Ex Parte RE45341 et al

Patent Trial and Appeal Board

Oct 16, 2018

90013926 (P.T.A.B. Oct. 16, 2018)

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.
90/013,926 03/24/2017 RE45341 32998.10003US05 7111
23452 7590 10/16/2018
LARKIN HOFFMAN DALY & LINDGREN, LTD.
8300 Norman Center Drive
Suite 1000
Minneapolis, MN 55437
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
10/16/2018 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 GENESIS ATTACHMENTS
Patent Owner, Appellant
___________

Appeal 2018-007445
Reexamination Control 90/013,9261
Patent No. RE45,341 E
Technology Center 3900
____________

Before DANIEL S. SONG, MEREDITH C. PETRAVICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL

1 The Appellant identifies Genesis Attachments, LLC as the real party in
interest. Appeal Br. 1.
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Application 90/013,926

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STATEMENT OF THE CASE
Claims 7–11 of U.S. Patent No. RE45,341 are subject to
reexamination. The Patent Owner appeals under 35 U.S.C. §§ 134(b) and
306 from a Final Rejection of claims 7–11. We have jurisdiction under 35
U.S.C. §§ 134(b) and 306.

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The claimed invention is directed to a replaceable shearing tip for a
movable upper jaw of a demolition apparatus. RE45,341, 1:20–25.
Amended Figure 5 and Figure 6 are reproduced below.

Amended Figure 5 depicts “a partial right-side view of the upper jaw of the
apparatus with the tip mounted, showing various angles”, and Figure 6
depicts a cross section of the tip taken at lines 6 shown in Amended Figure
5. RE45,341 2:37–41. Replaceable shearing tip 110 has first half 110a and
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second half 110b, each having a flange 110c with bottom edge 110f. Id. at
3:42–55.
Amended Figure 9 is reproduced below.

Like Amended Figure 5, Amended Figure 9 depicts a partial right-side view
of the upper jaw of the apparatus with the tip mounted, showing various
angles. See id. at 2:46. Rear surface 110e of first half 110a of shearing tip
110 engages shear blade 34a at forward edge 34a. Id. at 2:51–54.

THE CLAIMS
Claim 7 is the sole independent claim, and claims 8–11 depend
directly from claim 7. Claim 7, reproduced below with emphases on
disputed limitations, is illustrative of the subject matter on appeal.
7. A tip adapted to mount to a nose of an upper jaw of a demolition
shear, the nose having a first laterally recessed mounting surface on a first side
defining a first nose ledge surface and a second laterally recessed mounting
surface on a second side defining a second nose ledge surface, wherein a lateral
distance between the first and second lateral recessed mounting surfaces define
a nose tip width, the nose tip width having a bottom end, the upper jaw of the
demolition shear further having a shear blade, the shear blade having a forward
edge, the tip comprising:
(a) a first tip body having an inside face, an outside face, a top edge, a
rear edge and a bottom flange extending laterally inward from said
inside face such that said first tip body defines an L-shape in cross-
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section, said bottom flange having a continuous planar bottom
surface;
wherein, when said first tip body is mounted to the nose of the upper jaw
of the demolition shear,
(i) said bottom flange extends at least partially across the bottom end of
the nose tip width from the first side;
(ii) said inside face of said first tip body is disposed adjacent the first
laterally recessed mounting surface;
(iii) said top edge of said first tip body engages the first nose ledge;
and
(iv) a portion of said rear edge engages the forward edge of the shear
blade at an oblique angle;
(b) a second tip body having an inside face, an outside face, a top edge, a
rear edge and a bottom flange extending laterally inward from said
inside face such that said second tip body defines an L-shape in cross-
section, said bottom flange having a continuous planar bottom
surface;
wherein, when said second tip body is mounted to the nose of the upper
jaw of the demolition shear,
(i) said bottom flange extends at least partially across the bottom end of
the nose tip width from the second side;
(ii) said inside face of said second tip body is disposed adjacent the
second laterally recessed mounting surface; and
(iii) said top edge of said second tip body engages the second nose
ledge.
Appeal Br., Claims App’x (emphases added).

