95000115 (B.P.A.I. Jun. 8, 2012)

Ex Parte 6523333 et al

Board of Patent Appeals and InterferencesJun 8, 2012

95000115 (B.P.A.I. Jun. 8, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/000,115 11/28/2005 6523333 8319/87197 2577 45684 7590 06/08/2012 ROGER A. GILCREST ICE MILLER LLP 250 WEST STREET SUITE 700 COLUMBUS, OH 43215-7509 EXAMINER CLARKE, SARA SACHIE ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 06/08/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ CNH AMERICA LLC Requester, Cross-Appellant, Respondent v. LEO A. METZGER Patent Owner, Appellant, Respondent ____________________ Appeal 2012-004178 Inter partes Reexamination Control 95/000,115 Patent US 6,523,333 B21 Technology Center 3900 ____________________ Before STEPHEN C. SIU, DANIEL S. SONG and JOSIAH C. COCKS, Administrative Patent Judges. SONG, Administrative Patent Judge DECISION ON APPEAL 1 Patent US 6,523,333 B2 (hereinafter "'333 patent") issued February 25, 2003, to Metzger. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 2 STATEMENT OF THE CASE Claims 1-27 are subject of the present appeal. Claims 1-9 that were original to the '333 patent, as well as claims 10-27 added during the reexamination, have all been rejected (RAN2 PTOL-2066; ABPO 2; CABR 1). The Patent Owner appeals under 35 U.S.C. Â§Â§ 134(b) and 315 from the rejection of claims 1-27 as discussed infra under the section heading: APPEAL OF THE PATENT OWNER. In addition to the briefs, the Patent Owner also relies on declaration evidence of Mr. Johnson. The Requester cross-appeals under 35 U.S.C. Â§Â§ 134 and 315 from the Examiner's refusal to enter various proposed rejections of claims 1-6 and 9 (CABR 2) as discussed infra under the section heading: CROSS-APPEAL OF REQUESTER. The Requester also relies on multiple declarations of Mr. Caulfield and numerous exhibits therein. 2 While we have considered the entire appeal record, we refer to and address only specific portions of the record directly relevant to the disposition of the appeal, abbreviating the documents therein as follows: 1. Right of Appeal Notice = RAN 2. Non-Final Office Action of July 27, 2007 = NFOA 3. Action Closing Prosecution of May 14, 2009 = ACP 4. Appeal Brief of Patent Owner = ABPO 5. Respondent Brief of Patent Owner in response to Cross-Appeal Brief of Requester = Res. Br. PO 6. Cross-Appeal Brief of Requester = CABR 7. Respondent Brief of Requester in response to ABPO = Res. Br. R 8. Rebuttal Brief of Requester in response to Res. Br. PO = Reb. Br. R Furthermore, the Examiner's Answer dated July 27, 2011 merely incorporates the RAN by reference, and thus, we cite to the RAN herein. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 3 The '333 patent is involved in the related legal action Metzger v. CNH America LLC, et al., 3:04-cv-50446 (N.D. Illinois) which has been stayed pending the completion of the present reexamination proceeding (ABPO 2; CABR 1). The evidence of record from the legal action includes numerous deposition transcripts, "Defendant's First Set of Requests for Admissions (Nos. 1-303)" and "Plaintiff's Answer to Defendant's First Set of Request for Admissions (Nos. 1-303)". We have jurisdiction under 35 U.S.C. Â§Â§ 134(b) and 315 (2002). An oral hearing with the representatives of the Patent Owner and Requester was held before the Board of Patent Appeals and Interferences on May 16, 2012. A transcript of the oral hearing will be entered into the record in due course. We AFFIRM-IN-PART with respect to the Appeal of the Patent Owner. We AFFIRM with respect to the Cross-Appeal of the Requester. We also enter New Grounds of Rejection with respect to all of the claims based on our authority under 37 C.F.R. Â§ 41.77(b). We limit our discussion of the argued issues to those necessary for the disposition of the present appeal. THE INVENTION The claims of the '333 patent are directed to a sensor arm for sensing the distance between the ground surface and an adjustable platform of an agricultural machine such as a combine (Abst.). Representative Figure 6 of the '333 patent is reproduced below. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 4 Figure 6 of the '333 patent reproduced above shows a side view of a header snout of an adjustable platform with the improved sensor arm that is curved (col. 2, ll. 55-57). Representative claims 1, 7 and 10 read as follows (ABPO, Claims App'x, underlining removed, emphases added): 1. (Original) In an agricultural machine having an adjustable platform supported by the machine and a control system for setting an operating height of said platform relative to the ground, said control system including a sensor responsive to an angular position of a shaft and generating a signal representative of said operating height, a sensor arm coupled to said shaft and comprising an operating portion for contacting the ground and being curved at the segment of said operating portion adjacent said shaft, such that the distance between a center of rotation of said shaft and the point at which said sensor arm contacts the ground decreases as the operating height of said platform is decreased. 7. (Original) In an agricultural machine having a platform carried by the machine, and a control system for setting an operating height of said platform relative to the ground, said control system including a sensor mechanism comprising a member rotatable about an axis, a sensor arm mounted to said rotatable member and including an operating portion for Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 5 contacting the ground, characterized in that a forward segment of said operating portion is substantially continuously curved whereby when said platform is set at a lower operating height, the distance between said rotatable member and the point at which said arm contacts the ground continuously decreases as the operating height of said platform is decreased. 10. (New) In an agricultural machine having a platform carried by the machine, and a closed loop feedback control system for setting a desired operating height of said platform relative to the ground, said control system including means for providing a first signal representative of the desired operating height, a sensor mechanism comprising a member rotatable about an axis, means for sensing the angular position of the rotating member and generating a second signal representative of the sensed angular position, means for comparing said firs [sic] signal and second signal and generating an error signal representative of the difference therebetween for movement of the platform toward the desired operating height as the ground contour changes, and a sensor arm mounted to said rotatable member for rotating said member in accordance with the ground contour changes, and including an operating portion for contacting the ground rearwardly of and adjacent the axis of said rotatable member, said operating portion including a forward segment that is substantially continuously curved such that at a lower desired operating heights, the distance between the axis of said rotatable member and the point at which said arm contacts the ground continuously decreases as the desired operating height of said platform is decreased. PRINCIPLES OF LAW Claim Construction Claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 6 re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). This is the standard for claim interpretation in reexamination. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). It is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Anticipation "Anticipation requires the presence in a single prior art reference disclosure of each and every element of the claimed invention, arranged as in the claim." Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984). In other words, "there must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention." Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). Obviousness "Section 103 forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). "[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." Id. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 7 at 416. "If a person of ordinary skill can implement a predictable variation, Â§103 likely bars its patentability." Id. at 417. The operative question is "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id. CLAIM INTERPRETATION The Patent Owner, Requester and the Examiner dispute the proper interpretation of the terms "control system," "sensor," "sensor mechanism," and "shaft." The Patent Owner contends that the Examiner's constructions of the terms are too broad, and thus, "unreasonably broadened the scope of the claims far beyond the actual invention disclosed in the specification and encompassed prior art which the inventor could not have intended to claim as his invention." (ABPO 8). The Requester argues that the Examiner's construction of the term "shaft" is too narrow (CABR 11-18). Each party relies on declarations of expert witnesses in support of their respective positions. While we make some observations with respect to the term "sensor mechanism," only the terms "control system" and "shaft" need to be construed in order to dispense with the present appeal. "Control System" Examiner interpreted the term "control system" to mean a "closed loop feedback control system" (RAN Â¶ 5-6). The Examiner stated: In this case, the term "control system," by itself, in its ordinary usage, can refer to either a closed loop feedback control system or an open loop control system with no feedback. However, the recitation of the "control system including a sensor (mechanism)," in claims 1 and 7, indicates that the system is a Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 8 closed loop feedback control system. There is nothing in the claims that restricts the claimed control system such that it continuously compares a signal representing a desired height to a signal representing the actual operating height to produce an error signal." (Non-Final Office Action Â¶ 10). We agree with the Examiner's analysis and the claim construction resulting therefrom. The Patent Owner argues that the Examiner's interpretation is too broad in view of the specification of the '333 patent, and that the broadest reasonable interpretation further includes "continuously compares a signal representing a desired operating height to a signal representing the actual operating height to produce an error signal used to maintain the desired operating height." (ABPO 10-11; Fig. 4; col. 3, ll. 34- 49; col. 4, ll. 30-51). The Patent Owner further asserts that in such a control system, "signals" are required to represent set height value and actual height value "to produce an error signal used to maintain the actual height at the desired height value." (ABPO 13). However, as the Examiner noted, the Patent Owner's arguments are based on limitations not present in the claims, and the proffered construction of the term improperly imports limitations and features of the preferred embodiment described in the specification. Whereas Mr. Johnson's Declaration was submitted in support of the Patent Owner's construction (Decl. of Johnson, Â¶Â¶ 15-17), the statements therein with respect to the term "control system" are based on importing the limitations and features of the preferred embodiment described in the specification of the '333 patent, and lack persuasive objective evidence establishing that the term "control system" has the more restrictive meaning advocated by the Patent Owner. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 9 "Shaft" The Examiner interpreted "shaft" to mean "a relatively long member which is supported in such a way that it can rotate about an axis that extends through the lengthwise end points of the shaft. A shaft can have a non-round cross-section." (RAN Â¶ 8g). According to the Requester, "shaft" should be interpreted to mean a "structural member, which can be hollow, operatively associated with the sensor lever arm to transmit rotary motion of the sensor arm." (Res. Br. R 16). The Patent Owner agrees with the Examiner's contention that the Requester's interpretation is unreasonably broad (Res. Br. PO 6-7). We agree with the Examiner's construction of "shaft" and find no error in the Examiner's consideration of the evidence of record (RAN Â¶Â¶ 8a- 8i). The Requester's arguments for broader construction are unpersuasive. We observe that the Requester's definition essentially defines the "shaft" functionally, irrespective of its physical/structural characteristics. However, we do not view recitation of a "shaft" to be merely functional. Rather, it is a structural term which is well established and understood in the mechanical arts to have certain physical, as well as functional, characteristics which are reflected in the Examiner's construction. The Requester's construction is unreasonably broad and we are not persuaded by statements of declarant Mr. Caulfield relied upon by the Requester (Supplemental Decl. of Caulfield. Â¶Â¶ 40-43). The Requester's construction of the term "shaft" is devoid of structural significance established in the art and is equally applicable to gears or belts as noted by the Examiner (RAN Â¶ 8j), as well as pulleys, Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 10 levers and other devices also known in the mechanical art that have their own respective physical and functional characteristics. The Patent Owner also argues that the Examiner's interpretation is unreasonable because it was understood to encompass "pivot points" such as a hub disclosed in one of the prior art references (App. Br. 15). However, the Patent Owner does not proffer an alternate construction or how the Examiner's construction is improper. Thus, we view this argument as being directed to whether the specific prior art discloses a shaft, and not to the claim construction issue. "Sensor Mechanism" The Patent Owner argues the meaning of this term together with the term "sensor" recited in claim 1, but does not provide a separate claim construction thereof (ABPO 13). To the extent that the Patent Owner may be arguing that "sensor mechanism" should be construed as narrowly as "sensor," in our view, the term "sensor mechanism" recited in claim 7 differs from the sensor recited in claim 1 that generates a signal representative of the operating height. In this regard, we note that claim 7 specifically recites that the "sensor mechanism compris[es] a member rotatable about an axis,[and] a sensor arm" thereby clearing indicating that the "sensor mechanism" includes various mechanical components, and further does not recite generation of a signal. The Examiner states that "[s]ince the specification does not explicitly set forth a definition for 'sensor mechanism,' this term will be interpreted Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 11 according to the language in the claims." (NFOA Â¶ 15). We find no error in the Examiner's treatment of this term based on the language of the claim. FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 1. The Specification of the '333 patent includes various Admitted Prior Art (hereinafter APA '333) regarding combines and control systems for maintaining the operating height of a header as set forth below. A. In the "BACKGROUND OF THE INVENTION" section, the '333 patent states: A system for controlling the height of the header of some currently available agricultural combines . . . includes an electrical sensor coupled to a rotatable sensor shaft on which there is mounted an elongated arm referred to as a "sensor arm." . . . The distance between the header and the ground is called the "operating height." . . . When the operating height changes due to a variation in ground contour, the sensor arm rotates the sensor shaft in one direction if the sensed operating height increases and in a counter direction if the operating height decreases. A closed-loop control system on the combine then raises or lowers the header accordingly to effect the operating height previously set by the operator. (Col. 1, ll. 13-30, emphasis added). B. Figures 1 and 2 are specifically indicated as being prior art (col. 2, ll. 42-48). C. In the discussion of the prior art shown in Figures 1 and 2, the '333 patent states: The snout 14 operates at a predetermined height above the ground which is referred to as the "operating height" and is Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 12 illustrated by the arrow 18 in FIG. 2. The operating height is set and may be adjusted by the operator. The combine is equipped with a closed-loop feedback system, to be described below, which maintains the operating height at the level set by the operator. If a ground rise (i.e., an increased slope or a bump) is encountered, it is sensed by counterclockwise rotation of a sensor arm 16, and the control system raises the header 13 and snout 14 (i.e., the platform) so that the operating height adjusts to that set by the operator. Conversely, if a recess or depression or lowering slope is encountered in the ground, it is sensed by clockwise rotation of the sensor arm 16, and the control system lowers the header 13 and the snout 14 to adjust the operating height 18 to that set by the operator. . . . Still referring to FIG. 1, beneath the forward portion of the snout 14, sensor arm 16 is mounted to a sensor shaft 17. (Col. 3, ll. 34-49; col. 4, ll. 1-5; Figs. 1 and 2, emphasis added). 2. A. UK Patent No. 1,471,9713 discloses an improvement for a combine harvester. Figure 1 of UK '971 is reproduced below. Figure 1 of UK '971 reproduced above shows a side view of a mowing table 1 with the ground surface sensing apparatus 7 with a 3 Published April 27, 1977; hereinafter "UK '971." Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 13 curved sensing element 8 having a hub 9 to allow pivoting thereof about a bearing pin 10 (pg. 2, ll. 58-61, 90-104; Fig. 1). B. UK '971 discloses that the operating height of the platform is set via "a height adjustment arrangement 12 for adjusting the cutting height h of the mowing table" (Pg. 2, ll. 110-113). 3. German Patent No. 72,6244 discloses a device for maintaining a working height of tools of agricultural machines. Figure 1 of DD '624 is reproduced below. Figure 1 of DD '624 reproduced above shows a side view of a curved sensor 1 with a switching device 13, the setpoint of which can be adjusted via a Bowden cable (pg. 3, ll. 7-9, 24; pg. 4; Fig. 1). 4 Published April 20, 1970; hereinafter "DD '624"; citations to English translation of record. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 14 4. A. German Patent No. 14,3145 discloses a height control for cutter bars. Figure 2 of DD '314 is reproduced below. Figure 2 of DD '314 reproduced above shows a side view of the height control including curved feeler gauge 2 on angle lever 6, and switch 10 held by a spring-loaded plunger pin 14 (pg. 2, ll. 30, 34-38; pg. 3, Â¶ 1; Fig. 2). B. DD '314 also discloses that control system utilizes height adjustable feeler gauges (i.e., sensor arms), switch 10 and plunger pin 14 to "set distance to the ground" at a center position from which raising and lowering of the lifting device is triggered (pg. 2, Â¶Â¶ 1, 5, 6; pg. 3, Â¶Â¶ 1, 3). 5 Published January 20, 1958; hereinafter "DD '314"; citations to English translation of record. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 15 5. U.S. Patent No. 4,738,0366 discloses a peat harvester with automatically adjustable suction heads. Figure 8 of US '036 is reproduced below. Figure 8 of US '036 reproduced above shows a detailed view of a sensing means including a curved sensing bar 135, metal detecting sensors 141, 143 mounted on a slidable support arm 117 (col. 2, l. 64; col. 4, ll. 33- 40; Fig. 8). 6 Issued to Belanger on April 19, 1988; hereinafter "US '036." Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 16 6. A. U.S. Patent No. 4,147,0167 discloses a harvester having a height adjustable head. Figure 4 of US '016 is reproduced below. Figure 4 of US '016 reproduced above shows a side view of the cotton stripper 10 having a head 16 with a curved height sensor 38 mounted to a member 170 (col. 3, ll. 58-60; col. 4, ll. 14-17, 37-40; col. 7, ll. 7-15). B. US '016 discloses a curved sensors 37, 38 that are used to operate cylinders 110, 112 to allow for twisting motion of the head 16 having an array of fingers 36 (col. 4, ll. 31-40; col. 5, ll. 58-65; col. 7, ll. 1-6; col. 8, ll. 27-33, 34-47; Fig. 4). C. US '016 discloses that cylinders 220 and beam 218 are used "to determine the initial nominal height of the head 16 and its included array of fingers." (Col. 8, ll. 3-14, 20-27). 7 Issued to Jensen et al. on April 3, 1979; hereinafter "US '016." Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 17 7. A. U.S. Patent No. 4,437,2958 discloses an automatic header height control apparatus for a combine, the apparatus including a ground engaging finger 16 disposed on shaft 18, and a position sensing rotary potentiometer 24 (Abst.; col. 4, ll. 16-29; Figs. 1 and 2). B. US '295 discloses that the apparatus comprises: a potentiometer for sensing the height of the header above ground, a potentiometer for selecting a desired height of the header above ground, and a multifunction electrical circuit coupled to the sensing potentiometer and the selecting potentiometer. The circuit is capable of (a) determining the difference error between the selected height and the sensed height, (b) determining the direction of the difference error, up or down, (c) generating an electrical correction pulse having a duty cycle directly related to the amount of difference error, (d) supplying the electrical correction pulse to the solenoid operated valving means to cause same to supply and/or relieve a pulse of pressurized fluid to the mechanism for raising or lowering the header and (e) repeatedly determining the difference error and direction of the difference error, and cyclically generating correction pulses and supplying the correction pulses to the solenoid operated valving means to move the header in intermittent pulses toward the selected height, thereby automatically to control the height of the header above ground. (Abst., emphasis added; see also col. 4, ll. 29-38; col. 4, ll. 42- 46; col. 5, ll. 31-38; col. 6, ll. 12-28). C. The US '295 also states: As shown, the ouput [sic] signal or voltage level from the header height sensing potentiometer 24 is supplied to a summing network 52 which also receives a voltage signal determined by the position of the height adjust potentiometer 44 8 Issued to Rock on March 20, 1984; hereinafter "US '295." Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 18 located in the combine cab. This voltage signal is set by rotating a knob 54 connected to a wiper arm 56 (FIG. 3) of the height adjust potentiometer 44. (Col. 4, ll. 42-46, emphasis added; Fig. 2). D. We further adopt the Examiner's factual findings with respect to US '295 as set forth in RAN Â¶ 73c. 8. A. U.S. Patent No. 4,136,5089 discloses a closed-loop combine header height control which includes a cross shaft 33 with feeler bar fingers 34 (Abst.; col. 4, ll. 45-51). B. US '508 discloses: A closed-loop height control for the header of a combine harvester permits adjustment of height setpoint and deadband from the operator's platform without stopping the combine. A variable capacitance is rotated in accordance with minimum clearance between header and ground to generate a continuous electrical header height signal which is compared to a setpoint signal indicative of desired header height to derive a height error signal whose value is at a null level when actual header height is equal to desired height indicated by the setpoint signal and which deviates in both magnitude and direction from the null level as a function of the variation between actual header height and setpoint height. Raise and lower command signals are derived in response to a predetermined deviation of the height error signal in opposite directions respectively from the null level by first and second Schmitt trigger circuits having switching levels which respectively are greater than and less than the null value. (Abst., emphasis added; see also col. 3, 5-23). 9 Issued to Coleman et al. on January 30, 1979; hereinafter "US '508." Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 19 C. US '508 discloses that the height setpoint is set using a potentiometer HS (col. 5, ll. 55-67). D. We further adopt the Examiner's factual findings with respect to US '508 as set forth in RAN Â¶ 73d. 9. During the legal action Metzger v. CNH America LLC, Plaintiff Mr. Leo A. Metzger admitted to the following (hereinafter "Admissions In Litigation" or "AIL"): . . . 3. The items shown in Figs. 1 and 2 of the '333 Patent are prior art to the '333 Patent. (See, e.g., column 2, lines 40- 48, of the '333 Patent). 4. Figs. 1 and 2 of the '333 Patent show a prior art agricultural machine 10 having an adjustable platform 13 supported by the machine 10. (See, e.g., column 2, line 66, to column 3, line 22 of the '333 Patent). 5. The prior art agricultural machine 10 has a control system for setting an operating height 18 of the platform 13 relative to the ground G. (See, e.g., Fig. 1 and 2 and column 3, lines 34-49, of the '333 Patent). 6. The control system of the prior art agricultural machine 10 includes a sensor 24 responsive to an angular position of a shaft 17 and generates a signal representative of the operating height 18. (See, e.g. Figs. 1, 2, and 4 and column 4, lines 29-44, of the '333 Patent). 7. The control system of the prior art agricultural machine 10 includes a sensor arm 16 coupled to the shaft 17. (See, e.g., Figs. 1 and 2 and column 4, lines 1-2, of the '333 Patent). Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 20 8. The sensor arm 16 of the control system of the prior art agricultural machine 10 comprises an operating portion for contacting the ground G. (See, e.g., column 4, lines 18- 28, of the '333 Patent). 9. The admitted prior art in the '333 Patent discloses all of the features recited in the following portion of claim 1: "In an agricultural machine having an adjustable platform supported by the machine and a control system for setting an operating height of said platform relative to the ground." 10. The admitted prior art in the '333 Patent discloses all of the features recited in the following portion of claim 1: "said control system including a sensor responsive to an angular position of a shaft and generating a signal representative of said operating height." 11. The admitted prior art in the '333 Patent discloses all of the features recited in the following portion of claim 1: "a sensor arm coupled to said shaft and comprising an operating portion for contacting the ground." 12. Figs. 1 and 2 of the '333 Patent show a prior art agricultural machine 10 having a platform 13 carried by the machine 10. (See, e.g., column 2, line 66, to column 3, line 22 of the '333 Patent). 13. The prior art agricultural machine 10 has a control system for setting an operating height 18 of the platform 13 relative to the ground G. (See, e.g., Fig. 1 and 2 and column 3, lines 34-49, of the '333 Patent). 14. The control system of the prior art agricultural machine 10 includes a sensor mechanism comprising a member 17 rotatable about an axis. (See, e.g. Figs. 1, 2, and 4 and column 4, lines 29-44, of the '333 Patent). Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 21 15. The control system of the prior art agricultural machine 10 includes a sensor arm 16 mounted to the rotatable member 17. (See, e.g., Figs. 1 and 2 and column 4, lines 1-2, of the '333 Patent). 16. The sensor arm 16 of the control system of the prior art agricultural machine 10 includes an operating portion for contacting the ground G. (See, e.g., column 4, lines 18-28, of the '333 Patent). 17. The admitted prior art in the '333 Patent discloses all of the features recited in the following portion of claim 7: "In an agricultural machine having a platform carried by the machine, and a control system for setting an operating height of said platform relative to the ground." 