Ex Parte Ito

Board of Patent Appeals and Interferences

Jun 4, 2009

10303735 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YASUHISA ITO
____________

Appeal 2009-001701
Application 10/303,735
Technology Center 3600
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Decided1: June 5, 2009
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Before WILLIAM F. PATE, III, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001701
Application 10/303,735

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STATEMENT OF THE CASE
Yasuhisa Ito (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 8-12 and 14, the only
claims pending in the case. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to an article-transporting
apparatus which includes an overhead traveling carriage and an overhead
track on which the carriage moves. The traveling carriage has a hoist
comprising a winch and chuck mechanism that raises and lowers the article
to be transported into a casing of the carriage. A fall preventing mechanism
which advances and retreats in a horizontal plane includes pressed members
which, when the article is engaged by the chuck, press and hold stably
opposing sides of the article, the fall preventing mechanism being retractable
into the casing. (Appeal Br., Claims Appendix, claim 8). Claim 8,
reproduced below, is representative of the claimed subject matter:
8. An apparatus for transporting an article, said
apparatus comprising:

an overhead traveling carriage and an overhead
track on which said traveling carriage moves,
said traveling carriage including a hoist which
raises or lowers said article,

a casing into which said article is raised or
lowered, and

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a fall preventing mechanism which advances and
retreats in a horizontal plane,

wherein said hoist comprises a winch and a chuck
mechanism, and said fall preventing mechanism
includes pressed members to press against said
article, said fall preventing mechanism being
retractable into said casing,

wherein when an upper end of said article is
chucked by the chuck mechanism, opposing
sides of said article are pressed and held stably by
said pressed members.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Toniolo US 4,431,359 Feb. 14, 1984
McManus US 4,736,971 Apr. 12, 1988
Shiaku2 JP 09 077455 A Mar. 25, 1997

The Examiner has rejected:
(i) claims 8, 9 and 14 under 35 U.S.C. § 103(a) as being unpatentable
over Shiaku in view of Toniolo; and
(ii) claims 10-12 under 35 U.S.C. § 103(a) as being unpatentable over
Shiaku in view of Toniolo and McManus.
ISSUES
The Examiner concluded that it would have been obvious to a person

2 A machine-generated translation and a human-produced translation of this
reference were made of record in the prosecution file history of this
application. References made herein to the Shiaku disclosure will be to the
human-produced translation.
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of ordinary skill in the art to modify the device of Shiaku to replace the
outwardly swinging legs of its fall preventing device with horizontally
moving arms that retract into the casing, as allegedly shown in the Toniolo
patent. The Examiner also concluded that it would have been obvious to
further modify the Shiaku device to provide shock-absorbing dampers on the
pressing members of those arms, in view of the teachings of McManus.
Appellant urges that the teachings of Shiaku and Toniolo are not
properly combinable, that the two alternatives disclosed in Tonolio are not
art-recognized equivalents, and that the combined teaching fall short of
rendering obvious the claimed invention.
The issue joined in this appeal is: has Appellant demonstrated that the
Examiner erred in reaching the conclusions as to obviousness in view of the
Shiaku, Toniolo, and McManus references?

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The device disclosed in Shiaku is a traveling carriage having a
fall preventing member that is automatically brought into its operative
position under an article being transported solely by the action of mechanical
linkages and components that are moved when the article to be transported is
raised into the carriage in preparation for transport. (Shiaku, Fig. 14, ¶¶
[0030]-[0033]).
FF 2. In Shiaku, the principle of operation of moving the fall
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preventing members into and back out of position under the article by these
linkages obviates the need to use motors or other external driving force to
position the members. (Shiaku, ¶[0033]).
FF 3. The horizontally advancing and retreating members 149 of
Toniolo are actuated by hydraulic cylinders 145 powered by a hydraulic
station 150. (Toniolo, Figs. 68-71; col. 9, ll. 38-48).

PRINCIPLES OF LAW
Section 103 precludes issuance of a patent when, “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole 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.” 35 U.S.C. § 103(a). See KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR Int’l., 550 U.S. at 406-07 (“While
the sequence of these questions might be reordered in any particular case,
the [Graham] factors continue to define the inquiry that controls.”).
If a proposed modification or combination of the prior art would
change the principle of operation of the prior art device being modified, then
the teachings of the references are not sufficient to render the claims prima
facie obvious. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (rejection
reversed where a suggested combination of references required a change in
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the basic principle under which the prior art construction proposed to be
modified was designed to operate).

