Ex Parte Noonan et al

Patent Trial and Appeal Board

Mar 18, 2014

12264305 (P.T.A.B. Mar. 18, 2014)

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.
12/264,305 11/04/2008 James Thomas Noonan 18443-US 9921
30689 7590 03/18/2014
DEERE & COMPANY
ONE JOHN DEERE PLACE
MOLINE, IL 61265
EXAMINER
ADAMS, GREGORY W
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
03/18/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES THOMAS NOONAN and CLARENCE HAROLD RAIL
____________

Appeal 2012-003305
Application 12/264,305
Technology Center 3600
____________

Before MICHAEL W. KIM, MICHAEL L. HOELTER, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
James Thomas Noonan and Clarence Harold Rail (“Appellants”)
appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims
1-4. We have jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claim 1 is the sole independent claim on appeal, representative of the
claimed subject matter, and is reproduced below.
1. In a cylindrical module handling device including a
support frame adapted for connection to a mobile vehicle, first
and second cylindrical tine support arrangements coupled to
said support frame for transverse movement relative to said
support frame, first and second cylindrical tines respectively
being disposed in parallel relationship to each other and
mounted to said first and second cylindrical tine support
arrangements for rotation about respective longitudinal axes of
said cylindrical tines, a reversible drive arrangement being
coupled to each of said cylindrical tines for selectively effecting
rotation of the tines in desired directions of rotation, and a
power actuator arrangement coupled between said support
frame and said first and second cylindrical tine support
arrangements for selectively effecting transverse shifting of said
cylindrical tines relative to said support frame, the improvement
comprising: first and second spike arrangements respectively
mounted to said first and second cylindrical tines and
respectively including first and second sets of spike members
mounted for movement between respective standby positions
wherein said first and second sets of spike members are
disposed close to an outer circumference of said first and
second cylindrical tines, and a working position, wherein said
first and second sets of spike members respectively project
radially from said first and second cylindrical tines; and a
second power actuator arrangement being coupled to said first
and second sets of spike members and being selectively
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operable for effecting movement of said first and second sets of
spike members between said standby and working positions.
Br. 17, Claims App’x.
References
The Examiner relies upon the following prior art references:
Bishop US 3,241,695 Mar. 22, 1966
Ralston US 4,161,253 Jul. 17, 1979
Marom US 5,318,399 Jun. 7, 1994
Noonan US 7,591,628 B2 Sep. 22, 2009
Rejections
Appellants seek review of the following rejections:
I. Claims 1-4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ralston, Marom, and Bishop; and
II. Claims 1-4 are rejected on the ground of non-statutory
obviousness-type double patenting as unpatentable over
Noonan, Marom, and Bishop.
SUMMARY OF DECISION
We AFFIRM-IN-PART.
OPINION
Rejection I
The Examiner concluded that the combination of Ralston, Marom,
and Bishop would have rendered the subject matter of claims 1-4 obvious to
one of ordinary skill in the art at the time of invention. Ans. 5-6. The
Examiner found that Ralston discloses the elements of the claims, except
that Ralston “does not disclose first and second sets of spikes and a second
power actuator.” Id. at 5. The Examiner found that Marom discloses “two
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cylindrical tines that extend parallel and rotate about respective longitudinal
axes. . . . [as well as] radially extending spikes and holes.” Id. The
Examiner concluded that it would have been obvious to modify Ralston to
add radially extending spikes to parallel and rotating tines
such that during bale handling a “wrapper may be caught by
corners or edges of the bale and thus the carrier element does
not reliably grasp and fully remove the same from the bale” and
“relatively long and unwieldy bale ties may become entangled
in the wrapper which may lead to jamming, causing operational
disturbances in the automatic process.”
Id. (citing Marom, column 1).
Additionally, the Examiner found that Bishop discloses
first and second tines[,] which are adapted for connection to a
mobile device and further includes first and second pike
arrangements including first and second sets of spike members
95, radially extending holes, first and second mounting
arrangement 67, 68, and first and second power actuators 86.
Id. at 6. The Examiner concluded that it would have been obvious to one of
ordinary skill in the art at the time of invention to include “radially
extending spikes and holes, as per the teachings of Bishop, which establishes
that conventional spike-less fork-like vehicles are ill suited for ‘handling of
individual or smaller stacks of bales.’” Id.
Appellants raise several arguments in response to this rejection,
including that the rationales provided by the Examiner with respect to
combining Ralston and Marom “are not understood in the context given,
noting that these recitations are found in the Background of the
Invention of the Marom patent and relate to disadvantages associated
with a known process of removing an entire wrapper and severed bale ties
together from a textile fiber bale.” Br. 12.
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In the Examiner’s response to Appellants’ argument, the Examiner
further explained that one of ordinary skill in the art at the time of invention
would have found it obvious “to add movable spikes to rotatable tines for
[the] purpose of removing bale covers and handling bales because spike-less
tines are not as effective.” Ans. 10.
Ralston is directed to “handling of cylindrical bales and more
particular to a bale carrier and dispenser or feeder.” Ralston, col. 1, ll. 7-9.
One of Ralston’s stated objects of the invention is to “minimize[] bale
shreading [sic] during bale handling.” Id. at col. 2, ll. 4-5. To accomplish
this object of invention, Ralston employs a tractor including a pair of arms
with rollers mounted thereon, each roller including an “externally ribbed
cylindrical portion 52.” Id. at col. 2, ll. 49-52.
Marom is directed to “a method and an apparatus for removing ties
(such as wire hoops and straps) and wrapper parts from textile fiber bales.”
Marom, col. 1, ll. 8-10. One way in which Marom addresses the problems
noted by the Examiner is by providing retractable teeth, which assist with
winding the wrapper on the outside of shell 6". Id. at col. 5, ll. 10-19.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s rationale as stated in
the Answer does not contain a rational underpinning supporting the reason
for the Examiner’s proposed combination.
First, the Examiner relies upon the deficiencies noted by Marom with
respect to removing an entire wrapper and previously severed bale ties from
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a bale. Ralston, however, is not concerned with a method or apparatus for
removing the wrapper and severed bale ties. Rather, Ralston is directed to
dispensing the bale.1 Thus, the Examiner has not explained why the
disadvantages of Marom apply to the device of Ralston such that Marom’s
solution, i.e., including retractable spikes, would be an improvement over
Ralston’s device.
Second, as noted supra, the Examiner indicated that one would seek
to add movable spikes to Ralston’s device “for [the] purpose of removing
bale covers and handling bales because spike-less tines are not as effective.”
Ans. 10. The Examiner, however, fails to acknowledge that while Ralston
does not describe the rollers as including “spikes,” the rollers are disclosed
as including an externally ribbed cylindrical portion. See Ralston, col. 2,
ll. 49-52; figs. 1, 2, 4. The Examiner’s finding that “spike-less tines are not
as effective” as tines containing spikes fails to inform as to whether the
Examiner implicitly compared tines with spikes to tines with ribs (as
disclosed by Ralston) or whether the Examiner compared tines with spikes
to smooth tines. The Examiner’s statement simply presented a comparison
to “spike-less” tines, which does not inform us as to the specific comparison
made.
Third, Ralston indicates, as noted supra, that one object of invention
is to “minimize[] bale shreading [sic] during bale handling.” Ralston, col. 2,
ll. 4-5. Were one of ordinary skill in the art seeking to improve the
effectiveness of Ralston with this objective in mind, it is unlikely one would

