9254865 et al.

Patent Trials and Appeals Board

Oct 27, 2020

2019001226 (P.T.A.B. Oct. 27, 2020)

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.
90/013,980 07/12/2017 9254865 MTD-865Reexam 9011
32425 7590 10/27/2020
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
10/27/2020 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 MTD PRODUCTS INC.
Patent Owner and Appellant

Appeal 2019-001226
Reexamination Control 90/013,980
Patent 9,254,865 B2
Technology Center 3900
BEFORE DANIEL S. SONG, MEREDITH C. PETRAVICK, and
WILLIAM V. SAINDON, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING

The Patent Owner requests reconsideration (hereinafter “Request” or
“Req.”) under 37 C.F.R. § 41.52 of our Decision mailed March 26, 2020,
affirming the Examiner’s rejection of claims 1–20. The Patent Owner
argues that in affirming the rejection of the claims, the Board changed the
thrust of the Examiner’s rejections, and requests that the Decision’s
affirmance of the rejections be denominated as new grounds of rejection.
The Patent Owner also asserts that the Board overlooked various aspects of
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the Appellant’s appeal, and accordingly, requests modification of the
Decision to reverse the Examiner’s rejections.
We grant the Request to the extent that we consider the Patent
Owner’s arguments infra, but we DENY the request to denominate the
affirmance of the Examiner’s rejection as new grounds of rejection, or to
reverse the Examiner’s rejections.

REHEARING DECISION
The Patent Owner’s arguments presented in its Request are based on
an asserted difference between how the Claude reference was relied upon by
the Examiner in rejecting the claims as compared to the manner in which it
was relied upon by the Board in its Decision affirming the Examiner’s
rejection. Each of the Examiner’s rejections was based on the combination
of Hauser in view of Irikura, Claude, and at least another reference. Final
Act. 4, 12, 13.
According to the Patent Owner, the Examiner initially rejected the
independent claims based on the combination of Hauser and Irikura in the
initial Non-Final Office Action of November 22, 2017, without Claude, but
the Patent Owner overcame the rejection, and “the Examiner agreed that
Patent Owner overcame those rejections.” Req. 1, 3. The Patent Owner
asserts that the Examiner issued a subsequent second Non-Final Office
Action of February 8, 2018 (instead of making final the initial Non-final
Office Action of November 22, 2017) relying on Claude for disclosing a
differential cam equation, which when satisfied, would produce pure rolling
movement that satisfies the Ackermann equation. Req. 1–5. According to
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the Patent Owner, the Examiner’s rejections relied upon Claude’s
differential cam equation and satisfaction thereof, and that it has established
that satisfaction of Claude’s differential cam equation was impossible. Req.
1–2, 5–6, 9–10. The May 9, 2018 Final Office Action also relied upon
Claude in the same manner as the second Non-Final Office Action.
Based on the above assertions, the Patent Owner argues that the
Board’s Decision changes the thrust of the Examiner’s Final Office Action
by abandoning the reliance on Claude’s differential cam equation and
satisfaction thereof. Req. 2, 5–8. Thus, the Patent Owner argues that the
Board’s Decision affirming Rejections 1–3 should be denominated as New
Grounds of Rejection. Req. 2.
We do not agree with the Patent Owner’s assertions, specifically, its
characterization that it overcame the Examiner’s rejections based on the
combination of Hauser and Irikura during prosecution, and that the
Examiner necessarily relied upon Claude’s differential cam equation and
satisfaction thereof in rejecting the claims. In particular, we disagree with
the Patent Owner’s assertions in view of the Final Office Action itself from
which the appeal is taken, and the prosecution history.
For example, as to Irikura, the Final Office Action relies on the
finding that Irikura discloses a zero turn radius steering system, and its
applicability to Hauser. Final Act. 6–7. In particular, the Final Office
Action finds that:
In the embodiment of Figs. 36 and 41–44, Irikura ’725
teaches a zero turn radius (ZTR) steering system including first
and second gear pairs 101R, 101L on opposite sides of the
vehicle, with each gear pair 101R, 101L. . . . Note that Irikura
’725 specifically teaches that such a steering geometry prevents
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transverse slipping (i.e., tire scrub or wheel skid) of the
steerable wheels 41R, 41L. See ¶¶ 0189, 196. During zero turn
radius (ZTR) steering, the common center 196 is located
midway between the rear drive wheels 43R, 43L. See Fig. 44;
¶¶ 0194–0196. Note the description that ‘the vehicle spins’ in
¶ 0194, and the description of steering about a ‘substantially
single point’ in ¶¶ 0196, both of which are synonymous with
ZTR steering.
Final Act. 6–7.
The Examiner does not identify or concede any deficiencies with
respect to Irikura. Instead, after setting forth findings with respect to Irikura
and Claude, the Final Office Action states:
Therefore, both Irikura ’725 and Claude teach steering
systems having first and second gear/cam pairs with a variable
gear/cam pitch line (claims 1 and 11) or non-uniform gear/cam
ratio (claim 16). From these teachings of Irikura ’725 and
Claude, it would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify Hauser . . .
by providing the steering system with first and second gear
pairs with a variable gear pitch line (claims 1 and 11) or non-
uniform gear ratio (claim 16) because such a steering system
provides the advantage of optimal steering as a result of
location of the steerable wheels on tangents of concentric
circles having their common center coincident with the
rotational axis of the rear drive wheels. Further, such a
modification is obvious because it involves the mere
combination of one known type of steering system taught by
Irikura ’725 and Claude with the vehicle of Hauser . . .
according to known methods, yielding only a predictable result.
Final Act. 9–10.
There is nothing in the above rejection set forth in the Final Office
Action indicating that the Examiner found deficiency with respect to the
disclosure of Irikura, or that the Examiner was persuaded that the Patent
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Owner overcame the rejection based on the combination of Hauser and
Irikura. In that regard, it is entirely permissible for the Examiner to rely on
multiple references for disclosing similar subject matter pertinent to the
claims at issue in order to demonstrate the state of the art, and the knowledge
and skill of those of ordinary skill in the art, in order to clearly set forth a
rejection. Such action is especially understandable considering that Claude
was newly cited evidence submitted by the Patent Owner after the initial
Non-Final Office action of November 22, 2017.1
According to the Patent Owner, the Examiner conceded to the Patent
Owner overcoming the rejection based on Hauser and Irikura because the
Examiner stated in the Non-Final Office Action dated February 8, 2018 that
the Patent Owner’s arguments and reliance on the Declaration of Reinholtz
“are not persuasive because they do not address the new grounds of
rejection.” Req. 3, fn.13 (emphasis omitted) (quoting Non-Final Office
Action dated February 8, 2018 at 15). The full statement of the Examiner is
as follows:
The patent owner’s evidence in the form of the
declaration of Dr. Charles Reinholtz under 37 CFR 132
(hereinafter, “Reinholtz declaration”) and the patent owner’s
related arguments included in the response filed on 22 January
2018 have been fully considered by the examiner. Ultimately,
the patent owner’s evidence and arguments are not persuasive
because they do not address the new grounds of rejection set
forth above. However, relevant portions of the evidence and
arguments will be addressed below.
Non-Final Office Action dated February 8, 2018 at 15.

