Ex Parte 6991423 et al

Board of Patent Appeals and Interferences

Sep 2, 2010

90008119 (B.P.A.I. Sep. 2, 2010)

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.
90/008,119 07/24/2006 6991423 4705-9 5150
73693 7590 09/02/2010
SIMPLE IP LAW, P.C.
9600 SW OAK STREET.
SUITE 525
TIGARD, OR 97223
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/02/2010 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
____________

Ex parte HOGUE INDUSTRIES LLC
Appellant
____________

Appeal 2009-006020
Reexamination Control 90/008,119
Patent 6,991,423
Technology Center 3900
____________

Before SALLY C. MEDLEY, DANIEL S. SONG and KEN B. BARRETT,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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Hogue Industries LLC (“Hogue”), the owner of the patent under
reexamination, appeals under 35 U.S.C. §§ 134(b) and 306 from a final
Rejection of claims 1-19. We have jurisdiction under 35 U.S.C. §§ 134(b)
and 306. We AFFIRM.
STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte re-examination, filed by Gavin N. Manning (Request for Ex Parte
Reexamination, filed 24 Jul. 2006). The current appeal is related to Appeal
No. 2010-005881, Reexamination Control 90/008,968, Patent No. 7,201,554
which is decided concurrently with the present appeal.
The ‘423 patent issued with 19 claims. Hogue amended claim 1.
The Disclosed Invention
Hogue’s patented invention is related to a machine and method for
stacking lumber into packages. Col. 1, ll. 10-16.
The subject matter of the appealed claims is illustrated by claim 1
(underlining removed), which defines the invention as:
A material stacker, comprising:
a frame;
a plurality of stacking arms arranged along the frame in
complementary pairs;
a plurality of independent, electrically-controlled
horizontal positioners configured to position the stacking arms
in a horizontal relationship with respect to the frame;
an electrically-controlled vertical positioner, separate
from the horizontal positioners, said vertical positioner
configured to position one or more of the stacking arms in a
vertical relationship with respect to the frame;
an electronic control system configured to control the
operation of the stacker using the electrically-controlled
positioners, wherein the electronic control system is configured
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to control the speed, position, and acceleration of the stacking
arms to stack a pre-staged layer of material at high speed by
controlling the horizontal positioners.

The Examiner relies on the following prior art references:
Mason 3,169,646 Feb. 16, 1965
Larson 3,606,310 Sep. 20, 1970
Rysti (“Rysti”) 4,201,506 May 06, 1980
Rysti (“Rysti ‘781”) 4,274,781 Jun. 23, 1981
Johansson 4,290,723 Sep. 22, 1981
Vande Linde 5,613,827 Mar. 25, 1997
Dimion et al. (“Dimion”) 5,964,570 Oct. 12, 1999
Delta Lumber Stacker Application Note (“DLS”) Apr. 07, 1998
Delta Technical Note "Using the RMC Discrete I/O Command Mode"
Nov. 16, 2001
Delta RMC 100 Series Data Sheets Feb. 12, 2001
Hogue relies on a declaration made by inventor Gary Wayne Hogue (“G.W.
Hogue”) in support of secondary considerations for patentability of its
claimed invention. App. Br. 37. Exhibits A-E are attached to the G.W.
Hogue Declaration.
Hogue appeals the following rejections:
1. Claims 1, 2 and 9 under 35 U.S.C. § 102(b) as anticipated by
Johansson;
2. Claims 1-2 under 35 U.S.C. § 103(a) as unpatentable over Rysti in
view of Johansson and DLS;
3. Claims 1-2 and 5-8 under 35 U.S.C. § 103(a) as unpatentable over
DLS in view of Rysti or Johansson;
4. Claims 3-4 under 35 U.S.C. § 103(a) as unpatentable over Rysti in
view of DLS and Larson;
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5. Claims 5-8 under 35 U.S.C. § 103(a) as unpatentable over Rysti or
Johansson in view of DLS or Dimion;
6. Claims 9-12 under 35 U.S.C. § 103(a) as unpatentable over Johansson
in view of DLS;
7. Claims 9-12 under 35 U.S.C. § 103(a) as unpatentable over Dimion in
view of Johansson or DLS;
8. Claims 9-12 under 35 U.S.C. § 103(a) as unpatentable over Mason in
view of DLS and further in view of Larson, Rysti, Van Linde or
Johansson;
9. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over any of: A)
Johansson in view of DLS; B) Dimion in view of Johansson; C)
Mason in view of DLS and further in view of Larson, Rysti, Van
Linde or Johansson; or D) Johansson in view of Rysti or Larson;
10. Claims 14-19 under 35 U.S.C. § 103(a) as unpatentable over Dimion
in view of DLS; and
11. Claims 14-19 under 35 U.S.C. § 103(a) as unpatentable over any of
Rysti, Rysti ‘781 or Johansson in view of DLS.
ANTICIPATION ISSUE
Has the Examiner erred in finding that Johansson describes an
electronic control system configured to control the acceleration of the
stacking arms to stack a pre-staged layer of material?
FINDINGS OF FACT - ANTICIPATION
1. Zero acceleration corresponds to zero rate of change in speed and
occurs when an object is stationary or moving at a constant speed.
2. Non-zero acceleration corresponds to any rate of change in the speed.
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Johansson
3. Johansson describes, referring to Johansson’s figure 3 reproduced
below [numbers from figure 3 inserted], a timber package arranger
that includes two individually movable carrier planes [5], [6] and a
feed conveyor [1] comprising a plurality of chains [2] having pushers
[2a]. Col. 1, l. 59-col. 2, l. 3.
Johansson’s figure 3 is below:

Figure 3 depicts a timber package arranger.
4. The advancing movement of the carrier planes [5], [6] during
assembly of a timber package layer directly from the feed conveyor
[1] can take place continuously or in steps. Col. 3, ll. 26-28.
5. The movement of the carrier planes [5], [6] is controlled by the
control unit in agreement with the speed of the feed conveyor [1]
which can be adjusted as desired by a variator. Col. 1, l. 61-col. 2, l.3;
col. 3, ll. 29-31; claims 4-5.
6. During the phase of cyclic movement in which a timber layer is
assembled directly on a carrier plane from the conveyor [1], the
carrier plane is advanced one step according to at least the width of
the next timber piece to be advanced by the conveyor [1]. Col. 2, ll.
56-65; col. 3, ll. 5-8.
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PRINCIPLES OF LAW – ANTICIPATION
The recitation of a newly discovered function inherently possessed by
the prior art structure does not cause a claim drawn to the newly discovered
function to distinguish over the prior art. In re Swinehart, 439 F.2d 210,
212-213 (CCPA 1971). When the structural limitations are accounted for in
the prior art, the absence of a disclosure related to function does not defeat a
finding of anticipation. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) (“[A] structure [that] will be used to dispense popcorn does not have
patentable weight if the structure is already known, regardless of whether it
has ever been used in any way in connection with popcorn.”).
When the functional limitations are found to be inherent in the prior
art, the burden shifts to the applicant to show that the prior art structure does
not inherently possess the functionally defined limitations of the claimed
invention. Id. at 1478.
ANALYSIS – ANTICIPATION
Independent claim 1 recites: “the electronic control system is
configured to control the . . . acceleration of the stacking arms to stack a pre-
staged layer of material . . . .” Hogue argues that the meaning of control of
the acceleration is too broadly construed. Reply Br. 2-3. Hogue argues that
control of the acceleration refers to control of the amount, rate or ramping of
acceleration and in support of its arguments directs us to portions of its
Specification describing control of the ramping of the acceleration. Reply
Br. 2-3, citing col. 5, l. 67-col. 6, l. 2; col. 6, ll. 14-16.
To the extent that Hogue urges us to interpret the control of
acceleration as control of the amount, rate or ramping of acceleration based
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on one embodiment in its Specification, to the exclusion of another of its
embodiments (i.e., general control of acceleration), we decline to do so.
Claim terms should not be narrowly interpreted to exclude one of the
preferred embodiments. Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d
841, 847 (Fed. Cir. 2006). Rather, the broadest reasonable meaning is
applied to claim terms according to their ordinary usage as they would be
understood by persons of ordinary skill in the art while accounting for
definitions found in the written description. In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). Hogue does not direct us to an explicit definition in
its specification necessitating a narrow meaning for control of acceleration.
We are further unpersuaded by Hogue’s arguments that control of
acceleration is more than simply incidental starts and stops. Reply Br. 3.
The broadest reasonable meaning for control of acceleration includes not
only the control of the amount, rate or ramping of acceleration, as argued by
Hogue, but also includes control of zero acceleration and control of non-zero
acceleration.
Zero acceleration corresponds to zero rate of change in speed which
occurs when an object is either stationary or moving at a constant speed.
Non-zero acceleration corresponds to any rate of change in the speed. When
an object is stopped it has zero acceleration, and when the object starts to
move after being stopped it has non-zero acceleration. Since control of
acceleration includes the control of zero acceleration and non-zero
acceleration, the broadest reasonable meaning for control of acceleration
also includes control of starting and stopping. The broadest reasonable
interpretation rule recognizes that before a patent is granted claims are
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readily amended as part of the examination process and that the applicant
has the opportunity and responsibility to remove any ambiguity in the claim
terms by amending as necessary. In re Bigio, 381 F.3d 1320, 1324 (Fed.
Cir. 2004). This is also the standard for claim interpretation in
reexamination proceedings. See In re Yamamoto, 740 F.2d 1569, 1571 (Fed.
Cir. 1984); see also In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) ("During reexamination, as with original examination,
the PTO must give claims their broadest reasonable construction consistent
with the specification. Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation."). If Hogue intended for control of acceleration to mean
control of the amount, rate or ramping of acceleration, Hogue could have
amended its claims accordingly.
Johansson describes a timber package arranger including two
individually movable carrier planes [5], [6] and feed conveyor [1]
comprising a plurality of chains [2] having pushers [2a]. Col. 1, l. 59-col. 2,
l. 3. The advancing movement of the carrier planes [5], [6] during assembly
of a timber package layer directly from the feed conveyor [1] can take place
continuously or in steps and is controlled by the control unit in agreement
with the speed of the conveyor [1]. Col. 3, ll. 26-31; claims 4-5. More
specifically, Johansson describes that during the phase of cyclic movement
in which a timber layer is assembled directly on a carrier plane from the
conveyor [1], the carrier plane is advanced one step according to at least the
width of the next timber piece to be advanced by the conveyor [1]. Col. 2,
ll. 56-65; col. 3, ll. 5-8.
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Hogue argues that Johansson does not teach controlling or varying the
acceleration of the carrier planes [5], [6] (i.e., stacking arms) because the
electronic control unit is limited to coordinating the speed of the carrier
planes [5], [6] in a direct relationship to the speed of the conveyor belt.
App. Br. 11-12; Reply Br. 3-4.
We are unpersuaded by Hogue’s arguments because Johansson
describes moving the carrier planes in steps corresponding to the width of
the timber pieces which demonstrates that the carrier plane movement (i.e.,
speed) is stopped and started. When Johansson’s carrier plane movement is
stopped and started, the acceleration is controlled or varied from zero
acceleration when the carrier plane movement is stopped to non-zero
acceleration when the carrier plane movement is started.
Hogue also argues that Johansson does not describe a material stacker
that stacks a pre-staged layer of material, but instead the lugged chains [2],
[2a] on the conveyor [1] that push individual pieces of timbers one at a time
onto a layer assembling carrier plane would prevent the apparatus from
stacking a pre-staged layer of material. App. Br. 10-11; Reply Br. 4-5.
Hogue also argues that Johansson does not describe a control unit
programmed in a manner to enable it to stack pre-staged layers of material
since Johansson’s control unit is limited to coordinating the stacker arm and
conveyor belt speed to formulate the layer of lumber. App. Br. 10-11; Reply
Br. 4-5.
The claim recitation of “to stack a pre-staged layer of material . . . .” is
considered intended use, functional language. When the structural
limitations are accounted for in the prior art, the absence of a disclosure
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related to the intended use or function does not defeat the finding of
anticipation. Schreiber, 128 F.3d at 1477. Johansson accounts for all of the
structural limitations, but does not include a disclosure relating to the
function or intended use of stacking a pre-staged layer of material.
When the functional limitations are found to be inherent in the prior
art, the burden shifts to the applicant to show that the prior art structure does
not inherently possess the functionally defined limitations of the apparatus.
Id. at 1478. Johansson’s apparatus would be capable of stacking a pre-
staged layer of material if a set of several timber pieces (i.e., a pre-staged
layer) was conveyed between each of the pushers [2a] instead of the single
timber piece. If pre-staged layers of material were substituted for
Johansson’s single timber pieces, the carrier plane located at the end of the
conveyor [1] would assemble several pre-staged layers and then stack the
pre-staged layers on the package. Since Johansson’s apparatus is capable of
stacking pre-staged layers of material, the functional limitations do not
distinguish from Johansson’s apparatus. Hogue does not sufficiently
demonstrate that the prior art structure is incapable of stacking a pre-staged
layer of material. Specifically, Hogue does not cogently explain: 1) how
Johansson’s lugged chains [2], [2a] (i.e., chains with pushers) would prevent
stacking of a pre-staged layer of material; and 2) how the programming or
configuration of Johansson’s control unit would render the apparatus
incapable of stacking a pre-staged layer of material.
Lastly, Hogue’s arguments that Johansson teaches away from a pre-
staged layer of material (App. Br. 10-11; Reply Br. 4-5) are misplaced
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because whether a reference teaches away is inapplicable to anticipation.
Celeritas Techs, Ltd. v. Rockwell Int’l. Corp., 150 F.3d 1354, 1361 (1998).
For all these reasons, we sustain the Examiner’s rejection of claims 1-
2 and 9 as anticipated by Johansson.
OBVIOUSNESS ISSUE
Has the Examiner erred in determining that the claims are prima facie
obvious over the applied prior art and did the Examiner not accord
appropriate weight to Hogue’s evidence of secondary considerations?
ADDITIONAL FINDINGS OF FACT - OBVIOUSNESS
DLS
7. DLS describes, referring to DLS’ figure reproduced below, a lumber
stacker with a single set of forks that are lifted and extended out over
a stack of lumber at high speed, and then lowered onto the top of the
stack and retracted. P. 1, ¶ 3.
DLS’ figure is below:

DLS’ figure depicts a lumber stacker
8. The forks are mounted on a carriage that is moved back and forth by a
hydraulic cylinder and the forks are raised and lowered by a hydraulic
cylinder mounted on the carriage. P. 2, ¶ 7.
9. All of the hydraulic cylinder positions are controlled by a motion
controller CPU (central processing unit). P. 2, ¶ 8.
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10. The motion controller CPU provides high speed coordinated
movement necessary for maximum stacker feed rates. P. 1, ¶ 2.
11. The fork extention and retraction are done with S curves to smooth the
motion profile. P. 1, ¶ 2, p. 3, ¶ 4.
12. DLS describes an Event Control Table used to coordinate the fork lift
and fork extention axes, including control of velocity and acceleration
parameters. P. 3-4.
Rysti
13. Rysti describes a lumber stacker that transports a layer of lumber from
a lifting location to the top of a stack of lumber being formed. Abs.;
col. 3, ll. 46-62; figs. 1-3.
14. Rysti describes, referring to Rysti’s figures 8 and 9 reproduced below
[numbers from figures 8 and 9 inserted], a lumber stacker including a
central pair of lifting arms [36] and an outer pair of lifting arms [36a],
[36b]. Col. 3, l. 33-col. 4, l. 14; col. 8, l. 56-col. 9, l. 12.
Rysti’s figure 8 is below:

Figure 8 depicts a transverse elevation view of the lumber stacker.
Rysti’s figure 9 is below:
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Figure 9 depicts a plan view of the lumber stacker.
15. Central pair of lifting arms [36] are supported on a central carriage
[68] and moved between extended and retracted positions by the
endless chains [102] and vertically raised and lowered by hydraulic
cylinders [78], [80] that are actuated by mechanical switches. Col. 4,
ll. 34-38; col. 5, ll. 6-15; col. 7, l. 13-col. 8, l. 8; col. 8, ll. 45-55; col.
10, ll. 13-16; fig. 11.
16. Outer lifting arms [36a], [36b] are supported by carriages [122], [124]
and moved between extended and retracted positions by endless
chains [158] and vertically raised and lowered by hydraulic cylinders
[142], [144] that are actuated by mechanical switches. Col. 8, l. 56-
col. 9, l. 48; col. 10, ll. 4-22; fig. 10.
17. Utilizing two pairs of stacking arms makes it possible to form a stack
in approximately half the time required if only one pair of arms were
utilized, and at the same time, the conveyor means can be utilized to
its full potential. Col. 9, l. 49-col. 10, l. 4; col. 10, ll. 23-39.
PRINCIPLES OF LAW – OBVIOUSNESS
The question of obviousness is resolved on the basis of underlying
factual inquiries including: 1) the scope and content of the prior art; 2) any
differences between the claimed subject matter and the prior art; 3) the level
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of skill in the art; and 4) any evidence of secondary considerations, if
present. Graham v. John Deer Co., 383 U.S. 1, 17-18 (1966).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and if that burden is met, the burden shifts to the patent
owner to come forward with evidence or argument in rebuttal. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). Prima facie obviousness can be
rebutted by presenting evidence of secondary considerations and when such
evidence is submitted, all of the evidence must be considered anew. In re
Piasecki, 745 F2d 1468, 1472-1473 (Fed. Cir. 1984). Secondary
considerations include: long-felt but unsolved needs, failure of others,
unexpected results, commercial success, copying, licensing, and praise. In
re Rouffet, 149 F.3d 1350, 1335 (Fed. Cir. 1998); U.S. Surgical Corp. v.
Ethicon, Inc., 103 F.3d 1554, 1565 (Fed. Cir. 1997).
Evidence of secondary considerations, when present, must always be
considered en route to the determination of obviousness. Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). Secondary
considerations are only a part of the “totality of the evidence”; its mere
existence does not control the conclusion of obviousness. Richardson-Vicks
Inc. v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997) (citations omitted).
In order to be accorded substantial weight, there must be a nexus
between the merits of the claimed invention and the evidence of secondary
considerations. Stratoflex, 713 F.2d at 1539; In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996); Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d
1015, 1027 (Fed. Cir. 1985); In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir,
1995). A “nexus” is a legally and factually sufficient connection between
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the objective evidence and the claimed invention such that the objective
evidence should be considered in the determination of obviousness. In re
Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994). The burden of showing that
there is a nexus lies with the patent owner. Id. It is also well settled that
evidence of secondary considerations must be commensurate in scope with
the claims in which the evidence is offered to support. In re Grasselli, 713
F.2d 731, 743 (Fed. Cir. 1983).
“[L]ong-felt need is analyzed as of the date of an articulated identified
problem and evidence of efforts to solve that problem.” Texas Instruments
Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). To
establish a long-felt but unmet need for the claimed invention, the objective
evidence must show that the need was a persistent one that was recognized
by those of ordinary skill in the art. In re Gershon, 372 F.2d 535, 538
(CCPA 1967). The objective evidence must further show that the claimed
invention satisfied the long-felt need that was not previously satisfied by
another. In re Cavanaugh, 436 F.2d 491, 496 (CCPA 1971); Newell
Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988).
ANALYSIS – OBVIOUSNESS
Rejection of claims 1-2 and 5-8 over DLS in view of Rysti or Johansson
Scope and Content of the Prior Art
DLS describes a lumber stacker with a set of forks that are lifted and
extended out over a stack of lumber at high speed, then lowered onto the top
of the stack and then retracted. P. 1, ¶ 3. The forks are mounted on a
carriage that is moved back and forth by a hydraulic cylinder (i.e., a
horizontal positioner) and raised and lowered by a hydraulic cylinder (i.e., a
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vertical positioner) mounted on the carriage. P. 2, ¶ 7. All of the hydraulic
cylinder positions are controlled by a motion controller CPU which provides
high speed coordinated movement necessary for maximum stacker feed
rates. P. 1, ¶ 2; p. 2, ¶ 8. The fork extension and retraction are done with S
curves to smooth the motion profile. P. 1, ¶ 2; p. 3, ¶ 4. The acceleration
and deceleration is controlled during the fork movement. P. 3-4; DLS’
Event Control Table.
Rysti describes a lumber stacking apparatus including a pair of central
lifting arms [36] and an outer pair of lifting arms [36a], [36b]. Col. 3, l. 33-
col. 4, l. 14; col. 8, l. 56-col. 9, l. 12; figs. 8-9. Johansson also describes a
timber package arranger with two individually movable carrier planes [5],
[6]. Col. 1, l. 59-col. 2, l. 3. The Examiner finds that the use of two
stacking arms would provide the advantage of moving more material or
moving lumber at a faster rate than with only one arm. Ans. 5, 6.
Differences Between the Prior Art and the Claimed Invention
The Examiner finds that DLS does not describe using two stacking
arms (i.e., forks). Ans. 4.
Level of Ordinary Skill in the Art
Neither Hogue nor the Examiner has addressed the level of ordinary
skill in the art. A “person of ordinary skill in the art is a hypothetical person
who is presumed to know the relevant prior art.” In re GPAC, 57 F.3d 1573,
1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan
Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). Accordingly, we consider
the cited prior representative of the level of ordinary skill in the art. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
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Prima Facie Case
In view of the underlying factual inquiries discussed before, we
review the prima facie case of obviousness. The Examiner determined that
it would have been obvious to one with ordinary skill in the art at the time
the invention was made to modify DLS’ invention to include two stacking
arms as suggested by either Rysti or Johansson for the advantage of moving
more material or moving lumber at a faster rate than with only one arm.
Ans. 5, 8.
Hogue argues that DLS teaches away from using dual-carriage
stackers (i.e., two stacking arms) because DLS teaches a single carriage
stacking arm, despite the fact that dual carriage stacking arms were known
and used. App. Br. 15. Hogue also argues that Rysti teaches away from
using a plurality of independent, electrically controlled horizontal
positioners because Rysti’s common drive system greatly reduces the power
required for carrying out the operations and provides a simple apparatus that
requires only a small space. App. Br. 15.
Neither DLS’ teaching of using a single carriage stacking arm nor
Rysti’s teaching of using a common drive system constitute a teaching away
because neither reference suggests that any developments based on its
disclosure would be unlikely to produce the objective of Hogue’s invention
(a faster material stacker). See Syntex (U.S.A.) v. Apotex, Inc., 407 F.3d
1371, 1380 (Fed. Cir. 2005). DLS’ and Rysti’s teachings of something
different do not constitute a teaching away. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) ("the prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
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because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed").
Hogue also argues that the references do not provide a teaching,
suggestion or motivation to combine the references, but instead the
obviousness determination was based on hindsight reconstruction. App. Br.
26-27. It is not necessary to find precise teachings in the prior art directed to
the specific subject matter claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). Rather, inferences and creative steps that a person of
ordinary skill in the art would employ can be taken into account. Id.
Nonetheless, the reasoning used for combining the references is supported
by Rysti’s teaching that an arrangement using two pairs of arms makes it
possible to form a lumber stack in approximately half the time which would
be required if only one pair of arms were utilized, while at the same time
utilizing the full potential of the conveyor. Col. 10, ll. 23-39.
We also recognize that any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but is proper so
long as it takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure. In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In this case, the
determination of obviousness is based on the knowledge of one with
ordinary skill in the art, who would have recognized that it would have been
desirable to move more lumber or move lumber at a faster rate. Hogue does
not otherwise argue that the determination of obviousness was based on
knowledge gained only from its disclosure.
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For all of these reasons, the Examiner did not error in determining that
claims 1-2 and 5-8 are prima facie obvious over DLS in view of Rysti or
Johansson.
Rejection of claims 1-2 over Rysti in view of Johansson and DLS
Scope and Content of the Prior Art
Rysti’s central pair of lifting arms [36] and outer pair of lifting arms
[36a], [36b] are vertically raised and lowered by hydraulic cylinders [78],
[80] and [142], [144] that are actuated by several mechanical switches. Col.
3, l. 33-col. 4, l. 14; col. 4, ll. 34-38; col. 5, ll. 6-15; col. 7, ll. 13-54; col. 8, l.
45-col. 9, l. 12; col. 10, ll. 4-22; figs. 10-11. The central pair of lifting arms
[36] and outer lifting arms [36a], [36b] are moved forward and backward
(i.e., horizontally) between extended and retracted positions by way of
endless chains [102] and [158]. Col. 7, l. 55-col. 8, l. 8; col. 8, l. 56-col. 9, l.
48.
Johansson describes controlling the movement of the carrier planes
[5], [6] (i.e., stacking arms) with a control unit. Col. 2, ll. 7-10; col. 3, ll. 27-
32. DLS’ lumber stacker utilizes a motion controller CPU to control the
hydraulic cylinders that move the set of forks. P. 2, ¶¶ 7-8. The Examiner
finds that Johansson and DLS suggest using an electronic control system
which provides the advantage of automating Rysti’s process with precise
control. Ans. 4.
Differences Between the Prior Art and the Claimed Invention
The Examiner finds that Rysti does not describe an electronic control
system. Ans. 4.

