Ex Parte Zeller

Patent Trial and Appeal Board

Mar 24, 2013

11963394 (P.T.A.B. Mar. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRUCE K. ZELLER
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Appeal 2011-000857
Application 11/963,394
Technology Center 3600
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Before: LINDA E. HORNER, BRETT C. MARTIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/963,394

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STATEMENT OF CASE
Bruce K. Zeller (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and designate a portion of our affirmance as a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).

THE INVENTION
Appellant’s invention is directed generally to “a method and apparatus
for separating excavated material which utilizes a releasable and
interchangeable screen element which is positioned on top of, and releasably
engaged to, a frame.” Spec., para. [0002]. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A separating apparatus for classifying and recycling
excavated material comprising:
a frame member having a slanted grate having two
opposite sides and two opposite ends wherein said slanted grate
forms less than a ninety degree angle relative to a ground
surface; and
a removable screen member positioned on a top of said
frame member, said screen member having two opposite sides,
two opposite ends, a top, a bottom, and at least one inverted
hook member extending from the top of said screen member.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Berglund WO 89/10211 Nov. 2, 1989
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Bishop
Nierop

US 5,097,610
US 6,712,218 B2

Mar. 24, 1992
Mar. 30, 2004

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
Claims 1, 2, 5, 7, and 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Berglund. Ans. 3.
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Berglund, Bishop, and Nierop. Ans. 4-6.

ANALYSIS
Anticipation
The Examiner finds that Berglund teaches each and every element of
claims 1, 2, 5, 7, and 10, including, inter alia, screen 5 having at least one
inverted hook member 11 extending from the top of the screen member.
Ans. 3-4. Appellant argues that claim 1 requires “a removable screen
member having ‘[t]wo opposite sides, two opposite ends, a top, a bottom,
and at least one inverted hook member extending from the top of the screen
member’” and that the Examiner is incorrect in his application of Berglund
because “[i]f, as the Examiner suggests, the hooks 11 in Berglund extend
from the top of the screen member . . . . there are not enough remaining
elements of the screen member . . . to account for opposite sides and
opposite ends as required by Appellant’s claims.” App. Br. 8-9. In
response, the Examiner explains how these elements are met and states that
Berglund’s screen shown in Figure 4 includes “said screen member having
two opposites sides (sides 9 and 10), two opposite ends (ends 7 and 8), a top
(top as face of screen shown in figure), [and] a bottom (bottom as face of
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screen hidden on opposite face of screen).” Ans. 7. Accordingly, the
Examiner sufficiently explains how all of the sides, ends, etc. of the screen
are present in Berglund.
Appellant correctly points out, however, “[c]ontrary to the Examiner’s
assertion, the face of the screen shown in Fig. 4 of Berglund is the bottom of
the screen (not the top) as the surface shown is the surface that rests on the
top of the frame (1) shown in Fig. 1.” Reply Br. 2. Putting aside the
Examiner’s mischaracterization of Berglund in the Response to Argument,
we nonetheless agree with the Examiner’s ultimate finding that Berglund
anticipates claim 1. Even if the visible side of the screen is the bottom,
hooks 11 still provide “at least one inverted hook member extending from
the top of said screen member” as claimed in claim 1.
As shown in Figure 4, hooks 11 begin at the top portion of member 7
and, though they extend downward from there, they still extend “from the
top of said screen member” as claimed.1 In an alternate reading of claim 1,
Berglund teaches two opposite ends (9 and 10), a top 7, a bottom 8, and two
opposite sides, with one side being the underside (depicted in Figure 4) and
an opposite side (not depicted in Figure 4). Under this alternative reading,
hooks 11 also extend “from the top of said screen member” by way of being
attached to and extending from top member 7.
As such, we do not find Appellant’s argument persuasive and sustain
the Examiner’s rejection of claim 1 as anticipated by Berglund. We
designate our affirmance as a new ground of rejection to provide Appellant

1 Claim 1 does not call for the hooks to extend in any particular direction
(e.g., upwardly as shown in Appellant’s drawings) from the top surface.
Accordingly, the fact that the hooks extend downwardly from the top of
member 7 does not distinguish hooks 11 from the claim language.
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with a full and fair opportunity to respond to the thrust of the rejection.
Appellant did not present separate arguments for the patentability of
dependent claims 2, 5, 7, and 10. Thus, these claims fall with claim 1.

