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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/151,947 06/02/2011 Donovan S. Clarke 50100/09-563 5863
89881 7590 08/31/2017
Caterpillar/ Miller, Matthias & Hull LLP
One North Franklin Street
Suite 2350
Chicago, IL 60606
EXAMINER
CHARLESTON, JEAN W
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
tmiller @ millermatthiashull. com
us_docket_clerk@cat.com
ynunez@millermatthiashull.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONOVAN S. CLARKE, JOHN M. PLOUZEK,
LAURENCE J. COBB, and MATTHEW W. TRONE
Appeal 2016-002267
Application 13/151,947
Technology Center 3600
Before CARL W. WHITEHEAD JR., NABEEL U. KHAN, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20, which are all of the pending claims. We
have jurisdiction over these claims under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as Caterpillar Inc. (App. Br.
3.)
Appeal 2016-002267
Application 13/151,947
STATEMENT OF THE CASE
Introduction
According to Appellants, “[t]he present disclosure relates generally to
a master link joint for a chain of a track undercarriage of a machine and,
more particularly, to a master link joint that is less prone to wear and
failure.” (Spec. 12.)
Exemplary Claim
Claims 1, 12, and 19 are independent. Claim 1, reproduced below
with the disputed limitation italicized, is exemplary of the claimed subject
matter:
1. A master link for a drive chain, comprising:
a first half link including a first rail, a bore for receiving a
pin and a first mating abutment surface; and
a second half link including a second rail, a bore for
receiving a bushing or pin, and a second mating abutment
surface;
when the first half link and the second half link are
assembled, the first mating abutment surface of the first half link
abutting the second mating abutment surface of the second half
link,
the first and second mating abutment surfaces each
including a first ramp, a second ramp, and a root disposed
between the first and second ramps,
the second ramps of the first and second mating abutment
surfaces of the first and second half links extending at an angle
0 with respect to the first and second rails respectively that
ranges from about 45 to about 53°.
2
Appeal 2016-002267
Application 13/151,947
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bissi US 5,887,958 Mar. 30, 1999
Livesay US 2008/0174175 A1 July 24,2008
Van Rooyan PCT WO 00/29276 May 25,2000
REJECTIONS
Claims 1—7, 11—16, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Livesay. (Final Act. 2—7.)
Claims 9, 10, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Livesay and Bissi. (Final Act. 7—8.)
Claims 8 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Livesay, Bissi, and Van Rooyen. (Final Act. 9—10.)
ISSUE2
Based on Appellants’ arguments, the dispositive issue on appeal is
whether the Examiner erred in finding Livesay teaches or suggests “the
second ramps of the first and second mating abutment surfaces of the first
and second half links extending at an angle 0 with respect to the first and
second rails respectively that ranges from about 45 to about 53°,” as recited
in independent claim 1 and commensurately recited in independent claims
12 and 19.
2 Appellants’ contentions present additional issues. Because the identified
issue is dispositive of Appellants’ arguments on appeal, we do not reach the
additional issues.
3
Appeal 2016-002267
Application 13/151,947
ANALYSIS
Claim 1 recites a “master link for a drive chain,” which comprises
first and second half links that mate together, an embodiment of which is
depicted in Figure 4 of the Specification, reproduced below:
255
59 241
65
38 1
■ 55/ /66/67.56
•Y ' I M '<*■'
256 ,,135
/
V\ /•
fff r a \ \ a Aaa a—<1/ /
i I:! t , i l! --------/ :
AK]; / /' ! \i \
V
Figure 4 of the Specification, reproduced above, “is a side view of one
pair of first and second half links of a master link.” (Spec. 23.)
As further depicted in Figure 5 of the Specification, reproduced
below, the half links each include a “mating abutment surface,” which each
includes a “first ramp” (item 65 in Figure 5) and a “second ramp” (item 66
in Figure 5). (Spec. 1 54.)
60,
63
65
)/
71
A
\
42
\ 'x/ V-7 • "7 A)FIG. 5 V..^/67~' \ „68 W-A/’ i
{/ A v
* \
69 -
Figure 5, reproduced above, is a front plan view of a disclosed first
4
Appeal 2016-002267
Application 13/151,947
half link. (Spec. 124.)
Also depicted in Figure 5 is an angle 0, which is the angle of “the
second ramps of the first and second mating abutment surfaces . . . with
respect to the first and second rails respectively,” as recited in claim 1.
