Ex Parte Stover

Patent Trial and Appeal Board

Apr 3, 2014

12156400 (P.T.A.B. Apr. 3, 2014)

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.
12/156,400 05/29/2008 Jimmy R. Stover 2840
45662 7590 04/04/2014
G. TURNER MOLLER
711 N. CARANCAHUA, SUITE 720
CORPUS CHRISTI, TX 78401
EXAMINER
LOWE, MICHAEL S
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
04/04/2014 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 JIMMY R. STOVER
____________

Appeal 2012-002893
Application 12/156,400
Technology Center 3600
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS,
FRANCES L. IPPOLITO, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-8 and 10-13. Claim 9 has been previously
cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
RELATED PROCEEDINGS
Appellant identifies a related appeal in US Application 12/156,399,
which is Appeal 2012-009356. App. Br. 4.
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CLAIMED SUBJECT MATTER1
Claims 1, 6, and 10 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal, and recites:
1. A cotton module vehicle comprising a tiltable bed having
a chain bed conveyor thereon, the chain bed conveyor comprising
a load supporting frame, and
a multiplicity of endless roller chains providing a series of
interconnected link pairs and rollers in engagement with the frame for
supporting a cotton module thereon,
at least some of the link pairs having an inverted U-shaped
pusher element including a central pusher section extending across an
upper surface of the link pairs and a pair of tapered end sections
welded to opposed ones of the link pairs, the end sections each having
an elongate first side abutted throughout a majority of its length
against an outside face of the link pairs and an opposite second side
having a section parallel to the first side and a section tapered between
20-70°,

1 On August 8, 2011, Appellant submitted claim amendments subsequent to
filing of Appellant’s Notice of Appeal. Amendment (filed Aug. 8, 2011). In
a follow-up Advisory Action, the Examiner entered the August 8, 2011
claim amendments and commented that “[t]he entered amendment merely
corrects redundancies and minor errors in the claims and specification.”
Advisory Action (mailed Sept. 28, 2011). The Claims Appendix in
Appellant’s Appeal Brief does not include these entered amendments. App.
Br., Claims App’x; See Ans. 3. In this appeal, we review claims 1-8 and 10-
13 as presented in the August 8, 2011 Amendment as these amendments
were entered by the Examiner. Advisory Action (mailed Sept. 28, 2011).
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an upper surface of the central pusher section being arcuately
convex upwardly in a plane parallel to a direction of movement of the
chains.

App. Br., Claims App’x; see also Amendment (filed Aug. 8, 2011).

REJECTIONS2
Claims 1-8 and 10-13 are rejected under 35 U.S.C. § 102(f) because
Appellant did not invent the claimed subject matter, as evidenced by
Application 12/156,399.
Claims 1-5 and 10-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pereira (US 4,081,094, iss. Mar. 28, 1978), Vidondo (US
6,598,732 B2, iss. Jul. 29, 2003), Middelburg (US 5,806,659, iss. Sept. 15,
1998), and McDonald (US 2005/0172566 A1, pub. Aug. 11, 2005).
Claims 6-8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pereira, Vidondo, Middelburg, McDonald, and Bussiere
(US 5,340,040, iss. Aug. 23, 1994).
Appellant relies on the Declaration of Jimmy R. Stover (hereinafter
“Stover Decl.”) filed under 37 C.F.R. § 1.132 on Feb. 28, 2011.
ANALYSIS
Rejection of claims 1-8 and 10-13 under 35 U.S.C. § 102(f)
By way of background, the instant case and US Application
12/156,399 (hereinafter “the ‘399 patent application”) were both filed on
May 29, 2008. See App. Br. 4. Both applications appear to share the same
written description and drawings, but differ in recited claims and listed

