Ex Parte Birrell et al

Patent Trial and Appeal Board

Apr 25, 2013

12062860 (P.T.A.B. Apr. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STUART J. BIRRELL,
BENJAMIN J. SCHLESSER, and MARK D. DILTS
____________

Appeal 2011-002442
Application 12/062,860
Technology Center 3600
____________

Before MICHAEL L. HOELTER, LYNNE H. BROWNE and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

BROWNE, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2011-002442
Application 12/062,860

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STATEMENT OF THE CASE

Stuart J. Birrell et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-7, 10-18 and 20-24. Claims 8, 9
and 19 have been canceled. App. Br. 1. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A double shear chopper for chopping a material,
comprising:
a counter shear bar having a main counter
shear surface;
a plurality of stationary knives associated
with the counter shear bar;
a shaft;
at least one rotor section operatively
connected to the shaft, the at least one rotor section
configured to rotate with the shaft;
at least one knife holder in each of the at
least one rotor section;
at least one knife operatively connected to
each of the at least one knife holder;
slots in each of the at least one knife holder,
wherein opposite edges of each of the slots provide
counter shear surfaces for the plurality of
stationary knives; and
the main counter shear surface of the
counter shear bar providing a counter shear surface
for each of the at least one knife.
App. Br. 22.
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PRIOR ART
Kalverkamp US 5,269,126 Dec. 14, 1993
Schrattenecker US 6,120,373 Sep. 19, 2000
Redekop US 6,478,674 B2 Nov. 12, 2002

REJECTIONS1
1. Claims 1, 3-7, 10, 13, 16 and 20-24 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Redekop. Ans. 4.
2. Claims 1-7, 10, 13, 16 and 20-24 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Schrattenecker.2 Ans. 9.
3. Claims 1-7 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Kalverkamp.3 Ans. 13.

1 The Examiner has withdrawn the rejections under 35 U.S.C. § 102(b) of
claims 1, 3-7, and 10-18 as anticipated by Pick (US 5,161,356, iss. Nov. 10,
1992); claims 1-7 and 10-18 as anticipated by Bateman, US 5,413,286, iss.
May 9, 1995); and claims 10-18 and 20-24 as anticipated by Kalverkamp.
Ans. 2.
2 On pages 12 and 13 of the Examiner’s Answer in the Grounds of Rejection
claims 11, 12 and 14-16 are included in the rejection based on
Schrattenecker; however, these claims were not rejected in the non-final
Office action mailed March 26, 2010 as anticipated by Schrattenecker.
Furthermore, neither Appellant nor the Examiner have included these claims
in their statements of the rejections on appeal.
3 The Answer on page 4 indicates that claims 1 and 3-7 are rejected as
anticipated by Kalverkamp; however, in the Office action mailed March 26,
2010, claims 1-7 are rejected.
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Application 12/062,860

