Ex Parte 6,922,926 et al

Patent Trial and Appeal Board

Aug 28, 2013

95001443 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,443 09/10/2010 6,922,926 96172.000005 7956
23387 7590 08/28/2013
Brian B. Shaw, Esq.
Harter Secrest & Emery LLP
1600 Bausch & Lomb Place
Rochester, NY 14604-2711
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/28/2013 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
____________________

CATERPILLAR INC.
Requester, Respondent

v.

MILLER UK LIMITED1
Patent Owner, Appellant,
____________________

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Technology Center 3900
____________________

Before JOHN C. KERINS, DANIEL S. SONG and
MICHAEL L. HOELTER, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1 Miller UK Limited is the Patent Owner and the real party in interest
(Appeal Brief (hereinafter "App. Br.") 4).
2 Patent US 6,922,926 B2 (hereinafter "'926 patent") issued Aug. 2, 2005 to
Miller et al.
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STATEMENT OF THE CASE
Claims 1-36 are subject to reexamination and stand rejected (App. Br.
4). The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315 from the
Examiner's rejections of the claims (App. Br. 4). The Requester does not
submit a cross-appeal as to any proposed rejections not adopted by the
Examiner. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We AFFIRM-IN-PART.

THE INVENTION
The '926 patent is directed to a coupling device for securing excavator
buckets. Representative independent claim 1 and dependent claims 29 and
30 read as follows (App. Br., Claims App'x, italics and paragraphing added):
1. A coupler to enable an excavator operator to couple an
excavator bucket to a dipper arm of an excavator while in his
cab, the coupler including
a pair of spaced side frames and being mountable upon or
having means by means of which it can be coupled to the
dipper arm of the excavator,
a first hook-like aperture in each side frame for
engagement with a first pivot pin provided on the excavator
bucket,
a power operated latching hook located between the side
frames and supported for pivoting relative to the frames and
operable by the operator from his cab for latching engagement
with a second pivot pin provided on the bucket once the first
hook-like aperture has been engaged with the first pivot pin,
a plurality of spaced apart apertures in each side flame
and a locking pin moveable from and into a plurality of locking
positions in the spaced apart apertures for accommodating
buckets having different pin spacings in which it prevents the
latching hook from being disengaged from the second pivot pin
on the bucket and
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wherein, in one of the locking positions the locking pin
engages a locking surface on an outer surface of the hook or an
extension thereof.

29. A coupler according to claim 1 in which the hook
comprises an aperture of an elongate arcuate construction
through which the locking pin can pass when the locking pin is
inserted between the first pair of spaced apertures, whereupon
relative movement between the hook and the side frames
becomes restricted.

30. A coupler according to claim 1 in which the hook
comprises an aperture through which the locking pin can pass
when the locking pin is inserted between the first pair of spaced
apertures, whereupon relative movement between the hook and
the side frames becomes restricted; and
for each different pivot pin spacing (D), only one pair of
spaced apertures in the side frames is aligned with either an
aperture or a locking surface of the hook whereby it is not
possible to insert the locking pin in a non-locking position.

REJECTIONS
The Examiner rejected various claims as follows (App. Br. 5-6):
1. Claims 1-5, 9-15, 21, 24 and 25 under 35 U.S.C. § 102 as
anticipated by McCann.3
2. Claims 22 and 23 under 35 U.S.C. § 103 as obvious over
McCann.
3. Claims 6-8, 16-20 and 26-28 under 35 U.S.C. § 103 as obvious
over McCann in view of Miller.4

3 EP Patent No. EP 0 769 590A2 issued Apr. 23, 1997 to McCann.
4 UK Patent No. GB 2 330 570 issued Apr. 28, 1999 to Miller.
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4. Claims 22-23 under 35 U.S.C. § 103 as obvious over McCann in
view of either Woodyard5 or Tibbatts.6
5. Claims 1-5, 9-15 and 21-25 under 35 U.S.C. § 103 as obvious
over McCann in view of Miller.
6. Claims 22 and 23 under 35 U.S.C. § 103 as obvious over McCann
in view of Miller and either Woodyard or Tibbatts.
7. Claims 1-7, 9-19, and 21-27 under 35 U.S.C. § 103 as obvious
over McCann in view of Balemi.7
8. Claims 22 and 23 under 35 U.S.C. § 103 as obvious over McCann
in view of Balemi and either Woodyard or Tibbatts.
9. Claims 21-25 under 35 U.S.C. § 103 as obvious over McCann in
view of Macmoter.8
10. Claims 22 and 23 under 35 U.S.C. § 103 as obvious over McCann
in view of Macmoter and either Woodyard or Tibbatts.
11. Claims 29 and 33 under 35 U.S.C. § 102 as anticipated by
McCann.
12. Claims 30-32 and 34-36 under 35 U.S.C. § 103 as obvious over
McCann.
13. Claims 31, 32, 35 and 36 under 35 U.S.C. § 103 as obvious over
McCann in view of either Woodyard or Tibbatts.

5 U.S. Patent No. 6,009,973 issued Jan. 4, 2000 to Woodyard.
6 U.S. Patent No. 5,141,385 issued Aug. 25, 1992 to Tibbatts et al.
7 U.S. Patent No. 5,082,389 issued Jan. 21, 1992 to Balemi.
8 German patent publication No. 93 19 362.9 to Macmoter and English
translation.
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ISSUES
1. Whether it would have been obvious to replace the spring
operated latching hook disclosed in Figure 5 of McCann with a power
operated latching hook.
2. Whether it would have been obvious to provide a power
operated latching hook that is operable by the operator from the cab in the
device of McCann.
3. Whether McCann discloses a locking pin that engages "a
locking surface on an outer surface of the hook, or an extension thereof."
4. Whether it would have been obvious to implement the holes of
the device of McCann so that only one pair of the spaced apertures in the
side frames is aligned with an aperture of the hook.
5. Whether it would have been obvious to implement the device of
McCann with two apertures on the hook, and apertures of the side frames
arranged in a triangular pattern.
6. Whether the Examiner erred in finding that McCann discloses a
hook comprising "an aperture of elongate arcuate construction."

PRINCIPLES OF LAW
Claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language 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). This
is the standard for claim interpretation in both original examination and re-
examination. See In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); see
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also In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007).
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," and also affirmed that "when a patent claims a structure already known
in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-16
(2007).

ANALYSIS
Preliminarily, we note that only those arguments actually made have
been considered and other arguments not made are deemed to be waived.
See 37 C.F.R. § 41.67(c)(1)(vii). In its Appeal Brief, the Patent Owner
presents specific arguments as to the patentability of particular claims under
corresponding claim headings so we address the Patent Owner's arguments
likewise. We further consider and address only those arguments pertinent to
the disposition of the present appeal, albeit in a slightly different order than
that presented.

Claim 1
Independent claim 1 stands rejected under Rejections 1, 5 and 7.
Rejection 1 is an anticipation rejection (RAN 2-4) while Rejections 5 and 7
are obviousness rejections (RAN 6-8). In each rejection, McCann is either
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the sole or the primary reference relied upon. We address the obviousness
rejections under Rejections 5 and 7, but do not reach Rejection 1.
The Patent Owner argues that the Examiner failed to make a prima
facie case of obviousness because McCann does not disclose replacing the
spring in the embodiment shown in Figure 5 of McCann with a hydraulic
actuator (as found by the Examiner in anticipation Rejection 1), and because
the Examiner has not asserted that it would have been obvious to replace the
spring with a hydraulic actuator (App. Br. 13-14). Hence, the Patent Owner
contends that even if McCann is combined with Miller or Balemi
(Rejections 5 and 7, respectively) in the manner suggested, the combination
still fails to show a power operated latching hook (App. Br. 14).
However, the Patent Owner's argument is unpersuasive because it
ignores the fact that the Examiner's obviousness rejections under Rejections
5 and 7 also incorporate by reference the obviousness rejections as proposed
by the Requester in the Request for Inter Partes Reexamination filed
September 10, 2010 (RAN 6 and 7). In particular, with respect to Rejection
5, the Examiner stated that "[a] detailed analysis as to how McCann in view
of Miller '570 pertains to claims 1-5, 9-15, and 21-25 is provided on pages
35-42 of the request and is herein incorporated by reference." (RAN 6). The
portion of the Request for Inter Partes Reexamination incorporated by
reference states, inter alia:
To the extent, if any, there were to be any question whether
McCann discloses "[a] coupler to enable an excavator operator
to couple an excavator bucket…while in his cab" and "a power
operated latching hook…operable by the operator from his cab"
in combination with the other elements in claim 1, it would
have been obvious to one of ordinary skill in the art to provide
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the coupler 70 of McCann in a form that would permit an
operator to couple a bucket while in his cab and to provide the
coupler 70 with a power operated latching hook operable by an
operator from his cab.

