DONALD MURTHA

Patent Trials and Appeals BoardMay 27, 2021

2021000168 (P.T.A.B. May. 27, 2021)

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. 15/443,767 02/27/2017 DONALD MURTHA MUR.P1100A 6349 23575 7590 05/27/2021 CURATOLO SIDOTI CO., LPA 24500 CENTER RIDGE ROAD, SUITE 280 CLEVELAND, OH 44145 EXAMINER MCGOWAN, JAMIE LOUISE ART UNIT PAPER NUMBER 3671 NOTIFICATION DATE DELIVERY MODE 05/27/2021 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): docket@patentandtm.com pair@patentandtm.com sidoti@patentandtm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DONALD MURTHA Appeal 2021-000168 Application 15/443,767 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–9. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Donald J. Murtha. Appeal Br. 3. Appeal 2021-000168 Application 15/443,767 2 BACKGROUND The Specification states that the “disclosure relates to earthmoving construction equipment . . . [including] excavators for use in construction.” Spec. ¶ 1. CLAIMS Claims 1 and 9 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. An excavator comprising: a main frame having a longitudinal axis; a cabin rotatably mounted on the top of said main frame; an articulated digging arm; a bucket removably connected to said articulated digging arm; a drive axle connected to said main frame; walking beams connected to said drive axle; wheel axles connected to said walking beams and; wheels rotatably mounted on said wheel axles. Appeal Br. 18. REJECTIONS 1. The Examiner rejects claims 1–9 on the ground of nonstatutory double patenting as unpatentable over claims 1–33 of Murtha 711.2 2. The Examiner rejects claims 1–4 and 7 under 35 U.S.C. § 103 as unpatentable over Herolf3 in view of Voermans.4 2 Murtha, US 9,617,711 B2, iss. Apr. 11, 2017. 3 Herolf, US 4,984,961, iss. Jan. 15, 1991. 4 Voermans, US 7,954,524 B2, iss. June 7, 2011. Appeal 2021-000168 Application 15/443,767 3 3. The Examiner rejects claims 5 and 8 under 35 U.S.C. § 103 as unpatentable over Herolf in view of Voermans and Morrison.5 4. The Examiner rejects claims 6 and 9 under 35 U.S.C. § 103 as unpatentable over Herolf in view of Voermans and LeGard.6 5. The Examiner rejects claims 1–5 and 7 under 35 U.S.C. § 103 as unpatentable over O’Flynn7 in view of Herolf. 6. The Examiner rejects claim 8 under 35 U.S.C. § 103 as unpatentable over O’Flynn in view of Herolf and Morrison. 7. The Examiner rejects claims 6 and 9 under 35 U.S.C. § 103 as unpatentable over O’Flynn in view of Herolf and LeGard. DISCUSSION Double Patenting The Examiner finds that the present claims are not patentably distinct from the claims of Murtha 711 “because both claim a main frame, a cabin, an articulated digging arm, a bucket, a drive axle, walking beams and wheel axles.” Final Act. 3–4. Appellant does not address this rejection in either the Appeal Brief or the Reply Brief. We agree with and adopt the Examiner’s findings and determination, and thus, we sustain the rejection. Rejection over Herolf and Voermans We are persuaded of reversible error in this rejection because the Examiner has not set forth an adequate reason to support the proposed combination. 5 Morrison et al., US 3,466,770, iss. Sept. 16, 1969. 6 LeGard, US 2013/0298796 A1, pub. Nov. 14, 2013. 7 O’Flynn et al., IE S2000/0812, pub. Apr. 18, 2001. Appeal 2021-000168 Application 15/443,767 4 With respect to claim 1, the Examiner finds that Herolf discloses an apparatus including a main frame, cabin, articulated arm, drive axle, walking beams, wheel axles and wheels, as claimed. Final Act. 4. The Examiner finds that Herolf teaches a tree processing tool connected to the articulating arm, and the Examiner acknowledges that Herolf does not teach an excavating tool in the form of a bucket. Id. However, the Examiner relies on Voermans as teaching a tree processing unit on an articulating arm and teaching that such a tree processing unit “can be replaced with other tools depending on the type of work to be done.” Id. (citing Voermans, col. 1, ll. 26–33). The Examiner determines that it would have been obvious to modify Herolf to include a bucket on the articulated arm, based on this teaching in Voermans, “as a simple substitution of one known element for another to obtain predictable results . . . to make the machine more versatile depending on the type of work to be done.” Id. at 4–5. Appellant argues that Voermans does not support the rejection because Voermans “does not teach or suggest replacing a tree processing tool designed to cut trees with a digging bucket to create an excavating machine.” Appeal Br. 12. Appellant asserts that Voermans only teaches removing a bucket from an excavating machine and replacing it with a tree processing unit, whereas the proposed combination would replace a tree processing unit on a tree processing machine with a digging bucket to create an excavator. Id. Such a replacement would render Herolf unsuitable for its intended purpose. Id. We are persuaded by Appellant’s argument to the extent that we agree that the Examiner has not provided an adequate reason with the requisite rational underpinnings to support the conclusion of obviousness. KSR Int’l. Appeal 2021-000168 Application 15/443,767 5 Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We agree with Appellant that Voermans only teaches replacing the bucket on an excavator with a tree processing unit and does not teach that it was known to replace the tree processing unit on a tree processing machine, such as Herolf’s machine, with an excavating bucket. Notably, Voermans distinguishes using a tree processing unit on an excavator from “other forestry harvesters [that] are purpose-built machines.” Voermans, col. 1, ll. 30–34. The Examiner does not cite to any other portion of Voermans that teaches or suggests replacing tree-processing units on a purpose-built tree-processing machine. Further, Herolf teaches such a purpose-built tree processing machine, and the Examiner does not cite to any portion of Herolf teaching or suggesting that the machine could be used for other purposes or that the tree-processing unit could be replaced with other tools. Thus, we are not persuaded that the language in Voermans relied upon by the Examiner suggests that a tree processing unit on a tree processing machine may be changed to an excavating bucket or that Herolf contemplates interchangeable tree-processing units and excavating buckets. Further, the distinction between an excavating machine with interchangeable tools and a purpose-built tree processing machine does not support the Examiner’s determination that this would be a simple substitution of parts or that the results would be predictable. Voermans and Herolf are silent regarding the possibility of interchanging tools on a purpose-built tree processing machine such as Herolf’s. In response to Appellant’s argument, the Examiner also finds that “it is extremely well known in the art to utilize removable attachments/quick Appeal 2021-000168 Application 15/443,767 6 hitches to interchangeably connect attachments to excavating equipment to make the large/expensive heavy machinery more versatile.” Ans. 4. We agree with Appellant that the Examiner does not cite any further evidence, beyond Voermans, to support this finding. As discussed, Voermans notes the distinction between purpose-built tree processing machines and excavators, and the Examiner has provided no evidence that it was known to use excavating buckets on purpose-built tree processing machines, such as the machine taught by Herolf. Thus, even if the Examiner establishes that it is well-known to interchange tools on excavators, the relevant inquiry is whether it was known or would have been obvious to change the tree- processing unit on a tree-processing machine to an excavator bucket. Based on the foregoing, we are persuaded of error in the rejection of claim 1 over Herolf and Voermans. For the same reasons, we are persuaded of error in the rejection of dependent claims 2–4 and 7. Thus, we do not sustain this rejection of claims 1–4 and 7. Rejection over Herolf, Voermans, and Morrison In the rejection of claims 5 and 8 over Herolf, Voermans, and Morrison, the Examiner does not rely on any further evidence or reasoning that would cure the deficiency in the rejection of claim 1, as discussed above. Thus, we also do not sustain this rejection of claims 5 and 8. Rejection over Herolf, Voermans, and LeGard In the rejection of claims 6 and 9 over Herolf, Voermans, and LeGard, the Examiner does not rely on any further evidence or reasoning that would cure the deficiency in the rejection of claim 1, as discussed above. Further, the Examiner relies on the same reasoning in rejecting independent claim 9 Appeal 2021-000168 Application 15/443,767 7 that we found deficient in the rejection of claim 1, as discussed. See Final Act. 6. Thus, we also do not sustain this rejection of claims 6 and 9. Rejection over O’Flynn and Herolf We are persuaded of error in the rejection of claim 1 here because the Examiner has not set forth an adequately supported reason to support the combination proposed. With