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OPINION
Anticipation
Redekop
The Examiner finds that Redekop discloses each and every limitation
of claims 1, 3-7, 10, 13, 16 and 20-24 and concludes that Redekop
anticipates these claims. Ans. 4-9. Appellants argue that “Redekop [] does
not disclose slots in a knife holder.” App. Br. 10. Appellants further argue
[t]he Examiner appears to consider the space
between mounting portions 191 of adjacent twist
blade members to be the claimed slots. One of the
problems with the Examiner's interpretation is that
there are no slots in the mounting portions 191, let
alone slots which have opposite edges which
provide counter shear surfaces.
App. Br. 11.
The Examiner states “Appellant[s’] argument that the space between
mounting portions are not slots is not agreed with. Examiner considers the
slots to be in between the knife holders.” Ans. 17. In response, Appellants
argue
Redekop does not disclose the claimed slots. The
Examiner marks up FIG. 4 of Redekop in an
attempt to support his position by arbitrarily
attempting to map structure of Redekop to
language of the claims. Yet, there are numerous
errors in the Examiner's attempted mapping and
the Examiner's position is inconsistent with the
disclosure of Redekop as well as common sense.
Consider for example, what the Examiner
considers to be the “knife holder.” In the
Examiner's marked up FIG. 4, the Examiner draws
an arbitrary line and states “above the line ‘knife
holder’” and “below this line ‘least one knife’
(cutting edge shown).” The arbitrary line
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transverses a blade 19A. Thus, the Examiner is
apparently considering a part of the blade a knife
holder and part of the blade a knife. This type of
“interpretation” by the Examiner ignores both the
plain language of the claim as well as disclosure of
Redekop.
Reply Br. 2-3.
Appellants’ arguments are convincing. Claim 1 requires at least one
knife holder and at least one knife operatively connected to each of the at
least one knife holder. App. Br. 22. While Redekop’s elements 19A are
described as blades, and thus, can fairly be read on the claim language
requiring at least one knife, the Examiner’s designation of a portion of
blades 19A as knife holders is not a fair reading of Redekop’s disclosure.
Redekop clearly describes the portion identified by the Examiner as the base
portion 191 of the blade as still part of the blade. Redekop, col. 5, ll. 18-37.
In Redekop, the element corresponding to the claimed at least one knife
holder are the lugs 21. Redekop, col. 4, ll. 21-25. Thus, the Examiner’s
finding is not supported by substantial evidence.
Claim 1 further requires slots in each of the at least one knife holder.
The space between the blades 19A identified by the Examiner as
corresponding to the claimed slots does not meet the claim language
requiring slots in each of the knife holders. Accordingly, the Examiner’s
finding that Redekop discloses the claimed slots is not supported by
substantial evidence.
For these reasons we do not sustain the Examiner’s rejection of
independent claim 1 and claims 3-6, which depend therefrom.
The rejection of independent claims 7, 10, 13, 16, 21 and 22 are not
supported by substantial evidence for the same reasons. Accordingly, we do
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not sustain the Examiner’s rejection of independent claims 7, 10, 13, 16, 21
and 22 or claim 20 which depends from claim 13.
Regarding independent claim 23, the Examiner finds that Redekop’s
bottom wall 12 is a counter shear bar. Ans. 4. Appellants argue Redekop
does not disclose “(a) a counter shear bar, [and] (b) a plurality of stationary
knives associated with the counter shear bar.” Reply Br. 9. Appellants’
argument is convincing. Redekop’s bottom wall 12 of housing 10 cannot be
fairly read on the claimed counter shear bar as it is not a bar and Redekop
discusses wall 12 as aiding in the discharge of straw, not its shearing.
Redekop, col. 4, ll. 1-11. Thus, the Examiner’s finding that Redekop
discloses a counter shear bar is not supported by substantial evidence.
Accordingly, we do not sustain the Examiner’s anticipation rejection of
independent claim 23 or claim 24 which depends therefrom.
Schrattenecker
The Examiner finds that Schrattenecker discloses each and every
limitation of claims 1-7, 10, 13, 16 and 20-24 and concludes that
Schrattenecker anticipates these claims. Appellants argue “Schrattenecker
does not disclose the claimed slots in the knife holders. The slits 14 of
Schrattenecker are not the claimed slots as they are not in the knife holders
but rather in the knife blades.” App. Br. 14. Appellants’ argument is
convincing. While the Examiner correctly finds that Schrattenecker’s rotary
cutting tools correspond to the at least one knife set forth in independent
claim 1; as clearly shown e.g., in Figure 4 and explicitly disclosed in
Schrattenecker, the slits 14 are in the rotary cutting tools rather than in a
knife holder. Schrattenecker, col. 2, l. 28. The Examiner’s finding that “the
blades 11 pass through the slits/slots 14 and the retaining plates/knife
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holders of the stationary blades 8 as shown in figs. 1-3” (Ans. 9) is
speculative and appears to be based on an incorrect interpretation of the
position of the counter blades 11 with respect to the retaining plates 6. Thus,
the Examiner’s finding that Schrattenecker discloses slots in the at least one
knife holder is not supported by substantial evidence.
Accordingly, we do not sustain the Examiner’s anticipation rejection
of independent claim 1 and claims 2-6 which depend therefrom. The
rejection of independent claims 7, 10, 13, 16, 21 and 22 is not supported by
substantial evidence for the same reasons. Accordingly, we do not sustain
the Examiner’s rejection of independent claims 7, 10, 13, 16, 21 and 22 or
claim 20 which depends from claim 13.
Regarding claim 23, Appellants argue “Schrattenecker does not
disclose that grain is collected and the Examiner cites to no portion of
Schrattenecker in support of that allegation.” App. Br. 16. In other words,
Appellants argue that Schrattenecker fails to disclose the step of “collecting
the grain using the harvesting machine” as required by claim 23.
Appellants’ argument is persuasive. Neither the rejection nor the
Examiner’s Response to Arguments address why collecting the grain using
the harvesting machine is a necessarily present step in the method described
by Schrattenecker. Accordingly, we do not sustain the Examiner’s
anticipation rejection of independent claim 23 or claim 24 which depends
therefrom.
Kalverkamp
The Examiner finds that Kalverkamp discloses each and every
limitation of claims 1-7 and concludes that Kalverkamp anticipates these
claims. Appellants argue “the claims recites that there is a slot in each knife
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holder. This structure is simply not disclosed by Kalverkamp.” App. Br. 19.
The Examiner finds that Kalverkamp discloses “each of the at least one
knife holder having slots [] 7” (Ans. 14), however, Kalverkamp explicitly
states that “blades 3 to 6 are provided with longitudinally spaced apart slots
7.” Kalverkamp, col. 5, ll. 34-36. For this reason, we do not sustain the
Examiner’s anticipation rejection of independent claim 1 and claims 2-6
which depend therefrom. The rejection of independent claim 7 suffers from
the same shortcomings as the rejection of claim 1. Accordingly, we do not
sustain the Examiner’s rejection of independent claim 7.

DECISION
We reverse the Examiner’s rejection of claims 1, 3-7, 10, 13, 16 and
20-24 under 35 U.S.C. § 102(b) as being anticipated by Redekop.
We reverse the Examiner’s rejection of claims 1-7, 10, 13, 16 and 20-
24 under 35 U.S.C. § 102(b) as being anticipated by Schrattenecker.
We reverse the Examiner’s rejection of claims 1-7 under 35 U.S.C.
§ 102(b) as being anticipated by Kalverkamp.

REVERSED

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