Ex Parte Ferrar

Patent Trial and Appeal Board

Feb 28, 2018

14717231 (P.T.A.B. Feb. 28, 2018)

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.
14/717,231 05/20/2015 Scott Ferrar ITW01-033-US-CON4 4651
109612 7590 03/02/2018
Klintwnrth & Rnzenhlat TP T T P anH EXAMINER
Illinois Tool Works Inc. MURPHY, KEVIN F
19 North Green Street
Chicago, IL 60607 ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
docketing @ kandrip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT FERRAR
Appeal 2017-003244
Application 14/717,231
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
16—23, 25—36, and 38-41. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-003244
Application 14/717,231
CLAIMED SUBJECT MATTER
The claims are directed to a vehicle mountable arm for a valve
operating machine. Claim 16, reproduced below, is illustrative of the
claimed subject matter:
16. A valve operating device, comprising:
a mounting for retaining the device to a vehicle;
a first arm having a first end and a second end, wherein the
first end of the first arm is attached to the mounting at a first pivot
that is rotatable about a first vertical axis;
a second arm having a first end and a second end, wherein
the first end of the second arm is attached to the second end of
the first arm at a second pivot that is rotatable about a second
vertical axis;
a valve turning machine connected to the second end of
the second arm;
a first brake at the first pivot for selectively locking and
unlocking the first arm from rotating about the first pivot;
a second brake at the second pivot for selectively locking
and unlocking the second arm from rotating about the second
pivot; and
a control for controlling application and the release of the
first brake or the second brake, wherein the first arm is locked
from rotating about the first pivot with the first brake applied and
the first arm is manually rotatable about the first pivot while the
first brake is released and the second arm is locked from rotating
about the second pivot with the second brake applied and the
second arm is manually rotatable about the second pivot while
the second brake is released, wherein the first arm is stable
relative to the mounting when the first brake is applied and the
valve turning machine is operating, wherein the second arm is
stable relative to the first arm when the second brake is applied
and the valve turning machine is operating, and wherein the
control is positioned remote from the first brake and the second
brake.
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Appeal 2017-003244
Application 14/717,231
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bumueller
Leete
Twisselmann
Skorez
Hurley
US 3,977,636 Aug. 31, 1976
US 5,101,862 Apr. 7, 1992
US 6,471,165 B2 Oct. 29, 2002
US 2004/0134674 A1 July 15, 2004
US 7,334,606 B1 Feb. 26, 2008
REJECTIONS
Claims 16—22 and 29-35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hurley and Bumueller.
Claims 16, 23, 26, 27, 29, 36, 39, and 40 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Hurley and Twisselmann.
Claims 25 and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hurley, Bumueller, and Skorez.
Claims 28 and 41 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hurley, Bumueller, and Leete.
OPINION
In the first obviousness rejection, the Examiner rejected claim 16
based on the obviousness of modifying each of the locking mechanisms
168,1 170, at Hurley’s pivots 124, 144 with a braking mechanism of the type
taught by Bumueller. Final Act. 3—5. Thus, Appellant’s main argument
(App. Br. 6—7), pointing out the absence of two brakes in Bumueller, is not
particularly germane to the rejection set forth by the Examiner. Ans. 9—10.
1 168 is mislabeled 178 in Figure 13 of Hurley.
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Application 14/717,231
When considering obviousness, there is no limitation that a known technique
or improvement cannot be applied to multiple locations when proposing to
improve upon a known device. It is well-settled that the obviousness inquiry
looks beyond individual reference teachings2 and bodily incorporation.3
Appellant further contends that the secondary references, Bumueller
and Twisselmann, in each obviousness rejection of claim 16, are non-
analogous art. App. Br. 8—9, 11—12. With respect to both the Hurley-
Bumueller and Hurley-Twisselmann rejections, Appellant contends that the
particular tool held by the articulated arms, the valve turning machine,
should be used to define the scope of relevant art for the obviousness
inquiry. App. Br. 8—9.