2 The Examiner withdrew rejections under 35 U.S.C. § 101 against claims 1-
8 and 10-13. Ans. 4.
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inventorship. The instant case lists Jimmy R. Stover as the sole inventor
while the ‘399 patent application lists Roylston R. Munro as the sole
inventor. Both cases are assigned to Stover Equipment Company, Inc. App.
Br. 3-4. In both cases, the Examiner has questioned the correctness of the
listed inventorship and issued rejections under section 102(f). Applicant, in
each respective application, has appealed the Examiner’s decision rejecting
the pending claims. The appeal in the ‘399 patent application has been
designated Appeal 2012-009356.
Under 35 U.S.C. § 102(f), A person shall be entitled to a patent unless
he did not himself invent the subject matter sought to be patented. “Where it
can be shown that an applicant ‘derived’ an invention from another, a
rejection under 35 U.S.C. 102(f) is proper.” MPEP § 2137 (citing Ex parte
Kusko, 215 USPQ 972, 974 (Bd. App. 1981) (“most, if not all,
determinations under section 102(f) involve the question of whether one
party derived an invention from another”).). Section 2137 of the MPEP
further provides that
[w]here there is a published article identifying the authorship
(MPEP § 715.01(c)) or a patent identifying the inventorship
(MPEP § 715.01(a)) that discloses subject matter being claimed
in an application undergoing examination, the designation of
authorship or inventorship does not raise a presumption of
inventorship with respect to the subject matter disclosed in the
article or with respect to the subject matter disclosed but not
claimed in the patent so as to justify a rejection under 35 U.S.C.
102(f). However, it is incumbent upon the inventors named in
the application, in reply to an inquiry regarding the
appropriate inventorship under subsection (f), or to rebut a
rejection under 35 U.S.C. 102(a) or (e), to provide a
satisfactory showing by way of affidavit under 37 CFR 1.132
that the inventorship of the application is correct in that the
reference discloses subject matter invented by the applicant
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rather than derived from the author or patentee
notwithstanding the authorship of the article or the
inventorship of the patent. In re Katz, 687 F.2d 450, 455, 215
USPQ 14, 18 (CCPA 1982) (inquiry is appropriate to clarify
any ambiguity created by an article regarding inventorship, and
it is then incumbent upon the applicant to provide “a
satisfactory showing that would lead to a reasonable conclusion
that [applicant] is the…inventor” of the subject matter disclosed
in the article and claimed in the application).

MPEP § 2137 (emphasis added).
Turning to the basis for the section 102(f) rejection in the present
application, the Examiner found that the ‘399 patent application “has the
same written specification and the drawings [as the instant application] and
does not have that applicant [Roylston R. Munro] listed in the oath as an
inventor [in the instant application].” Ans. 5. The Examiner further
determined that “the claims of the other application [the ‘399 patent
application] inherently meet the limitations of [the instant] application’s
claims.” Id.
Appellant responded by submitting the Declaration of Jimmy R.
Stover under 37 C.F.R. § 1.132. App. Br., Evidence App’x. Mr. Stover’s
Declaration states that he met Mr. Munro while traveling in Australia
“selling equipment to remove plastic wrapping from round cotton modules.”
Stover Decl. at ¶ 2. Mr. Stover goes on to state that
In order to reduce the generation of small plastic pieces from
the plastic wrapping, Roylston Munro invented the broad idea
of a pusher link having a round rod welded to some of the link
pairs.

Roylston R. Munro disclosed this concept to me in a telephone
conversation and sent me a photograph of an early prototype of
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his, a copy of which is attached. A drawing of the early
prototype was basically as follows:

showing a welded chain link cut so the ends slipped over the
sides of the roller chain links and were welded to the sides of
the links.

After receiving this information, I improved on this design
resulting in the chain disclosed in this application.

Stover Decl. at ¶¶ 4-6.
The Examiner reviewed the Stover Declaration, but ultimately found
that “Appellant has not provided any factual evidence that [the subject
invention] was not invented by another.” See Ans. 9.
To start, Appellant relies on the Stover Declaration to argue that Mr.
Munro and Mr. Stover are not joint inventors because “neither party
communicated his concept to the other until it was completed or discussed
the problem he was then facing with the other.” App. Br. 15, 17. Appellant
further asserts that “Mr. Munro did not discuss his concept with Mr. Stover
until a working prototype had been completed. Mr. Stover did not discuss
his efforts with Mr. Munro until his efforts were completed.” Id. at 15.
Initially, we are not apprised of any Examiner error because
Appellant’s assertions are not supported by the record. First, the Stover
Declaration establishes that Mr. Munro and Mr. Stover communicated on at
least three occasions: (1) Mr. Stover met Mr. Munro; (2) Mr. Stover
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discussed Mr. Munro’s “concept” in a telephone conversation; and (3) Mr.
Stover received a photograph of an early prototype from Mr. Munro. Stover
Decl. at ¶¶ 2, 5. The Stover Declaration does not, however, establish that
“Mr. Munro did not discuss his concept with Mr. Stover until a working
prototype had been completed” as asserted by Appellant. The Stover
Declaration only indicates that Mr. Stover received a photograph of an early
prototype from Mr. Munro, but does not establish that an early prototype had
been completed before the described telephone conversation. Id. at ¶ 5.
Second, we do not see where the record supports Appellant’s assertion that
“Mr. Stover did not discuss his efforts with Mr. Munro until his efforts were
completed.” See App. Br. 15. The Stover Declaration only indicates that
after receiving information regarding Mr. Munro’s “concept” and the
photograph of Mr. Munro’s early prototype, Mr. Stover “improved on this
design….” Stover Decl. at ¶¶ 5, 6. The Stover Declaration is silent on
whether Mr. Stover did or did not discuss his efforts with Mr. Munro until
his efforts were completed. Id., generally. Additionally, Appellant’s
assertion that “neither party communicated his concept to the other until it
was completed or discussed the problem he was then facing with the other”
is also not borne out by the record. See App. Br. 15. The Stover Declaration
indicates that: (1) Mr. Stover was aware of a problem where conventional
chain cut plastic; (2) Mr. Munro conceived an invention to solve this
problem; (3) Mr. Stover discussed Mr. Munro’s “concept” in a telephone
conversation; and (4) Mr. Stover improved Mr. Munro’s design. Stover
Decl. at ¶¶ 2-6. Nowhere does Mr. Stover state that he and Mr. Munro did
not discuss “the problem he was then facing with the other” until “his
concept…was completed.” Id., generally. At best, on the record before us,
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it is unknown if the parties discussed any problems at all or when such
discussions took place.
Appellant further contends that
Mr. Stover did not like the connection between the ends of the
round rod and the outside of the link pairs and refined this
invention by lengthening the end pieces 52, 54 along the sides
of the link pairs 30 and then bevelling [sic] the ends of the end
pieces.
App. Br. 15. While it may well be that Mr. Stover “did not like the
connection between the ends of the round rod and the outside of the link
pairs…,” this assertion is not supported by the record. In his declaration,
Mr. Stover states only that he “improved on this design resulting in the chain
disclosed in this application.” Stover Decl. at ¶ 6.
Next, Appellant argues that “[i]t is not understood how the Examiner
can come to” the conclusion of joint inventorship “when the only evidence is
that Mr. Munro is the inventor of the broad concept and Mr. Stover is the
inventor of certain improvements.” App. Br. 15-16; see also Reply Br. 7.
We are not apprised of any Examiner error by this argument. It is
incumbent upon Appellant to “provide a satisfactory showing by way of
affidavit under 37 CFR 1.132 that the inventorship of the application is
correct….” MPEP § 2137 (emphasis added). As discussed supra,
Appellant’s arguments are based on asserted facts that are not supported by
the record, particularly the Stover Declaration. Thus, we are not persuaded
that the Examiner erred in finding that “Appellant has not provided any
factual evidence that [the subject invention] was not invented by another.”
See Ans. 9.
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Appellant further contends that Mr. Stover “believes the embodiment
disclosed in this application is the best mode of carrying out his invention.”
App. Br. 16; see also Stover Decl. at ¶ 7. Appellant asserts that “Mr.
