12290248 (P.T.A.B. Feb. 27, 2017)

Ex Parte Willim

Patent Trial and Appeal BoardFeb 27, 2017

12290248 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office 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. 298-432 5117 EXAMINER CAMPOS, JR, JUAN J ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 12/290,248 10/29/2008 28249 7590 02/27/2017 DILWORTH & BARRESE, LLP Dilworth & Barrese, LLP 1000 WOODBURY ROAD SUITE 405 WOODBURY, NY 11797 Hans-Dieter Willim 02/27/2017 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 HANS-DIETER WILLIM Appeal 2015-005336 Application 12/290,248 Technology Center 3600 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hans-Dieter Willim (Appellant)1 seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1—7 and 9—24, which are all of the pending claims, as set forth in the Final Action dated March 5, 2013 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellant identifies Liebherr-Werk Ehingen GmbH as the real party in interest. Br. 1. Appeal 2015-005336 Application 12/290,248 CLAIMED SUBJECT MATTER Appellant’s claimed subject matter “relates to a method of raising a telescopic boom of a mobile crane having a luffing fly jib and having spatial boom guying.” Spec. 1. Claims 1 and 21 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of raising a telescopic boom of a mobile crane having a luffing fly jib and having spatial boom guying, wherein the telescopic boom includes telescoping sections and is first telescoped outwardly to a desired length of the telescopic boom, all the telescopic sections are bolted to one another in this position and the spatial boom guying is tensioned before the luffing fly jib pivotally connected to the telescopic boom is raised, wherein the spatial boom guying is Y-shaped guying connected to the telescopic boom and extending laterally outward therefrom out of a plane of the luffing movement. REJECTIONS The Final Action includes the following rejections: 1. Claim 9 under 35 U.S.C. § 112, second paragraph, as indefinite. 2. Claims 1, 2, 5, and 16 under 35 U.S.C. § 103(a) as unpatentable over Oishi ’676 (JP 10-194676, pub. July 28, 1998), Erdmann (US 6,062,404, iss. May 16, 2000), and Willim (US 2006/0096940 Al, pub. May 11, 2006). 3. Claims 3, 4, and 10-15 under 35 U.S.C. § 103(a) as unpatentable over Oishi ’676, Erdmann, Willim, and Diehl (US 2006/0065616 Al, pub. Mar. 30, 2006). 4. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Oishi ’676, Erdmann, Willim, and Mott (US 3,028,018, iss. Apr. 3, 1962). 2 Appeal 2015-005336 Application 12/290,248 5. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Oishi ’676, Erdmann, Willim, and Okada (JP 1-92198 A, pub. Apr. 11, 1989). 6. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Oishi ’676, Erdmann, Willim, Okada, and Ishihara (JP 2001-151469, pub. June 5,2001). 7. Claims 17—20 under 35 U.S.C. § 103(a) as unpatentable over Oishi ’676, Erdmann, Willim, Diehl, and Mott. 8. Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Johnson (US 3,968,884, iss. July 13, 1976), Erdmann, and Willim. 9. Claim 22 under 35 U.S.C. § 103(a) as unpatentable over Johnson, Erdmann, Willim, and Lamer (US 3,732,988, iss. May 15, 1973). 10. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over Johnson, Erdmann, Willim, Lamer, and Mott. 11. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over Oishi ’676, Erdmann, Willim, Okada, and Oishi ’086 (JP 09- 067086, pub. Mar. 11, 1997). ANALYSIS First Ground of Rejection Appellant does not present any arguments contesting the Examiner’s first ground of rejection of claim 9. Final Act. 2; Br., passim (Appellant presenting argument only as to the rejections under 35 U.S.C. § 103). Accordingly, we summarily sustain the rejection of claim 9 under 35 U.S.C. § 112, second paragraph, as indefinite. 3 Appeal 2015-005336 Application 12/290,248 Second Ground of Rejection Independent claim 1 calls for a method of raising a telescopic boom of a mobile crane in which “the telescopic boom . . . [is] first telescoped outwardly to a desired length . . . and the spatial boom guying is tensioned before the luffing fly jib pivotally connected to the telescopic boom is raised.” Br. 20 (Claims App.). The Examiner found that Oishi ’676 discloses a method of raising a telescopic boom (2) of a mobile crane having a luffing fly jib (41/42) and having spatial boom guying (16), wherein the telescopic boom includes telescoping sections (see figure 2) and is first telescoped outwardly to a desired length (the length shown in figure 9) of the telescopic boom [and] the spatial guying (16) is tensioned (as shown in figure 9) before the luffing fly jib pivotally connected to the telescopic boom is raised. Final Act. 3; see also Ans. 8 (the Examiner citing Figures 1 and 13 of Oishi ’676 as showing that “the telescopic boom is telescoped to its desired length”). Appellant argues, and we agree, that Oishi ’676 does not disclose the particular order of steps