Ex Parte Glazik et al

Board of Patent Appeals and Interferences

Jun 16, 2009

11508624 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN G. GLAZIK and GARY B. GLAZIK
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Appeal 2009-001626
Application 11/508,624
Technology Center 3600
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Decided:1 June 16, 2009
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Before: WILLIAM F. PATE III, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the
Decided Date shown on this page of the decision. The time period does not
run from the Mail Date (paper delivery) or the Notification Date (electronic
delivery).

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Application 11/508,624

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STATEMENT OF THE CASE 1
The Appellants appeal under 35 U.S.C. § 134 (2002) from the final 2
rejection of claims 24, 25 and 27-31 under 35 U.S.C. § 103(a) (2002) as 3
being unpatentable over Johnston (US 3,261,153, issued Jul. 19, 1966), 4
Hadcock (US 22,235, issued Dec. 7, 1858) and Grashow (US 3,003,149, 5
issued Oct. 3, 1961). Claim 26 is allowed. An oral hearing was held on 6
May 19, 2009. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 7
We AFFIRM. 8
Claim 24 is the sole independent claim on appeal: 9
10
24. A method of repairing a broken 11
harvester reel pickup tine finger, comprising: 12
positioning an elongate hollow finger having 13
a cavity therein opening to at least one end of said 14
hollow finger and extending over at least a portion 15
of the length of the hollow finger so that at least a 16
portion of a remaining portion of the broken finger 17
extends into the cavity; and 18
fastening said elongate hollow finger over 19
said remaining portion of the broken finger when 20
said portion extends into the cavity. 21
22
ISSUES 23
The Appellants do not present any arguments directed against the 24
rejections of dependent claims 25 and 27-31 separate from the arguments 25
directed against the rejection of independent claim 24. Therefore, the 26
Appellants argue claims 24, 25 and 27-31 as a group. Claim 24 is 27
representative of the group. See 37 C.F.R. § 41.37(c)(1)(vii) (2008). 28
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The Appellants argue that Johnston and Hadcock fail to disclose 1
methods for repairing broken harvester reel pickup tine fingers as recited in 2
the preamble of claim 24. (App. Br. 6). The Appellants further contend that 3
Grashow is non-analogous art. (App. Br. 8-9). The Appellants contend that, 4
if Grashow were analogous art, the Examiner has not articulated reasoning 5
sufficient to support the conclusion that one of ordinary skill in the art would 6
have had reason to use the Johnston’s or Hadcock’s structures in a repair 7
method within the scope of claim 24. (Reply Br. 4). 8
This appeal turns on two issues: 9
Have the Appellants shown that the Examiner erred in 10
finding that Grashow is analogous art? 11
Have the Appellants shown that the Examiner failed to 12
articulate reasoning with some rational underpinning sufficient 13
to support the conclusion that the method of repairing a broken 14
harvester reel pickup tine finger recited in claim 24 would have 15
been obvious? 16
17
FINDINGS OF FACT 18
The record supports the following findings of fact (“FF”) by a 19
preponderance of the evidence. 20
1. Johnston discloses a rake bar and a plurality of substantially 21
identical rake teeth secured to the rake bar. (Johnston, col. 2, ll. 7-13). 22
Johnston discloses mounting the rake bar on a self-propelled farm 23
implement. The rake bar delivers undried hay in a windrow to the side and 24
parallel to the path of the vehicle. (Johnston, col. 1, ll. 13-18). Delivering 25
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the undried hay necessarily would require the end of the tine to scrape the 1
ground on which the hay lies. 2
2. Johnston reports that tine failure in conventional devices results 3
from erosion or breaking of the tip or end portion of the tine from abrasive 4
ground scraping or repeated ground striking during raking. (Johnston, col. 1, 5
ll. 37-40). 6
3. Johnston also discloses a replaceable tip of tube-like 7
construction with a bore of substantially uniform diameter press fit onto an 8
outer end portion of the bent tine section. (Johnston, col. 3, ll. 41-47). The 9
