Ex Parte WARK

Patent Trial and Appeal Board

Sep 22, 2014

12243019 (P.T.A.B. Sep. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICKEY E. WARK
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Appeal 2012-000535
Application 12/243,019
Technology Center 3600
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Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1 and 4–12, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s invention “relates to the sorting of lump coal . . . and
more particularly to an assembly having a sizing grate and two or more
independently actuable cleaning combs.” Spec. ¶ 1. Claims 1, 7, and 11 are
the independent claims on appeal. Claim 1, reproduced below, is illustrative
of the claimed subject matter.
1. A self-cleaning sizing grate assembly for
sorting lump coal according to size comprising:
a fixed grate having a plurality of spaced
apart grate bars defining a sorting area having an
overall width;
a first cleaning comb displaceably mounted
proximate the fixed grate for cleaning a first
portion of the sorting area extending across a first
part of the width of the sorting area; and
a second cleaning comb displaceably
mounted adjacent the fixed grate for cleaning a
second portion of the sorting area extending across
a second part of the sorting area width;
each of said combs comprising a plurality of
bars pivotally connected together at one end such
that, when actuated for displacement, the bars
travel reciprocally from a first position through
and between bars of the fixed grate in their
respective sorting area parts, and then reverse back
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to the first position to remove jammed coal
therefrom; and
control means for selectively causing
individual reciprocal motion of the first and second
combs such that the first and second combs pass
between the grate bars at different times.
REFERENCES
The Examiner relies upon the following prior art references:
Wark ’689
Wark ’065
Sommer
US 4,966,689
US 5,310,065
US 5,738,224
Oct. 30, 1990
May 10, 1994
Apr. 14, 1998
REJECTIONS
The following rejections are before us on appeal:
I. Claims 1, 4, 6–9, 11, and 12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wark ’689 and Wark ’065.
II. Claims 5 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wark ’689, Wark ’065, and Sommer.
ANALYSIS
Rejection I
Claims 1, 6–8, and 11
The Examiner finds that Wark ’689 discloses all limitations of
independent claims 1, 7, and 11 except for “a second cleaning comb
mounted in parallel to the first cleaning comb for selectively removing coal
jammed between the bars of a second portion of a fixed grate.” Answer 5.
The Examiner finds that Wark ’065 discloses two parallel cleaning combs
and concludes that it would have been obvious to provide the device of
Wark ’689 with a second comb “to avoid a condition wherein the entire grid
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is blocked by comb fingers.” Id. at 5–6 (citing Wark ’065, Fig. 3, col. 6,
ll. 5–20). More specifically, the Examiner finds that Wark ’689 discloses a
reciprocating comb and relies on Wark ’065 for disclosing the use of
multiple combs to avoid the entire grate or grid being blocked by the comb
fingers. Id. at 7–8.
Appellant argues that “there are substantial structural differences
between the reciprocating combs 30A, 30B, 30C of the present invention
and the rotating combs of [Wark ’065],” and these rotating combs “require
the use of two shafts which extend fully across and under the grate 14
thereby decreasing the effective efficiency of the grate.” Appeal Br. 12.
This argument is not persuasive because it is not commensurate in
scope with the claims, which do not preclude comb shafts extending fully
across and under the grate. Moreover, this argument addresses Wark ’065
individually and does not address the proposed combination of Wark ’689
and Wark ’065. One cannot show nonobviousness by attacking references
individually where the rejection is based on a combination of references.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
In this case, Wark ’689 discloses self-cleaning sizing grate assembly
20 having strike grate 34 that separates smaller and larger pieces of coal.
Wark ’689, col. 2, l. 49–col. 3, l. 8. The device is provided with comb 40
which pivots or shifts between a “generally normal vertical position” where
grate 34 is open and an “inclined cleaning position” where the comb bars
pass through grate 34 to displace any coal lodged therein. Id. at col. 3,
ll. 16–28. Wark ’065 discloses a similar device having sizing grid 14 that
diverts larger pieces of coal to outlet chute 21 while allowing smaller pieces
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to pass to outlet chute 20. Wark ’065, col. 4, l. 63–col. 5, l. 9. Sizing grid
14 is provided with two clearing combs 26, 28 having spaced, parallel axes
of rotation. Id. at col. 5, ll. 31–37. To avoid the entire grid being blocked at
any given time, clearing combs 26, 28 preferably are staggered angularly
with respect to each other. Id. at col. 6, ll. 9–16.
In view of these disclosures, we agree with the Examiner that a person
having ordinary skill in the art would have recognized that using multiple
combs provides the advantage of not blocking the grate entirely and thus
would have been led to modify the device of Wark ’689 to use two
reciprocating combs instead of single comb 40. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill”).
Appellant also argues that “there is no need to duplicate parts of
Wark ’689 since a single comb 122 can already clean different areas of the
grid 118 by swinging first to the left and then to the right.” Reply Br. 2.
This argument, however, is directed to a different embodiment of Wark ’689
than that relied on by the Examiner. In the embodiment relied on by the
Examiner, shown in figures 1–9, comb 40 cleans the entire strike grate 34,
thereby completely blocking strike grate 34 during the cleaning process. As