1 Ralston acknowledges that if wrapped, the operator would first cut the
twine from the bale (Ralston, col. 3, ll. 29-30), but this disclosure does not
suggest any deficiency in unwrapping the bales in this manner for the
purposes of dispensing the bales in Ralston.
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choose to modify Ralston’s rollers to include spikes, which would increase,
not decrease, bale shredding.
In light of our discussion above, the Examiner’s rationale for
combining Marom and Ralston in the manner proposed lacks a rational
underpinning. Accordingly, we do not sustain Rejection I.
Rejection II
The Examiner concluded that the combination of claims 1-7 of
Noonan with Marom and Bishop would have rendered the subject matter of
claims 1-4 obvious. Ans. 6-7. The Examiner found that claims 1-7 of
Noonan disclose the elements of claims 1-4 of the present application, but
relied upon Marom and Bishop as disclosing “first and second sets of spikes
that extend and retract from cylindrical tines for the purpose [of] disclosing
bales.” Id. at 7. The Examiner relied upon the same rationale as explained
in the context of Rejection I. See Ans. 13-14.
Appellants raise several arguments in response to this rejection.2 We
address each.
Claims 1-23
Appellants first assert that claims 1-7 of Noonan “do not define such a
structure” of “cylindrical tines mounted for rotation about tine supports that
are shifted transversely relative to each other,” because “claim 1 requires
that at least the second roller support arrangement be pivotally mounted to

