Ex Parte Byrd

Board of Patent Appeals and Interferences

Jan 12, 2010

10680532 (B.P.A.I. Jan. 12, 2010)

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.
10/680,532 10/06/2003 Larry D. Byrd 12170-3 5021
7590 01/12/2010
Brinks Hofer Gilson & Lione
c/o Richard E. Stanley, Jr.
NCB Tower, Suite 3600
P.O. Box 10395
Chicago, IL 60610
EXAMINER
LOWE, MICHAEL S
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
01/12/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LARRY D. BYRD
____________________

Appeal 2009-004273
Application 10/680,532
Technology Center 3600
____________________

Decided: January 12, 2010
____________________

Before DEMETRA J. MILLS, ERIC GRIMES, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) (2002) from a Patent
Examiner’s final rejection of claims 1-15.1 We have jurisdiction under
35 U.S.C. § 6(b) (2002). We affirm.

1 Claims 16-21 have been canceled. (App. Br. 2; citations are to the
“Amended Appeal Brief under 37 C.F.R. § 41.37,” dated Jan. 10, 2008).
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STATEMENT OF THE CASE
Appellant’s claims are directed to a large bale handler designed to lift
and move two large agricultural bales at the rear end of a tractor.
Claims 1 and 14 are the only independent claims in the application.
Appellant states that “dependent claims 2-13 and 15 stand or fall with claims
1 and 14.” (App. Br. 3). Therefore, we select independent claims 1 and 14
to decide the appeal. See 37 C.F.R. § 41.37(c)(1)(vii)(2006). Accordingly,
the remaining claims stand or fall with claims 1 and 14.
Claims 1 and 14 read as follows:
1. A large bale handler, comprising:
a tractor connection, and a tine attached to said tractor
connection,
said tine being formed from tubing and extending along a
longitudinal axis of a tractor connected to said tractor
connection, and
said tine further extending along a length of two large
bales thereby supporting a weight of said two bales and
permitting said tractor to move said two bales from place to
place,
each of said two large bales weighing about 800 pounds
or more and having a longitudinal length about 5 feet or more,
wherein said tine extends rearward from said tractor
connection.

14. A large bale handler, comprising:
a tractor connection, a support beam attached to said
tractor connection and extending along a width, two tines
formed from tubing attached to opposing ends of said support
beam,
said two tines extending away from said tractor
connection generally parallel to each other, wherein said two
tines are adapted to support two large bales oriented in tandem
with one of said two large bales behind another of said two
large bales,
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each of said two large bales weighing about 800 pounds
or more and having a longitudinal length about 5 feet or more,
wherein said two tines extend rearward from said tractor
connection.

(App. Br. 10, 13, Claims App’x.)(Additional paragraphing
added).

Figures 2 and 6 from the Application, reproduced below,
illustrate an embodiment of the claimed large bale handler.
(Spec. [0013]).

{Fig. 2 illustrates a side perspective view of a large bale handler of the
present invention and Fig. 6 illustrates two bales loaded on the bale
handler connected to the rear of a tractor. (Id.).}

THE EXAMINER’S EVIDENCE

The Examiner relies upon the following as evidence in support of the
rejections:
Richey 3,472,528 Oct. 14, 1969
Miller 5,580,208 Dec. 03, 1996

“Long Forks manufactured by SAS Forks,” (hereinafter “SAS”),
Elmer Secker, Design Engineer and VP S.A.S. of Luxemburg, Ltd., pp. 1-6
at
http://web.archive.org/web/20010201161100/http://www.sasforks.com/long.
html).
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THE APPELLANT’S EVIDENCE
Appellant relies upon the following additional evidence in support of
the appeal:
Declaration of Larry D. Byrd, dated June 12, 2006.
Declaration of Larry D. Byrd, dated June 7, 2007.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-8, 11-12 and 14-15 stand rejected as being unpatentable
under 35 U.S.C. § 103(a) over SAS and Miller.
2. Claims 9-10 and 13 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over SAS, Miller and Richey.

