Obviousness:
Amendments that presented the safety improvements by defining the braking, counterweight and mobility
features of the roof top hoist overcame the citations. Rejection withdrawn.
This decision deals with the Applicant's request that the
Commissioner of Patents review the Examiner's Final Action on
application 452,580 (Class 254-68), filed April 24, 1984,
entitled PORTABLE HOIST. The inventor is Frank Van Oirschot, Jr.
The Examiner in charge issued a Final Action on February 8, 1989
refusing to allow the application to proceed to patent. In the
response dated August 8, 1989, a set of ten amended claims was
presented.
In reviewing the application, the Patent Appeal Board held a
Hearing on March 14, 1990, at which the inventor attended and was
represented by Mr. T.S. Johnson, the Patent Agent. Mr. Johnson
opened the hearing by presenting an amended claim 1 to replace
claim 1 of the set of ten amended claims, and at the conclusion
he made an additional amendment to that claim. By letter dated
March 19, 1990, claim 1 with the additional amendment, and other
minor amendments to the application, were submitted.
The invention sets out a portable knock-down hoist provided with
a counter-weight receiving means accommodating a predetermined
number of counter-weight units to eliminate the need for an
operator to act as the counterbalancing means when a load is
being raised. With reference to Figures 2 to 4 reproduced below,
the boom is shown as including several interconnected parts, with
a forward wheeled support 32 with brake means 57, and a rearward
steerable wheeled support 31. The hoisting mechanism 9 is placed
at one end of the boom and is operated by a winch 11. The
counter-weight container 23 designed with supports 29 to take the
counter-weight units 25, is mounted at the other end of the boom.
(See formula 1)
In the Final Action taken February 8,1989 the examiner refused
all of the claims in light of the following art, that includes
three additional references as well as those applied in a
previous Final Action:
United States Patents
2,388,692 Nov. 13, 1945 House
3,801,069 Apr. 02, 1974 McCarstle
4,004,778 Jan. 25, 1977 Steinhagen
4,042,115 Aug. 16, 1977 Beduhn et al
4,053,060 Oct. 11, 1977 Wilson
Additional References
United States Patents
2,569,821 Oct. 02, 1951 Maxeiner
3,375,048 Mar. 26, 1968 Korensky et al
Book
Shapiro, H.I., "Cranes et Derricks", McGraw-Hill, 1980, 373-377,
383-384
The House patent relates to a lifting truck having a pulling
handle 20 attached to a steering wheel 12, the handle carrying a
roller 30 that actuates a brake 38 when the handle is fully
upright, as shown in Figure 2 below:
(See formula 1)
A portable knock down hoist is described in the McCarstle patent,
shown in Figure 1 below, that provides a lift means 35 at one end
of boom 10, a skid 15 at the other end and a seat 13 for an
operator above the skid, and a wheeled support 61 2 attached near
the front end:
(See formula 1)
The Steinhagen patent presents a portable roof winch in its
Figure 1 below, having at one end of boom 39 a lift means 51 and
at the other end a seat 56, the boom being mounted on a skid
support 13:
(See formula 2)
The Figure 1 depiction in the Beduhn et al patent is of a rotary
crane having lift means 26 and counterbalancing weights 23, shown
below:
(See formula 1)
The Wilson patent describes a rotary crane with lift means 44 and
counterweights 16 shown by Figure 1 below:
(See formula 2)
The Maxeiner patent illustrates a collapsible roof crane having a
boom 2 with a lift means at one end and a counterweight support 6
at the other, and a stationary support 3, as in Figure 1 below:
(See formula 1)
A truck mounted rotary crane is shown in Figure 1 below of the
Korensky et al patent, having a counterbalancing means 21.
(See formula 2)
The relevancy of the book Cranes and Derricks, and the above art,
is discussed in the Examiner's Final Action, in which he said, in
part, as follows:
Claim 1 is rejected because the subject matter thereof
lacks inventive ingenuity in view of the above cited
patents. The remaining claims defining minor
variations of the hoist recited in claim 1 are also
rejected. The McCarstle patent, for example, describes
a hoist capable of being rapidly dis-assembled into
components, each of which can be readily carried by a
man. The hoist includes a boom section, a leg-socket
device for supporting the boom section, a winch and an
operator's seat. When heavier loads are being carried,
a two-man operation is used. As an alternative to a
two-man operation, counterbalancing, in the form of any
convenient dense objects can be supplied. The Beduhn
et al patent discloses items of counterweights which
are stacked on a support, while the Wilson patent
describes counterweights which may take the form of
sections that may be stacked until the desired weight
is reached. The use of bail brackets is shown in the
House patent.
...
The Applicant's arguments advanced in his letter of
April 28, 1987 are not convincing. Applicant's
following statements are not well founded: "the only
two references cited by the Examiner relating to
portable hoists are United States Patents 4,004,778 and
3,801,069. Neither of the structures in these patents
include mechanical counterweighting means. All of the
other references cited by the examiner describe heavy
duty motorized cranes and hoists. These structures
clearly are not portable to the extent claimed by the
applicant".
First, United States Patents 3,801,069 points out
unequivocally the use of counterbalancing in the form
of any convenient dense objects. Second, the same
Patent states, quote "A light weight apparatus", "for
lifting various loads of moderate to intermediate
weight, typically from about 100 to 500 pounds".
In the "Detailed Description", of the same patent it is
said, quote "[Reference is made to Fig. 1, showing a
side or elevation of the apparatus assembled for
providing a mechanical advantage of, roughly, four to
one, and providing a moderate over-reach. By
"mechanical advantage", as used herein to describe the
function of the various configurations of which the
apparatus is capable, is meant the approximate distance
ratio of the horizontal distance from the operator to
the line of contact of the wheels with the supporting
surface, to the distance from said line to the load
point. By "over-reach" as used herein, is meant the
distance the load point is beyond the wheel contact
line.]", and "the counterweight for the object being
lifted is provided by the operator himself, if
desired". The fact that in this patent the wording "if
desired" is used, clearly shows the possibility of
another option which is expressed by the wording
"counterbalancing in the form of any convenient dense
objects". Summarizing this patent, one can say that
the use of the operator as counterweight "if desired",
is an option in light weight devices, where the loads
are from about 100 to 500 pounds and the mechanical
advantage is of, approximately, four to one, the other
option being always "any convenient dense objects".
In order to corroborate the fact that any material can
be used as counterweight, use is made of United States
Patent 2,569,821 which describes a collapsible or
knock-down portable crane having a trough to receive
heavy work materials. In this patent it is said, quote
"any of the various materials used on the job, such as
roofing paper, bags of cement, or any other relatively
heavy work materials may be deposited on the lower most
end of the jib member to add sufficient weight to
anchor the jib member to the supporting wall or roof".
The use of counterbalancing the load by the weight of
the operator is intended for "loads such as those
ranging in the order of 100 to 300 pounds", as it is
shown in the United States Patent 4,004,778.
The fact that the use of counterweights is common in
hoisting machines is confirmed by United States Patent
3,375,048, as well, which says, quote
"This invention relates generally to new and
useful improvements in cranes, shovels,
trench hoes, and the like and more
particularly to removable counterweights for
such machines.
...
This is usually accomplished by supplying a
counterweight which is attached to the
machine at the end opposite that to which the
load is to be applied so that the forces
created by the load will be substantially
counterbalanced by the additional weight of
the counterweight".
Applicant's statement that "its mechanical
counterweight is broken down into individual weight
members, each of which is light enough to be carried up
the side of the building with the rest of the hoist
components. Clearly none of the mechanical
counterweights used in the very substantial hoist
assemblies, as for instance shown and described in
United States Patent 4,053,060 for a crane, could be
manually carried and therefore do not fall within the
class of counterweights as claimed by the applicant",
is not well founded.
United States Patent 4,053,060 was cited to show,
irrespective of the size of the crane, the concept of
counterweights which may take the form of flat sections
that may be stacked atop one another until the desired
weight is reached. United States Patent 2,569,821 uses
several weights to achieve an appropriate
counterbalancing in operation, as the applicant does.
For example Fig. 1 illustrates the use of several rolls
of roofing felt or paper and upon which a bag of sand,
gravel or cement may be superimposed, while Fig. 5
shows the use of fewer rolls of paper in addition to
the bag of material in place. What counts for
counterbalancing is the total weight, not the materials
used to form it. In some hoists metal items are used
for counterweight, in others-concrete items, etc.
