Ex Parte Zeller

Board of Patent Appeals and Interferences

May 28, 2009

10823113 (B.P.A.I. May. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRUCE K. ZELLER
____________

Appeal 2009-3405
Application 10/823,113
Technology Center 3600
____________

Decided1: May 28, 2009
____________

Before LINDA E. HORNER, DANIEL S. SONG, and
FRED A. SILVERBERG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of claims 22-27. Claims 1-8 have been canceled, and claims 9-21 have been
withdrawn from consideration. We have jurisdiction over this appeal under
35 U.S.C. § 6(b) (2002).
The claimed invention is directed to a frame for separating excavated
material, the frame including a grate rigidly secured to, and extending from,
vertical bar members to a front wall (Spec. ¶¶ [0025], [0026]; fig. 1).
Independent claims 22 and 25 are representative of the claimed
invention and read as follows (App. Br., Claims App’x.; emphasis added):
22. A frame for separating excavated material comprising:
a base having a front wall and two horizontal side bars
extending backward from opposite sides of a bottom of said
front wall;
at least one vertical bar member extending vertically
upward from a top of each of said horizontal side bars at an end
of said horizontal side bars opposite said front wall; and
a grate rigidly secured to, and extending from, a top of
said vertical bar members to a top of said front wall such that
said grate forms less than a ninety degree angle relative to a
ground surface.

25. A frame for separating excavated material comprising:
a base having a front wall and two side walls;
at least one bar member extending vertically upward
from each of said side walls; and
a grate rigidly secured to, and extending from, a top of
said bar members to a top of said front wall such that said grate
forms less than a ninety degree angle relative to a ground
surface.

The Examiner relies upon the following as evidence of
unpatentability:
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Wall US 1,005,907 Oct. 17, 1911
Nierop US 2004/0020830 A1 Feb. 5, 2004
(filed Jul. 31, 2002)

The Examiner rejected claims 22, 24-25, and 27 under 35 U.S.C.
§ 102(e) as anticipated by Nierop.
The Examiner rejected claims 23 and 262 under 35 U.S.C. § 103(a) as
unpatentable over Nierop and Wall.3
We REVERSE.

ISSUES
1. Has the Appellant shown that the Examiner erred in finding that
Nierop describes a grate rigidly secured to, and extending from, the top of
the vertical bar members to a top of the front wall as recited in independent
claims 22 and 25?
2. Has the Appellant shown that the Examiner erred in concluding
that it would have been obvious to one of ordinary skill in the art to combine

2 Dependent claim 26 erroneously depends from itself. It appears that claim
26 should depend from independent claim 25 since claim 26 follows claim
25 and further defines a limitation (“side wall”) found only in claim 25 (37
C.F.R. § 1.175(f)). Therefore, claim 26 has been treated as being dependent
on claim 25 in this appeal. This error should be corrected in any future
prosecution.
3 The following rejections have been withdrawn by the Examiner:
1. The rejection of claims 25-27 under the judicially created doctrine
of obviousness-type double patenting as unpatentable over claims
1-3 of U.S. Patent No. 6,863,182; and
2. The rejection of claims 22 and 25 under 35 U.S.C. § 102(b) as
anticipated by Bane (US 359,659).
(Ans. 2-3).
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the teachings of Nierop and Wall to result in the invention of claims 23 and
26?
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Nierop describes a soil screening device with an upper
screen frame member 16a that is pivotally mounted, by means
of hinges 18, to an upper cross bar 20a (¶ [0016]; fig. 2).
2. Nierop further describes “[t]he screen frame is pivotally
mounted to a first upper member mounted at an upper end of
the uprights, for pivoting between a lowered position and an
elevated position” (¶ [0005]).
3. Wall describes an ore screening device where “upper and
lower bars b2, b, are braced together by the inclined braces b4”,
and the upper bars b2 are supported by the uprights b3 (p. 1, ll.
31-41; fig. 1).

PRINCIPLES OF LAW
Anticipation under 35 U.S.C. § 102 is a question of fact. Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). A claim is anticipated only if
each and every element as set forth in the claim is found, either expressly or
inherently described in a single prior art reference. Verdegaal Bros. Inc. v.
Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. Oetiker, 977 F.2d at 1445.
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
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ANALYSIS
Initially, the Appellant argues that his claim to priority presented by
way of (1) Preliminary Amendment filed on April 13, 2004, and (2)
Amendment and Response to Office Action filed on September 18, 2006,
disqualifies Nierop as prior art (App. Br. 7; Reply Br. 2-3). The Appellant
requests that the Board find that his priority claim is properly perfected
(Reply Br. 3). However, as correctly noted by the Examiner (Ans. 2),
whether the Appellant has properly perfected his priority claim is reviewable
by petition under 37 C.F.R. § 1.181. Such issues are not within the
jurisdiction of the Board. See In re Mindick, 371 F.2d 892, 894 (CCPA
1967). Accordingly, this issue can not be treated in this appeal.

