Ex Parte Lange

Board of Patent Appeals and Interferences

Apr 20, 2010

11855875 (B.P.A.I. Apr. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEFFREY LANGE
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Appeal 2009-004664
Application 11/855,875
Technology Center 3600
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Decided: April 20, 2010
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Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004664
Application 11/855,875

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STATEMENT OF THE CASE
Jeffrey Lange (Appellant) appeals under 35 U.S.C. § 134 (2006) from
the Examiner’s decision rejecting claims 1-19. We have jurisdiction over
this appeal under 35 U.S.C. § 6 (2006).

THE INVENTION
Appellant’s invention relates to a method for removing dirt from a
construction vehicle before leaving the construction site. Spec. 1, ll. 17-18.
The method uses a track 100. The track 100 includes a frame 102 having
parallel frame members 110 welded to rectangular end bars 112, multiple
parallel spaced-apart crossbars 104 welded to side bars 114 and at points of
contact 120 to frame members 110, and chains 130 for attachment to other
tracks 101. Spec. 7, ll. 2-15 and figs. 1A and 3. The method includes
moving the construction vehicle over the track device 100 to vibrate the
vehicle to remove the debris from the vehicle. Spec. 3, l. 24 through Spec.
4, l. 2.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A method for removing track out from a vehicle,
comprising:

aligning at least one portable track for a vehicle moving
onto a road, the track having a plurality of substantially rigid
crossbars fixedly attached on top of a plurality of spaced apart
supports substantially transverse to the crossbars such that there
is an open area between each of the crossbars when said
crossbars lie upon said plurality of spaced apart supports;

receiving the vehicle onto the at least one track at a first
end of the track and allowing the vehicle off the track at the
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second end of the track, wherein the track corresponds to a
substantially linear portion of a path traveled by the vehicle;

vibrating the vehicle by moving the vehicle over the
crossbars; and

shaking the vehicle in at least one of a hopping up and
down, a teetering back and forth, and a teetering side to side
manner by moving the vehicle over the crossbars;

whereby the vehicle picks up debris before the step of
receiving, and the vehicle travels substantially linearly over the
at least one track in order to vibrate the vehicle and shake off
the debris and thereby allowing said debris to fall between said
crossbars and said plurality of spaced apart supports before
moving onto the road.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Aumont US 3,997,110 Dec. 14, 1976
Grace US 5,383,742 Jan. 24, 1995
Lange US 6,981,818 B1 Jan. 3, 2006

The following rejections are before us for review:1
The Examiner rejected claims 1-19 under 35 U.S.C. § 103(a) as
unpatentable over Grace and Aumont.
The Examiner rejected claims 1-19 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1-5 of U.S. Patent No. 6,981,818 B1 (Lange).

1 A provisional obviousness-type double patenting rejection of claims
1-19 over claims 1-19 of copending Application No. 11/409,155 (see Ans. 5)
is moot due to abandonment of the copending application (as of Jan. 4,
2010).
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THE ISSUES
The Examiner found that Grace discloses all the features of
independent claim 1 with the exception of spaced apart supports. Ans. 3.
The Examiner further found that Aumont discloses spaced apart supports 1
having crossbars 5 mounted thereon. Id. The Examiner concluded that it
would have been obvious to a person of ordinary skill in the art to
“[substitute] the plate of Grace with the supports of Aumont in order to
provide a more easily transported or less expensive device.” Id.
Appellant argues that the Examiner has not provided an adequate
reason to combine the teachings of Grace and Aumont. Br. 12. Specifically,
Appellant argues that because Grace has already considered the issue of
weight, the Examiner’s reason to combine the teachings of Grace and
Aumont, namely, to provide a lighter device, would not have motivated a
person of ordinary skill in the art to substitute the plate of Grace with the
supports of Aumont, as suggested by the Examiner. Br. 13-14. Moreover,
Appellant argues that because the functioning principle of the devices of
Grace and Aumont is so different, a person of ordinary skill in the art would
be discouraged from making the combination proposed by the Examiner.
Br. 12-13.
Accordingly, the first issue presented for our consideration in the
instant appeal is whether the combined teachings of Grace and Aumont
would have prompted a person of ordinary skill in the art to substitute the
plate of Grace with the supports of Aumont.
Appellant further argues that claims 1-5 of U.S. Patent No. 6,981,818
B1 do not disclose “a plurality of substantially rigid crossbars fixedly
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attached on top of a plurality of spaced apart supports.” Br. 17. The
Examiner responds that:
[T]he crossbars in the prior references are "secured
between" the sidebars by fixedly attaching them on
top of spaced apart supports. In other words, the
specifications of these prior references, which
provides the teaching for the manner in which
these crossbars are secured, shows that this is
accomplished by fixedly attaching them on top of
spaced apart supports.
Ans. 9-10. Emphasis added.
Hence, the second issue presented for our consideration is whether
claims 1-5 of U.S. Patent No. 6,981,818 B1 disclose “a plurality of
substantially rigid crossbars fixedly attached on top of a plurality of spaced
apart supports,” as required by independent claim 1.

