Ex Parte Degen et al

Patent Trial and Appeal Board

Oct 26, 2018

13261757 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/261,757 01/21/2014
54004 7590 10/26/2018
MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY
SUITE 1001
WESTBOROUGH, MA 01581
FIRST NAMED INVENTOR
Alexander Degen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
WEM-157US 7155
EXAMINER
ARMSTRONG, KYLE
ART UNIT PAPER NUMBER
3678
MAIL DATE DELIVERY MODE
10/26/2018 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 ALEXANDER DEGEN and
WILHELM DEGEN 1
Appeal 2018-001981
Application 13/261,757
Technology Center 3600
Before JAMES P. CALVE, ANNETTE R. REIMERS, and
BRANDON J. WARNER, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 19-27, 29, 31-35, and 37--40.2 Claims 30 and 36 are
cancelled. Appeal Br. 16, 17 (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Applicants are identified as the real parties in interest. Appeal Br. 2.
2 Claim 28 was indicated to be allowable if rewritten in independent form to
include all of the limitations of the base claim and intervening claims. Final
Act. 8.
Appeal 2018-001981
Application 13/261,757
CLAIMED SUBJECT MATTER
Claims 19 and 38 are independent, with claim 19 reproduced below.
19. A device, comprising:
a vibrator arrangement including a pipe which has an
upper end and a lower end and which has two cable holders
which are arranged on the pipe spaced from the upper end
thereof, a first cable being fastened on one of the cable holders
and a second cable being fastened on an other one of the cable
holders, wherein the cable holders are configured, together with
the pipe, to penetrate into the ground;
a support device for the vibrator arrangement and the first
and second cables, wherein the support device includes a guide
device on which the first and second cables are guided and
which, in a longitudinal direction of the pipe, is arranged
between the cable holders and the upper end or above the upper
end and wherein the first and second cables are used to raise the
vibrator arrangement and wherein the vibration arrangement is
lowered solely as a result of inherent weight thereof without
any additional external force acting thereon.
Appeal Br. 14 (Claims App.).
REJECTIONS
Claims 19 and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Degen (US 3,309,877, iss. Mar. 21, 1967).
Claims 19--27, 29, 34, 35, and 37--40 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Degen and Labrue (FR 72.03451, pub. Sept.
21, 1973).
Claims 31-33 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Degen, Labrue, and Rusche (US 4,280,772, iss. July 28, 1981 ).
2
Appeal 2018-001981
Application 13/261,757
ANALYSIS
Background
Prior art vibrators have been fastened at an upper end to roller head 3
and then suspended by cable 6 from mast head roller 2 at an upper end of
mast 8. Spec. 2:5-9. Because roller head 3 cannot penetrate the ground, the
useful length of the device is the length of vibrator 1 (z), rather than the total
height of the excavator and its mast 8 (x, y, z). Id. at 2:10-17, see Fig. 1.
In contrast to the prior art, the claimed device arranges a guide device
(mast head rollers 5) of a support device 4 along the length of vibrator 1 and
suspends vibrator 1 from mast head rollers 5 by cables 6 affixed to holders 7
on vibrator 1. This arrangement reduces the overall height while retaining
the useful length of the device and allows use of the device near airports, or
under bridges or power lines. Id. at 5:23---6:2.
Drawings of the prior art and claimed device are reproduced below.
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Figure 1 illustrates a prior art vibrator 1 that is suspended from mast 8
by cables 6. Figure 2 illustrates Appellants' claimed device with vibrator 1
suspended from mast head rollers 5 of support device 4 via cables 6 that are
attached to cable holders 7 on vibrator 1. Spec. 5: 18---6: 17.
3
Appeal 2018-001981
Application 13/261,757
Claims 19-27, 29, 34, 35, and 37-40
Rejected As Unpatentable Over Degen and Labrue
Appellants argue claims 19-27, 29, 34, 35, and 37--40 as a group. See
Appeal Br. 5-12. We select claim 19 as the representative claim, with
claims 20-27, 29, 34, 35, and 37--40 standing or falling with claim 19. See
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner relies on Degen to teach a basic vibrator arrangement,
as recited in claim 19, including pipes (tubes 14) having two cable holders
(fastenings 22) arranged thereon and spaced from an upper end, with cables
(ropes 25) fastened to each cable holder 22. Final Act. 4. The Examiner
finds that Degen discloses a guide device as pulleys 24 mounted on arm 23,
which is positioned in a longitudinal direction of pipes 14 in Figure 5. Id.