(App. Br. 22 (Claims App’x); see also Spec. 1 54.) As also recited in claim
1, this angle “ranges from about 45 to about 53°.” (Id. ) Appellants’
Specification emphasizes the importance of this angle falling within that
range, noting “[i]t has been surprisingly found that angles above or below
this range provide inferior first half links.” (Spec. 1 54.) Appellants’
Specification further states:
[SJhallow angles for 0 may result in less ability for the link to
handle drawbar direction loading and can put more stress on the
bolts used to secure the shoe 46 to the links 42 45. Steeper
angles for 0 may result in either the need for much smaller root
radii on the ramp intersections and thus lead to higher stresses or
the need to make the small planar surface between the root radii
too small and thus not much load carrying capacity, again putting
more stress on the bolts. Optimum 0 angles allow both large
enough radii in the tooth roots so as to not cause high stresses
and for better load carrying capacity of the link so the bolts are
not prone to strip or fail.
(Spec. 155.)
The Examiner finds Livesay teaches or suggests all of the limitations
of claim 1. (Ans. 2—3.) With regard to the claimed angle 0 in particular, the
Examiner finds “Livesay appears to show” this angle in Figure 2. (Ans. 3.)
Appellants argue the Examiner’s finding is in error. (App. Br. 11.) In
particular, Appellants state:
Appellants disagree that the drawings of the Livesay et al.
publication “appear to show,” and in fact do not show, second
ramps of the first and second mating abutment surfaces of the
first and second half links extending at an angle 0 with respect to
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Appeal 2016-002267
Application 13/151,947
the first and second rails respectively that ranges from about 45
to about 53°, or is about 50°, as claimed. The middle segment
55 in the Livesay et al. publication corresponds to the second
ramp 66 in the present application, but the reference does not
discuss or define any angle, let alone an angle with reference to
the second ramp 66. Therefore, the angle 0 is not taught by the
applied reference.
(Id. at 11-12.)
We agree with Appellants that Livesay does not teach or suggest an
angle 0 within the range recited in independent claims 1, 12, and 19, or
having the value of “about 50°,” as recited in dependent claims 5, 7 and 13.
The Examiner also finds, however, that:
[Assuming arguendo that angle 0 is not shown [in Livesay] to
be from about 45 to about 53°, or more specifically, 50°, it would
have been obvious as a matter of routine optimization to the
ordinary skilled artisan to arrive at the claimed angle[], in order
to optimize the strength, weight, durability and performance
characteristics of the chain for a particular application at hand.
(Ans. 3.) Appellants argue this finding is in error because the Examiner has
pointed to nothing in the prior art that recognizes the recited angle is a
result-effective variable. (App. Br. 12—13 (citing MPEP § 2144.05(II)(B)
(“A particular parameter must first be recognized as a result-effective
variable, i.e., a variable which achieves a recognized result, before the
determination of the optimum or workable ranges of said variable might be
characterized as routine experimentation.”).)
Discovering the optimum value of a result effective variable is
generally considered to be within the ambit of ordinary skill. See In re
Boesch, 617 F.2d 272, 276 (CCPA 1980). Thus, “where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” See
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Appeal 2016-002267
Application 13/151,947
In reAller, 220 F.2d 454, 456 (CCPA 1955). However, this rule is limited
to cases in which the optimized variable is previously recognized to be a
“result-effective variable.” See In re Antonie, 559 F.2d 618, 620 (CCPA
1977).
We agree with Appellants that the Examiner does not identify any
evidence in Livesay or otherwise in the prior art that manipulating the
claimed variable (the angle 0) provides a recognized result. See In re
Antonie, 559 F.2d at 620 (finding no disclosure of the relationship between
the recited variable and the result in the prior art); see also In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (noting that “the
absence of any disclosure regarding the relationship between the variable
and the affected property may preclude a finding that the variable is result-
effective”). As such, there is insufficient evidence before us that the recited
variable was recognized in the prior art as a result-effective variable.
Therefore, the record does not support the Examiner’s finding that “it would
have been obvious as a matter of routine optimization to the ordinary skilled
artisan to arrive at the claimed angle[].” (Ans. 3.)
On this record, therefore, we do not sustain the Examiner’s rejection
of independent claim 1, or of independent claims 12 and 19, which are
argued on the same basis. The dependent claims stand with their respective
independent claims.
7
Appeal 2016-002267
Application 13/151,947
DECISION
For the above reasons, the Examiner’s rejection of claims 1—20 is
reversed.
REVERSED
8
