PRECISION PLANTING LLC

Patent Trials and Appeals Board

Apr 22, 2020

14437995 - (D) (P.T.A.B. Apr. 22, 2020)

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.
14/437,995 04/23/2015 Jeremy Hodel US12/67/WO/US-2 1069
88988 7590 04/22/2020
AGCO Corporation, IP Legal
Jeff Ellsworth
420 W. Lincoln Blvd.
Hesston, KS 67062
EXAMINER
TORRES, ALICIA M
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
04/22/2020 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):
patents@agcocorp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEREMY HODEL and KENT LEVY
____________

Appeal 2019-004544
Application 14/437,995
Technology Center 3600
____________

Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Non-Final Office Action (dated Apr. 20, 2018, hereinafter
“Final Act.”) rejecting claims 1–22. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Precision Planting LLC is identified as the real party in
interest in Appellant’s Appeal Brief (filed Nov. 13, 2018, hereinafter
“Appeal Br.”). Appeal Br. 2.
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Application 14/437,995

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INVENTION
Appellant’s invention is directed to a seed firmer “for pressing the
seed into the soil subsequent to placement in the seed trench.” Spec. para. 1.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A seed firmer in combination with a row unit of an
agricultural planter, the row unit configured to open a seed
trench in a soil surface and to deposit seeds in the seed trench as
the agricultural row unit advances through a field, the seed
firmer comprising:
a resilient body, having an upper portion, a central
portion and a lower portion, wherein said central portion of said
resilient body bends resiliently about a horizontal axis such that
said lower portion deflects relative to said upper portion of said
resilient body, said upper portion of said resilient body operably
mounted to the row unit such that said lower portion of said
resilient body is at least partially disposed in the open seed
trench, said lower portion firming the deposited seeds into the
bottom of the open seed trench as said lower portion passes
over the deposited seeds as the row unit advances through the
field;
a resilient insert, having a housed portion housed inside of said
resilient body, said housed portion extending through said central
portion of said resilient body, said resilient insert having a greater
effective stiffness than said central portion of said resilient body.

REJECTIONS
I. The Examiner rejects claims 1–5, 7–17, 21, and 22 under 35
U.S.C. § 103(a) as being unpatentable over Peter2 and Hem.3

2 Peter, US 6,082,274, issued July 4, 2000.
3 Hem, US 2,581,532, issued Jan. 8, 1952.
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II. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Peter, Hem, and Fish.4
III. The Examiner rejects claims 18–20 under 35 U.S.C. § 103(a) as
being unpatentable over Peter, Hem, and Wolf.5

ANALYSIS
Rejection I
Independent claim 1 requires, inter alia, “a resilient body, having an
upper portion, a central portion and a lower portion . . . [and] a resilient
insert . . . [wherein] said resilient portion having a greater effective stiffness
than said central portion of said resilient body.” Appeal Br. 16 (Claims
App.).
The Examiner finds that Peter discloses most of the limitations of
independent claim 1, but fails to disclose “a resilient insert,” as called for by
claim 1. Non-Final Act. 2–3 (citing Peter, Figs. 1, 7). Nonetheless, the
Examiner finds that Hem discloses a ski including, inter alia, “a resilient
body (2) . . . and a resilient insert (24) . . . housed inside of said resilient
body (2) . . . said resilient insert (24) having a greater effective stiffness than
said central portion of said resilient body.” Id. at 3 (citing Hem, col. 2, ll.
22–24). Thus, the Examiner concludes that
It would have been obvious to one skilled in the art at the time
the invention was made to provide the known technique of
providing a resilient insert overmolded in a resilient body, as
taught by Hem, in order to reinforce Peter’s seed firmer for
providing the predictable result of providing strength without

4 Fish et al., US 6,289,829 B1, issued Sept. 18, 2001.
5 Wolf, DE 42 06 534 A1, published Sept. 9, 1993.
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Application 14/437,995

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sacrificing flexibility or any degree of weight and to keep the
body from changing its form.

Id (emphasis added). According to the Examiner, Hem’s “disclos[ure] that
the insert [24] will keep the ski from changing its form” “is by definition an
increase in stiffness” as required for the claimed resilient insert. Id. at 9.
Appellant argues that the Examiner’s rejection is based on
impermissible hindsight. Appeal Br. 4–5. According to Appellant, because
“Peter is agnostic about the nature of the firmer arm” for pushing seeds into
the soil and “does not even remotely recognize the need or desire to
reinforce any portion of the seed firmer,” “Peter does not include any
teaching or recognition of a need to modify the seed firmer in any way [that]
would invite combining it with Hem.” Reply Br. 3–4.6 Thus, Appellant
asserts “it is apparent that the only reason the Examiner had for combining
Peter with Hem was based on improper hindsight.” Id. at 10.
The Examiner responds that the rejection “has taken Hem’s teaching
of a resilient insert and applied it to Peter’s seed firmer” in order “to provide
Peter’s seed firmer, which is similar in form and function to Hem’s ski, ‘a
major reinforcement member for additional strength, without sacrificing
flexibility or adding any substantial degree of weight’” and to “keep[] ‘the
ski from changing its form.’” Ans. 6 (citing Hem, col. 1, ll. 5–8, col. 2, ll.
22–24).7 According to the Examiner, even though the reasoning of the
rejection “may not be the same . . . or solve the same problem as that of the
invention . . . it does not need to be.” Id.

6 Appellant’s Reply Brief, filed May 20, 2019 (hereinafter “Reply Br.”).
7 Examiner’s Answer, dated Mar. 20, 2019 (hereinafter “Ans.”).
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We appreciate the Examiner’s position that it is not necessary for the
prior art to serve the same purpose as that disclosed in Appellant’s
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007) (“In determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the [Appellant] controls.”). However, in this case, the Examiner does not
adequately explain why a person of ordinary skill in the art would modify
Peter’s firmer to include a reinforcing member, as taught by Hem. Although
Hem discloses that it was known in the art to provide a resilient metal insert
to a plastic ski, absent hindsight, we find the Examiner’s rejection
insufficient to explain what would have prompted a person having ordinary
skill in the art to provide a resilient insert, as taught by Hem, to Peter’s
plastic firmer.
In particular, Peter discloses a resilient deformable firmer 22 made of
plastic that employs screw 29 for controlling vertical biasing. See Peter, col.
5, ll. 14–20. A person of ordinary skill in the art would have understood that
Peter’s plastic material provides strength and elasticity to firmer 22 and
screw 29 facilitates control of vertical biasing (flexing) and the resultant
downward pressure on a seed. See id. at Abstract (firmer arm described as
“flexible”), col. 5, ll. 5–14; In re Jacoby, 309 F.2d 513, 516 (CCPA 1962)
(An artisan must be presumed to know something about the art apart from
what the references disclose.). As Peter specifically discloses that “[t]he
particular nature of the firmer arm [22] is not critical,” and, in light of
Peter’s specific teachings noted above in which Peter appears satisfied with
the strength and elasticity of its firmer, we find the Examiner’s rejection
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insufficient in providing findings or technical reasoning that Peter
recognized a problem with the strength or flexibility of its plastic firmer 22.
See Peter, col. 3, ll. 15–16 (emphasis added). Hence, the reasoning provided
by the Examiner—“to provid[e] strength without sacrificing flexibility or
any degree of weight and to keep the body from changing its form” (Final
Act. 3)—does not support the conclusion of obviousness because the
Examiner has not shown the relevance of that rationale in the context of
Peter’s firmer 22. In other words, the reasoning provided by the Examiner
does not take into account that Hem’s ski and Peter’s firmer are subjected to
different loads and environmental conditions, and, thus, does not explain
why a skilled artisan would “provid[e] strength [to Peter’s firmer] without
sacrificing flexibility or any degree of weight and . . . keep the [firmer’s]
body from changing its form.”
Accordingly, for the foregoing reasons, the Examiner fails to
articulate an adequate reasoning, with rational underpinnings, why, in the
absence of hindsight, a person having ordinary skill in the art would have
modified Peter’s firmer, according to Hem, as proposed by the Examiner, to
arrive at the subject matter of independent claim 1. See St. Jude Med., Inc.
v. Access Closure, Inc., 729 F.3d 1369, 1381 (Fed. Cir. 2013) (reminding us
that “we must guard against ‘hindsight bias’ and ‘ex post reasoning’” in
making obviousness determinations (quoting KSR, 550 U.S. at 421)).
Therefore, for the foregoing reasons, we do not sustain the rejection under
35 U.S.C. § 103(a) of independent claim 1, and its respective dependent
claims 2–5, 7–17, 21, and 22 as unpatentable over Peter and Hem.

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Rejections II and III
With respect to Rejections II and III, the Examiner relies on the same
combination of Peter and Hem. See Final Act. 6–8. The Examiner’s
application of the Fish and Wolf disclosures does not remedy the deficiency
of the Peter and Hem combination discussed above. See id.
Accordingly, for the same reasons, we also do not sustain the
rejections under 35 U.S.C. § 103 of claim 6 as unpatentable over Peter,
Hem, and Fish or of claims 18–20 as unpatentable over Peter, Hem, and
Wolf.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–5, 7–17,
21, 22
103(a) Peter, Hem 1–5, 7–17,
21, 22
6 103(a) Peter, Hem, Fish 6
18–20 103(a) Peter, Hem,
Wolf
18–20
Overall
Outcome
1–22

REVERSED