Ex Parte Lyngstad

Patent Trial and Appeal BoardDec 12, 2012

10492867 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PER LYNGSTAD ____________________ Appeal 2010-010805 Application 10/492,867 Technology Center 3600 ____________________ Before: LINDA E. HORNER, HYUN J. JUNG, and SCOTT E. KAMHOLZ, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010805 Application 10/492,867 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from the decision of the Examiner to reject claims 21-27, 36, and 40-45. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE CLAIMED SUBJECT MATTER The claimed subject matter relates to a method and device for transporting live fish and shellfish. Spec. 1:6-7. Claim 21, reproduced below, is illustrative of the claimed subject matter: 21. A technical arrangement for transporting live marine organisms in water, the technical arrangement comprising: a first transport module including a storage vessel structured to contain the live marine organisms in the water; a second transport module including life-supporting equipment arranged to keep the marine organisms alive during transport thereof; a plurality of pipe passages connecting the first transport module with the second transport module; a separate transport container structured to enclose the first transport module and the second transport module, the transport container constructed to be carried by ordinary means of surface transport; and moving means attached to the first and second transport modules such that the first and second transport modules may be moved into and out of the transport container. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Washburn Sumida US 2,652,807 US 3,390,898 Sep. 22, 1953 Jul. 2, 1968 Appeal 2010-010805 Application 10/492,867 3 Epper Sano Manome Wilkin Shagott Omizu US 3,687,111 US 4,009,792 US 5,310,427 US 5,406,740 US 5,433,763 JP A 2000-116273 Aug. 29, 1972 Mar. 1, 1977 May 10, 1994 Apr. 18, 1995 Jul. 18, 1995 Apr. 25, 2000 REJECTIONS Appellant seeks our review of the following rejections: 1. The rejection of claim 21 under 35 U.S.C. § 103(a) as being unpatentable over Omizu and Epper (Ans. 3);1 and 2. The rejection of claim 40 under 35 U.S.C. § 103(a) as being unpatentable over Omizu, Epper, Sumida, and Manome (Ans. 6).2 Although Appellant purports not to seek our review of the following rejections: 3. The rejection of claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Omizu, Epper, and Sano (Ans. 4); 4. The rejection of claim 24 under 35 U.S.C. § 103(a) as being unpatentable over Omizu, Epper, Sano, and Shagott (Ans. 5); 5. The rejection of claim 36 under 35 U.S.C. § 103(a) as being unpatentable over Omizu, Epper, Sumida, and Manome (Ans. 5); 6. The rejection of claim 42 under 35 U.S.C. § 103(a) as being unpatentable over Omizu, Epper, Sumida, Manome, and Washburn (Ans. 8); 1 Claims 22, 25, 26, and 27 were also rejected on this basis. Ans. 3. 2 Claims 41 and 43 were also rejected on this basis. Ans. 6. Appeal 2010-010805 Application 10/492,867 4 7. The rejection of claim 44 under 35 U.S.C. § 103(a) as being unpatentable over Omizu, Epper, Sumida, Manome, and Shagott (Ans. 8); and 8. The rejection of claim 45 under 35 U.S.C. § 103(a) as being unpatentable over Omizu, Epper, Sumida, Manome, and Wilkin (Ans. 9); we nevertheless interpret Appellant’s statement that claims 21-27 and 36 are “grouped together” and that claims 40-45 are “grouped together” (App. Br. 5) as a request to review the rejections of claims 22-27, 36, and 41-45 on the same arguments as presented for claims 21 and 40. ANALYSIS The Examiner found that Omizu discloses all limitations of claim 21 except “moving means attached to the first and second transport modules such that the first and second transport modules may be moved into and out of the transport container.” Ans. 3. In particular, the Examiner found that Omizu discloses a “first transport module” (being tank A10) and a “second transport module” (being element A20). Id. The Examiner further found that the recited “moving means” are wheels and that Epper discloses such wheels. Id. at 4. The Examiner concluded that it would have been obvious to modify Omizu to include Epper’s wheels to “achieve the predictable result of providing easier movement of the containers into and out of the container [as would be] readily recognized by one of ordinary skill.” Id. Appellant argues that Omizu does not disclose a “first transport module” and a “second transport module” because elements A10 (the water tank) and A20 (housing for equipment) are not “modules,” i.e., separable Appeal 2010-010805 Application 10/492,867 5 components. App. Br. 6-7. Appellant offers a dictionary definition of “module” as evidence in support of this argument. App. Br. 17. In response, the Examiner argues that the claim does not specify that the modules be “separable,” that a “module” is not necessarily a separable structure, that “many alternative dictionaries are available with variant definitions,” and that Appellant’s Specification does not provide a definition of “module” consistent with Appellant’s argument. Ans. 10. The Examiner offers no alternative dictionary definitions as evidence in support of this argument. The Examiner argues further that “to some degree everything is ‘separable,’ for instance being unbolted or having a weld reheated in order to replace a defective panel.” Ans. 10-11. In reply, Appellant notes the Examiner’s failure to cite dictionary evidence of an alternative meaning of “module” and argues that “unbolting” or “reheating a weld” is not a reasonable interpretation of “separable.” Reply Br. 2. We cannot sustain a rejection that is premised upon unsupported fact finding. Here, Appellant has offered evidence of a reasonable meaning of the claim term “module.” The Examiner has not explained why that definition is incorrect; rather the Examiner argues that other definitions exist. Yet the Examiner fails to cite any evidence of other definitions. A preponderance of the evidence of record therefore does not support the Examiner’s finding as to the proper construction of “module.” We agree with Appellant that the Examiner’s finding that “to some degree everything is ‘separable’ ” imposes an unreasonably broad interpretation on the meaning of “modular” and in effect impermissibly reads “modular” out of the claim. Appeal 2010-010805 Application 10/492,867 6 We conclude that the Examiner’s determination of obviousness is based upon an unsupported fact finding that Omizu discloses the claimed first and second transport modules, which finding is based in turn upon the error in construction of the term “module” discussed above. The Examiner’s determination cannot stand on this record. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The legal conclusion of obviousness must be supported by facts.[] Where the legal conclusion is not supported by facts it cannot stand.”) We are thus constrained to reverse the rejection of claim 21. We reverse the rejection of claim 40, and those of all other claims on appeal, for reasons similar to those given above. DECISION For the above reasons, the Examiner’s decision to reject claims 21-27, 36, and 40-45 is REVERSED. REVERSED hh