Ex Parte Schnell

Board of Patent Appeals and Interferences

Oct 25, 2011

10724807 (B.P.A.I. Oct. 25, 2011)

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.
10/724,807 12/01/2003 Tim Schnell 5034-002 3683
24112 7590 10/26/2011
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
TORRES, ALICIA M
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
10/26/2011 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 TIM SCHNELL
____________________

Appeal 2009-012861
Application 10/724,807
Technology Center 3600
____________________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012861
Application 10/724,807

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STATEMENT OF THE CASE
Tim Schnell (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1, 2, 4, 10, 11, 161, 21-28, 30, 33 and 34. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention is directed to gang-type lawn mower
systems including a pull-type frame structure having a series of mower
decks secured thereto, wherein each mower deck is powered by a single
power source. (Spec. 1:6-8).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A gang type lawn mower system adapted to be pulled
behind a tractor, comprising:
a. a wheel supported main frame;
b. a power source mounted on the main frame;
c. at least two mower decks connected to the main frame,
each mower deck having a rotary blade;
d. each mower deck being movably mounted to the main
frame and movable from an operative lowered position where
the mower deck is operative to cut grass to an elevated stowed
position;
e. a drive interconnected between the power source and
each of the mower decks for driving each of the mower decks

1 Claims 18 and 19, which stand rejected, have not been appealed
(App. Br. 2, see also Final Rej. 2 and Ans. 11). Thus, we summarily sustain
the rejection of claims 18 and 19 (Final Rej. 2). In re Berger, 279 F.3d 975
(Fed. Cir. 2002) (holding that Board did not err in sustaining a rejection
under 35 U.S.C. § 112, second paragraph, when the applicant failed to
contest the rejection on appeal)
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whereby the mower decks are driven by a single power source
mounted on the main frame; and
f. wherein in moving from the operative position to
the stowed position each of the mower decks moves
through an angle of at least 91°.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1, 2, 16, 21, 22, 26 and 27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Miller (US 2,682,740, issued Jul.
6, 1954) in view of Aron (US 4,723,404, issued Feb. 9, 1988).
2. Claims 4 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller in view of Aron, and further in view of
Allison (US 4,346,547, issued Aug. 31, 1982).
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Miller in view of Aron, and further in view of Torras (US
4,926,621, issued May 22, 1990).
4. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Miller in view of Aron, and further in view of Erdman (US
3,608,284, issued Sep. 28, 1971).
5. Claims 23-25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller in view of Aron, and further in view of
Bottenberg (US 3,208,207, issued Sep. 28, 1965).
6. Claims 28 and 33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller in view of Bottenberg.
7. Claim 34 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Miller in view of Bottenberg, and further in view of Aron.

Appeal 2009-012861
Application 10/724,807

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ISSUES
The issues before us are: (1) whether the Examiner erred in
concluding that the combined teachings of Miller and Aron would have
rendered obvious a gang type lawn mower system comprising at least two
mower decks, wherein each mower deck moves through an angle of at least
91° when moving from an operative position to a stowed position, as called
for independent claim 1 (App. Br. 10); (2) whether the Examiner erred in
concluding that the combined teachings of Miller, Aron and Allison would
have rendered obvious a drive that includes a belt drive and a belt tensioner
for maintaining a tension on the belt drive, as called for in dependent claim
30 (App. Br. 13); and (3) whether the Examiner erred in concluding that the
combined teachings of Miller and Bottenberg would have rendered obvious
a tongue pivotally connected to a frame, as called for in dependent claim 28
and independent claim 33 (App. Br. 17).

ANALYSIS
Rejection of claims 1, 2, 16, 21, 22, 26 and 27 over Miller and Aron
Independent claim 1 calls for, inter alia, “wherein in moving from the
operative position to the stowed position each of the mower decks moves
through an angle of at least 91°.”
Appellant contends that (1) the combined teachings of Miller and
Aron describe moving the mower decks to a 90° orientation, not through an
angle of at least 91°, as called for in independent claim 1 (App. Br. 10-11);
and (2) the device of Miller can only move to the position shown in the
dotted lines in Figure 4, not through an angle of at least 91° (App. Br. 7).
The Examiner found that (1) Miller fails to describe that “in moving
from the operative position to the stowed position each of the mower decks
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move through an angle of at least 91°” (Ans. 5); (2) Aron describes that
when moving from the operative position to the stowed position each of the
apparatuses move through an angle of 91° (id.); and (3) “the folding range
shown by Aron appears to be close enough to have the same properties as
the claimed 91 degrees” and that “[i]n other words, one of ordinary skill in
the art would expect the two angles to have the same properties . . .” (Ans.
14).
The Examiner concluded that “[i]t would have been obvious to one
having ordinary skill in the art at the time the invention was made to include
the pivot angle of Aron on the device of Miller in order to reduce the bulk of
the machine” (Ans. 6).
Aron describes that “[f]or transport or storage, the lateral parts 3 and 4
of the support frame 1 can be moved upwardly by an angle of about 90
degrees around the pivot pins 5 and 6 to the position shown in FIG. 2,
thereby reducing the bulk of the machine” (col. 3, ll. 27-31).
Aron is silent as to whether the lateral parts 3, 4 can be moved
upwardly by an angle of at least 91°. The Examiner has not provided
adequate evidence which would support the Examiner’s finding that one of
ordinary skill in the art would expect the angles 90° and 91° to have the
same properties. We find that during movement of the device through an
angle of 91° as opposed to an angle of 90° additional forces, e.g., gravity,
can affect the movement of the device. Thus, we find that, in the present
context, Aron’s range of movement of up to about 90° is not close enough to
the recited range of movement of at least 91° that one skilled in the art
would have expected the two ranges to have the same properties.
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The Examiner’s conclusion of obviousness does not describe how the
device of Miller would be able to pivot to the 90° angle described by Aron,
e.g., the Examiner’s conclusion of obviousness does not include a
substitution of the drive of Aron for the drive of Miller. Perhaps the device
of Miller, as constructed, would not be able to pivot to the 90° angle
described by Aron.
We conclude that a rationale based upon an unsupported fact finding
does not provide a sound basis for a conclusion of obviousness. KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[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.”); In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (“The legal conclusion of obviousness must be
supported by facts. Where the legal conclusion is not supported by facts it
cannot stand.”)
We reverse the rejection of independent claim 1 and dependent claims
2, 16, 21 and 22.
Dependent claims 26 and 27 similarly call for movement of each
mower deck through an angle of at least 91°.
While claims 26 and 27 were not separately argued by Appellant, the
claims were included in the body of the rejection of independent claim 1.
Thus, for the same reasons as set forth supra regarding independent claim 1,
we reverse the rejection of claims 26 and 27.
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Rejection of claims 4 and 30 over Miller, Aron and Allison
Claim 4
The Examiner has not relied on Allison for any teaching that would
remedy the deficiency in the combined teachings of Miller and Aron as to
independent claim 1, from which claim 4 depends (Ans. 6).
Thus, for the same reasons set forth supra regarding independent
claim 1, we reverse the rejection of claim 4.
Claim 30
Claim 30 calls for, inter alia, “wherein the drive includes a belt drive
and a belt tensioner for maintaining a tension on the belt drive.”
Appellant contends that even assuming that Allison shows a belt drive
and a tensioner, the Examiner's motivation for combining the references falls
short of establishing a prima facie case of obviousness since the Examiner’s
proffered motivation presumes that Miller has a belt drive (App. Br. 13).
The Examiner found that (1) Miller and Aron fail to describe a belt
drive and a belt tensioner (Ans. 6), and (2) Allison describes a belt drive and
a belt tensioner (id.).
The Examiner concluded that “[i]t would have been obvious to one
having ordinary skill in the art at the time the invention was made to include
the tensioner of Allison on the drive of Miller and Aron in order to tighten
the belt” (id.).
Miller describes a bevel gear drive, not a belt drive (Miller, passim).
As claim 30 requires a belt drive and a belt tensioner, we find that the
Examiner’s conclusion of obviousness does not address the belt drive called
for in dependent claim 30.
Thus, we reverse the rejection of dependent claim 30.
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Rejection of claim 10 over Miller, Aron and Torras; claim 11 over Miller,
Aron and Erdman; and claims 23-25 overMiller, Aron and Bottenberg
The Examiner has not relied on Torras (cl. 10), Erdman (cl. 11), or
Bottenberg (cls. 23-25) for any teaching that would remedy the deficiency in
the combined teachings of Miller and Aron as to independent claim 1, from
which claims 10, 11 and 23-25 depend (Ans. 7-8).
Thus, for the same reasons set forth supra regarding independent
claim 1, we reverse the rejection of dependent claims 10, 11 and 23-25.

Rejection of claims 28 and 33 over Miller and Bottenberg
Claims 28 and 33 each call for, inter alia, a pivoting tongue connected
to a frame.
Appellant contends that the Examiner’s proffered rationale for
combining Miller and Bottenberg is incorrect (App. Br. 17).
Appellant contends that:
[i]f there is an advantage to a pivoting tongue, it is just the
opposite from the Examiner's proffered motivation. That is, the
reason to utilize a pivoting tongue is to assure that the tongue
has no effect on the cutting height of the mower decks. Indeed,
that is the advantage that is gained by Applicant's pivoting
tongue.
(id.)
The Examiner found that (1) Miller fails to describe a pivoting tongue
connected to a frame (Ans. 9), and (2) Bottenberg describes a pivoting
tongue connected to a frame (id.).
The Examiner concluded that “[i]t would have been obvious to one
having ordinary skill in the art at the time the invention was made to include
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the pivotable hitch of Bottenberg on the device of Miller in order to achieve
different cutting heights” (id.).
Appellant does not contend that the Examiner’s fact finding is in
error. Appellant contends, however, that the Examiner’s rationale for
combining the references must match the advantage gained by Appellant’s
invention, and since it does not, the Examiner’s rationale is in error.
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art.” The Supreme Court
discussed numerous circumstances in which it would be proper to decline to
allow a patent for what is obvious, one of which is “[i]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill”
id.at 417. The court also advised that, under a correct analysis, “any need or
problem known in the field of endeavor at the time of the invention and
addressed by the [prior art] can provide a reason for combining the elements
in the manner claimed” id. at 420. It matters not that the combination
proposed by the Examiner results in a different functional advantage than
that obtained by Appellant.
Thus, we conclude that in the combination of Miller and Bottenberg,
as set forth supra, the provision of the pivotable hitch of Bottenberg on the
device of Miller could have been reasonably predicted to yield the result of
different cutting heights.
Thus, we affirm the rejection of dependent claim 28 and independent
claim 33.
Appeal 2009-012861
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Rejection of claim 34 over Miller, Bottenberg, and Aron
The Examiner’s conclusion of obviousness based on Miller,
Bottenberg and Aron does not remedy the deficiency in the combined
teachings of Miller and Aron as to independent claim 1 (Ans. 9-11).
Thus, for the same reasons set forth supra regarding independent
claim 1, we reverse the rejection of dependent claim 34.

CONCLUSIONS
The Examiner has erred in concluding that the combined teachings of
Miller and Aron would have rendered obvious a gang type lawn mower
system comprising at least two mower decks, wherein each mower deck
moves through an angle of at least 91° when moving from an operative
position to a stowed position, as called for independent claim 1.
The Examiner has erred in concluding that the combined teachings of
Miller, Aron and Allison would have rendered obvious a drive that includes
a belt drive and a belt tensioner for maintaining a tension on the belt drive,
as called for in dependent claim 30.
The Examiner has not erred in concluding that the combined teachings
of Miller and Bottenberg would have rendered obvious a tongue pivotally
connected to a frame, as called for in dependent claim 28 and independent
claim 33.

DECISION
The decision of the Examiner to reject claims 28 and 33 is affirmed.
The decision of the Examiner to reject claims 1, 2, 4, 10, 11, 16, 21-27, 30
and 34 is reversed.
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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

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