THE REJECTIONS
The Examiner rejected the claims as follows:
(A) claims 7–10 under 35 U.S.C. § 103 over Okada2 and Ramun3;

2 Japanese Patent Application Pub. No. JP 09-0195528, pub. July 29, 1997
(“Okada”)
3 Int’l Patent Application Pub. No. WO 01/28687 A1, pub. Apr. 26, 2001
(“Ramun”)
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(B) claim 11 under 35 U.S.C. § 103(a) over Okada, Ramun, and
Sederberg4;
(C) claims 7–10 under 35 U.S.C. § 103 over Okada and LaBounty5;
(D) claims 7–9 under 35 U.S.C. § 103 over Okada and Morikawa6;
and
(E) claim 7 is under 35 U.S.C. § 103 over Okada and Ward7.

ANALYSIS
Rejections A, C, D, and E
In each rejection, the Examiner finds that Okada discloses most of the
elements of claim 7. See e.g., Ans. 3–6, 11–13, 17–19, 23–25. Figure 1 of
Okada is reproduced below.

4 U.S. Patent No. 5,992,023, iss. Nov. 30, 1999 (“Sederberg”)
5 Int’l Patent Application Pub. No. WO 96/37337, pub. Nov. 28, 1996
(“LaBounty”)
6 U.S. Patent No. 5,671,892, iss. Sep. 30, 1997 (“Morikawa”)
7 Int’l Patent Application Pub. No. WO 2004/013417 A1, pub. Feb. 12, 2004
(“Ward”)
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Okada’s Figure 1 depicts a partial front view of a steel cutting machine.
Okada ¶ 36. Upper jaw 9 has front end blade 28 and shearing blade 26 Id.
¶¶ 21, 25. Figure 4 of Okada is reproduced below.

Okada’s Figure 4 depicts a section view along lines III in Figure 1. Id. ¶ 36.
A pair of front end blades 28 are mounted on upper jaw 9. Front end blades
28 have protective piece 29.
The Examiner equates Okada’s front end blades 28 to the claimed tip
bodies, Okada’s protective piece 29 to the claimed bottom flange, and
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Okada’s shearing blade 26 to the claimed shear blade. See Ans.8 3–4. The
Examiner finds, however, that protective piece 29 did not have a continuous
planar bottom surface because, as seen in Okada’s Figure 1, it has a beveled
surface at the rear. Id. at 6. The Examiner also finds that, as seen in
Okada’s Figure 1, the rear edge of front end blade 28 does not engage the
forward edge of shearing blade 26 at an oblique angle. Id.
The Examiner finds that each of Ramun, LaBounty, Morikawa, and
Ward teaches a continuous planar bottom surface on a bottom flange of a tip
and a tip having a rear edge that engages a shear blade at an oblique angle.
Ans. 6–25. With regards to rejection A, Figure 1 of Ramun is reproduced
below.

Ramun’s Figure 1 depicts a side view of heavy-duty shear 10. Ramun 5:19–
22. First blade 12 has a plurality of removable cutting inserts 190 and a
piercing tip 192. Id. at 18:27–19:8.
The Examiner equates Ramun’s piercing tip 192 to the claimed tip
and Ramun’s removable cutting insert 190 to the claimed shear blade. Ans.

8 Because the rejections from the Final Office Action, mailed September 25,
2017, are reproduced in the Answer, we cite to the Answer.
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6–7. Based on the depiction in Ramun’s Figure 1, the Examiner determines
that piercing tip 192 has a continuous planner bottom surface and that
piercing tip 192 engages shear blade 190 at an oblique angle. Id.
With regards to rejection C, Figure 4 of LaBounty is reproduced
below.