Stover’s invention is an improvement or modification of Mr. Munro’s. What
else could Mr. Stover disclose other than what is shown in the drawings and
described in the specification?” Id. We understand Appellant’s position to
be that the instant application and the ‘399 patent application were drafted to
share the same specification in order to comply with the best mode
requirement. See App. Br. 17. While we appreciate Appellant’s efforts to
describe best mode (see id.), these efforts do not absolve Appellant from
providing a “satisfactory showing by way of affidavit under 37 CFR 1.132
that the inventorship of the application is correct….” MPEP § 2137
(emphasis added). As such, we are not persuaded of any Examiner error on
this basis.
Appellant additionally argues that “[t]he Examiner has taken the same
position in the application S.N. 12/156,399, the result of which is that no one
is the inventor.” App. Br. 16. We are not apprised of any Examiner error on
this basis. We do not understand the Examiner’s position to be that there is
no inventor, but that the listed inventor, Jimmy R. Stover, in the instant
application did not himself invent the subject matter sought to be patented.
While we appreciate that it may be entirely possible for Mr. Stover to be the
sole inventor, joint inventor, or not an inventor at all of the claimed subject
matter in the instant application, Appellant must provide the satisfactory
showing of correct inventorship through an affidavit under 37 CFR § 1.132.
On the record before us, we are not apprised of any Examiner error in the
finding that Appellant has not made this satisfactory showing. See Ans. 9.
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Appellant also contends that
In the event this rejection is continued, it is respectfully
requested that someone answer this question:
How can an event, such as the filing of an application,
well after the fact, have any bearing on who was the
inventor?
It is submitted that the Examiner did not answer this question
because it cannot be answered in any way except by saying “No
event after the fact can have any bearing on who was the
inventor.”
Reply Br. 2-3; see also App. Br. 16-17. We are not persuaded by this
argument because the Examiner has not found that an “event after the fact”
has “bearing on who was the inventor.” Again, the Examiner’s position is
that based on the record (including the Stover Declaration) inventorship is
not correct. Therefore, it is not a question of whether an event, such as a
patent application filing, has bearing on inventorship, but whether Appellant
has made a satisfactory showing that the listed inventorship is correct based
on the claimed subject matter.
Appellant also questions whether the Examiner has found the claims
of each of the patent applications to be obvious variants. App. Br. 18.
Appellant further contends that the Examiner suggests a disclaimer is
necessary. Id.
We are not persuaded by these arguments because the Examiner
commented on the possibility of a double-patenting rejection but did not
issue one. See Final Rej. 6. Thus, no such rejection is pending in this appeal
for our review.
Appellant additionally compares the case at hand to a hypothetical
where a joint application is filed and divisional applications having different
inventors are examined. App. Br. 18-19. Appellant asks “[s]o, what is
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wrong? How does this situation differ from the present one?” Id. at 19. We
are not persuaded by this argument as the hypothetical facts are not at issue.
A joint application and divisional applications have not been filed. No
requirement for restriction or election has been made by the Examiner. In the
interest of judicial economy, we focus our review on the facts and issues
before us in this appeal.
Appellant next asserts that “there is no question that Mr. Munro
‘contributed’ some features in the claims in this application, specifically,
Mr. Munro contributed everything but the underlined parts of independent
claims 1, 6, and 10….” Reply Br. 3. Appellant follows this assertion with a
listing of claims 1, 6, and 10 with annotations purporting to show Mr.
Stover’s and Mr. Munro’s inventive contribution to the claimed subject
matter. Id. at 4-6. We are not apprised of any Examiner error on this basis.
Once again, Appellant has made assertions without factual support in the
record. The only 37 C.F.R. § 1.132 offered by the Appellant is the Stover
Declaration. App. Br., Evidence App’x. Mr. Stover’s Declaration does not
indicate that “Mr. Munro contributed everything but the underlined parts of
independent claims 1, 6, and 10….” See Stover Decl., generally. Mr. Stover
does not address the claims of the application and, further, does not ascribe
his own or Mr. Munro’s contribution to any particular limitations of the
claims.3

