Ex Parte Hylen

Patent Trial and Appeal Board

Mar 31, 2014

11922998 (P.T.A.B. Mar. 31, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/922,998 12/28/2007 Roger Hylen AC-140 1287
7590 04/01/2014
Mark P. Stone
Attorney at Law
400 Columbus Avenue
Valhalla, NY 10595
EXAMINER
LOWE, MICHAEL S
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
04/01/2014 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte ROGER HYLEN 7
___________ 8
9
Appeal 2012-004539 10
Application 11/922,998 11
Technology Center 3600 12
___________ 13
14
15
Before JOHN C. KERINS, MICHAEL L. HOELTER, and THOMAS F. 16
SMEGAL, Administrative Patent Judges. 17
SMEGAL, Administrative Patent Judge. 18
DECISION ON APPEAL 19
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Application 11/922,998

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STATEMENT OF THE CASE1
Roger Hylen (Appellant) seeks review under 35 U.S.C. § 134 of the 2
Examiner’s final rejection of claims 1-10 and 12-19, the only claims pending 3
in the application on appeal. We have jurisdiction over the appeal pursuant 4
to 35 U.S.C. § 6(b). 5
We AFFIRM. 6
CLAIMED SUBJECT MATTER 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below. 9
1. A mining loader comprising a boom including at least one 10
movable boom arm (20) and a support means (70), wherein the boom 11
arm (20) is provided with a manually operated uplock arrangement 12
comprising: 13
- a horizontal, transversal through going hole (21), and 14
- a locking pin (42) movably arranged in the hole (21), the locking 15
pin (42) is elongated, and having a first (421) and a second (422) end, 16
the locking pin (42) is movable in its longitudinal direction between a 17
passive and an active position; wherein the passive position of the 18
locking pin (42) enables movement of the boom arm (20) past the 19
support means (70), and the active position of the locking pin (42) 20
prevents movement of the boom arm (20) past the support means (70), 21
characterized in that the locking pin (42) is provided with a protruding 22
maneuver stick (48) arranged in the vicinity of the first end (421) of 23
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Application 11/922,998

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the locking pin (42), enabling maneuvering of the locking pin (42) 1
between the passive and active positions. 2
Claims App’x. 3
REFERENCES 4
The Examiner relies upon the following prior art: 5
Hall US 1,770,751 Jul. 15, 1930 6
Leaphart US 2,829,001 Apr. 1, 1958 7
Hurlburt US 3,730,362 May 1, 1973 8
Camp US 4,404,695 Sep. 20, 1983 9
REJECTIONS ON APPEAL 10
Claims 1 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable 11
over Hurlburt and Leaphart. 12
Claims 2-4, 6-8, 10, 12-17 and 19 stand rejected under 35 U.S.C. 13
§ 103(a) as unpatentable over Hurlburt, Leaphart and Camp.1 14
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable 15
over Hurlburt, Leaphart, Camp and Hall. 16
FINDINGS OF FACT 17
We find that the finding of fact (FF), which appears in the Analysis 18
below, is supported by at least a preponderance of the evidence. Ethicon, 19
Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 20
evidentiary standard for proceedings before the U.S. Patent and Trademark 21
Office (“PTO”). Additional facts may appear in the analysis. 22

1 We correct the typographical error at page 4 of the Examiner’s Answer to
be consistent with page 2 of the final rejection mailed November 16, 2010,
and with Appellants’ grounds of rejection to be reviewed on appeal (App.
Br. 4).
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Application 11/922,998

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Facts Related to Appellant’s Disclosure 1
FF1. The Specification contains no lexicographic definition of 2
“maneuver stick” stating, at page 5, lines 31-33, only that “[t]he locking pin 3
42 is preferably provided with a protruding manoeuvre stick 48 (handle) 4
arranged in the vicinity of the first end 421 of the locking pin 42, enabling 5
manoeuvring of the locking pin 42 between the passive and active 6
positions.” 7
ANALYSIS 8
Obviousness of claims 1 and 5 based on Hurlburt and Leaphart; of 9
claims 2-4, 6-8, 10, 12-17 and 19 based on Hurlburt, Leaphart and Camp; 10
and of claims 9 and 18 based on Hurlburt, Leaphart, Camp and Hall. 11
12
Appellant argues claims 1 and 5 as a group (App. Br. 5). We select 13
claim 1 as the representative claim for this group and claim 5 stands or falls 14
with claim 1 (37 C.F.R. § 41.37(c) (1) (vii) (2011)). Appellant expressly 15
states that arguments are presented only for independent claim 1, and 16
therefore the decision as to claim 1 and the rejection thereof over Hurlburt 17
and Leaphart will determine the outcome as to the rejection of the remaining 18
claims in which the Camp and Hall patents were cited in addition to Hurlburt 19
and Leaphart. 20
Section 103(a) forbids issuance of a patent when “‘the differences 21
between the subject matter sought to be patented and the prior art are such 22
that the subject matter as a whole would have been obvious at the time the 23
invention was made to a person having ordinary skill in the art to which said 24
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 25
(2007). When a patent “‘simply arranges old elements with each performing 26
the same function it had been known to perform’” and yields no more than 27
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one would expect from such an arrangement, the combination is obvious. Id 1
at 417. 2
We are not persuaded by Appellant’s arguments that the Examiner 3
failed to establish a prima facie showing of obviousness in rejecting claim 1 4
over the combination of Hurlburt and Leaphart, contending that Hurlburt 5
“includes a large number of moving parts” and “[would only be] suitable for 6
above-ground operation” (App. Br. 6). However, Appellant’s arguments are 7
not commensurate with the scope of claim 1 which does not exclude a “large 8
number of moving parts” and as the Examiner points out “does not require 9
any more than a mining vehicle” (Id., see App. Br. 6). 10
Appellant also argues that “the range and nature of the movement 11
provided by the structure disclosed by the Leaphart patent is different in 12
range and nature from the movement provided by the mining loader, as 13
positively recited in independent claim 1” (App. Br. 8) (emphasis omitted). 14
Here again, Appellant’s argument is not commensurate with the scope of 15
claim 1 which does not recite “the range and nature of the movement 16
provided by the mining loader.” 17
Furthermore, the manner or method in which a machine is to be 18
utilized is not germane to the issue of patentability of the machine itself. In 19
re Casey, 370 F.2d 576, 580 (CCPA 1967). A statement of intended use 20
does not qualify or distinguish the structural apparatus claimed over the 21
reference. In re Sinex, 309 F.2d 488, 492 (CCPA 1962). There is an 22
extensive body of precedent on the question of whether a statement in a 23
claim of purpose or intended use constitutes a limitation for purposes of 24
patentability. See, generally, Kropa v. Robie, 187 F.2d 150, 155 59 (CCPA 25
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1951) and the authority cited therein, and cases compiled in 2D. Chisum, 1
Patents § 8.06[1][d] (1991). 2
We determine the scope of the claims in patent applications not solely 3
on the basis of the claim language, but upon giving claims “‘. . . . their 4
broadest reasonable interpretation consistent with the specification . . . .’” 5
and “‘. . . . in light of the specification as it would be interpreted by one of 6
ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 7
1364 (Fed. Cir. 2004) (citations omitted). It is the Appellant’s burden to 8
precisely define the invention, not the PTO’s. In re Morris, 127 F.3d 1048, 9
1056 (Fed. Cir. 1997). Although alleging that element 41 of Leaphart “is 10
not a maneuver stick protruding for a locking pin” (App. Br. 7-8), Appellant 11
hasn’t pointed to a lexicographic definition of “maneuver stick” in the 12
