Ex Parte Thompson et al

Patent Trial and Appeal Board

Sep 18, 2017

13168745 (P.T.A.B. Sep. 18, 2017)

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.
13/168,745 06/24/2011 Dennis George Thompson 19839
(CNHA: 0066/Y OD/KAN)
1660
71475 7590 09/20/2017
CNH Industrial America LLC
Intellectual Property Law Department
700 STATE STREET
RACINE, WI53404
EXAMINER
TORRES, ALICIA M
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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 DENNIS GEORGE THOMPSON and TREVOR
LAWRENCE KOWALCHUK1
Appeal 2016-004748
Application 13/168,745
Technology Center 3600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
non-final rejection of claims 1—3, 6, 8—12, 14—16, 19, and 21—26. App.
Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 CNH Industrial Canada, Ltd. is listed as the real party in interest. App.
Br. 2.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Non-Final Action mailed May 6, 2015 (“Non-Final Act.”); the
Appeal Brief filed October 5, 2015 (“App. Br.”); the Examiner’s Answer
mailed February 5, 2016 (“Ans.”); and the Reply Brief filed April 5, 2016
(“Reply Br.”).
Appeal 2016-004748
Application 13/168,745
STATEMENT OF THE CASE
Appellants describe the present invention—a sectioned metering
system and method—as follows:
One metering system for distributing an agricultural
product in a field includes a drive input and a rotary shaft
assembly coupled to the drive input and configured to be driven
in rotation by the drive input. The metering system also includes
a first metering section driven by the rotary shaft assembly and
at least two additional metering sections. Each additional
metering section is selectively engageable to drive the respective
additional metering section by the rotary shaft assembly. Each
additional metering section is also selectively disengageable to
interrupt driving of the respective additional metering section by
the rotary shaft assembly while the first metering section remains
driven.
Abstract.
Independent claim 1 is illustrative of the appealed claims:
1. A metering system for distributing an agricultural product
in a field, comprising:
a rotary shaft assembly configured to couple to a drive
input assembly and to be driven in rotation by the drive input
assembly;
a first metering section driven by the rotary shaft
assembly;
at least two additional metering sections, each additional
metering section of the at least two additional metering sections
being selectively engageable to drive the respective additional
metering section by the rotary shaft assembly, and disengageable
to interrupt driving of the respective additional metering section
by the rotary shaft assembly while the first metering section
remains driven, wherein the first metering section is disposed
between the at least two additional metering sections;
a common housing containing the first metering section
and the at least two additional metering sections therein, wherein
the first metering section and the at least two additional metering
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Application 13/168,745
sections collectively comprise a unit configured to operate as a
whole while the at least two additional metering sections are
engaged with the rotary shaft assembly, and wherein the first
metering section comprises a live center section configured to
rotate while the rotary shaft assembly rotates, and the at least two
additional metering sections are configured to be selectively
rotated while the rotary shaft assembly rotates;
a first hollow shaft at least partially surrounding the rotary
shaft assembly on a first side of the live center section and a
second hollow shaft at least partially surrounding the rotary shaft
assembly a second side of the live center section opposite the first
side of the live center section, wherein a first additional metering
section of the at least two additional metering sections is coupled
to the first hollow shaft and a second additional metering section
of the at least two additional metering sections is coupled to the
second hollow shaft, the first hollow shaft is driven by the rotary
shaft assembly when the first hollow shaft is engaged to the
rotary shaft assembly, and the second hollow shaft is driven by
the rotary shaft assembly when the second hollow shaft is
engaged to the rotary shaft assembly; and
a first clutch disposed at a longitudinal end of the first
additional metering section opposite the live center section, and
a second clutch disposed at a longitudinal end of the second
additional metering section opposite the live center section,
wherein each clutch is engageable to transmit torque between the
rotary shaft assembly and the respective additional metering
section, the rotary shaft assembly extends through the first
clutch, and a portion of the rotary shaft assembly positioned on
an opposite side of the first clutch from the first additional
metering section is configured to couple to the drive input
assembly.
Claims 1—3, 6, 8, 9, 12, 14—16, and 19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Memory (US 6,240,861 Bl; issued
June 5, 2001) and Machnee (Canadian patent document 1149 235; issued
July 5, 1983). Non-Final Act. 3^4.
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Application 13/168,745
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Memory, Machnee, and Friestad (US 7,571,688 Bl;
issued Aug. 11, 2009). Non-Final Act. 7.
Claims 21—26 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Memory, Machnee, and Decider (US 5,024,173; issued June 18, 1991).