The Examiner relies on Labrue to teach cable holders (rings 26) that
are configured to penetrate the ground and positioned towards a bottom end
of the vibrator. Id. at 5. The Examiner reasons that a skilled artisan would
have used such cable holders to improve Degen's versatility, marketability,
and profitability by allowing the pipes to be vibrated to greater depths by
adding new pipe sections and reattaching the cables to other cable holders.
Id.; Ans. 4---6. The Examiner also reasons that such an arrangement would
configure Degen's guide device 23, 24 between a top end of vibrator 1 and a
set of cable holders of Labrue, as claimed. Id. Additionally, the Examiner
reasons that, depending on soil conditions, Degen's vibrator would be
lowered and inserted into the ground solely as a result of its inherent weight,
as claimed. Ans. 5; see Final Act. 3--4 (Degen's vibrator could advance past
guide 23 when vibrating loose soils ( e.g., sands) so guide is above the upper
end as claimed and the cables could raise the vibrator).
4
Appeal 2018-001981
Application 13/261,757
Appellants argue that Degen's cable holders are not configured to
penetrate into the ground, as claimed, and furthermore, that Degen would be
rendered inoperable if its fasteners 22 were so configured. Appeal Br. 8-9;
Reply Br. 4, 6-7. This argument is not persuasive for several reasons. First,
and foremost, the Examiner relies on Labrue to teach cable holders. Final
Act. 5. We agree with the Examiner that Labrue discloses attachment rings
26 fastened along vibrator base 18 and configured to penetrate the ground as
illustrated in Figures 1 and 2 of Labrue. See Labrue, 1. 3 Indeed, Appellants
admit that Labrue' s attachments 26 penetrate the ground. 4 Appeal Br. 11.
Appellants also argue that modifying Degen so the cable holders can
penetrate the ground would make the device of Degen inoperable. Appeal
Br. 8-9; Reply Br. 6-7. Appellants are correct that the Figure 5 embodiment
of Degen can attach ropes 25 from winch 26 to the cable holders (fastenings
22) and then use the weight of the vehicle to force vibrator tubes 14 into the
ground as winch 26 exerts a downward force on the vibrator via ropes 25,
pulleys 24, and fastenings 22. See Degen, 3:19-32.
However, the Examiner is correct to find that Degen discloses other
embodiments (e.g., Figure 4) in which the vibrator can penetrate the ground
using only its inherent weight, as claimed, and could do so in the Figure 5
embodiment depending on soil conditions, thereby allowing the top end and
fastenings 22 to pass below pulleys 24 and into the ground. See Ans. 4---6.
3 All citations to Labrue are to the English language translation provided by
Patent Translate at the European Patent Office on June 12, 2015.
4 Claim 19 does not recite any structural features of the cable holders that
allow them to penetrate the ground. The Specification discloses only that
suspension rings or ring holders 7 hold cables. Spec. 7: 1 7-21. Labrue
discloses ring holders 26 that hold cables 16 and penetrate the ground. The
Examiner finds that Degen's fasteners 22 can penetrate some soils. Ans. 4.
5
Appeal 2018-001981
Application 13/261,757
In this regard, Degen teaches that "[t]he apparatus shown in FIG. 5 is
operated in the same manner as described with reference to FIG. 4." Degen,
3:34--35. Regarding Figure 4, Degen discloses that the vibrator is suspended
by rope 17 from boom 15 on the same track-laying vehicle 16 as in Figure 5
and then the vibrator "is lowered by means of a winch 18." Id. at 2:60-62.
Degen discloses that the vibrator thus "penetrates the soil when the vibrator
motor is running, whereby the soil is laterally displaced first by the point of
the vibrator, and thereafter by the vibrating casing itself, and is compacted in
zones 19 and 20 about the hole formed." Id. at 2:62---66. Degen teaches that
the downward force is provided by the string of rods and any supplemental
weights 12 that are used. Id. at 2:66-72. Therefore, the vibrator is lowered
and penetrates the soil "solely as a result of inherent weight thereof without
any additional external force acting thereon" as claimed. See Ans. 5.
In view of these teachings of Degen, the Examiner had a sound basis
for concluding that a skilled artisan would have been motivated to allow the
vibrator string of tubes 14 in Degen's Figure 5 embodiment to pass below
pulleys 24 and arm 23 and to penetrate the soil without any external force
from ropes 25 or winch 26 acting thereon, for example, when vibrating loose
soils, particularly sands, as in the Figure 4 embodiment of Degen. Final Act.
3; see Ans. 4. In such situations, Degen's guide device (pulleys 24, arm 23)
would be positioned "above the upper end" of the vibrator arrangement as
claimed. 5 Degen's guide device 23, 24 also would be between cable holders
on lower tubes 14 and the upper end as claimed. See Ans. 4--5.
