Ex Parte Zeller

Patent Trial and Appeal Board

Aug 29, 2013

12116738 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRUCE K. ZELLER
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Appeal 2011-009745
Application 12/116,738
Technology Center 3600
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Before: PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009745
Application 12/116,738

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STATEMENT OF THE CASE
Bruce K. Zeller (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 14-19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s invention relates generally “to a method and apparatus for
separating excavated materials.” Spec., para. [0002]. Claims 14 and 17 are
independent. Claim 14, reproduced below, is illustrative of the claimed
subject matter:
14. 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, and above a top of, each of said horizontal side
bars near an end of said horizontal side bars opposite said front
wall; and
a grate extending from near a top of said vertical bar
members to near a top of said front wall such that said grate
forms less than a ninety degree angle relative to a ground
surface.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
McClain US 5,183,160 Feb. 2, 1993
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THE REJECTION ON APPEAL
The Examiner made the following rejection:
1. Claims 14-19 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by McClain. Ans. 3.

ANALYSIS
Claims 14 and 17
Appellant argues that “McClain does not disclose a front wall and two
horizontal side bars extending backward from opposite sides of a bottom of
said front wall.” App. Br. 9. Appellant further states that Figures 1-3 of the
Specification “clearly show horizontal side bars in addition to side walls that
are above the horizontal side bars.” App. Br. 10. Appellant also argues that
McClain is deficient because
[t]he front wall and horizontal side bars in Appellant’s
disclosure are named as different elements (i.e. wall vs. side
bars) because they are different and do not have the same
configuration (and do not have the same height since one
element is a wall and the other elements are bars).
Reply Br. 1.
Notwithstanding the fact that Appellant’s disclosure teaches different
elements as bars and side walls, the Examiner’s finding is that McClain
teaches horizontal side bars via element 53 as depicted in Figure 6. See Ans.
5. Claim 14 does not recite both side walls and horizontal side bars, only
horizontal side bars. Further, Appellant’s argument as to the height is inapt
because claim 14 does not recite any limitation as to the relative height of
the side bars versus the front wall. Appellant’s arguments, therefore, are not
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commensurate with the scope of claim 14, and thus, do not demonstrate
error in the Examiner’s rejection. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (limitations not appearing in the claims cannot be relied upon
for patentability). Furthermore, we see nothing in the record that would
suggest that the nomenclature of “walls” versus “side bars” would preclude
the Examiner’s application of the claim language to the apparatus in
McClain as stated in the rejection. Accordingly, we sustain the Examiner’s
rejection of claim 14.
Appellant makes no separate argument for independent claim 17 apart
from that for claim 14. We likewise sustain the Examiner’s rejection of
claim 17.
Claims 15 and 18
Appellant’s argument with respect to claims 15 and 18, which
Appellant argues together, can best be summarized as “the slanted bars
below element 55[,] which the Examiner asserts as support bars[,] cannot
extend to a mid[-]length of the grate as required by Appellant’s claims
because they are positioned below the grate…and do not touch, or extend to,
the grate in any way.” Reply Br. 2. Appellant appears to argue that
“extend[ing] to” in some way requires touching or attachment to the grate.
The claim language at issue is merely that there be “at least one support bar
extending from each of said horizontal side bars to a mid-length of said grate
on opposite sides of said grate without traversing the grate.” We are not
persuaded that this language requires any touching of, or attachment to, the
grate by the support bar.
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The Examiner’s finding is that “a mid-length of the grate would be
any length of the grate between the ends of the grates” and that “a support
bar would be any bar supporting the grate between its end points.” Ans. 7.
The element noted by the Examiner as meeting the claimed support bar
provides indirect support through spring 55 and the end closest to the spring
sits at a point toward the middle and between the ends of the grate. See, e.g.,
fig. 6. In the broadest reasonable sense, this meets the claim language as
interpreted by the Examiner and we are not persuaded that the broad
language at issue requires touching of the support bar to the grate itself as
argued. Accordingly, we sustain the Examiner’s rejection of claims 15 and
18.
Claims 16 and 19
Regarding claims 16 and 19, which Appellant argues together, the
Examiner finds that McClain discloses a flange between elements 57 and 59
that extends “from the bottom of the grate assembly that would be capable of
engagement with a loader.” Ans. 8. Appellant argues at length that
McClain’s flange cannot meet the claimed flange because it is not capable of
performing the desired functions of moving the grate around and that “it
would tear the McClain apparatus in half” if used to move the device. Reply
Br. 3; see also App. Br. 11. We note that each of claims 16 and 19 recites
only a function of “facilitating engagement with a bucket of a
loader/backhoe.” The claims, therefore, do not require moving the grate
around, nor other functionality, as Appellant argues and Appellant provides
no persuasive argument as to why the identified flange could not function as
claimed.
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Appellant further argues, however, that the element identified by the
Examiner “extends downward from frame 53” as opposed to the claimed
grate. The Examiner first identifies the grate in McClain as element 61
(Ans. 3) and then, in discussing the recitation at issue here, changes to
discussing a “grate assembly” (Ans. 8), which would ostensibly include
McClain’s frame 53. We find it internally inconsistent to identify element
61 as the claimed grate as recited in claim 14 (and 17) and then to switch to
discussion of a “grate assembly” from which the flange supposedly extends
to meet the language in claims 16 and 19.
In order to meet the claim language, the flange should extend from the
same grate as identified by the Examiner in rejecting claim 14. Given the
number of elements and amount of distance between McClain’s grate 61 and
the flange identified by the Examiner, we cannot agree that the flange
extends from the grate as claimed. Because of this inconsistent application
of the claim language between claims 14 and 16 (and 17 and 19), we are
constrained to reverse the Examiner’s rejection of claims 16 and 19.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 16 and 19. We AFFIRM the Examiner’s decision to reject
claims 14, 15, 17, and 18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED-IN-PART

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