18. The admitted prior art in the '333 Patent discloses all of the features recited in the following portion of claim 7: "said control system including a sensor mechanism comprising a member rotatable about an axis." 19. The admitted prior art in the '333 Patent discloses all of the features recited in the following portion of claim 7: "a sensor arm mounted to said rotatable member and including an operating portion for contacting the ground." . . . ("Defendant's First Set of Requests for Admissions (Nos. 1-303)," June 30, 2005, Request for Admissions Â¶Â¶ 3-19; "Plaintiff's Answer to Defendant's First Set of Requests for Admissions (Nos. 1-303)," July 29, 2005, Â¶Â¶ 3-19). Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 22 I. APPEAL OF THE PATENT OWNER Examiner's Rejections The Examiner's rejections of various claims are as follows: 1. Claims 1-9 under 35 U.S.C. Â§102(b) as anticipated by UK '971. 2. Claims 1-9 under 35 U.S.C. Â§102(b) as anticipated by DD '624. 3. Claims 7-8 under 35 U.S.C Â§102(b) as anticipated by DD '314. 4. Claims 1, 2, 6, 7 and 9 under 35 U.S.C. Â§102(b) as anticipated by US '036. 5. Claims 3-5 and 8 under 35 U.S.C. Â§103(a) as obvious in view of US '036. 6. Claim 7 under 35 U.S.C. Â§102(b) as anticipated by US '016. 7. Claim 8 under 35 U.S.C. Â§103(a) as obvious over US '016. 8. Claims 11-16,10 21, 22, 26 and 27 under 35 U.S.C. Â§112, first paragraph, as failing to comply with the written description requirement. 9. Claims 10-16 and 22-27 under 35 U.S.C. Â§103(a) as obvious over UK '971 in view of APA '33311, US '295 and US '508. 10 The Patent Owner identifies claims 11-21, 22, 26 and 27 as having been rejected by the Examiner as lacking written descriptive support (ABPO 23). The Examiner also states that claims 11-21 are rejected for failing to comply with the written description requirement (RAN Â¶ 62). However, only rejections of claims 11-16 and 21, 22, 26 and 27 appear to be set forth (RAN Â¶Â¶ 63, 68, 113, 115). Moreover, claims 17-20 do not include the limitations discussed infra with respect to Rejection 8 which is considered by the Examiner to lack written descriptive support. Thus, in view of due process considerations, we consider the 35 U.S.C. Â§ 112, first paragraph rejections to be applicable only to claims 11-16, 21, 22, 26 and 27, but not to claims 17- 20. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 23 10. Claims 10-27 under 35 U.S.C. Â§103(a) as obvious over DD '624 in view of APA '33312, US '295 and US '508. 11. Claims 10-23 and 26 under 35 U.S.C. Â§103(a) as obvious over DD '314 in view of APA '33313, US '295 and US '508. 12. Claims 10-21 and 22-27 under 35 U.S.C. Â§103(a) as obvious over US '036 in view of APA '33314, US '295 and US '508. 13. Claims 22-27 under 35 U.S.C. Â§ 305 as enlarging the scope of the claim(s) of the patent being reexamined. 14. Claim 24 under 35 U.S.C. Â§112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which application regards as the invention.15 11 The Patent Owner did not include APA '333 in setting forth this rejection by the Examiner. However, the record is clear that the Examiner specifically refers to, and relies on, APA '333 in the rejection set forth (see RAN Â¶Â¶ 72, 73a, 73e; see also Res. Br. R 21-22). 12 The Patent Owner did not include APA '333 in setting forth this rejection by the Examiner. However, the record is clear that the Examiner specifically refers to, and relies on, APA '333 in the rejection set forth (see RAN Â¶Â¶ 79, 80a, 85b, 87; see also Res. Br. R 22). 13 The Patent Owner did not include APA '333 in setting forth this rejection by the Examiner. However, the record is clear that the Examiner specifically refers to, and relies on, APA '333 in the rejection set forth (see RAN Â¶Â¶ 88, 89a, 94b, 96; see also Res. Br. R 22). 14 The Patent Owner did not include APA '333 in setting forth this rejection by the Examiner. However, the record is clear that the Examiner specifically refers to, and relies on, APA '333 in the rejection set forth (see RAN Â¶Â¶ 97, 98a, 103b, 105; see also Res. Br. R 22). 15 Patent Owner included an additional 'Issue 15' averring that the Examiner improperly "constructively closed all further amendments" and requests reopening of the prosecution (ABPO 4, 26). However, this is a petitionable matter and is not subject to review in this appeal. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 24 Rejection 1: Claims 1-9 Anticipated by UK '971 The Examiner finds UK '971 anticipates these claims because the disclosed sensors (i.e., limit switches 19H, 19S) are responsive to an angular position of a shaft and generate a signal representative of the operating height (RAN Â¶Â¶ 9-19). In this regard, the Examiner finds, inter alia, that broadest reasonable interpretation of "shaft" reads on hub 9 (RAN Â¶ 9a). The Patent Owner argues, inter alia, that construing "shaft" to encompass hub 9 of UK '971 is unreasonable since the hub is merely a pivot point (ABPO 15). We understand this argument to be that the hub 9 of UK '971 is not a shaft. While we agree with the Examiner's construction of the term "shaft," we also agree with the Patent Owner that hub 9 of UK '971 cannot be reasonably characterized as a shaft. In this regard, the hub 9 of UK '971 does not satisfy the Examiner's construction of a shaft in that hub 9 is not "a relatively long member which is supported in such a way that it can rotate about an axis that extends through the lengthwise end points of the shaft." Hub 9 does not rotate about the longitudinal axis of sensing element 8, but rather pivots about the bearing pin 10 (FF 2A). To the extent that the circular part of the hub 9 disembodied from the remaining elongate structure is considered to be the shaft, we observe that the hub 9 cannot be reasonably considered elongate (see Fig. 6) or diminish the fact that it merely pivots about the bearing pin (FF 2A). As also discussed supra, we also do not view the term "shaft" to be functional as argued by the Requester so that any device or element capable of providing a similar function may be considered to be a shaft. Rather, a Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 25 shaft, like many other mechanical devices, is a structural term which is well established in the mechanical arts. Thus, we do not sustain the Examiner's anticipation rejection of claim 1 based on UK '971, and also do not sustain the anticipation rejection of claims 2-6 that depend from claim 1. However, claims 7-9 do not recite a "shaft" but rather, "a member rotatable about an axis" so that meaning of shaft is not at issue. Hence, the hub 9 of UK '971 can accurately and reasonably be found to satisfy this limitation because it is structural member that is rotatable about an axis defined by a bearing pin 10 (FF 2A). The Patent Owner argues that UK '971 also does not disclose a control system "which generates at least two signals representing set and actual height, and compares them to provide an[] adjusted error signal for instructing the mechanical height adjustment mechanism." (ABPO 17). However, contrary to claim 1 which specifically recites that the control system includes a sensor "generating a signal representative of said operating height," claim 7 merely recites "a control system for setting an operating height . . . including a sensor mechanism comprising a member rotatable about an axis." Thus, the Patent Owner's argument is premised on limitations not present in the claim, and improperly construes "control system" to the preferred implementation which utilizes two signals, compares them, and provides an adjusted error signal. We agree with the Requester that the argument of Patent Owner is based on improperly narrow claim construction which reads features of preferred embodiment into the claims (Res. Br. R 18-19). We likewise agree with the Examiner that the system of UK '971 is a control system, and it does disclose a control system which "sets" an Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 26 operating height of the platform via "a height adjustment arrangement 12 for adjusting the cutting height h of the mowing table" (FF 2B). Thus, whereas the system disclosed in UK '971 sets an operating height range, that is, the upper and lower limits of operating heights, it also discloses the a control system that sets an operating height of the platform. Correspondingly, we find no error in the Examiner's rejection with respect to claims 7-9 based on UK '971. Rejection 2: Claims 1-9 Anticipated by DD '624 The Examiner finds that DD '624 anticipates these claims because it discloses shaft 3 and sensor 1 with lever 9, stop lever 7 and switch 13, the switch providing a signal representative of the operating height (RAN Â¶Â¶ 20- 30; see also FF 3). The Patent Owner argues that DD '624 does not anticipate claims 1-6 because, inter alia, "it does not have a closed loopback system which sets [an] operating height. . . . by virtue of a signal representative of the set height." (ABPO 17-18, emphasis added). The Patent Owner argues that the switch 13 of DD '624 "can only adjust the maximum height limit, and does so by mechanically adjusting the physical position of the limit switch," the header being lowered if the switch is actuated (ABPO 18). We agree with the Patent Owner. We fail to see where DD '624 discloses a control system for setting, or capable of setting, an operating height of the platform as required by the rejected claims. Whereas the "setpoint" of the sensor 1 can