Ex Parte 7201554 et al

Board of Patent Appeals and Interferences

Sep 2, 2010

90008968 (B.P.A.I. Sep. 2, 2010)

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.
90/008,968 12/20/2007 7201554 M587 0016/GNM 4041
73693 7590 09/02/2010
SIMPLE IP LAW, P.C.
9600 SW OAK STREET.
SUITE 525
TIGARD, OR 97223
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/02/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOGUE INDUSTRIES LLC
Appellant
____________

Appeal 2010-005881
Reexamination Control 90/008,968
Patent 7,201,554
Technology Center 3900
____________

Before SALLY C. MEDLEY, DANIEL S. SONG, and KEN B. BARRETT
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-005881
Reexamination Control 90/008,968
Patent 7,201,554

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Hogue Industries LLC (“Hogue”), the owner of the patent under
reexamination, appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 7-24. We have jurisdiction under 35 U.S.C. §§ 134(b)
and 306. We AFFIRM-IN-PART.
STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte re-examination, filed by Gavin N. Manning (Request for Ex Parte
Reexamination, filed 20 Dec. 2007). The current appeal is related to Appeal
No. 2009-006020, Reexamination Control 90/008,119, Patent No. 6,991,423
which is decided concurrently with the present appeal.
The ‘554 patent issued with 20 claims. Hogue added claims 21-24
and amended claims 1, 4, 6-9, 12-15 and 18-19. Claims 1-6 have been
allowed.
The Disclosed Invention
Hogue’s patented invention is related to a machine and method for
stacking lumber into packages. Col. 1, ll. 13-19.
The subject matter of the appealed claims is illustrated by claim 21
(underlining removed, italics added for emphasis), which defines the
invention as:
A material stacker, comprising:
a frame;
a first plurality of stacking arms arranged along the frame;
a second plurality of stacking arms arranged along the
frame;
one or more first electrically-controlled positioners
configured to position the first plurality of stacking arms in a
horizontal relationship with respect to the frame;
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one or more second electrically-controlled positioners
configured to position the second plurality of stacking arms in a
horizontal relationship with respect to the frame; and
an electronic control system configured to independently
control the operation of the first and second electrically-
controlled positioners to operate the stacker, wherein the
electronic control system is configured to control the speed,
position, and acceleration of the stacking arms through the
positioners based on a horizontal position of the stacking arms
by sending separate signals to the first and second electrically-
controlled positioners.

The Examiner relies on the following prior art references:
Rysti 4,201,506 May 06, 1980
Johansson 4,290,723 Sep. 22, 1981
Delta Lumber Stacker Application Note (“DLS”) Apr. 07, 1998
Hogue appeals the following rejections:
Claims 7-9 and 15-20 under 35 U.S.C. § 103(a) as unpatentable over
Rysti in view of DLS;
Claims 10-14 and 21-24 under 35 U.S.C. § 103(a) as unpatentable
over Rysti in view of Johansson and DLS; and
Claims 15-20 under 35 U.S.C. § 305 as unpatentable for violating the
prohibition against enlargement of the scope of a patent claim under
reexamination proceeding.
ISSUES
Has the Examiner erred in determining that claims 15-20 enlarge the
scope of an original issued claim of the ‘554 patent under reexamination?
Has the Examiner erred in finding that the applied prior art describes
an electronic control system configured to independently control the first
and second electrically-controlled horizontal positioners?
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FINDINGS OF FACT
1. Hogue amended claim 15 of Patent 7,201,554 as follows (insertions
underlined, subtractions [bracketed]):
A method of stacking material in a stacking device,
comprising:
electronically controlling the speed and positioning of one or
more first linear positioning devices to control the horizontal
movement of a first set of stacking arms;
electronically controlling the speed and positioning of one or
more second linear positioning devices to control the horizontal
movement of a second set of stacking arms;
electronically controlling the speed and positioning of one or
more linear positioning devices to control the vertical
movement of the stacking arms;
determining the horizontal position of the stacking arms by
using one or more position monitoring devices; and
controlling the vertical movement of [each of] the stacking
arms based on [a] the horizontal position of [that stacking arm]
the stacking arms.

