Ex Parte Campbell et al

Patent Trial and Appeal BoardAug 29, 2013

10594666 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GEOFFREY GEORGE CAMPBELL and IGNACY PUSZKIEWICZ ____________________ Appeal 2011-009539 Application 10/594,666 Technology Center 3600 ____________________ Before: WILLIAM V. SAINDON, JILL D. HILL, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009539 Application 10/594,666 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 2, 4-6, 17, 18, and 20. Claims 3, 7-16, 19, 22, and 23 are withdrawn and claims 21 and 24 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claims 1 and 20 are independent. Claim 20, reproduced below, is illustrative of the claimed subject matter: 20. A mast lift for personnel configurable with a plurality of independent components, the independent components comprising: a base unit including a mast, the base unit also including a stand, and the base unit also including a platform lifting system; a personnel work platform attachable to the base unit; and a power pack engageable with the platform lifting system, wherein the mast lift is a portable stand-alone unit, either free-standing or supportable against a support surface, and wherein a machine weight of the assembled mast lift is less than 200 pounds. REJECTIONS 1. Claim 20 is rejected under 35 U.S.C. § 102(b) as being anticipated by, or in the alternative is rejected under 35 U.S.C. § 103(a) as being unpatentable over, Thevenot (US 3,752,263; iss. Aug. 14, 1973); Appeal 2011-009539 Application 10/594,666 3 2. Claims 1, 2, 4, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Thevenot; and 3. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Thevenot and Martin (US 5,522,583; iss. Jun. 4, 1996). OPINION Claim 20 – Anticipation or Obviousness – Thevenot The Examiner finds that Thevenot discloses each of the elements recited in claim 20. Ans. 4. The Examiner explains that Thevenot additionally discloses a machine weight of the assembled mast lift being less than 200 pounds because the phrase “a machine weight of the assembled mast lift” could be interpreted as including any individual element of the mast lift which is inherently less than 200 pounds (e.g., the wheel 13 or the back post 15 in Fig. 2). Id. Alternatively, the Examiner explains that even if the phrase “machine weight of the assembled mast lift” is interpreted as including each of the features recited in claim 20, it would have been an obvious matter of design choice to provide a mast lift as claimed weighing less than 200 pounds. Ans. 5. With regard to Thevenot disclosing a machine weight of the assembled mast lift that is less than 200 pounds, Appellants argue that because the claim specifies that the machine weight is the weight of the assembled mast lift, the weight of a single element of the mast lift does not meet the claim limitation. Reply Br. 2. We agree that the claimed machine weight of the assembled mast lift requires more than an individual element of the mast lift. Therefore, we do not sustain the rejection of claim 20 as being anticipated by Thevenot. Appeal 2011-009539 Application 10/594,666 4 Appellants additionally argue that the claimed weight of the mast lift is more than merely a design choice and attempt to support this argument by alleging that a reconstruction of the mast lift of Thevenot using aluminum would result in a weight of approximately 300 pounds. App. Br. 11. Appellants list components from Thevenot including component dimensions and quantities in Appendix A of the Evidence Appendix, but have not related the features from the reconstruction to the claimed features in any way. Appellants argue that one skilled in the art would not have known how to create the claimed structure because Appendix A evidences that the less than 200 pounds limitation is structurally impossible with the Examiner’s proposed modifications to the mast lift of Thevenot.1 Reply Br. 3. The entire structure of Thevenot is not required to be less than 200 pounds. Only the claimed elements are subject to the “less than 200 pounds” limitation. Claim 20 simply requires a base unit, a personnel work platform, and a power pack. The base unit includes a mast, a stand, and a platform lifting system, while the personnel work platform and the power pack do not require any additional specific elements. The claim does not specify any dimensions or materials for the components of the claim. The individual components listed in Appendix A, the dimensions of the components, and the component quantities (e.g., four tower verticals, twenty tower horizontals, etc.) do not appear to be based on the claim limitations. For example, as the Examiner explains, the claimed mast simply requires a single pole 15A from Thevenot (Ans. 4), rather than the four tower verticals, 1 We note that Appellants’ Specification does not appear to provide any guidance regarding how the claimed less than 200 pounds limitation is achieved other than summarily stating that “a machine weight of the mast lift is preferably less than 200 lbs.” See Spec., para. [0044]. Appeal 2011-009539 Application 10/594,666 5 the twenty tower horizontals, and the sixteen tower angle braces listed in Appendix A. Further, while Appellants contend that “[f]or proper comparison and without limiting the claims of the present application, the data was based on structure in the Thevenot patent to reach a height of a 14- foot platform” (App. Br. 11), the claim does not specify any height requirement. As the Examiner notes, a 5-foot platform could be used. Ans. 15. Thus, Appellants have not established that the combination of claimed elements disclosed in Thevenot would weigh any more than the 200 pounds claimed in view of the Examiner’s proposed modifications to materials and/or dimensions of the mast lift of Thevenot and have not explained why the Examiner’s proposed modifications are anything more than design choice. We sustain the rejection of claim 20. Claims 1, 2, 4, 17, and 18 – Obviousness – Thevenot Claim 1 recites that the machine weight of the mast lift is less than 200 pounds, similar to claim 20. Appellants’ arguments regarding claim 1 are similar to the arguments discussed above regarding the obviousness rejection of claim 20 (see App. Br. 13) and are unpersuasive for similar reasons. We sustain the rejection of claim 1. Claims 2, 4, 17, and 18 are argued as a group with claim 1 (see id.) and, therefore, fall with claim 1. We also sustain the rejection of claims 2, 4, 17, and 18. Claims 5 and 6 – Obviousness – Thevenot/Martin Claims 5 and 6 depend from claim 1 and Appellants rely on the arguments presented regarding claim 1 for the patentability of claims 5 and Appeal 2011-009539 Application 10/594,666 6 6. App. Br. 14. As explained above, these arguments are unpersuasive and we sustain the rejection of claims 5 and 6. DECISION We REVERSE the Examiner’s decision to reject claim 20 as being anticipated by Thevenot. We AFFIRM the Examiner’s decision to reject claims 1, 2, 4, 17, 18, and 20 as being unpatentable over Thevenot. We AFFIRM the Examiner’s decision to reject claims 5 and 6 as being unpatentable over Thevenot and Martin. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh