2020002117 (P.T.A.B. Jan. 28, 2021)

Cascade Corporation

Patent Trials and Appeals BoardJan 28, 2021

2020002117 (P.T.A.B. Jan. 28, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 15/653,926 07/19/2017 Francesco Andriolo JEV: 0041.0527 7626 152 7590 01/28/2021 CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP 111 SW Columbia Street Suite 725 PORTLAND, OR 97201 EXAMINER SNELTING, JONATHAN D ART UNIT PAPER NUMBER 3652 NOTIFICATION DATE DELIVERY MODE 01/28/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patent.docket@chernofflaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRANCESCO ANDRIOLO and ROBERTO MAZZOLENI Appeal 2020-002117 Application 15/653,926 Technology Center 3600 ____________ Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and LEE L. STEPINA, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge, MICHAEL J. FITZPATRICK Opinion Dissenting filed by Administrative Patent Judge, STEFAN STAICOVICI FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant, Cascade Corporation,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 10–13. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies itself as the sole real party in interest. Appeal Br. 3. Appeal 2020-002117 Application 15/653,926 2 STATEMENT OF THE CASE The Specification The Specification relates to: Layer-picking clamp assemblies . . . used in the load-handling industry to reach sideways from a lift truck or other load- handling machine so as to position a downwardly extending load-engaging clamp into alignment over a load, selectively lower the clamp so as to surround an upper portion of the load laterally, and then clamp and lift the upper portion vertically to separate it from a lower portion of the load. Spec. 1. The Claims Claims 10–13 are rejected. Final Act. 1. Claims 1–9 are cancelled, and no other claims are pending. Id.; Appeal Br. 18. The sole independent claim is representative and reproduced below. 10. A layer-picking assembly comprising: (a) a forwardly-projecting load-lifting arm assembly; (b) a forwardly-extending load-clamping assembly, capable of clamping a load between a pair of opposed upright load-engaging clamping members extending transversely to said forwardly-projecting load-lifting arm assembly, and further capable of selectively moving said load forwardly relative to said forwardly-projecting load-lifting arm assembly; and (c) a bidirectional side-shifting assembly connecting said load-clamping assembly to said load-lifting arm assembly, said side-shifting assembly being capable of selectively bidirectionally side-shifting said load clamping assembly with respect to said load-lifting arm assembly straightly in opposite directions transversely beyond said load-lifting arm assembly without requiring forward extension of said load-clamping assembly relative to said load-lifting arm assembly. Id. at 18. Appeal 2020-002117 Application 15/653,926 3 The Examiner’s Rejection The Examiner rejected claims 10–13, under 35 U.S.C. § 103, as unpatentable over US 2017/0369295 A1, published December 28, 2017 (“Tygard”) and US 6,135,704, issued October 24, 2000 (“Seaberg”). Final Act. 2. DISCUSSION Appellant argues the patentability of claims 10–13 together. Appeal Br. 13–17. Accordingly, we choose claim 10 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner found that Tygard teaches a layer-picking assembly as substantially claimed except that it “does not explicitly teach that the load- clamping assembly is capable of selectively moving said load forwardly relative to said forwardly-projecting load-lifting arm assembly.” Final Act. 2–3 (citing Tygard Fig. 1). The Examiner found that “Seaberg teaches a load-clamping assembly (20) which is capable of selectively moving a load forwardly (via actuation of 56) relative to a forwardly-projecting load-lifting arm assembly (24).” Id. at 3 (citing reference numerals appearing in Seaberg Figs. 1–2). The Examiner concluded: It would have been obvious to a person having ordinary skill in the art to modify Tygard’s load-clamping assembly to be capable of selectively moving the load forwardly relative to the load- lifting arm assembly as taught by Seaberg in order to provide minor fore-aft adjustments of the load’s position without having to operate the lift truck. Id. at 3. Appellant argues that the Examiner “has not clearly articulated how Tygard’s load manipulator 100 will incorporate Seaberg’s hydraulic cylinder 56 to allow Tygard’s clamping apparatus 30 to move a load forwardly.” Appeal 2020-002117 Application 15/653,926 4 Appeal Br. 14. Appellant further argues that the proposed modification cannot be accomplished without rendering Tygard unsatisfactory for its intended purpose. Id. at 15. With respect to the latter argument, Appellant identifies potential bodily incorporations of Seaberg’s cylinder 56 within Tygard and argues that they would necessarily interfere with the intended purpose of Tygard, such as lateral translation of the clamping assembly. Id. at 15–16. The Examiner responds to both arguments with an annotated Figure 2 of Tygard, which is reproduced below. Ans. 4. The Examiner’s annotated Figure 2 of Tygard, reproduced above, shows a box drawn by the Examiner and labeled “position for forward movement capability.” Id. The Examiner explains that the proposed Appeal 2020-002117 Application 15/653,926 5 modification is “to include a cylinder assembly similar to the cylinder assembly taught by Seaberg” within that box. Id. According to the Examiner, [f]or example, one could mount the cylinder body to the end of body 131 which is proximate to the lift truck and could mount the piston to the end of body 131 which is proximate to the load.” Id. The Examiner further explains that the rejection does not rely on bodily incorporation: The 35 U.S.C. 103 rejection does not assert that Seaberg’s invention would be bodily incorporated into Tygard’s invention. Rather, the rejection asserts that one skilled in the art would be able to modify Tygard’s apparatus to be capable of moving the load forwardly relative to the arm assembly and that one skilled in the art would be motivated to do so for the stated reason. A person having ordinary skill in the art would be able to modify Tygard’s apparatus to have the claimed capability and still function as it was designed. For example, modifying the portion of 131 identified in Tygard’s marked fig. 2 to be extensible in a forward direction would not interfere with the function of rotation shaft 135. Ans. 5. Nor was the Examiner required to show the feasibility of bodily incorporating Seaberg’s cylinder into Tygard. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”); In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). In reply to the Examiner’s Answer, Appellant presents another bodily incorporation argument. More specifically, Appellant argues that “mounting the cylinder body to the end of body 131 which is proximate to the lift truck and mounting the piston to the end of body 131 which is proximate to the Appeal 2020-002117 Application 15/653,926 6 load [as proposed by the Examiner] would render the hydraulic cylinder inoperable because body 131 is a unitary structure incapable of allowing one end to move relative to the other end.” Reply Br. 3. However, “‘[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,’ so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir. 2020) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). Given the level of skill in the art evidenced by the solutions to problems associated with transporting loads disclosed by Tygard and Seaberg (see Tygard ¶¶ 4–6; Seaberg 1:66– 2:39), a minimal amount of creativity and/or skill would be required to avoid the pitfall Appellant envisions. See In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“In determining this skill level, the court may consider various factors including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.”). Appellant has not apprised us of error in the rejection of claim 10. Accordingly, we affirm the rejection of claim 10, as well as that of claims 11–13, which fall therewith. SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10–13 103 Tygard, Seaberg 10–13 Appeal 2020-002117 Application 15/653,926 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Appeal 2020-002117 Application 15/653,926 8 STAICOVICI, Administrative Patent Judge, Dissenting. I respectfully dissent from the Majority’s decision to affirm the Examiner’s rejection of claims 10–13 as unpatentable over Tygard and Seaberg. Specifically, I disagree with the Majority’s view that the Examiner has provided an adequate factual explanation to support the conclusion of obviousness. Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection, the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Here, the Examiner determines that it would have been obvious to a skilled artisan “to modify Tygard’s load-clamping assembly to be capable of selectively moving the load forwardly relative to the load-lifting arm assembly as taught by Seaberg in order to provide minor fore-aft adjustments of the load’s position without having to operate the lift truck.” Final Act. 3. I agree with Appellant that the Examiner does not sufficiently explain “how Tygard’s load manipulator 100 will incorporate Seaberg’s hydraulic cylinder 56 to allow Tygard’s damping apparatus 30 to move a load forwardly.” Appeal Br. 14. In particular, the Examiner’s determination that it would have been obvious to a skilled artisan that Tygard’s body 131 could be made to be extensible in a fore-aft direction, based on Seaberg’s disclosure of hydraulic cylinder 56, without adequately explaining how to incorporate such a hydraulic cylinder into Tygard’s load manipulator 100, is conclusory. See In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) Appeal 2020-002117 Application 15/653,926 9 (Conclusory statements are not enough to satisfy the Examiner’s obligation to provide reasoned explanation for its decision.) In other words, the Examiner’s determination of obviousness is not supported by sufficient factual basis to reflect a rational relationship between Seaberg’s disclosure of hydraulic cylinder 56 and making Tygard’s body 131 extensible in a fore-aft direction. “[M]erely drawing a box in Fig. 2 of Tygard above and describing the mounting of the hydraulic cylinder at opposite ends of Tygard’s body,” without explaining “how Tygard’s load manipulator will incorporate Seaberg’s hydraulic cylinder 56 to allow Tygard’s clamping apparatus 30 to move a load forwardly,” is not sufficient to support the Examiner’s conclusion of obviousness. Reply Br. 3. In particular, the Examiner’s explanation that a skilled artisan “could mount the cylinder body [of Seaburg] to the end of body 131 which is proximate to the lift truck [of Tygard] and could mount the piston to the end of body 131 [of Tygard] which is proximate to the load” is not sufficient as such a modification “would render the hydraulic cylinder inoperable because [Tygrad’s] body 131 is a unitary structure incapable of allowing one end to move relative to the other end.” Ans.4; Reply Br. 3 (citing Tygard, Fig. 3). Like the Majority, I appreciate that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” See supra (citing Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343 (Fed. Cir. 2020) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007))). However, I do not agree that merely contending that a skilled artisan would require “[a] minimal amount of creativity and/or skill . . . to avoid the pitfall Appellant envisions” (see supra), without providing an Appeal 2020-002117 Application 15/653,926 10 adequate explanation of how the teachings of Tygard and Seaberg are combined to avoid such “pitfalls” that Appellant argues, is sufficient to satisfy the Examiner’s burden of presenting a prima facie case of obviousness. For the foregoing reasons, I am persuaded of Examiner error and would not sustain the rejection of claims 10–13 as unpatentable over Tygard and Seaberg.