McCann discloses a structural arrangement that enables bucket
coupling/hook operation to be done while the excavator
operator is "in his cab," and that includes a power operated
hook. For example, McCann summarizes its inventive coupler
as having a closure member (hook) actuated "hydraulically" and
including "a double-acting piston and cylinder arrangement"
that actuates the closure member to couple the bucket to the
dipper arm (see, e.g., col. 2, lns. 15-20 and col. 2, ln. 56 to col.
3, ln. 1). Prior to the filing date of the '926 patent, such a
hydraulically-actuated coupling and a hydraulically actuated
closure member were conventionally operated from the cab of
an excavator. This is evidenced by the '926 patent itself, which
describes prior art and acknowledges that "it is more normal
now to provide a [coupler of] hydraulic type which can be
operated from the cab of the excavator." (emphasis added) ('926
patent, col. 1, lns. 27-29; see also '926 patent, col. 1, lns. 44-45
- "In the hydraulic version, a double acting hydraulic piston and
cylinder device moves the latching hook between its respective
positions... ."; see also '926 patent, Fig. 2, which is labeled
"Prior Art," and col. 3, lns. 52-58 - "In FIG. 2, a latching hook
17 forming part of the prior art coupler of FIG. 1 is shown, the
hook 17 being... biased to a latching position.., by means of a
piston and cylinder device, which is of course also used to
move the hook 17 to a release position.")
…
McCann also teaches substituting a double-acting
piston/cylinder assembly or another non-manual actuator in
place of a spring, such as the spring 82 urging hook 76 to a
latching position. For example, in the Summary of the
Invention, McCann states that: "Preferably also, the hitch
includes means for moving the closure member, which means
may be actuated manually, hydraulically, pneumatically,
electrically or by spring action. In a preferred embodiment, said
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moving means is in the form of a double-acting piston and
cylinder arrangement." (Col. 2, lns. 15-20; see also col. 2, ln. 56
to col. 3, ln. 1). McCann also states that "[t]he above
embodiments illustrates [sic] manual, spring- biassed [sic] and
hydraulic actuation, though of course other actuation
arrangements could be utilised, including other forms of manual
actuation and electrical actuation." (Col. 7, lns. 38-42).
McCann's description of non-manual actuators, including
hydraulic and electrical actuators, for the closure member
discloses a "power operated" latching hook.

UK Patent Application No. GB 2 330 570 ("Miller '570")
further teaches a coupler being provided with a power operated
hook, and it evidences the conventionality of a coupler and its
hook being operated in/from a cab. For example, Miller '570 at
p. 9, lns. 14-19 describes how a hydraulically actuated hook
"allows an excavator operator to change buckets without
leaving his cab."

Thus, McCann, Miller '570, and the admitted prior art in the
'926 patent evidence that it would have been obvious to one of
ordinary skill in the art to modify a coupler to a form that would
permit an operator to couple a bucket while in his cab and to
provide the coupler with a power operated latching hook
operable by an operator from his cab. As one of ordinary skill
in the art would have recognized, such modifications would be
advantageous because they would render a coupler more
reliable and easier to use without leaving a cab.

(Request for Inter Partes Reexamination, pgs. 35-37, emphasis in
original).