Applicant's following remarks are equally unacceptable:
"In applicant's earlier response it was clearly brought
to the examiner's attention that the structure of
United States Patent 3,801,069 (which is very similar
to United States Patent 4,004,778) is no longer
commercially available because of safety related
problems with an actual operator death being caused
using that operator as a counterbalance. However, even
in view of these problems, and the high demand for such
portable hoists, there have been no steps other than
those taken by applicant to rectify the problem". The
Affidavit, signed by the inventor, wherein it is
stated, quote "That I am aware that there have been
operator accidents, including the death of an operator
sitting in a counterbalancing position using the
Portable Hoist, as described in United States Patent
3,801,069." and "That, I am further aware that because
of the liability problems arising from operator
accidents the Portable Hoist as described in United
States Patent 3,801,069 is no longer in use or
available for sale." and finally "That, I believe my
concept of using mechanical counterweights is a
substantial advance over all earlier structures in the
portable hoist field", is intended to further support
the previous allegations about safety related problems
and an operator's death.
With respect to those allegations one could have
serious reservations based on the following postulate:
A patent for a device, which is almost always a
description without dimensions, weights, materials
etc., and a real embodiment, having specific
characteristics, constitute two different things. This
postulate is even more applicable in the case of United
States Patent 3,801,069 wherein it is said, quote
"various sized embodiments are readily provided for
different classes of service", and "The variable
lengths of the boom and legs, and the variable
positions possible of the leg-locket device make it
possible to assemble the apparatus in a large number of
configurations providing lifting ability ranging from a
low mechanical advantage up to ..". As can be seen,
to point out that a specific hoisting device involved
in a fatal accident corresponds to a patent appears
unconvincing. Furthermore, in the book "Cranes and
Derricks" it is stated, quote "Proper programs run by
knowledgeable and alert people will reduce the
incidence of accidents and near accidents", and
"operator training in Ontario has led to a 60%
reduction in injuries to hoisting engineers and crane
operators, although fatalities do not seem to have been
affected" (page 373); "reported data derived from
investigation of 474 accidents ", "In total number
of incidents, injuries and fatalities, overturning
accidents are by far the most serious" (page 374).
As shown in Table 8-1 for mobile-cranes, the
overturnings (not including wind) represent 48.8%,
while structural damage and human error-13.6%; boom
over cab-13.6%; rope failure-12.5%; wind-6.3%;
structure damage and machine defect-4.5% and
miscellaneous-0.6%. In Table 8-2 it shows that among
mobile-crane overturning accidents, overloading is the
predominant cause. In the chapter "Preventing
overloads" on page 383-384 it is stated, quote "A word
of caution is needed here. A weight chalked or painted
on a load or even entered on shipping documents cannot
be trusted and in an alarming number of instances will
be found to have grossly understated the actual weight.
This practice is apparently an attempt to reduce
shipping charges by fooling the transportation firm,
but all too often jobsite personnel are the parties
fooled, and many accidents have been traced to this
cause. As part of the preplanning process, the
procedures to be used to control load weights should be
established. If manufactured items are to be lifted,
weights can be secured in advance from the producer and
made available to the job site. One person in the
crane-operation crew should be assigned the task of
load determination. This person must be competent in
arithmetic, be comfortable with weights and
measures... Before each lift the load controller should
determine load weight, including the weight of lifting
accessories and the block; the operator can then be
informed either verbally or by means placed on the
load".
...
The stability of a crane is obtained by an appropriate
chosen weight. United States Patent 3,801,069/1974
provides the option between weight or the operator's
weight, while United States Patent 2,569,821/1951
anticipates the use of weights alone. For this reason,
applicant's concept of weights along does not do
anything patentable to the existing knowledge in the
art.
In the most up-to-date cranes overturning accidents
happen, even if the use of load indicators for overload
prevention is mandatory. But, as it is said in the
cited book, on page 383, "Most indicators are sensitive
electronic or mechanical instruments; they suffer
breakdowns and may loose calibration as well". For
this reason checked loads and appropriate
counterbalancing are important, not the type of used
weights.
The use of wheels and brakes for a mobile hoisting
device does not provide any inventive significance,
since the use of braked wheels is well known in
luggage, carriages, scaffold structures etc.
