Ex Parte Mason

Patent Trial and Appeal BoardMar 11, 2015

11977985 (P.T.A.B. Mar. 11, 2015)

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. 11/977,985 10/26/2007 Todd Alan Mason 965-1-8-1 4314 23898 7590 03/11/2015 VINCENT L. CARNEY LAW OFFICE P.O. BOX 80836 LINCOLN, NE 68501-0836 EXAMINER SELF, SHELLEY M ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 03/11/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TODD ALAN MASON ____________ Appeal 2012-007948 Application 11/977,985 1 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Todd Alan Mason (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 4, 5, 18, and 42–45. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellant identifies the inventor, Todd Alan Mason, as the real party in interest. Appeal Br. 2. Appeal 2012-007948 Application 11/977,985 2 Claimed Subject Matter Claim 18, the sole independent claim on appeal, is representative of the claimed subject matter and is reproduced below. 18. A method of chipping feedstock comprising the steps of: moving a crane to a location at which the crane is separated from a tree by an obstacle; lifting a feedstock chipper and a tree trimmer with the crane over the obstacle to a location adjacent to the tree; cutting a portion of the tree from the tree, wherein the portion cut from the tree is the feedstock to be chipped by the feedstock chipper; inserting the feedstock into a feedstock opening in the feedstock chipper; and chipping the feedstock by rotating a chipping drum within the feedstock chipper, wherein said chipping drum includes a plurality of spaced-apart teeth. Appeal Br. 11, Claims App. References The Examiner relies upon the following prior art references: McColl US 3,704,733 Dec. 5, 1972 Propst US 4,354,539 Oct. 19, 1982 Rejections Appellant seeks review of the following rejections: I. Claims 4, 18, and 42–44 are rejected under 35 U.S.C. § 102(b) as anticipated by McColl; II. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over McColl; and III. Claim 45 is rejected under 35 U.S.C. § 103(a) as unpatentable over McColl and Propst. Appeal 2012-007948 Application 11/977,985 3 SUMMARY OF DECISION We AFFIRM. OPINION Rejection I The Examiner finds that McColl discloses each and every step of claims 4, 18, and 42–44. Ans. 4–5. Appellant asserts that “a complete argument only requires a listing of the undisclosed feature of each claim to constitute a complete prima facie case that the Examiner has the burden of disproving.” Br. 6. Appellant proceeds to include separate headings for each of claims 18, 4, 42, 43, and 44, but Appellant’s contentions with respect to each of these claims amount to no more than a mere recitation of the claim language and a naked assertion that the elements are not disclosed by McColl. Id. at 6–8. Appellant does not cite any case or rule supporting his opinion that a mere listing of an undisclosed feature of a claim is sufficient to raise an argument explaining sufficiently why a reference fails to disclose a specific claim element or why such a naked assertion that one or more elements are not disclosed by a reference is sufficient to constitute arguing the claims separately, and we are aware of none. In the context of claim 18, Appellant’s argument that McColl does not teach three steps of the claim does not explain what aspect of the Examiner’s rejection is erroneous such that we may perform our reviewing function. Id. at 6–7. In the context of claims 4 and 42–44, Appellant’s assertions, although placed under separate headings, do not rise to the level of arguing the patentability of those claims separately. 37 C.F.R. § 41.37(c)(1)(vii); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“the Board reasonably interpreted Rule 41.37 to require Appeal 2012-007948 Application 11/977,985 4 more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Accordingly, we sustain Rejection I. Rejection II The Examiner concludes that McColl would have rendered the subject matter of claim 5 obvious to one of ordinary skill in the art at the time of the invention. Ans. 5. Appellant asserts that because claim 5 depends from claim 18, claim 5 is patentable because claim 18 is patentable. Br. 9. Appellant also contends that McColl “is directed to a debrancher. A debrancher is not a tree trimmer. A debrancher removes excess branches where the tree trimmer removes whatever is unnecessary.” Id. First, as discussed above in the context of Rejection I, Appellant has not explained sufficiently why the rejection of claim 18 is erroneous. Thus, claim 5’s dependency from claim 18 is not persuasive of claim 5’s patentability. Second, McColl is directed to a “rotary debarker-debrancher.” McColl, Abstract. Thus, McColl is not limited to a debrancher. Accordingly, we sustain Rejection II. Rejection III The Examiner concludes that the combination of McColl and Propst would have rendered the subject matter of claim 45 obvious to one of ordinary skill in the art at the time of the invention. Ans. 6. The Examiner finds that McColl does not disclose a lifting basket, whereas Propst teaches “dropping chips into a container/basket and removing the container/basket.” Id. The Examiner concludes that it would have been obvious to “add the Appeal 2012-007948 Application 11/977,985 5 step of placing chips into a basket and removing the basket so as to efficiently container and remove chips as taught by Propst.” Id. Appellant asserts that Propst only teaches removal of waste material in containers such as by a railroad car and would not make it obvious to “use the basket of McColl to remove the tree trimmed materials.” Br. 10. The Examiner does not rely upon McColl as disclosing a basket. Rather, the Examiner finds that Propst’s disclosure of using a rail system to transport cut trees employs a basket/container and that it would have been obvious to add the basket step of claim 45 to McColl. Appellant also contends that McColl and Propst teach away from the invention “by harvesting whole trees rather than by lifting a chipper and a tree trimmer over an obstacle into the tree to chip portions of the tree.” Id. Appellant’s argument fails to explain why harvesting whole trees would lead one of ordinary skill in the art away from or discourage one of ordinary skill in the art from lifting a chipper and tree trimmer to chip portions of a tree. Just because two disclosures have some differences does not mean that they necessarily teach away from one another. Accordingly, we sustain Rejection III. DECISION We AFFIRM the Examiner’s decision rejecting claims 4, 5, 18, and 42–45. 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)(1)(iv). AFFIRMED mls