CNH Industrial Canada, Ltd.

Patent Trials and Appeals Board

Apr 3, 2020

15148838 - (D) (P.T.A.B. Apr. 3, 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.
15/148,838 05/06/2016 Martin J. Roberge 52697 (CNHA:0417) 5678
71475 7590 04/03/2020
CNH Industrial America LLC
Intellectual Property Law Department
700 STATE STREET
RACINE, WI 53404
EXAMINER
TORRES, ALICIA M
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
04/03/2020 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):
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 MARTIN J. ROBERGE, JOEL JOHN OCTAVE GERVAIS, and
GUILLAUME CLOUTIER BOILY

Appeal 2019-004582
Application 15/148,838
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, CNH Industrial Canada, Ltd.,1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 1–10, 12–17,
and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the term Appellant in lieu of “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies itself as the sole real party in interest. Appeal
Br. 2.
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STATEMENT OF THE CASE
The Specification
The Specification “relates generally to agricultural implements, and
more specifically to a row unit for a double-shoot disc drill.” Spec. ¶1.
The Claims
Claims 1–10, 12–17, and 20 are rejected. Final Act. 1. No other
claims are pending. Id. Claims 1, 7, and 16 are independent. Appeal
Br. 14–17 (Claims App.). Claim 1 is illustrative and reproduced below.
1. An agricultural implement, comprising:
a first section of row units; and
a second section of row units;
wherein each row unit of the first section is configured to
only deposit a first agricultural product into soil along a first
row, each row unit of the second section is configured to
deposit a second agricultural product into the soil along a
second row and a third agricultural product into the soil along a
third row, each respective row unit of the first section and a
respective adjacent row unit of the second section are
positioned to laterally offset the first row from the second row
and the third row, each row unit of the second section is
configured to laterally offset the second row from the third row,
and one of the first agricultural product, the second agricultural
product, and the third agricultural product comprises fertilizer.
Id. at 14.
The Examiner’s Rejection
The Examiner rejected claims 1–10, 12–17, and 20, pursuant to 35
U.S.C. § 103, as being unpatentable over US 5,346,019, issued Sept. 13,
1994 (“Kinzenbaw”) and US 2013/0074747 A1, published Mar. 28, 2013
(“Schaffert”).
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DISCUSSION
Claims 1–6
Appellant argues these claims together. Appeal Br. 7–10. We choose
claim 1 as the representative claim upon which to decide the rejection of all
of claims 1–6. See 37 C.F.R. § 42.37(c)(1)(iv).
Kinzenbaw discloses “an agricultural row crop planter.” Kinzenbaw
3:63–64. The Examiner found that Kinzenbaw discloses most of the subject
matter of claim 1, including first and second sections of row units. Final
Act. 3. The Examiner further found that each row unit in Kinzenbaw’s
second section “comprise[s] two containers” and thus has “a dual deposit
functionality.” Id. at 12–13. However, the Examiner conceded that
Kinzenbaw does not “specifically disclose wherein each respective row unit
of the second section is configured to deposit a second agricultural product
into the soil along a second row and a third agricultural product into the soil
along a third row.” Id. at 3.
Schaffert also discloses “an agricultural planter.” Schaffert ¶8. In
particular, the Examiner found that Schaffert discloses
a similar planter (200) wherein the row unit (250) is configured
to deposit a second agricultural product (fertilizer 385 via tube
365) into the soil along a second row (290) and a third
agricultural product (seed 282 via tube 380) into the soil along a
third row (280), the row unit is configured to laterally offset the
second row from the third row (see Figs. 7–8), and one of the
agricultural products (385) comprises fertilizer, as per claim 1.
Final Act. 3.
The Examiner concluded:
It would have been obvious to one having ordinary skill in
the art before the effective filing date of the claimed invention to
provide the rear-mounted fertilizer depositing assembly of
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Schaffert et al. on the row units of the second section of
Kinzenbaw et al. in order to provide fertilizer to the soil during
planting in rough fields without adverse impact on seed depth
and damage to the planter components and so that the planter can
be folded without requiring removal of the fertilizer depositing
assembly.
Id. at 3–4; see also Schaffert ¶7.
Appellant argues that “the combination is only obvious in hindsight.”
Appeal Br. 7. This argument does not apprise us of error because the
Examiner’s reason for combining comes is based on the explicit teachings of
Schaffert and involves merely modifying one agricultural planter in view of
another agricultural planter. See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”);
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”).
Appellant also argues that, to the extent a person of ordinary skill in
the art would have combined Kinzenbaw and Schaffert, she would have
modified both of Kinzenbaw’s sections of row units, and not merely its
second section. Appeal Br. 8. Appellant argues that such a modification
would not meet claim 1’s recitation that “each row unit of the first section is
configured to only deposit a first agricultural product into soil along a first
row.” Appeal Br. 14 (emphasis added).
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The Examiner responds that it would have been obvious to a skilled
artisan to modify Kinzenbaw’s second section of row units without also
modifying Kinzenbaw’s first section of row units because the former already
has two containers (30) per row unit whereas the latter has only one
container (28) per row unit. Ans. 4; see also Final Act. 12–13 (“[A]s seen in
Kinzenbaw’s Fig. 1, the row units (any of 28) of the first section of row units
comprise a single container while the row units (any of 30) of the second
section of row units comprise two containers.”). The Examiner has the
better position. Further, prior art can render obvious a claimed invention
even if it also renders obvious subject matter outside the scope of the claim.
