Ex Parte HollandDownload PDFPatent Trial and Appeal BoardApr 25, 201312141452 (P.T.A.B. Apr. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTOPHER D. HOLLAND ____________ Appeal 2011-002444 Application 12/141,452 Technology Center 3600 ____________ Before STEVEN D. A. MCCARTHY, LYNNE H. BROWNE and BRADFORD E. KILE, Administrative Patent Judges. BROWNE, Administrative Patent Judge DECISION ON APPEAL Appeal 2011-002444 Application 12/141,452 2 STATEMENT OF THE CASE Christopher D. Holland (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. THE INVENTION Claims 1 and 26, reproduced below, are illustrative of the subject matter on appeal. 1. Apparatus for delivering a pumpable material to a top surface of a rail head of a metal rail, said apparatus comprising: an applicator assembly and a securing device for securing the applicator assembly to said rail; said applicator assembly comprising an applicator body having a plurality of orifices for delivery of said pumpable material to the top surface of the rail head, said body being resiliently yieldable against the urging of a first spring mechanism to permit the applicator body to move from a raised position, in which the orifices are positioned for delivering said pumpable material to the top surface of the rail head, to a depressed position in the event the applicator is contacted by a train wheel, the applicator body thereafter being adapted to return to said raised position; said applicator assembly further comprising a mount mounting the applicator body for movement between a working position in which the applicator body is closely adjacent the rail head and a rail-service position in which the applicator body is remote from the rail head; and said applicator assembly and securing device being configured such that when the Appeal 2011-002444 Application 12/141,452 3 applicator body is in its working position, a metal portion of the applicator body contacts the rail head to form a metal-on-metal hard seal extending lengthwise of the rail head for inhibiting leakage of said pumpable material from the top of the rail head, said applicator assembly being free of any non-metal seals for sealing against said leakage, and wherein said applicator assembly further comprises a second spring mechanism for urging the applicator body against the rail head to help maintain said hard seal. App. Br. 22-23. 26. A method of installing apparatus for delivering a friction modifying material to a top surface of a rail head of a metal rail, said method comprising: securing an applicator assembly to the rail, said applicator assembly comprising an applicator body having a plurality of orifices for delivery of said friction modifying material to the top surface of the rail head; and pivoting the applicator body from a rail- service position in which the applicator body is remote from the rail head into a working position in which a portion of the metal body is in contact with the rail head to form a metal-on-metal hard seal extending lengthwise of the rail head for inhibiting leakage of said friction modifying material from the top of the rail head, said applicator assembly being free of any non-metal seals for sealing against said leakage. App. Br. 28. Appeal 2011-002444 Application 12/141,452 4 PRIOR ART Merk ‘767 US 1,899,767 Feb. 28, 1933 Merk ‘449 US 1,923,449 Aug. 22, 1933 DiCarlo US 6,742,624 B2 Jun. 1, 20041 THE REJECTIONS 1. Claims 26-28 stand rejected under 35 U.S.C. § 102(b) as anticipated by Merk ‘449. 2. Claims 1-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Merk ‘767 and Merk ‘449. 3. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Merk ‘767, Merck ‘449 and DiCarlo. OPINION Anticipation The Examiner finds that Merk ‘449 discloses each and every limitation of claims 26-28. Ans. 3-4. Specifically, the Examiner finds that Merk ‘449 discloses the step of “pivoting the applicator body (via [trunnions] 9 and 10, Figure 4) from a rail- service position in which the applicator body is remote from the rail head (via removing pin 57) into a working position.” Ans. 4. Appellant argues “there is not even a suggestion in Merk '449, much less the unambiguous disclosure required for anticipation, that the stop pin 1 The Examiner did not list DiCarlo in the Evidence Relied Upon section of the Answer; however, DiCarlo is relied upon in the rejection of claims 24 and 25. Appeal 2011-002444 Application 12/141,452 5 57 is ever removed or that it is even capable of being removed.” App. Br. 8. In response the Examiner states Merk '449 disclose in page 2 lines 130-134, "the lubricant applying member 8 is provided with