purpose of these replaceable tips is to increase the life of the tine by 10
minimizing or eliminating erosive forces occurring on the ends of the tines. 11
(Johnston, col. 3, ll. 24-28, 31-33 and 39-47). 12
4. Johnston discloses removing and replacing the tip after the tip 13
is worn or eroded in use. (Johnston, col. 3, ll. 63-70). 14
5. Hadcock discloses a thimble having a runner-shaped point for 15
receiving the properly-shaped point of a rake tooth of a horse rake. 16
(Hadcock, ¶ 1 and 4). 17
6. A “horse rake” is classified as a harvester or rake for gathering 18
hay, straw, grass or leaves which is propelled over a field by a draft animal. 19
MANUAL OF CLASSIFICATION 56-1 and 56-38 (Dec. 2002)(def. of Cl. 20
56/375). 21
7. Figs. 1 and 2 of Hadcock show the thimble as being hollow and 22
as having a cavity therein opening to at least one end of the thimble and 23
extending over at least a portion of the length of the thimble. 24
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8. Figs. 1 and 2 of Hadcock show the thimble as being an elongate 1
hollow finger in the sense that the thimble appears longer than its diameter. 2
9. Hadcock discloses or suggests securing the thimble over the 3
point of a rake tooth and securing the thimble in position on the tooth with a 4
screw. (Hadcock, ¶ 4). 5
10. That is, Hadcock discloses positioning the thimble so that at 6
least a portion of the rake tooth extends into the cavity and fastening the 7
thimble over the portion of the rake tooth extending into the cavity in the 8
thimble. 9
11. Hadcock discloses that the thimble protects the rake tooth from 10
splintering or splitting. (Hadcock, ¶ 2). 11
12. Grashow discloses a replacement radio antenna for an 12
automobile. (Grashow, col. 1, ll. 9-10). The antenna includes a coupling 13
(Grashow, col. 2, ll. 8-10) having an internally threaded sleeve and a 14
threaded nut or collet engaging the internal threads of the sleeve (Grashow, 15
col. 2, ll. 21-28). 16
13. Grashow discloses repairing a broken radio antenna by slipping 17
the lower end of the collet over a remaining portion of the broken antenna 18
and tightening the collet over the remaining portion. (Grashow, col. 2, ll. 19
14-16). 20
14. Grashow teaches that the coupling is relatively strong and 21
sturdy. Grashow further teaches that the coupling does not require set 22
screws, which might rust. (Grashow, col. 1, ll. 49-52). 23
24
25
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PRINCIPLES OF LAW 1
A claim under examination is given its broadest reasonable 2
interpretation consistent with the underlying specification. In re American 3
Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the 4
absence of an express definition of a claim term in the specification, the 5
claim term is given its broadest reasonable meaning in its ordinary usage as 6
the term would be understood by one of ordinary skill in the art. In re ICON 7
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 8
127 F.3d 1048, 1054 (Fed. Cir. 1997). Limitations not explicit or inherent in 9
the language of a claim cannot be imported from the specification. E-Pass 10
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). 11
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if 12
“the differences between the subject matter sought to be patented and the 13
prior art are such that the subject matter as a whole would have been obvious 14
at the time the invention was made to a person having ordinary skill in the 15
art to which said subject matter pertains.” In Graham v. John Deere Co., 16
383 U.S. 1 (1966), the Supreme Court set out factors to be considered in 17
determining whether claimed subject matter would have been obvious: 18
19
Under § 103, the scope and content of the prior art 20
are to be determined; differences between the prior 21
art and the claims at issue are to be ascertained; 22
and the level of ordinary skill in the pertinent art 23
resolved. Against this background, the 24
obviousness or nonobviousness of the subject 25
matter is determined. 26
27
Id., 383 U.S. at 17. 28
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The Appellants do not rely on any objective evidence of patentability 1
in this appeal. (See App. Br. A-3). Therefore, the Appellants’ burden in this 2
appeal is to show that the Examiner has identified insufficient evidence to 3