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Level of Ordinary Skill in the Art
The cited prior art is representative of the level of ordinary skill in the
art. See Okajima, 261 F.3d at 1355.
Prima Facie Case
The Examiner determined that it would have been obvious to one with
ordinary skill in the art at the time the invention was made to modify Rysti’s
system to include an electronic control system as suggested by Johansson
and DLS for the advantage of automating the process with precise control.
Ans. 5.
Hogue argues that Johansson teaches away from the claimed
invention which requires a pre-staged material layer and a different type of
electronic control since Johansson is directed toward eliminating pre-staged
layers and the electronic control is limited to matching the carrier plane [5],
[6] (i.e., stacker arm) speed to the conveyor speed. App. Br. 15, 27, 29;
Reply Br. 13. Hogue’s arguments are misplaced. As explained before, the
recitation “to stack a pre-staged layer of material . . .” is considered intended
use, functional language. Moreover, Rysti, the primary reference relied
upon in the Examiner’s rejection, describes stacking pre-staged layers of
material. Abs.; col. 3, ll. 46-62; figs. 1-3.
Additionally, Hogue’s arguments that Johansson’s electronic control
is limited to matching the stacking arm speed to the conveyor speed focuses
on the specific teachings of the Johansson reference while entirely ignoring
the electronic control of horizontal positioners described in DLS by its
operation of the carriage. Ans. 6. Hence, Hogue's argument fails in that, in
essence, Hogue argues the references individually and do not take into
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account what the collective teachings of the prior art would have suggested
to one of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981) ("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art"); see also In re Merck, 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Moreover, the use of patents as references is not limited to what
the patentees describe as their own inventions or to the problems with which
they are concerned, as they are a part of the literature and relevant for all
they contain. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citations
omitted).
Hogue’s arguments that utilizing DLS’ S curves in Johansson or Rysti
would not work and is not suggested by the references (App. Br. 27, 29) are
misplaced since the Examiner does not propose utilizing DLS’ S curves for
controlling stacking arm speed and motion in Johansson or Rysti. Rather,
the Examiner determined that it would have been obvious to modify Rysti’s
mechanically controlled system to include an electronic control system as
suggested by Johansson and DLS. Ans. 6.
Hogue’s arguments that the references do not suggest the complex
control needed to provide the claimed interaction between the two
electronically-operated complementary sets of stacking arms (App. Br. 27)
are not commensurate in scope with the claim limitations. Claim 1 does not
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require a controller configured to control the interaction between two
electronically-operated complementary sets of stacking arms.
Hogue’s additional arguments that the references do not provide a
teaching, suggestion or motivation to combine (App. Br. 26-27) are
unpersuasive because it is not necessary to find precise teachings in the prior
art directed to the specific subject matter claimed. KSR, 550 U.S. at 418.
Instead, inferences and creative steps that a person of ordinary skill in the art
would employ can be taken into account. Id. As explained by the Examiner,
at the time the invention was made, one with ordinary skill in the art would
have recognized that utilizing electronic motion control would offer the
advantage of automating the process with precise control. A person of
ordinary skill in the art would have further recognized that utilizing
electronic motion control would improve similar lumber stacking machines
by offering the same advantage of automating the process with precise
control. If a technique has been used to improve one process, and a person
of ordinary skill in the art would recognize that it would improve similar
processes in the same way, using the technique is obvious unless its actual
application is beyond his or her skill. KSR, 550 U.S. at 417. Hogue does
not direct us to objective evidence to demonstrate that applying an electronic
motion controller to Rysti’s mechanically controlled lumber stacker would
have been beyond the skill level of one with ordinary skill in the art.
Hogue’s related argument that hindsight construction was utilized in the
determination of obviousness (App. Br. 26-27) is unpersuasive because
Hogue does not cogently explain how obviousness was based on knowledge
gained only from Hogue’s disclosure.
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Lastly, Hogue’s arguments that the proposed combination would
require extensive structural and control modifications not contemplated by
the references (App. Br. 27) are conclusory and do not offer a meaningful
explanation of the necessity for structural and control modifications.
Argument of counsel cannot take the place of evidence lacking in the record.
Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
For all of these reasons, we conclude that the Examiner has not erred
in determining that claims 1-2 are prima facie obvious over Rysti in view of
Johansson and DLS.
Additional Rejections of Claims 3-19 as Obvious over the Applied Prior Art
Claims 5-8 were rejected as obvious over Rysti or Johansson in view
of DLS or Dimion. Hogue does not specifically address the limitations of
claims 5-8. Instead, Hogue argues that: 1) Dimion does not teach
complimentary-operating stacking arms; and 2) providing an additional set
of horizontally complimentary moving stacking arms to Dimion would
greatly increase the complexity of Dimion’s device. App. Br. 16.
Hogue’s arguments are not commensurate in scope with the claim
language since claim 5 does not recite complimentary-operating or moving
stacking arms. Claim 5 merely requires that the stacking arms are arranged
along the frame in complimentary pairs. Hogue’s arguments also attack the
Dimion reference separately rather than addressing the combination of
references. One cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references.
In re Merck, 800 F.2d at 1097.
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For all these reasons, in addition to those explained supra with respect
to the rejections of claims 1-2, the Examiner did not err in determining that
claims 5-8 are prima facie obvious over Rysti or Johansson in view of DLS
or Dimion.
Claims 3-4 were rejected as obvious over Rysti in view of DLS and
Larson. Hogue does not specifically address the limitations of claims 3-4,
but instead argues that the addition of Larson does not remedy the
deficiencies of the combination of Rysti and DLS. App. Br. 28. For the
same reasons as those explained before addressing the rejections of claims 1-
2, we find no error in the Examiner's determination that claims 3-4 are prima
facie obvious over Rysti in view of DLS and Larson.
Claims 9-12 were rejected as obvious over Johansson in view of DLS;
Dimion in view of Johansson or DLS; and Mason in view of DLS and
further in view of Larson, Rysti, Van Linde or Johansson. Hogue argues
