Ex Parte Hamburger et al

Patent Trial and Appeal Board

Apr 23, 2013

11691955 (P.T.A.B. Apr. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JACOB A. HAMBURGER and CODY L. SEWELL
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Appeal 2011-001615
Application 11/691,955
Technology Center 3600
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Before: JOHN C. KERINS, SCOTT A. DANIELS, and
NEIL T. POWELL, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001615
Application 11/691,955

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
16, 22, 23 and 26-32. Claims 17-21, 24 and 25 are canceled. Br. 3. We
have jurisdiction under 35 U.S.C. § 6(b).

The invention is directed to an earth digging machine, specifically an
auger for use with a trenching assembly where “[t]he auger is rotationally
driven such that a rotation rate of the auger is independent of the rotation of
the digging chain.” Spec. 1, para [0004]. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A trenching assembly comprising:
a frame comprising a plurality of ground
engaging members;
a trenching boom connected to the frame;
a digging chain rotatably connected to the
trenching boom; and
an auger rotatably supported on the frame
proximate a surface of the ground;
wherein the rotation of the auger may be
operated independent of the rotation of the digging
chain.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brown
Sing
Garden
Skomial
Lawrence
Bruce
Kaczmarski
Deken
US 3,398,471
US 3,577,664
US 3,596,994
US 3,623,246
US 3,624,935
US 4,660,306
US 5,033,214
US 5,479,728
Aug. 27, 1968
May 4, 1971
Aug. 3, 1971
Nov. 30, 1971
Dec. 7, 1971
Apr. 28, 1987
Jul. 23, 1991
Jan. 2, 1996
Appeal 2011-001615
Application 11/691,955

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REJECTIONS
The Examiner made the following rejections:1
Claims 1, 4-6, 9, 11, 12, 14, 16, 22, 23 27 and28 stand rejected under
35 U.S.C §103(a) as being unpatentable over Kaczmarski and Garden. Ans.
4.
Claims 2 and 3 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Kaczmarski and Garden and Skomial. Ans. 7.
Claim 7 stands rejected under 35 U.S.C §103(a) as being unpatentable
over Kaczmarski and Garden and Bruce. Ans. 7
Claim 8 stands rejected under 35 U.S.C §103(a) as being unpatentable
over Kaczmarski and Garden and Sing. Ans. 8.
Claims 10 and 26 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Kaczmarski and Garden and Brown. Ans. 8.
Claims 13, 15 and 30-32 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Kaczmarski and Garden and Lawrence. Ans. 9.
Claim 29 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Kaczmarski and Garden and Deken. Ans. 10.

ANALYSIS
Claims 1, 4-6, 9, 11, 12, 14, 16, 22, 23, 27 and 28 as unpatentable over
Kaczmarski and Garden.
Appellants argue claims 1, 4-6, 9, 11, 12, 14, 16, 22, 23, 27 and 28 as
a group, where claim 1 is the only independent claim. Br. 6. We initially
select claim 1 as representative of the group where 4-6, 9, 11, 12, 14, 16, 22,

1 Claims 22, 26, 27, 28 and 30 are also objected to as being substantial
duplicates of claims 16, 10, 11, 4 and 13, respectively. Final Off. Act., pgs.
2-3, Nov. 9, 2011. These objections are not before us on appeal.
Appeal 2011-001615
Application 11/691,955

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23, 27 and 28 stand or fall with claim 1. See 37 C.F.R. 41.37(c)(1)(vii)
(2011).
The Examiner found that Kaczmarski teaches a trenching assembly
including all the features of claim 1 including ground engaging members
(i.e. wheels), a trenching boom, as well as a digging chain and an auger
mutually driven by a motor. Ans. 5. The Examiner found that Kaczmarski
fails to disclose the auger operated independently from the digging chain and
turned to Garden for the teaching of an auger operated independently from
the digging chain by an additional hydraulic motor. Id. The Examiner
concluded that Kaczmarski’s auger could be rotated independent of the
digging chain as disclosed by Garden so that the auger speed could be varied
without affecting the digging chain and thus avoid soil build-up in the
trenching device. Id.
Appellants argue that none of the references disclose an independently
operated auger “located proximate the digging chain.” Br. 4. Appellants
contend that the function and purpose of Garden’s auger is entirely different
from the presently claimed invention in that Garden’s auger is not positioned
with the digging chain immediately adjacent the trench and because “the
Garden augers and motor are used to separate soil in the hopper, not clear
soil from the trench.” Br. 6. Id.
Appellants specifically contend that the combination “is not a
predictable use of the Garden elements according to their established
functions - the Garden augers and motor are used to separate soil in the
hopper, not clear soil from the trench.” Br. 6. The Examiner’s position is
that Garden’s auger do assist in clearing soil from the trench, the auger is
just located in a different position. Ans. 12. We agree with the Examiner.
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Application 11/691,955

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Garden’s augers 36-38 do not so much as separate the soil, as move the soil
excavated by the diggers 67 to the chutes, which is in a direction away from
the trench. Garden explains that “[d]ual split type augers, 36 forwardly and
38 rearwardly, force feed sifted soil to a pair of front delivery chutes 40 and
back chutes 42.” Garden col. 1, ll. 71-73. Like Kaczmarski, from a
functional standpoint Garden’s auger(s) 36, 38 move soil from the digging
chain or buckets away from the trench. Garden’s augers direct soil from the
trench deposited by the buckets in the hopper into the chutes 40 and out the
sides of the hopper. See Garden col. 1, ll. 71-73 and fig. 2.
Appellants also assert that the functionality of the auger in Garden is
so disparate from the Kaczmarski auger and the claimed auger that the
Examiner’s obviousness rejection is akin to finding obviousness based on
the independent operation of vehicle wheels by the vehicle engine. Br. 6.
This was not, however, the Examiner’s finding, and in any event such
argument does not address the Examiner’s underlying factual finding as
discussed supra. The Examiner provided a reasoning with rational
underpinnings that it would have been obvious to modify Kaczmarski such
that the digging chain and auger operate independently as taught by Garden
so as to allow the auger to speed up if the soil were provided too fast by the
digging chain or buckets. Ans. 5, 12. Appellants have not apprised us of
error in the Examiner’s position. Accordingly, we sustain the Examiner’s
rejection of claim 1 and claims 4-6, 9, 11, 12, 14, 16, 22, 23, 27 and 28 fall
with claim 1.

Appeal 2011-001615
Application 11/691,955

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Claims 2, 3, 7, 8, 10, 13, 15, 26, 29 and 30-32 as unpatentable over
Kaczmarski, Garden, Skomial, Bruce, Sing, Brown, Lawrence and Deken.

Claims 2, 3, 7, 8, 10, 13, 15, 26, 29 and 30-32 are each dependent
either directly or indirectly on claim 1. Clms. Appx. Appellants argue that
each of Skomial, Bruce, Sing, Brown, Lawrence and Deken do not provide
disclosures that cure the deficiencies of Kaczmarski and Garden for claim 1,
and that claims 2, 3, 7, 8, 10, 13, 15, 26, 29 and 30-32 are allowable due to
their dependency from claim 1. Br. 6-11. As we sustain the rejection of
claim 1, these arguments are not persuasive. We thus also sustain the
rejection of claims 2, 3, 7, 8, 10, 13, 15, 26, 29 and 30-32.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-16, 22-
23 and 26-32 are affirmed.
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) (2009).

AFFIRMED

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