Specification or other disclosure that is inconsistent with the Examiner’s 13
finding that “sections 41 [of Leaphart] comprise maneuver sticks” (Ans. 4). 14
See also FF1. 15
Appellant also argues that “the Leaphart patent discloses locking 16
means for a vehicle tail gate” and that a boom arm for a mining loader “is 17
substantially heavier than a tail gate structure” (App. Br. 8-9) (emphasis 18
omitted). Appellant continues by arguing that “the mining loader disclosed 19
and claimed by Applicant provides a simple alternative to the brace structure 20
disclosed by Leaphart, in which a hole is provided directly in the structure 21
itself is to be locked (i.e., in the boom arm itself), and a locking pin is 22
movably arranged in that hole” (App. Br. 10) (emphasis omitted). 23
However, nonobviousness cannot be established by attacking the references 24
individually when the rejection is predicated upon a combination of prior art 25
disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 26
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1986). As the Examiner points out, “Leaphart also teaches the use of a 1
simple pin structure as claimed by appellant in the vehicle art to lock a 2
pivoting structure and is thus directed to the same problem addressed by 3
appellant” (Ans. 6). Thus, we agree with the Examiner’s findings of fact as 4
set forth at pages 5-7 of the Answer. 5
Appellant also contends “that there is no teaching or suggestion in the 6
prior art itself, or within the common knowledge of a person of ordinary 7
skill in the relevant art, to combine Hurlburt et al and Leaphart in any 8
manner rendering independent claim 1 obvious.” (App. Br. 11). However, a 9
rigid application of the “teaching, suggestion, motivation” or TSM test for 10
nonobviousness is incompatible with Supreme Court precedent. KSR, 550 11
U.S. at 419. Thus the Examiner need not establish the existence of a 12
teaching, suggestion, and motivation in combining teachings from prior art 13
references; rather, the Examiner must provide an articulated reasoning with 14
some rational underpinning to support a legal conclusion of obviousness. In 15
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The analysis need not seek out 16
precise teachings directed to the specific subject matter of the claim but can 17
take into account the inferences and the creative steps that a person of 18
ordinary skill in the art would employ. KSR, 550 U.S. at 418. 19
The Examiner finds that “Hurlburt teaches [the] vehicle, a boom and 20
pins and operator” (Ans. 6) and Leaphart teaches the pin set forth in claim 1 21
used on a vehicle and addresses the same problem, i. e., restraining a pivoted 22
structure. “These teachings together with the fact that appellant’s 23
attachment of the pins to the booms and the use of the vehicle as the stop is a 24
reversal of parts of Hurlburt’s arrangement render claim 1 unpatentable” 25
(Ans. 7). Thus the Examiner’s reasoning analyzes the evidence and employs 26
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common sense not inconsistent with the ordinary level of knowledge and 1
skill in the art. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 2
1324, 1328-29 (Fed. Cir. 2009). Thus, we agree that the Examiner has 3
provided an articulated reasoning that is supported by rational 4
underpinnings. We are not persuaded by Appellants’ arguments to the 5
contrary. 6
We also are not persuaded by Appellants’ contention at pages 12-13 7
of the Appeal Brief, that the Examiner’s rejection is an improper hindsight 8
reconstruction. In particular, it does not include knowledge gleaned only 9
from the Appellants’ disclosure, but rather takes into account the teachings 10
of Hurlburt and Leaphart; i.e., knowledge which was within the level of 11
ordinary skill at the time the claimed invention was made. See In re 12
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). See also Radix Corp. v. 13
Samuels, 13 USPQ2d 1689, 1693 (DDC 1989) (“any obviousness inquiry 14
necessarily involves some hindsight.”) (citation omitted). 15
For the foregoing reasons, we sustain the Examiner’s rejection of 16
claims 1-10 and 12-19 as being obvious over Hurlburt and Leaphart. 17
DECISION 18
The rejection of claims 1-10 and 12-19 is AFFIRMED. 19
No time period for taking any subsequent action in connection with this 20
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 21
§ 1.136(a)(1)(iv) (2011). 22
AFFIRMED 23
24
rvb 25