support a conclusion of prima facie obviousness. In re Kahn, 441 F.3d 977, 4
985-86 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 5
1998)). “[I]f a technique has been used to improve one device, and a person 6
of ordinary skill in the art would recognize that it would improve similar 7
devices in the same way, using the technique is obvious unless its actual 8
application is beyond his or her skill” or unless application would technique 9
would produce unpredictable results. KSR Int’l Co. v. Teleflex, Inc., 550 10
U.S. 398, 417 (2007). That said, “rejections on obviousness grounds cannot 11
be sustained by mere conclusory statements; instead, there must be some 12
articulated reasoning with some rational underpinning to support the legal 13
conclusion of obviousness.” Kahn, 441 F.3d at 988. 14
The determination of the scope and content of the prior art includes 15
determining whether prior art references are “analogous.” The established 16
precedent of our reviewing court sets up a two-fold test for determining 17
whether art is analogous: “First, we decide if the reference is within the 18
field of the inventor’s endeavor. If it is not, we proceed to determine 19
whether the reference is reasonably pertinent to the particular problem with 20
which the inventor was involved.” In re Deminski, 796 F.2d 436, 442 (Fed. 21
Cir. 1986) (emphasis added). 22
23
24
25
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ANALYSIS 1
Grashow is analogous art because it is reasonably pertinent to a 2
particular problem with which the Appellants were involved. In the 3
Specification, the Appellants state that: 4
5
Once a sufficient number of tine fingers have been 6
broken to impair the efficient operation of the 7
harvester reel, it is necessary to stop the harvester 8
and manually unscrew and remove the broken 9
pickup tines from the support shaft and replace 10
them with new tines. 11
12
(Spec. 2, ¶ 0004). This passage implies that one problem with which the 13
Appellants were involved was how to easily fasten a repair structure to the 14
support shaft to repair or replace a broken tine. Grashow discloses the use of 15
a collet and chuck to easily fasten a replacement antenna over the remaining 16
portion of a broken antenna. (FF 13). Thus, Grashow is reasonably 17
pertinent to the problem of how to fasten a repair or replacement structure to 18
the support shaft. 19
The Appellants’ argument that Grashow is not analogous art because 20
one of ordinary skill in the art would not have looked to automotive antenna 21
technology (see App. Br. 8) is not persuasive. Grashow itself teaches that 22
the collet-and-chuck coupling is relatively strong and sturdy. (FF 14). 23
Furthermore, Grashow’s collet-and-chuck coupling is similar in structure 24
and function to the Appellants’ replacement tines in the sense that each fits 25
over and secures to the cylindrical or prismatic stub remaining after the 26
breakage of the replaced structure. The Appellants offer no evidence of any 27
general recognition in that art that collet–and-chuck couplings such as that 28
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disclosed by Grashow are so lacking in strength as to be of no interest in 1
designing couplings for even temporary use in repairing harvester reel 2
pickup tines. Without such evidence, the Appellants have not shown that the 3
Examiner erred in finding that one of ordinary skill in the art would look to 4
Grashow when addressing the problem of how to fasten a repair or 5
replacement structure to the support shaft. 6
Hadcock discloses positioning an elongate hollow finger or thimble 7
having a cavity therein opening to at least one end of the hollow finger and 8
extending over at least a portion of the length of the hollow finger so that at 9
least a portion of a rake tooth extends into the cavity; and fastening the 10
elongate hollow finger over the rake tooth when the portion of the rake tooth 11
extends into the cavity. (FF 7, 8 and 10). Hadcock discloses only receipt of 12
the properly shaped point of the rake tooth in the thimble (FF 5) and fails to 13
disclose a method for repairing a broken harvester reel pickup tine finger 14
(see Ans. 3; App. Br. 5). Hadcock also fails to disclose at least a portion of a 15
remaining portion of a broken finger extending into the cavity in the thimble 16
or fastening the thimble over the remaining portion of the broken finger. 17