downwardly projection stop 56 adapted to engage laterally extending pin 57 projecting from the lower portion of the bearing 7". It is concluded that pin 57 is preventing the applicator arm 8 from moving away from rail flange so that when[]ever rail track service or repair is needed, applicator arm 8 can be move away from rail track by means of removing the pin 57. Ans. 12. Appellant argues that Merk ‘449 does not disclose “that the pin can be removed or that removal of the pin would result in substantial travel of the applicator arm 8 away from the rail head, noting that spring 61 and possibly conduit 35 (see Fig. 4) will necessarily limit the extent of such travel.” Reply Br. 1. Appellant’s argument is persuasive. 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. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). The Examiner’s proposal to modify Merk ‘449 by removing the stop pin 56 is the antithesis of anticipation2. For these reasons, we do not sustain the Examiner’s rejection of claim 26 and claims 27 and 28 which depend therefrom. 2 It appears that the Examiner is applying obviousness reasoning in a rejection based on anticipation. Appeal 2011-002444 Application 12/141,452 6 Obviousness Claims 1-20: The Examiner finds that Merk ‘767 discloses all of the elements of claims 1 and 13 except for an applicator assembly comprising: [an] applicator assembly comprising an applicator body having a plurality of orifices for delivery of said pumpable material to the top surface of the rail head . . . [and] a mount mounting the applicator body for movement between a working position in which the applicator body is closely adjacent the rail head and a rail-service position in which the applicator body is remote from the rail head. Ans. 5. The Examiner finds that Merk ‘449 discloses an applicator assembly comprising an applicator body having a plurality of orifices (16, 16') for delivery of said pumpable material to the top surface of the rail head (Figures 2 and 3), said applicator assembly further comprising a mount (7) mounting the applicator body for movement between a working position in which the applicator body is closely adjacent the rail head (Figures 4 and 9) and a rail-service position in which the applicator body is remote from the rail head by removing pin 57 and turn the applicator body away from rail track). Id. 5-6. The Examiner concludes It would have been obvious to one ordinary skill in the art at the time the invention was made to modify the lubricator of the Merk '767 to make the applicator with plurality of orifices and a mount mounting the applicator body for movement Appeal 2011-002444 Application 12/141,452 7 between a working position in which the applicator body is closely adjacent the rail head and a rail service position in which the applicator body is remote from the rail head as taught by Merk '449 in order to supply more lubricant to the rail head and prevent the applicator from damage when rail in service. Id. 6. Appellant argues that it would not have been obvious “in view of Merk '449 to modify the applicator shown in Merk '767 to . . . to pivot to a rail-service position remote from the rail head by removing the stop pin 57.” App. Br. 10. We agree. As discussed supra Merk ‘449 fails to disclose or suggest removal of stop pin 57. Rather Merk ‘449 states: “[t]he spring 61 normally urges stop 56 against pin 57. When the parts are in that position the upper extremity of member 8 is in position to engage the surface of the wheel flanges next [to] the rail.” Merk ‘449, p. 3, ll. 57-62. Merk ‘449 does not describe how the device is maintained. Thus, there is no factual basis for the Examiner’s finding that removal of the stop pin 57 would result in a lubricant applying means 8 that pivots between a working position and a rail service position and the Examiner’s reasoning is improper hindsight. It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability. Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). The invention must be viewed not after the blueprint has been drawn by the Appeal 2011-002444 Application 12/141,452 8 inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made. Id. (citing Interconnect Planning Corp. v. Feil , 774 F.2d 1132, 1138 (Fed. Cir. 1985)). For these reasons, we do not sustain the rejection of independent claims 1 and 13 and claims 2-12 and 14-20 which depend therefrom, respectively. Claim 21: The Examiner rejects claim 21 on the same grounds as claims 1 and 13 discussed supra. Appellant argues that Merk '767 fails to show or suggest an "applicator body having a plurality of orifices for delivery of said friction modifying material to the top surface of the rail head.” App. Br. 18. Appellant’s argument is not persuasive as it is not responsive to the rejection as articulated by the Examiner. Specifically, the Examiner relies upon Merk ‘449, rather than Merk ‘767 to meet this claim limitation. Appellant further argues Merk '449 does not deliver material to the top surface of the rail head, as discussed above. Fig. 4 of the patent clearly shows that the orifices 16 in the applicator are directed toward the wheel flange facing the side of the rail head. Lubricant applied to the wheel flange would be transferred to the side surface of the rail head, not to the top surface as claimed by applicant. Id. The Examiner responds to this argument finding that “Merk[]'449 discloses in [page 1,] lines 4-7, ‘a device for applying lubricant to wheels of a moving railroad train and the track upon which the train is traveling.’” Ans. 14. We agree and note that Merk ‘449 further states “[s]uch lubricant will be taken up by the wheel flanges and a portion of it will also likely find Appeal 2011-002444 Application 12/141,452 9 its way to the head of the rail from the lubricant applying means 8.” Merk ‘449, p. 2, ll. 67-71. For these reasons, we sustain the Examiner’s rejection of claim 21. Claim 22: Appellant argues “[t]here is no hard seal in Merk '449 because the applicator is biased by spring 61 away from the rail.” App. Br. 19. In response the Examiner finds that “Merk '449 discloses in [page 2] lines 64- 67, that ‘the face of the lubricant applying means adapted to engaged the wheel flange is provided with depression or grooves 21for retaining lubricant delivered through opening 16.’” Ans. 12. From this the Examiner concludes “that the wheel applicator and rail head are sealed.” Id. We agree. In Merk ‘449 spring 16 only biases the applicator away from the rail when there is no wheel present. When a wheel is present a hard seal is formed thus meeting the claim limitation. For these reasons we sustain the Examiner’s rejection of claim 22. Claim 23: Appellant argues “it would not have been obvious to modify Merk '767 in view of Merk '449 to have the outlet in the applicator body exit at a top surface of the applicator body” because “such arrangement would block drainage of fluid [] back to the tank 6.” App. Br. 20. We agree. If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900 (Fed. Cir.1984). If Merk ‘767’s outlet 30 were moved to the top of the applicator body, excess lubricant would not necessarily flow back into tank 6 thus rendering Merk ‘767’s unsatisfactory for this purpose. The Examiner Appeal 2011-002444 Application 12/141,452 10 has not articulated a persuasive reason why one of ordinary skill in the art might have wished to sacrifice this feature of Merk ‘767. For these reasons, we do not sustain the Examiner’s rejection of claim 23. Claims 24 and 25: The Examiner finds that “Merk '767 discloses said metal portion of the applicator body comprises an upright inboard face of the metal bar facing said rail head when the applicator body is in said working position (Figures 1-4).” Ans. 10. The Examiner additionally finds “DiCarlo discloses Assembly for Applying Solid Material to Wheel comprising: applicator is metal bar and which is a monolithic metal bar (71, Figure 3).” Ans. 11. The Examiner concludes that is would have been obvious “to modify the lubricator of the Merk '767 as modified by Merk '449 to make the applicator bar with monolithic metal in order to provide stronger and more wear resistan[t] structure.” Id. Appellant argues that “DiCarlo fails to show or suggest a monolithic metal bar as recited in claim 24. The member 71 in Fig. 3 identified by the examiner as a monolithic metal bar is actually a blade of a lubricant-resistive elastomer, such as rubber or plastic (see col. 4, lines 55-60).” App. Br. 20. Appellant is correct. For these reasons we do not sustain the Examiner’s rejection of claim 24 and claim 25 which depends therefrom. DECISION We reverse the Examiner’s rejection of claims 26-28 under 35 U.S.C. § 102(b) as anticipated by Merk ‘449. We reverse the Examiner’s rejection of claims 1-20 and 23 under 35 U.S.C. § 103(a) as unpatentable over Merk ‘767 and Merk ‘449. Appeal 2011-002444 Application 12/141,452 11 We affirm the Examiner’s rejection of claims 21 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Merk 767 and Merk ‘449. We reverse the Examiner’s rejection of claims 24 and 25 under 35 U.S.C. § 103(a) as unpatentable over Merk ‘767, Merk ‘449 and DiCarlo. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation