Ex Parte Asano et al

Patent Trial and Appeal Board

Feb 26, 2013

11151381 (P.T.A.B. Feb. 26, 2013)

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.
11/151,381 06/13/2005 Yasuhiro Asano 05371/LH 5528
1933 7590 02/27/2013
HOLTZ, HOLTZ, GOODMAN & CHICK PC
220 Fifth Avenue
16TH Floor
NEW YORK, NY 10001-7708
EXAMINER
EPPS, TODD MICHAEL
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
02/27/2013 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 YASUHIRO ASANO, NAOHISA IWASAWA, and
YUJI TERASAKA
____________

Appeal 2010-007129
Application 11/151,381
Technology Center 3600
____________

Before STEFAN STAICOVICI, BRETT C. MARTIN, and
HYUN J. JUNG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007129
Application 11/151,381

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STATEMENT OF THE CASE
Yasuhiro Asano et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting claims 2 and 4-6 under 35 U.S.C.
§ 103(a) as unpatentable over Appellants’ Admitted Prior Art (hereafter
“AAPA”) (Figure 9 of Appellants’ Drawings and Spec. 1, 12, and 13),
Muller (US 4,304,077, iss. Dec. 8, 1981), and Takahashi (US 6,250,681 B1,
iss. Jun. 26, 2001). Claims 1 and 3 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a support structure 7 for hydraulic
piping components 61, 62, 63, and 64 including a piping support 71, a
piping attachment 72, a power wire attachment 73, and a metal fitting 74 for
fixing piping components 61 and 62. Spec. 8, ll. 21-25 and fig. 3.
Claim 2, the sole independent claim, is representative of the claimed
invention and reads as follows:
2. A construction machine equipped with a working
structure, a component being attached on the working structure
via a component support device,
wherein the component support device is formed by
bending a plate along at least two bending lines which extend
along a bending line direction, and the component support
device comprises:
a support formed at a center portion of the component
support device, between the two bending lines, for supporting
the component; and
a pair of attachment legs formed on respective sides of
the support to be fixed on the working structure at an
installation portion of the working structure;
wherein at least one of the pair of the attachment legs is
inclined relative to the support at an oblique angle, and at least
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Application 11/151,381

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one of the pair of the attachment legs is split into a plurality of
portions at a portion of the attachment leg to be fixed on the
working structure;
wherein the plurality of portions of said at least one of
the pair of attachment legs are fixed on the working structure so
that the bending line direction is orthogonal to a force acting
direction of a force acting against the working structure;
wherein the pair of attachment legs are welded to the
working structure at the installation portion; and
wherein a rigidity of said at least one of the pair of
attachment legs, which is split into the plurality of portions,
against the bending line direction is less than a rigidity of the
support against the bending line direction so that when the
installation portion of the working structure is deformed said at
least one of the pair of attachment legs is deformed along with
the installation portion.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
The Examiner found that AAPA discloses all the limitations of
independent claim 2, with the exception that at least one of the pair of the
attachment legs (1) “is inclined relative to the support at an oblique angle”
and (2) “is split into a plurality of portions at a portion to be fixed on the
working structure.” Ans. 4-5. The Examiner further found that: (1) Muller
discloses a support bracket 72 with attachment legs 73 that are inclined
relative to the support at an oblique angle and Takahashi discloses a support
with a pair of attachment legs 12 split into a plurality of portions. Id.; see
also Muller, figs. 8 and 9 and Takahashi, fig. 6(B). The Examiner
concluded that it would have been obvious for a person of ordinary skill in
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Application 11/151,381

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the art to modify the support of AAPA to include the inclined attachment
legs of Muller in order to “provide a means for attaching the support” and
furthermore, because “it is considered a functional equivalent whether the
attachment legs are inclined at an oblique angle or perpendicular relative to
the pipe support as long as the pipe support is able to support the pipes when
attached to a flat surface.” Ans. 4.
Appellants argue that the Examiner’s reasoning to modify the support
of AAPA to include the inclined attachment legs of Muller, namely, “to
provide a means for attaching the support,” lacks rational underpinning
because AAPA “already provides a ‘means for attaching the support.’” App.
Br. 13; see also Reply Br. 4. Furthermore, according to Appellants, the
perpendicular attachment legs of AAPA are not a functional equivalent of
the claimed inclined attachment legs because perpendicular attachment legs
provide for greater rigidity and stress concentration as compared to the
inclined attachment legs of independent claim 2. App. Br. 14-17.
We agree with Appellants that the reason proffered by the Examiner
to modify the teachings of AAPA, i.e., “to provide a means for attaching the
support,” is already adequately performed by the perpendicular legs of
AAPA’s support. Specifically, AAPA discloses the use of perpendicular
legs 912 for attaching piping support 91 to installation portion 7A by fillet
welds 93. Spec. 13, ll. 3-10 and fig. 9. Besides Appellants’ disclosure, the
Examiner has not set forth any findings that AAPA recognized a problem
with the attachment of piping support 91. Hence, without a persuasive
articulated rationale based on rational underpinnings for modifying the
reference as proposed, the Examiner’s rejection appears to be the result of
hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
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Application 11/151,381

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Furthermore, although we appreciate the Examiner’s position that at first
glance perpendicular legs 912 of AAPA’s attachment 91 and Muller’s
inclined legs 73 of support 72 are functionally equivalent because both are
used for attaching a piping support, nonetheless, we determine that
Appellants have provided a persuasive reason why they are not.
First, like Appellants, we note that in contrast to perpendicular legs
912 of AAPA’s support 91, which are welded to installation portion 7A of
boom 41, mounting bar 73 of Muller’s support 72 is not welded to boom 22.
Compare Figure 9 of Appellants’ Drawings and Figures 8 and 9 of Muller;
see also App. Br. 12 and Reply Br. 3. Second, we agree with Appellants
that the flexural rigidity of the attachment with perpendicular legs shown on
page 16 of the Appeal Brief is greater than that of the attachment with
inclined legs. We thus agree with Appellants that because the flexural
rigidity is greater for the attachment with perpendicular legs, the resulting
stress concentration distribution is different from that of the attachment with
inclined legs. App. Br. 17; see also Figures 10B and 10C of Appellants’
Drawings. Therefore, we conclude that in a first instance Appellants’
arguments have rebutted the Examiner’s finding that perpendicular legs 912
of AAPA’s attachment 91 and Muller’s inclined legs 73 of support 72 are
functionally equivalent. After Appellants have produced evidence rebutting
the prima facie case, the burden shifted back to the Examiner to further
support the rejection. However, the Examiner has not come forth with any
findings to shift the burden back to Appellants to show that the
perpendicular legs of AAPA’s attaching support 91 and the inclined legs of
Muller’s support 72 are functionally equivalent. See Ans. 5-6; see also
Reply Br. 5.
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Application 11/151,381

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Lastly, we note that the Examiner used the teachings ofTakahashi to
show a support with a pair of attachment legs 12 split into a plurality of
portions. See Ans. 5. As such, the addition of Takahashi does not remedy
the deficiencies of AAPA and Muller as described supra.
Therefore, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 2 and 4-6 as unpatentable over AAPA,
Muller, and Takahashi.

SUMMARY
The decision of the Examiner to reject claims 2 and 4-6 is reversed.

REVERSED

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