3 We further note that Appellant has not explained how these assertions,
even if supported, would point away from the joint inventorship of Mr.
Munro and Mr. Stover for claims 1, 6, and 10. The Federal Circuit has
found that, under 35 U.S.C. § 116,
[a]ll that is required of a joint inventor is that he or she (1)
contribute in some significant manner to the conception or
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Appellant further contends that
the question is whether 35 USC 102(f) means
A person shall be entitled to a patent unless -
(f) he did not himself invent the subject matter, taken
as a whole, which is sought to be patented -
or whether it means:
A person shall be entitled to a patent unless -
(f) he did not himself invent every feature of the
subject matter sought to be patented.

It is submitted the latter construction cannot be. The
undersigned started working in the Patent Office in September
1963 and, to his recollection, every claim he has ever seen to a
mechanical invention recited some subject matter that was not
invented by the applicant. So, if the second construction of
35 USC 102(f) is true, all patents to mechanical inventions will
be invalid. This cannot be the correct construction.

Reply Br. 6-7 (emphasis in original).
We are not apprised of Examiner error by these arguments. First,
without adopting either construction, we note that Appellant has not
provided any authority that supports statutory construction based on attorney
recollection and personal experience. Second, we also do not follow
Appellant’s logic that the second construction renders “all patents to

reduction to practice of the invention, (2) make a contribution
to the claimed invention that is not insignificant in quality,
when that contribution is measured against the dimension of the
full invention, and (3) do more than merely explain to the real
inventors well-known concepts and/or the current state of the
art.
Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998) (citations
omitted). Nonetheless, because these and many other of Appellant’s
assertions are unsupported by the evidence of record, we decline to speculate
as to whether facts beyond the record exist to sufficiently establish Mr.
Munro’s joint inventorship in the instant application.
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mechanical inventions” invalid. It bears reasoning that inventions may
entail improvements to prior art, however, generally the prior art is not “the
subject matter sought to be patented.”
Appellant also argues that “[t]he claims in the two applications are
clearly different so they cannot have all the claimed subject matter of both
applications.” Reply Br. 7-8 (quotations omitted). Although Appellant is
correct that that the claims pending in the two applications are not identical,
there appears to be a great deal of overlap such that the Examiner found “the
claims of the other application inherently meet the limitations of [the instant]
application’s claims.” See Ans. 5. Appellant does not persuasively
challenge this finding.
Appellant contends that
If the Declarations filed in this application are not factual
evidence that this was not invented by another, Appellant
doesn’t know what factual evidence would be. The only two
people in the world who know what the situation was are Mr.
Munro and Mr. Stover. They have filed declarations stating that
the original concept was Mr. Munro’s, that Mr. Munro
submitted a drawing to Mr. Stover, that Mr. Munro submitted a
photograph of his chain and that Mr. Munro sent Mr. Stover a
sample of his chain. If one wants to know what Mr. Munro’s
chain looks like, reference is made to the Declaration of Mr.
Stover and Mr. Munro.

Reply Br. 8.
We are not persuaded by these arguments because even if Mr. Munro
and Mr. Stover are the “only two people in the world who know what the
situation was…,” it is still incumbent on Appellant to provide a satisfactory
showing that inventorship is correct. As mentioned above, we do not find
the Stover Declaration to support Appellant’s assertions. As another
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example, Mr. Stover does not state or indicate in his declaration that “Mr.
Munro submitted a drawing to Mr. Stover” or “Mr. Munro sent Mr. Stover a
sample of his chain.” See Reply Br. 8; see also Stover Decl., generally.
Additionally, Mr. Munro’s declaration is not in the record. App. Br.,
Evidence App’x. Only Mr. Stover’s Declaration was filed with Appellant’s
briefings. App. Br., Evidence App’x. Nonetheless, we direct our attention to
the related appeal of the ‘399 patent application (Appeal 2012-009356),
which includes the Declaration of Mr. Roylston R. Munro. Mr. Munro
states that
I met Jimmy R. Stover when he came to Australia selling
equipment to remove plastic wrapping from round cotton
modules.