With respect to Rejection 7, the Examiner similarly incorporated by
reference pages 46-57 of the Request for Inter Partes Reexamination (RAN
7), the incorporated portions setting forth a similar obviousness analysis
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based on the combination of McCann in view of Balemi (see Request for
Inter Partes Reexamination, pgs. 46-57).
We agree with the Examiner and the Requester with respect to
Rejections 5 and 7 that it would have been obvious to one of ordinary skill in
the art to provide a power operated latching hook in the coupler of McCann
which is operable from the cab so that it is easy to use without leaving the
cab. McCann itself teaches or otherwise suggests the interchangeability of
actuation mechanisms (see McCann, col. 2, ll. 15-20; col. 2, l. 56 to col. 3, l.
1; col. 7, ll. 38-42). The '926 patent itself admits that provision of a power
operated latching hook which is operable from the cab were known in the art
(see '926 patent, col. 1, ll. 27-29, 44-45; col. 3, ll. 52-58; Fig. 2). The prior
art also demonstrates that the provision of power operated latching hook that
is operable from the cab was well known in the art (see Miller '570, p. 9, ll.
14-19; Balemi, col. 2, ll. 45-50).
As to the substance of the obviousness rejections, the Patent Owner
argues that it would not be obvious to replace the spring of Figure 5 of
McCann with a hydraulic actuator because the combination would produce
an inoperative device and would defeat the purpose of the deformable
bushing since the "operator would no longer be able to adjust the closure
member." (App. Br. 14-15). The Patent Owner also argues that "[t]he
presence of the resilient bushing is only justified in McCann by the
simultaneous presence of a manually actionable actuator, i.e., the springs
82," and replacing the spring with a hydraulic cylinder would cause the
embodiment to not work satisfactorily and would damage the bushing (App.
Br. 15).
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We find no reasonable basis for the Patent Owner's assertions. A
double-acting piston and cylinder arrangement is suggested in McCann as
being an appropriate substitute for a manually actuated spring mechanism
(col. 2, ll. 15-20; col. 2, ll. 56-col. 3, ll. 1; col. 7, ll. 38-42). In essence, this
substitution would automate a manual mechanism and obviate the manual
lever. The double-acting piston and cylinder arrangement can be operated
by the operator to not only close the closure member, but to also adjust the
closure member so as to deflect the rubber bushing and allow insertion of a
lock pin. The Patent Owner does not direct us to persuasive evidence or
present cogent explanation as to its assertions of inoperability or that such
combination would not be able to be used to adjust the closure member.
Therefore, in view of the above, we affirm the Examiner's rejection of
claim 1 under Grounds 5 and 7.

Claim 21
Independent claim 21 also stands rejected under Rejections 5 and 7.
The Patent Owner relies on the same arguments submitted with respect to
claim 1 for patentability (App. Br. 15-16). However, these arguments are
unpersuasive as discussed supra relative to claim 1.
The Patent Owner also asserts that the combination of McCann with
Miller or Bilemi "still does not render obvious at least the power operated
latching hook or the locking pin engaging a locking surface on an outer
surface of the hook, or an extension thereof, and the Examiner has made no
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assertion that such features would have been obvious." (App. Br. 16).9
However, as discussed supra, we agree with the Examiner that providing a
power operated latching hook in the device of McCann would have been
obvious to one of ordinary skill in the art.
With respect to the limitation directed to the locking pin and a locking
surface, by maintaining the anticipation rejection of claims 1 and 21 based
on McCann alone (Rejection 1), the Examiner's position is that this
limitation is disclosed in McCann. As discussed infra, we agree that this
limitation is disclosed in McCann and find the Patent Owner's assertions to
the contrary unpersuasive because they are based on an unduly narrow claim
interpretation.
In particular, in construing claims, we apply the broadest reasonable
interpretation in view of the specification as it would be understood by one
of ordinary skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at
1364. The specific claim language at issue recites:
wherein the locking pin, when inserted between a second pair
of the spaced apertures, will be able to engage a locking surface
on an outer surface of the hook, or an extension thereof.