noted above, one of ordinary skill would have recognized the benefit of
providing two combs instead of a single comb. Accordingly, Appellant’s
argument is not persuasive.
In addition, Appellant notes that “[a]t least 18 years passed between
the application for [Wark ’065] and the present application” and asserts that
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the “term ‘obvious’ in 35 USC § 103 . . . does not describe a merger of
concepts which took 18 years to occur.” Appeal Br. 11. Appellant also
argues that “Mr. Wark took 18 years to make the present invention and this
hardly meets the definition of ‘obvious.’” Id. at 12. This argument is not
persuasive. It is well established that the mere age of references is not
persuasive of the nonobviousness of the combination of their teachings,
absent evidence that, notwithstanding knowledge of these teachings, the art
tried and failed to solve the problem. In re Wright, 569 F.2d 1124, 1127
(CCPA 1977).
Further, Appellant argues that “[t]he Examiner’s analysis is the
ultimate in technical oversimplification, a luxury that comes only with the
benefit of hindsight.” Reply Br. 2. We do not agree that the Examiner’s
proposed combination involves impermissible hindsight. Appellant does not
explain how the proposed combination includes knowledge gleaned only
from Appellant’s disclosure. In short, we are not apprised how the proposed
combination fails to employ knowledge which was within the level of
ordinary skill at the time the claimed invention was made (i.e., the teachings
of Wark ’689 and Wark ’065). See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
Lastly, we are not persuaded by Appellant’s arguments that “[t]he
Examiner’s obviousness analysis effectively nullifies that portion of 35 USC
§ 101 which authorizes the grant of patent coverage to ‘improvements’ of
previously existing devices” (Appeal Br. 12), and “the claimed invention is a
new and improved self-cleaning sizing grate” that “fully satisfies the
constitutional mandate for patentable inventions found in 35 USC § 101; i.e.,
it is an ‘improvement’” (Reply Br. 2). Section 101 provides that the
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inventor of “any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” (Emphasis added.) The Examiner’s ground of rejection does not
nullify § 101’s provision for improvement patents; rather, the Examiner is
merely taking the position that the claimed invention is not entitled to a
patent due to the conditions and requirements of Title 35, § 103 in particular.
The bald assertion that the claimed invention is “new and improved” or an
“improvement” is not sufficient to overcome the Examiner’s findings and
conclusion of obviousness.
For the above reasons, we affirm the Examiner’s rejection of
independent claims 1, 7, and 11. Appellant does not present separate
arguments for dependent claims 6 and 8, which are subject to the same
ground of rejection. As such, these dependent claims fall with claims 1, 7,
and 11.
Claims 4, 9, and 12
Claims 4, 9, and 12 recite means for monitoring current level in a
crusher motor and causing comb actuation when the current reaches a
predetermined level. Regarding these claims, the Examiner finds that
Wark ’689 discloses “means [for] monitoring the electrical current level in a
motor which powers a coal crusher associated with and receiving oversize-
coal lumps from said sizing grate to effect selective actuation of said
actuators when the [crusher] motor current reaches a predetermined level.”
Answer 6 (citing Wark ’689, col. 5, ll. 1–39).
The passage of Wark ’689 cited by the Examiner, however, does not
disclose actuating the comb based on the crusher motor current level. The
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reference only states that the comb can be cycled periodically or
continuously, and periodic cycling can be achieved using “a simple on/off
time mechanism” or a “programmable controller or computer controller.”
Wark ’689, col. 5, ll. 31–39.
Because the Examiner has not shown by a preponderance of the
evidence that the prior art discloses the limitations of claims 4, 9, and 12, we
do not sustain the rejection of these claims.
Rejection II
Claim 5 recites that the control means of claim 1 “includes load cell
transducers for monitoring the load imposed by lump coal on the grate bars
and causing sequential actuation of said first and second actuators when the
load exceeds a predetermined level.” Claim 10 similarly recites that the
control means of claim 8 “includes a load cell transducer associated with
grate bars in individual areas of individual portions of said sizing area for
causing selective actuation of individual cleaning combs.”
The Examiner finds that Sommer, particularly lines 14–30 in
column 15, discloses using “a transducer to sense a change in pressure and
control the apparatus for the purpose of actuating the apparatus.” Answer 6.
The Examiner then concludes that “it would have been obvious . . . to
modify [the combination of Wark ’689 and Wark ’065], as taught by
Sommer, for the purpose of actuating the apparatus.” Id. Lines 14–30 in
column 15 of Sommer primarily discuss a “timer interrupt routine.” The
passage refers to a “pressure transducer A to D conversion” (col. 15, ll. 15–
16), but the Examiner has not explained adequately how this supports the
finding that Sommer discloses using “a transducer to sense a change in
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pressure and control the apparatus for the purpose of actuating the
apparatus.”
For this reason, we disagree with the Examiner’s finding regarding
Sommer and accordingly do not sustain the rejection of claims 5 and 10.

DECISION
We affirm the decision of the Examiner rejecting claims 1, 6–8, and
11 and reverse the decision of the Examiner rejecting claims 4, 5, 9, 10, and
12.
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-IN-PART

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