Rysti
2. Rysti describes, referring to Rysti’s figures 8 and 9 reproduced below
[numbers from figures 8 and 9 inserted], a lumber stacker including a
central pair of lifting arms [36] and an outer pair of lifting arms [36a],
[36b]. Col. 3, l. 33-col. 4, l. 14; col. 8, l. 56-col. 9, l. 12.
Rysti’s figure 8 is below:

Figure 8 depicts a transverse elevation view of the lumber stacker.
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Rysti’s figure 9 is below:

Figure 9 depicts a plan view of the lumber stacker.
3. Central pair of lifting arms [36] are supported on a central carriage
[68] and moved between extended and retracted positions by endless
chains [102] and vertically raised and lowered by hydraulic cylinders
[78], [80]. Col. 4, ll. 34-38; col. 5, ll. 6-15; col. 7, l. 13-col. 8, l. 8;
col. 8, ll. 45-55; col. 10, ll. 13-16; fig. 11.
4. Outer lifting arms [36a], [36b] are supported by carriages [122], [124]
and moved between extended and retracted positions by endless
chains [158] and vertically raised and lowered by hydraulic cylinders
[142], [144]. Col. 8, l. 56-col. 9, l. 48; col. 10, ll. 4-22; fig. 10.
Johansson
1. Johansson describes, referring to Johansson’s figure 1 reproduced
below [numbers from figure 1 inserted], a timber package arranger
including a feed conveyor [1] and two individually movable carrier
planes [5], [6]. Col. 1, l. 59-col. 2, l. 7.
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Johansson’s figure 1 is below:

Figure 1 depicts a timber package arranger.
2. The carrier planes [5], [6] act consecutively one after another with
each acting as both a layer assembler and transfer device and move
cyclically by control of the programmed control unit. Col. 2, ll. 4-10.
3. One of the carrier planes constitutes a continuation of the conveyor
feed path for assembling the layer of lumber while the other carrier
plane transfers the layer of lumber to the lumber package [7] on the
stacking table [8]. Col. 1, l. 59-col. 2, l. 20; claim 1.
4. One of the carrier planes is always in a phase of its cyclic movement
that constitutes a continuation of the feed conveyor [1] for receiving
the timber pieces from the conveyor [1]. Abs.; claim 1.
5. Johansson describes, referring to Johansson’s figure 2 reproduced
below [numbers from figure 2 inserted], that carrier plane [5] includes
a plurality of fingers [9] each movable along a guide [11] with each of
the plurality of fingers [9] and supported on its respective guide [11],
by a carriage [12]. Col. 2, ll. 21-28.
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Johansson’s figure 2 is below:

Figure 2 depicts a top view of a portion of the timber package arranger.
6. In order to cause the carriages [12], and thereby the fingers [9] of
carrier plane [5] to move along the guides [11], the carriages [12] are
each connected by a link [15] with a drive mechanism [16]
comprising an endless chain [17] provided about sprockets [18], one
of which is stationary on a drive shaft [19]. Col. 2, ll. 27-33.
7. The drive shaft [19], is common to all drive mechanisms [16] for the
carrier plane [5], thereby the fingers [9] of carrier plane [5] are moved
synchronously. Col. 2, ll. 33-36.
8. For lifting and lowering the carrier plane [5], the guides [11] are
pivotal about a common support point [10] by piston-cylinder means
[20], one for each guide [11] that are driven synchronously to
maintain the fingers [9] of the carrier plane [5] on the same level.
Col. 2, ll. 36-39, 43-47.
9. The carrier plane [6] is similar to the carrier plane [5] and is driven in
the same manner. Col. 2, ll. 47-55.
10. The advancing movement of the carrier planes [5], [6] during
assembly of a timber package layer [21] from the feed conveyor [1]
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can take place continuously or in steps and is controlled by the
programmed control unit in agreement with the speed of the feed
conveyor. Col. 3, ll. 26-48; claims 4-5.
DLS
11. DLS describes, referring to DLS’ figure reproduced below, a lumber
stacker with a single set of forks that are lifted and extended out over
a stack of lumber at high speed and then lowered onto the top of the
stack and retracted. P. 1, ¶ 3.
DLS’ figure is below:

DLS’ figure depicts a lumber stacker
12. The forks are mounted on a carriage that is moved back and forth by a
hydraulic cylinder and raised and lowered by a hydraulic cylinder
mounted on the carriage. P. 2, ¶ 7.
PRINCIPLES OF LAW
In accordance with 35 USC § 305, a proposed amended claim
enlarging the scope of a patent claim will not be permitted in a
reexamination proceeding. A claim of a reexamination application will be
broader in scope than the patent claims if it contains within its scope any
conceivable apparatus or process which would not have infringed the
original patent. In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994). An
amended claim that is broader than the patent claims in any respect is
considered to be broader than the patent claims even if it may be narrower in
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other respects. Id. The issue of whether an amendment enlarges the scope
of a claim is a matter of claim construction. Id.
The initial burden is on the examiner to establish a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). There
must be a factual basis to support a conclusion of obviousness. In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (Deficiencies in the factual
basis can not be supplied by resorting to speculation, assumptions and
hindsight reconstruction). A conclusion of obviousness requires an
accounting for all of the limitations in a claim. CFMT, Inc. v. Yieldup Int’l.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
ANALYSIS
Claim Scope Enlargement under 35 USC § 305
Hogue amended the last clause of independent claim 15 of Patent
7,201,554 from “controlling the vertical movement of each of the stacking
arms based on a horizontal position of that stacking arm” to “controlling the
vertical movement of the stacking arms based on the horizontal position of
the stacking arms.”
In rejecting claims 15-20 under 35 U.S.C. § 305, the Examiner
determined that amended claim 15 is broader than original claim 15 because
amended claim 15 includes controlling the stacking arms together instead of
controlling the stacking arms individually as required by original claim 15.
Ans. 7, 16. The Examiner further determined that the amended claim 15
contains a process, i.e., common control, which would not have infringed the
original patent. Ans. 16.
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We agree with the Examiner. We understand the Examiner as having
determined that amended claim 15 is broader in scope since it permits both
commonly controlling the movement of the stacking arms and individually
controlling the movement of the stacking arms, while patent claim 15
requires individually controlling the movement of each one of the stacking
arms.
Hogue’s argument that requiring common movement is more
restrictive than permitting individual movement (Br. 38) is misplaced. The
Examiner determined the opposite - that amended claim 15 permits common
control while patent claim 15 requires individual control. Hogue does not
otherwise challenge the examiner’s findings and determination regarding the
scope of the original patent claim 15 and the amended patent claim 15. The
Examiner’s findings and determinations in that regard are reasonable and
Hogue has failed to sufficiently demonstrate otherwise.
Next, Hogue argues that, even assuming amended claim 15 is broader
than original claim 15, amended claim 15 is not broader than other original
claims; namely claims 3, 13 and 22. Br. 38-39. Specifically, Hogue argues
that “controlling the vertical movement of the stacking arms based on the
horizontal position of the stacking arms” of amended claim 15 is nearly
identical to the limitation found in original claim 3 and similar to the
limitations found in claims 13 and 22. Br. 38-39.
Hogue’s arguments directed to claim 22 are not persuasive since claim
22 is not an original patent claim. Moreover, Hogue’s arguments with
respect to original claims 3 and 13 are misplaced since they are based on an
incorrect comparison of claims. Original patent claim 3 ultimately depends
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from original independent claim 1 and original patent claim 13 ultimately
depends from original patent independent claim 10. Both original claim 3
and original claim 13 are apparatus claims and narrower in scope than
original patent claim 15 and amended claim 15, which are both method
claims. It would be of no consequence to compare amended method claim
15 to original apparatus claims 3 and 13 of the patent, since the scope of
amended claim 15, like original patent claim 15, is necessarily different in
scope than original patent claims 3 and 13. The comparison must be made
between an original patent claim that is closest to the amended claim 15.
Claim 15 of the patent is the appropriate basis of comparison with amended
claim 15.
Hogue also argues that the scope of amended claim 15 is narrower
than the original claims since some of the original claims did not require
control of the vertical movement. Br. 39. Hogue’s arguments are misplaced
because an amended claim that is broader than the patent claims in any
respect is considered to be broader than the patent claims even if it may be
narrower in other respects. Freeman, 30 F.3d at 1464.
For all these reasons, we sustain the Examiner’s rejection of claims
15-20 as unpatentable for enlarging the scope of a patent claim under
reexamination proceeding.
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Obviousness of claims 10-14 and 21-24 over Rysti, Johansson and DLS2
Independent claim 21 is representative of the group and recites
(disputed limitations in italics): “one or more first electrically-controlled
positioners configured to position the first plurality of stacking arms in a
horizontal relationship . . . one or more second electrically-controlled
positioners configured to position the second plurality of stacking arms in a
horizontal relationship . . . ; and an electronic control system configured to
independently control the operation of the first and second electrically-
controlled positioners . . . .”
The Examiner finds that Rysti describes a lumber stacker including
first and second sets of stacking arms [36], [36a], [36b], horizontal
positioners [68], [122], [124] and vertical positioners [78], [80], [142],
[144]. Ans. 5, 8; see col. 6, l. 62-col. 10, l. 48; figs. 8-11. The Examiner
does not rely on Rysti for describing an electronic control system. Instead,
the Examiner finds that Johansson and DLS suggest using an electronic
control system which provides the advantage of automating the process with
independent, precise control of the speed, acceleration, and position of the
arms. Ans. 5, 8.
Johansson describes a timber package arranger that includes a feed
conveyor and independently movable carrier planes [5], [6] that are moved
cyclically by control of a programmed control unit. Col. 1, l. 59-col. 2, l. 7.
The carrier planes [5], [6] act consecutively after one another with each