In order to reduce the generation of small plastic pieces from
the plastic wrapping, I invented the broad idea of a pusher link
having a round rod welded to some of the link pairs.

I disclosed this concept to Jimmy R. Stover in a telephone
conversation and sent him a photograph of an early prototype.

After receiving this photograph, Jimmy R. Stover improved
on this design resulting in the chain disclosed in this application
[i.e., the ‘399 patent application].
Munro Decl. at ¶¶ 2, 4-6. The Munro Declaration mirrors the Stover
Declaration and Appellant’s reliance on the Munro Declaration suffers from
the same deficiencies discussed supra, which include, for example, failing to
support the assertion that “Mr. Munro submitted a drawing to Mr. Stover”
and “Mr. Munro sent Mr. Stover a sample of his chain.”
Accordingly, for the foregoing reasons, we sustain the Examiner’s
decision rejecting claims 1-8 and 10-13 under 35 U.S.C. § 102(f).
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Rejection of claims 1-5 and 10-13 as unpatentable over Pereira, Vidondo,
Middelburg, and McDonald
Independent claims 1 and 10 both respectively require
at least some of the link pairs having an inverted U-shaped
pusher element including a central pusher section extending
across an upper surface of the link pairs and a pair of tapered
end sections welded to opposed ones of the link pairs, the end
sections each having an elongate first side abutted throughout a
majority of its length against an outside face of the link pairs
and an opposite second side having a section parallel to the first
side and a section tapered between 20-70°….