9 While a similar limitation is present in independent claim 1, the Patent
Owner did not submit arguments against the conclusion of obviousness
based on this limitation. Nonetheless, the Patent Owner did argue that
McCann does not disclose a locking pin engaging "a locking surface on an
outer surface of the hook or an extension thereof" (App. Br. 11-12) as
recited in claim 1 in its arguments against the anticipation rejection of
Rejection 1. Hence, because the obviousness rejection of claim 1 also relies
on the finding that McCann discloses the limitation at issue, we consider this
argument of the Patent Owner as being applicable to the obviousness
rejection of claim 1 as well.
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The Patent Owner argues that "[n]either of McCann's embodiments
show this [limitation at issue], both embodiments showing arrangements in
which the locking pin engages locking surfaces that extend through an
extension of the hook rather than bearing on an outer surface." (App. Br.
11). Hence, the Patent Owner's argument is premised on interpreting this
claim limitation to require that the locking pin engage a locking surface on
an outer surface of the hook, or alternatively, a locking surface on an outer
surface of an extension of the hook. However, the inclusion of the recitation
"or an extension thereof" leads to a broader reasonable interpretation of the
claim, in which the limitation at issue would be understood to require that
the locking pin simply engage the extension of the hook, regardless of which
surface is engaged. Alternatively, the limitation at issue can also be
interpreted to merely require that the locking pin engage a locking surface
on an extension of the hook.
These interpretations are supported by the specification of the '926
patent which discloses a locking pin engaging the extension of the hook (see
Figs. 4 and 5, and discussion related thereto). Hence, the proper
interpretation of the claim under the broadest reasonable interpretation
standard is not the one implicitly adopted by the Patent Owner, but rather,
the one which merely requires the locking pin to engage an extension of the
hook. This limitation is clearly disclosed in McCann which teaches
inserting a pin through one of the three locking pin receiving hole pairs to
thereby engage the extension of the closure member 76 (col. 7, ll. 25-30;
Figs. 5-6). Moreover, even applying the arguably slightly narrower
interpretation so as to require the locking pin to engage a locking surface on
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an extension of the hook, McCann also satisfies this interpretation in that the
pin of McCann engages one of three bearing surfaces 88, 89, 90 of the
closure member 76 (id.). Correspondingly, because the Patent Owner's
arguments are based on an interpretation of claim 21 that is narrower than
the broadest reasonable interpretation, they are not persuasive and we affirm
the Examiner's rejection of independent claim 21 under Rejection 5 and
Rejection 7.10
Claim 21 also stands rejected under Rejection 9 as being obvious over
the combination of McCann and Macmoter. While patentability of claim 21
was argued by the Patent Owner with respect to McCann in combination
with Miller or Bilemi, no specific argument with respect to Macmoter is
presented by the Patent Owner. Thus, to the extent that Patent Owner relies
on the arguments directed to patentability of claim 21 based on the alleged
deficiencies of McCann, we find such arguments unpersuasive for the
reasons already discussed supra. Correspondingly, the Examiner's rejection
of claim 21 under Rejection 9 is also affirmed.

Claims 30, 32, 34 and 36
These claims stand rejected under Rejection 12 as being obvious over
McCann. These claims recite that "for each different pivot pin spacing (D),
only one pair of spaced apertures in the side frames is aligned with either an
aperture or a locking surface of the hook whereby it is not possible to insert

10 While not forming the basis of our decision, we also observe that the
subject '926 patent already admits that providing a locking pin that engages a
locking surface on an outer surface of a hook was known in the art (see Fig.
2 indicated as "(Prior Art)"; col. 3, l. 65-col. 4, l. 2).
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the locking pin in a non-locking position." The Patent Owner asserts that
Figure 5 of McCann "clearly shows that the locking pin can be placed in any
of the holes" and that "application of a force on the lever of McCann in the
direction B will allow a user to insert the pin into any of the holes." (App.
Br. 16).
The Examiner finds that "in Fig. 5 [of McCann], the hook 76 is
positioned so that the center hole pair 95 is in alignment with the bearing
surface 89, but it is not possible to insert the locking pin in the hole pair on
the right in Fig. 5 since the hole pair is misaligned with a portion of the hook
76." (RAN 11). The Examiner also finds "McCann discloses that the hook
76 may be rotated 'to bring one of three bearing surfaces 88, 89, 90 defined
in a stepped opening 92 of the member 76 into alignment with, or just
beyond, a respective one of three locking pin receiving hole pairs 94, 95,
96.'" (RAN 10-11, citing McCann, col. 7, ll. 25-30). The Examiner
concludes, inter alia, that:
It would have been obvious to modify the shapes and/or
locations of the hole pairs 94, 95, 96 and/or the aperture 92 in
the hook 76 so that, when the one bearing surface 99, 89, 90 is
aligned with the corresponding one of the three locking pin
receiving hole pairs 94, 95, 96, it is not possible to insert the
locking pin in a non-locking position. One would have been
motivated to make such a modification since McCann discloses
the need to bring only one of the three bearing surfaces 88, 89,
90 into alignment with only one of the respective locking pin
receiving hole pairs 94, 95, 96.