respect to claim 1, the Examiner finds that O’Flynn teaches an excavator as claimed except that O’Flynn does not disclose wheel axles that are mounted to walking beams. Final Act. 6–7. With respect to this element, the Examiner finds that “Herolf also discloses a work vehicle with an articulated arm and a rotatable cabin supported by a frame and wheels,” and “Herolf discloses the use of a walking beam[] for the axle mounts.” Id. at 7. The Examiner determines that it would have been obvious “to utilize walking beams in [O’Flynn] as taught by Herolf as a simple substitution of one known element for another to obtain predictable results . . . to allow the vehicle to more easily traverse terrain.” Id. Notably, although the Examiner indicates that the combination would allow O’Flynn’s vehicle to more easily traverse terrain, the Examiner provides no citation to evidence or explanation showing that a person of ordinary skill in the art would have recognized that such a benefit would result if Herolf’s wheel arrangement were employed in O’Flynn’s vehicle. As noted by Appellant, O’Flynn discloses the use of “four ground engaging driven and steerable wheels.” O’Flynn Abstract. Because such wheels are individually driven and steerable, it is not clear, without further evidence or explanation, that there is any need for modification to allow the device “to more easily traverse terrain.” Appeal 2021-000168 Application 15/443,767 8 In the Answer, the Examiner further explains that Herolf teaches “that the disclosed wheel arrangement allows the operator to incline the vehicle in a desired orientation to aid in dumping loads.” Ans. 5 (citing Herolf, col. 5, ll. 4–9). However, we agree with Appellant that it is not clear how the arrangement disclosed in Herolf would benefit O’Flynn’s excavator because Herolf’s vehicle is designed to dump loads to the side of the machine, in which case lifting of the wheels to tilt the vehicle to the side would be beneficial. See Reply Br. 8–9. In contrast, O’Flynn discloses an excavator with a skip that dump loads to rear of the vehicle. See, e.g., O’Flynn Fig. 1. It is not clear how the combination proposed would assist in dumping loads from O’Flynn’s device. Finally, the Examiner also indicates that the proposed modification of O’Flynn “would also inherently enable the operator to adjust the wheels to accommodate an uneven load or uneven terrain during operation.” Ans. 5. But we agree with Appellant that the Examiner does not explain or provide evidence showing how such a modification would solve any problems in O’Flynn’s device. In short, we agree with Appellant that the Examiner has merely shown that the two references at issue could be combined, but the Examiner has not provided any reason with sufficient rational underpinnings to support the conclusion of obviousness. See KSR, 550 U.S. at 418. Based on the foregoing, we are persuaded of reversible error in the rejection of claim 1 over O’Flynn and Herolf. For the same reasons, we are persuaded of error in the rejection of dependent claims 2–5 and 7. Thus, we do not sustain this rejection of claims 1–5 and 7. Appeal 2021-000168 Application 15/443,767 9 Rejection over O’Flynn, Herolf, and Morrison In the rejection of claim 8 over O’Flynn, Herolf, and Morrison, the Examiner does not rely on any further evidence or reasoning that would cure the deficiency in the rejection of claim 1, as discussed above. Thus, we also do not sustain this rejection of claim 8. Rejection over O’Flynn, Herolf, and LeGard In the rejection of claims 6 and 9 over O’Flynn, Herolf, and LeGard, the Examiner does not rely on any further evidence or reasoning that would cure the deficiency in the rejection of claim 1, as discussed above. Further, the Examiner relies on the same reasoning in rejecting independent claim 9 that we found deficient in the rejection of claim 1, as discussed. See Final Act. 6. Thus, we also do not sustain this rejection of claims 6 and 9. CONCLUSION We AFFIRM the double patenting rejection of claims 1–9. We REVERSE the remaining rejections. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9 Nonstatutory Double Patenting, Murtha 711 1–9 1–4, 7 103 Herolf, Voermans 1–4, 7 5, 8 103 Herolf, Voermans, Morrison 5, 8 6, 9 103 Herolf, Voermans, LeGard 6, 9 1–5, 7 103 O’Flynn, Herolf 1–5, 7 8 103 O’Flynn, Herolf, Morrison 8 6, 9 103 O’Flynn, Herolf, LeGard 6, 9 Appeal 2021-000168 Application 15/443,767 10 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Overall Outcome 1–9 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