In response to the Final Action the Applicant submitted a set of
amended claims, and argued for their allowability in the
following terms, in part:
Rather than repeating earlier presented arguments,
Applicant would draw upon the response of November 27,
1987 as continuing to distinguish over the prior art
references and in particular United States Patent
3,801,069. In the Examiner's most recent final action,
he stresses the weight capacities as handled by the
portable hoist in this patent. However, Applicant
never contested this feature and admits that to this
extent, both structures are very similar. However,
with respect to the use of mechanical counterweighting
means, it is Applicant's submission that the prior art
reference does not really appreciate how "any
convenient dense objects" could be used as a
counterbalancing means since these would be temporarily
wired or lashed to the lower end of the boom assembly
and therefore, would not allow the structure to be
moved from place to place. In contrast, Applicant has
specifically claimed the fact that the counterweighting
members are movable with Applicant's structure and
further, that the rear set of wheels includes steering
means for steering the hoist while moving it with the
counterweighting members supported in position in the
hoist.
As already brought to the Examiner's attention,
Applicant is aware of and has actually seen the
physical construction of the hoist described in United
States Patent 3,801,069. This structure is clearly
intended to use the operator as a mechanical
counterweight. There is nothing on the structure which
would accommodate the fitting of a mechanical
counterweighting means and if one were to operate the
structure using mechanical counterweighting means, one
would have to find some type of lashing means and some
type of counterweighting means that are not provided
with the structure. Even if such lashing means and
counterweighting means were available for use, they
would be awkward to stabilize and further would make
the structure difficult if not impossible to move from
place to place. In Applicant's submission, it clearly
is not the intent for this structure to be fitted with
a mechanical counterweighting means to be dragged along
the ground with movement of the structure.
Furthermore, the operator's seat is always there and is
particularly enticing for the much simpler operator
counterbalancing to be used resulting in potentially
dangerous situations to the operator.
United States Patent 2,569,821 describes a roof crane
clearly not capable of any movement whatsoever,
particularly when the counterbalancing means are fitted
in position within the trough at the back of the crane.
Furthermore, this patent once again relies upon the
possibility of different types of objects being
available on the job site and those objects having
enough weight to provide a counterbalance.
Applicant does not feel United States Patent 3,375,048
is appropriate since it describes a heavy industrial
crane with mechanical counterweighting means which
would be much too heavy to be physically handled by the
operator of the crane.
The Examiner refers to the "Cranes and Derricks" book
as describing ways of reducing the risk of injury to
crane operators. However, Applicant does not believe
that this book is particularly pertinent to the type of
portable crane as covered with the present invention,
particularly when looking at the main prior art
reference which, as noted above, describes a structure
which actually promotes use of a portable crane which
is dangerous to the operator. As sworn to in
Applicant's Affidavit, the McCarstle structure has
actually been banned from use because of the deaths
associated with it regardless of what is taught in the
Cranes and Derricks reference.
The issue before the Board is whether or not the amended claims
define patentable subject matter in view of the cited art.
Claim 1 with the additional amendment made by Mr. Johnson at the
conclusion of the Hearing, and submitted March 19, 1990, reads:
A portable knockdown, manually controlled hoist formed
from a plurality of components which can be
disassembled for physically carrying the components
individually to the top of a structure such as a
building and the like where said hoist is readily
assembled for hoisting articles up the side of the
structure, said hoist comprising a boom, support means
for supporting said boom at an angle such that one end
is elevated relative to the other end thereof, forward
and rearward wheels on said support means for rolling
said hoist when assembled to different locations, brake
means movable between a brake and a release position
and when in the brake position locking said hoist
against forward movement while allowing rearward
pulling of said hoist, lifting means at the one
elevated end of said boom and counterweight receiving
means for receiving mechanical counterweighting means
in a secured position at the other end of the boom,
said counterweighting means comprising a plurality of
counterweighting members supported on and movable with
said hoist and said counterweight receiving means
independently of one another, each individual
counterweighting member being manually carriable with
the weight of said counterweighting means increasing
according to the number of counterweighting means added
to said counterweight receiving means, said hoist
including a steering control at said rearward wheels
for directing movement of said hoist with said
counterweighting members fitted in said
counterweighting receiving means.
The above final form of claim 1 was reached after discussion of
the amended claim Mr. Johnson presented at the opening of the
Hearing. In explaining the additional definition for the brake
means, Mr. Johnson had referred to the description on page 8 of
the application. It was pointed out by the examining staff
however, that the movement of the brake means between a braking
and a release position had not been clearly defined. Mr. Johnson
consulted with Mr. Oirschot Jr., then agreed to insert further
clarification to reflect this feature, as is found in the above
final form.