Analogousness is determined in view of the Specification, with
particular attention to the claimed invention and its purpose. In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992) (“If a reference disclosure has the same
purpose as the claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness rejection”)
(emphasis added). Appellant contends this purpose is the actuation of a
valve operating device in particular. However, limitations pertaining to
actual valve turning appear in only three limited instances in claim 16.
These limitations do not contain any language to impose or imply specific
2 “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citation omitted).
3 “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 re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012).
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Application 14/717,231
structural requirements of the remaining elements or overall structure
claimed. First, the preamble provides a descriptive name, “[a] valve
operating device,” to the collection of components set forth. Second, the
physical attachment location of the valve turning machine is described: “a
valve turning machine connected to the second end of the second arm.”
Third, the overall goal of the collection of components comprising the
supporting structure is described: “the first [and second] arm[s are] stable
relative to the mounting [and first arm, respectively] when the first [and
second] brake[s are] applied and the valve turning machine is operating.”
According to the Specification the problems confronted are
circumventing obstacles to a target location and resisting force or torque at
the end of an extension arm:
[The prior art-device] has limited mobility with respect to the
vehicle. Where valves are positioned between various obstacles
such as buildings, curbs, boulders, trees and the like, it may not
be possible for the truck to reach a position where the valve
operating machine may be positioned directly over the shaft
leading to the valve.
Accordingly, there is a need for providing an extendible arm for
supporting a valve operating machine over a valve stem
positioned remotely from a vehicle that will retain the machine
against all the forces applied to the end of the arm as a
consequence of frequent and sudden changes in torque applied to
the valve.
Spec, paras. 3,5. These problems are not unique to valve turning machines
per se. Thus, we cannot agree with Appellant that those devices that would
have logically commended themselves to a skilled inventor’s attention in
considering the problems faced would be confined to only those devices
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Application 14/717,231
dealing with valve actuation. Bumueller’s device is expressly described as
intended to hold a drill. As ground drilling certainly generates torque and
force at the end of an extension arm Bumueller deals with Appellant’s
problem of stably resisting torque generated by a remotely held device.
Bumueller col. 4,11. 34—38.
Twisselmann’s device is also designed to withstand forces and
moments, but of a lower degree. Twisselmann col. 1,11. 56—61. First, as
discussed above, claim 16 does not include any limitations requiring the
claimed structure to have any particular attributes or capabilities for
withstanding the particular forces described in the portion of Appellant’s
Specification quoted above. Where the scope of the claims, i.e., “the subject
matter sought to be patented,” is defined more broadly than in the
Specification, so too must be the scope of prior art considered relevant for
purposes of determining what “would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which
said subject matter pertains. ” See 35 U.S.C. § 103(a) (emphasis added);
accord also In re Clay, supra. Second, even assuming such attributes or
capabilities could somehow be implied by the express language of the claim,
it has long been held that sizing componentry suitably for its intended
purpose does not remove an invention from the realm of what would have
been obvious to someone skilled in the mechanical arts. See, e.g., Powers-
Kennedy Co. v. Concrete Co., 282 US 175, 185 (1930)(“One skilled in the
art would have the mechanical skill to understand that changes to form,
materials or dimensions could be made to arrive at the strength and rigidity
desired for the particular application.”); accord In re ICON Health and
Fitness, Inc., 496 F. 3d 1374, 1382 (Fed. Cir. 2007) (“One skilled in the art
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Application 14/717,231
would size the components from [the prior art] appropriately for Icon’s
application, therefore producing an embodiment meeting Icon’s claims.”).
Thus, we cannot agree with Appellant that differences in strength and
rigidity would have led one skilled in the art of tool-holding boom arms to
disregard devices such as Twisselmann’s simply because the particular form,
materials, or dimensions employed could not withstand the particular forces
and moments that must be withstood by the device described in Appellant’s
Specification. Furthermore, although the microscope of Twisselmann may
not generate moments of the particular magnitude involved in valve turning,
Twisselmann, with its six axes of freedom, is very pertinent to the aspects of
Appellant’s problem concerned with precisely positioning a tool around
obstacles, for example, surgical personnel and equipment. See Twisselmann
col. 1,11. 29-32; col. 2,11. 3AA1; Spec, supra.
For the foregoing reasons, we agree with the Examiner (Ans. 10) that
the articulated arms having braking elements of Bumueller and Twisselmann
are reasonably pertinent to Appellant’s problem and therefore analogous art.
Running throughout Appellant’s arguments is the allegation of the
Examiner’s reliance on hindsight. App. Br. 7—8, 10—11, 14—15. Appellant
accuses the Examiner of responding to this argument with “typical
boilerplate.” See id.', Reply. Br. 7. However, without any specific allegation
of precisely what subject matter was allegedly gleaned only from
Appellant’s Specification, it is unclear how the Examiner can respond to
Appellant’s argument with anything more substantive. “Filing a Board
appeal does not, unto itself, entitle an appellant to de novo review of all
aspects of a rejection.” See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010)(precedential)(citations omitted); see also 37 C.F.R. §
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Application 14/717,231
41.37(c)(l)(iv)(“The arguments shall explain why the examiner erred as to
each ground of rejection contested by appellant”). At best, Appellant
appears to contend that neither Bumueller nor Twisselmann expressly
disclose the benefit articulated by the Examiner in support of the Examiner’s
proposed modification: remotely controlling the brake. Reply Br. 7; Final
Act. 5, 6. However, one of the main purposes of hydraulically or electrically
actuated brakes is the ability to control the brake from a remote location.
Such notorious advantages of hydraulically or electrically actuated brakes
and would have been apparent to the skilled artisan without an express
disclosure. See In re Jacoby, 309 F.2d 513,516 (CCPA 1962) (an artisan
must be presumed to know something about the art apart from what the
references disclose). In KSR International Co. v. Teleflex Inc., 550 U.S. 398
(2007), the Court rejected the rigid requirement of an express teaching or
suggestion or motivation to combine known elements in order to show
obviousness.
Appellant raises an issue in the Reply Brief regarding the Examiner’s
reliance on the hydraulic cylinder of Bumueller as the brake control that is
untimely under 37 C.F.R. § 41.41. In any case, particularly in the context of
Appellant’s own Specification, which uses the term “control” to refer to both
the valve 98, an aspect of the hydraulic system, and the mechanically
actuated button 104, (see, e.g., para. 29) we cannot agree with Appellant that
it was unreasonable for the Examiner to regard the generically recited
“control” of claim 16 to include the Bumueller’s hydraulic cylinder because
it is essentially a master cylinder for controlling the brake. We additionally
note that the Examiner’s application of Leete for claims (28 and 41) directed
to a more particular control structure is not contested by Appellant.
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Application 14/717,231
With regard to claims 17—19, Appellant merely reiterates the
arguments addressed above without arguing the specific limitations
introduced by these claims. App. Br. 13—17. Again, “[f]iling a Board
appeal does not, unto itself, entitle an appellant to de novo review of all
aspects of a rejection.” See Ex parte Frye, supra.
Turning to claim 23, Appellant’s argument that Twisselmann’s
control is not on a valve turning machine (App. Br. 18) is unpersuasive for
failing to consider the proposed combination incorporating Twisselmann’s
control into Hurley’s valve turning machine.
Turning to claim 27, the fact that Appellant thought their arguments
concerning independent claim 16 would be persuasive is not a sufficiently
good cause to excuse the untimeliness of Appellant’s traversal of the official
notice that wireless controls were well known. See App. Br. 19. Further,
Appellant does not dispute this specific fact as required by such a traverse.
Appellant’s assertion that “the limitations of claim 27, in combination with
the claims [sic] from which they [sic] depend, are not well-known” does not
address the Examiner’s specific finding regarding wireless signal
transmission per se, being known. Id. The rejection is predicated on
obviousness. Whether or not the entirety of the claimed subject matter was
well-known is not the issue.
DECISION
The Examiner’s rejections are affirmed.
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Application 14/717,231
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)(l)(iv).
AFFIRMED
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