Obviousness
Nierop
As an initial matter, we address Appellant’s argument that Nierop is
not prior art. See Reply Br. 3. The Examiner finds “that Nierop is regarded
as properly applicable prior art as Applicant has failed to properly establish
an antedating effective date in application 10/823,113.” Ans. 4. We note,
however, that U.S. Patent No. 7,641,053 B2, which issued from application
10/823,113, lists on its face a continuation chain dating back to Feb. 14,
2000, the filing date of application No. 09/503,283, which issued as U.S.
Patent No 6,439,393. Appellant’s Specification in the instant appeal also
claims priority to application number 09/503,283,2 which antedates the
Nierop reference.3 See id.; see also Spec., para. [0001]. As such, we agree
with Appellant that Nierop is not prior art and we do not sustain the
Examiner’s rejection of claims 1-12 as obvious over Berglund and Nierop.
Thus, we only address the rejection based on Berglund in view of Bishop.
Berglund and Bishop
Appellant first argues that the present invention could not be obvious
because it filled a long-felt need in the art. App. Br. 11. A showing of long-
felt, but unresolved need requires that the applicant submit actual evidence

2 Appellant erroneously identifies the filing date as December 14, 2000.
Reply Br. 3.
3 Nierop is based on a filing date of July 31, 2002, and was published on
March 30, 2004.
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of long-felt need, as opposed to argument. In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006). This is because “absent a showing of long-felt need or the
failure of others, the mere passage of time without the claimed invention is
not evidence of nonobviousness.” Id. (emphasis added) (quoting Iron Grip
Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)).
Appellant, however, provides no evidence in support of this argument.
Accordingly, we do not find this argument persuasive.
Although the Examiner rejects claim 1 as anticipated by Berglund, he
also states that “under an alternate interpretation as illustrated in the
application of Berglund below, the hooks taught by Berglund may not be
regarded as at least one inverted hook extending from the top of said screen
and may merely be regarded as the means for releasably securing.” Ans. 4.
Based upon this finding, the Examiner also rejects claims 1-5, 7, and 10-12
as obvious over Berglund in view of Bishop.4 The Examiner relies on
Bishop to teach the inverted hooks and other aspects of the rejected claims.
Id. at 4-5. With respect to Bishop, the Examiner finds that “Bishop teaches
the use of inverted hooks that make it easier for a sorting device to be
engaged and transported by a mobile bucket.” Ans. 5 (citing to Figs. 5-8 of
Bishop and col. 6 and noting hooks 94 and 96).
Appellant discusses hooks 82 and 84 and argues that “Bishop fails to
disclose a removable screen member having two opposite sides, two

4 The Examiner also rejects claims 6 and 8, which depend from claim 5, and
9, which depends from claim 7, as obvious over Berglund in view of either
Bishop or Nierop, with the addition of “what is well known in the art.” Ans.
6. Appellant lists this rejection under the Grounds of Rejection to Be
Reviewed on Appeal (App. Br. 7, Reply Br. 1), but provides no argument
specific to claims 6, 8, and 9. Accordingly, claims 6, 8, and 9 stand or fall
based upon the outcome of the claims from which they depend.
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opposite ends, a top, a bottom, and at least one inverted hook member
extending from the top of the screen as required by Appellant’s independent
claim 1 and all claims depending therefrom.” App. Br. 12; see also Reply
Br. 3-4. This argument, however, does not address the combination of
Bishop and Berglund because the Examiner has not relied solely on Bishop
for each of these teachings. The Examiner finds that Berglund teaches a
removable screen having two opposite ends, two opposite sides, a top, and a
bottom and then finds the hooks satisfied by Bishop’s hooks 94 and 96,
which are located in a different position from the hooks 82 and 84 that
Appellant argues. Because Appellant’s argument does not address the
Examiner’s application of hooks 94 and 96 to the screen of Berglund, we are
not apprised of error in the Examiner’s rejection as stated.
Appellant next points out that “the Examiner has the initial burden of
factually supporting a prima facie case of obviousness” and states without
any explanation that “[t]his has not been done.” App. Br. 12. Appellant
goes on to cite various propositions of case law on obviousness and
motivation without providing analysis as to how these cases apply to the
rejection at issue. See id. As to motivation, the Examiner provides a lengthy
list of rationales for combining Berglund with Bishop, which satisfy the
Examiner’s burden, at least regarding a prima facie case of obviousness. See
Ans. 5, 9, 10. Appellant’s lone conclusory statement provides no basis for
reversing the Examiner’s rejection of the claims at issue as obvious over
Berglund and Bishop. Accordingly, for the reasons explained above, we
sustain the Examiner’s rejection of claim 1 as obvious over the combination
of Berglund and Bishop. Appellant has not separately argued the
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patentability of claims 2-12, and as such, we sustain the rejection of these
claims for the same reasons as claim 1.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1, 2, 5, 7, and 10 as anticipated by Berglund, and designate our
affirmance as a NEW GROUND OF REJECTION. We AFFIRM the
Examiner’s decision to reject claims 1-12 as obvious over Berglund and
Bishop. We REVERSE the Examiner’s decision to reject claims 1-12 as
obvious over Berglund and Nierop.
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection of one or more
claims, this decision contains an affirmance designated as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides
“[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that
Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner.…
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.…
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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