SUMMARY OF DECISION
We REVERSE.

OPINION
Issue (1)
It is our finding that Grace discloses a device and method for
removing dirt from truck tires. Grace, col. 3, ll. 55-58. Grace’s device 10
includes a rigid metal plate 16 and a plurality of spaced-apart ribs 20
(crossbars) transversely fixed to the upper surface of plate 16. Grace, col. 3,
ll. 59-66 and fig. 1. It is undisputed that the spaced-apart ribs 20 (crossbars)
of Grace are fixed to a plate rather than a plurality of spaced apart supports.
Ans. 3; Br. 11. Aumont is directed toward an accessory adapted to be
wedged under a traction wheel of a vehicle to allow production of traction
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upon rotation of that wheel. Aumont, Abstract. The accessory of Aumont
includes a pair of spaced-apart strips 1 (plurality of spaced apart supports)
having crossbars 5 mounted thereon (Aumont, col. 1, ll. 56-57; col. 2, ll. 9-
10; and fig. 1). The strips 1 of Aumont are disclosed as being made from
“pliable metal” in order to bend when in use. Aumont, col. 1, ll. 59-60 and
col. 3, ll. 7-10. Hence, because the invention of Grace requires a rigid
structure, and the strips of Aumont are pliable, we find that Aumont would
have discouraged one of ordinary skill in the art from substituting the plate
of Grace with the strips of Aumont, as suggested by the Examiner. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference,… would be led in a direction divergent from the path
that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed.
Cir. 2001).
As such, we find that the Examiner has not provided an adequate
rationale to explain what in the prior art would have prompted a person of
ordinary skill in the art to substitute the plate of Grace with the strips
(supports) of Aumont. Absent hindsight, we fail to see why a person of
ordinary skill in the art would have been led by the teachings of Aumont to
substitute the plate of Grace with the strips of Aumont. Accordingly, the
rejection of claim 1 and its dependent claims 2-19 cannot be sustained. See
In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is
nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is
nonobvious).

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Issue (2)
It is our finding that although claims 1-5 disclose “substantially rigid
crossbars,” none of claims 1-5 of U.S. Patent No. 6,981,818 B1 discloses
“spaced apart supports,” as required by claim 1. Hence, we agree with
Appellant that claims 1-5 of U.S. Patent No. 6,981,818 B1 do not disclose,
“a plurality of substantially rigid crossbars fixedly attached on top of a
plurality of spaced apart supports,” as called for by claim 1. See Br. 17.
Furthermore, we find the Examiner’s position that the “specifications
of these prior references” (referring to U.S. Patent No. 6,981,818 B1 and
U.S. Application No. 11/409,155) provides the teaching for the manner in
which the crossbars are secured to be incorrect. See Ans. 9-10. It is well
established that “double patenting is the existence vel non of patentable
difference between two sets of claims.” General Foods Corp. v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1279 (Fed. Cir. 1992).
Emphasis added. In other words, when considering whether the invention
defined in a claim of an application would have been an obvious variation of
the invention defined in the claim of a patent, the disclosure of the patent
may not be used as prior art. Id. at 1281 (Fed. Cir. 1992). In conclusion, the
rejection of claims 1-19 under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1-5 of U.S. Patent
No. 6,981,818 B1 likewise cannot be sustained.

CONCLUSIONS
1. The combined teachings of Grace of Aumont would not have
prompted a person of ordinary skill in the art to substitute the plate of
Grace with the supports of Aumont.
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2. Claims 1-5 of U.S. Patent No. 6,981,818 B1 do not disclose, “a
plurality of substantially rigid crossbars fixedly attached on top of a
plurality of spaced apart supports.”

DECISION
The Examiner’s decision to reject claims 1-19 is reversed.

REVERSED

mls

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