2 Appellants, however, do not challenge the Examiner’s rationale for the
combination relied upon in Rejection II.
3 Appellants do not separately argue claims 1 and 2. See Br. 13-16. We
select claim 1 as representative. Accordingly, claim 2 stands or falls with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Lovin,
652 F.3d 1349, 1351 (Fed. Cir. 2011).
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said support frame for movement relative to said support frame for moving
said first roller of said second roller arrangement relative to said first
roller of said first roller” arrangement. App. Br. 14-15. Rather, Appellants
contend that claim 1 of Noonan is directed to “the grapple attachment shown
in Fig. 4, not the grapple attachment disclosed in Figs. 14 and 20, which
disclose cylindrical module tines mounted for rotation about L-shaped tine
supports that are mounted for being selectively shifted sideways relative to
each other.” Id. at 15.
In response to Appellants’ argument, the Examiner points to Noonan’s
claim 4 as disclosing the ability to transversely shift that Appellants alleged
was missing in Noonan. See Ans. 12.
Noonan’s claim 4, which depends from claim 1, further recites
“wherein said first and second roller support arrangements include first and
second forks mounted to said support frame, with at least said second fork
being mounted for transverse shifting movement toward and away from said
first fork.” Noonan, col. 19, ll. 37-41 (claim 4). Thus, we agree with the
Examiner that Noonan’s claim 4 discloses this feature.
Accordingly, Appellants’ argument is not persuasive.
Second, Appellants assert that Marom “fails to disclose how the
disclosed spike arrangement could possibly be moved between the standby
and working positions disclosed in Figs. 7a and 7b of Marom.” App. Br. 15.
We understand Appellants’ argument to constitute an attack on the
disclosure of Marom as either not enabled or lacking written description
support.
Assuming Appellants’ argument is one based upon enablement,
because the rejection relies upon Marom in an obviousness context, Marom
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“need not be enabled; it qualifies as a prior art, regardless, for whatever is
disclosed therein.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1357 (Fed. Cir. 2003). Obviousness-type double patenting is founded
upon the principals of obviousness and hence Marom need not be enabled
for the Examiner to rely upon the disclosure therein for this rejection.
Assuming Appellants’ argument is one based upon whether Marom
disclosed a sufficient written description, that argument is inapposite to the
issue before us. The Examiner’s proposed combination does not rely upon
the claim language of Marom; rather, the rejection is based on Marom’s
written description disclosing spikes. See, e.g., Ans. 5 (citing Marom, figs.
5-7b).4 Marom fully describes these spikes and their operation. See, e.g.,
Marom, col. 5, ll. 6-19; figs. 7a, 7b.
Accordingly, because Appellants’ arguments are not persuasive, we
sustain Rejection II as applied to claims 1 and 2.
Claim 3
Appellants assert that claim 3 is allowable for the additional reason
that “it requires the first and second power actuators to each be a one-way
extensible and retractable hydraulic actuator, and none of Noonan . . .
Marom or Bishop teach a one-way extensible hydraulic actuator, as
claimed.” Br. 15-16.
It appears that the Examiner’s sole response to Appellants’ argument
is that “Appellant merely replaces one type of actuator for another powered
actuator.” Ans. 13.

4 Although cited in the context of Rejection I, the Examiner relied upon the
same findings in the context of Rejection II. See Ans. 7.
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The Examiner, however, did not identify where, if at all, the specific
type of actuator of claim 3 is disclosed in the references relied upon for this
rejection. Simply stating that Appellants replace one type for another,
without demonstrating where, in the prior art relied upon, Appellants’
actuator is disclosed, renders the rejection defective as we are left without a
teaching of Appellants’ specific actuator.
Accordingly, we do not sustain Rejection II as applied to claim 3.
Claim 4
Appellants contend that claim 4 is allowable for the additional reason
that the references do not disclose “first and second sets of radially
extending holes being located only in the forward end regions of the first
and second tines.” Br. 16.
In response to Appellants’ argument, the Examiner relies upon Bishop
as disclosing “spike 97 . . . in a forward region” and annotated Bishop’s
Figure 6 to identify the region referred to as a forward region. Ans. 14.
Contrary to the Examiner’s position, Bishop does not disclose first
and second sets of radially extending holes only in the forward end regions
of the first and second tines as claimed. Bishop teaches that “[t]he inner
surfaces 62 of bale compressing arms 60 have a plurality of longitudinally
equally spaced openings 80 therethrough.” Bishop, col. 3, ll. 19-21
(emphasis added). Further, even Figure 6, identified by the Examiner,
illustrates openings 80 located beyond the Examiner’s identified “forward
[end] region.”
Accordingly, we do not sustain Rejection II as applied to claim 4.
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DECISION
We REVERSE the Examiner’s decision rejecting claims 1-4 under 35
U.S.C. § 103(a).
We AFFIRM the Examiner’s decision rejecting claims 1 and 2 on the
ground of non-statutory obviousness-type double patenting.
We REVERSE the Examiner’s decision rejecting claims 3 and 4 on
the ground of non-statutory obviousness-type double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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