Ex Parte 6202395 et al

Patent Trial and Appeal Board

Aug 31, 2018

90013868 (P.T.A.B. Aug. 31, 2018)

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.
90/013,868 11/30/2016 6202395 12776-108 6543
23452 7590 08/31/2018
LARKIN HOFFMAN DALY & LINDGREN, LTD.
8300 Norman Center Drive
Suite 1000
Minneapolis, MN 55437
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/31/2018 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 RICHARD GRAMM
Appellant, Patent Owner
____________________

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Patent No. US 6,202,395 B11
Technology Center 3900
____________________

Before DANIEL S. SONG, BRETT C. MARTIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued March 20, 2001 (hereinafter “the ’395 patent”). The Patent Owner
identifies “Richard Gramm” and “Gramm’s exclusive licensee, Headsight,
Inc.” as the real parties in interest (Appeal Brief (hereinafter “App. Br.”) 2).
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Claims 12–26 are subject to reexamination (App. Br. 2). The Patent
Owner appeals under 35 U.S.C. §§ 134(b) and 306 from a Final Rejection of
claims 12–26. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
The invention is directed to a combine header height control apparatus
(Title). The sole independent claim on appeal reads:
12. Apparatus for maintaining a non-cut crop header in a
crop harvester a designated height above the soil as the crop
harvester traverses a field, said apparatus comprising:
a generally linear arm coupled to the header and having
first and second opposed ends, wherein the first end of said arm
engages and is displaced over the soil as the header moves
above the soil;
angular deflection sensing means coupled to the second
end of said arm for measuring a deflection of said arm when the
first end of said arm encounters irregularities in the soil as the
header moves above the soil and for providing a first signal
representing the extent of deflection of said arm;
biasing means for urging said arm to a selected inclined
orientation relative to vertical, wherein said arm in said
selected inclined orientation extends below and aft of said
angular deflection sensing means as the crop harvester moves
in a forward direction, said biasing means allowing for forward
displacement of the first end of said arm beyond vertical when
the crop harvester is moved rearwardly while the first end of
said arm engages the soil without damaging said arm, with said
biasing means again urging said aim [sic, arm] to said selected
inclined orientation when the crop harvester is again moved in
the forward direction or when the second end of said arm is
removed from contact with the soil; and
control means coupled to said header and said angular
deflection sensing means and responsive to said first signal for
raising or lowering the header in accordance with said first
signal in maintaining the header a designated height above the
soil, wherein said flexible arm and angular deflection sensing
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means are attached to a head housing disposed on a forward
portion of said combine and said head housing is comprised of
polyurethane and includes a metal tip and a mounting bracket
for attaching said metal tip to a forward end of said head
housing, and wherein said mounting bracket further couples
said flexible arm to a forward end of said head housing.
(App. Br., Claims App’x, emphasis added).

The Examiner rejects various claims under 35 U.S.C. § 103(a) as
follows:
1. Claims 12–20, 23, 25, and 26 unpatentable over Chmielewski et
al.,2 Lofquist et al.,3 Cleveland,4 and Pearson5 (Final Office Action
(hereinafter (“Final Act.”) 4).
2. Claims 21 and 22 unpatentable over Chmielewski, Lofquist,
Cleveland, Pearson, and Agness et al.6 (Id. at 6).
3. Claim 24 unpatentable over Chmielewski, Lofquist, Cleveland,
Pearson, and McMurtry et al.7 (Id. at 7).

We REVERSE.

2 U.S. Patent No. 5,535,577, issued July 16, 1996 (hereinafter
“Chmielewski”).
3 U.S. Patent No. 5,761,893, issued June 9, 1998 (hereinafter “Lofquist”).
4 U.S. Patent No. 3,611,286, issued Oct. 5, 1971.
5 U.S. Patent No. 4,723,608, issued Feb. 9, 1988.
6 U.S. Patent No. 3,851,451, issued Dec. 3, 1974 (hereinafter “Agness”).
7 U.S. Patent No. 5,189,806, issued Mar. 2, 1993 (hereinafter “McMurtry”).
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BACKGROUND
Claims 1–11 and 27–34 of the ’395 patent were found to be
unpatentable by the Board in prior Inter Partes Review Nos. IPR2015-00898
and IPR2015-00899, the Federal Circuit having affirmed the Board’s
conclusions of obviousness with respect to these claims in Gramm v. Deere
& Co., 711 Fed. Appx. 650 (Fed. Cir. 2018, R. 36) (see also App. Br. 1).
In IPR2015-00899, most of the claims of the ’395 patent, including
independent claims 1 and 27, were found unpatentable based on the
combination of Lofquist, Chmielewski, and Cleveland (IPR2015-00899
Final Written Decision 48–49). In the most pertinent part, the IPR2015-
00899 Final Written Decision states:
one of ordinary skill in the art would have been prompted to
replace each of Chmielewski’s contact sensors with Cleveland’s
sensor arm (1) as it was known to be a simple substitution of
one known element for another, and (2) to achieve the
predictable result of improved flexibility provided by
Cleveland’s sensor arm, the benefits of which permit traversing
foreign objects without breaking or being damaged.
(Id. at 49).
In IPR2015-00899, the Board declined to institute review of
claims 12–26 presently reexamined, based on the above noted combination
of prior art references, and optionally Dougherty,8 finding that the Petitioner
had not established a reasonable likelihood of prevailing as to these claims
because it failed to explain how a person of ordinary skill in the art would
implement the combination based on “design choice,” and failed to explain

8 U.S. Patent No. 4,211,057 Dougherty et al., issued July 8, 1980
(hereinafter “Dougherty”).
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elements that are being substituted (IPR2015-00899 Decision Institution 9,
25–27).
In both IPR2015-00898 and IPR2015-00899, the Petitioner was Deere
& Company, the Requester in the present reexamination (Request for Ex
Parte Reexamination 3, 68). Accordingly, this is the third post-grant
proceeding regarding these claims of the ’395 patent that Deere & Company
has requested before the Patent Office.

PRINCIPLES OF LAW
[A] patent composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art. Although common sense
directs one to look with care at a patent application that claims
as innovation the combination of two known devices according
to their established functions, it can be important to identify a
reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the
claimed new invention does.
KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418–19 (2007).
The Court also noted that “[t]o facilitate review, this analysis should
be made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[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”)). The Court further warned that the “factfinder should be
aware . . . of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.” Id. at 421.

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ANALYSIS
Rejection 1
With respect to independent claim 12, which is the sole independent
claim on appeal, the Examiner finds that Chmielewski discloses a crop
header, an angular deflection sensor means, and control/calibration, while
Lofquist discloses a non-cut crop header having a head housing, a metal tip,
and a mounting bracket (Final Act. 4). The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to combine
Lofquist and Chmielewski “in order to allow for automated header height
adjustment of the combine/harvester.” (Id.).
The Examiner further finds that “Cleveland shows an arm 24 having
first and second ends seen in Figure 2,” and concludes that “it would have
been obvious to one of ordinary skill in the art to provide Cleveland’s sensor
arm with the devices of Lofquist et al. and Chmielewski et al. in order to
‘permit traversing foreign objects without breaking or being damaged’.
(See page 20 of the Request).” (Final Act. 4 (emphasis added); see also
Ans. 4). The Examiner also finds that Pearson shows a biasing means 98
urging shank 34,” and further concludes that “[i]t would have been obvious
to one of ordinary skill in the art to provide the biasing means of Pearson on
the device of Lofquist et al., Chmielewski et al. and Cleveland to prevent the
arm from being damaged when moved rearward as discussed in the Pearson
disclosure.” (Id. at 4–5 (emphasis added); see also Ans. 4). The Examiner
also notes that “[t]hese rejections mirror the PTAB IPR2015-00899
rejections adding the Pearson reference.” (Id. at 4; see also Ans. 4).
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The Patent Owner disagrees and argues that the Examiner has not
articulated a rational reason for incorporating the biasing spring structure of
Pearson to the device resulting from the combination of Lofquist,
Chmielewski, and Cleveland because “Cleveland already provides the
functionality of bending in any direction to prevent the arm from being
damaged.” (App. Br. 6, 8–9). In particular, the Patent Owner points out
that:
because Cleveland specifically states that “spring [38] must be
completely flexible so that it will bend in any direction ...” and
which “must be able to return to its original shape even after
being stressed and deflected for long periods of time”
(Cleveland at 5:9–12; 5: 14–16) (emphasis added)), there is no
motivation to add Pearson to the combination “to prevent the
arm from being damaged when moved rearward” when the
“completely flexible” spring 38 of Cleveland already provides
that feature or functionality in a different fashion without being
a biasing means.
(Id. at 8).
In that regard, the Patent Owner further argues that:
the Cleveland spring 38 (without the biasing means)
necessarily bends beyond vertical if the combine harvester
reverses and the Cleveland spring 38 will necessarily return to
its original shape . . . Therefore, the Office’s asserted
motivation as to why a person of ordinary skill would add
Pearson (i.e., “to prevent the arm from being damaged when
moved rearward.”) is . . . without merit.
(Id. at 15).
Thus, according to the Patent Owner, “the Office does not provide any
explanation as to how one could bias or why one would bias a ‘completely
flexible’ spring with another spring.” (Id. at 14). Accordingly, the Patent
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Owner argues that the rejection utilizes improper hindsight (Id. at 6; see also
Reply Br. 11).
We generally agree with the Patent Owner for the reasons argued.
The Examiner’s articulated rationale for combining the biasing spring
structure of Pearson to the device resulting from the combination of
Lofquist, Chmielewski, and Cleveland is inadequate because “it is
unnecessary or superfluous to bias the Cleveland spring to achieve the
articulated motivation asserted by the Office.” (Reply Br. 13).
The Examiner explains that “the fact that both [Cleveland and
Pearson] are employed to for [sic] the same purpose would, in the
examiner’s view, make for a stronger rejection, not one based on
impermissible hindsight.” (Ans. 7). While disclosure of structures for the
same purpose may suggest interchangeability of such structures, we do not
find it adequate for providing a reason to include both structures in the same
device. While there may be other rational reasons for providing the biasing
spring structure of Pearson in the device resulting from the combination of
Lofquist, Chmielewski, and Cleveland, the Examiner has not provide such a
reason with rational underpinnings to sufficiently support the rejection.
KSR, 550 U.S. at 418.
The Examiner further explains that Pearson provides “explicit reasons
for employing the biasing means.” (Ans. 8). Indeed, Pearson discloses that
its biasing spring structure prevents “breakage” of a skid when the
agricultural implement is moved in a reverse direction (see Pearson, col. 1,
ll. 51–53; col. 2, ll. 31–37; col. 6, ll. 2–9). However, this explicit reason set
