims. If the body of a claim fully and intrinsically sets
forth all of the limitations of the claimed invention, and the preamble merely
states, for example, the purpose or intended use of the invention, rather than
any distinct definition of any of the claimed invention’s limitations, then the
preamble is not considered a limitation and is of no significance to claim
construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999). In this instance, there is no nexus between the
“vehicle bodies” and “production stations” --the intended use for the
transport system set out in the body of the claim--and any language in the
body of the claim. There is no structure that would limit the claimed
transport system to use in transporting “vehicle bodies” between a plurality
of “production stations.” The characteristics of the “vehicle bodies” and the
“production stations” are nowhere to be found in the claim. In this case, it is
clear that the body of the claim is a self-contained description of the subject
matter claimed. Hence, we find that the claimed “vehicle bodies” and
“production stations” do not result in any structural difference of the claimed
transport system. In conclusion, for the foregoing reasons, the rejection of
Appeal 2009-011748
Application 10/610,545

8
claim 57 over the combined teachings of Krilanovich, Hansen, and
Sakamoto is sustained.
Appellant does not present any arguments for the rejection of claim 93
separate from the arguments presented with respect to the rejection of claim
57. See App. Br. 33. Therefore, we shall also sustain the rejection of claim
93.

SUMMARY
The decision of the Examiner to reject claims 56-68, 72, 73, 86-88,
90, 91, 93, and 94 is affirmed.
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

mls