Non-Final Act. 8.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
CONTENTIONS AND ANALYSIS
The Examiner sets forth two alternative theories for why the cited
prior art renders the independent claims unpatentable. Ans. 2—3. Under the
first theory, the Examiner finds that according to the broadest reasonable
interpretation of, e.g., claim 1, Memory’s clutch 60 and shaft 36 satisfy the
last claim limitation’s recitation of a first clutch, such that “a portion of the
rotary shaft assembly positioned on an opposite side of the first clutch from
the first additional metering section is configured to couple to the drive input
assembly.” Ans. 2. Under the second theory, the Examiner reasons, as
follows:
If the appellant were to claim both the first clutch and the second
clutch in such a way so as to preclude the use of Memory’s clutch
(60) as the claimed first clutch, the orientation and driving
connection of the two additional metering sections would be well
within normal engineering skill.
Id. at 3.
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Application 13/168,745
We address independently the details of these two rationales and
Appellants’ associated arguments.
/.
Appellants argue in relation to the Examiner’s first theory that the
claimed first clutch does not read on Memory’s clutch 60 because “[f]or
example, independent claim 1 more specifically recites, ‘a portion of the
rotary shaft assembly positioned on an opposite side of the first clutch from
the first additional metering section is configured to couple to the drive input
assembly.’” Reply. Br. 2. According to Appellants,
Memory does not suggest that a portion of the secondary drive
shaft 36 positioned on the opposite side of the clutch 60 from the
clutchable metering section 26 (i.e., the portion of the secondary
drive shaft 36 at the washer assembly 82) is coupled to or
configured to be coupled to a drive input. See Memory, col. 2,
lines 26—29, FIGS. 2A and 4. Rather, Memory discloses that a
portion of the main drive shaft 30 positioned on the same side of
the clutch 60 as the clutchable metering section 26 is configured
to couple to a drive input. See id.
Reply Br. 2; see also App. Br. 10.
ft is undisputed that Memory’s clutch 60 is positioned at the distal end
of the shaft 36 that is opposite the drive input assembly: “[the] main drive
shaft is connectable at one end of the meter roll to a main drive input and
said clutch mechanism is located at the opposing end of the meter roll.”
Memory col. 2,11. 26—29, cited in Reply Br, 2; see also Memory FIGs. 3^4.
We understand the Examiner’s interpretation to be based, then, on the
position that it is reasonable to interpret the distal end as being “configured
to couple to the drive input assembly,” as claimed, by virtue of the fact that
the distal end of the drive shaft is interconnected to the drive assembly via
the proximal end of the drive shaft.
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Application 13/168,745
This interpretation is unreasonably broad. By definition, a connected
drive shaft is interconnected in some manner to a drive input assembly. As
such, the distal end of a drive shaft that is opposite the drive input assembly
always will be coupled to the drive input assembly via the drive shaft’s
proximal end. Interpreting the claim language as requiring no more than this
inherent property effectively would render superfluous the claim’s express
requirement that the opposite side of the first clutch be configured to couple
to the drive input assembly, ft is a well-settled canon of claim language
construction that “[a] claim construction that gives meaning to all the terms
of the claim is preferred over one that does not do so.” Merck & Co. v. Teva
Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). See also
Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330—31 (Fed. Cir. 2008)
(rejecting claim construction that “ascribes no meaning to the term . . . not
already implicit in the rest of the claim.”).
II.
Appellants argue in relation to the Examiner’s second rationale that
Machnee’s metering device has multiple metering wheels 22 directly
mounted to a single rotatable shaft 24. App. Br. 10. In Appellants’ view,
the combination of Memory and Machnee would not result in the present
invention, as claimed:
at most, one of ordinary skill in the art would be led to modify
Memory to merely include additional metering wheels, such as
metering wheels 22 of Machnee, having a mechanism (e.g.,
major part 40 and minor part 42 of Machnee) to directly couple
the metering wheels 22 to the main shaft 30 of Memory and/or
to the hexagonal shaft 34.
Id. at 11.
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This argument is unpersuasive. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference. . . . Rather, the test is what the
combined teachings of [those] references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
We understand the Examiner’s second theory of obviousness to be premised
on Machnee’s broader teaching: plural metering sections may be positioned
anywhere across the entire length of a shaft and individual ones of these
plural metering sections may be engaged or disengaged independently of
each other. See, e.g., Machnee Abstract (“The invention relates to [plural]
seed metering and particle dispensing wheels and to a mechanism for
mounting such [plural] wheels or other rotative elements to a [single]
shaft. . . . Replacement or additional wheels can be assembled to the shaft
using the reverse procedure”); see also Machnee 16:19—27. In light of this
teaching, we agree with the Examiner that it would have been obvious to
likewise duplicate Memory’s disengageable second roll portion.
Appellants argue that “neither Memory nor Machnee suggests a
portion of the rotary shaft assembly positioned on an opposite side of the
first clutch from the First additional/clutchable side metering section is
coupled/configured to couple to the drive input assembly.” App. Br. at 12.