ISSUE
Has the Appellant established that the Examiner erred in determining
that it would have been obvious to one of ordinary skill in the art at the time
the invention was made to connect a known tine, that extends along the
length of a large article to support and move the article, to the rear of a
tractor instead of the front of the tractor?
FINDINGS OF FACT
1. SAS described long forks, i.e., two tines formed from tubular
steel, for connection to a loader or fork lift truck to support the weight of,
and to move, cars and light trucks. (SAS 1).
1. SAS disclosed that the length of the forks could be made “ANY
size you prefer for YOUR operation,” typically between 4 feet and 17 feet
long. (Id. at 3).

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2. SAS Figure 2 is reproduced below:

{Fig. 2 shows a fork truck with
15 foot forks lifting a light truck. (Id. at 1).}

3. SAS illustrated forks connected to a tractor connection and
extending along a longitudinal axis of the tractor and further extending along
a length of a supported truck. (Id.).
4. SAS disclosed that its forks can be attached via “a four point
bucket attachment design” or a “three point bucket attachment design (center
dump cylinder” (id. at 3).
5. SAS did not describe connecting the long forks to extend rearward
from said tractor connection. (Id.).
6. SAS did not expressly describe using the long forks to handle two
large bales.
7. Miller described a tractor three-point hitch mounted transporter
for transporting heavy and bulky large loads over rough terrain. (Miller 1:4-
7, 61-63).
8. Miller Fig. 1 is reproduced below:

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{Fig. 1 shows a side elevational view of a tractor with a transporter attached
to a three-point hitch and extending rearward from the tractor connection.
(Id. at 2:41-43).}

