Ex Parte BIERMAN

Patent Trial and Appeal Board

Dec 6, 2016

12424973 (P.T.A.B. Dec. 6, 2016)

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.
12/424,973 04/16/2009 Steve BIERMAN 60977.0003USU1 1621
96845 7590
Advent, LLP
The Advent Building
17838 Burke Street
Suite 200
Omaha, NE 68118
12/08/2016 EXAMINER
MYERS, GLENN F
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
u spto @ adventip .com
sloma@adventip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE BIERMAN
Appeal 2014-009187
Application 12/424,973
Technology Center 3600
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS,
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steve Bierman (“Appellant”) seeks review under 35 U.S.C. § 134(a)
of the Examiner’s decision, as set forth in the Final Office Action dated
November 29, 2013 (“Final Act.”), and as further explained in the Advisory
Action, dated February 24, 2014 (“Adv. Act.”), rejecting claims 1 and 9-14.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE, and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2014-009187
Application 12/424,973
BACKGROUND
The disclosed subject matter “relates to devices for lifting large
wheels such as dual tractor wheels.” Spec. 12. Claim 1, the sole
independent claim, is reproduced below, with emphasis added:
1. A wheel lifting device comprising:
a first arm comprising a first upper member
and a first lower member, the first lower member
extending downward from the first upper member;
a second arm comprising a second upper
member and a second lower member, the second
lower member extending downward from the
second upper member, the second upper member
pivotally connected to the first upper member in a
scissors arrangement so that the first lower
member and the second lower member are spaced
apart to receive at least a portion of a wheel
assembly there between;
a first wheel support assembly coupled to
the first lower member, the first wheel support
assembly comprising a first cross member
extending from the first lower member, a first
roller assembly coupled to the first cross member,
and a second roller assembly coupled to the first
cross member, the first and second roller
assemblies spaced apart along the first cross
member and configured to engage an inner surface
of a rim of the wheel assembly at corresponding
spaced apart points along a first side of the wheel
assembly when the wheel assembly is lifted; and
a second wheel support assembly coupled to
the second lower member, the second wheel
support assembly comprising a second cross
member extending from the second lower member,
a third roller assembly coupled to the second cross
member, and a fourth roller assembly coupled to
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Application 12/424,973
the second cross member, the third and fourth
roller assemblies spaced apart along the second
cross member to bear on the inner surface of the
rim at two corresponding spaced apart points along
a second side of the wheel assembly when the
wheel assembly is lifted;
wherein the first, second, third, and fourth
roller assemblies are configured to rotate to
facilitate rotation of the wheel assembly.
REJECTIONS1
1. Claims 1 and 9—12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Cooley (US 5,064,334, issued Nov. 12, 1991).
2. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cooley and Bishman (US 2,883,858, issued Apr. 28,
1959).
DISCUSSION
Rejection 1 — The rejection of claims 1
and 9—12 under 35 U.S.C. § 102(b)
Independent claim 1 requires, inter alia, (1) “first and second roller
assemblies spaced apart along the first cross member and configured to
engage an inner surface of a rim of the wheel assembly” and (2) “third and
fourth roller assemblies spaced apart along the second cross member to bear
on the inner surface of the rim.” Appeal Br. 19 (Claims App.). For the first
1 The Examiner rejected claim 14 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention. See Final Act. 2. In the Answer, the
Examiner withdraws this rejection. See Ans. 6.
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Application 12/424,973
limitation, the Examiner identified “[element] 67 with horizontal axis, Fig.
3” in Cooley as the “first roller assembly,” identified “[element] 67 with
vertical axis, Fig. 3” as the “second roller assembly,” and identified element
62 in Figure 3 as the “rim.” Final Act. 3^4. For the second limitation, the
Examiner identified “[element] 67 with horizontal axis, Fig. 3” as the “third
roller assembly,” identified “[element] 67 with vertical axis, Fig. 3” as the
“fourth roller assembly,” and cited “left side, Fig. 3.” Id. at 4.
Appellant argues that Cooley does not disclose or suggest, inter alia,
the two limitations set forth above. Appeal Br. 9. According to Appellant,
the Specification here “discloses a wheel lifting device having respective
roller assemblies (first/second and third/fourth roller assemblies) that bear on
the inner surface of the rim at two corresponding spaced apart points along
respective sides of the wheel assembly when the wheel assembly is lifted as
recited in claim 1.” Id. at 11. Appellant argues that, in contrast, “Cooley
discloses that the outermost of each pair of bearings engages the outer
periphery of the rim as shown in FIG. 3 of Cooley.” Id. at 10-11; see also
id. at 9-10 (quoting Cooley, col. 3,11. 18—21).
The Examiner responds that (1) “the ‘inner surface’ of the wheel
assembly is the surface opposite the tire shown in Fig. 3” of Cooley and (2)
“although the roller with the vertical axis is contacting the vertical face of
the rim shown in Fig. 3, the same roller is also contacting the farthest edge
of the vertical surface with the lowermost part of the roller as shown in
Figure 3.” Ans. 7.
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Application 12/424,973
Figure 3 of Cooley is shown below:
FIG. 3
Figure 3 shows a “perspective view from below of a wheel claim used
in the apparatus” disclosed in Figures 1 and 2. Cooley, col. 1,11. 41^42.
Based on the Final Office Action, the Advisory Action, and the
Answer, we interpret the Examiner’s position as that the identified “second
roller assembly” and “fourth roller assembly”—i.e., the two bearings 67 with