This argument is unpersuasive because it constitutes an attack of the
references individually, In re Keller, 642 F.2d at 426. In fact, the Examiner
did not rely on either reference for teaching all of these elements alone. The
Examiner instead relies on Memory for teaching the rotary shaft assembly
and a clutchable side metering section, albeit not on the side of the shaft, as
claimed. Non-Final 4—5. The Examiner relies on Machnee for the teaching
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Application 13/168,745
that an axle-driven metering device can have “any number of sections and
rollers.” Id. at 6. The Examiner finds the disputed limitation is obvious in
light of the combined teachings. Id.
Appellants next contend that the Examiner’s obvious-to-try rationale
requires that
the [EJxaminer must articulate: (1) a finding that at the time of
the invention, there had been a recognized problem or need in the
art, which may include a design need or market pressure to solve
a problem; (2) a finding that there had been a finite number of
identified, predictable potential solutions to the recognized need
or problem; (3) a finding that one of ordinary skill in the art could
have pursued the known potential solutions with a reasonable
expectation of success; and (4) whatever additional findings
based on the Graham factual inquiries may be necessary, in view
of the facts of the case under consideration, to explain a
conclusion of obviousness.
Id. at 12 (citing MPEP § 2143).
Appellants argue that according to this test, “in a proper obvious to try
approach to obviousness, the possible options for solving a problem must
have been ‘known and finite.’” Id. at 13 (citation omitted). Appellants
attempt to distinguish the present case from an obvious-to-try situation: “in
the present case, the claimed metering system includes specific structural
components arranged in a particular manner that is not disclosed in the
references and cannot be considered similar to [a situation in which] a
chemical compound [ ] simply combines known chemicals.” Id. at 13.
Appellants more specifically argue
[i]n the present case, providing a second metering section
coupled to a second hollow shaft, which is in turn coupled to a
second clutch is not disclosed in the cited references and does not
appear to be a solution known to persons of ordinary skill in the
art. Furthermore, a metering system in which a portion of the
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Application 13/168,745
rotary shaft assembly positioned on an opposite side of the first
clutch from the first additional/clutchable side metering section
is coupled/configured to couple to the drive input assembly does
not appear to be a solution known to persons of ordinary skill in
the art for at least the reasons set forth above.
Id. at 13.
This argument is unpersuasive. Memory discloses a first metering
section that is constantly driven by the rotary shaft assembly and one
additional, clutchable side metering section that is disposed at the distal end
of the drive shaft, opposite the drive input assembly. E.g., Memory FIGs. 2—
4. That is, Memory teaches that the use of clutchable side metering sections
was a known solution for selectively metering a field. Machnee teaches that
providing independently selectable metering sections anywhere along the
drive shaft also was a known solution for selectively metering a field.
Machnee 16:19—27.
We, therefore, agree with the Examiner that the cited combination
reasonably suggests that it would have been obvious to try duplicating
Memory’s clutchable side metering section on the opposite side of the drive
shaft, as well. Providing such a second, clutchable side metering section
opposite the first clutchable side metering section would provide the
operator greater control in selecting areas to be metered, a benefit
recognized by Machnee’s system. Appellants provide insufficient evidence
to indicate that such a duplication of known parts would have produced any
undue technological challenge.
We further agree with the Examiner that when one does duplicate
Memory’s disclosed side metering section so as to provide a second
clutchable side metering section proximate to the drive input assembly, one
has a finite number of choices in how the metering section will be
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Application 13/168,745
duplicated. One primary option is that the second clutchable side metering
section be duplicated via translation, such that the second clutch is
positioned between the central metering section and the second clutchable
side metering section. The second primary option is that the second
clutchable side metering section be duplicated through via reflection, such
that the second clutch is positioned away from the central metering section,
on the opposite end of the second clutchable side metering section. When
Memory’s first clutchable side metering section is duplicated on the opposite
side of the constantly driven central metering section via reflection, as
explained above, the position of the second clutchable side metering section,
duplicated proximate to the drive input assembly, would satisfy the claim
requirement that “a portion of the rotary shaft assembly positioned on an
opposite side of the [duplicated] clutch from the [duplicated] additional
metering section is configured to couple to the drive input assembly.”
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of illustrative claim 1. Accordingly,
we will sustain the Examiner’s rejection of that claim, as well as claims 2, 3,
6, 8, 9, 12, 14—16, and 19, which are not argued separately. See App. Br. 14;
Reply Br. 7.
We, likewise, sustain the Examiner’s obviousness rejection of claims
10 and 11 over Memory in view of Machnee and Friestad, as well as the
obviousness rejection of claims 21—26 over Memory in view of Machnee
and Deckler. Appellants have not particularly pointed out errors in the
Examiner’s reasoning regarding the additional teachings of Friestad or
Deckler, but instead argue that these additional references do not cure the
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alleged deficiencies of the obviousness rejection of the independent claims.
App. Br. 14—15; Reply Br. 7.
DECISION
The Examiner’s decision rejecting claims 1—3, 6, 8—12, 14—16, 19,
and 21—26 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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