1 Claude was submitted by the Patent Owner in its Information Disclosure
Statement filed January 22, 2018.
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Contrary to the Patent Owner’s assertion that the Examiner agreed
that the Patent Owner overcame the rejection based on Hauser and Irikura,
we understand the Examiner to be simply explaining that the submitted
arguments and the declaration fails to address the rejection as now set forth,
which now also relies on the Patent Owner’s newly submitted evidence,
Claude as well as Irikura. In that regard, as reproduced above, the Examiner
also stated that “[h]owever, relevant portions of the evidence and arguments
will be addressed below,” thereby clearly indicating that the Examiner still
found the Patent Owner’s arguments and evidence unpersuasive. Id.
Indeed, the Examiner also stated that “[e]ven if Irikura ‘725 is incapable of
providing complete Ackermann functionality, it nevertheless fulfills the
lesser call of Hauser ‘219 or Hauser ‘171 for a steering geometry that
‘substantially’ satisfies the Ackermann equation,” a position which is
maintained by the Examiner in the Final Office Action. Id. at 16; Final Act.
16. This position is consistent with the above reproduced findings of the
Examiner with respect to Irikura, and the Examiner’s conclusion as to
Irikura and Claude in the Final Office Action.
As to the teachings of Claude, we also disagree with the Patent
Owner’s assertion that the Examiner’s rejection was premised on Claude’s
disclosure of a differential cam equation. Req. 1–2, 4–5. Specifically, the
Patent Owner asserts that “[t]he Examiner stressed––as did Claude––that
both equations ‘must’ be satisfied.” Req. 4 (citing Non-Final Office Action
dated February 8, 2018 at 7–8). However, in the portion of Non-Final
Office Action cited by the Patent Owner, the Examiner generally discuss
what Claude discloses, including the Ackermann equation, the difficulties of
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attaining such a geometry, and the differential cam equation. Id. In
particular, the Examiner acknowledges that “Claude teaches that such a
steering system must satisfy both: (a) the Ackermann equation; and (b) the
following additional relationship: sin α:sin β = x:y,” and that to satisfy the
differential cam equation, “at least one of steering cams is formed with a
variable pitch line providing a non-uniform (differential) steering ratio.”
Non-Final Office Action dated February 8, 2018 at 7–8 (emphasis added).
These findings as to Claude are also set forth in the Final Office Action. See
Final Act. 7–8.
However, we do not understand such general discussion of the
Examiner as to what Claude teaches, including the differential cam equation,
to mean that the Examiner is stating that the differential cam equation must
be satisfied in order to provide Zero Turn Radius steering. Indeed, as set
forth above, the Examiner makes clear as to what Claude is being relied
upon for in stating “[t]herefore, both Irikura ’725 and Claude teach steering
systems having first and second gear/cam pairs with a variable gear/cam
pitch line (claims 1 and 11) or non-uniform gear/cam ratio (claim 16).”
Final Act. 9–10, et seq.; see also Non-Final Office Action dated February 8,
2018 at 9–10.
The Examiner’s reliance on the broader teachings of Claude as to its
variable pitch line geometry is further evidenced by the statement that
“[t]hus, Claude explicitly teaches that the steering system satisfies (or at
least substantially satisfies) the Ackermann equation and provides for the
pure rolling movement that is desired for eliminating wheel skid.” Final
Act. 19. In that regard, the Examiner further explained that “[e]ven if
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Claude is incapable of providing complete Ackermann functionality, it
nevertheless fulfills the lesser call of Hauser . . . for a steering geometry that
‘substantially’ satisfies the Ackermann equation,” and that
one cannot show nonobviousness simply by establishing that
the teaching of the secondary reference (here Claude and/or
Irikura ’725) is less than perfect. While the steering system of
Claude and/or Irikura ’725 may fall short of ideal Ackermann
steering as argued by the declarant, such is true of essentially
every steering system in the non-theoretical real world.
Final Act. 19–20.
The above makes sufficiently clear that the Examiner is relying on
Claude for its broader disclosure that ZTR steering systems and variable
pitch line geometry were known in the art, and even if the steering systems
of Irikura or Claude “fall short of ideal,” they would still “‘substantially’
satisf[y] the Ackermann equation,” i.e., provide a ZTR steering system
suitable for Hauser. Final Act. 19.
Therefore, the Patent Owner’s assertions that it overcame the
Examiner’s rejections based on the combination of Hauser and Irikura, and
that the Examiner necessarily relied upon Claude’s differential cam equation
and satisfaction thereof in rejecting the claims, are not correct based on the
actual position of the Examiner. Accordingly, the Patent Owner’s assertion
that the Board’s Decision changed the thrust of the rejection by abandoning
Claude’s differential cam equation so as to merit a New Grounds designation
is not well-founded, and thus, unpersuasive.
The Patent Owner also argues that the Board’s Decision improperly
relied on gear-based teachings from Claude, whereas “the Examiner’s final
rejections do not rely on any gearing from Claude,” such that Decision
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changes the thrust of the final rejections. Req. 11–12. The Patent Owner’s
argument appears to be in reference to two paragraphs in the Decision
starting from the first full paragraph of page 20 (“In addition, although
Claude does use the term ‘cam’ to refer to structural components, it also
appears to use the term to more broadly refer to non-circular rotation about
offset centers of rotation along the interface of the components, and
discloses use of gears in attaining such movement. . . .”), and the subsequent
paragraph of page 20 (“Regardless, Claude further discloses an alternative
having a gear implementation/embodiment, thereby establishing that it was
known to have implemented cam-based suspension geometries and systems
using gears instead of cams. . . .”), which extends to page 21 of the Decision.
We observe that in the Final Office Action, the Examiner specifically
referenced Claude, page 1, lines 1–94; page 1, line 98–page 2, line 5; and
page 2, lines 16–18, 127, in support of the rejection. Final Act. 7–8 (citing
Claude, pg. 1, ll. 6–10; pg. 1, ll. 11–42; pg. 1, ll. 1–5; p. 1, ll. 33–81; pg. 1,
ll. 51–52, 72–94; pg. 2, ll. 2–5, 16–18, 127; pg. 1, l. 98–pg. 2, l. 2); see also
id. at 19, 21.
In the above-noted two paragraphs, the Decision cites to Claude, page
1, lines 23–32, 49–55; page 2, lines 113–123. Dec. 20–21. Thus, the
Decision relied on portions of Claude also relied upon by the Examiner, but
also relied on Claude, page 2, lines 113–123, which was not cited by the
Examiner in the Final Office Action. However, to the extent that the same
art was discussed in a manner somewhat differently than the Examiner, this
generally does not constitute a new ground of rejection. See In re Boyer,
363 F.2d 455, 458 n.2 (CCPA 1966); In re Bush, 296 F.2d 491, 496 (CCPA
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1961). In that regard, it is not a new ground of rejection to cite additional
portions of the same reference relied upon by the Examiner. In re
Meinhardt, 392 F.2d 273, 280 (CCPA 1968). We must consider a reference
in its entirety for what it fairly suggests to one skilled in the art, and pointing
to other portions of the same reference used by the Examiner is generally not
viewed as being a new ground of rejection. See In re Hedges, 783 F.2d 1038
1039 (Fed. Cir. 1986). Furthermore, to make clear, and as evident from the
language of these paragraphs that begin with “[i]n addition,” and
“[r]egardless,” any further analysis set forth therein are supplementary in
nature, and are not necessary in order to affirm the Examiner’s rejections.
The Patent Owner further argues that the Board’s treatment of its
teaching away arguments constitutes a new ground of rejection, arguing that
it applied “rationales on which the Examiner did not rely and that changed
the basic thrust of the Examiner’s final rejections of Patent Owner’s
teaching-away position.” Req. 14. We do not agree with the Patent Owner.
In particular, in its Appeal Brief, the Patent Owner argued that Irikura
would have led a person of skill in the art away from the proposed
combination of Hauser and Irikura because “Irikura ’725 teaches
abandonment of a configuration in which each of two hydrostatic
transmissions (Hauser’s hydrostatic drives 16 and 18, in the proposed
combination) controls a respective one of two driving wheels.” Appeal Br.
18–19; see also Appeal Br. 92–91. Thus, the Patent Owner’s teaching away
argument was based on the differing drive transmissions of Hauser and
Irikura, Irikura purportedly addressing disadvantages of the transmission of
Hauser.
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The Examiner’s rejection addressed the teaching away argument as
presented by the declarant Mr. Reinholtz, stating:
The examiner does not find these opinions/conclusions
persuasive because Irikura ’725 and Hauser ’219 or Hauser
’171 teach well-known alternative transmissions, and POSITA
possess the ability to choose between such alternatives on the
basis of the known advantages/disadvantages thereof as well as
the particular design criteria involved. Further, using the
steering system of Irikura ’725 in the ZTR vehicle of Hauser
’219 or Hauser ’171 yields only a predictable result and,
therefore, would have been obvious to POSITA.
Final Act. 18–19. The same statements are made in the Examiner’s Answer.
Ans. 18. The Examiner further explained that as to the Patent Owner’s
teaching away argument, that:
This argument is not persuasive because, as explained above,
Irikura ’725 and Hauser ’219/Hauser ’171 teach well-known
alternative transmissions, and POSITA possesses the ability to
choose between such alternatives on the basis of the known
advantages/disadvantages thereof as well as the particular
design criteria involved. For example, POSITA would have
been motivated to retain the independent hydrostatic
transmissions used in Hauser ’219/Hauser ’171 because Hauser
’219/Hauser ’171 teach that a steering system utilizing such
independent hydrostatic transmissions “steers the vehicle
consistently in the direction that the steering wheel is turned in
forward as well as the reverse directions” (Hauser ’219 at col.
1, ll. 29-32) and “ZTR steering in forward and reverse is
accomplished” (Hauser ’219 at col. 6, ll. 17–18). Further, using
the steering system of Irikura ’725 in the ZTR vehicle of
Hauser ’219 or Hauser ’171 yields only a predictable result and,
therefore, would have been obvious to POSITA. Still further,
one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of
references.
Ans. 23.
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In other words, the Examiner was not persuaded by the Patent
Owner’s teaching away argument because, in the Examiner’s view, the
evidence indicates that a person of ordinary skill has the skill and ability to
choose between two known prior art transmission configurations: (1) a
configuration in which each of two hydrostatic transmissions controls a
respective one of two driving wheels as disclosed in Hauser; or (2) a
configuration disclosed in Irikura that addresses disadvantages of
configurations that use two hydrostatic transmission controls.
