BOMAG GmbH

Patent Trials and Appeals Board

Mar 4, 2022

2021003034 (P.T.A.B. Mar. 4, 2022)

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. 15/617,187 06/08/2017 Christian Berg 090771-572816 1043 27148 7590 03/04/2022 POLSINELLI PC PO Box 140310 KANSAS CITY, MO 64114-0310 EXAMINER CHU, KATHERINE J ART UNIT PAPER NUMBER 3671 NOTIFICATION DATE DELIVERY MODE 03/04/2022 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): patentdocketing@polsinelli.com uspt@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTIAN BERG, ERNST-JOSEF EINOLF, and TOBIAS SCHOENBERG ____________ Appeal 2021-003034 Application 15/617,187 Technology Center 3600 ____________ Before JAMES P. CALVE, BRADLEY B. BAYAT, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2021-003034 Application 15/617,187 2 STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-5 and 9-14.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. CLAIMED INVENTON Appellant’s claimed invention “relates to a wheel cover for use on a ground compaction machine.” Spec. ¶ 2. Claim 1, reproduced below, is the sole independent claims on appeal and is representative of the claimed subject matter: 1. A ground compaction machine for compacting a ground in a working direction, comprising: a machine frame; a chassis supporting the machine frame, the chassis comprising a plurality of chassis portion including a front chassis portion and a rear chassis portion, each of the plurality of chassis portions further comprising at least two chassis units, each one of the at least two chassis units including at least one wheel and being rotatable around a distinct steering axis; and a wheel cover configured to thermally insulate each of the at least two chassis units from the external surroundings, wherein the wheel cover includes at least two wheel cover units each of the respective wheel cover units being arranged on each of the 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our Decision refers to Sections I, II, and IV of the Appeal Brief, filed on Sept. 16, 2020 (“Appeal Br.”), and its corrected Sections III (i.e., Summary of Claimed Subject Matter) and IV (Claims Appendix), submitted in the Response to Notice of Non-Compliant Appeal Brief, filed on Oct. 13, 2020 (“Corrected Appeal Br.”). Appellant indicates that BOMAG GmbH is the real party in interest. Appeal Br. 1. 2 The Examiner indicated claims 6-8 would be allowable if rewritten in independent form. Final Act. 6. Appeal 2021-003034 Application 15/617,187 3 at least two chassis units, said wheel cover unit being configured to be rotatable together with the respective chassis unit about the respective distinct steering axis. Corrected Appeal Br. 3 (Claims App.). REJECTIONS Claims 2 and 9 are rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention. Claims 1-4 and 9-14 are rejected under 35 U.S.C. § 103 as unpatentable over BOMAG,3 AF2903,4 and O’Rourke.5, 6 Claims 1-4, 15, 17, 28, and 35-39 are rejected under 35 U.S.C. § 103 as unpatentable over Rasmussen (US 4,487,375, iss. Dec. 11, 1984) and Robinson (US 5,604,992, pub. Feb. 25, 1997). ANALYSIS Indefiniteness The Examiner rejects claims 2 and 9 under 35 U.S.C. § 112(b) as indefinite. Final Act. 2. Appellant does not address the merits of this rejection. See Appeal Br. 3-6. Therefore, we summarily sustain this 3 Video: BOMAG Pneumatic Tyred Rollers, https://www.youtube.com/ watch?v=ksud8sLNP5A (June 5, 2014). 4 Guerin, AF2903 Road Construction and Maintenance Compaction of Hot Mix Asphalt, https://www.slideserve.com/adlai/af2903-road-construction- and-maintenance-compaction-of-hot-mix-asphalt, slide 10 (July 25, 2014). 5 O’Rourke, US 2015/0129342 A1, pub. May 14, 2015. 6 We treat the Examiner’s omission of claims 10 and 12 in the rejection heading at page 3 of the Final Office Action as inadvertent error. See Final Act. 4-5 (rejecting claims 10 and 12 under 35 U.S.C. § 103). Appeal 2021-003034 Application 15/617,187 4 rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue - or, more broadly, on a particular rejection - the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”); Manual of Patent Examining Procedure (“MPEP”) § 1205.02 (9th ed. Rev. 10.2019, June 2020) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). Obviousness Claim 1 recites a ground compaction machine having a chassis with a front chassis portion and a rear chassis portion, each chassis portion having at least two chassis units, each of the at least two chassis units including at least one wheel and being rotatable about a distinct steering axis; and a wheel cover with at least two wheel cover units, each wheel cover unit being arranged on each of the at least two chassis units. In rejecting