McCann also evidences the conventionality of having the
apertures in the hook 76 and side frames misalign to prevent
insertion of the locking pin.
(RAN 11).
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We agree with the Examiner. McCann discloses non-alignment of the
holes with respect to at least one non-locking position (see Fig. 5) and
further teaches alignment of "one of the three locking pin receiving hole
pairs." (McCann, col. 7, ll. 25-30). The Patent Owner's contention that
"application of a force on the lever" allows insertion of the pin into any of
the holes (App. Br. 16) is largely speculative and thus, unpersuasive. Even
if McCann does not explicitly disclose aligning only one pair of apertures
with that of the hook, such an arrangement would have been obvious to one
of ordinary skill in the art as articulated by the Examiner, such an
arrangement being merely a predictable variation.
The Patent Owner further argues that a person of ordinary skill in the
art would not modify the arrangement of McCann because the locking pin is
the primary source for holding the bucket (App. Br. 16). However, the fact
that the locking pin in McCann retains the position of the hook, and thus, the
bucket, has little bearing on whether the unused holes should be
aligned/misaligned. If anything, it would appear to make more sense to
misalign the unused holes so that the locking pin will be inserted in the
proper hole of the locking position in view of the important function of the
locking pin in securing the bucket. Correspondingly, the Examiner's
obviousness rejection of claims 30, 32, 34 and 36 under Rejection 12 is
affirmed.

Claims 31, 32, 35 and 36
These claims stand rejected in Rejection 13 as obvious over the
combination of McCann and either Woodyard or Tibbatts, each of the claims
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reciting a hook comprising "two apertures through which the locking pin can
pass," and side frames with three pairs of spaced, aligned apertures that "are
arranged in a closely adjacent but spaced manner, in a triangular pattern." In
rejecting these claims, the Examiner incorporates pages 26-29 of the
Requester Comments filed February 18, 2011, which concede that McCann
"does not explicitly describe two apertures being formed in the hook."
(Requester Comments, pg. 27). The rejection relies on Woodyard or
Tibbatts for disclosing a hook which comprises two apertures for locking
pins and concludes that it would have been obvious and merely a predictable
use of known elements to modify the hook of McCann to provide two
apertures in order to permit adjustable coupling to different-sized objects
(Requester Comments, pg. 27). As to the triangular pattern, the incorporated
portion of the Requester Comments also states, inter alia:
it would have been an obvious matter of design choice to adjust
the locations of the holes 94, 95, 96 to be provided in a
triangular pattern. The locations of the holes may be based on a
desired placement of the locking pin with respect to the side
frames or bucket pins. A triangular pattern is formed as long as
the holes are not in a linear arrangement.
(Requester Comments filed Feb. 18, 2011, pg. 29).
The Patent Owner argues that it would not have been obvious to
arrange holes of McCann in recited manner because "they would not align
with the stepped profile" provided in the extension of the hook (App. Br.
16). This argument is unpersuasive. The Examiner's adopted position is to
modify the hook of McCann in view of Woodyard or Tibbatts to provide two
apertures, and to modify the holes of the side frames so as to be non-linear
(i.e., triangular pattern). In making such modifications, a person of ordinary
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skill in the art would know to ensure that the apertures on the hook and any
locking surfaces defined thereby, correspond to the position of the holes in
the side frames so that the locking pin would function to retain the hook.
Such minor modification is well within the skill of those in the art.
Correspondingly, the arrangement of the holes in a triangular pattern would
have been an obvious matter of design choice for the reasons articulated.
Therefore, in view of the above, we affirm the Examiner's rejection of
claims 31, 32, 35 and 36.

Claims 2-20 and 22-28
As to these claims that depend from one of claims 1 and 21, the Patent
Owner merely relies on their ultimate dependency on either independent
claim 1 or 21 to assert patentability (App. Br. 17). Hence, these claims
either fall with claims 1 and 21, or otherwise have not been argued as being
separately patentable from claims 1 or 21.