LaBounty’s Figure 4 depicts a side elevational view of hydraulic shears with
jaws open. LaBounty 5:7–8. Upper jaw 18 has front cutting blade 34 and
removable cutting blade 32b. Id. at 7:5–16.
The Examiner equates LaBounty’s front cutting blade 34 to the
claimed tip and LaBounty’s removable cutting blade 32b to the claimed
shear blade. Ans. 13. Based on the depiction in LaBounty’s Figure 4, the
Examiner determines that front cutting blade 34 has a continuous planar
bottom surface and that cutting blade 34 engages shear blade 32b at an
oblique angle. Id. at 14.
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With regards to rejection D, Figures 1 and 3 of Morikawa are
reproduced side-by-side below.
Morikawa’s Figure 1 depicts a perspective view of the left front and Figure 3
depicts a side view of a shearing machine. Morikawa 4:3–5, 4:9–10. Upper
jaw 6 has three upper shear blades 26a, 26b, and 26c. Id. at 5:41–43. Shear
blade 26a “is shaped in the form of a parallelogram.” Id. at 6:1–4.
The Examiner equates Morikawa’s front shear blade 26a to the
claimed tip and Morikawa’s shear blade 26b to the claimed shear blade.
Ans. 19–20. Based on the depiction in Morikawa’s Figures 1 and 3 and the
teaching that the blade is a parallelogram, the Examiner determines that
shear blade 26a has a continuous planner bottom surface and that shear blade
26a engages shear blade 26b at an oblique angle. Id.
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With regards to rejection E, Figure 1a of Ward is reproduced below.

