Ex Parte ZellerDownload PDFPatent Trial and Appeal BoardAug 29, 201312116738 (P.T.A.B. Aug. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRUCE K. ZELLER ____________________ Appeal 2011-009745 Application 12/116,738 Technology Center 3600 ____________________ 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 2 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 Appeal 2011-009745 Application 12/116,738 3 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 Appeal 2011-009745 Application 12/116,738 4 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. Appeal 2011-009745 Application 12/116,738 5 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. Appeal 2011-009745 Application 12/116,738 6 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). Appeal 2011-009745 Application 12/116,738 7 AFFIRMED-IN-PART mls Copy with citationCopy as parenthetical citation