Ex Parte FOSTER et al

Patent Trial and Appeal Board

Aug 9, 2018

13711653 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/711,653 12/12/2012 Christopher A. FOSTER
26637 7590 08/13/2018
CNH INDUSTRIAL AMERICA LLC
INTELLECTUAL PROPERTY LAW DEPARTMENT
700 STATE STREET
RACINE, WI 53404
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
19955 6345
EXAMINER
MISA,JOAND
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
08/13/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
napatent@cnhind.com
vannette.azarian@cnhind.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER A. FOSTER,
DOUGLAS S. FITZKEE,
JOHN H. POSSELIUS,
MIKE MIELKE
Appeal2017-009568
Application 13/711,653
Technology Center 3600
Before STEVEN D.A. McCARTHY, MICHAEL L. HOELTER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-5, 7-12, 15-18, and 23-26. 2 App. Br. 2. Claims 6, 13, 14, and
1 According to Appellants, "[ t ]he real party in interest is CNH Industrial
America, LLC." App. Br. 2.
2 The set of claims appended to Appellants' Appeal Brief is not the correct
set of claims under review because "as stated in the Advisory action of
3/09/2016 this After Final amendment was not entered." Ans. 3. We,
Appeal2017-009568
Application 13/711,653
19--22 have been canceled. See Amendment mailed July 7, 2015. We have
jurisdiction under 35 U.S.C. § 6(b ). For the reasons explained below, we
AFFIRM-IN-PART the Examiner's rejections.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to an agricultural
harvester and an apparatus which is operable for guiding discharge of a flow
of straw or other crop residue ... onto a processing implement towed behind
the agricultural harvester." Spec. ,r 1. Apparatus claims 1, 17, 23, and 26
are independent. Claim 1 is illustrative of the claimed subject matter and is
reproduced below:
1. An agricultural harvester compnsmg an agricultural
harvester discharge guide configured to guide crop residue
entrained in a volume of air flowing therethrough, the crop
residue entrained in the volume of air having an initial
concentration, the agricultural harvester discharge guide
compnsmg:
a housing having opposed, first and second sides having
corresponding lower ends and a discharge surface spaced from
the lower ends of the first and second sides of the housing by first
and second air discharge ports, respectively, the first and second
sides and the discharge surface defining a discharge opening
configured to direct the crop residue in a discharge direction,
opposite a direction of travel of the agricultural harvester;
a first porous apparatus extending between the lower end
of the first side of the housing and the discharge surface and
positioned in the first discharge port, the first porous apparatus
adapted to allow a first portion of the air to pass therethrough in
a first exhaust direction, substantially perpendicular to the
direction of travel, while discouraging the crop residue from
passing therethrough in the first exhaust direction; and
instead, review the last set of entered claims, which were submitted by
Appellants in an Amendment mailed July 7, 2015.
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Application 13/711,653
a second porous apparatus extending between the lower
end of the second side of the housing and the discharge surface
and positioned in the second discharge port, the second porous
apparatus adapted to allow a second portion of the air to pass
therethrough in a second exhaust direction, substantially
perpendicular to the direction of travel and substantially opposite
the first exhaust direction, while discouraging the crop residue
from passing therethrough in the second exhaust direction;
wherein the first and second porous apparatus are
configured to reduce the volume and velocity of the air flowing
through the discharge opening in the housing, to maintain flow
of the crop residue in the discharge direction as the crop residue
flows through the agricultural harvester discharge guide toward
the discharge opening, and to increase the concentration of the
crop residue entrained in the volume of high velocity air passing
through the discharge opening in the housing.
REFERENCES RELIED ON BY THE EXAMINER
Quick
Anderson
Thagard et al.
Ricketts et al.
us 4,121,778
us 4,711,253
us 5,657,620
US 2012/0208608 Al
REJECTI0NS 3
Oct. 24, 1978
Dec. 8, 1987
Aug. 19, 1997
Aug. 16, 2012
Claims 24 and 25 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention.
Claims 1-5, 15-18, and 23-264 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Ricketts and Anderson.
3 "[T]he Examiner withdraws [35] U.S.C. [§] 112, 1st paragraph rejection of
claims 23 and 26." Ans. 2.
4 First, the Examiner included claims "7-12" in the listing of claims rejected,
but no reason for their rejection under only Ricketts and Anderson is
provided. Final Act. 4. Second, the Examiner listed claims "15-28" rather
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Application 13/711,653
Claims 7-12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ricketts, Anderson, Thagard, and Quick.
ANALYSIS
The Examiner's rejection of claims 24 and 25
as being indefinite
Claims 24 and 25 depend from claim 19, which has been canceled.
See Amendment mailed July 7, 2015. Appellants sought to amend claims 24
and 25 to correct this deficiency (see Amendment dated February 23, 2016),