vertical axes of rotation in Figure 3—satisfy the limitations at issue because
the “lowermost part[s] of the roller[s]” contact the “farthest edge of the
vertical surface” and, thus, also interact with, presumably, the edge of the
identified “inner surface” in the particular manners recited. See Ans. 7.
To the extent that the Examiner relies on Figure 3 of Cooley for the
second finding from the Answer as set forth above, we determine that Figure
3 does not show the alleged contact between the “farthest edge of the
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Application 12/424,973
vertical surface” and the “lowermost part[s] of the roller[s]” with sufficient
particularity to support the finding. Ans. 7; see In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972). Further, the Examiner has not identified support for
this alleged contact in the written description of Cooley. As noted by
Appellant, Cooley provides that “[t]he bearings 67 are placed against the rim
62 of the wheel 63, with the outermost of each pair of bearings 67 against
the beaded outer periphery of the rim.”2 Appeal Br. 9-10 (quoting Cooley,
col. 3,11. 18—21). This passage does not, however, support the finding that
the “lowermost part[s] of the roller[s]” necessarily contact the “farthest edge
of the vertical surface.” See Ans. 7.
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 9—12, which depend from claim 1.
Rejection 2 — The rejection of claims 13
and 14 under 35 U.S.C. § 103(a)
Claims 13 and 14 depend from claim 1. Appeal Br. 20 (Claims App.).
The Examiner’s added reliance on Bishman does not remedy the
deficiencies in Cooley, discussed above. Thus, for the same reasons
discussed above, we do not sustain the rejection of claims 13 and 14.
New Ground of Rejection
We enter a new ground of rejection: claims 1 and 9-14 are rejected
under 35 U.S.C. § 112, second paragraph, for failure to particularly point out
and distinctly claim the subject matter of the invention. A claim fails to
comply with 35 U.S.C. § 112, second paragraph, “when it contains words or
2 We remove any boldface from quotations of Cooley.
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Application 12/424,973
phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310,
1314 (Fed. Cir. 2014) (approving, for pre-issuance claims, the standard from
MPEP § 2173.05(e)). Claim 1 recites, inter alia, (1) “first and second roller
assemblies spaced apart along the first cross member and configured to
engage an inner surface of a rim of the wheel assembly at corresponding
spaced apart points along a first side of the wheel assembly” and (2) “third
and fourth roller assemblies spaced apart along the second cross member to
bear on the inner surface of the rim at two corresponding spaced apart points
along a second side of the wheel assembly.” Appeal Br. 19 (Claims App.)
(emphases added).
Claim 1 does not positively recite (i.e., require the presence of) an
“inner surface” of a rim of a wheel assembly as part of the claimed
combination. Instead, claim 1 attempts to define the spacing and/or
configuration of the various “roller assemblies” (which are positively
recited) in relation to an “inner surface” of a rim. Neither the claim nor the
Specification, however, defines the features (e.g., the shape or size) of the
“inner surface.” By attempting to define certain aspects of the “roller
assemblies” in relation to the unclaimed and essentially undefined “inner
surface,” the limitations set forth above render claim 1 unclear. See Ex parte
Miyazaki, 89 USPQ2d 1207, 1212—13 (BPAI 2008) (precedential) (holding
indefinite claims defining the height of a paper feeding unit relative to a
person whose position relative to the claimed printer was not well-defined in
the claim, because the claimed height of the paper feeding unit did not
present a structural limitation on the height at all).
We note that the Specification depicts, in Figure 2, an exemplary
embodiment of a rim with an “inner surface.” See Spec. Fig. 2,112
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Application 12/424,973
(“Wheel 40 includes a rim 42 having an inner surface 44. Wheels 30 of
device 10 contact surface 44 when device 10 is used to lift wheel 40. When
wheel 40 is lifted, for example by chain hoist, wheels 30 bear on surface 44
of rim 42.”). We decline to read the preferred embodiment of the “inner
surface” (e.g., the depicted shape) into claim 1, however, because the claim
language is broader than the embodiment shown. See In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the
claims from the specification.”); Anchor Wall Sys., Inc. v. Rockwood
Retaining Walls, Inc., 340 F.3d 1298, 1306-07 (Fed. Cir. 2003) (stating that
“the mere fact that the patent drawings depict a particular embodiment of the
patent does not operate to limit the claims to that specific configuration”);
see also Spec. 113 (“Although a few exemplary embodiments of the present
invention have been shown and described, the present invention is not
limited to the described exemplary embodiments. Instead, it would be
appreciated by those skilled in the art that changes may be made to these
exemplary embodiments without departing from the principles and spirit of
the invention, the scope of which is defined by the claims and their
equivalents.”). Thus, we conclude that claim 1 is indefinite under 35 U.S.C.
§112, second paragraph. Dependent claims 9-14 also fail to sufficiently
define the “inner surface” and thus are also indefinite.
For these reasons, we conclude that claims 1 and 9—14 are indefinite
under 35 U.S.C. § 112, second paragraph.
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Application 12/424,973
DECISION
We REVERSE the decision to reject claims 1 and 9—12 under
35 U.S.C. § 102(b) and REVERSE the decision to reject claims 13 and 14
under 35 U.S.C. § 103(a).
We enter a NEW GROUND OF REJECTION for claims 1 and 9-14
under 35 U.S.C. § 112, second paragraph, pursuant to our authority under
37 C.F.R.§ 41.50(b).
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
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and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R, $ 41.50(b)
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