Ex Parte 6,438,931 et alDownload PDFPatent Trial and Appeal BoardFeb 14, 201495001741 (P.T.A.B. Feb. 14, 2014) Copy Citation 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. 95/001,741 09/06/2011 6,438,931 26.0.3.317/A 3341 7590 02/14/2014 NIXON & VANDERHYE PC 901 NORTH GLEBE ROAD 11th FLOOR ARLINGTON, VA 22203 EXAMINER JASTRZAB, JEFFREY R ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 02/14/2014 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) 1 UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ THE TORO COMPANY Requester, Cross-Appellant, Respondent v. WRIGHT MANUFACTURING, INC. Patent Owner, Appellant, Respondent ____________________ Appeal 2013-002864 Inter partes Reexamination Control 95/001,741 Patent US 6,438,931 B2 Technology Center 3900 ____________________ Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON and DANIEL S. SONG, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Patent Owner filed PATENT OWNER'S REQUEST FOR REHEARING on July 19, 2013 (hereinafter "Rehearing Request" or "Rhrg. Req.") under 37 C.F.R. § 41.79 seeking rehearing of our Decision mailed June 21, 2013 (hereinafter "Decision" or "Dec.") which affirmed various Appeal 2013-002864 Reexamination Control 95/001,741 Patent US 6,438,931 B2 2 final rejections of the claims made by the Examiner. 1 The Patent Owner asserts that the Board overlooked various facts and requests modification of the Decision. We grant the Rehearing Request to the extent that we consider the Patent Owner's arguments infra, but DENY the request to modify the Decision. Preliminarily, we observe that the Requester has filed THIRD PARTY REQUESTER'S COMMENTS OPPOSING PATENT OWNER'S REQUEST FOR REHEARING on August 17, 2013 (hereinafter "Requester's Comments" or "Req. Com."). Upon consideration, we agree with the Requester's Comments and cite to portions thereof infra as supplemental to our discussion. Velke '031 in View of Cox, Musgrave, Busboom, Hale '536 and Hale '798 The Patent Owner asserts that the Board overlooked the fact that "in Velke '031 (the base reference) the cutter deck is rigidly connected to the engine deck 3" so that "[t]here can be no relative movement between the cutter deck and the engine deck 3." (Rhrg. Req. 1). Hence, the Patent Owner concludes that "one of ordinary skill in the art would not have modified Velke '031 by adding Busboom's stabilizing rod … because there 1 A substantially identical Request for Rehearing has been filed with respect to the Board's decision also mailed June 21, 2013 for Appeal No. 2013- 002900 (Reexamination Control 95/001,742 for Patent US 6,935,093). The Board's decision with respect to that Request for Rehearing is being mailed concurrently herewith. Appeal 2013-002864 Reexamination Control 95/001,741 Patent US 6,438,931 B2 3 is no uncontrolled movement [between the cutter deck and the engine deck] to stabilize." (Rhrg. Req. 1; see also Rhrg. Req. 2). The Patent Owner misapprehends the fact that the main rejection based on Velke '031 is not based on merely incorporating Busboom's stabilizer rod into the mower of Velke '031. Rather, the rejection is based on implementing the height-of-cut (hereinafter "HOC") adjustment mechanism of Busboom into the mower of Velke '031 (Dec. 21 citing Right of Appeal Notice (hereinafter "RAN") 15-17; see also Req. Com. 2-3). As first explained in the Decision with respect to the rejection based principally on Wright '138, the HOC adjustment mechanism of Busboom would include the chain links and the stabilizing rods (Dec. 15-16). The reasons articulated by the Examiner for the combination based on Velke '031 are that: using the HOC adjustment mechanism of Busboom is merely a substitute for changing the mounting of each wheel which is disclosed in Velke '031; and such combination would provide ease of adjusting the HOC as compared to the adjustment disclosed in Velke '031 (Dec. 21; RAN 15-17). We agreed with the Examiner, the reasons articulated being rational and sufficient to support the conclusion of obviousness (Dec. 21-22; see also Req. Com. 3). The Patent Owner argues that Velke '031 "already has a system for adjusting the height-of-cut" so that there would be no reason to replace it with the HOC adjustment mechanism of Busboom (Rhrg. Req. 3). However, as noted supra and pointed out in the Decision, the HOC adjustment mechanism of Busboom which uses a lever that is simply grasped by the user and moved to adjust the HOC would make such adjustment easier as compared to the cumbersome method disclosed in Appeal 2013-002864 Reexamination Control 95/001,741 Patent US 6,438,931 B2 4 Velke '031 wherein the height of each wheel must be adjusted separately (Dec. 21). The Patent Owner further asserts that the stabilizing purpose of Busboom's control arm requires it to be long in order to reduce movement of the