9. As evidenced by Miller, it was known in the art at the time of the
invention to attach tractor equipment to the rear of a tractor such that it
extended rearward from said tractor connection.
PRINCIPLES OF LAW
The factual inquiry to determine whether an invention is obvious
under 35 U.S.C. § 103 requires consideration of: (1) the scope of and content
of the prior art; (2) the differences between the claimed subject matter and
the prior art; (3) the level of ordinary skill in the art; and (4) secondary
considerations, such as unexpected results. Graham v. John Deere Co.,
383 U.S. 1, 17 (1966).
“If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” KSR International Co. v. Teleflex Inc.,
550 U.S. 398, 401 (2007). “[L]ong-felt need is analyzed as of the date of an
articulated identified problem and with evidence of efforts to solve that
problem.” Texas Instruments, Inc. v. ITC, 988 F.2d 1165, 1178 (Fed. Cir.
1993).
ANALYSIS
I. The Examiner’s Rejection
The Examiner found that SAS described a tractor connection and two
tines formed from tubing extending along a longitudinal axis of the tractor.
(Final Rej., July 13, 2007, 3). The Examiner also found that SAS disclosed
that the tines extend a length of between 8 feet and 15 feet, i.e., the length of
two large bales. (Id.). Additionally, the Examiner found that SAS described
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tines that permit the tractor to move two large bales each having a weight of
about 800 lbs, as the tines are shown to lift a truck typically weighing in
excess of 4,000 lbs, and that is 5 feet in length. (Id.). The Examiner also
found that SAS did not teach tines located on the rear of the tractor.
However, the Examiner found that it was well known in the art at the
time of the invention to locate handling equipment on the rear of a tractor, as
evidenced by Miller and the Applicant’s Specification. (Id.). Miller Figures
1 and 2 illustrate handling equipment attached to the rear of a tractor.
(Id.)(citing Miller Figs. 1 and 2). According to the Background section of
the Specification, “[a] single bale fork is typically connected to the rear of a
tractor with the three-point hitch and has two parallel tines extending
rearward.” (See Applicant’s Spec. [0003])(emphasis added). The Examiner
determined that it would have been obvious to a person of ordinary skill in
the art at the time the invention was made to modify SAS by attaching the
tines in the rear of the tractor, as illustrated by Miller, to carry a load
rearward from the tractor. (Id.)
II. Appellant’s Contentions
Appellant challenges the Examiner’s rejection of claims 1 and 14 by
asserting that the Examiner “appears to be relying upon supposition and
conjecture … instead of on the facts in the record.” (App. Br. 4).
Specifically, Appellant challenges the Examiner’s statement that “if claim 1
were to issue, the Applicant would be granted a right to exclude the public
from putting the SAS forks on the rear of a tractor, a practice that would
have been obvious, and was likely performed, prior to Applicant’s
invention.” (Id.)(citing Fin. Rej. 6-7). According to the Appellant, “there is
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no factual support in the record for the suggestion that anyone ever put the
SAS forks on the rear of a tractor.” (Id.).
This argument is not persuasive. The Examiner suggested that the
proposed modification “was likely performed” in response to the Applicant’s
argument in a prior office action. It is clear that this “supposition” was not
the basis of the Examiner’s rejection. Rather, the Examiner expressly relied
upon the teachings of the prior art and the level of ordinary skill in the art at
the time of the invention. (See Fin. Rej. 3). Specifically, the Examiner
found that SAS described a tractor having tines attached and extending along
a longitudinal axis of the tractor for use in lifting and moving a large object.
(Id.). The Examiner also found that it was well known in the art at the time
of the invention to put handling equipment on the rear of a tractor, as
evidenced by Miller. (Id.). Based upon those factual findings, the Examiner
determined that a person of ordinary skill in the art at the time the invention
would have found it obvious “to modify SAS with the rear attachment
location of Miller in order to carry a load on the rear of the tractor.” (Id.).
We find that the Examiner applied a proper factual analysis in rejecting the
claims. See Graham, 383 U.S. at 17 (discussing the factual inquiries for
determining whether an invention is obvious under 35 U.S.C. § 103).
Appellant also asserts that the Examiner failed to “account for
Applicant’s claim limitations that require the tines to be adapted to support
and move two large bales.” (App. Br. 4). Appellant asserts that “a large
bale is one that is about 5.5 to 6 feet round and about 5 feet long and
weighing about 800 to 3,000 lbs.” (Id.)(citing Spec. at [0002]). According
to Appellant, “[i]t is undisputed that SAS forks are not designed for moving
large bales. Instead, the SAS forks are used for lifting automotive vehicles.”
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(Id. at 4, 9). Thus, Appellant challenges the obviousness rejection by
alleging that “[t]he Examiner has cited no evidence that forks designed for
lifting automotive vehicles are equivalent or interchangeable with tines
designed for moving large agricultural bales.” (Id. at 4-5, 9). According to
Appellant, “the SAS forks would not work for lifting large agricultural
bales,” as evidenced by the Declaration of Inventor Larry Byrd. (Id.
9)(citing the Declaration of Mr. Larry Byrd, June 7, 2007, ¶¶ 2-5).
This argument is also unpersuasive. To begin, the phrase
“adapted to” is recited in Appellant’s claim 14. We agree with the
Examiner that the phrase merely requires the article to be structurally
capable of performing the recited function. (See Ans. ¶ 2).
The Examiner found that the SAS tines were capable of
supporting two large bales, as required by claim 14, because: (a) SAS
described tines having a longitudinal length of about 8’ to 15’, i.e., the
length of two large bales (see claims 1 and 14 reciting “about 5 feet or
more” each); and (b) SAS described tines that can lift and move a car
or light truck, which the Examiner found typically weighs in excess of
4,000 lbs, i.e., more than the weight of two large bales (see claims 1
and 14 reciting “about 800 pounds” each). With these undisputed
findings, the Examiner established that the SAS tines are capable of
supporting and moving two large bales, as claimed.
We find that the cited paragraphs of Mr. Byrd’s Declaration are not
persuasive of nonobviousness. Declarant states “[t]he SAS forks will not
work for bales without extensively redesigning them.” (Decl., dated June 7,
2007, ¶ 2). More specifically, Declarant states that “the SAS fork is made to
fit a four point attachment on a front end loader” and “would require
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significant redesign work to fit the SAS forks on the rear end of a farm
tractor on a three point hitch.” (Id.). However, the evidence supports the
Examiner’s finding that SAS disclosed that the forks will work with either a
three point or four point bucket/hitch attachment design. (Fin. Rej. 3).
Declarant also states that the width across the tines of the SAS forks is
3.5 feet, but in contrast “the width across the tines of my bale fork is 4.5
feet.” (Decl. ¶ 3). According to Mr. Byrd, SAS is too narrow to slide under
the edges of a 5 foot bale. (Id.). However, claims 1 and 14 do not recite any
limitations regarding the width across the tines of the fork or describing any
width of the bales. Rather, the claims address supporting and moving two
large bales merely with respect to the longitudinal length and weight of the
bales. Moreover, SAS stated that “[w]e can make ANY size you prefer for
YOUR operation” (SAS 3) and Appellant has not established with
persuasive evidence that extending the width of the SAS tines would not
have been obvious and within the skill of an ordinarily skilled artisan at the
time of the invention.
Declarant additionally states that the tips of the SAS tines
would need to be redesigned because his test revealed that “these kind
of tips … easily dig into the ground.” (Decl. ¶ 4). Mr. Byrd asserts
that the tips on his bale fork have diamond-shaped caps that will not
tear and dig. (Id.). According to Mr. Byrd, “[w]e did a lot of
experimenting to develop these tips to work well on hay bales.” (Id.).
However, the claims do not include any limitations regarding the shape of
the tips. To the extent that the SAS tines would “easily dig into the ground,”
as Mr. Byrd asserted, Appellant has not supplied persuasive evidence that
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modifying the tips of the SAS fork would not have been obvious and within
the skill of an ordinarily skilled artisan at the time of the invention.
In the fifth paragraph of the declaration, Declarant states that “[t]he
parts of the SAS fork are not interchangeable with my bale fork” and that the
SAS fork is more expensive. (Decl. ¶ 5). However, these opinions do not
support the Appellant’s assertion that “the SAS forks would not work for
lifting large agricultural bales.” (App. Br. 9). Consequently, we do not find
that the Appellant has established Examiner error with the Declaration.
Appellant next challenges the Examiner’s rejection by asserting that
“[t]he Examiner improperly relies upon a mere conclusion of obviousness
without articulating an apparent reason why [it would have been obvious to
put the SAS forks on the rear of a tractor].” (App. Br. 5). Appellant
contends that the Examiner has “found two separate pieces of prior art and
simply concluded that it would have been obvious to combine them.” (Id. at
7). Therefore, Appellant alleges, the Examiner “improperly relie[d] upon
impermissible hindsight to reconstruct the Applicant’s invention.” (Id.).
This argument is also unpersuasive. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR,
550 U.S. at 401. As the Examiner explained, modifying SAS by moving the
tines to the rear of the tractor represented a known and predictable variation
for the location of the tines. (See Ans. ¶ 3). Also, as discussed, supra, the
Examiner reasoned that a skilled artisan at the time of the invention would
have found such a modification to have been obvious “in order to carry a
load on the rear of the tractor.” (Fin. Rej. 3). We find that this reasoning is
based upon the evidence of the record, as Miller disclosed carrying a load on
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the rear of a tractor. Consequently, we do not find that the Appellant has
established that the Examiner erred in rejecting the claims.
Nor are we persuaded that the Examiner improperly relied upon
hindsight. The rejection relied upon ordinary skill in the art at the time of
the invention to place tines on the rear of a tractor instead of the front. As
the Examiner explained, the skill required for this predictable variation was
within the art, as evidenced by Miller and acknowledged in Appellant’s
Specification. (See Miller Figs. 2 and 3; see also Spec. [ 0003] (Background
section describing that “[a] single bale fork is typically connected to the rear
of a tractor with the three-point hitch and has two parallel tines extending
rearward.”) (Emphasis added). Therefore, we find that the Examiner did
not rely upon inappropriate hindsight.
Appellant further asserts that a skilled artisan at the time of the
invention would not have been motivated to move the forks in SAS to the
rear end of a tractor because: (a) it would be unconventional to extend the
forks from the rear of the loader; (b) it would be more difficult to see behind
a loader or tractor and to position the tines under the object to be lifted; and
(c) it would require consideration of weight distribution and “it is unlikely
that the weight distribution of the vehicles in either SAS or Miller would
support lifting two large bales at the rear end of the vehicles disclosed
therein.” (App. Br. 8). Additionally, Appellant asserts that “SAS could not
even be readily modified to attach an implement to the rear of the vehicle.”
(Id.). According to Appellant, the Examiner’s “conclusion ignores the
numerous considerations involved in mounting implements on the front and
rear ends of a vehicle.” (Id. at 9).
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These contentions are not persuasive because they are based merely
on attorney argument and conjecture rather than evidence. As discussed,
supra, the Examiner established that the proposed modification of SAS was
within the level of ordinary skill in the art at the time of the invention. We
do not find that Appellant has established otherwise with persuasive
evidence.
Nor are we persuaded by Appellant’s argument that the Examiner’s
proposed modification “would change the principle of operation of SAS.”
(Id at 8). According to Appellant, “SAS is directed to loaders and the like
that are particularly designed to lift from the front end of the vehicle.” (Id.).
Appellant views the SAS disclosure too narrowly. The principle of
operation of the SAS forks is attachment to a tractor to lift and move large,
i.e., long and heavy, articles. Appellant has not established with any
persuasive evidence that modifying SAS to use tines or forks attached to the
rear of a tractor would change its function of lifting and moving such large
articles. Consequently, we do not find that Appellant has established error
on the part of the Examiner.
Finally, Appellant relies upon his June 12, 2006 Declaration to
establish “evidence of long felt need, disbelief by people of skill in the art
and commercial success.” (Id. at 9). According to Appellant, “[t]hese
secondary considerations of nonobviousness weigh against a conclusion that
the invention would have been obvious.” (Id. at 9-10). In particular,
Appellant asserts that he searched for a large bale handler and “there just
wasn’t one to be had.” (Id. at 10)(citing Decl. ¶ 3). Appellant also asserts
that he was repeatedly told that developing a large bale handler “will not
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work.” (Id.). According to Appellant, his “competition copied the bale
handler he developed.” (Id.).
We have considered Mr. Byrd’s Declaration as rebuttal evidence.
However, we accord it little weight. The June 12, 2006 Declaration did not
address or consider the prior art relied upon by the Examiner in rejecting the
claims, i.e., Miller and SAS. To the extent that Appellant relies on the
Declaration to establish unexpected results, that reliance is misplaced as
these “results must be shown to be unexpected compared with the closest
prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
Moreover, Declarant’s statement that he has “70 plus dealers and have made
over two hundred Bale Wizards” (Decl. ¶ 10) does not indicate whether this
represents a substantial quantity in the market, and is a very weak showing,
if any, of commercial success. See In re Huang, 100 F.3d 135, 140 (Fed.
Cir. 1996). Nor has Declarant established a long-felt need by stating that
when he looked for his desired two-bale fork “there just wasn’t one to be
had.” (Decl. ¶ 3). Rather, “long-felt need is analyzed as of the date of an
articulated identified problem and with evidence of efforts to solve that
problem.” Texas Instruments, 988 F.2d at 1178. Taking the evidence as a
whole, we do not find the secondary considerations lead to a conclusion of
nonobviousness.

CONCLUSION OF LAW
On the record before us, Appellant has not shown error on the part of
the Examiner. It would have been obvious to one of ordinary skill in the art
at the time the invention was made to connect a known tine that extends
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along the length of a large article to support and move the article to the rear
of a tractor instead of the front of the tractor.
DECISION
The rejection of claims 1-8, 11-12 and 14-15 under 35 U.S.C. §103(a)
as being unpatentable over SAS and Miller is AFFIRMED.
The rejection of claims 9-10 and 13 under 35 U.S.C. §103(a) as being
unpatentable over the combination of SAS, Miller and Richey 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)(iv) (2006).

AFFIRMED

lp

BRINKS HOFER GILSON & LIONE
C/O RICHARD E. STANLEY, JR.
NCB TOWER, SUITE 3600
P.O. BOX 10395
CHICAGO IL 60610