claim 1 under 35 U.S.C. § 103, the Examiner primarily relies on BOMAG as teaching the claimed ground compaction machine. See Final Act. 3. The Examiner acknowledges that BOMAG’s ground compaction machine does not have any wheel cover. Id. However, the Examiner finds that AF2903 discloses provid[ing] a pneumatic wheel cover on a pneumatic compacting machine. Id. AF2903 shows a compacting machine having a skirt at a front chassis portion of a chassis and a skirt at a rear chassis portion. See AF2903 10. The Examiner acknowledges that the combination of BOMAG and AF2903 Appeal 2021-003034 Application 15/617,187 5 fails to teach that a wheel cover is arranged on each of at least two chassis unit at each chassis portion, and relies on O’Rourke for this aspect of the claim language. Final Act. 3-4 (citing O’Rourke Fig. 1). O’Rourke relates to a motorcycle. O’Rourke ¶¶ 2, 88. Figure 1 of O’Rourke shows a perspective view of a touring-style motorcycle. Id. ¶¶ 9, 89, Fig. 1. The Examiner finds that O’Rourke’s fender teaches a wheel cover that rotates with a chassis unit. Final Act. 3-4 (citing O’Rourke Fig. 1); Ans. 4-5 (annotating O’Rourke Fig. 1). The Examiner determines that it would have been obvious, in light of O’Rourke, to modify the wheel cover of the BOMAG and AF2903 to have two wheel cover units, each wheel cover unit being arranged on each of at least two chassis units, as required by claim 1. See Final Act. 4. However, the Examiner provides no rationale as to why this combination would have been obvious to the skilled artisan in light of these references. See id. Appellant argues that the Examiner’s rejection is improper, because the rejection provides no rationale to support the determination of obviousness. See Appeal Br. 4-6. In response, the Examiner asserts that Appellant’s Specification describes that prior art compactors suffer from pneumatic tires running into the wheel covers during turns. Ans. 4. Appellant’s Specification describes that known ground compaction machines prevent adhesion of ground material to the tires during compaction by maintaining hot tires. Spec. ¶ 4. To slow cooling of the rubber tires, ground compaction machines mount thermally insulating suspensions to the rollers that hang down from the machine frame and almost reach the ground. Id. A front chassis portion may include two chassis units, each chassis unit having a pair of tires around a distinct steering axis. Id. ¶ 5. The wheel Appeal 2021-003034 Application 15/617,187 6 cover is usually sized very large to avoid limiting the required movement space of the two chassis units. Id. However, the large wheel cover enlarges the overall measurements of the ground compaction machine, which makes the compactor less maneuverable. Id. The Examiner determines that Appellant’s Specification describes a known problem in the art regarding “how to steer when there is a cover.” Ans. 4. The Examiner finds that O’Rourke addresses this problem by providing a fender on a front wheel of a motorcycle that turns with the wheel. Id. The Examiner further finds that O’Rourke’s wheel cover, like AF2903’s wheel cover, provides “some amount of thermal insulation.” Id. Yet, the Examiner does not adequately support either of these findings with technical reasoning or evidentiary support. Further, the Examiner does not adequately explain why one of ordinary skill in the art would modify the wheel cover of the ground compaction machine, as taught by BOMAG and AF2903, in view of O’Rourke’s motorcycle fender, to have two wheel cover units, each wheel cover unit being arranged on each chassis unit, as required by claim 1. For example, O’Rourke’s fender, in contrast to the claimed invention, covers a single wheel arranged on a single chassis unit for a front chassis portion. Accordingly, we are persuaded that the Examiner has not provided sufficient technical reasoning with adequate evidentiary support to support the obviousness determination. Therefore, we do not sustain the rejection under 35 U.S.C. § 103 of independent claim 1 and dependent claims 2-4 and 9-14. The Examiner’s rejection of dependent claim 5 under 35 U.S.C. § 103 does not cure the deficiencies in the rejection of independent claim 1. Appeal 2021-003034 Application 15/617,187 7 Therefore, we do not sustain the rejection under 35 U.S.C. § 103 of dependent claim 5 for the same reasons described above with respect to independent claim 1. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 2, 9 112(b) Indefiniteness 2, 9 1-4, 9-14 103 BOWMAG, AF2903, O’Rourke 1-4, 9-14 5 103 BOWMAG, AF2903, O’Rourke, Schatzman 5 Overall Outcome 2, 9 1, 3, 4, 5, 9- 14 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 IN PART