2 Hogue and the Examiner disagree about whether DLS qualifies as prior art.
App. Br. 7, 9-11; Ans. 8-9. We need not resolve the issue, since even
assuming DLS is prior art, we do not sustain the Examiner’s rejection of
claims 10-14 and 21-24 based on Rysti, Johansson and DLS.
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carrier plane acting as both a layer assembler and a transfer device. Col. 2,
ll. 4-10. One of the carrier planes [5], [6] is always in a phase of its cyclic
movement to constitute a continuation of the feed conveyor [1] for receiving
timber pieces. Abs.; col. 1, l. 59-col. 2, l. 20; claim 1.
Carrier plane [5] includes a plurality of fingers [9] each movable
along a guide [11] with each of the plurality of fingers [9] supported on its
respective guide [11] by a carriage [12]. Col. 2, ll. 21-27. The carriages
[12] are each connected with a drive mechanism [16] comprising a common
drive shaft [19] to move the carriages [12] and fingers [9] of carrier plane [5]
synchronously. Col. 2, ll. 27-37. Similar to carrier plane [5], carrier plane
[6] includes a plurality of fingers [9’] guides [11’] and carriages [12’]
connected with a drive mechanism [16’] (not shown in figure 1) comprising
a common drive shaft [19’] that moves the carriages [12’] and fingers [9’] of
carrier plane [6] synchronously. Col. 2, ll. 21-37, 47-55.
DLS describes a lumber stacker with a single set of forks mounted on
a carriage that is moved back and forth (i.e., horizontally) by a hydraulic
cylinder and raised and lowered by a hydraulic cylinder mounted on the
carriage. P. 2, ¶ 7; DLS’ figure.
The Examiner finds that Johansson describes separate horizontal
positioners (i.e., drive shafts [19], [19’]) and controllers (i.e., drive
mechanisms [16], [16’]) that are independent controllers of the positioners
since they are separate. Ans. 6, 8, 10. The Examiner also finds that DLS
teaches that different positioners are controlled independently since each
hydraulic cylinder can be independently controlled. Ans. 10, citing DLS pp.
3-4. The Examiner concluded that it would have been obvious to one with
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ordinary skill in the art at the time the invention was made to modify Rysti’s
invention to include an electronic control system as suggested by Johansson
and DLS for the advantage of automating the process with independent,
precise control of the speed, acceleration and position of the arms. Ans. 5, 8.
Hogue argues that neither Johansson nor DLS teach an electronic
control system configured to independently control the first and second
horizontal positioners. Br. 14-15. We agree.
There is an insufficient factual basis for concluding that the claimed
invention would have been obvious. Neither Johansson nor DLS account for
the claim limitations left unaddressed by Rysti; specifically, an electronic
control system configured to independently control the first and second
horizontal positioners.
Although it may be possible for Johansson’s drive mechanisms [16],
[16’] to independently control the drive shafts [19], [19'] (i.e., horizontal
positioners) due to the physical separation of the respective drive
mechanisms [16] and drive shafts [19], Johansson’s description does not
suggest an electronic control system configured to independently control the
horizontal postioners (i.e., drive shafts [19], [19]). Each of Johansson’s
