12290247 (P.T.A.B. Jan. 29, 2016)

Ex Parte Willim

Patent Trial and Appeal BoardJan 29, 2016

12290247 (P.T.A.B. Jan. 29, 2016)

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. 12/290,247 10/29/2008 Hans-Dieter Willim 298-429 8664 28249 7590 01/29/2016 DILWORTH & BARRESE, LLP Dilworth & Barrese, LLP 1000 WOODBURY ROAD SUITE 405 WOODBURY, NY 11797 EXAMINER CAMPOS, JR, JUAN J ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 01/29/2016 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 HANS-DIETER WILLIM ____________ Appeal 2014-000609 Application 12/290,2471 Technology Center 3600 ____________ Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hans-Dieter Willim (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1–7 and 11–24. Claims 8–10 have been canceled. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. 1 According to Appellant, the real party in interest is Liebherr-Werk Ehingen GmbH. Br. 1 (filed May 16, 2013). Appeal 2014-000609 Application 12/290,247 2 INVENTION Appellant’s invention relates “to a method for erecting a main boom of a truck crane, which at least consists of a telescopic boom, with a fly jib which is braced via bracing trestles and bracing rods, and with a spatial boom bracing.” Spec. 1, ll. 5–7.2 Claims 1 and 21 are independent. Independent claim 1 is illustrative of the claimed invention and reads as follows: 1. A method for erecting a main boom of a truck crane, comprising a longitudinally extending telescopic boom and one or more luffing cylinders for erecting the main boom, and, a fly jib which is braced via bracing trestles and bracing rods, and a Y-shaped spatial boom bracing connected to the telescopic boom and extending laterally outward therefrom out of the plane of the luffing movement, wherein the fly jib is pivotally connected to a detachable foot piece, said foot piece being pivotally connected to the main boom, said method including completely connecting the fly jib to the foot piece at one or more bolting points to fixedly attach the fly jib to the foot piece and prevent relative movement therebetween, wherein the main boom is braced by the spatial bracing before being completely connected with the fly jib. THE REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1, 2, and 21–24 under 35 U.S.C. §103(a) as being unpatentable over Oishi (JP 10-194676, pub. July 28, 1998) and Willim (US 2006/0096940 A1, pub. May 11, 2006). 3 2 References to the Specification refer to the Substitute Specification filed January 26, 2009. 3 Claims 23 and 24 are indicated as being rejected, but their rejection is not expanded upon. See Final Act 1–2. We consider the Examiner’s Appeal 2014-000609 Application 12/290,247 3 II. The Examiner rejected claims 3, 4, 11, and 12 under 35 U.S.C. §103(a) as being unpatentable over Oishi, Willim, and Diehl (US 2006/0065616 A1, pub. Mar. 30, 2006). III. The Examiner rejected claims 5 and 13 under 35 U.S.C. §103(a) as being unpatentable over Oishi, Willim, Diehl, and Erdmann (US 6,062,404, iss. May 16, 2000). IV. The Examiner rejected claims 6, 7, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Oishi, Willim, and Amitani (JP 8-295490, pub. Nov. 12, 1996. V. The Examiner rejected claims 14 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Oishi, Willim, Diehl, Erdmann, and Amitani. VI. The Examiner rejected claims 15, 16, 18, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Oishi, Willim, Diehl, and Amitani. ANALYSIS Rejection I The Examiner’s position is that it would have been obvious to a person of ordinary skill in this art to “modify the device of Oishi by incorporating the Y-shaped spatial boom guying of Willim with the spatial boom guying of Oishi.” Final Act. 2. The Examiner concludes that following “the teaching of Willim of using a spatial boom guying to support a guy wire, [] provide[s] a mechanical advantage when erecting the crane, and/or [] increase[s] the crane load.” Id. In the Examiner’s Answer, the Examiner clarifies that the “103(a) rejection (in view of Willim) omission of claims 23 and 24 as a typographical error, and thus group these claims with independent claim 21, from which they depend. Appeal 2014-000609 Application 12/290,247 4 incorporates (such as by adding) the Y-shaped spatial boom bracing to the guying of Oishi.” Ans. 6.4 Appellant argues that “there is no motivation provided by the cited prior art references for their combination as suggested by the Examiner.” Br. 13. Appellant asserts that “if there is any motivation in combining the teaching of Willim with another reference it would be for the articulation jib 20 not the spatial boom bracing 16.” Id. at 14. Appellant thus argues that, “[o]utside of the impermissible use of Appellant’s own disclosure nothing in Oishi or Willim suggests the need or desirability of incorporation [of] spatial boom bracing in the device of Oishi.” Id. We agree with Appellant that the Examiner’s conclusion that Willim’s spatial bracing 16 provides a mechanical advantage when erecting the crane and/or increases the crane load (see Ans. 3) is not supported by facts, because it is Willim’s articulation jib that increases working loads (see Willim, ¶¶ 6–7) and has advantageous levering ratios (see id. ¶ 10). Specifically, Willim discloses that the articulation jib is “arranged on an upper side of the boom remote from the crane load hook so that the bending moment induced via the articulation jib counters a moment in the boom generated by the hook load and the boom’s own weight in a favorable manner.” Id. ¶ 6. Willim also discloses that a pulley guides a hoist rope “such that a hoist rope force likewise induces a bending moment into the crane boom via the articulation jib,” and that this “counter-moment can further reduce the sagging of the boom and thus permit even higher working 4 The pages of Examiner’s Answer are not correctly numbered. For ease of referring, we have assigned page numbers 1 through 8 to the Examiner’s Answer. Appeal 2014-000609 Application 12/290,247 5 loads.” Id. ¶ 7. Moreover, according to Willim, “the articulation jib has a height which is greater than the cross-section of the boom part at which the articulation jib is secured,” and “[d]imensioning [the articulation jib] in the recited range will, however, bring along advantageous levering ratios for ma[n]y crane geometries.” Id. ¶ 10. As such, because Willim fails to disclose that the use of the Y-shaped spatial boom provides a mechanical advantage and/or increases the crane load (see Ans. 3), as the Examiner proposes, the Examiner’s legal conclusion of obviousness is not supported by evidence and, thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand.”). In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of claims 1, 2, and 21–24 as unpatentable over Oishi and Willim. Rejections II–VI The use of the disclosures of Diehl, Erdmann, and Amitami in the various combinations presented by the Examiner does not remedy the deficiencies of the combined teachings of Oishi and Willim as discussed supra. See Final Act. 3–4. Accordingly, for the same reasons as discussed above, we do not sustain the rejections under 35 U.S.C. § 103(a) of claims 3, 4, 11, and 12 as unpatentable over Oishi, Willim, and Diehl; of claims 5 and 13 as unpatentable over Oishi, Willim, Diehl, and Erdmann; of claims 6, 7, and 20 as unpatentable over Oishi, Willim, and Amitani; of claims 14 and 17 as unpatentable over Oishi, Willim, Diehl, Erdmann, and Amitani; and of Appeal 2014-000609 Application 12/290,247 6 claims 15, 16, 18, and 19 as unpatentable over Oishi, Willim, Diehl, and Amitani. SUMMARY The decision of the Examiner to reject claims 1–7 and 11–24 is reversed. REVERSED rvb