Ex Parte Pruitt et al

Board of Patent Appeals and Interferences

Nov 15, 2010

11247806 (B.P.A.I. Nov. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARTIN E. PRUITT, DWIGHT E. NICKEL,
KURT GRABER, and STANLEY R. CLARK
____________

Appeal 2009-012794
Application 11/247,806
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.
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Application 11/247,806

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STATEMENT OF THE CASE2
Martin E. Pruitt et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 8-17, 19-22, 24, 25, 27,
and 28.3 We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Appellants’ claimed invention is a method and apparatus for obtaining
conditioned crop materials with improved drying characteristics and more
even crop distribution within a windrow or swath. Spec. 1:7-8. Claims 8
and 12, reproduced below, are representative of the subject matter on appeal.
8. In a machine for cutting and conditioning crop
materials wherein the machine has a cutting width that is
greater than the width of a central discharge opening leading to
conditioning rolls of the machine and crop materials must be
consolidated centrally from opposite lateral sides of the opening
before moving rearwardly through the opening to the rolls, the
improvement comprising:
a front pair and a rear pair of mutually oppositely
rotatable, non-compressible surface rolls behind the opening
adapted to receive a stream of crop materials, condition the

2 The appellants in Application 11/130,912 (Appeal 2009-009015) list the
present application as a related appeal. See Appeal 2009-009015, App.
Br. 7. These appeals are being decided concurrently.
3 This appeal initially also included an appeal from the rejection of claims 4-
7, 18, 23, and 26. Appellants subsequently canceled these claims by
amendment dated February 11, 2009. The Examiner entered this
amendment by an Office Action dated July 2, 2009.
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materials as they pass between the rolls, and feed the materials
rearwardly,
each of said rolls comprising a cylindrical metal core and
a plurality of circumferentially spaced metal ribs projecting
generally radially outwardly from the core and extending
lengthwise thereof,
said ribs being arranged in a generally herringbone
pattern around the core, with each rib comprising a pair of end-
to-end rib segments that converge generally helically from
opposite ends of the core to a centrally disposed apex,
said rolls all being rotated in such a direction during
operation that the apex of each rib trails outer ends of the rib
with respect to the direction of rotation,
the ribs of one front roll being adapted to intermesh with
the ribs of the other front roll and the ribs of one rear roll being
adapted to intermesh with the ribs of the other rear roll; and
tension mechanism operably coupled with the front and
rear pairs of rolls in a manner to resist relative movement of the
rolls of each pair away from one another.

12. In a machine for cutting and conditioning crop
materials wherein the machine has a cutting width that is
greater than the width of a central discharge opening leading to
conditioning rolls of the machine and crop materials must be
consolidated centrally from opposite lateral sides of the opening
before moving rearwardly through the opening to the rolls, the
improvement comprising:
a front pair of mutually oppositely rotatable, non-
compressible surface rolls behind the opening adapted to
receive a stream of crop materials, condition the materials as
they pass between the rolls, and feed the materials rearwardly,
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each of said front rolls comprising a cylindrical metal
core and a plurality of circumferentially spaced metal ribs
projecting generally radially outwardly from the core and
extending lengthwise thereof,
said ribs being arranged in a generally herringbone
pattern around the core, with each rib comprising a pair of end-
to-end rib segments that converge generally helically from
opposite ends of the core to a centrally disposed apex,
said rolls of the front pair being rotated in such a
direction during operation that the apex of each rib trails outer
ends of the rib with respect to the direction of rotation,
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,
each of said rear rolls comprising a cylindrical core and a
plurality of circumferentially spaced bars projecting generally
radially outwardly from the core and extending lengthwise
thereof,
said bars being arranged in a generally herringbone
pattern around the core, with each bar comprising a pair of end-
to-end bar segments that converge generally helically from
opposite ends of the core to a centrally disposed apex,
said rolls of the rear pair being rotated in such a direction
during operation that the apex of each bar trails outer ends of
the bar with respect to the direction of rotation,
the bars of one rear roll being adapted to intermesh with
the bars of the other rear roll; and
tension mechanism operably coupled with the front and
rear pairs of rolls in a manner to resist relative movement of the
rolls of each pair away from one another.
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THE REJECTION
Appellants seek review of the Examiner’s rejection of claims 8-17,
19-22, 24, 25, 27, and 28 under 35 U.S.C. § 103(a) as being unpatentable
over Elliott (US 4,445,313; issued May 1, 1984) in view of Pruitt
(US 6,158,201; issued December 12, 2000).
ISSUES
The issues presented by this appeal are:
1. Would a person having ordinary skill in the art have found it
obvious to make the conditioning rolls of Elliott as non-compressible surface
rolls having a cylindrical metal core and metal ribs?
2. Does Elliott disclose that the crop materials can be cut by a
series of rotary cutters in front of the conditioning rolls and extending
generally parallel thereto?
3. Has the Examiner articulated an adequate reason with rational
underpinning to explain why a person having ordinary skill in the art would
have made the front pair of conditioning rolls of Elliott as non-compressible
surface rolls having a cylindrical metal core and metal ribs and the rear pair
of conditioning rolls of Elliott as compressible surface rolls?
ANALYSIS
Claims 8-10, 19, 24, and 27
Independent claim 8 calls for, inter alia, a front pair and a rear pair of
mutually oppositely rotatable, non-compressible surface rolls in a machine
for cutting and conditioning crop materials, each of the rolls comprising a
cylindrical metal core and a plurality of circumferentially spaced metal ribs
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projecting generally radially outwardly from the core and extending
lengthwise thereof, the ribs being arranged in a generally herringbone
pattern around the core. Independent claim 19 calls for a method of cutting
and conditioning crop materials comprising, inter alia, passing the crop
materials between a pair of oppositely rotating ribbed metal rolls where the
ribs intermesh and are arranged in a generally herringbone pattern, and
passing the crop materials between a second pair of oppositely rotating
ribbed metal rolls where the ribs intermesh and are arranged in a generally
herringbone pattern.
The Examiner found that Elliott discloses the machine and method
called for in claims 8 and 19, except that Elliott does not explicitly disclose
the material used for the rolls. Ans. 15-17. We agree with the Examiner’s
findings as to the scope and content of Elliott and adopt them as our own. In
particular, we agree that Elliott discloses a front pair and a rear pair of
oppositely rotatable ribbed rolls where the ribs intermesh and are arranged in
a herringbone pattern. Elliott, col. 2, l. 43 and ll. 45-51; figs. 2, 3.
The Examiner found that Pruitt teaches rolls used in crop conditioning
machines made having a metal core and metal ribs. Ans. 18-19. Appellants
acknowledge that Pruitt teaches “conventional conditioning rolls” having
helical ribs. App. Br. 25. We agree with the Examiner’s finding and adopt
it as our own. Pruitt discloses conventional conditioning rolls where the
core and ribs are made from a non-compressible metal. See Pruitt, col. 7,
ll. 62-65. For the reasons discussed infra, the fact that Pruitt’s rolls have
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helical ribs instead of herringbone pattern ribs is not determinative of
obviousness.
Rather, the question before us is whether it would have been obvious
to make all four conditioning rolls of Elliott having herringbone ribs out of a
conventional conditioning roll material, i.e., a non-compressible metal. We
find that the Examiner’s reasoning for using a conventional material for the
rolls of Elliott is based on a rationale underpinning. In particular, the
Examiner determined that it would have been obvious to make Elliott’s rolls
out of non-compressible metal because Elliott is silent as to the material
used, and non-compressible metal was a material commonly used in
conventional conditioning rolls and known by those having ordinary skill in
the art to be suitable for use as conditioning rolls, as demonstrated by Pruitt.
Ans. 39-40.
Appellants make much of the fact that the Examiner has not provided
evidence showing that it was known in the art to use the combination of a
front pair and a rear pair of ribbed metal rolls having ribs in a herringbone
pattern to solve the particular problem facing the inventor. However, as
stated by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
420 (2007):
The question is not whether the combination was obvious to the
patentee but whether the combination was obvious to a person
with ordinary skill in the art. Under the correct analysis, any
need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.
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In this case, the problems facing a person with ordinary skill in the art
identified in Elliott were: (1) when using a single pair of crimping rollers
(i.e., rollers that have ribs which crimp the long plant stems at intervals),
extremely thick or wet hay often does not feed into the rollers properly and
can plug and jam the machine, and (2) if the tension on the rollers is great
enough to thoroughly crimp the stems, the leaves may be damaged. Elliott,
col. 1, ll. 32-36 and ll. 44-52.
Elliott proposed to solve these problems by using a second pair of
conditioning rollers positioned “out of phase” to the first pair of conditioning
rollers so that the hay stems are crimped at a different point than by the first
set, to produce hay which is crimped in more places, possibly with more
overall pressure, and thus dries faster with less damage and leaf breakage
and loss. Elliott, col. 2, ll. 3-10. Elliott discloses that the additional pair of
rollers also reduces plugs by pulling the hay out of the first pair of rollers.
Elliott, col. 2, ll. 10-11. We see no error, and Appellants have not
demonstrated any error, in the Examiner’s finding that a person having
ordinary skill in the art at the time of Appellants’ invention and facing the
problems identified in Elliott would have found it obvious to make Elliott’s
conditioning rolls out of conventional metal material. In particular, Pruitt
discloses that it was known in the art to use a pair of crop conditioning rolls
comprising cylindrical metal bodies having intermeshing metal ribs, albeit
helical instead of herringbone, to condition cut crops. Pruitt, col. 7, ll. 59-
66. Elliott appears to make no distinction between the suitability of helical
versus herringbone ribs in his hay cutting machine. See Elliott, col. 2, ll. 48-
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51 (“[t]he ribs may run straight along the roller, or twist in the nature of a
screw [helical], or, preferably, be of the “Chevron Mesh” design used by
New Holland, as shown in FIG. 3”). As such, we find that the Examiner
provided a sufficient reason with rational underpinning as to why one having
ordinary skill in the art would have been led to use non-compressible metal
for the roll core and ribs of Elliott’s ribs so as to set forth a prima facie case
of obviousness of claims 8 and 19.
We now consider Appellants’ declaration evidence. The nature of
these declarations is not to present objective evidence of secondary
considerations of non-obviousness, such as evidence of commercial success,
long-felt need, skepticism of others, unexpected results, etc. Rather, the
evidence presented in the declarations submitted by Appellants is from two
of the named inventors and provides a discussion of how these inventors
conceived of the claimed invention. The declaration also provides the
inventors’ opinions as to non-obviousness of the invention presented in
rebuttal to the Examiner’s conclusion of obviousness.
Mr. Nickel’s declaration is not useful to the determination of non-
obviousness of the subject matter of claims 8 and 19, i.e., machines with
front and rear pairs of metal rolls, because this declaration is limited to Mr.
Nickel’s opinion as to the non-obviousness of a machine having a front pair
of metal conditioning rolls and a rear pair of rubber conditioning rolls. See,
e.g., App. Br., Exhibit A, Declaration of Dwight E. Nickel under 37 C.F.R.
§ 1.132, para. 11.
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Turning now to the second declaration, Mr. Pruitt’s declaration states,
“[a]rranging the intermeshing ribs of the two sets of metal conditioning rolls
in a herringbone pattern was not an obvious way of solving our feeding
problem in a wide-cut rotary machine.” App. Br., Exhibit B, Declaration of
Martin E. Pruitt, para. 11. Mr. Pruitt’s declaration further states, with regard
to the prior art:
Neither [the Elliott patent nor the Pruitt patent] deals with
the unexpected feeding problem that I encountered in a wide-
cut rotary machine when I tried to make a double conditioner
with metal conditioning rolls having ribs that spiraled
continuously from end-to-end. There is nothing in these two
patents suggesting that using two pairs of metal conditioning
rolls having ribs arranged in a continuous spiral from end-to-
end would lead to feeding problems in a wide-cut rotary
machine, such as I encountered. More importantly, there is
nothing in these two patents suggesting that the solution to the
feeding problem would be to have the ribs of the two pairs of
metal conditioning rolls in a wide-cut rotary machine arranged
in a herringbone pattern, rather than a continuous spiral. In
short, the good results I obtained were not predictable from the
teachings of the Elliott et al and Pruitt et al patents.
Pruitt Declaration, para. 18.
As we pointed out supra, the relevant question is not whether the
invention was obvious to the inventor facing his particular problem, rather
the question is whether the invention would have been obvious to a person
having ordinary skill in the art in view of the art and known problems in the
art. KSR at 420. Thus, while Mr. Pruitt’s declaration clearly articulates the
problem he was facing and the solutions he tried to solve the problem and
provides his personal opinion as to the non-obviousness of the claimed
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subject matter, the declaration does not directly address the Examiner’s
reasoning or shed any light on whether the claimed subject matter would
have been obvious to one having ordinary skill in the art in light of the
teachings and the problems in the art identified in Elliott and Pruitt. Further,
