Ex Parte Clemens et al

Patent Trial and Appeal Board

Mar 13, 2013

12207210 (P.T.A.B. Mar. 13, 2013)

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.
12/207,210 09/09/2008 DAVID A. CLEMENS 2063.006196 1309
23720 7590 03/14/2013
WILLIAMS, MORGAN & AMERSON
10333 RICHMOND, SUITE 1100
HOUSTON, TX 77042
EXAMINER
SCHARICH, MARC A
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
03/14/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID A. CLEMENS, JOHN C. DUNNE, MICHAEL S. BECK,
WENDELL H. CHUN and JON T. STINCHCOMB
____________

Appeal 2011-000282
Application 12/207,210
Technology Center 3600
____________

Before MICHAEL L. HOELTER, JOHN W. MORRISON and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David A. Clemens, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 6-10, 13, 17-19, 21,
22, 24 and 29-41. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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The Claimed Subject Matter
The claimed subject matter relates “to ground vehicles and, more
particularly, to a payload module for mobility assist for a ground vehicle.”
Spec. 2, ll. 10-11. Claims 1, 17, 24, 29, 34 and 39 are independent. Claim
1, reproduced below, is illustrative of the subject matter on appeal:
1. A ground vehicle, comprising:
a chassis, the chassis defining a payload bay; and
a payload module capable of articulating into and out of
the payload bay and relative to the chassis to assist mobility of
the ground vehicle.
The Rejections
The following Examiner’s rejections are before us for review:
(1) claim 24 stands rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 7 of Clemens
(US 7,464,775 B2; iss. Dec. 16, 2008);1
(2) claims 29-33 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the invention;
(3) claims 1, 6-10, 13, 17-19, 21, 22, 29, 30 and 34-41 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Soyland (US 4,049,070;
iss. Sep. 20, 1977); and
(4) claim 24 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Watkins (US 5,405,181; iss. Apr. 11, 1995).

1 The Appeal Brief states that the Examiner rejected claims 1, 6-10, 13, 17-
19, 21, 22, 24 and 29-41 for obvious-type double patenting. App. Br. 2.
However, the Examiner rejected only claim 24 on that ground. Ans. 4.
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OPINION
Rejection (1) – Double Patenting
Appellants acquiesce in the Examiner’s nonstatutory obviousness-type
double patenting (ODP) rejection of claim 24 over claim 7 of Clemens.
App. Br. 2. Accordingly, Appellants have waived any appeal of the
rejection.
Rejection (2) – Indefiniteness
The Examiner’s position is that the claim term “articulable payload
module coupling” as used in independent claim 29 is “structurally indefinite
because it fails to contain sufficient structural limitations that are necessary
for one to properly and clearly understand the structure of the apparatus that
is intended to be claimed.” Ans. 5.2 However, a claim is not indefinite if
“one skilled in the art would understand the bounds of the claim when read
in light of the specification.” Exxon Research & Eng'g Co. v. United States,
265 F.3d 1371, 1375 (Fed. Cir. 2001). Here, the Specification discloses an
embodiment in which payload module 112 is mounted to chassis 105 by
joint 600 via a coupling such that that the payload module can be articulated
through 180° of motion. Spec. 8, ll. 20-24 12, ll. 23-25, fig. 9. A skilled
person would understand from this disclosure that an “articulable payload
module coupling” is an articulable coupling capable of being used to connect
a payload module with another structure. See Reply Br. 2. This claim
construction is consistent with the usage of “articulable coupling” in

2 The Examiner rejects claims 30-33 under 35 U.S.C. § 112, second
paragraph, as dependent upon rejected claim 29. Id. at 5.
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claim 24 (“a vertically articulable coupling between the payload module and
the chassis”) and claim 38 (an articulable coupling between the payload
module and the chassis”).
Accordingly, we do not sustain the rejection of claim 29, and claims
30-33 dependent therefrom, under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellants regard as the invention.
Rejection (3) – Anticipation by Soyland
Appellants argue claims 1, 6-10, 13, 17-19, 21, 22, 29, 30 and 34-41
as a group.3 App. Br. 10-13; Reply Br. 4-5. We select claim 1 as
representative; thus, claims 6-10, 13, 17-19, 21-22, 29-30 and 34-41 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Soyland discloses a ground vehicle
(excavator) with all the limitations of claim 1, including “a payload bay” and
“a payload module.” Ans. 6-10. More particularly, the Examiner finds that
“the excavator’s bucket (13) is certainly capable of housing a payload
(something of value that the excavator moves or transports) [i.e. dirt, rocks,
sand {earth}, etc.], thus the payload module [part of which is bucket (13)]
may house such a payload during operation of the excavator.” Id. at 7. The

3 Appellants argue that Soyland fails to anticipate “any” of the claims. App.
Br. 13. This vague statement does not constitute a separate argument for
patentability of the claims pursuant to 37 C.F.R. § 41.37(c)(1)(vii) (2011).
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the
Board reasonably interpreted its rule as requiring “more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”).