Ward’s Figure 1a depicts a side elevation of cutting or crushing implement
1. Ward 11:5–6. Implement 1 has three pairs of jaws 3a, 3b, and 3c,
displaced across the width of the implement. Id. at 11:17, 12:5. The upper
portion of each jaw has an inverted V-shaped form. Id. at 11:18–19.
The Examiner equates Ward’s front portion of jaw 3a to the claimed
tip and Ward’s back portion of jaw 3b to the claimed shear blade. Ans. 25.
Based on the depiction in Ward’s Figure 1a, the Examiner determines that
front portion of jaw 3a has a continuous planner bottom surface and that
front portion of jaw 3a engages back portion of jaw 3b at an oblique angle.
Id.
For each of rejections A, C, D, and E, the Examiner provides
substantially the same alleged rationale for combining Okada and either
Ramun, LaBounty, Morikawa, or Ward. See Ans. 7, 14, 20, 26. For
example, the Examiner states:
Accordingly, it would have been obvious to those having
ordinary skill in the art at the time of the invention to have
incorporated these features [from] Ramun into the Okada device
as a matter of design choice of known tip to blade attachment
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configurations as well as known blade shapes for optimizing
cutting efficacy and for structurally associating the tip to
matching parts on the blade to help maintain the tip in its place
during use.
Id. at 7; e.g., see also Ans. 27 (“As such, only from the Ramun side view
teaching of the absence of the bevel, those in the art would have been
motivated to remove the bevel from the Okada tip as a mere choice in
design”). In the Answer, the Examiner supplements the rejection with an
additional alleged rationale for the combination. The Examiner states:
Given that the art is replete with suggestions to change the shape
of the working tip dependent upon the materials being grasped
by the jaws, mere choosing from a finite number of identified,
predictable solutions, with a reasonable expectation of success
would have been ample suggestion for [one skilled in] the art to
try the different tip shapes already known in the art in order to
optimize gripability for any given material. Similarly, it would
have been obvious to try known, predictable solutions for
securing tip components to equipment jaws to also optimize
efficacy.
Ans. 30; e.g., see also 32 (“it is implicit from the teaching that different
angles may work better, thus giving those in the art ample reason to try
different angles to attempt to better grip the materials with which then intend
to work (sic)”), 40 (“Here, the concept of changing the tip shape to
accommodate different working materials was well established in the art.”).
For each of the proposed combinations, the Patent Owner argues that
the Examiner has fails to provide a sufficient rationale to support the
proposed combinations of the prior art and instead improperly relied upon
hindsight. See Appeal Br. 6–8, 21–29, 36, 41, 51, 62–63; Reply Br. 1–18.
“The rationale to modify or combine the prior art does not have to be
expressly stated in the prior art; the rationale may be expressly or impliedly
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contained in the prior art or it may be reasoned from knowledge generally
available to one of ordinary skill in the art, established scientific principles,
or legal precedent established by prior case law.” Manual of Patent
Examining Procedures (“MPEP”) § 2144 (I) (citing In re Fine, 837 F.2d
1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21
USPQ2d 1941 (Fed. Cir. 1992); In re Kotzab, 217 F.3d 1365, 1370, 55
USPQ2d 1313, 1317 (Fed. Cir. 2000) (setting forth test for implicit
teachings); and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502
(Fed. Cir. 1988) (references do not have to explicitly suggest combining
teachings).
However, “[r]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Rejections
relying upon facts not in the record or on “common knowledge” should be
judiciously applied. MPEP § 2144.03.
Here, we are persuaded by the Patent Owner that the Examiner’s
alleged rationales for combining the prior art are conclusory and lack
rational underpinning to support the legal conclusion of obviousness. First,
the Examiner relies upon alleged knowledge generally available to one of
ordinary skill in the art. For example, the Examiner asserts that one of
ordinary skill in the art would have made the proposed combinations as a
matter of design choice of known tip to blade attachment configurations
because the known blade shapes optimize cutting efficacy and structurally
associate the tip to matching parts on the blade to help maintain the tip in its
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place during use. Ans. 7. As the Examiner acknowledges, however, these
explicit benefits are not “spelled out in the references” but are allegedly
implicit in the prior art. E.g., see id. at 29. The Examiner states that one of
ordinary skill in the art would have known based on, for example, the prior
art figures alone. Id. at 27 (“As such, only from the Ramun side view
teaching of the absence of the bevel, those in the art would have been
motivated to remove the bevel from the Okada tip as a mere choice in
design.”).
However, the Examiner’s assertion as to knowledge generally
available to one of ordinary skill in the art is conclusory and unsupported by
sufficient evidence or other reasonable explanation. For example, the
Examiner’s evidence (i.e., the prior art figures reproduced above) does not
sufficiently establish that removing the bevel from Okada to create a
continuous planar bottom surface would optimize cutting efficacy or optimize
gripability for any given material. In as much as the Examiner may be
asserting that the combination of the elements would have been obvious
because the prior art discloses all the claimed elements, “[a] patent
composed of several elements is not proved obvious merely by
demonstrating that each element was, independently, known in the prior art.”
KSR Int’l, 550 U.S. at 401.
The Examiner alleges that explicit teachings of the prior art suggest
changing the shape of the working tip is dependent upon the materials being
grasped by the jaws. E.g., see Ans. 30. The Examiner’s allegation is
unsupported as the Examiner provides no citations or other indication as to
what prior art provides the alleged explicit teaching. E.g., see id. We note
that Ward generally discusses configuring implements to handle different
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types of materials, but Ward does not explicitly teach configuring front
cutting blade 34 based on handling different materials. See generally Ward.
We determine that the Examiner fails to provide the requisite
articulated reasoning with rational underpinning to support the legal
conclusion of obviousness. Accordingly, the rejections of claim 7, and
claims 8–11, dependent thereon, are reversed.

Rejection B
The Examiner rejects claim 11 under 35 U.S.C. § 103(a) over Okada,
Ramun, and Sederberg. Claim 11 depends from claim 7, and we have
reversed the rejection of claim 7 under 35 U.S.C. § 103(a) over Okada, and
Ramun. For the same reasons, we will not sustain the rejection of claim 11.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims
are nonobvious if the independent claims from which they depend are
nonobvious.”).

DECISION
The decision of the Examiner to reject claims 7–11 is reversed.

REVERSED

Ssc