Ex Parte Roessler

Patent Trial and Appeal Board

Dec 14, 2016

13955766 (P.T.A.B. Dec. 14, 2016)

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.
13/955,766 07/31/2013 Kent Roessler 5057.01US03 1085
62274 7590 12/15/2016
DARDI & HERBERT, PLLC
Moore Lake Plaza, Suite 205
1250 East Moore Lake Drive
Fridley, MN 55432
EXAMINER
MCGOWAN, JAMIE LOUISE
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
12/15/2016 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 KENT ROESSLER
____________

Appeal 2015-000913
Application 13/955,766
Technology Center 3600
____________

Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kent Roessler (“Appellant”)1 appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1–5, 7, 8, and 10–15 under 35 U.S.C.
§ 103(a) as unpatentable over Hamlett (US 2,533,793, iss. Dec. 12, 1950)
and Johansson (US 5,002,656, iss. Mar. 26, 1991). The Board has
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 The Appeal Brief identifies Appellant as the real party in interest. Appeal
Br. 3.
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CLAIMED SUBJECT MATTER
The independent claims are claims 1 and 10. Claim 1 illustrates the
subject matter on appeal, and it recites (with line breaks added):
1. A front end loader attachment attachable to a front end
loader that operates on a surface, the attachment comprising
a rotatable drum having a longitudinal axis and a mount
for mounting the attachment to the front end loader,
with the drum having a right circular cylindrical shape
comprising a circular base and an opposing circular opening,
the drum comprising sidewalls connected to the base and
extending to the opening, wherein the sidewalls comprise a
plurality of openings sized to prevent passage of materials
exceeding a gauge, with the circular opening being the only
opening of the drum that allows passage of the materials
exceeding the gauge out of the drum, and
the drum is rotatable about the longitudinal axis,
wherein the drum is mounted to the attachment only at
the base and is movable to engage the surface.
Appeal Br. 20 (Claims App.).
ANALYSIS
Claims 1–3, 5, 7, 8, 10, 14, and 15
Appellant argues for the patentability of these claims together as a
group. See Appeal Br. 6–18. We select claim 1 to decide the appeal as to
these claims, with the other claims standing or falling with claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 1, the Examiner finds Hamlett discloses rotatable
drum 3 having a right circular cylindrical shape, and comprising circular
base 12 and an opposing circular opening (at ring 9). Final Act. 2; see
Hamlett, Fig. 1, 3:16–20. The Examiner finds Hamlett’s drum 3 has
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sidewalls 13 comprising a plurality of openings sized to prevent passage of
materials exceeding a gauge. Final Act. 2; see Hamlett, Fig. 3, 1:35–42,
5:35–53. The Examiner finds Hamlett’s drum 3 is not disclosed to be
“mounted via a base at one end to a front end loader.” Final Act. 2.
The Examiner finds Johansson discloses rotatable drum 3 “for
separating ground elements from dirt and debris,” by mounting the drum
“via a base plate [7], and only at the base plate, at one end to a front end
loader.” Final Act. 2; see Johansson, Fig. 4, 2:35–51. The Examiner finds
large gauge material that enters Johansson’s drum can only exit the drum via
a front, circular opening. Final Act. 2. The Examiner determines it would
have been obvious “to mount the right circular drum of Hamlett to the front
of a front end loader via a base plate to use the drum as a rock separator,” as
the application of a known technique to a known device ready for
improvement to yield predictable results, thereby “mak[ing] the separating
drum of Hamlett more compact and more mobile.” Id. at 2–3 (citing KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)); see also id. at 4–5
(expounding on obviousness rationale). In particular, the Examiner finds
Hamlett’s rear product delivery gap 20 in right circular cylindrical drum 3,
and Hamlett’s augur 4, would no longer be needed in light of Johansson’s
teaching of a drum having closed back 7 and open front 8 for emptying of
material from the drum. Id. at 5. The Examiner similarly finds Hamlett’s
conveyor (Fig. 1, elements 5–7) would not be necessary in the modified
device, which would advantageously be more compact and mobile without
them. Id.
Appellant argues Johansson does not allow for, teaches away from,
and plainly excludes a right circular cylindrical shape drum, such as
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disclosed in Hamlett, because Johansson requires an “angle” or “bend” at its
open front end 8. Appeal Br. 9–11, 12; see Johansson, Fig. 4 (illustrating
angle or bend between separating part 9 (line H) and front part 25 (line U)).
Such an angle or bend is necessary in Johansson, according to Appellant, to
contain the larger gauge materials within drum 3 as the drum rotates to
separate out the smaller gauge material through separating part 9, while the
bottom wall of separating part 9 remains parallel to the ground (line H) to
increase separation efficiency. Appeal Br. 9–11.
Appellant also argues the Examiner’s proposal to mount Hamlett’s
drum 3 on a front end loader “requires a dramatic redesign” of Hamlett’s
apparatus. Appeal Br. 12–13, Ex. 3 (Fig. A), Ex. 4 (Fig. B). In particular,
according to Appellant, the Examiner’s proposal would require removing the
“important aspect” of Hamlett’s suspension mechanism which “is not a
throw-away feature to be ignored when considering” Hamlett; removing
Hamlett’s cleaning roller 80; removing Hamlett’s front height adjustability
mechanism 45, 48; removing Hamlett’s augur 4; and closing up Hamlett’s
delivery opening 20 in drum 3. Id. at 8, 12–14. Based on these
considerations, Appellant further contends the Examiner’s compact mobility
rationale for mounting Hamlett’s drum 3 on a front end loader is merely
conclusory, and does not explain or provide a rational basis for why one
would have redesigned Hamlett as proposed by the Examiner. Id. at 13–14.
Appellant also submits an Inventor Declaration,2 in support of the
proposition that the claimed invention “was not predictable and has
unexpected results,” and in the alternative, as secondary evidence of non-

2 See Appeal Br., Ex. 1, Declaration of Kent Roessler (executed Dec. 2,
2013).
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obviousness based on unexpected results. Appeal Br. 15–17. The alleged
unexpected results include the usefulness of a “single step process” (Decl.
¶ 9a); operability in various field conditions as provided by the “round
shape” of the “curved drum” versus a “flat/rectangular shape” (id. ¶ 9c);
cleaning the rocks as picking takes place “because the drum is spinning and
dirt is passing out through the bars” (id. ¶ 9d); versatility provided by “the
curvature that allows the operat[or] to pick-and-choose the particular spot or
item that needs to be ‘picked’” (id. ¶ 9e); and elimination of plugging (id.
¶ 9f).
The Examiner answers that, when modifying Hamlett’s drum 3 to be
mounted on a front end loader, Hamlett’s suspension system would not be
needed because “the front end loader of the combination would be able to
maintain the desired height/angle of the drum.” Ans. 5. The Examiner
further maintains the “comprising” transition in claim 1 leaves the claim
open to using Hamlett’s other devices such as cleaning roller 80 and height
adjustability mechanism 45, 48. Id.
In considering the arguments and evidence presented, including the
Inventor Declaration, we sustain the Examiner’s determination that claim 1
would have been obvious over Hamlett and Johansson. Appellant’s
arguments and evidence overlook that Hamlett teaches the usefulness of a
right circular cylindrical shape drum 3 with rods 13 to dig into the ground,
and separate materials found in the ground from the soil in the ground.
Hamlett, Fig. 1, 1:2–8, 5:35–53. The Examiner’s determination that it
would have been obvious to mount Hamlett’s drum 3 to a front end loader,
in light of Johansson’s teachings of mounting a separation drum on a front
end loader, to provide a more compact and more mobile separation
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apparatus, is supported by rational underpinnings for the proposed
modification and by a preponderance of the evidence. Final Act. 2–3, 4–5.
Johansson does not teach away from the Examiner’s modification.
Johansson may arguably teach away from modifying its drum 3 to remove
the angle to provide a right circular cylindrical shape, but that is not the basis
for the Examiner’s rejection. Further, the prior art as a whole—that is,
Hamlett and Johansson—teaches that right circular cylindrical separating
drums may be used to dig into and separate materials in the ground
(Hamlett, Fig. 1), and angled separating drums may be used to separate
materials above the ground (Johansson, Figs. 1–6). Thus, a person of
ordinary skill in the art would have been motivated to pursue the desirable
properties of Hamlett’s right circular cylindrical drum being mounted on a
front end loader for digging into the ground, even at the expense of
foregoing the benefits of an angled drum disclosed by Johansson for
separation of materials above the ground. See In re Urbanski, 809 F.3d
1237, 1243–44 (Fed. Cir. 2016).
As to the modifications required to mount Hamlett’s drum 3 on a front
end loader, we agree with the Examiner’s reasoning in these regards. That
is, it would have been obvious to do away with Hamlett’s delivery
opening 20 as no longer needed, based on Johansson’s teaching that
separated materials may be emptied from the front opening of the drum,
thereby making the drum more mobile. Final Act. 5; see In re Keller, 642
F.2d 413, 425 (CCPA 1981) (obviousness test is not whether the features of
one reference may be bodily incorporated into the structure of the other
reference, but is “what the combined teachings of the references would have
suggested to those of ordinary skill in the art”). Similarly, Hamlett’s
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complicated suspension mechanism for supporting drum 3 would no longer
be needed, because Johansson’s front end loader itself would be able to
maintain the desired height and angle of the drum. Ans. 5; In re Keller, 642
F.2d at 425. Further, claim 1 is open to retaining Hamlett’s cleaning roller
80, front height adjustability mechanism 45, 48, and augur 4, if desired.
Ans. 5.
Finally, the Inventor Declaration alleging unexpected results is not
