JOSEPH VOEGELE AG

Patent Trials and Appeals Board

Nov 2, 2021

2021003725 (P.T.A.B. Nov. 2, 2021)

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.
16/043,885 07/24/2018 Ingo HERZBERG JOVO0163PUSA 1074
22045 7590 11/02/2021
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
ROERSMA, ANDREW MARK
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
11/02/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INGO HERZBERG, DENNIS HANFLAND, JENS HOLFELDER,
and CHRISTIAN JENEWEIN
Appeal 2021-003725
Application 16/043,885
Technology Center 3600
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
CARL M. DEFRANCO, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–17, 19–23, and 25. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing in accordance with
37 C.F.R. § 41.47 was held on October 18, 2021.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as JOSEPH
VOEGELE AG. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a container for storing and
providing at least one modular road paver assembly designed for detachable
mounting on a road paver.” Spec. ¶ 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. A modular road paver assembly storage arrangement for use
with a road paver, the arrangement comprising:
individual components of a modular road paver assembly
configured to be detachably mounted on the road paver; and
a container configured to store and provide the individual
components of the modular road paver assembly, the container
comprising a storage system configured to position the
individual components of the modular road paver assembly
within the container in a standardized arrangement that is based
on a predetermined assembly sequence of the individual
components on the road paver, wherein the standardized
arrangement is configured to be checked for completeness of
the individual components by an operator by a visual inspection
along a sequence determined between opposite boundaries of
the container in view of the assembly sequence of the
individual components on the road paver, wherein the storage
system defines the standardized arrangement based on a
removal order of the individual components from the container
according to the assembly sequence, and wherein the storage
system positions the individual components of the road paver
assembly one above the other in ascending or descending
direction in view of their assembly sequence for removal.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Gibstein US 4,332,007 May 25, 1982
Canfield US 5,032,957 July 16, 1991
Haenszel US 6,123,208 Sept. 26, 2000
Rosenfeldt US 6,598,756 B1 July 29, 2003
Dick US 2005/0016943 A1 Jan. 27, 2005
Olivier US 2015/0090681 A1 Apr. 2, 2015
Coats US 9,051,696 B1 June 9, 2015
Elliott GB 1,069,122 A May 17, 1967
Mora2 FR 2 625 519 July 7, 1989
Kaiser3 EP 1 375 318 A2 Jan. 2, 2004
Gao4 CN 205874927 U Jan. 11, 2017
REJECTIONS
Claims 1, 3–6, 8–10, 15, 17, 19–23, and 25 stand rejected under
35 U.S.C. § 103 as being unpatentable over Rosenfeldt, Coats, and Dick.
Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Rosenfeldt, Coats, Dick, and Olivier.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Rosenfeldt, Coats, Dick, and Haenszel.
Claims 10, 13, and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Rosenfeldt, Coats, Dick, and Elliott.

2 A machine-generated English-language translation of this reference is
available in the electronic record of the present application.
3 A machine-generated English-language translation (hereinafter “Kaiser
Transl.”) of this reference is available in the electronic record of the present
application.
4 A machine-generated English-language translation of this reference is
available in the electronic record of the present application.
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Claim 16 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Rosenfeldt, Coats, Dick, Canfield, and Gibstein.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Rosenfeldt, Coats, Dick, and Kaiser.
Claim 25 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Rosenfeldt, Coats, Dick, Mora, and Gao.
OPINION
Obviousness—Rosenfeldt, Coats, and Dick
Each of Appellant’s independent claims 1, 17, 20, and 25 recites “[a]
modular road paver assembly storage arrangement” comprising:
(1) individual components of a modular road paver assembly (or sub-
assembly)5 configured to be detachably mounted on the road paver, and (2) a
container comprising a storage system by which the individual components
are positioned within the container in a standardized arrangement based on a
removal order of the components according to an assembly sequence.
Claims App. 1, 3–5. Claim 21 recites a method of storing individual
components of a modular road paver assembly in a container having a
storage system by which the components are positioned within the container
in a standardized arrangement based on a removal order of the components
according to an assembly sequence, transporting the container to a
construction site, removing the components from the container, and
mounting the components on a road paver. Claims App. 4.

5 For example, claim 17 recites “individual components of a modular
measuring beam device configured to be detachably mounted on the road
paver.” Claims App. 3.
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The Examiner finds that Rosenfeldt discloses a container comprising a
storage system configured to position and receive individual components
within the container in a standardized arrangement. Final Act. 3. However,
the Examiner does not find that Rosenfeldt’s storage system is configured to
position and receive individual components of a modular road paver
assembly in a standardized arrangement based on a removal order of the
components according to an assembly sequence. See Final Act. 3.
The Examiner relies on Coats for its teachings regarding modular
components (accessories) that are attachable to an accessory mount of a
modular framework of a paving apparatus. Final Act. 3. The Examiner
relies on Dick for its teachings regarding work stations comprising tool
holders and tool markers for tools, wherein the work stations are
reconfigurable to “optimiz[e] the configuration based on the order of tool
use in a given project.” Final Act. 4 (citing Dick ¶ 15). The Examiner finds
that Dick’s labels “allow for rapid visual inspection to determine if a
particular tool is missing” and “that the organization system is designed to
increase efficiency.” Final Act. 4 (citing Dick ¶¶ 1–5).
The Examiner determines it would have been obvious to adapt
Rosenfeldt’s container for holding Coats’s accessories as a combination of
prior art elements according to known methods yielding predictable results.
Final Act. 4. According to the Examiner, such a modification would have
been “obvious as an alternative use of the box (alternative to holding motor
vehicle panels).” Final Act. 4. The Examiner reasons that “one of ordinary
skill in the art would be led to adapt the stillage and dunnage inside
[Rosenfeldt’s] box so as to appropriately support and cushion whatever is
being held in the box” and that putting Coats’s accessories inside
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Rosenfeldt’s box “according to Dick’s idea of storing tools according to
their order of use (and thereby improving efficiency) fits together like pieces
of a puzzle.” Final Act. 4.
Appellant contends that “Rosenfeldt appears to teach away from a box
that is configured to store individual components of a modular assembly.”
Appeal Br. 6. More specifically, Appellant argues that Rosenfeldt discloses
storing a plurality of the same type of panel side-by-side in a storage box
and that modifying Rosenfeldt’s box to receive different components of a
modular assembly, such as individual components of a modular road paver
assembly, would change Rosenfeldt’s principle of operation and make the
box unsatisfactory for its intended purpose. Appeal Br. 7. Although
Haenszel lends some support to Appellant’s position that Rosenfeldt’s box,
and particularly its stillage, is specifically configured, and is typically used,
to accommodate a plurality of identical parts,6 we, like the Examiner, find
no specific disclosure in Rosenfeldt that “all the panels stored in the box . . .
must be of the same type.” Ans. 4 (emphasis added). More particularly,
Appellant does not point to, nor do we find, any teaching by Rosenfeldt that
criticizes, disparages, or otherwise discourages adapting Rosenfeldt’s box
and stillage racks to receive a plurality of different components, such as
individual components of a modular assembly, so as to constitute a teaching
away from the proposed modification.7 Further, as the Examiner correctly

6 See Haenszel 1:17–24 (teaching that racks such as those disclosed by
Rosenfeldt “are customized to carry a plurality of finished parts or
sub-assemblies” and that “[a] single rack is typically loaded with a plurality
of identical parts”).
7 A reference teaches away from a claimed invention if “a person of ordinary
skill, upon reading the reference, would be discouraged from following the
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points out, Rosenfeldt discloses that its invention “relates to a reusable
knock down stillage box” for use “in the transportation of goods . . . [i]n
order to protect and secure the parts within the erected box.” Rosenfeldt
1:5–10; see Ans. 4 (stating that “the proposed modification of Rosenfeldt’s
box . . . does not change the principle [of] operation of the box . . . or render
the box . . . unsatisfactory for its intended purpose” of serving as “a reusable
knock down stillage box that protects the contents thereof”).
Nonetheless, for the reasons that follow, we agree with Appellant that
the Examiner does not set forth the requisite factual findings and reasoning
to establish a sustainable case that Rosenfeldt, Coats, and Dick render
obvious the subject matter of Appellant’s claims. See Appeal Br. 7; Reply
Br. 4. More specifically, the Examiner fails to articulate sufficient factual
findings and reasoning to establish that it would have been obvious to
modify Rosenfeldt’s box and/or stillage racks to provide a storage system by
which the individual components of a modular road paver assembly (or sub-
assembly) are positioned within the container in a standardized arrangement
based on a removal order of the components according to an assembly
sequence.
Coats emphasizes maximizing versatility in modularly configuring
and re-configuring a paving operations system “in the field from a selection
of prefabricated components.” Coats 10:63–66; see also Coats 1:16–20
(characterizing the invention as being directed to “paving machines with
component/assembly modularity for ease of manufacture, improved user