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Examiner elaborates that “[t]he excavator is designed for scooping and
moving earth, which IS the payload,” and that “[t]he earth is certainly
something of value that the excavator must move.” Id. at 8.
Appellants’ position is that “Soyland fails to disclose a ‘payload,’ a
‘payload module,’ or a ‘payload bay.’” App. Br. 10. Appellants first argue
that the Examiner’s construction of “payload” is overly broad, that “the earth
materials that might be moved using the scoop of Soyland are not a
‘payload’” and that “[n]obody in the art” would consider such earth
materials to be a “payload.” Id. at 10 and 11. Appellants contend that “[o]n
the evidence of record, the definition of ‘payload’ is much narrower than
that accorded by the Office” and that the dictionary definitions on which the
Examiner relies do “not constitute any evidence of the terms[’] usage in the
art.” Id. at 12 (italics omitted). Appellants also contend that although
“[t]here may be some few, rare applications, in which the dirt may be
valuable,” “by far the largest use of backhoes is to move excavated dirt in
situations where the excavator must actually pay to have the dirt removed.”
Id. Appellants also challenge the Examiner’s application of the term
“payload module” as construed by the Examiner to the bucket of Soyland’s
excavator, arguing that “[w]hile . . . the backhoe is for scooping and moving
earth, it is not for housing the dirt” (App. Br. 12) and “Soyland’s bucket just
holds the dirt temporarily while it moves it from one place to another nearby
place” (Reply Br. 5).
Appellants have not persuaded us of error in the Examiner’s
construction or application of “payload,” “payload module” or “payload
bay.” While an applicant is entitled to be his or her own lexicographer and
may rebut the presumption that a claim term is to be given its ordinary and
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customary meaning by clearly setting forth a definition of the term that is
different from its ordinary and customary meaning(s) (see, e.g., In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)), Appellants have not pointed
us to such a definition in their Specification, and we have found none. Nor
have Appellants persuaded us that the Examiner’s claim construction is
inconsistent with the Specification. See In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989) (the words of the claim must be given their plain meaning unless
the plain meaning is inconsistent with the specification). While the
Specification describes various payloads (including a telescoping mast with
a sensor pod, unmanned ground sensors, a marsupial robot and weapons),
the Specification also discloses that “the ground vehicle 100 is intended for
military applications” and “the payload module 112 provides flexibility to
exchange and alternate payloads depending upon mission goals.” Spec. 8,
ll. 6-11. Such mission goals might reasonably involve excavating and
transporting earth materials or dirt, for example, in war zones or
extraterrestrial locations.
Where, as here, the Specification does not assign or suggest a specific
definition to a claim term, it is appropriate to consult a general dictionary
definition of the term for guidance in determining its ordinary and customary
meaning to one having ordinary skill in the art. See Comaper Corp. v.
Antec., Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). We thus agree with the
Examiner that the broadest reasonable construction of “payload” consistent
with the Specification encompasses earth materials and dirt. See WEBSTER’S
THIRD NEW INT’L DICTIONARY, UNABRIDGED (“payload,” entry 1, def. 2,
“the revenue-producing or useful load that a vehicle of transport can carry:
net load”), accessed at http://lionreference.chadwyck.com (last visited Feb.
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28, 2013); In re Am.Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (during examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification).
We agree with the Examiner that the “payload module” limitation
reads on the bucket of Soyland’s excavator. First, the materials moved or
transported in the bucket are the excavator’s useful load and thus satisfy the
“payload” limitation as properly construed. Appellants’ argument that such
earth materials and dirt ordinarily do not have positive value or use (App.
Br. 12-13) overlooks the many applications, such as grading, horticulture
and mining, in which earth materials and dirt moved by an excavator clearly
do have positive value or use. Second, we do not perceive any error in the
Examiner’s finding that Soyland’s bucket is capable of housing the materials
moved by the excavator. See Ans. 7. Appellants’ argument that the bucket
provides only intermediate or temporary housing for such materials is
unavailing. See, e.g., In re Mullin, 481 F.2d 1333, 1335-36 (CCPA 1973)