be adjusted (FF 3), it appears the control system of DD '624 simply allows for adjustment of the upper limit of the Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 27 operating height which differs from the recited setting of the operating height. In our view, one of ordinary skill in the art would understand this limitation to refer to the intended height of cut "set" by the operator, and not the limit thereof (i.e. one boundary of the dead zone). It is unreasonably broad to interpret "setting an operating height of said platform relative to the ground" so as to encompass the maximum operating height, especially in view of the specification of the '333 patent disclosure that it is from the "set" operating height with which the platform is raised or lowered based on changes in the contour of the ground (see, e.g., '333 Patent, col. 1, ll. 5-10; col. 3, ll. 34-49, 55-59; col. 4, ll. 30-58). Thus, in view of the above, we do not sustain the Examiner's anticipation rejection of claim 1 based on DD '624, as well as rejection of claims 2-6 that ultimately depend from claim 1. As to claims 7-9, the Patent Owner relies, inter alia, on the same arguments submitted with respect to independent claim 1 (ABPO 19). Correspondingly, we also do not sustain this anticipation rejection with respect to claims 7-9. Rejection 3: Claims 7-8 Anticipated by DD '314 The Examiner rejects claims 7-8 as anticipated by DD '314 which discloses a sensor mechanism comprising a rotatable member 6 and sensor arm (RAN Â¶Â¶ 35-38; see also FF 4A). The Patent Owner argues that because the sensor mechanism of DD '314 uses a notched switch 10, it is not a closed loop feedback control system in that it "does not set the desired height by generating a signal representative of the desired height for Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 28 comparison against a signal representative of the operating height." (ABPO 19). We are not persuaded by the Patent Owner's argument. Claim 7 does not recite the generation of a signal representative of the operating height, much less require comparison thereof to a set height. DD '314 discloses that its control system utilizes height adjustable sensor arms, switch 10 and plunger pin 14 to "set distance to the ground" at a center position from which raising and lowering of the lifting device is triggered (FF 4A-4B). Thus, because DD '314 satisfies the limitations recited in claims argued as being absent, we sustain the Examiner's anticipation rejection of claims 7-8. Rejection 4: Claims 1, 2, 6, 7 and 9 Anticipated by US '036 The Examiner finds that these claims are anticipated by US '036 which discloses sensors 141, 143 responsive to the angular position of carrying rod 113 (i.e., shaft) having a sensor arm 135 (RAN Â¶Â¶ 40-43; see also FF 5). With respect to claims 1, 2 and 6, the Patent Owner's arguments are similar to those presented with respect to Rejection 1. The Patent Owner specifically argues that the described system is "incapable of maintaining a specified set height, but rather controls the height within a defined range" using magnetic switches (metal detecting sensors 141, 143) that generate error signals when the height is out of the desired range (ABPO 20). The Patent Owner argues that there is no signal for a set operating height or a sensor for generating signal of the actual operating height which can be compared to the set operating height signal required for closed loop feedback control system (ABPO 20). Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 29 While we observe that the slidable support arm 117 allows setting of an operating height (FF 5), we agree with the Patent Owner that there is no sensor that generates "a signal representative of said operating height" as recited in independent claim 1. In this regard, "said operating height" refers directly to the earlier recitation "an operating height of said platform relative to the ground" which is "set[]" by the control system. The sensors 141 and 143 set the upper and lower limits of the operating height which differ from the recited setting of the operating height. Correspondingly, we do not sustain the Examiner's rejection of claim 1 as anticipated by US '036, as well as claims 2 and 6 that depend from claim 1. As to claims 7 and 9, the Patent Owner relies on the same arguments submitted with respect to independent claim 1 (ABPO 21). However, independent claim 7 does not recite the generation of a signal. As discussed supra, the control system disclosed in US '036 allows for setting of the operating height via the support arm 117. Correspondingly, we sustain the Examiner's anticipation rejection of claims 7 and 9. Rejection 5: Claims 3-5 and 8 Obvious Over US '036 Dependent claims 3-5 and 8 are directed to the shape of the sensor arm. The Examiner concludes that these claims are obvious because the specific shape is a design choice absent evidence of new or unexpected results (RAN Â¶Â¶ 46-51). The Patent Owner merely relies on the dependencies from either claim 1 or 7 for patentability (ABPO 21). The Examiner's rejection does not address the deficiency of US '036 with respect to independent claim 1 as discussed supra. Correspondingly, we do not Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 30 sustain this rejection with respect to claims 3-5. However, as also discussed supra, we discern no error with respect to the Examiner's rejection of independent claim 7, and thus, the rejection of claim 8 which depends from claim 7 is sustained. Rejection 6: Claim 7 Anticipated by US '016 The Examiner finds that US '016 anticipates claim 7 because it discloses a sensor mechanism comprising a rotatable member 170 and sensor arm 174 (RAN Â¶Â¶ 53-56; see also FF 6A). The Examiner observes that there is no requirement that the control system generates a "signal which has a value proportional to operating height" which is compared to a set point signal (RAN Â¶ 56). The Patent Owner argues, inter alia, that the control system of US '016 "does not have a closed loopback system that sets an operating height signal." (ABPO 21). We agree with the Patent Owner. Whereas US '016 discloses a curved sensors 37, 38 that are used to operate cylinders 110, 112 to allow for twisting motion of the head 16 having an array of fingers 36 (FF 6B), the disclosure is also clear that cylinders 220 and beam 218 are used "to determine the initial nominal height of the head 16 and its included array of fingers." (FF 6C). Hence, the operating height is actually set by a different control system which includes a hydraulic cylinder 220 and arm 218. In our view, the described fine adjustment in the position of the head 16 as attained by the control system having the curved sensors 37, 38 relied upon by the Examiner is not the same as "setting an operating height of said platform Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 31 relative to the ground" as recited in claim 7. Correspondingly, we do not sustain this anticipation rejection of claim 7 based on US '016. Rejection 7: Claim 8 Obvious Over US '016 The Examiner concluded that claim 8 directed to the shape of the sensor arm is an obvious design choice in view of US '016 since no evidence of any new or unexpected results flowing from the specific shape recited in claim (RAN Â¶57). The Patent Owner relies on dependency from claim 7 for patentability of claim 8 (ABPO 22). The Examiner's rejection does not address the deficiency of US '016 with respect to independent claim 7 as discussed supra. Correspondingly, we do not sustain this rejection with respect to claim 8. Rejection 8: Claims 11-16, 21, 22, 24, 26 and 2716 Under 35 U.S.C. Â§112, First Paragraph The Examiner rejects claims 11-16 maintaining a rejection set forth in the ACP which states that that the recitation "horizontal distance" and the recited relationship to changes in the magnitude of the angular rotation is not supported by the Specification of the '333 patent which only "describes the relationship between the sensor lever arm (the distance between the axis of rotation and the point of ground contact) and response time and the magnitude of response." (RAN Â¶ 63; ACP Â¶ 64). The Patent Owner disagrees and refers to portions of the Specification of the '333 patent and 16 See Footnote 8 supra. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 32 Figure 3 as establishing written description (ABPO 23, citing col. 1, ll. 42- 56). We agree with the Examiner. As the Patent Owner asserted, the cited portion of the Specification describes moving the contact point with the ground "toward a vertical plane passing through the center of sensor shaft, as the operating height decreases." (Col. 3, ll. 42-56). However, the portion of the Specification is also clear that it is the resultant "shorter lever arm for the sensor" which "results in a quicker response as well as proportionately greater magnitude of response when the operating height is set at smaller values." (Col. 3, ll. 53-56). Whereas various figures in the Specification illustrate the pertinent "horizontal distance" (see Figs. 3, 6, 7), the context of the benefit of reducing this horizontal distance is the fact that the sensor arm contacts the ground at a point that is increasingly forward and closer to the forward-most point of the combine header so that "the sensed error occurs closer to real time and results in a reduced latency in the response time." (See col. 1, ll. 62-col. 2, l. 8; see also col. 6, ll. 66-col. 7, l. 10). In this regard, with respect to arrow 73 shown in Figures 6 and 7 that depicts the horizontal distance, the '333 patent specifically states that the horizontal distance is significantly reduced so as to "produce[] a signal to the hydraulic controller in a shorter period of time than the prior art, due to the shortened horizontal distance between the axis of rotation of the sensor shaft and the point of ground contact." (Col. 7, ll. 6-10). Hence, the described benefit with respect to the reduction in "horizontal distance" stems from the reduced latency, and not the increase in "angular rotation of said rotating member" as recited in claim 11 and now Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 33 asserted by the Patent Owner. We agree with the Examiner that there is no adequate description of the claimed correlation between the horizontal distance and increased angular rotation, this benefit being attributed to the reduction in "sensor lever arm" which is the distance between the axis of rotation and the ground contact point, and differs from the claimed "horizontal distance." (See col. 1, ll. 53-56; col. 2, ll. 9-25). The Patent Owner appears to have confused the causal relationship of the two distinctly described benefits of the invention which are based on 1) reducing the horizontal distance so as to move the ground contact point forward; and 2) shortening the lever arm so as to increase the angular rotation of the sensor arm as the operating height is reduced. The Patent Owner does not direct us to where the '333 patent establishes the correlation between the horizontal distance and the increased angular rotation so as to demonstrate possession of the subject matter as now claimed. Thus, the rejection of claims 11-16 is sustained. Whereas the Patent Owner submits arguments stating that the Examiner rejects claims 14 and 18 based on the "proportional" language in these claims (ABPO 23), this does not appear to be the case. The Examiner disagrees with the Requester's position as to lack of descriptive support stating that "[t]he language added by this amendment comes right from the specification at col. 4, ll. 41-43." (RAN Â¶ 67). Thus, the Patent Owner's argument specifically with respect to the "proportional" language of claim 14 and 18 is moot. The Examiner also rejected claim 21 as lacking descriptive support, inter alia, for the limitation "a second control system is provided for Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 34 controlling the lateral altitude of the platform." (RAN Â¶ 68). The Patent Owner does not proffer any persuasive argument or direct us to any portion of the Specification of the '333 patent to establish descriptive support. Nor is it apparent to us where the '333 patent discloses such a "second control system." Thus, the rejection of claim 21 is sustained. With respect to claim 22, the Examiner states that there is lack of support for the control signal being proportional to the actual operating height (RAN Â¶ 115). However, this rejection appears to be inconsistent with the Examiner's position with respect to claims 14 and 18 discussed supra in which the Examiner, citing to column 4, lines 41-43, found descriptive support for this limitation. Thus, the rejection of claim 22 appears to be an oversight and not sustained. In addition, as to claim 26, the Examiner also states that the '333 patent does not provide support for the limitation "an electronic position sensor which continuously detects an angular position of the rotatable member and responsive to the detected position[,] continuously generates a second signal representative of the detected angular position and actual operating height of the platform." (RAN Â¶ 115). The Patent Owner does not proffer any persuasive argument or direct us to any portion of the Specification of the '333 patent to establish descriptive support. Correspondingly, we sustain the Examiner's rejection of claim 26. Claim 27 depends from claim 26, and thus, the same rejection applies. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 35 Rejection 9: Claims 10-16 and 22-27 Obvious Over UK '971 In View of APA '333, US '295 and US '508 The Examiner rejects these claims as obvious stating that UK '971 discloses the claimed invention except for the control system including a means for providing a first signal, sensing angular position, providing second signal, comparing the signals and generating an error signal (RAN Â¶Â¶ 72-78 and 120-121e; see also FF 2A). The Examiner states that APA '333 discloses "the corresponding structure for the means-plus-function limitations." (RAN Â¶ 73a, 73b; see also FF 1A-1C). The Examiner also finds that both US '295 and US '508 disclose control systems that satisfy the recited means-plus-function limitations (RAN Â¶Â¶ 73c, 73d). The Examiner states that "[c]onsidered together, the admitted prior art, US '295, and US '508 demonstrate that there was a recognition in the art that the use of close- loop feedback control systems using completely electrical/electronic controls was desirable so that an operator could control the machinery without leaving his/her cab." (RAN Â¶ 73e). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to provide the harvester of UK '971 with such a control system "so that an operator can control the harvester without leaving his/her cab and the operator can control the power means based upon a continuous signal." (RAN Â¶ 73e). We find no error in the Examiner's fact finding or conclusion with respect to obviousness. We dispense with the Patent Owner's arguments as follows. The Patent Owner argues that US '295 and US '508 "do not electronically set the height of the platform then adjust the height . . . using a signal representative or proportional to actual operating height of the Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 36 platform." (ABPO 24). This argument is without merit because US '295 discloses "selecting a desired height" by rotating the potentiometer 44 as well as a sensing potentiometer for sensing the height of the header above the ground (FF 7B-7D). US '508 similarly discloses a "height setpoint" that is set using a potentiometer HS (FF 8B-8D). Further, the Patent Owner does not even address the fact that the APA '333 already concedes that a control system having the pertinent limitations is known in the art (FF 1A-1C). The Patent Owner further argues that neither US '295 nor US '508 generate a signal that is larger due to reduced length of the lever arm when the height is reduced (ABPO 24). However, the Patent Owner appears to be analyzing the prior art references separately whereas non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). The reduction in the length of the lever arm is attributable to the configuration of the sensor arm and the Examiner is relying on the combine harvester of UK '971 which includes a sensor arm (FF 2A) that is shaped like that disclosed in the '333 patent so that the length of the lever arm would also be reduced when the height is reduced. The Examiner, in the obviousness rejection, is updating the control system therein with that disclosed US '295 and US '508. The Patent Owner asserts that the claimed curved sensor arm "would do nothing to increase sensitivity and responsiveness" in "the very mechanical set up of the '508 patent" (ABPO 24-25), but again, the Patent Owner's argument is misdirected because it is the electronic control system Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 37 teachings of US '508 that is being applied to the system of UK '971. The Patent Owner further argues that "[t]he electronics of the '295 patent are not designed to monitor the angular position of a shaft" because the movement is linearly transmitted through a cable (ABPO 25). However, this argument is unpersuasive in that these claims recite "a sensor mechanism comprising a member rotatable about an axis" rather than a shaft, and US '295 nonetheless discloses a potentiometer for sensing the height of the header which would be capable of monitoring an angular position of a shaft (FF 7A, 7B). Furthermore, APA '333 establishes that a control system having "an electrical sensor coupled to a rotatable sensor shaft" was known in the art (FF 1A), this fact being entirely overlooked and unaddressed by the Patent Owner (see also Res. Br. R 21-22). Thus, in view of the above, we are not persuaded that the Examiner erred in rejecting claims 10-16 and 22-27 as obvious over UK '971 in view of APA '333, US '295 and US '508, and we sustain the rejection. Rejections 10-12: Obviousness Over DD '624, DD '314 or US '036 In View of APA '333, US '295 and US '508 The Examiner's Rejections 10-12 based on the combination of one of DD '624, DD '314 or US '036, in view APA '333, US '295 and US '508 are substantially similar to that set forth in Rejection 9 discussed supra (RAN Â¶Â¶ 79-106 and 122-124d; see also FF 3-5). The Patent Owner relies on the same arguments submitted with respect to Rejection 9 to contend that these rejections should be reversed (ABPO 25). Hence, because the Patent Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 38 Owner's arguments relied upon are unpersuasive as already discussed with respect to Rejection 9, we sustain Rejections 10-12. Rejection 13: Claims 22-27 under 35 U.S.C. Â§ 305 The Examiner states that claims 22-27 are rejected for enlarging the scope of the claims of the '333 patent (RAN Â¶Â¶ 108). The new claims having the limitation directed to the sensor arm requiring decreasing distance between the axis of the rotatable member and the contact point "at lower actual operating heights" was rejected by the Examiner because the new language "describes the relationship of the actual operating height, as opposed to the set operating height of claim 7, to the distance between the rotatable member and the contact point." (RAN Â¶Â¶ 110-110a). The Patent Owner argues that recitation of "actual operating height" further narrows the limitation "operating height" of claim 7 rather than broaden the limitation (ABPO 25-26). The Patent Owner appears to miss the point being made by the Examiner which is that in the context of original claim 7, the pertinent distance is recited as being reduced "when said platform is set at a lower operating height," but claims 22-27 recite reduction in the distance "as the actual operating height of the platform decreases." The pertinent distance is related to the set operating height in claim 7, but is related to actual operating height in the new claims. Thus, we are not persuaded by the Patent Owner's argument and sustain the Examiner's rejection. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 39 Rejection 14: Claim 24 under 35 U.S.C. Â§112, second paragraph The Examiner rejects claim 24 as indefinite for failing to particularly point out and distinctly claim the subject matter due to the language "the rotatable member includes a sensor shaft" which is stated as lacking support in the original disclosure (RAN Â¶Â¶ 114, 117). According to the Examiner, the language "suggests that the sensor shaft is a part of the rotatable member. However, the disclosure only describes a shaft, not a shaft that is part of some other rotating part." (RAN Â¶ 117). Hence, we understand the Examiner's rejection to be that the claim language at issue does not accurately claim the invention as described in the Specification because the language suggests that the sensor shaft is part of the rotatable member. The Patent Owner simply states that "the language is indeed supported by the original disclosure in column 5, line 16 to column 6, line 6 and by the illustration of Figure 5 of the '333 patent." (ABPO 26). We are not persuaded by such a vague and general argument. The Patent Owner does not identify what structure corresponds to the recited "rotatable member" that "includes a sensor shaft," or where such a member is shown in Figure 5. Mere reference to essentially an entire column of the '333 patent and to a figure of the patent is entirely inadequate to establish that the pertinent language "is indeed supported" as asserted. Thus, the rejection of claim 24 is sustained. Orders With Respect to Appeal of the Patent Owner The rejections of the Examiner as appealed by the Patent Owner are AFFIRMED-IN-PART as follows: Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 40 1. A. Rejection of claims 1-6 as anticipated by UK '971 is REVERSED. B. Rejection of claims 7-9 as anticipated by UK '971 is AFFIRMED. 2. Rejection of claims 1-9 as anticipated by DD '624 is REVERSED. 3. Rejection of claims 7-8 as anticipated by DD '314 is AFFIRMED. 4. A. Rejection of claims 1, 2 and 6 as anticipated by US '036 is REVERSED. B. Rejection of claims 7 and 9 as anticipated by US '036 is AFFIRMED. 5. A. Rejection of claims 3-5 as obvious in view of US '036 is REVERSED. B. Rejection of claims 8 as obvious in view of US '036 is AFFIRMED. 6. Rejection of claim 7 as anticipated by US '016 is REVERSED. 7. Rejection of claim 8 as obvious over US '016 is REVERSED. 8. A. Rejection of claims 11-16, 21, 26 and 27 for failure to comply with the written description requirement is AFFIRMED. B. Rejection of claim 22 for failure to comply with the written description requirement is REVERSED. 9. Rejection of claims 10-16 and 22-27 as obvious over UK '971 in view of APA '333, US '295 and US '508 is AFFIRMED. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 41 10. Rejection of claims 10-27 under 35 U.S.C. Â§103(a) as obvious over DD '624 in view of APA '333, US '295 and US '508 is AFFIRMED. 11. Rejection of claims 10-23 and 26 under 35 U.S.C. Â§103(a) as obvious over DD '314 in view of APA '333, US '295 and US '508 is AFFIRMED. 12. Rejection of claims 10-27 under 35 U.S.C. Â§103(a) as obvious over US '036 in view of APA '333, US '295 and US '508 is AFFIRMED. 13. Rejection of claims 22-27 under 35 U.S.C. Â§ 305 as enlarging the scope of the claim(s) of the patent being reexamined is AFFIRMED. 14. Rejection of claim 24 for being indefinite is AFFIRMED. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 42 II. CROSS-APPEAL OF REQUESTER Proposed Rejections Not Adopted The Requester cross-appeals the following proposed rejections that were not adopted by the Examiner during the reexamination proceeding:17 17 The Requester also asserts that the following rejections are cross- appealed: 3. Claims 1-6 and 9 under 35 U.S.C. Â§ 103 as obvious over DD '314 (CABR 21-26). 4. Claims 1 and 2 under 35 U.S.C. Â§ 103 as obvious over US '016 (CABR 33). 5. Claims 3-6 and 9 under 35 U.S.C. Â§ 103 as obvious over US '016 (CABR 34). However, there is no indication that these proposed rejections as now presented in CABR are properly before the Board. The issues of whether Rejection 3 was properly proposed by the Requester, but improperly refused consideration by the Examiner, has been raised in a petition filed by the Requester (July 14, 2009), dismissed by decision of the Director (August 21, 2009), reconsidered under petition for reconsideration filed by the Requester (October 21, 2009), and ultimately denied by decision of the Director (March 19, 2010). As to Rejections 4 and 5, the Requester did not choose to file a petition, or include arguments thereto in the petition of July 14, 2009, to have the Examiner's decision reviewed even though the Requester did so with respect to Rejection 3 and was specifically advised of the deadline for doing so (ACP Â¶ 39i). To the extent that the Requester is again proposing these rejections in the present appeal, such proposals during the appeal stage of the reexamination proceeding is not proper. 37 C.F.R. Â§ 41.67(c)(1)(vi) ("No new ground of rejection can be proposed by a third party requester appellant, unless such ground was withdrawn by the examiner during the prosecution of the proceeding, and the third party requester has not yet had an opportunity to propose it as a third party requester proposed ground of rejection."). Correspondingly, we decline to opine on issues not properly before us. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 43 1. Claims 1-6 and 9 under 35 U.S.C. Â§ 102(b) as anticipated by DD '314. 2. Claims 1 and 2 under 35 U.S.C. Â§ 102(b) as anticipated by US '016. Proposed Rejection 1: Claims 1-6 and 9 as Anticipated by DD '314 The Examiner refused to adopt the Requester's proposed rejection of claims 1-6 and 9 as being anticipated by DD '314 finding that DD '314 lacks a "shaft" which is "a relatively long member which is supported in such a way that it can rotate about an axis that extends through the lengthwise end points of the shaft." (RAN Â¶ 8g). The Examiner found that the angular lever 6 disclosed in DD '314 is not a shaft (RAN Â¶Â¶ 31-34 and 39-39a; see also FF 4A). We agree with the Examiner for the reasons already discussed supra in interpreting the term "shaft." Whereas the Requester argues that a shaft is merely "a structural member which transmits rotary motion" (CABR 11), such a construction is unreasonably broad, encompassing devices such as gears or belts as noted by the Examiner (RAN Â¶ 8j), as well as pulleys. The Requester's reliance on claim 918 to assert that the '333 patent equates a member to a shaft (CABR 15) is unpersuasive as the dispositive issue is that DD '314 lacks a shaft. The mere fact that the lever of DD '315 rotates does not make the lever a shaft. The Requester's assertion that its definition is correct based on the 18 We observe that there is insufficient antecedent basis for the limitation "said shaft" in claim 9. This discrepancy should be addressed in any further prosecution. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 44 original prosecution during which the Examiner applied prior art consistent with its definition, and the Patent Owner's reliance on a different argument for patentability rather than opposing the original Examiner's claim construction (CABR 18; ; see also Reb. Br. R 4) is unpersuasive. The mere fact that the Patent Owner chose a different line of argument to overcome the original Examiner's rejection based on US '016 is insufficient to establish that the Patent Owner agreed with any implied construction that the L- shaped lever of DD '314 is a shaft, especially considering that in US '016, the member is clearly elongate and straight whereas in DD '314 is neither elongate nor straight. In addition, even if the Patent Owner may have assented to the implied construction of original Examiner's construction, this does not make the original Examiner's construction correct. Thus, in view of the above, we sustain the Examiner's refusal to adopt the proposed rejection of claims 1-6 and 9 as anticipated by DD '314. Proposed Rejection 2: Claims 1 and 2 as Anticipated by US '016 The Examiner refused to adopt the Requester's proposed rejection of claims 1 and 2 as being anticipated by US '016 based on the finding that, inter alia, US '016 also lacks a shaft. The Examiner finds that "the elongate member cannot be considered a shaft" since it is not supported "in such a way that it can rotate about an axis that extends through the lengthwise end points of the shaft." (RAN Â¶ 52b). The Patent Owner agrees with the Examiner's analysis and argues that the elongated member 170 is not a shaft (Res. Br. PO 15-16). Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 45 The Requester's arguments are similar to those discussed supra with respect to Proposed Rejection 1 (CABR 26-27) and we find them unpersuasive for reasons similar to those already discussed. The elongated member 170 disclosed in US '016 is an L-shaped bracket or U-shaped channel and is not a shaft. The Requester's claim construction is unreasonably broad and we find no error in the Examiner's refusal to adopt the proposed rejection. The Requester's further arguments with respect to setting an operating height of the platform (CABR 29) are moot. Order With Respect to the Cross-Appeal of the Requester 1. The Examiner's refusal to adopt the proposed rejection of claims 1-6 and 9 as anticipated by DD '314 is AFFIRMED. 2. The Examiner's refusal to adopt the proposed rejection of claims 1 and 2 as anticipated by US '016 is AFFIRMED. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 46 III. NEW GROUNDS OF REJECTION All of the Examiner's rejections with respect to the original claims 1-6 stand reversed. The remaining claims 7-27 stand rejected with respect to at least one ground of rejection. The specification of the issued '333 patent was principally focused on the shape of the sensor arm (see Title, Abstract, Figs. 3, 5-8 and discussions in the Specification pertaining thereto). The Requester's reexamination request as well as the Examiner's rejections were principally based on prior art that discloses the shape of the sensor arm. In view of the cited prior art and the admissions of record, we enter the following new grounds of rejection based on our authority under 37 C.F.R. Â§ 41.77(b). Rejection 1: Claims 1-9 are rejected under 35 U.S.C. Â§ 103(b) as obvious over APA (Admitted Prior Art) and AIL (Admissions In Litigation), in view of one of UK '971 or DD '314 APA and AIL establishes that prior art agricultural machines were known to have an adjustable platform, a closed-loop feedback control system for setting and adjusting the operating height of the platform, the control system including a sensor responsive to an angular position of a shaft which includes a curved sensor arm coupled thereto, and generating a signal representative of the operating height (FF 1A-1C and 9). The only aspect of these claims not admitted as being prior art pertains to the specific shape and function of the sensor arm. Each of UK '971 and DD '314 discloses an agricultural machine having a sensor arm that is shaped substantially the same as the sensor arm Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 47 claimed and disclosed in the specification of the '333 patent (compare FF 2A, 4A with Specification of '333 patent, Figures 5, 6). The sensor arms of UK '971 or DD '314 would function in the manner recited in the claims by virtue of their shape when implemented on an agricultural machine admitted to be prior art. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product."); see also In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)("where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on."). In our view, it would have been obvious to one of ordinary skill in the art to implement the agricultural machine admitted to be prior art in APA and AIL by utilizing one of the known sensor arms of UK '971 or DD '314. The claimed invention merely substitutes the admitted prior art sensor arm with a sensor arm also well known in the art to yield predictable results. KSR, 550 U.S. at 416 ("when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."). Hence, the claimed invention is a predictable variation, Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 48 merely using a prior art element according to its established function which would have been obvious to one of ordinary skill in the art who is a person of ordinary creativity. Id. at 417, 421 ("[i]f a person of ordinary skill can implement a predictable variation, Â§103 likely bars its patentability," and "a person of ordinary skill is also a person of ordinary creativity, not an automaton."). In addition, the known sensor arms of UK '971 and DD '314 represent identified, predictable solutions for providing a sensor arm that tracks the ground surface in an agricultural machine, and it would have been obvious to a person of ordinary skill in the art to consider and try such known sensor arms in the admitted prior art agricultural machine. Id. at 421 (when there are a finite number of identified, predictable solutions, "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp."). Rejection 2: Claims 10-27 are rejected under 35 U.S.C. Â§ 103(b) as obvious over APA and AIL, in view of one of UK '971 or DD '314, and in further view of one of US '295 or US '508 In entering a new ground of rejection for these claims, we rely on and incorporate the analysis set forth supra relative to Rejection 1. These claims differ from claims 1-9 in that although the independent claims 10, 17, 22 and 26 utilize varying language, they require the closed loop feedback control system to provide a first signal, a second signal, comparing the signals and generating an error signal. It is not clear from the record that such limitations with respect to the control system are satisfied by the admitted prior art agricultural machine. Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 49 However, such a closed loop feedback control system for agricultural machines is well known in the art as evidenced by US '295 and US '508 (FF 7A-8D). It would have been obvious to one of ordinary skill in the art to implement the closed loop control system admitted to be known (FF 1, 9) based on known closed loop feedback control systems in the same art. To any extent that the admitted prior art control system differs from that claimed, the claimed invention merely substitutes the admitted prior art control system with a control system also well known in the art to yield predictable results. KSR, 550 U.S. at 416. Hence, the claimed invention is merely a predictable variation that uses a prior art control system according to its established function which would have been obvious to one of ordinary skill in the art who is a person of ordinary creativity. Id. at 417, 421. In addition, claims 17, 22 and 26 differ from claims 1-9 in reciting that the horizontal distance or the lever arm distance decreases as the actual operating height of said platform is decreased. These recited functional results stem from the shape of the sensor arm so that the recited function is also attained, and inherent to, the prior art sensor arms disclosed in UK '971 or DD '314 by virtue of their shape which is substantially the same as the sensor arm claimed and disclosed in the specification of the '333 patent (compare FF 2A, 4A with Specification of '333 patent, Figures 5, 6). See In re Best, 562 F.2d 1252, 1255 (CCPA 1977); see also In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Similar analysis applies to dependent claims 11, 15, 16, 19 and 20, and claims depending from claim 11 that recite additional functional result of increased angular rotation stemming from the Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 50 shape of the sensor arm. The recited function is attained and inherent to the prior art sensor arms of UK '971 or DD '314 by virtue of their shape. Dependent claims 12 and 13 recite specific dimensions of the sensor arm. However, size is not ordinarily a patentable feature and the selection of dimensions to ensure that the sensor arm operates properly involves only routine optimization within the skill of those of ordinary skill in the art. See In re Rose, 220 F.2d 459, 463 (CCPA 1955); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346, (Fed. Cir. 1984); In re Boesch, 617 F.2d 272, 276 (CCPA 1980). IV. CONCLUSIONS IN THE APPEAL 1. At least one of the Examiner's rejections of claims 7-27 is AFFIRMED. 2. Each of the Examiner's rejections of claims 1-6 is REVERSED. 3. The Examiner's decision refusing to adopt the proposed rejections of the Requester is AFFIRMED. 4. New Grounds of Rejection are entered with respect to claims 1- 27. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. Â§Â§ 1.956 and 41.77(g). This decision also contains new grounds of rejection pursuant to 37 C.F.R. Â§ 41.77(b) which provides "[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.77(b) also provides that the Patent Owner, WITHIN ONE Appeal 2012-004178 Reexamination Control 95/000,115 Patent US 6,523,333 B2 51 MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. â€¦ (2) Request rehearing. The owner may request that the proceeding be reheard under Â§ 41.79 by the Board upon the same record. â€¦ AFFIRMED-IN-PART; 37 C.F.R. Â§ 41.77(b) ack Patent Owner: ROGER A. GILCREST 250 WEST STREET COLUMBUS, OH 43215-2538 Third Party Requester: MARK BOLAND SUGHRUE MION PLLC 2100 PENNSYLVANIA AVENUE N W, SUITE 800 WASHINGTON, DC 20037