we cannot ascertain the basis for Mr. Pruitt’s statement in paragraph 16 of
the declaration that Elliott discloses the use of rubber rolls. We have
reviewed the passages of Elliott cited by Mr. Pruitt and find no mention that
the rolls are made from rubber. Mr. Pruitt does not provide any further
explanation in his declaration for the basis for this assertion.
Weighing all of the evidence anew, we conclude that the evidence
supporting the obviousness of the subject matter of claims 8 and 19
outweighs the evidence supporting non-obviousness, and thus this subject
matter would have been obvious to a person having ordinary skill in the art
at the time of Appellants’ invention in view of the teachings of Elliott and
Pruitt. Appellants present no separate arguments for patentability of
dependent claims 9, 10, 24, and 27. As such, these claims fall with claims 8
and 19. See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 11 and 20
Appellants argue dependent claims 11 and 20 separately. App.
Br. 32-33 and 44-45. Claim 11 depends from claim 8 and recites “wherein
the crop materials are cut by a series of rotary cutters in front of the front
rolls and extending generally parallel thereto.” Claim 20 depends from
claim 19 and recites “said cutting of standing crop material being carried out
using a series of rotary cutters ahead of the first pair of conditioning rolls.”
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The Examiner found that Elliott discloses that the cutter (8) “may be a
sickle bar or a number of disks” and that this disclosure “would lead [a
person of ordinary skill in the art] to conclude the crop materials can be cut
by a series of rotary cutters in front of the conditioning rolls and extending
generally parallel thereto.” Ans. 23. The Examiner further found that Pruitt
clearly shows the crop materials being cut by a series of rotary cutters (68)
in front of the conditioning rolls and extending generally parallel thereto. Id.
(citing Pruitt, Fig. 3).
Appellants do not dispute the Examiner’s finding that Elliott discloses
the claimed series of rotary cutters. Rather, Appellants argue that the prior
art does not recognize the particular advantages of using the claimed first
and second pair of metal conditioning rolls having ribs in a herringbone
pattern in a machine having a series of rotary cutters as claimed. App.
Br. 33. As explained supra, Elliott recognizes several advantages to using a
first and second pair of conditioning rolls having ribs in herringbone pattern
in a machine having a series of rotary cutters. All that Elliott fails to
explicitly disclose is the material used for making each roll core and ribs.
For the reasons provided in our analysis of claims 8 and 19, we conclude
that it would have been obvious to use conventional metal roll core and ribs
for Elliott’s rolls. As such, we affirm the Examiner’s rejection of claims 11
and 20.
Claims 12-17, 21, 22, 25, and 28
Independent claim 12 calls for a front pair of mutually oppositely
rotatable, non-compressible surface rolls having a cylindrical metal core and
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a plurality of circumferentially spaced metal ribs and a rear pair of mutually
oppositely rotatable, compressible surface rolls. Independent claim 21
similarly calls for passing the crop materials between a pair of oppositely
rotating ribbed metal rolls and then passing the crop materials between a pair
of oppositely rotating compressible surface rolls. As such, both independent
claims require the front pair of rolls to be made of metal and the rear pair of
rolls to be compressible surface rolls.
As we found supra, Elliott discloses a front pair and a rear pair of
rolls but is silent as to the material used in these rolls. Pruitt discloses an
apparatus having a single pair of conditioning rolls 170 and 172 comprising
cylindrical metal bodies and intermeshing metal ribs. Pruitt, col. 7, ll. 62-64.
Pruitt also discloses that “other conditioning roll designs (e.g., rubber-coated
rolls) may be utilized.” Pruitt, col. 7, ll. 64-65.
The Examiner found that “preferably, at least the rear rolls [of Elliott]
would need to be made of compressible material in order to avoid over
crushing and damaging the crop material.” Ans. 39. We find no teaching in
Pruitt that rubber rolls are preferable to metal to avoid over crushing and
damaging the crop material. As such, we are uncertain of the basis for the
Examiner’s reasoning. We find each of the Examiner’s rationales based on
design choice, rearrangement of parts, obvious to try, 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
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been led to use compressible surface rolls in both the front pair and the rear
pair of rolls in Elliott’s apparatus, they fail to provide a reason why one
would have used metal rolls for the front pair of rolls and compressible
surface rolls for the rear pair of rolls in Elliott. As such, we will not sustain
the Examiner’s rejection of independent claims 12 and 21 or their dependent
claims 13-17, 22, 25, and 28 under 35 U.S.C. § 103(a) as being unpatentable
over Elliott and Pruitt.
CONCLUSIONS
A person having ordinary skill in the art would have found it obvious
to make the conditioning rolls of Elliott as non-compressible surface rolls
having a cylindrical metal core and metal ribs.
Elliott discloses that the crop materials can be cut by a series of rotary
cutters in front of the conditioning rolls and extending generally parallel
thereto.
The Examiner failed to articulate an adequate reason with rational
underpinning to explain why a person having ordinary skill in the art would
have made the front pair of conditioning rolls of Elliott as non-compressible
surface rolls having a cylindrical metal core and metal ribs and the rear pair
of conditioning rolls of Elliott as compressible surface rolls.
DECISION
The decision of the Examiner to reject claims 8-11, 19, 20, 24, and 27
is AFFIRMED.
The decision of the Examiner to reject claims 12-17, 21, 22, 25, and
28 is REVERSED.
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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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