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
For the foregoing reasons, we affirm the rejection of claim 1, as well
as that of claim 2–6, which fall therewith. See 37 C.F.R. § 42.37(c)(1)(iv).
Claims 7–15
Independent claim 7 largely tracks the language of claim 1 but where
claim 1 recites “first agricultural product,” “second agricultural product,”
and “third agricultural product,” claims 7 recites “first seed product,”
“second seed product,” and “third seed product.” Appeal Br. 14–15.
The Examiner’s rejection of claim 7, which tracks that of claim 1,
hinges on interpreting a “seed product” as encompassing Schaffert’s
fertilizer 385. See Final Act. 6 (“Schaffert et al. disclose . . . each row unit is
configured to deposit a second seed product (fertilizer 385).”), 13 (“[T]he
phrase ‘seed product’ is broad enough so as to include [Schaffert’s] liquid
fertilizer that is intended to aid in the germination of planted seeds.”).
Appellant argues that the Examiner’s construction is inconsistent with
the Specification. Appeal Br. 11; see also In re NTP, Inc., 654 F.3d 1279,
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1288 (Fed. Cir. 2011) (“While the Board must give the terms their broadest
reasonable construction, the construction cannot be divorced from the
specification and the record evidence.”). Appellant points out that the
Specification “intentionally differentiates a fertilizer from seed [both of
which] are described as agricultural products.” Appeal Br. 11 (quoting
Spec. ¶28: “An agricultural product (e.g., seed or fertilizer) may be disposed
within the trenched formed by rear disc 150 via a rear product chute 156.”)
see also Spec. ¶2 (“Certain agricultural implements, such as disc drills, may
be used to open trenches in a soil surface and for placement of an
agricultural product, such as seed or fertilizer, in the trenches.”). Appellant
additionally argues:
The row unit described in Schaffert is a row unit that deposits a
seed and a fertilizer, not two seeds. See Schaffert, ¶¶101 and
102. In fact, the row unit described in Schaffert would not be
capable of depositing two seed products in two seed rows
because the furrow opener used for seeds is substantially and
structurally distinct from the fertilizer furrow opener. See
Schaffert, ¶¶101 and 102. Moreover, the apparatus for
depositing fertilizer in Schaffert is configured to deposit liquid
products, and therefore does not appear to be capable of
depositing a solid product (e.g., seed).
Appeal Br. 10. Appellant has the better argument. The Examiner’s
construction is unreasonably narrow in view of the Specification’s
differentiation between fertilizer and seeds, as well the plain and ordinary
meaning of those terms. Further, Appellant is correct that Schaffert employs
distinct structures for depositing seed versus fertilizer. There is no evidence
in the record to reasonably support a finding that Schaffert’s fertilizer
deposit tube 330 or related structures are “configured to deposit a second
seed product,” as recited in claim 7.
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Appellant has apprised us of error in the Examiner’s rejection of
claim 7. Accordingly, we reverse the rejection of claim 7, along with that of
claims 8–15, all of which ultimately depend from claim 7. See In re Fine,
837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious
under section 103 if the independent claims from which they depend are
nonobvious.”).
Claims 16, 17, and 20
Appellant argues these claims together. Appeal Br. 11–12. We
choose claim 16 as the representative claim upon which to decide the
rejection of all of claims 16, 17, and 20. See 37 C.F.R. § 42.37(c)(1)(iv).
Independent claim 16 largely tracks the language of claim 1 but where
claim 1 recites “first agricultural product,” “second agricultural product,”
and “third agricultural product,” claims 16 recites “first seed product,”
“second seed product,” and “a fertilizer product.” Appeal Br. 14, 17. And,
not surprisingly, the Examiner’s rejection of claim 16 largely tracks that of
claim 1. Final Act. 10–11.
Appellant’s only argument for claim 16 beyond those it
unsuccessfully presents for claim 1 is that the combination of Kinzenbaw
and Schaffert “does not explicitly provide an agricultural implement that
deposits a row of fertilizer between the seed rows such that the fertilizer
interacts with seeds in both seed rows via diffusion, as generally recited in
independent claim 16.” Appeal Br. 12. Appellant argues that “it is not clear
that the lateral distances would enable interaction via diffusions, as recited in
the claim.” Id. The sole evidence Appellant cites to support its argument, a
declaration by one of the named inventors, is not of record. See id.
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The cited declaration is titled “DECLARATION OF JOEL J.O.
OCTAVE,” although it indicates that it was signed by a “Joel J. O. Gervais”
on August 27, 2018 (“Unentered Declaration”). The Examiner refused to
enter it because it was filed after the Final Action, addressed issues raised by
the Examiner prior to the Final Action, and good cause was not shown. See
Dec. 3, 2018, Advisory Action. In its Reply Brief, Appellant argues that the
Unentered Declaration was submitted “[t]o address the point raised by the
examiner” after the Final Action in a July 6, 2018, Advisory Action
regarding “Kinzenbaw II.”2 Reply Br. 2. This is not the full story.
The Unentered Declaration speaks to numerous issues, the vast
majority of which were clearly raised by the Examiner prior to the Final
Action. See Unentered Declaration ¶¶5–7 (interpreting the rejected claims
and touting the purported benefits of the rejected claims as well as the
Application generally), ¶8 (opining about the disclosure of Kinzenbaw
(asserted) in addition to Kinzenbaw II (unasserted)), ¶9 (opining about “the
Kinze 2000 product,” an alleged embodiment of both Kinzenbaw and
Kinzenbaw II), ¶9 (opining about the disclosure of Schaffert), ¶10 (opining
that a person of ordinary skill would not have combined either of Kinzenbaw
and Kinzenbaw II with Schaffert to reach the claimed subject matter), ¶11
(opining that the Examiner’s proposed combination would not achieve the
full scope of the recited “diffusion”). Accordingly, the Examiner was
justified in refusing to enter the Unentered Declaration. See 37 C.F.R.

