Ex Parte Showley

Patent Trial and Appeal Board

Aug 23, 2016

12984590 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/984,590 01/04/2011
73325 7590 08/25/2016
Matthew G, McKinney
Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
255 South Orange A venue
Suite 1401
Orlando, FL 32801
FIRST NAMED INVENTOR
Brian Shawley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0122726 2572
EXAMINER
MULLER, BRYAN R
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
mmckinney@addmg.com
creganoa@addmg.com
skemraj@addmg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN SHOWLEY
Appeal2014-007446
Application 12/984,590
Technology Center 3700
Before JILL D. HILL, ERIC C. JESCHKE, and PAUL J. KORNICZKY,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian Showley (Appellant) 1 seeks review, under 35 U.S.C. § 134(a),
of the Examiner's decision to reject claims 1-10 under 35 U.S.C. § 103(a) as
unpatentable over Boczkiewicz (US 5, 141,528, issued Aug. 25, 1992),
Bryant (US 5,030,259, issued July 9, 1991), and Boozer (US 4,218,226,
issued Aug. 19, 1980).2 We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellant identifies Vac-Tron Equipment, LLC as the real party in
interest. Appeal Br. 1.
2 The Examiner rejected claims 1 and 8 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention. See Final Act. 2-3 (dated Sept. 27, 2013).
In the Answer, the Examiner withdraws this Rejection. See Ans. 2-3. The
Appeal2014-007446
Application 12/984,590
We AFFIRM.
BACKGROUND
The disclosed subject matter relates to a mobile vacuum with a remote
debris tank. See Spec. 1 (Title). Claims 1 and 8 are independent. Claim 1 is
reproduced below:
1. A mobile vacuum system comprising:
a mobile support frame;
a primary collection tank mounted on the
mobile support frame, the primary collection tank
including a primary inlet port and a secondary inlet
port, wherein an operator can select to use either
the primary inlet port or the secondary inlet port;
a boom having a first end and a second end,
the first end being pivotally connected to one of
the primary collection tank or mobile support
frame and the second end being free and
cantilevered out from the mobile support frame;
a secondary collection tank suspended by
and coupled proximate to the second end of the
boom for movement away from the primary
collection tank;
the secondary collection tank including a
secondary suction port and a secondary outlet port
that is disposed across a width of the secondary
collection tank from the secondary suction port,
wherein the secondary collection tank 1s
Examiner also rejected claim 5 under 35 U.S.C. § 112, fourth paragraph, as
being of improper dependent form for failing to further limit the subject
matter of the claim upon which it depends, or for failing to include all the
limitations of the claim upon which it depends. See Final Act. 3. Because
the briefing does not address this prior Rejection, we consider it withdrawn.
2
Appeal2014-007446
Application 12/984,590
configured so that debris is vacuumed into the
secondary tank through the secondary suction port
and the debris drops out of an airflow and into a
bottom of the secondary collection tank as air is
drawn out through the secondary outlet port to the
secondary inlet port of the primary collection tank;
and
a vacuum source carried by the mobile
support frame, the vacuum source in fluid
communication with the primary collection tank.
DISCUSSION
A. Claims 1-7
For the claims in this group, Appellant argues the patentability of
claim 1 and does not separately argue claims 2-7, which depend from claim
1. Appeal Br. 4--8. Thus, we address only claim 1, with claims 2-7 standing
or falling with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv) (2013). Claim 1
recites, in relevant part:
a secondary collection tank suspended by and coupled
proximate to the second end of the boom for movement away
from the primary collection tank;
the secondary collection tank including a secondary
suction port and a secondary outlet port that is disposed across a
width of the secondary collection tank from the secondary
suction port.
Appeal Br. 10 (Claims App.). The Examiner relied on Boczkiewicz for
these limitations, identifying, inter alia, element 3 as the "secondary
collection tank," element 5 as the "boom," and element 11 as the "primary
collection tank." See Final Act. 4; see also Boczkiewicz, Figs. 1, 2 (showing
identified structures). The Examiner stated that "the secondary collection
tank includes all of the structure set forth in claim[] 1 .... " Final Act. 4.
3
Appeal2014-007446
Application 12/984,590
First, Appellant highlights "across a width" in the limitation requiring
"a secondary outlet port that is disposed across a width of the secondary
collection tank from the secondary suction port." See Appeal Br. 5.
Appellant contends that "the plain meaning of 'across a width' is from side
to side, which is consistent with the Specification." Id. at 6. Appellant
provides an annotated version of Figure 5 from the Specification, identifying
element 544 as the "secondary outlet port" and element 552 as the
"secondary suction port." See id. at 5. Appellant also provides an annotated
version of Figure 2 from Boczkiewicz, highlighting element 19 with
"exhaust port in top of hopper 25" while highlighting element 22 with "inlet
port in side of hopper 22" [sic 25]. See id.
In response, the Examiner sets forth a proposed broadest reasonable
interpretation for "across a width." See Ans. 5-6. The Examiner also states
that "even if the term 'a width' is considered to only define a maximum,
opposite width of the secondary tank, it would have been obvious to position
the secondary outlet port of Boczkiewicz on a side of the tank opposite from
the suction port." Id. at 7. According to the Examiner:
the current application has not provided . . . criticality for the
secondary outlet port being positioned across a (maximum)
width or on opposite sides of the secondary tank from the
secondary suction port, wherein it even further would have been
obvious that the outlet port of Boczkiewicz may be located on
