11572464 (P.T.A.B. Dec. 16, 2013)

Ex Parte in T Hout

Patent Trial and Appeal BoardDec 16, 2013

11572464 (P.T.A.B. Dec. 16, 2013)

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. 11/572,464 09/17/2007 Cornelis Wilhelm In T Hout 017330-0716 8743 103678 7590 12/16/2013 Foley & Lardner LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER KRECK, JOHN J ART UNIT PAPER NUMBER 3672 MAIL DATE DELIVERY MODE 12/16/2013 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 CORNELIS WILHELM IN T HOUT ____________ Appeal 2012-002796 Application 11/572,464 Technology Center 3600 ____________ Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002796 Application 11/572,464 2 STATEMENT OF THE CASE Cornelius Wilhelm In T Hout (“Appellant”) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 4-7, 9-12, and 14-16. We have jurisdiction under 35 U.S.C. § 6(b). Claimed Subject Matter Claims 1, 7, and 15 are the independent claims on appeal. Claim 1 is illustrative of the claimed subject matter and is reproduced below. 1. Highwall mining system comprising: - a cutterhead, - a train of conveyor segments connecting to the cutterhead, - a base structure connecting to the train of conveyor segments opposite the side connecting to the cutterhead, and: - a gas feed running from the base structure to the cutterhead for guiding inert gas to the environment of the cutterhead, wherein at least one of the conveyor segments comprises a channel that is incorporated in the gas feed, wherein adjoining conveyor segments comprise releasable connected tubes for guiding inert gas. Br. 9, Claims App’x. References The Examiner relies upon the following prior art references: Farnworth US 3,802,578 Apr. 9, 1974 Lansberry US 4,323,280 Apr. 6, 1982 Volkwein US 5,273,344 Dec. 28, 1993 Marshall US 5,997,100 Dec. 7, 1999 Appeal 2012-002796 Application 11/572,464 3 Rejections Appellant seeks review of the following rejections: I. Claims 1, 7, 9-12, and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Marshall and Farnworth; II. Claims 5, 6, 15, and 16 are rejected under 35 U.S.C. §103(a) as unpatentable over Marshall, Farnworth, and Volkwein; and III. Claims 1, 4, 7, and 9-12 are rejected under 35 U.S.C. §103(a) as unpatentable over Lansberry, Marshall, and Farnworth. SUMMARY OF DECISION We REVERSE. OPINION Rejection I The Examiner concluded that the combination of Marshall and Farnworth would have rendered the subject matter of claims 1, 7, 9-12, and 14 obvious to one of ordinary skill in the art at the time of invention. Ans. 4-7. The Examiner found that Marshall discloses the elements of the claims except the adjoining conveyor segments comprising releasable connected tubes. Id. at 4-5. The Examiner found that Farnworth discloses “the known technique of using releasable connected tubes in adjoining segments of a train.” Id. at 5. The Examiner concluded that it would have been obvious to one of ordinary skill in the art to improve upon Marshall by using the releasable connected tubes of Farnworth “to allow for greater flexibility in length of [a] train.” Id. Appellant raises several arguments in response to this rejection, including that “a skilled person in the art of highwall mining would not Appeal 2012-002796 Application 11/572,464 4 contemplate the very sophisticated air brake system as disclosed in Farnworth, which is designed to resist high air pressures, rather than to provide for gas flow.” Br. 6. The Appellant’s claimed invention is directed to a highwall mining system. Claim 1 uses the term “train” to describe the conveyor segments connecting to the cutterhead. Br. 9, Claim 1 (“a train of conveyor segments connecting to the cutterhead”). The claimed invention, however, does not pertain to railway trains. Marshall is directed to an inertization system for highwall mining. Marshall, Title. Farnworth, on the other hand, is directed to an “[a]utomatic air coupling structure for railway cars.” Farnworth, Abstract. Farnworth repeatedly refers to railway cars and does not appear to disclose a use for the air coupling structure other than for railway cars. See, e.g., Farnworth, col. 1, ll. 4-10, 11-17, 35-39. Further, each claim in Farnworth is directed to one or more railway cars. See Farnworth, col. 5, l. 45 – col. 6, l. 60. “A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC v. MGA Entm’t., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). “Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. (quoting In re Bigio, 381 F.3d at 1325). Appeal 2012-002796 Application 11/572,464 5 The Examiner’s response to Appellant’s argument does not address Appellant’s assertion that one of ordinary skill in the art would not have considered Farnworth, nor does the response apply either of the tests to determine whether Farnworth is analogous art. See Ans. 12. Rather, it appears that the main commonality between Farnworth and the claimed invention is that they both use the term “train.” As noted above, however, the claimed invention does not use the term “train” in the sense of a railway train as that term is used by Farnworth. In light of the differences between Farnworth and the claimed invention, the Examiner has not shown by a preponderance of the evidence that one of ordinary skill in the art would have considered Farnworth. Accordingly, we do not sustain Rejection I. Rejections II and III Rejections II and III each rely upon the teaching of Farnworth. See Ans. 7-11. Accordingly, for the reasons explained in the context of Rejection I, we do not sustain Rejections II and III. DECISION We REVERSE the Examiner’s decision rejecting 1, 4-7, 9-12, and 14-16. REVERSED rvb