path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kubin, 561 F.3d 1351, 1357
(Fed. Cir. 2009) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
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reconfigurability, and improved transportability”); Coats 2:19–20
(describing “[a] paving operations system . . . assembled from a selection of
modular components and accessories [to] accommodate a diverse range of
functionalities through a single base apparatus”). Coats does not imply any
standardized or established assembly sequence of accessories and, in fact,
suggests exactly the opposite, namely, providing a variety of different
accessories from which to select in the field to configure and re-configure
the paving machine as desired. Thus, absent impermissible hindsight, it is
not apparent, and the Examiner does not cogently explain, why it would
have been obvious to a person of ordinary skill in the art to package the
modular accessories in a standardized arrangement based on a removal
order of the components according to an assembly sequence, as claimed.
The Examiner’s application of Dick does not make up for the
deficiency in the combination of Rosenfeldt and Coats. Dick teaches
reconfiguring “work station resources such as tools, jigs, component parts,
and kitted assembly components according to principals of motion
efficiency, process refinement[,] and continuous improvement.” Dick ¶ 1.
Dick further teaches organizing the work station such that frequently used
tools are placed closer to a worker than tools used less frequently, and
placing tools commonly used together or used in a particular order near one
another and/or in sequence. Dick ¶ 2. Dick contains no specific teachings
directed to assembling components in an assembly sequence and does not
specifically teach organizing components to be assembled according to an
assembly sequence. However, even if one of ordinary skill in the art were to
apply Dick’s teachings directed to organizing tools used in a particular order
in sequence according to their order of use more broadly to organizing
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components of a modular assembly according to their assembly sequence, it
is not clear how this would have led to the claimed invention. More
specifically, in light of Coats’s teachings of providing a plurality of different
accessories from which to select in the field in order to maximize versatility,
it is not clear why the person of ordinary skill in the art would have been
prompted to organize accessories for a road paving machine in a container in
a standardized arrangement based on a removal order according to an
assembly sequence.
For the above reasons, we do not sustain the rejection of independent
claims 1, 17, 20, 21, and 25, or of dependent claims 3–6, 8–10, 15, 19, 22,
and 23, as being unpatentable over Rosenfeldt, Coats, and Dick.
Obviousness—Rosenfeldt, Coats, and Dick in view of one or more of Olivier,
Haenszel, Elliott, Canfield, Gibstein, Kaiser, Mora, and Gao
In rejecting claim 7, which depends from claim 1 (Claims App. 2), the
Examiner relies on Olivier for clamps. See Final Act. 17–18. In applying
Olivier, the Examiner does not articulate any additional findings or
reasoning that would make up for the aforementioned deficiency in the
combination of Rosenfeldt, Coats, and Dick. See Final Act. 17–18.
Accordingly, we do not sustain the rejection of claim 7 as being
unpatentable over Rosenfeldt, Coats, Dick, and Olivier.
In rejecting claims 11 and 12, which depend from claim 1 (Claims
App. 2), the Examiner relies on Haenszel for adjustability, and does not
articulate any findings or reasoning that would cure the aforementioned
deficiency in the combination of Rosenfeldt, Coats, and Dick. See Final
Act. 18–19. Accordingly, we do not sustain the rejection of claims 11 and
12 as being unpatentable over Rosenfeldt, Coats, Dick, and Haenszel.
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In rejecting claims 10, 13, and 14, which depend from claim 1
(Claims App. 2), the Examiner relies on Elliott for teachings directed to the
connection of the roof to the box, and does not articulate any findings or
reasoning that would remedy the aforementioned deficiency in the
combination of Rosenfeldt, Coats, and Dick. See Final Act. 19–20.
Accordingly, we do not sustain the rejection of claims 10, 13, and 14 as
being unpatentable over Rosenfeldt, Coats, Dick, and Elliot.
In rejecting claim 16, which depends from claim 1 (Claims App. 3),