Hadcock discloses positioning the thimbles over the ends or points of 18
rake teeth for a horse rake (FF 5), that is, a harvester or rake propelled by a 19
draft animal for gathering hay, straw, grass or leaves (FF 6). Hadcock 20
places the thimbles on the ends of the teeth to protect the teeth from 21
splintering or splitting. (FF 5 and 11). Johnston discloses mounting a rake 22
bar carrying rake teeth on a self-propelled farm implement so that the rake 23
bar delivers undried hay in a windrow to the side and parallel to the path of 24
the vehicle. (FF 1). Johnston reports that tine failure in conventional raking 25
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devices results from erosion or breaking of the tip or end portion of the tine 1
from abrasive ground scraping or repeated ground striking during raking. 2
(FF 2). Given the structural and functional similarities between a horse rake 3
such as that mentioned in Hadcock and a self-propelled farm implement 4
mounting a rake bar and rake teeth such as that mentioned by Johnston, the 5
Examiner has a reasonable basis for belief that one mode in which 6
Hadcock’s teeth were likely to fail was by erosion or breaking of the end 7
portions of the teeth. (See Ans. 4 (proposed fact 1)). 8
Johnston discloses removing and replacing the tip after the tip is worn 9
or eroded in use. (FF 4). It is a very short step from replacing a worn tip or 10
thimble with a pristine tip or thimble to replacing a worn or eroded end 11
portion of a tooth with a tip or thimble of suitable length, that is, from 12
replacing a worn tip or thimble to repairing a tooth with an eroded or broken 13
end. That step would have been within the skill and common sense of one 14
of ordinary skill. 15
Representative claim 24 does not recite how the tine finger is broken. 16
The Appellants have written the claim sufficiently broadly to encompass the 17
repair of a tine finger eroded or broken at its end portion. The potential 18
difference in length between an unbroken tooth and a tooth repaired by 19
placing a thimble over an eroded or broken end of the tooth would not have 20
been so significant as to discourage one of ordinary skill from reasonably 21
anticipating the success of the repair. 22
Grashow does not disclose a method of repairing a broken rake tooth. 23
Although Grashow discloses coupling a replacement antenna over the 24
remaining portion of a broken antenna (FF 13), Grashow does not disclose 25
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positioning the replacement antenna with the remaining portion of the 1
broken antenna extending beyond the coupling into the replacement antenna 2
itself. Nevertheless, Grashow is evidence of what common sense would 3
have suggested to one addressing the problem of securing a replacement 4
tooth to a support structure such as a rake bar or a harvester reel, namely, 5
that fastening a thimble or replacement tooth over the remaining portion of 6
the broken tooth would have been quicker and easier than attempting to 7
remove the broken tooth and fasten the replacement to the rake bar or 8
harvester reel itself. As such, Grashow supports the Examiner’s conclusion 9
that the subject matter of representative claim 24 would have been obvious. 10
11
CONCLUSIONS 12
The Appellants have not shown that the Examiner erred in finding that 13
Grashow is analogous art. 14
The Appellants have not shown that the Examiner failed to articulate 15
reasoning with some rational underpinning sufficient to support the 16
conclusion that the method of repairing a broken harvester reel pickup tine 17
finger recited in claim 24 would have been obvious. 18
Therefore, the Appellants have not shown that the Examiner erred in 19
rejection of claims 24, 25 and 27-31 under § 103(a) as being unpatentable 20
over Johnston, Hadcock and Grashow. 21
22
DECISION 23
We AFFIRM the rejections of claims 24, 25 and 27-31. 24
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). See 37 2
C.F.R. § 1.136(a)(1)(iv) (2007). 3
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AFFIRMED 5
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LV 17
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COOK ALEX LTD 19
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200 WEST ADAMS STREET 21
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