but, "as stated in the Advisory action of 3/09/2016 this After Final
amendment was not entered." Ans. 3. Because no correction of this claim
dependency is before us for review, we sustain the Examiner's rejection of
claims 24 and 25 as being indefinite.
The Examiner's rejection of claims 1-5, 15-18, and 23-26
as unpatentable over Ricketts and Anderson
Each independent claim on appeal (i.e., claims 1, 17, 23, and 26)
recites first and second "porous apparatus[ es]," each of which is "adapted to
allow ... air to pass therethrough." The Examiner primarily relies on
Ricketts' curtains for disclosing these limitations (Final Act. 4--5; Ans. 4
(both referencing Ricketts ,r 41) ), but relies on Anderson for teaching the
apparatus/curtain being "porous. 5" Final Act. 5; see also Ans. 4. The
Examiner reasons that it would have been obvious "to substitute the flexible
porous curtain of Anderson for the flexible curtain of Ricketts" because this
than claims "15-18." Final Act. 4. We understand both discrepancies to be
inadvertent errors.
5 Ricketts teaches using a "sheet metal or a flexible curtain" (Ricketts ,r 41 ),
but is silent as to its porosity.
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Application 13/711,653
would provide "an alternate discharge guide for assisting in guiding the crop
residue in the desired discharge direction." Final Act. 5.
Appellants also address Paragraph 41 of Ricketts, discussing the
optional use of a curtain, and emphasize where Ricketts teaches, in this
paragraph, that the use of a curtain is "to reduce the amount of air that can
escape to the side." App. Br. 15. Thus, according to Appellants,
"[ r ]eplacing the flexible curtain of Ricketts with a porous curtain would
enable air to escape to the side, thereby changing the principle of operation
of the system of Ricketts." App. Br. 15; see also Reply Br. 2. Hence,
"Ricketts appears to teach away from replacing the flexible curtain with a
porous curtain," through which air can pass. App. Br. 15.
The Examiner explains, instead of leaving Ricketts' discharge outlet
"completely open, Ricketts et al. extends a partial enclosure in the form of a
flexible curtain." Ans. 4. Thus, the substitution of Anderson's canvas
curtain "would therefore not change the principle of operat[ion] of the
system of Ricketts" because there is still "a reduction in the amount of air
escaping to the side, as opposed to leaving the side completely open." Ans.
4. Hence, "Ricketts et al. does not teach away from using a porous curtain
... even if the reduction is less." Ans. 5.
We have been instructed that teaching away requires a reference to
actually criticize, discredit, or otherwise discourage investigation into the
claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
To be clear, Paragraph 41 of Ricketts teaches that a curtain "can optionally
extend about a portion of [the] discharge outlet" and that if a curtain is to
be employed, it is employed "to reduce the amount of air that can escape to
the side." The Examiner, on the other hand, acknowledges that employing
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the proposed "flexible porous curtain will allow portions of the air to pass
therethrough." Final Act. 6; see also Ans. 4 (acknowledging that air will
escape "to the side"). However, intentionally employing a curtain that
permits side air to pass is contrary to Ricketts' teaching of employing a
curtain to reduce side air flow. See Ricketts ,r 41. Appellants contend that
because the Examiner's "substitution would make Ricketts less effective at
reducing airflow, one skilled in the art would not be motivated to make the
substitution." Reply Br. 3.
As indicated above, one skilled in the art, upon reading Ricketts,
would have understood that if there is a desire to reduce side air flow, then
a curtain can be employed to provide such blockage. See Ricketts ,r 41.
Such guidance in Ricketts concerning the reduction of side air flow, in our
estimation, would have discouraged investigation into the use of a curtain
that would have defeated or diminished this stated purpose. In other words,
Ricketts would have been understood by one skilled in the art as
discouraging investigation into the use of a curtain that would, instead,
permit air to flow therethrough.
Accordingly, there is merit to Appellants' contention that Ricketts
"teach[ es] away from replacing the flexible curtain with a porous curtain."
App. Br. 15. Consequently, in view of the above and based on the record
presented, we do not sustain the Examiner's rejection of claims 1-5, 15-18,
and 23-26.
The Examiner's rejection of claims 7-12
as unpatentable over Ricketts, Anderson, Thagard, and Quick
The Examiner's additional reliance on Thagard and Quick as
disclosing the use of chains for deflecting purposes (Final Act. 6-7) does
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not cure the defect of the Examiner's combination of Ricketts and
Anderson addressed above. Accordingly, we likewise do not sustain the
Examiner's rejection of claims 7-12.
DECISION
We affirm the Examiner's rejection of claims 24 and 25 under 35
U.S.C. § 112, second paragraph, as being indefinite.
We reverse the Examiner's art rejections of claims 1-5, 7-12, 15-18,
and 23-26 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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