Ex Parte 6523333 et al

Patent Trial and Appeal Board

Dec 3, 2012

95000115 (P.T.A.B. Dec. 3, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,115 11/28/2005 6523333 8319/87197 2577
45684 7590 12/03/2012
ROGER A. GILCREST
ICE MILLER LLP
250 WEST STREET
SUITE 700
COLUMBUS, OH 43215-7509
EXAMINER
CLARKE, SARA SACHIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
12/03/2012 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
____________________

CNH AMERICA LLC
Requester, Cross-Appellant, Respondent

v.

LEO A. METZGER
Patent Owner, Appellant, Respondent
____________________

Appeal 2012-004178
Inter partes Reexamination Control 95/000,115
Patent US 6,523,333 B21
Technology Center 3900
____________________

Before STEPHEN C. SIU, DANIEL S. SONG and JOSIAH C. COCKS,
Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

1 Patent US 6,523,333 B2 (hereinafter "'333 patent") issued February 25,
2003, to Metzger.
Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2

2

The Requester requests reconsideration under 37 C.F.R. § 41.79
(hereinafter "Req." or "Request") of our Decision mailed June 8, 2012
(hereinafter "Dec." or "original Decision"). The original Decision affirms-
in-part the Examiner's Final rejections of the claims with respect to the
Patent Owner's appeal, affirming the rejections of claims 7-27 while
reversing rejections of claims 1-6. The original Decision also affirmed the
Examiner's refusal to adopt various proposed grounds of rejections as cross-
appealed by the Requester. The original Decision also entered New
Grounds of Rejection of claims 1-27. Thus, each of the claims of the '333
patent presently stand rejected in the original Decision.
The Requester asserts that in the original Decision, we erred in
applying a narrow construction of the claim terms "shaft" and "control
system", and requests the modification of the original Decision in view
thereof. We grant the Request to the extent that we consider the Requester's
arguments infra, and we modify the original Decision to address the
proposed rejections which were overlooked by the Board, and to correct
typographical errors in the original Decision. However, we deny the various
substantive requests to modify our original Decision.

Typographical Errors
Preliminarily, in reviewing the original Decision in view of the
Request, we noted two typographical errors in the headings of the New
Grounds of Rejection. Specifically, the headings for Rejection 1 and
Rejection 2 that read "35 U.S.C. § 103(b)" should have read "35 U.S.C.
Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
3
§ 103(a)". (Dec. 46 and 48). These typographical errors in the headings are
corrected herein.

"Shaft"
In the original Decision, we agreed with the Examiner's claim
construction of the term "shaft." (Dec. 9). The reasons for our agreement
with the Examiner's construction have already been set forth in the original
Decision. (Id. at 9-10). The Requester asserts that the Board failed to apply
the broadest reasonable construction which is "mandated by all the intrinsic
evidence considered as a whole - including the original prosecution and
claims." (Req. 1-2).
Claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re
Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). In our view, the
claim construction advocated by the Requester is not reasonable in that it
does not take into consideration the specification and encompasses structures
such as gears, belts, pulleys, levers, etc. that cannot be reasonably be
considered shafts. (Dec. 9-10).

US '0162
The Requester also argues that during the original prosecution, with
respect to the US '016 reference, in applying the broadest reasonable

2 United States Patent 4,147,016.
Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
4
interpretation the Examiner found that the "elongated member 170"
constitutes a shaft (Req. 2-3), in contrast to the Board's finding that
elongated member 170 is not a shaft (see Dec. 16, 45, FF 6A-6C). The
Requester further points out that Patent Owner did not argue that US '016
lacks a shaft during the original prosecution, and conceded that it disclosed
"a control system." (Req. 3-4). From that concession, the Requester
attempts to attribute a "binding admission" to the Patent Owner in
connection with a shaft according to the language of claim 1 of the '333
patent. (Id.) However, not making an argument is not an unequivocal
admission. Nor is the statement that the US '016 includes "a control system"
an admission that a shaft exists in the control system of US '016. While the
particular control system of the claim is recited to include a shaft, there is
nothing in the record establishing that all control systems necessarily include
a shaft.
The Requester also argues that positions held by the Patent Office
with respect to the prior art and the claim construction during the original
prosecution was the "broadest reasonable interpretation" should be binding
to the Board during the reexamination. (Req. 6). We disagree. Claim
construction is a matter of law and we do not view reexamination to be
limited in scope as to preclude the correction of unreasonably broad claim
constructions and errors in fact. Furthermore, we also disagree with the
Requester's underlying contention that whatever the broadest claim
construction was in the original prosecution, such construction must be
encompassed by the broadest reasonable interpretation during the
reexamination. The Board's experience in routinely finding unreasonable
Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
5
claim constructions, whether that of appellants or examiners, does not
support the Requester's contention.

UK '971
As to UK '971, the Requester also argues that once the Board agreed
with the Examiner's construction of "shaft" as allowing for hollow shaft, it
"should have delved no further into UK '971" as "[n]either [Patent Owner]
nor the Examiner ever took the position that hub 9 of UK '971 was not a
'shaft' under the Examiner's construction." (Req. 8-9). However, we again
disagree that reexamination is limited in scope as to preclude the Board from
correcting factual errors in the record, and decline to turn a blind eye to a
factual deficiency in the applied prior art.
The Requester also argues that even if the Examiner's construction is
correct, UK '971 discloses a shaft like the shaft 17 of the '333 patent (Req. 9)
because the combination of hub 9 and hub 13 forms a shaft. (Id. at 10).
However, the Requester does not direct us to where the Examiner relied on
the combination of the hubs (see RAN 9a). More significantly, even if hub 9
and hub 13 are considered together as a combined component, such
combination discloses interlocked hubs, and not a shaft. While the resultant
interlocked hubs in the application disclosed in the device of UK '971 may
function in a manner similar to a shaft, this functionality does not diminish
the structural requirement for a shaft as recited in the claim. In this regard,
we observe that the rejection at issue is that of anticipation which "requires
the presence in a single prior art reference disclosure of each and every
element of the claimed invention, arranged as in the claim." Lindemann
Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
6
Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984) (citation omitted).
The Requester further argues that the Board erred in stating that
"‘[h]ub 9 does not rotate about the longitudinal axis of sensing element 8,
but rather pivots about the bearing pin 10’" because there is no requirement
for the shaft to rotate about the longitudinal axis of the sensing element
(Req. 11 quoting Dec. 24.). However, Requester misunderstands the point
of the quoted sentence which was that the hub 9 is not elongate so that to
any extent that the sensing element 8 can be considered part of the hub to
satisfy the shaft limitation, it does not rotate about its longitudinal axis (Dec.
24).
Furthermore, the Requester argues that the Board's decision finds
patentability based on the shape of the claimed structure, comparing
"rotatable member" of claim 7 and "shaft" of claim 1 (Req. 12). However, a
rotatable member is broader than a shaft in that not all rotatable members are
shafts (e.g., pulleys, gears, etc.) and we disagree with the Requester's
apparent view that there is no difference between these terms.