(an article is no less anticipatory because it only anticipates for a limited
period of time).
Accordingly, we sustain the rejection of claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Soyland. Claims 6-10, 13, 17-19, 21, 22, 29, 30
and 34-41 fall with claim 1.
Rejection (4) – Anticipation by Watkins
The Examiner’s position is that Watkins discloses all of the
limitations of claim 24. Ans. 10-11. With respect to the limitation “a
payload module,” the Examiner finds that Watkins “discloses an apparatus
[dump vehicle structure] (Figs. 1, 3 and 4) comprising at least: a payload
module [dump body inherently capable of hauling or dumping a material of
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value, i.e. ‘payload’] (12).” Ans. 15. With respect to the limitations “a
rotating joint housed in and affixed to the chassis” and “an enclosure pivot
coupled to the rotating joint,” the Examiner finds that, in Watkins,
[t]he rotating joint solely consists of the wheel (22) rotating
around an axle (24), whereas the enclosure pivot consists of left
and right rectangular bars (enclosures that form safety prop
(18)), which are connected by axle (24), which also happens to
be coupled to the wheel (22), thus forming the rotating joint.
The enclosure pivot and rotating joint may share the axle (24)
as a common horizontal axis, but the rotating joint concerns the
wheel (22) rotating relative to the axle (24), whereas the
enclosure pivot concerns the wheel (22) and axle (24) together
being enclosed between the left and right rectangular bars that
form an enclosure that encloses the rotating joint pivoting as a
whole.
Id. at 16-17.
Appellants challenge the Examiner’s interpretation of the claim terms
“payload” and “payload module” and argue that Watkins fails to teach those
limitations under a proper claim construction. App. Br. 13. For the reasons
discussed supra with respect to claim 1, we are not persuaded of error in the
Examiner’s interpretation or application of the claim terms “payload” and
“payload module.”
Appellants also challenge the Examiner’s construction and application
of the “rotating joint” and “enclosure pivot” limitations. Id.; Reply Br. 5-6.
Appellants argue that these are separately-recited limitations and that the
Examiner errs in applying both limitations against the same structure. App.
Br. 13; Reply Br. 6. This argument, however, is not responsive to the
rejection as articulated by the Examiner. Under the rejection, the “rotating
joint” (wheel 22 and axle 24) and the “enclosure pivot” (safety prop 18 and
axle 24) are separate and distinct structures. See Ans. 10-11 and 16-17.
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That the safety prop, the axle and the wheel may be characterized as
interrelated components of “a single joint,” as Appellants contend, does not
persuade us of error in the Examiner’s analysis. See Reply Br. 6 (quoting
the Watkins abstract).
Appellants’ additional arguments are also unresponsive to the
rejection as articulated by the Examiner. Appellants argue that Watkins
does not disclose the “enclosure” aspect of the claimed “enclosure pivot;”
however, Appellants do not address the Examiner’s analysis that the left and
right rectangular bars of the safety prop 18 enclose the wheel 22 on both its
sides. See Ans. 10-11. We therefore are not persuaded by Appellants’
argument that “[t]here is no ‘enclosure’ in [Watkins.]” Reply Br. 6.
Appellants also argue that Watkins does not disclose a rotating joint
“housed” in the chassis, but do not address the Examiner’s analysis that
wheel 22 is housed within side walls of the “H-shape” of longitudinal
member 16 of chassis 10. See Ans. 10. We therefore are not persuaded by
Appellants’ argument that “there is not even any structure to the chassis that
could actually house the ‘rotating joint.’” Reply Br. 6. Further, we find that
the ordinary and customary meanings of “enclosure” and “housing” support
the Examiner’s analyses.4
Accordingly, we sustain the rejection of claim 24 under 35 U.S.C.
§ 102(b) as anticipated by Watkins.

4 See WEBSTER’S THIRD NEW INT’L DICTIONARY, UNABRIDGED (“enclosure,”
entry 1, def. 3, “something that encloses (as a barrier)” and “house,” vb, def.
5, “to fit (as machinery or gears) with shrouds or protective walls or
housings”), accessed at http://lionreference.chadwyck.com (last visited Feb.
28, 2013).
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DECISION
We reverse the rejection of claims 29-33 under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
We affirm the rejection of claims 1, 6-10, 13, 17-19, 21, 22, 29, 30
and 34-41 under 35 U.S.C. § 102(b) as anticipated by Soyland.
We affirm the rejection of claim 24 under 35 U.S.C. § 102(b) as
anticipated by Watkins.
Appellants have waived any appeal of the rejection of claim 24 on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claim 7 of Clemens.
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-IN-PART

JRG