Mr. Johnson discussed the various shortcomings of the cited art,
noting the House patent disclosed an aircraft lifting device that
had no counter weight features. He pointed out the patents to
Beduhn et al, to Wilson, and to Korensky et al, were in the heavy
counterweighted crane art and were not of the knock down type for
roof top service.
The McCarstle patent and the Steinhagen patent, Mr. Johnson
contended, were not valid citations for they relied on the weight
of an operator to counterbalance a load during lifting, a feature
that had contributed to operator fatalities. Mr. Johnson drew
attention to the affidavit setting out that an operator death had
occurred as a result of the operator sitting in counterbalancing
position while using the McCarstle device. It was pointed out
that a load shift during operation caused the McCarstle device to
act as a catapult, hurling the operator to death. The Oirschot
invention of the application provides no seat, and therefore no
enticement to an operator to sit on the device as a
counterbalance, Mr. Johnson stressed. Further, he noted the
McCarstle patent provided a means against forward motion only by
removing the retaining pin in the leg and wheel unit and
repositioning the unit by 90 degrees, whereas the Oirschot wheel
could be braked against forward motion without reassembly, and
moreover would permit the device to be drawn backward with the
brake applied.
Mr. Johnson viewed the Maxeiner patent as no more relevant than
the preceding two patents, in that it had no fore or aft wheeled
features and lacked maneuverability. Mr. Oirschot Jr., explained
that his wheeled device had been designed so that, in moving a
fully lifted load from an overhang position onto the roof for
unloading, the device could be pulled inwardly from the edge
enabling persons to stand on the roof while unloading. Mr.
Oirschot stressed this as yet another safety feature of his
device.
The examiner explained the contentions he made in the Final
Action, that counterweighted devices are well known as shown by
the cited art, particularly the patents to McCarstle, Steinhagen,
and Maxeiner which pointed to the use of any convenient weights.
He referred to the information in the reference book dealing with
proper marking of weights, and accidents caused by improper use
of weights, as well as of the lifting devices.
Mr. Johnson drew attention to the brochure he submitted at the
Hearing that explains the hoisting device, XTRAMAN HOIST, which
Mr. Johnson noted bears the McCarstle U.S. Patent No. 3,801,069.
He referred particularly to a page from the brochure headed
"Assembles Quickly-No tools required!". On that page under
"Instructions for Usage", item 3, he called attention to the
capitalized instruction, "NEVER ADD ADDITIONAL COUNTERWEIGHT".
In his view, this statement emphasizes the difference between the
operation of the McCarstle patent that relies on the weight of
the operator on the device, and that of the Oirschot device that
does not require the operator to sit on it. Mr. Johnson says
this difference clearly removes the patent as a proper citation,
and establishes the patentable advance in the Applicant's device.
In looking at the photo in the brochure showing the operator
engaged in lifting the load, the full realization of the
vulnerability of the operator to unexpected shifting of the load,
and the advantages provided by the features of the Applicant's
device, are evident to the Board. It may or may not be, that the
components of the inventor's lift are known separately, such as,
individual weights, and bail brake means. In this regard, the
Board notes that not all the components are evident in the
references cited. The Board observes, however, more
significantly, that none of the cited roof top lift devices
identify an awareness of the problems that are overcome by the
inventor's combination. The passages from the reference book
present safety information, but do not touch on the specific
arrangement described in the application that achieves a safer
structure. On this point, Mr. Oirschot indicated that sales of
his device have been made to persons desirous of improving
safety. It may be that a patented device will be shown in
operation to suffer certain deficiencies, but that is not to say
a patent should necessarily be denied where there is a
demonstration of acceptance in the art by persons wishing to
obtain safety benefits, such as shown by the device in the
application before the Board.
In summary, the Board is satisfied the inventor's device, as
defined by the amended claim 1 submitted following the conclusion
of the Hearing, presents a patentable advance in the art.
The Board recommends withdrawal of the refusal of the claims for
failing to define inventive ingenuity in view of the cited art.
M.G. Brown
Acting Chairman
Patent Appeal Board
I concur with the findings and the recommendation of the Patent
Appeal Board. Accordingly, I remand the application to the
examiner for prosecution consistent with the recommendation.
J.H A. Gari‚py
Commissioner of Patents
dated at Hull, Quebec
this 14 day of May 1990
D.S. Johnson, Q.C.
133 Richmond Street West
Toronto, Ontario
M5H 2L7