ANALYSIS
Claims 8, 9 and 14
The Examiner’s position is that the Shiaku reference discloses all of
the elements in claim 1, with the exception that the fall preventing
mechanism swings to and from the position engaging the article to be
transported, rather than being retractable into the casing of the traveling
carriage. (Answer 3). The Examiner concluded that it would have been
obvious to the person of ordinary skill in the art to modify the Shiaku
reference to replace the swinging mechanism with one which retracts
horizontally into the casing of the traveling carriage, in view of the teachings
in the Toniolo patent. (Id.). The Examiner, in support of this conclusion,
points to the disclosure in the Toniolo patent showing the use of both
swinging arm-type mechanisms and linearly retractable type mechanisms
that support the underside of articles, stating that these are art-recognized
equivalents, and each would work equally as well as the other. (Id.).
Appellant contests the assertion that the two types of mechanisms are
art-recognized equivalents, and further attacks the rejection as being, inter
alia, improper on the basis that the Shiaku reference teaches away from the
allegedly obvious modification and the proposed modification would change
the principle of operation of the Shiaku device. (Appeal Br. 7-11; Reply Br.
2-6).
The Examiner tellingly sidesteps Appellant’s argument that the
proposed modification would change the principle of operation of the Shiaku
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reference, responding that:
incorporating the simple movement of a sliding
retracting pressed member [as generally disclosed
in Toniolo] would be within the level of one with
ordinary skill in the art at the time. A modification
does not have to be bodily incorporated exactly as
disclosed in a secondary reference.
Answer 4.
Appellant correctly notes (Reply Br. 3), citing to MPEP §
2143.01(IV) and the decision in Ex parte Levengood, 28 USPQ2d 1300
(BPAI 1993), discussed therein, that such a generalized, conclusory
statement is not sufficient to establish a prima facie case of obviousness,
absent some objective reason to combine the teachings in the manner
proposed. Furthermore, the Examiner’s response is deficient in that it does
not refute or even address the actual contentions made by Appellant with
respect to the alleged change in principle of operation.
The Shiaku device is directed to a traveling carriage having a fall
preventing member that is automatically brought into its operative position
under an article being transported solely by the action of mechanical
linkages and components that are moved when the article to be transported is
raised into the carriage in preparation for transport. (FF 1). As alluded to by
Shiaku, the principle of operation of moving the fall preventing members
into and back out of position under the article is by these linkages, thereby
obviating the need to use motors or other external driving force to position
the members. (FF 2). In contrast, the horizontally advancing and retreating
members 149 of Toniolo, which the Examiner proposes to employ in the
modified Shiaku device are actuated by hydraulic cylinders 145 powered by
a hydraulic station 150. (FF 3).
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The Examiner’s contention that an alleged obvious modification of a
primary reference does not require exact bodily incorporation of the features
of the secondary reference (see, above quote from Answer) is accurate as a
general proposition. An exact bodily incorporation would here destroy the
linkage-based principle of operation. (FF 3). While the ground for rejection
appears to rely on other than an exact bodily incorporation, the Examiner
does not address how the teachings of Toniolo would or could be applied to
the Shiaku device such that the horizontally and linearly advancing and
retracting members of Toniolo are implemented in the Shiaku device while
maintaining the same principle of operation advanced by Shiaku. We do not
see how this change could be implemented while maintaining and using the
linkage arrangement disclosed in Shiaku, and certainly the Examiner has not
provided any guidance in this respect.
The rejection of claim 8, and claims 9 and 14 depending therefrom, as
being obvious over Shiaku in view of Tonolio, will not be sustained.
Claims 10-12
The Examiner asserts that it would have been obvious, in view of the
disclosure in McManus of the use of spring-biased gripping elements to
press against an article being supported, to modify the device resulting from
the combination of Shiaku and Toniolo to include shock absorbing dampers
on the pressed members of the fall preventing mechanism. However, as
concluded above, Appellant has demonstrated that the Examiner erred in
rejecting claims 8 and 9, from which claims 10-12 depend, over Shiaku in
view of Toniolo. The McManus patent contains no teaching or disclosure
that remedies the deficiencies of the Shiaku and Toniolo references with
respect to the patentability of those claims.
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Accordingly, the rejection of claims 10-12 as being obvious over
Shiaku in view of Toniolo and McManus will not be sustained.

CONCLUSION
Appellant has established that reversible error exists in the rejections
of claims 8-12 and 14 under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner to reject claims 8-12 and 14 is reversed.

REVERSED

LV

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