persuasive evidence of non-obviousness. When alleged unexpected results
are relied upon, the results must be shown to be unexpected compared with
the closest prior art, which in this case is Hamlett. In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (citing In re De Blauwe, 736 F.2d
699, 795 (Fed. Cir. 1984)). The Inventor Declaration fails to direct us to any
meaningful experimental evidence demonstrating that the actual differences
between the claimed subject matter (a right circular cylindrical shaped
separation drum attachable to a front end loader) and Hamlett (a right
circular cylindrical shaped separation drum mounted on a harvesting tractor)
give rise to unexpected results.
For the foregoing reasons, we sustain the rejection of claims 1–3, 5, 7,
8, 10, 14, and 15 as unpatentable over Hamlett and Johansson.
Claim 4
Claim 4 indirectly depends from claim 1, and adds “the drum further
comprises an interior flute.” Appeal Br. 20 (Claims App.). Appellant
argues simply that “the prior art does not teach or suggest an interior flute.”
Appeal Br. 17. This does not constitute a sufficient argument for separate
patentability of claim 4. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement
which merely points out what a claim recites will not be considered an
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argument for separate patentability of the claim.”); In re Lovin, 652 F.3d
1349, 1356–57 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). Thus, we
sustain the rejection of claim 4 as unpatentable over Hamlett and Johansson.
Claim 11
Claim 11 depends from independent claim 10—which is essentially a
method version of claim 1—and adds “maneuvering the front end loader and
drum to contact [a] soil with the drum, rotating the drum, and forcing the
rotating drum into the soil.” Appeal Br. 21–22 (Claims App.). Appellant
traverses the rejection of claim 11 on the bases that “[t]he Johansson bucket
cannot be rotated and forced into the soil,” and “[t]he Hamlett device relies
on continuous harvesting and feeding and is not adaptable to maneuvering
the front end loader and drum” as specified in claim 11. Id. at 17.
Appellant’s arguments are not persuasive. As discussed in detail
above, the basis for the Examiner’s rejection is the obviousness of mounting
Hamlett’s drum 3 on to a front end loader. Thus, whether or not Johansson’s
bucket can be rotated and forced into soil is irrelevant to the rejection.
Further, the Examiner’s finding that Hamlett’s drum would operate as
recited in claim 11, when mounted on a front end loader, is supported by a
preponderance of the evidence. See Final Act. 4. Thus, we sustain the
rejection of claim 11 as unpatentable over Hamlett and Johansson.
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Claims 12 and 13
Claim 12 depends from claim 11, and adds the claimed method
“further compris[es] removing the drum from the soil, lifting the drum, and
rotating the drum to allow materials smaller than the gauge to pass out of the
plurality of openings.” Appeal Br. 22 (Claims App.). Claim 13 depends
from claim 12. Id. Thus, when considering the dependency of claims 12
and 13 from claim 11, these claims require both “rotating the drum[] and
forcing the rotating drum into the soil” (claim 11) and “removing the drum
from the soil” to perform a separation rotation (claim 12).
Appellant traverses the rejection of claim 12 on the basis that Hamlett
and Johansson do not teach or suggest the claimed subject matter. Appeal
Br. 17–18. We are persuaded of Examiner error. While we appreciate that
Hamlett discloses rotating the drum and forcing the rotating drum into the
soil (Hamlett, Fig. 1), and Johansson discloses performing a separation
operation with a rotating drum above the ground (Johansson, Figs. 1–6), the
Examiner has not provided any reason why a person of ordinary skill in the
art would have found it obvious to combine these two actions in one method,
as claimed. See Final Act. 4. Therefore, we do not sustain the rejection of
claims 12 and 13 as unpatentable over Hamlett and Johansson.
DECISION
The Examiner’s decision to reject claims 1–5, 7, 8, and 10–15 is
affirmed as to claims 1–5, 7, 8, 10, 11, 14, and 15, and is reversed as to
claims 12 and 13.
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).
AFFIRMED-IN-PART