cutter deck thereby teaching away from the claims that require short control arms which would reduce the stabilizing function (Rhrg. Req. 3). However, the Patent Owner's assertion is not explained or substantiated by persuasive evidence. Our understanding is that control arms such as those disclosed in Busboom and the subject '248 patent are rigid structural members which are pivotably mounted to the mower deck and the frame. It is not apparent how shortening a control arm so as to be appropriately dimensioned for a smaller mower as set forth in the rejection would reduce the stabilizing function of the control arm. Wright '138 in View of Cox, Musgrave, Busboom, Hale '536 and Hale '798 The Patent Owner initially asserts that the Board overlooked the fact that "both parties agreed at the Oral Hearing that in Wright '138 (the base reference) the cutter deck 9 is probably rigidly connected to the engine deck 13 so that the cutter deck 9 and engine deck 13 move together as one unit." (Rhrg. Req. 5). The Patent Owner argues that "this agreement as to the content of Wright '138 cannot be ignored" and "[t]he Board's Finding of Fact 1(B) improperly ignores this agreement." (Id.). The Patent Owner also argues that Wright '138 does not include chains and the cutter deck is already structurally connected to the engine deck and the frame so that there Appeal 2013-002864 Reexamination Control 95/001,741 Patent US 6,438,931 B2 5 is no need to stabilize anything by adding Busboom's control arm (Rhrg. Req. 5-6). The Patent Owner's arguments are unpersuasive. Firstly, facts are established by the evidence, not by mere "agreement" between the parties. Secondly, Finding of Fact 1.B. was that Wright '138 does not disclose the manner in which the mower deck is mounted/connected to the frame and engine deck, or require that the mower deck be fixed in position relative to the engine deck so as to preclude relative movement therebetween. (Dec. 5, FF 1.B.). In other words, Wright '138 does not disclose sufficient detail to allow a determination that there is no relative movement between the mower deck and the engine deck. The factual finding was neither that Wright '138 discloses relative movement, nor that it discloses no relative movement. Thirdly, the Patent Owner itself conceded the possibility that the mower deck Wright '138 may be mounted and connected to the engine deck/ frame in a manner which allows for relative movement therebetween (Dec. 16 citing Resp. Br. PO 11-12; see also excerpts from the Oral Hearing set forth in Dec. 16, n.6 and Req. Com. 5). The conclusion drawn in the Decision was that "while Wright suggests including a mechanism for adjusting the height of cut [], it does not actually disclose a specific mechanism for doing so (FF 1B-1D)." (Dec. 11; see also Req. Com. 4-5). The Patent Owner's erroneous assertion regarding the disclosure of Wright '138 notwithstanding, the Patent Owner again misapprehends the basis of the main rejection based on Wright '138 that was affirmed in the Decision by arguing that Wright '138 does not include chains so there is no need for stabilization by adding Busboom's control arm (Rhrg. Req. 5-6). Appeal 2013-002864 Reexamination Control 95/001,741 Patent US 6,438,931 B2 6 As noted, Wright '138 does not disclose a mechanism for adjusting HOC (Dec. 14; Dec. 5, FF 1B-1D). Hence, we explained, [a]bsent such information, one of ordinary skill in the art would have logically considered known HOC adjustment mechanisms to implement in the mower of Wright. Busboom is one such known mechanism. When implementing the HOC adjustment mechanism of Busboom in the mower of Wright, we agree with the Examiner (RAN 4) that it would have been obvious to provide control arms that are sized to be appropriate to the application so that when applied to the compact standing mower of Wright which has a compact frame, the control arms would be shorter than that disclosed in Busboom. (RAN 5). (Dec. 14). Finally, the Patent Owner argues that there are no chains in Cox or Musgrave either so that there is nothing to stabilize (Rhrg. Req. 7). However, the Patent Owner again misses the point that Wright '138 does not disclose a mechanism for HOC adjustment, and that the affirmed rejection is based on using the known HOC adjustment mechanism of Busboom. REHEARING DECISION While we have considered the Decision in light of the Request for Rehearing, and have elaborated on certain aspects of the Decision, we decline to modify it in any respect. DENIED Appeal 2013-002864 Reexamination Control 95/001,741 Patent US 6,438,931 B2 7 ack PATENT OWNER: NIXON & VANDERHYE PC 901 North Glebe Road 11 th Floor Arlington, VA 22203 THIRD PARTY REQUESTER: James W. Miller 527 Marquette Avenue Suite 1960, Rand Tower Minneapolis, MN 55402 Copy with citationCopy as parenthetical citation