drive mechanisms [16], [16’] are a mechanical device comprising an endless
chain [17] provided about sprockets [18]. Col. 2, ll. 27-33. Mechanical
devices which are physically separate from one another do not necessarily
suggest an electronic control system configured to independently control
multiple horizontal postioners. Johansson also describes a programmed
control unit, but the Examiner does not direct us to, and we can not find,
where Johansson describes, or suggests, that the programmed control unit is
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configured to independently control the drive shafts [19], [19'] (i.e.,
horizontal positioners).
DLS also does not describe an electronic control system configured to
independently control the first and second horizontal positioners. The
Examiner does not direct us to, and we can not find, where DLS describes or
suggests an electronic control unit configured to independently control the
first and second horizontal positioners. The Examiner acknowledges that
DLS does not describe multiple horizontal positioners. Ans. 10. In light of
this, the significance of DLS is unclear. DLS’ description of controlling the
horizontal and vertical movement of the forks each with a corresponding
hydraulic cylinder does not suggest an electronic control system configured
to independently control first and second horizontal positioners when DLS
does not describe more than one horizontal positioner.
As applied by the Examiner, Rysti, DLS and Johansson, alone or in
combination, do not account for all the claim limitations and provide a
sufficient factual basis to conclude that the claimed invention would have
been obvious. For all these reasons we do not sustain the Examiner’s
rejection of claims 10-14 and 21-24 as obvious over Rysti in view of
Johansson and DLS.
Obviousness of claims 7-9 over Rysti in view of DLS
Independent claim 7 is similar to independent claim 21 and recites:
“an electronic control system configured to independently control each of
the plurality of electrically-controlled horizontal positioners . . . .” Since
claim 7 includes limitations that are nearly identical to the disputed
limitations of claim 21, for the same reasons as those addressing claims 10-
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14 and 21-24, we do not sustain the Examiner’s rejection of claims 7-9 as
obvious over Rysti in view of DLS.
Obviousness of claims 15-20 over Rysti in view of DLS
Affirmance of the Examiner’s rejection of claims 15-20 under
35 U.S.C. § 305 makes it unnecessary to reach the obviousness rejection of
claims 15-20 over Rysti in view of DLS. Cf. In re Gleave, 560 F.3d 1331,
1338 (Fed. Cir. 2009)(not reaching obviousness after finding of
anticipation).
DECISION
We AFFIRM the rejection of claims 15-20 under 35 U.S.C. § 305 as
unpatentable.
We REVERSE the rejection of claims 7-9 under 35 U.S.C. § 103(a) as
unpatentable over Rysti in view of DLS.
We REVERSE the rejection of claims 10-14 and 21-24 under
35 U.S.C. § 103(a) as unpatentable over Rysti in view of Johansson and
DLS.
TIME PERIOD
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
ORDER
AFFIRMED-IN-PART

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SIMPLE IP LAW, P.C.
9600 SW OAK STREET
SUITE 525
TIGARD, OR 97223

Third Party Requester

Gavin N. Manning
OYEN WIGGS GREEN & MUTALA LLP
480 – The Station, 601 West Cordova Street
Vancouver, Canada V6B 1-G1