Anticipation rejection over Nierop
Turning to the substantive arguments, the Appellant argues that
Nierop does not describe a grate rigidly secured to, and extending from, the
top of the vertical bar members to a top of the front wall, as set forth in
independent claims 22 and 25 (App. Br. 7). In support of this argument, the
Appellant proffers several dictionary definitions for the term “rigidly” which
include “deficient in or devoid of flexibility,” “stiff or unyielding; not pliant
or flexible; hard,” and “firmly fixed or set” (Reply Br. 3, Exhibit C).
According to the Appellant, in light of the proffered dictionary definitions,
the limitation “rigidly” in the claims require “a grate that is inflexible and
firmly fixed or set to a top of the vertical bar members and to a top of the
front wall” (Reply Br. 3).
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The Examiner’s position is that Nierop discloses a rigidly secured
grate member that satisfies the limitations of independent claims 22 and 25
because:
…Nierop teaches the grate member (14) firmly seated on a rigid
frame (Fig. 1, 2; para. 16 teaching rigid frame members 16, 20,
30). As prior art is interpreted as broadly as reason allows, it is
not unreasonable to regard the grate member as firmly secured
as Nierop teaches that the surrounding frame structure is rigid
and the device itself relies on the grate being rigidly held during
screening (para. 15 [sic] teaching a rigid screen mounted on top
of a rigid support frame). In view of Nierop’s express
teachings, the use of a hinge connection to connect a top
portion of the grate can be simply be regarded as another means
that assists in forming a rigidly secure connection.
(Ans. 6).

Thus, the Examiner finds that Nierop’s “upper screen frame member
16a pivotally mounted, by means of hinges 18 to an upper cross bar 20a”
satisfies the claimed frame apparatus.
The Examiner is correct that during prosecution, claims are to be
given their broadest reasonable construction in light of the Specification as it
would be interpreted by one of ordinary skill in the art. See In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d at 1364. However, for the reasons that follow,
we find the Examiner’s construction of the limitation “rigidly” to be
unreasonable.
While we acknowledge that the individual components of the frame of
Nierop may be considered to be “rigid” in that they are not flexible, the
claims require the securement of the grate to be rigid. Thus, we construe the
limitation “rigidly secured to” to mean that the recited securement must
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result in a grate that is immovable and fixed, which is consistent with the
definitions of “rigid” proffered by the Appellant.
In particular, considering the Appellant’s Specification, the following
disclosure is relevant:
The frame member 10 is preferably comprised of a rigid and durable
metal such as, but not limited to, steel and the like. All elements
which comprise the frame member 10 are welded together to ensure
the integrity of the structure which comprises frame member 10.
(Spec. ¶ [0026]).
Hence, our construction of the limitation “rigidly secured to” is consistent
with the Specification’s description of the claimed invention. Therefore, we
find the Examiner’s construction of the limitation “rigidly” to encompass a
pivotably hinged connection to be unreasonable.
Although Nierop’s hinge 18 does not allow separation of the upper
screen frame member 16a from the surrounding frame structure, it does
allow substantial movement thereof which is the purpose of the hinge.
Hence, Nierop does not describe a grate that is rigidly secured as recited in
claims 22 and 25, i.e., an immovably fixed grate.
In view of the above, because Nierop does not describe all the
elements of independent claims 22 and 25, the Examiner’s rejection of
claims 22, 24-25, and 27 as anticipated by Nierop is not sustained.

Obviousness rejection over Nierop and Wall
The Examiner rejected claims 23 and 26 as obvious over the
combination of Nierop and Wall. The Examiner’s rejection is based on the
finding that Nierop describes all of the claimed limitations except for the
support bar “extending from a top of each of said horizontal side walls to a
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mid-length of the grate on opposite sides of said grate” for which Wall is
relied upon (Ans. 5).
However, the Examiner’s application of Wall does not cure the
deficiency of Nierop discussed supra relative to independent claims 22 and
25 from which claims 23 and 26 respectively depend. Therefore, the
Examiner’s obviousness rejection as set forth in the Answer is not sustained.

CONCLUSIONS
1. The Appellant has shown that the Examiner erred in finding
that Nierop describes a grate rigidly secured to and extending from the top of
the vertical bar members to a top of the front wall as recited in independent
claims 22 and 25.
2. The Examiner’s application of Wall to Nierop does not cure the
noted deficiencies of Nierop.

DECISION
1. The Examiner’s rejection of claims 22, 24-25, and 27 under 35
U.S.C. § 102(e) as anticipated by Nierop is REVERSED.
2. The Examiner’s rejection of claims 23 and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Nierop and Wall is REVERSED.

REVERSED

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