DD '624
The Requester asserts that we improperly imported limitations from
the specification with respect to the claim limitation "a control system for
setting an operating height of said platform relative to the ground" because
DD '624 provides "explicit and unambiguous disclosures" of the claim
limitations. (Req. 16). However, the scope of disclosure of DD '624 has
already been discussed and we found that it allows for setting of an upper
Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
7
limit of the cut, as distinguished from the claimed "operating height." (Dec.
26-27). While DD '624 characterizes its disclosure as being directed to a
device for "automatically maintaining" and "regulating" the cutting height of
combine-harvester cutting tools, the disclosed device performs this function
by setting the upper limit of the height which differs from the recited setting
of an operating height. Contrary to the Requester's assertion that the Board's
reading of DD '624 renders the disclosed device incapable of performing the
expressly stated objective of maintaining or regulating the cutting height, we
view the setting of a limit as being fairly characterized as "maintaining" and
"regulating" the cutting height.
With respect to assertions of improper importation of limitations, the
Board interpretation was made considering the claim, which further recites
that the "sensor [is] responsive to an angular position of a shaft and
generating a signal representative of said operating height" and in view of
the specification of the '333 patent (see citations of the '333 Patent set forth
in Dec. 27). In this regard, rather than importing limitations from the
specification of the '333 patent, we relied on the content of the specification
as simply a guide in ascertaining the meaning of the claim terminology. See
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). We view
setting of limits of movement to be different than the recited claim limitation
"setting an operating height," a point which is explained in the '333 patent
and the original Decision.
Whereas the Requester asserts that the Board erred in not addressing
Mr. Caulfield Supplemental Declaration of April 19, 2006, we observe that
the original decision states that we "refer to and address only specific
Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
8
portions of the record directly relevant to the disposition of the appeal."
(Dec. 2, fn 2). However, to elaborate, we generally agree with declarant Mr.
Johnson's explanation as to the manner in which the device of DD '624
operates. (Decl. Johnson ¶¶ 29, 30). We find Mr. Caulfield's declaration
stating that the switch 13 is a single-pole, double-throw switch or a double-
pole, double-throw switch (Supp. Decl. Caufield ¶ 57) to be speculative and
not reasonably supported by the disclosure of the DD '624 reference which
merely describes device 13 as a "terminal switch" that is controlled by
"pusher plate 12", and Figure 2 which illustrates the pusher plate 12 merely
pushing the distal end of the terminal switch 13, but without apparent
mechanism for pulling the distal end thereof (DD '624, Fig. 2). We further
observe that Mr. Caulfield's testimony with respect to switch 13 of DD '624
is premised on the Requester's assertion that DD '624 reference's
characterization of the device as "maintaining" and "regulating" the cutting
height satisfies the claim limitation "setting an operating height," an
assertion with which we disagree as discussed above. Hence, left without
suitable explanation is why the disclosed "terminal switch" takes on the
characteristics urged by Caufield when the actual operation of the device of
DD '624 is taken into consideration, i.e., to set a limit. Although we have
considered Mr. Caufield’s testimony, nothing requires us to credit the
inadequately explained testimony of an expert. See Rohm and Haas Co. v.
Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). The rejection of
claims 1-7 for which these issues arose was an anticipation rejection where
each and every element of the claimed invention must be present and
Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
9
inherency may not be established by probabilities or possibilities. In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).

"Control System"
US '036
Requester argues that the Examiner's rejection of claims 1, 2 and 6 as
being anticipated by US '036, and claims 3-5 as being obvious over US '036,
should be affirmed. (Req. 17). The Requester argues that '036 discloses the
recited control system of these claims and that a control system can be
electrical, magnetic, mechanical, etc. (Id.). However, the particular
technology of the control system was not the issue. As noted in the original
Decision and stated by the Requester (Dec. 29; Req. 18), the sensors of US
'036 sets upper and lower limits thereby setting an acceptable range of
heights. As noted above with respect to DD '624, the setting of such limits
does not correspond to setting of an operating height as recited in the claims
in view of the specification. Moreover, US '036 lacks a sensor that
generates "a signal representative of said operating height." (Dec. 29).
US '016
The Requester seeks reconsideration of our reversal of Examiner's
rejection of claim 7 as anticipated by US '016 and claim 8 as obvious over
US '016 stating that the Patent Owner has admitted during the original
prosecution that US '016 discloses a control system for setting the height of
the platform relative to the ground. (Req. 19). However, this line of
argument is misdirected in that the decided issue was not whether the device
of US '016 sets an operating height, but that in US '016, "the operating
Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
10
height is actually set by a different control system" instead of the control
system with the curved sensors which is disclosed as merely making fine
adjustments in the position of the head. (Dec. 30).
The Requester further asserts that the broadest reasonable
interpretation of "a control system for setting the operating height of said
platform relative to the ground" would allow for a "subsystem to be part of
an overall control system for maintaining an operating height of the head."
(Req. 19-20). However, the claimed control system is recited to include the
features of a sensor mechanism having a sensor arm that is mounted to a
rotatable member. In US '016, the assembly of components which perform
the pertinent function include no such corresponding features. As set forth
in our Decision, in our view, one with ordinary skill in this art would regard
US ‘016 as disclosing a separate control system performing distinct
functions. Indeed, we observe that our view is consistent with the
specification of the '333 patent which also recognizes distinct "control
systems" performing dedicated functions. ('333 patent, col. 1, ll. 29-423.)
The Requester does not persuasively demonstrate why it would be
reasonable in view of the specification of the '333 patent which discloses
that the integrated closed-loop control system includes the sensor arms, to
construe the claims to encompass a separately implemented control system
that has nothing to do with setting of the operating height of the platform.
As discussed, the control system of US '016 sets the operating height
in the US '016 utilizing cylinders 220 and beam 218 (Dec. 30; FF 6C). In

3 The '333 patent describes a “closed-loop control system” as functioning to
control a header operating height and a second and separate “lateral attitude
control system” as controlling the attitude of the header.
Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
11
contrast, the separate control system of the US '016 which includes the
curved sensors 37, 38 do not perform the function of setting the operating
height, and uses different components, namely cylinders 110, 112. (Dec. 30;
FF 6B). As such, the control system of the US '016 having the sensors does
not operate to maintain an operating height of the head which is set as
asserted by the Requester. Again, we observe that this issue arose in the
context of an anticipation rejection wherein the prior art reference must
disclose each and every element of the claimed invention, arranged as in the
claim. Lindemann, 730 F.2d at 1458.