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forth in Pearson in the context of the rejection that relies on the spring of
Cleveland as the arm, is insufficient for the reasons discussed supra.
The Examiner sows confusion by stating that “[t]he examiner does not
concur that the teaching of Pearson would be to have the Pearson spring bias
the Cleveland spring and appellant provides no evidence to support such a
conclusion.” (Ans. 8). If the Pearson biasing spring is not being utilized to
bias the spring of Cleveland that corresponds to the recited arm of claim 12,
it is unclear from the record how the disclosures of Cleveland and Pearson
are being applied in the rejection. In that regard, the Examiner further
alleges, albeit with respect to claim 13, that “[a]s the examiner has not
discussed nor employed the spring structure of Cleveland in the above
rejection, that argument is not germane.” (Ans. 9 (emphasis added)).
However, this explanation by the Examiner is entirely inconsistent
with the record as noted above in which the Examiner concluded that “it
would have been obvious to one of ordinary skill in the art to provide
Cleveland’s sensor arm with the devices of Lofquist et al. and Chmielewski
et al. in order to ‘permit traversing foreign objects without breaking or being
damaged’.” (Final Act. 4 (emphasis added); see also Ans. 4). This
explanation is also entirely inconsistent with the Examiner’s statement
“[t]hese rejections mirror the PTAB IPR2015-00899 rejections adding the
Pearson reference” (id.; see also Ans. 4) because the prior IPR proceeding
clearly utilized the arm of Cleveland as the above-reproduced portion of the
Final Written Decision makes explicitly clear (IPR2015-00899 Final Written
Decision 49). As such, the Patent Owner is correct that the related IPR and
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the present reexamination relied on the spring sensor arm of Cleveland
(Reply Br. 8–10).
The Examiner further states that because in claim 12, “there is an
open modifier, i.e. ‘comprising’, there can be additional structure present in
the device.” (Ans. 8). While the use of the transition term “comprising” in
claim 12 does allow for additional structure, that does not address the fact
that there must be an articulated reason with rational underpinnings to
support provision of additional structure.
Hence, for the reasons discussed supra, we agree with the Patent
Owner that the Examiner has not articulated an adequate reason with rational
underpinnings for incorporating the biasing spring structure of Pearson to
the device resulting from the combination of Lofquist, Chmielewski, and
Cleveland. Instead, the suggested combination appears to be based on
impermissible hindsight. KSR, 550 U.S. at 418–19, 421. Thus, we reverse
the Examiner’s rejection of claim 12.
The Patent Owner, inter alia, relies on dependency on claim 12 for
patentability of claims 13–20, 23, 25, and 26 (App. Br. 9). Accordingly, we
also reverse the Examiner’s rejection of these claims. The Patent Owner’s
arguments directed specifically to dependent claims 13, 14, and 16 (id. at
18–20) are moot. The Patent Owner’s further argument based on an asserted
lack of expectation of success is also moot (id. at 16–18; see also Reply
Br. 22). The Patent Owner’s unpersuasive assertion that there is no
motivation to combine Cleveland with Chmielewski and Lofquist (id. at 22–
28) has already been decided in view of the Federal Circuit’s affirmance of
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the Board’s decision in IPR2015-00899, which relied on the same
combination of references.
The Patent Owner’s arguments based on estoppel (App. Br. 28–29)
and the Supreme Court’s decision in SAS Institute v. Iancu (Reply Br. 3
(citing SAS Institute v. Iancu, 138 S. Ct. 1348 (2018))), appear to be matters
to be raised on petition to the Director, and do not appear to be issues
properly reviewable by the Board in this reexamination proceeding.
Nonetheless, such issues are moot.

Rejection 2
Claims 21 and 22 stand rejected as unpatentable over Chmielewski,
Lofquist, Cleveland, Pearson, and Agness, the Examiner further relying on
Agness for disclosing the recited guard means being a curved bar (Final
Act. 6). As the Patent Owner points out, the Examiner’s application of
Agness relative to these claims does not overcome the deficiency of the
rejection relative to claim 12 from which claims 21 and 22 ultimately
depend (App. Br. 21). Thus, this rejection is also reversed.

Rejection 3
Claim 24 stands rejected as unpatentable over Chmielewski, Lofquist,
Cleveland, Pearson, and McMurtry, the Examiner further relying on
McMurtry for disclosing the recited adjustable mounting arrangement (Final
Act. 6). Again, as the Patent Owner points out, the Examiner’s application
of McMurtry relative to claim 24 does not overcome the deficiency of the
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rejection relative to claim 12 from which claim 24 ultimately depends (App.
Br. 21). Thus, this rejection is also reversed.

CONCLUSION
The Examiner’s rejections are REVERSED.

REVERSED