the Examiner relies on Canfield as evidence that it was known to apply a
light to a cabinet, and on Gibstein for a teaching to attach a utility light to a
structure. Final Act. 20. The Examiner does not articulate any findings or
reasoning that would remedy the aforementioned deficiency in the
combination of Rosenfeldt, Coats, and Dick. See Final Act. 20.
Accordingly, we do not sustain the rejection of claim 16 as being
unpatentable over Rosenfeldt, Coats, Dick, Canfield, and Gibstein.
The Examiner sets forth an alternative rejection of independent
claim 21 and its dependent claim 22, based on a combination of Rosenfeldt,
Coats, and Dick, as discussed above, and further in view of Kaiser. See
Final Act. 20–21. Kaiser appears pertinent to the subject matter of
Appellant’s claims, in that it teaches organizing/positioning components,
which are to be assembled onto a trailer, on a rack in positions
corresponding to the positions in which the components will be mounted to
the trailer, so that the components will be already in an appropriate position,
delivering the racks (in stacks) to a trailer manufacturer, and removing the
components in the course of the product manufacturing. See Kaiser Transl.
¶¶ 1, 4, 19, 20. The rack is placed under a chassis of a trailer vehicle, so that
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“the components are precisely aligned and can be combined with a minimum
of assembly work with the chassis.” Kaiser Transl. ¶ 4. However, it is not
readily apparent, and the Examiner does not cogently explain, why a person
having ordinary skill in the art would have been prompted, in view of the
additional teachings of Kaiser in combination with those of Rosenfeldt,
Coats, and Dick, to position individual components of a modular road paver
assembly, such as the accessories of Coats, in a storage system within a
container, in a standardized arrangement that is based on a removal order
according to an assembly sequence, especially given Coats’s teaching of
providing a plurality of prefabricated components from which to select in the
field to be mounted on a paving operations system in order to maximize
versatility. See Final Act. 21 (stating that “Kaiser provides further evidence
of the obviousness of organizing Rosenfeldt’s box . . . based on an assembly
sequence of Coats’[s] accessories . . . , in that Kaiser is particularly drawn to
organizing a support to facilitate assembly of the parts on said support”). As
discussed above, Coats does not suggest or imply any standardized
arrangement or order of assembly for accessories for a road paving machine.
Thus, we do not sustain the rejection of claims 21 and 22 as being
unpatentable over Rosenfeldt, Coats, Dick, and Kaiser.
The Examiner sets forth an alternative rejection of independent claim
25 based on a combination of Rosenfeldt, Coats, and Dick, as discussed
above, and further in view of Mora and Gao. See Final Act. 21–22. The
Examiner relies on Mora for its teaching of “a distribution screw 4
(‘spreading auger module’) for widening of material transport (mixer 2
and/or tank 3) in front of a ‘finisher-type’ table 5 (‘a screed of the road
paver’)” and on Gao for its teaching of “two screeds 7 and 9 behind two
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augers 6 and 8.” Final Act. 21–22 (citing Mora, Figs. 1–2; Gao, Fig. 1).
The Examiner determines it would have been obvious to store a plurality of
Mora’s screws and/or Gao’s augers in Rosenfeldt’s box as a combination of
prior art elements according to known methods yielding predictable results.
Final Act. 22. The Examiner does not articulate any findings or reasoning
that would remedy the aforementioned shortcomings of the combination of
Rosenfeldt, Coats, and Dick. Accordingly, we do not sustain the rejection of
claim 25 as being unpatentable over Rosenfeldt, Coats, Dick, Mora, and
Gao.
CONCLUSION
The Examiner’s rejections of claims 1, 3–17, 19–23, and 25 are
REVERSED.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–6, 8–
10, 15, 17,
19–23, 25
103 Rosenfeldt, Coats,
Dick
1, 3–6, 8–
10, 15, 17,
19–23, 25
7 103 Rosenfeldt, Coats,
Dick, Olivier
7
11, 12 103 Rosenfeldt, Coats,
Dick, Haenszel
11, 12
10, 13, 14 103 Rosenfeldt, Coats,
Dick, Elliott
10, 13, 14
16 103 Rosenfeldt, Coats,
Dick, Canfield,
Gibstein
16
21, 22 103 Rosenfeldt, Coats,
Dick, Kaiser
21, 22
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25 103 Rosenfeldt, Coats,
Dick, Mora, Gao
25
Overall
Outcome
1, 3–17, 19–
23, 25

REVERSED