any portion of the secondary tank, as desired, to either reduce
the height of the secondary tank, or allow for different
configurations of the cyclonic separator (with many
configurations known in the art having an outlet port on the
opposite side from the suction port.)
Ans. 6-7.
4
Appeal2014-007446
Application 12/984,590
Appellant replies that "Boczkiewicz cannot be modified so that the
exhaust port ... is 'across' from the inlet port because that is the location
where the docking assembly is secured to the hopper 25." Reply Br. 4.
Here, although Appellant and the Examiner dispute the broadest
reasonable interpretation of "across a width," the Examiner has set forth, in
the alternative, reasoning to modify the identified structures in Boczkiewicz
to satisfy the limitation at issue even under Appellant's narrower
construction. See Ans. 6-7. Appellant's response to that reasoning (see
Reply Br. 4 (set forth above)) does not apprise us of error in the Examiner's
reasoning because the connection points between docking assembly 5 and
hopper 25-in the vicinity of upper pivoting ears 95 and lower pivoting ears
97-are below the location that, under Appellant's construction, would be
"across a width" from inlet port 22. See Boczkiewicz, Fig. 2; see also id.,
col. 5, 11. 3-15 (discussing, inter alia, elements 43, 45, 95, and 97). Thus,
we are not apprised of error based on this argument.
Second, Appellant highlights "suspended by" in the limitation
requiring "a secondary collection tank suspended by and coupled proximate
to the second end of the boom for movement away from the primary
collection tank." See Appeal Br. 5. According to Appellant, Boczkiewicz
"describes that the separator 3 is supported on three adjustable legs rather
than suspended by and coupled proximate to the second end of a boom for
movement away from the primary collection tank, as in claim 1." Id. at 4;
see also id. at 5 (highlighting element 29 in Figure 2 of Boczkiewicz with
"[s]eparator 3 supported on three legs (See Boczkiewicz, col. 4, lines 3--4)").
In response, the Examiner states that Boczkiewicz discloses "a
secondary collection tank (3) suspended by and coupled to a second end of
5
Appeal2014-007446
Application 12/984,590
the boom (via link arms 43 and 45 and actuator 47) for movement away
from the primary collection tank." Ans. 3. The Examiner also states that
Boczkiewicz discloses (1) "that the legs support the secondary tank 'when it
is desired to rest separator 3 on the ground' ([c]ol. 4, lines 6-8), suggesting
that the legs are optional supports", and (2) at column 5, line 33 to column 6,
line 18, "how the boom supports, moves and positions the secondary tank
during operation and during storage (with no mention of the legs), including
positioning the secondary tank over containers including a dump truck or
'raised off the ground' ([c]ol. 6, lines 12-16)." Ans. 5.
Based on the passages identified by the Examiner, we are not apprised
of error based on this argument. In those passages, Boczkiewicz describes
configurations in which adjustable legs 29 are not used to support separator
3, and in which the identified structures satisfy the limitation at issue, even
under Appellant's proposed construction, i.e., of "suspended by" as solely
suspended by.
Third, Appellant states that "regardless of whether it would be
reasonable to combine Boczkiewicz, Bryant, and Boozer, which is disputed,
the fact is that the combination of Boczkiewicz, Bryant, and Boozer could
not be combined to disclose or suggest the specific combination of claim 1."
Appeal Br. 7 (emphasis added). Although Appellant alleges to dispute the
articulated reasoning provided to modify Boczkiewicz based on Bryant and
Boozer, Appellant does not persuasively address that reasoning. 3 We
3 In the Rejection, the Examiner stated that it would have been
obvious "to provide at least one secondary inlet port to the primary
collection tank of Boczkiewicz, as taught by Bryant and Boozer, to allow an
optional intake into the collection tank for different applications or allow for
6
Appeal2014-007446
Application 12/984,590
determine that the Examiner's reasoning supports a prima facie case of
obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). By
not persuasively addressing the reasoning provided, Appellant has not
shown error in the relevant findings or the conclusion as to obviousness. See
id. (discussing how, if an examiner presents a prima facie case, "the burden
of coming forward with evidence or argument shifts to the applicant").
For these reasons, we sustain the rejection of claim 1. Claims 2-7 fall
with claim 1.
B. Claims 8-10
For the claims in this group, Appellant argues the patentability of
claim 8 and does not separately argue claims 9 and 10, which depend from
claim 8. Appeal Br. 8-9. Thus, we address only claim 8, with claims 9 and
10 standing or falling with claim 8. See 37 C.F.R. § 41.37 (c)(l)(iv).
Similar to claim 1, claim 8 recites, in relevant part:
a secondary collection tank in series with the primary
collection tank and suspended by and coupled proximate to the
second end of the boom for movement away from the primary
collection tank;
the secondary collection tank including a secondary
suction port and a secondary outlet port that is disposed across a
width of the secondary collection tank from the secondary
suction port.
Appeal Br. 12 (Claims App.). For claim 8, the Examiner relies on the same
findings and conclusions discussed above with regard to claim 1. See Final
Act. 4--5; Ans. 5-7. Appellant sets forth essentially the same arguments as
those provided for claim 1. Compare Appeal Br. 8-9 (claim 8), with id. at
more than one suction hose to be applied for collection of debris, which will
increase cleaning capabilities of the system." Final Act. 4--5.
7
Appeal2014-007446
Application 12/984,590
4--8 (claim 1); compare Reply Br. 7 (claim 8), with id. at 3-7 (claim 1).
Thus, for the reasons above, we also sustain the rejection of claims 8-10.
DECISION
We AFFIRM the decision to reject claims 1-10.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
8