Claims 29 and 33
The Examiner rejects claims 29 and 33 as being anticipated by
McCann under Rejection 11. These claims recite that "the hook comprises
an aperture of an elongate arcuate construction," claim 29 depending from
independent claim 1 while claim 33 depends from independent claim 21.
The Examiner finds that aperture 92 of McCann's hook 76 is elongate
in shape as well as being stepped (RAN 10). The Examiner further finds
that the aperture includes "arcuate portions and thus is at least partially
arcuate" so as to satisfy the claim recitation (RAN 10). The Requester
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agrees and argues that McCann's hook aperture is elongate and includes
"rounded corners as shown in Fig. 6." (Resp. Br. 21). The Patent Owner
argues that this limitation is not disclosed by McCann which shows a
stepped profile with surfaces 88, 89, 90, and that "[t]here is no teaching of
an elongate arcuate construction." (App. Br. 16).
We agree with the Patent Owner. Firstly, as noted, these claims recite
an "aperture of an elongate arcuate construction." Hence, the plain meaning
of this claim is that it is the aperture itself that must be "elongate" and
"arcuate." Such plain meaning is bolstered by the specification of the '926
patent wherein the single instance of this limitation is used in connection
with apertures 33 and 35 shown in Figures 4-6. In particular, the
specification of the '926 patent discloses:
As can be seen from each of FIGS. 4-6, the hook 17a has a
locking plate 36 projecting from a rear portion thereof with a
first locking aperture 33 therein, a second locking aperture 35
therein, and a locking surface 37 thereon. Each of the apertures
33 and 35 is of elongate arcuate construction, so as to provide a
degree of universality.
(Col. 4, ll. 58-63, emphasis added; Figs. 4-6).
In this regard, in reviewing Figures 4-6 of the '926 patent, it is clear
that the apertures 33 and 35 are elongate instead of being circular, and as
most clearly shown with respect to aperture 35, are also arcuate in that the
apertures themselves are arced.
In contrast, the stepped opening 92 (i.e., aperture) of McCann does
not disclose an aperture that is arcuate (see Fig. 6). Even if the claims are
more broadly interpreted to merely require "arcuate portions," the claim is
clear that it is the opening itself that must have these "arcuate portions." The
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stepped opening 92 of McCann does not disclose such a feature in that it
discloses an opening that is defined by straight and angular portions.
To the extent that the Examiner and the Requester may be referring to
the intersection of these straight and angular portions in the stepped opening
92, we are of the opinion that McCann, at most, discloses fillets (due to
manufacturing limitations and/or in order to reduce stress concentration) and
disagree that such fillets would be understood by one of ordinary skill in the
art as disclosing that the aperture is "of an elongate arcuate construction" as
recited by claim 29. Alternatively, to the extent that the Examiner and the
Requester may be referring to the arcuate portion illustrated on the upper left
corner of the closure member 76 in Figure 6, we observe that this arcuate
portion is of the exterior surface of the closure member 76 itself and not of
the stepped opening 92 (id.).
Therefore, in view of the above, we reverse the Examiner's
anticipation rejection of claims 29 and 33 under Rejection 11 based on
McCann.

CONCLUSIONS
1. The Examiner did not err in concluding that it would have been
obvious to replace the spring operated latching hook disclosed in Figure 5 of
McCann with a power operated latching hook.
2. The Examiner did not err in concluding that it would have been
obvious to provide a power operated latching hook that is operable by the
operator from the cab in the device of McCann.
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3. The Examiner did not err in finding that McCann discloses a
locking pin that engages "a locking surface on an outer surface of the hook,
or an extension thereof."
4. The Examiner did not err in concluding that it would have been
obvious to implement the holes of the device of McCann so that only one
pair of the spaced apertures in the side frames is aligned with an aperture of
the hook.
5. The Examiner did not err in concluding that it would have been
obvious to implement the device of McCann with two apertures on the hook,
and apertures of the side frames arranged in a triangular pattern.
6. The Examiner erred in finding that McCann discloses a hook
comprising "an aperture of elongate arcuate construction."

ORDERS
1. The Examiner's obviousness rejections of claims 1-28, 30-32
and 34-36 principally based on McCann are AFFIRMED.
2. The Examiner's rejection of claims 29 and 33 as being
anticipated by McCann is REVERSED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956.

AFFIRMED-IN-PART

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PATENT OWNER:
BRIAN B. SHAW, ESQ.
HARTER SECREST & EMERY LLP
1600 BAUSCH & LOMB PLACE
ROCHESTER, NY 14604-2711

THIRD PARTY REQUESTER:

CATERPILLAR/FINNEGAN, HENDERSON, LLP
901 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20001-4413

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