that the rejection of claims 9-12 over Dimion in view of Johansson or DLS
is improper, because Johansson is directed to a different purpose than either
Dimion or DLS (App. Br. 29). The argument is unpersuasive because the
intended purpose of Johansson need not be preserved. See Heck, 699 F.2d at
1333. Hogue’s argument specifically addressing the rejection of claims 9-12
over Johansson in view of DLS are similar to the arguments addressed
before with respect to claims 1-2. Compare App. Br. 29 with App. Br. 27.
For the same reasons as those explained before with respect to claims 1-2
and 5-8, we find no error in the Examiner's determination that claims 9-12
are prima facie obvious over the applied prior art.
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Claims 13-19 were rejected as obvious over various combinations of
the applied prior art. Hogue does not present arguments directed to
limitations of claims 13-19, the deficiencies of the applied prior art, or the
determinations of obviousness. App. Br. 29-30. For the same reasons as
those explained before with respect to claims 1-12, we find no error in the
Examiner's determination that claims 13-19 are prima facie obvious over the
applied prior art.
In conclusion, we find no error in the Examiner's determination that
the subject matter of Hogue’s claims 1-19 is prima facie obvious over the
applied prior art. Since Hogue directs us to arguments and evidence of
secondary considerations to rebut the prima facie case for obviousness, we
now turn to consider the arguments and evidence.
Secondary Considerations
Secondary considerations may include any of the following: long-felt
but unsolved needs, failure of others, unexpected results, commercial
success, copying, licensing, and praise. Hogue argues all of these.
In support of Hogue’s arguments that the claimed invention would not have
been obvious based on secondary considerations, Hogue relies on a
declaration made by inventor G.W. Hogue and “exhibits” A-E attached
thereto. App. Br. 37.
At the outset, Hogue argues that the Examiner improperly ignored,
discounted or dismissed G.W. Hogue’s testimony and the attached exhibits
A-E. App. Br. 16-17, 25; Reply Br. 6-11, 13-16. We disagree that the
Examiner ignored, discounted or dismissed the submitted evidence. The
Examiner did consider the evidence. Final Rejection 19-21; Ans. 16-18. To
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the extent that the Examiner questions the credibility of G.W. Hogue’s
testimony because he is an inventor, there is nothing inherently wrong with
the Examiner doing so. A witness’ interest is important in determining the
weight to be given declaration evidence submitted during ex parte patent
examination. Accord, Pargon Podiatry Lab., Inc. v. KLM Lab., Inc., 984
F.2d 1182, 1191 (Fed. Cir. 1993) (Holding inequitable conduct resulted from
the failure to disclose to the examiner that the declarants who testified
supporting patentability had a significant financial stake in the assignee of the
invention.); Refac Int’l, Ltd. v. Lotus Development Corp., 81 F.3d 1576, 1582
(Fed. Cir. 1996) (holding that applicant committed inequitable conduct in
withholding information on the inventor’s significant prior connections with
the affiants - the prior connection was considered material in deciding the
weight to be given affidavits supporting the patentability of the claims).
Apparent from the Examiner’s actions is that Hogue’s interest in the
outcome of the proceeding was only one of several reasons for not according
substantial weight to the submitted evidence. Final Rejection 19-21; Ans.
16-18. It was not the sole reason. Accordingly, we are not persuaded that
the Examiner ignored G.W. Hogue’s testimony and the exhibits A-E.
We recognize that evidence of secondary considerations must always
be considered en route to the determination of obviousness, but its existence
alone does not control the conclusion of obviousness. Richardson-Vicks,
122 F.3d at 1483. The weight given to evidence of secondary considerations
is dependent upon whether there is a nexus between the merits of the
claimed invention and the evidence offered. Stratoflex, 713 F.2d at 1539.
The claimed invention, as illustrated by claim 1, is a stacker including a
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plurality of stacking arms, a plurality of horizontal positioners, and an
electronic control system configured to control the speed, position, and
acceleration of the stacking arms by controlling the horizontal positioners.
For the reasons that follow, the evidence of nonobviousness that
Hogue directs us to is not entitled to substantial weight because the evidence
factually is not commensurate in scope with the invention claimed by
Hogue.
Long-Felt but Unsolved Need and Failure of Others
Hogue argues that there was a long-felt but unmet need in the industry
for faster stacking rates and a more reliable stacker design and that their
invention solves the long-felt need. App. Br. 17-19; Reply Br. 9-10. In
support of its arguments, Hogue directs our attention to paragraphs 11-17 of
the Declaration of G.W. Hogue who testifies that there was a long-felt but
unmet need for: 1) higher speed lumber stacking equipment, particularly
with a production rate ideally in the range of 24 to 30 cycles per minute
(CPM); and 2) a more reliable stacking system with fewer maintenance
issues and less down-time capable of high rates of production. App. Br. 17-
21, Reply Br. 8-10; Hogue Dec. ¶¶ 11-17.
Hogue also directs our attention to the cited prior art in support of the
argument that there was a long felt need for higher stacking rates. App. Br.
14, 17-18, citing Mason col. 1, ll. 40-47; Larson, col. 1, ll. 60-68; Rysti col.
1, ll. 44-57, col. 2, ll. 13-23; Van Linde col. 1, ll. 49-54 and Dimion col. 1,
ll. 22-23. Although the cited prior art may demonstrate that there was a
general need for faster lumber stackers as early as 1965, Hogue does not
explain, nor direct us to where in the cited prior art there is support for G.W.
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Hogue’s testimony that there was a long-felt need for production rates in the
range of 24 to 30 CPM (cycles per minute) or a long-felt need for a more
reliable stacking system with fewer maintenance issues and less down-time.
See Hogue Dec. ¶¶ 15-17. In addition, Hogue’s arguments and evidence do
not demonstrate that a person of ordinary skill in the art trying to solve the
problem for faster lumber stackers was aware of the prior art cited by the
Examiner. Satisfaction of a long-felt but unresolved need is not evidence of
nonobviousness unless it is shown that widespread efforts of skilled workers
having knowledge of the prior art had failed to find a solution to the
problem. In re Allen, 324 F.2d 993, 997 (CCPA 1963). See also Toledo
Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 356 (1939).
Hogue further argues that others have failed to solve the long felt
need. Specifically, Hogue argues that operating a single arm stacking device
at faster rates and Dube’s dual carriage stacker (Patent No. 6,655,902) failed
to solve the long-felt needs. App. Br. 19-21; Reply Br. 9-10. In support of
its arguments, Hogue directs us to evidence to show that: 1) the speed of
single fork machines could only be increased a limited amount and resulted
in additional maintenance issues and increased down time; and 2) Dube’s
invention failed to perform consistently, had extensive upkeep requirements
