11130912 (B.P.A.I. Nov. 15, 2010)

Ex Parte Nickel et al

Board of Patent Appeals and InterferencesNov 15, 2010

11130912 (B.P.A.I. Nov. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DWIGHT E. NICKEL and MICHAEL L. O’HALLORAN ____________ Appeal 2009-009015 Application 11/130,912 Technology Center 3600 ____________ Before LINDA E. HORNER, WILLIAM F. PATE III, and FRED A. SILVERBERG, Administrative Patent Judges. HORNER, 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” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009015 Application 11/130,912 2 STATEMENT OF THE CASE Dwight E. Nickel and Michael L. O’Halloran (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-16.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ claimed invention is “a method and apparatus for obtaining conditioned crop materials with improved drying characteristics by passing the harvested materials between successive sets of paired conditioning rolls.” Spec. 1:10-12. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. In a machine for conditioning crop materials, the improvement comprising: a front pair of mutually oppositely rotatable, non- compressible surface rolls adapted to receive a stream of crop materials, condition the materials as they pass between the rolls, and feed the materials rearwardly, each of said front rolls being provided with a set of generally radially outwardly projecting, elongated, generally helically extending ribs, the ribs of one front roll being adapted to intermesh with the ribs of the other front roll; a rear pair of mutually oppositely rotatable, compressible surface rolls disposed to receive crop materials from the front rolls and subject the crop to a further conditioning action, 2 Appellants list the co-pending appeal in Application 11/247,806 under the Related Appeals and Interferences section of the Appeal Brief. App. Br. 7. This related appeal has been assigned appeal number 2009-012794 and is being decided concurrently with the present appeal. Appeal 2009-009015 Application 11/130,912 3 each of said rear rolls being provided with a set of generally radially outwardly projecting, elongated, generally helically extending bars, the bars of one rear roll being adapted to intermesh with the bars of the other rear roll, the rolls of each pair of rolls being relatively movable toward and away from one another; and tension mechanism operably coupled with the front and rear pairs of rolls in a manner to resist said relative movement of the rolls of each pair away from one another. THE EVIDENCE The Examiner relies upon the following evidence: Garrett US 3,513,645 May 26, 1970 Nelson US 3,851,450 Dec. 3, 1974 Elliott US 4,445,313 May 1, 1984 Barthel US 5,269,124 Dec. 14, 1993 Pruitt US 6,158,201 Dec. 12, 2000 THE REJECTIONS Appellants seek review of the Examiner’s rejection of claims 1-16 under 35 U.S.C. § 103(a) as being unpatentable over Barthel and/or Nelson and/or Elliott in view of Pruitt and Garrett. ISSUE The issue presented by this appeal is whether the Examiner articulated an adequate reason with rational underpinning to explain why a person having ordinary skill in the art would have made a front pair of conditioning rolls of non-compressible surface rolls and a rear pair of conditioning rolls of compressible surface rolls. Appeal 2009-009015 Application 11/130,912 4 ANALYSIS Independent apparatus claim 1 calls for a front pair of mutually oppositely rotatable, non-compressible surface rolls and a rear pair of mutually oppositely rotatable, compressible surface rolls. Independent method claim 11 similarly calls for presenting crop materials to and passing them through a front pair of oppositely rotating, non-compressible surface rolls and then presenting crop materials to and passing them through a rear pair of oppositely rotating, compressible surface rolls. The Examiner found that: (1) Barthel discloses a front pair and a rear pair of rolls, but that Barthel is silent as to the material choice for the rolls (Ans. 5); (2) Nelson discloses a front pair and a rear pair of rolls, but that Nelson is also silent as to the material choice for the rolls (Ans. 8-10); and (3) Elliott discloses a front pair and a rear pair of rolls, but that Elliott is also silent as to the material choice for the rolls (Ans. 11-13). The Examiner further found that Pruitt discloses an apparatus having a single pair of conditioning rolls, 170 and 172, which may be rubber-coated instead of metal. Ans. 26. The Examiner also found that Garrett discloses that “compressible (rubber) helical rib and groove (or bar) and other types of roll design is an improvement over non-compressible (steel), in order to better perform the function of crimping and/or crushing (conditioning) crops passing between pair of rolls.” Ans. 26 (citing Garrett, col. 1, ll. 20-31). Based on these findings as to the knowledge of a person of ordinary skill in the art at the time of Appellants’ invention, the Examiner determined that it would have been obvious to use a non-compressible surface roll for Appeal 2009-009015 Application 11/130,912 5 the first pair of rolls and a compressible surface roll for the second pair of rolls as an obvious matter of design choice, a mere rearrangement of parts, a predictable variation based on design incentives or market forces, and a simple substitution of one known equivalent element for another to obtain predictable results. In particular, the Examiner reasons that the prior art teaching that rubber or other compressible rolls with helical bars provide smoother operation and better crushing would have led one having ordinary skill in the art to use compressible surface rolls for the rear pair of rolls, and that the claimed invention is the result of simple routine skill in the art. Ans. 27-31. We find each of the Examiner’s rationales based on design choice, rearrangement of parts, design incentives or market forces, and simple substitution to lack an adequate explanation of why one having ordinary skill in the art would have been led to use different materials for the front pair of rolls as compared to the rear pair of rolls. While these rationales may have been sufficient to explain why one having ordinary skill in the art would have been led to use compressible surface rolls for both the front pair and the rear pair of rolls, they fail to provide a reason why one would have used non-compressible surface rolls for the front pair of rolls and compressible surface rolls for the rear pair of rolls. As such, we will not sustain the Examiner’s rejection of independent claims 1 and 11 and their respective dependent claims 2-10 and 12-16 under 35 U.S.C. § 103. Appeal 2009-009015 Application 11/130,912 6 CONCLUSION The Examiner has failed to articulate an adequate reason with rational underpinning to explain why a person having ordinary skill in the art would have made a front pair of conditioning rolls of non-compressible surface rolls and a rear pair of conditioning rolls of compressible surface rolls. DECISION The decision of the Examiner to reject claims 1-16 is REVERSED. REVERSED nlk Hovey Williams LLP 10801 Mastin Blvd. Suite 1000 Overland Park KS 66210