Cross-Appeal
The requested reconsideration of Requester's Proposed Rejections 1
and 2 under cross-appeal turn on the claim construction of "shaft" (Req. 20-
21) and because we do not modify our construction or application thereof to
the prior art, we decline to modify our decision with respect to the
affirmance of the Examiner's refusal to adopt these proposed rejections.
The Requester also argues that the Board erred in finding that
Proposed Rejections 4 and 5 of claims 1-6 and 9 under 35 U.S.C. § 103 as
obvious over US '016 was not properly before the Board for review. (Req.
22; see Dec. 42). The Requester points out that these rejections differ from
Proposed Rejection 3 based on the DD '314 reference because the Examiner
expressly noted the proposed rejections of claims 1-9 under 35 U.S.C.
§§ 102 and/or 103 in RAN at ¶¶ 52 et seq., and there was no express refusal
to consider them (Req. 22).
Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
12
In view thereof, we modify the original Decision to incorporate the
analysis and orders set forth infra addressing the substance of Requester's
cross-appeal as set forth its brief ("CABR"). We further modify footnote 17
to delete references to the Proposed Rejections 4 and 5.

Proposed Rejection 4: Claims 1 and 2 as Obvious Over US '016
The Board's affirmance of the Examiner's refusal to adopt the
proposed anticipation rejection of these claims based on US '016 is set forth
in the original Decision. (Dec. 44-45).
The Requester argues that even if the Board agrees with the
Examiner's interpretation of the term "shaft", these claims should be rejected
as obvious because "the choice of one form of a member for transmitting
rotary motion versus another would have been a mere design expedient and
cannot form the basis of a patentable distinction on the present record."
(CABR 33).
With respect to US '016, the Examiner stated that "[m]ember 170
rotates about an axis which extends through a fulcrum located at one end of
the member. This axis extends perpendicular to the shaft and not through
the lengthwise points of the shaft." (RAN 21-22). We agree with the
Examiner. Even if the member 170 was modified in "form" as suggested by
the Requester, it would still merely function as a pivoted lever and would
not rotate about its lengthwise axis. Hence, the Examiner's refusal to adopt
the proposed rejection of claims 1 and 2 under 35 U.S.C. § 103 as obvious
over US '016 is Affirmed.

Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
13
Proposed Rejection 5: Claims 3-6 and 9 as Obvious Over US '016
The Requester relies on the proposed rejection of claims 1 and 2
discussed above to contend that these claims would have also been obvious
over US '016 (CABR 34). Hence, the Requester's argument is unpersuasive
for the reason already discussed and the Examiner's refusal to adopt the
proposed rejection of claims 13-6 and 9 under 35 U.S.C. § 103 as obvious
over US '016 is Affirmed.

CONCLUSIONS
The Requester for Rehearing is granted-in-part and denied-in-part as
follows:
1. Granted and the original Decision is modified as follows:
A. Typographical errors in the headings of the New Grounds
of Rejection are corrected to read "35 U.S.C. § 103(a)";
B. The analysis and orders set forth supra substantively
addressing the Requester's Proposed Rejections 4 and 5
are incorporated into the original Decision; and
C. Reference to Proposed Rejections 4 and 5 in footnote 17
of the original Decision is deleted.
2. Denied as to all other aspects.

REHEARING GRANTED-IN-PART; DENIED-IN-PART
rvb

Appeal 2012-004178
Reexamination Control 95/000,115
Patent US 6,523,333 B2
14
PATENT OWNER:

ROGER A. GILCREST
250 WEST STREET
COLUMBUS, OH 43215-2538

THIRD PARTY REQUESTER:

MARK BOLAND
SUGHRUE MION PLLC
2100 PENNSYLVANIA AVENUE N W, SUITE 800
WASHINGTON, DC 20037