and incurred substantial costs in terms of production interruption, equipment
maintenance, parts replacement and down-time. Hogue Dec. ¶¶ 18-30; Ex
E.
The evidence to which Hogue’s directs us is insufficient to show that
the long-felt need for higher speed lumber stacking equipment and a more
reliable stacking system was not previously satisfied by Dube. Objective
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evidence must show that the long-felt need was not previously satisfied by
another. Newell, 864 F.2d at 768. Contrary to Hogue’s arguments, Hogue’s
evidence shows that Dube’s dual carriage stacker invention satisfied the
need for higher speed lumber stackers since G.W. Hogue testifies that
Dube’s “dual stacking arm design helped . . . to increase the speed of lumber
production . . . .” Hogue Dec. ¶ 25. Hogue’s evidence also does not
sufficiently show that Dube failed to satisfy the need for a more reliable
stacking system with fewer maintenance issues and less down-time. G.W.
Hogue’s testimony that Dube’s “dual stacking arm design . . . failed over
time due to its intensive upkeep requirements” and “was found to be both
cost and labor intensive in terms of up-front expense, adjustment,
maintenance, and down time” is not supported by a sufficient factual basis.
Hogue’s evidence does not provide an objective measurement of Dube’s
upkeep requirements, costs and labor. Nor does Hogue’s evidence
demonstrate the levels of upkeep, costs and labor that would be unacceptable
and indicative of a failure to satisfy the need for a more reliable stacker. It
would appear that whether a lumber stacker is deemed to have intensive
upkeep requirements or to be cost and labor intensive will depend on many
situation specific factors such as, for example, the machine operating hours
per day/week/month and the hourly rates of skilled labor providers.
Therefore, Hogue’s evidence is not sufficiently supported by a factual basis.
In addition, the evidence to which Hogue directs us is insufficient to
show that the claimed invention satisfies the long-felt need because it is not
commensurate in scope with the claim limitations. Hogue Dec. ¶¶ 11-31;
Ex’s D, E. For example, in many instances the invention is characterized in
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broad and general terms in the Declarations of G.W. Hogue, and William P.
Bowlin and in the letter from Leo Campbell. Hogue Dec.; Ex’s D- E. The
broad and general characterization of the invention does not enable us to
determine whether it is the claimed invention or an unclaimed embodiment
which is described in the evidence. Although Hogue’s solution to the long-
felt need is more specifically characterized in a few instances, these
characterizations also do not enable us to determine whether it is the claimed
invention that satisfies the long-felt need. For example, Hogue’s solution is
described as “an electronically controlled dual carriage stacker that offers
independent, synchronized positioning and sequencing of opposing sets of
stacking arms.” Hogue Dec. ¶ 31. None of the claims on appeal recite
“independent, synchronized positioning and sequencing of opposing sets of
stacking arms”. The objective evidence must show that the claimed
invention satisfies the long-felt need. Cavanaugh, 436 F.2d at 496
(emphasis added). Hogue does not otherwise direct us to evidence
connecting the merits of the claimed invention (i.e., a stacker including an
electronic control system configured to control the speed, position, and
acceleration of the stacking arms by controlling the horizontal positioners) to
a long-felt but unmet need. Accordingly, Hogue does not meet its burden of
showing a nexus.
Related to the previous arguments, Hogue also argues that the claimed
invention would not have been obvious because the applied prior art
references co-existed for a number of years before Hogue’s invention, yet no
one thought to use its teachings, either alone or in combination, to create the
claimed invention. App. Br. 14, 28-30; Reply Br. 11-12. Without a
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showing of long-felt need or failure of others, the mere passage of time
without the claimed invention cannot substitute for objective evidence of
non-obviousness. In re Khan, 441 F.3d 977, 990-991 (Fed. Cir. 2006)
(citations omitted). Moreover, Hogue’s evidence does not demonstrate that
those skilled in the art were aware of the cited prior art references and the
problems disclosed therein. See Allen, 324 F.2d at 997 (CCPA 1963). See
also Toledo Pressed Steel Co., 307 U.S. at 356.
Unexpected Results
Hogue argues that the invention produced unexpected results. In
support of its arguments, Hogue directs our attention to G.W. Hogue’s
Declaration in which he testifies that unexpected results were produced from
an embodiment of the invention in which the positioning and tracking of
each horizontal and vertical drive system can be determined and controlled
independent from one another, while providing synchronized sequencing
within each set of arms and between one set of arms to the other set of arms
App. Br. 21-22; Reply Br. 13-14, citing Hogue Dec. ¶¶ 42-45. Hogue’s
evidence is not commensurate in scope with the claims because the claimed
invention is not limited to an embodiment in which the positioning and
tracking of each horizontal and vertical drive system can be determined and
controlled independent from one another, while providing synchronized
sequencing.
Hogue also argues that it was unexpected for its invention to exhibit
significant improvements over the prior art and for many mills to use its
invention. App. Br. 22-23. In support of its arguments, Hogue directs our
attention to evidence that describes the invention in broad and general terms,
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e.g. “using this invention . . .” (Hogue Dec. ¶¶ 46-47), which does not
establish a correlation between the alleged significant improvements and the
invention set forth in the claims. We are not provided with evidence as to
what “this invention” refers to, but are essentially asked to rely on the
assertion that a nexus between the improvements and the claims exists.
Hogue does not otherwise direct us to evidence linking the merits of the
claimed invention to evidence of unexpected results. Accordingly, Hogue
does not meet its burden of showing a nexus.
Commercial Success
Hogue argues that its invention has enjoyed commercial success and
in support of its arguments directs our attention to G.W. Hogue’s
Declaration in which he testifies that six machines have been sold by Hogue,
and numerous dual fork stackers using Hogue’s design have been built
and/or sold by other companies. App. Br. 23-24; Reply Br. 14-16; citing
Hogue Dec. ¶¶ 50-61.
The evidence that Hogue directs us to at best provides a general
connection between the alleged commercial success and a broad
characterization of Hogue’s invention; e.g., “our invention”, “our innovative
design”, “dual fork stacker using our technology”, “dual fork stacker using
the technology disclosed and claimed in our ‘423 Patent”. Hogue Dec. ¶¶
50-60. Such broad brush statements are insufficient to link any commercial
success to the claimed invention. To this end, Hogue’s testimony is
conclusory and unsupported by a sufficient factual basis.
Although G.W. Hogue does assert, in one instance that commercial
success is due to a “dual fork stacker having independent, electronically-