required by claim 1. Br. 14. In particular, the Examiner’s reliance (Final Act. 3; Ans. 8) solely on Figures 9 and 13 of Oishi ’676 is misplaced. The Examiner does not point to any disclosure in Oishi ’676 explaining with sufficient specificity the relationship between Figure 9 and Figure 13 to establish by a preponderance of the evidence that the depictions in these figures disclose any particular order or sequence for telescoping the boom outwardly and tensioning the spatial guying. As such, we find insufficient evidence to support the Examiner’s finding that Oishi 4 Appeal 2015-005336 Application 12/290,248 ’676 discloses a method of raising a telescoping boom in which the boom is first telescoped outwardly to a desired length and the guying is tensioned before the jib is raised. For these reasons, we do not sustain the Examiner’s rejection of independent claim 1, and of claims 2, 5, and 16 depending therefrom, under 35 U.S.C. § 103(a) as unpatentable over Oishi ’676, Erdmann, and Willim. Third through Seventh and Eleventh Grounds of Rejection The rejections of dependent claims 3, 4, 6, 7, 9-15, 17—20, and 24 rely on the same unsupported findings as to the disclosure of Oishi ’676 relied upon in the first ground of rejection. See Final Act. 3—6. The Examiner did not make any findings as to the scope and content of Diehl, Mott, Okada, Ishihara, or Oishi ’086 that would cure the deficiency in Oishi ’676 discussed supra. Accordingly, we do not sustain the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 3, 4, 6, 7, 9-15, 17—20, and 24. Eighth Ground of Rejection Independent claim 21 recites: [T]he telescopic boom ... is first raised by means of a luffing cylinder and telescoped outwardly to a desired length of the telescopic boom . . . and the spatial boom guying is tensioned before the luffing fly jib pivotally connected to the telescopic boom is raised. Br. 22 (Claims App.). 5 Appeal 2015-005336 Application 12/290,248 The Examiner found: Johnson shows a method of raising a telescopic boom of [a] mobile crane having a luffing fly jib (JI—JIV) and having spatial boom guying, (GR) wherein the telescopic boom is first raised by means of a luffing cylinder and telescoped outwardly to its desired length, the spatial guying is tensioned before the luffing fly jib pivotally connected to the telescopic boom is raised. Final Act. 5. Appellant argues that Johnson does not disclose the particular order of steps required by claim 21. Br. 17. In particular, Appellant asserts that Johnson extends the telescopic boom before raising it. Id. (citing Johnson, Figs. 5—8). Appellant also asserts that Johnson tensions guy lines GR before raising the telescopic boom. Id. (citing Johnson, Figs. 5—8, col. 8,11. 8—14). The Examiner responds that Figure 1 of Johnson shows a transport position in which “cylinder 25 (supporting the boom B) and a portion of the boom ... are at an angle that is less than 180 degrees.” Ans. 11. According to the Examiner, Figures 3 and 4 of Johnson show partially deployed positions in which cylinder 25 and the portion of boom B “are now at exactly 180 degrees.” Id. The Examiner takes the position that, “[i]n the straightening of the angle of these parts, the telescopic sections of the boom are at least partially raised to allow the start of the deployment of the boom (as shown in figures 3—4).” Id. The Examiner’s position is not supported by the disclosure of Johnson, which does not disclose clearly boom B at a different elevation or angle in Figures 3 and 4 relative to Figure 1. To the extent that Figures 1,3, and 4 show the boom, jib, and guying elements in different positions, it is too speculative to rely on the depictions in these figures alone as evidence 6 Appeal 2015-005336 Application 12/290,248 that Johnson discloses any particular order or sequence for telescoping the boom and tensioning the spatial guying. Thus, the Examiner’s finding that Johnson discloses first raising the telescoping boom and tensioning the guying before raising the jib is not supported by a preponderance of the evidence. For these reasons, we do not sustain the Examiner’s rejection of independent claim 21 under 35 U.S.C. § 103(a) as unpatentable over Johnson, Erdmann, and Willim. Ninth and Tenth Grounds of Rejection The rejections of dependent claims 22 and 23 rely on the same unsupported findings as to the disclosure of Johnson relied upon in the eighth ground of rejection. See Final Act. 5—6. The Examiner did not make any findings as to the scope and content of Lamer or Mott that would cure the deficiency in Johnson discussed supra. Accordingly, we do not sustain the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 22 and 23. DECISION The decision of the Examiner to reject claim 9 under 35 U.S.C. § 112, second paragraph, as indefinite is AFFIRMED. The decision of the Examiner to reject claims 1—7 and 9—24 under 35 U.S.C. § 103(a) is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 7