5 Claim 19 recites that the guide device is either ( 1) "arranged between the
cable holders and the upper end" or (2) "above the upper end." We interpret
these limitations as alternative limitations such that the prior art may satisfy
either limitation to meet the requirements of claim 19. See Ans. 5.
6
Appeal 2018-001981
Application 13/261,757
Because Degen expressly teaches the use of its vibrator to penetrate
the soil without any additional external force acting thereon in Figure 4, we
agree with the Examiner that it would have been obvious to allow vibrator
tubes 14 in the Figure 5 embodiment to pass below arm 23 and pulleys 24
and to penetrate the soil without any additional external force exerted by the
cables, winch, or vehicle weight. This arrangement of Degen is consistent
with the language of claim 19 interpreted in view of the Specification. 6 See
Ans. 4 ("Depending on the soil density and water conditions, it is possible
for the penetration force from the weight of the vibrator apparatus to be
greater than the friction force of the soil, the vibrator apparatus can 'sink'
under its own accord without assistance from the cables and winches."), 5
("it would have been possible for it to do this - particularly considering if
the soil conditions at the project site exhibit running sand conditions or voids
as noted ... above."); see Degen, 3:42--46 (vibrators penetrate sandy soils).
Because the Figure 5 embodiment operates the same as the Figure 4
embodiment in Degen (Degen, 3:34--35), the Examiner had a sound basis to
conclude that it would have been obvious to attach cables to fasteners 22 or
cable rings of Labrue when vibrator 14 falls below arm 23 and pulleys 24
"to raise the vibrator arrangement" as claimed. Final Act. 3. Degen teaches
that upward motion is provided by ropes 17, as in Figure 4, and shows two
hooks in Figure 5 for that purpose with lifting winch 18, which powers
movement in the lifting/upward direction. Degen, 2:60-3:18, 3:28-33.
6 Although claim 19 recites that "the vibration arrangement is lowered solely
as a result of inherent weight thereof without any additional external force,"
Appellants disclose that vibrator is lowered by a winch (not shown) and
cables 6. Spec. 6: 14--17. Thus, the use of cables to lower a vibrator in
Degen nonetheless falls within the scope of claim 19.
7
Appeal 2018-001981
Application 13/261,757
As Appellants point out repeatedly, once Degen's vibrator upper end
passes below arms 23 and pulleys 24, winch 26 and cable ropes 25 no longer
provide any force to vibration tubes 14. See Appeal Br. 8-9; Reply Br. 5-7.
Therefore, as Degen teaches for Figure 4 's embodiment, which governs the
operation of Figure 5 's embodiment, winch 18 and cable 17 are used to lift
vibration tubes 14 from a hole in the ground and would have been used to do
so where vibration tubes 14 were allowed to penetrate soil under their own
weight as Degen teaches to do for both embodiments. Degen, 3:28-33. In
such operational situations, cables would be attached to each cable holder,
such as fasteners 22 or Labrue's rings 26, e.g., via hooks shown in Figure 5,
and the vibration arrangement would be lifted from the hole that is formed
so the hole can be filled with additional soil 21 and the vibrator is lowered
again. See Degen, 2:60-3:10, 3:28-33. This lift arrangement teaches and
renders obvious first and second cables fastened to respective cable holders
and then "used to raise the vibrator arrangement" as recited in claim 19.
Because most of Appellants' criticisms of the Examiner's findings
and reasoning are premised on the contention that "nowhere does Degen
teach the recited feature of the vibration arrangement being lowered solely
as a result of inherent weight thereof without any additional external forces
acting thereon" (Appeal Br. 9), Appellants' arguments are not persuasive in
view ofDegen's teaching of just such an arrangement in Figure 4 and the
interoperability of the Figure 4 and Figure 5 embodiments. Degen, 3:34--38.
Thus, we sustain the rejection of claims 19-27, 29, 34, 35, and 37--40
as unpatentable over Degen and Labrue. Because we sustain this rejection,
we do not decide whether claims 19 and 3 8 are unpatentable over teachings
of Degen alone. See Final Act. 2--4.
8
Appeal 2018-001981
Application 13/261,757
Claims 31-33
Rejected As Unpatentable Over Degen, Labrue, and Rusche
Appellants argue that Rusche does not overcome the deficiencies of
Degen and Labrue as to claim 19 from which claims 31-33 depend. Appeal
Br. 12-13. Because we sustain the rejection of claim 19 as unpatentable
over Degen and Labrue, this argument is not persuasive, and we also sustain
the rejection of claims 31-33.
DECISION
We affirm the rejection of claims 19-27, 29, 34, 35, and 37--40 as
unpatentable over Degen and Labrue.
We affirm the rejection of claims 31-33 as unpatentable over Degen,
Labrue, and Rusche.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
9