2 “Kinzenbaw II” refers to US 4,648,334, which issued March 10, 1987.
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§ 1.116(e).3 As such, Appellant’s diffusion argument constitutes mere
attorney argument. See Facebook, Inc. v. Windy City Innovations, LLC, No.
2018-1400, 2020 WL 1285039, at *14 (Fed. Cir. Mar. 18, 2020)
(“Facebook’s position, which is based on attorney argument rather than
evidence in the record, does not persuade us that the Board’s understanding
of Roseman’s system is incorrect.”).
Further, the claim language at issue recites “the first and second
lateral distances enable interaction between the fertilizer product in the
fertilizer row and the first seed product in the first seed row and the second
seed product in the second seed row via diffusion.” Appeal Br. 17. This
language does not specify how much interaction or diffusion must be
enabled. Nor does the Specification provide context to construe the claim
language with any specificity that would distinguish claim 16 from the
asserted prior art. Indeed, in its Summary of the Claimed Subject Matter,
Appellant relies exclusively on originally-filed claims 6 and 19 as describing
these limitations. Appeal Br. 4. Yet those claims likewise provide no
support for distinguishing such spacing from that in the asserted prior art.
Spec. 13–14 (originally-filed claim 6 reciting “a first offset distance between
the first row and the second row enables diffusion of the fertilizer to the first
row, a second offset distance between the second row and the third row
enables diffusion of the fertilizer to the third row, or a combination
thereof”), 16 (originally-filed claim 19 reciting: “the first and second

3 To be clear, the Examiner’s rejection is based on Kinzenbaw and Schaffert.
Our Decision does not, in any way, take into consideration Kinzenbaw II or
the Kinze 2000 product.
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distances enable interaction between the fertilizer product and at least one of
the first and second seed products via diffusion”).
For the foregoing reasons, we affirm the rejection of claim 16, as well
as that of claim 17 and 20, which fall therewith. See 37 C.F.R.
§ 42.37(c)(1)(iv).

SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–10, 12–17,
20
103 Kinzenbaw,
Schaffert
1–6, 16,
17, 20
7–15

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