Ex Parte Zeller

Board of Patent Appeals and Interferences

Jul 23, 2012

11854230 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRUCE K. ZELLER
____________

Appeal 2010-001242
Application 11/854,230
Technology Center 3600
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
HYUN J. JUNG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001242
Application 11/854,230

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STATEMENT OF THE CASE
Bruce K. Zeller (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-4 and 17-21. Claims 5-16 have been
withdrawn. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to an “apparatus for separating a fine
particulate matter from other materials.” Spec. 1, para. [0002].
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. An apparatus for separating a fine
particulate material from other matter comprising:
a frame having a front end and a back end;
an adjustable screen having a front end, a
back end, a top surface and a bottom surface,
wherein the adjustable screen is positioned over a
top of the frame and the back end of the adjustable
screen is connected to the back end of the frame;
a tow bar having an upper surface and a
lower surface attached to the front end of the
frame; and
a vertical bar member of adjustable height
attached to the upper surface of the tow bar and the
bottom surface of the adjustable screen member.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bradshaw US 399,486 Mar. 12, 1889
Zuckerman US 1,730,260 Oct. 1, 1929
Barber US 3,362,480 Jan. 9, 1968
Tyler US 5,335,784 Aug. 9, 1994
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Application 11/854,230

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Johnston US 5,482,165 Jan. 9, 1996

The following rejections are before us for review:1
The Examiner rejected claims 1 and 17-19 under 35 U.S.C. § 103(a)
as unpatentable over Tyler and Barber.
The Examiner rejected claims 2, 3, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Tyler, Barber, and Bradshaw.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Tyler, Barber, and Johnston.
The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Tyler, Barber, Bradshaw, and Zuckerman.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Claims 1 and 17-19
The Examiner found that Tyler discloses all the limitations of
independent claim 1 with the exception of an adjustable vertical bar that is
“attached to the upper surface of the tow bar.” Ans. 3. See also, App. Br.,
Claims Appendix. The Examiner further found that Barber discloses a sand
cleaning device including a vertical bar member 52 that is attached to the
upper surface of a tow bar 48. Id. The Examiner concluded that it would
have been obvious for a person of ordinary skill in the art “to have attached

1 The rejection of claims 1-4 under the judicially created doctrine of
obviousness-type double patenting has been withdrawn by the Examiner.
Ans. 3 and 6.
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the vertical bar member to the tow bar [in Tyler], as taught by Barber, for the
predictable result of supporting the vertical bar member.” Id. The Examiner
further noted that, “placing the vertical bar member closer to the end being
raised [in Tyler] would minimize the force required to rotate the portion of
the device being moved by increasing the distance from the pivot point.”
Ans. 8.
Appellant argues that the Examiner arrived at the rejection by
employing impermissible hindsight reconstruction because:
1) the vertical bar member (46) cited by the
Examiner in Tyler is already supported by the
ground and 2) the vertical bar member (52) cited
by the Examiner in Barber has a completely
different function than the vertical bar member
(46) disclosed in Tyler.

App. Br. 7.
Tyler discloses a materials screener including a screening frame 18, a
coupler 61 (tow bar), and a piston 46 (adjustable vertical bar member),
mounted to frame leg 16 and the bottom surface of screening frame 18, for
inclining screening frame 18. Ans. 3. See also, Tyler, col. 5, ll. 52-55; col.
6, ll. 32-33 and 39-43; and fig. 2. It is undisputed that Tyler fails to describe
an adjustable vertical bar that is “attached to the upper surface of the tow
bar.” See Ans. 3 and App. Br. 7-8. Barber is directed to a sand cleaning
device including a hydraulic cylinder assembly 52 attached to the upper
surface of draw bar 48. Ans. 3. See also Barber, col. 1, l. 9; col. 3, ll. 32-36;
and fig. 2. Based on Barber’s teaching, the Examiner is proposing to attach
Tyler’s piston 46 to the upper surface of coupler 61.
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Although Barber discloses that it was known in the art to attach an
adjustable vertical member (piston) to the upper surface of a tow bar, we
find the Examiner’s rejection insufficient to explain what in the prior art
would have prompted a person having ordinary skill in the art to modify
Tyler’s device by attaching piston 46 to the upper surface of coupler 61.
The Examiner has not provided any findings that either Tyler or Barber
recognized a problem with having Tyler’s piston 46 attached to frame leg
16. Thus, the reason proffered by the Examiner to attach Tyler’s piston 46
to the upper surface of coupler 61, i.e., “for the predictable result of
supporting the vertical bar member” (Ans. 3), appears to already be
performed by frame leg 16 of Tyler. See Tyler, fig. 2.
Although we appreciate the Examiner’s position that attaching Tyler’s
piston 46 to the upper surface of coupler 61 may reduce the force required to
incline screening frame 18 about pivot point 22 (pins), nonetheless, such an
attachment would require further modification to the structure of Tyler, such
as: (1) strengthening stabilization legs 68a, 68b of equipment platform 48;
(2) modifying coupler 61 to support cylinder 46; and (3) longitudinally
extending screening frame 18 so that piston 46 would travel in a vertical
direction and not interfere with motor 50 or any other components on
equipment platform 48. See Tyler, fig. 2. Furthermore, we note that in
contrast to Barber in which hydraulic cylinder 52 controls the angle of frame
12 with respect to the ground (to adjust tine penetration), piston 46 of Tyler
controls the angle of screening frame 18 relative to support frame 12 (to
screen a variety of materials2). See App. Br. 8-9 and Reply Br. 2-3. See

2For example, an incline angle of approximately 33° will
generally be sufficient to screen gravel, while topsoil may
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also, Barber, col. 3, ll. 29-40 and col. 5, ll. 66-71 and Tyler, col. 6, ll. 64-67.
The Examiner has not provided any evidence that, without further
modifications to the device of Tyler, one of ordinary skill in the art would
have expected that Tyler’s device would function in the same manner
regardless of whether piston 46 was attached to frame leg 16 or coupler 61.
See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Without a
persuasive articulated rationale based on rational underpinning for
modifying the reference as proposed, the Examiner’s rejection appears to be
the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418) (“rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”).
Therefore, absent hindsight, we fail to see why one having ordinary
skill in the art would have been led to attach Tyler’s piston 46 to the upper
surface of coupler 61, as the Examiner proposes.
Accordingly, we cannot sustain the rejection of independent claim 1,
and its dependent claims 17-19, under 35 U.S.C. § 103(a) as unpatentable
over Tyler and Barber. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988).

require an angle of approximately 45°. Similarly, compost or
other wet materials may require an angle of 45° or more to
cause the material to flow over the screened portion of the
materials staging and screening frame.
Tyler, col. 7, ll. 1-7.
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Claims 2-4, 20, and 21
The addition of the teachings of Bradshaw, Johnston, and Zuckerman
does not remedy the deficiencies of the combined teachings of Tyler and
Barber as described supra. Accordingly, the rejections under 35 U.S.C.
§ 103(a) of claims 2, 3, and 20 as unpatentable over Tyler, Barber, and
Bradshaw; of claim 4 as unpatentable over Tyler, Barber, and Johnston; and
of claim 21 as unpatentable over Tyler, Barber, Bradshaw, and Zuckerman,
likewise cannot be sustained.

SUMMARY
The decision of the Examiner to reject claims 1-4 and 17-21 is
reversed.

REVERSED

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