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controlled drives for each set of stacker arms” (Hogue Dec. ¶ 61), that
assertion is also not commensurate in scope with the claims. The claims on
appeal do not recite a “dual fork stacker having independent, electronically-
controlled drives for each set of stacker arms.”
Even if Hogue’s evidence does demonstrate a sufficient nexus
between the evidence of sales and the merits of the claimed invention, which
we find that it does not, Hogue’s showing is also deficient because the
evidence Hogue directs us to does not provide an indication of Hogue’s
market share so as to put Hogue’s sales numbers into perspective in the
context of the lumber stacker market and clearly establish commercial
success. “[E]vidence related solely to the number of units sold provides a
very weak showing of commercial success, if any.” Huang, 100 F.3d at 140.
Licensing and Copying
Licensing
Hogue argues that others have licensed its invention. In support of the
argument, Hogue directs our attention to G.W. Hogue’s Declaration in
which he testifies that a business named Carbotech acquired a license from
Hogue and built one embodiment of the dual fork stacker disclosed in
Hogue’s Patent App. Br. 24-25; Reply Br. 10-11; Hogue Dec. ¶¶ 35-36. In
support of G.W. Hogue’s testimony, Hogue directs our attention to a letter
purportedly from Leo Campbell attached as exhibit E to G.W. Hogue’s
Declaration. In the letter, reference is made to an invention built by
Carbotech that is characterized as the “Hogue Dual Fork Stackers . . . with
the positioning and electrical/electronic controls”. Hogue Dec. Ex. E.
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Again, the evidence to which Hogue directs us to is not commensurate
in scope with the claims. The claims on appeal do not recite a dual fork
stacker with positioning and electrical/electronic controls. It is not clear,
based on the record, what Carbotech built and whether the built device is
directed to the claimed invention. Lastly, the evidence to which Hogue
directs us to does not provide the terms of the license agreement or describe
the specific subject matter encompassed by the license agreement.
Copying
Hogue also argues that others have copied its invention. In support of
the argument, Hogue again directs our attention to G.W. Hogue’s
Declaration. He testifies that a business named Mill Tech copied Hogue’s
“innovative design”, built three or four stackers using the technology
disclosed in the ‘423 patent, and advertise a dual fork stacker implementing
Hogue’s invention. App. Br. 24-25; Reply Br. 10-11; Hogue Dec. ¶¶ 52-55;
Ex. A. G. W. Hogue also testifies that a business named Comact (1) built
dual carriage lumber stackers incorporating Hogue’s “innovative design”
and (2) has displayed a copy of Hogue’s “dual fork stacker having
independent electronically- controlled drives for each set of stacker arms” at
a trade show. Hogue Dec. ¶¶ 60-61, Ex’s B-C.
The evidence which Hogue directs our attention to is vague and not
commensurate in scope with the claims. The claims on appeal do not recite
a dual fork stacker having independent electronically-controlled drives for
each set of stacker arms. Moreover, the characterizations such as (1) an
innovative design, (2) a dual fork stacker implementing Hogue’s invention
and (3) a dual carriage lumber stacker incorporating Hogue’s design are all
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broad general assertions which fail to persuasively establish that the
machines built by Mill Tech and Comact incorporate the features of the
Hogue machines which is alleged to correspond to the claimed invention.
Based on the record before us it is unclear whether Mill Tech and Comact
copied Hogue’s invention due to the claimed features of the invention, e.g., a
stacker with an electronic control system configured to control the speed,
position, and acceleration of the stacking arms by controlling the horizontal
positioners.
Accordingly, Hogue does not meet its burden of showing a nexus
between the evidence of licensing and copying and the merits of the claimed
invention.
Industry Praise
Hogue argues that its invention has received praise and recognition in
the industry, directing our attention to paragraphs 62-64 of G.W. Hogue’s
Declaration and exhibits D and E attached thereto. App. Br. 25; Hogue Dec.
¶¶ 62-64, Ex’s. D and E. Exhibit D is a declaration made by William
Bowlin (“Bowlin”). Bowlin characterizes Hogue’s invention as a Dual Fork
Stacker including Dual Fork Stacking Arms, with independent electronic
positioning and controls for each set of arms and independent electronic
control of the speed and acceleration of each set of stacking arms based on
the position of the arms during the course of travel. Hogue Dec. ¶ 63; Ex. D.
Exhibit E is a letter allegedly made in February 2007 by Leo Campbell
(“Campbell”), President of Carbotech. Campbell offers praise but
characterizes Hogue’s invention as a Dual Fork Stacker with positioning and
electrical/electronic controls. Hogue Dec. ¶ 64; Ex. E.
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Hogue’s evidence of industry praise is not commensurate in scope
with the claims since the claims on appeal do not require independent
electronic positioning and controls for each set of arms or independent
electronic control based on the position of the arms during the course of
travel. Campbell’s characterization of Hogue’s invention is also broader
than the claimed invention so as to make uncertain that the device being
referred to by Campbell corresponds to the invention claimed. Based on the
record before us, it has not been established that the industry praise is due to
the merits of the claimed invention. Therefore, Hogue does not meet its
burden of showing a nexus.
Conclusion of Obviousness/Non-Obviousness
We have carefully weighed and evaluated the evidence supporting
obviousness and the objective evidence of non-obviousness provided by
Hogue. Upon careful consideration of the evidence as a whole, and
weighing it anew, the evidence supporting the conclusion of obviousness
outweighs the evidence of non-obviousness. For these reasons, we sustain
all of the rejections of claims 1-19 as obvious over the applied prior art.
DECISION
We AFFIRM the rejection of claims 1-2 and 9 under
35 U.S.C. § 102(b) as anticipated by Johansson.
We AFFIRM the rejections of the following claims under
35 U.S.C. § 103(a) as unpatentable:
Claims 1-2 over Rysti, in view of Johansson and DLS.
Claims 1-2 and 5-8 over DLS in view of Rysti or Johansson.
Claims 3-4 over Rysti in view of DLS and Larson.
Appeal 2009-006020
Reexamination Control 90/008,119
Patent 6,991,423

37
Claims 5-8 over Rysti or Johansson in view of DLS or Dimion
Claims 9-12 over Johansson in view of DLS.
Claims 9-12 over Dimion in view of Johansson or DLS.
Claims 9-12 over Mason in view of DLS and further in view of
Larson, Rysti, Van Linde or Johansson.
Claim 13 over any of: A) Johansson in view of DLS; B) Dimion in
view of Johansson; C) Mason in view of DLS and further in view of Larson,
Rysti, Van Linde or Johansson; or D) Johansson in view of Rysti or Larson.
Claims 14-19 over Dimion in view of DLS.
Claims 14-19 over any of Rysti, Rysti ‘781 or Johansson in view of
DLS.
TIME PERIOD
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

ORDER
AFFIRMED

Appeal 2009-006020
Reexamination Control 90/008,119
Patent 6,991,423

38
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