The Board agreed with the Examiner, stating:
We generally agree with the Examiner. Although the
Patent Owner is correct that Irikura discloses the disadvantage
of using hydrostatic drive units for separately driving left and
right wheels, and further discloses its solution therefor, as
discussed above, Irikura also clearly teaches a steering system
for the steerable front wheels for use in a zero radius turn
vehicle. There may be many reasons that a person of ordinary
skill in the art may have implemented only Irikura’s teachings
with respect to the steering system, but not its teachings
regarding hydrostatic drive units. For example, engineering
considerations such the specific application, manufacturability,
durability, serviceability, and other considerations such as costs
and market familiarity. Although the Patent Owner argues that
“the Office fails to enumerate any advantages of Hauser’s drive
units 16, 18 and/or disadvantages of Irikura ’725’s
driving/steering unit 10 that would have led a POSITA to
choose Hauser’s drive units over Irikura ’725’s” (App. Br. 96),
we find sufficient, the Examiner’s general reasoning in view of
the art that a person of ordinary skill in that art would have
considered numerous factors, and that it would have been
obvious to such a person to have applied the multiple
independently teachings of Irikura selectively.
Dec. 23–24.
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We discern no change to the thrust of the Examiner’s reasoning or
response to the Patent Owner’s teaching away argument in the Board’s
Decision. To the contrary, the Decision agrees with the Examiner that a
person of ordinary skill possesses the knowledge and skill to choose between
the prior art transmission configurations of Hauser and Irikura.
The Patent Owner asserts that the Decision deviated from “the
conclusory argument of the Examiner” in stating that “Irikura also clearly
teaches a steering system for the steerable front wheels for use in a zero
radius turn vehicle.” Req. 15; Dec. 23. However, the Decision merely
restates the Examiner’s earlier finding that “[i]n the embodiment of Figs. 36
and 41–44, Irikura ’725 teaches a zero turn radius (ZTR) steering system,”
which is in addition to its teachings pertaining to the transmission
configuration that may be chosen by those of ordinary skill. Final Act. 6–7.
As discussed above, Irikura’s disclosure of such a steering system
establishes what was known to one of ordinary skill in the art, and its
additional teaching regarding the transmission configuration is what the
Examiner is stating to be selectable by a person of ordinary skill in the art in
view of other known transmission configurations, such as that disclosed in
Hauser.
The Patent Owner further objects to the Decision setting forth reasons
why a person of ordinary skill may have selected one transmission
configuration over another. Req. 13. However, the Decision merely gives
examples of factors that a person of ordinary skill may have taken into
consideration in deciding to implement only Irikura’s teachings with respect
to the steering system, but not its teachings regarding hydrostatic drive units
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so as to maintain Hauser’s transmission configuration using two hydrostatic
transmissions controls. Provision of such examples is directed to the skill
and knowledge of the person of ordinary skill in the art, and does not change
the basis of the Examiner’s reasoning, or the underlying facts relied upon.
The Patent Owner further asserts that the Decision improperly held
that no reason was needed to selectively choose Hauser’s transmission
configuration over that disclosed in Irikura. Req. 16–17 (quoting Dec. 24).
We do not think that is a fair characterization. As reproduced above, the
Decision was addressing the Patent Owner’s demand that the Examiner
articulate an explicit reason for choosing the primary reference Hauser’s
transmission configuration over that disclosed in the secondary reference
Irikura, the Decision finding that providing of such explicit reasoning is not
required to support the conclusion of obviousness. Dec. 24.
In the Request, the Patent Owner also asserts that the Board
misapprehended or overlooked several aspects of the Patent Owner’s appeal
in various enumerated instances in affirming the Examiner’s rejections, and
based thereon, requests modification of the Decision to reverse the
Examiner’s rejections. Req. 17–27. However, the bases of these
enumerated instances are premised on unpersuasive assertions already
addressed above, or are based on disagreements with the Decision based on
arguments and evidence already considered by the Board. Id. Accordingly,
we decline the Patent Owner’s request to reverse the rejections.
Therefore, in view of the above, we have considered the Decision in
light of the Request, but we decline to modify the Decision to reverse the
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Examiner’s rejection, or to denominate the affirmance of the rejections as
new grounds of rejection.

DECISION SUMMARY
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C.
§
Basis Denied Granted
1–10 103(a) Hauser, Irikura,
Claude, Barnes
1–10
11–20 103(a) Hauser, Irikura,
Claude, Barnes,
LaserZ
11–20
16–20 103(a) Hauser, Irikura,
Claude, Barnes,
LaserZ,
Paramythioti
16–20
Overall
Outcome
1–20

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10 103(a) Hauser, Irikura,
Claude, Barnes
1–10
11–20 103(a) Hauser, Irikura,
Claude, Barnes,
LaserZ
11–20
16–20 103(a) Hauser, Irikura,
Claude, Barnes,
LaserZ,
Paramythioti
16–20
Overall
Outcome
1–20

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DENIED

tj

For Appellant:

NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255

For Third Party Requester:

JAMES W. MILLER (General)
527 MARQUETTE AVENUE
SUITE 1960, RAND TOWER
MINNEAPOLIS, MN 55402