App. Br., Claims App’x; see also Amendment (filed Aug. 8, 2011).
The Examiner found Pereira teaches
a tiltable bed with multiple chains usable for conveying cotton
modules or other items in a direction of travel, comprising a
roller chain (generally 55) providing a series of interconnected
link pairs and rollers for engaging a frame for supporting a
cotton module thereon, with pusher elements (generally 71).
Ans. 5-6. The Examiner added that it is “not clear how the [Pereira] pusher
elements are attached to the link pairs though they clearly are without any
signs of bolts, and welding an item to its underlying supports is well known
to keep them securely together.” Id. at 6. The Examiner further determined
that Vidondo teaches an inverted U-shaped pusher element; Middelburg
discloses “round/concave” pusher center sections (citing Middelburg, 38A,
38B and Figs. 3B-D); and McDonald teaches various tapering angles
including those claimed. Id.
Appellant argues that the Examiner has overlooked many limitations
in the claims. App. Br. 25; Reply Br. 9-10. In particular, Appellant
contends that the Examiner has not established where the cited references
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teach or suggest “end sections each having an elongate first side abutted
throughout a majority of its length against an outside face of the link pairs
and an opposite second side having a section parallel to the first side” as
required by claims 1 and 10. Id.
In response, the Examiner asserts that “[w]elding is old, well known
and a simple means of attaching clearly known to anyone in the art.” Ans.
11. The Examiner contends that “Pereira likely uses welding as no other
attachment is shown and generally its [sic] so common it is not shown or
discussed as most other basic manufacturing details in all references.” Id.
The Examiner also adds that tapering is common knowledge. Id. at 12.
We are apprised of error by Appellant’s argument. Specifically, on
the record before us, we do not see where the Examiner has established by
technical reasoning or evidence how the cited references teach the required
“end sections” recited in claims 1 and 10. Although we appreciate the
Examiner’s observation that welding is an old art (Ans. 11), we do not at the
same time see where the record establishes that it was common knowledge
to a skilled artisan to weld a pair of tapered end sections to “opposed ones of
the link pairs.” Instead, as the Examiner points out more than once, Pereira
does not disclose how the flight attachments 71 are attached to the conveyor
chains 55. Ans. 6, 11; see also Pereira, col. 2, ll. 53-57. Other than Pereira,
the Examiner does not indicate where else the record supports this position.
That being the case, “[i]t is never appropriate to rely solely on ‘common
knowledge’ in the art without evidentiary support in the record, as the
principal evidence upon which a rejection was based.” MPEP § 2144.03
(citing In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001).). Indeed, “the
Board cannot simply reach conclusions based on its own understanding or
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experience—or on its assessment of what would be basic knowledge or
common sense. Rather, the Board must point to some concrete evidence in
the record in support of these findings.” Zurko, 258 F.3d at 1385.
Moreover, even assuming arguendo that the record establishes that it
was common knowledge to one of ordinary skill in the art to weld end
sections to link pairs, the Examiner has still not established where the
references teach or suggest the claimed “end sections each having an
elongate first side abutted throughout a majority of its length against an
outside face of the link pairs and an opposite second side having a section
parallel to the first side.” See App. Br. 25; Reply Br. 9-10. The Examiner’s
Answer does not address this limitation. Ans., generally. We decline to
speculate as to whether the references teach or suggest this limitation and,
further do “not resolve doubts in favor of the Patent Office determination
when there are deficiencies in the record as to the necessary factual bases
supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d
1011, 1017 (CCPA 1967).
For the foregoing reasons, we do not sustain the Examiner’s decision
rejecting independent claims 1 and 10, and dependent claims 2-5 and 11-13
as unpatentable over Pereira, Vidondo, Middelburg, and McDonald.
Rejection of claims 6-8 as unpatentable over Pereira, Vidondo, Middelburg,
McDonald, and Bussiere
Independent claim 6 requires
at least some of the link pairs having an inverted U-shaped
pusher element including a central pusher section extending
across an upper surface of the link pairs and a pair of tapered
end sections welded to opposed ones of the link pairs, the end
sections each having an elongate first side abutted throughout a
majority of its length against an outside face of the link pairs
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and an opposite second side having a section parallel to the first
side and a section tapered between 20-70°….

App. Br., Claims App’x; see also Amendment dated Aug. 8, 2011.
In rejecting claim 6, the Examiner relies on the same findings
discussed supra including that
Pereira teaches a tiltable bed with multiple chains usable for
conveying cotton modules or other items in a direction of
travel, comprising a roller chain (generally 55) providing a
series of interconnected link pairs and rollers for engaging a
frame for supporting a cotton module thereon, with pusher
elements (generally 71). Its [sic] not clear how the pusher
elements are attached to the link pairs though they clearly are
without any signs of bolts, and welding an item to its
underlying supports is well known to keep them securely
together.
Ans. 7. The Examiner adds that “Bussiere shows that mobile dispersers for
bales are well known to allow use where needed.” Id. at 8.
Appellant also argues here that the Examiner has overlooked
limitations for the recited end section. App. Br. 25; Reply Br. 9-10. We
agree and are apprised of Examiner error for the reasons discussed above for
claims 1 and 10, which contain the same limitation. Additionally, the relied
upon sections of Bussiere do not cure the identified deficiencies.
Accordingly, we do not sustain the Examiner’s decision rejecting
claim 6 and dependent claims 7 and 8 as unpatentable over Pereira,
Vidondo, Middelburg, McDonald, and Bussiere.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1-8 and 10-13
as rejected under 35 U.S.C. § 102(f).
Appeal 2012-002893
Application 12/156,400

19
We REVERSE the Examiner’s decision rejecting claims 1-5 and 10-
13 as being unpatentable over Pereira, Vidondo, Middelburg, and
McDonald.
We REVERSE the Examiner’s decision rejecting claims 6-8 as being
unpatentable over Pereira, Vidondo, Middelburg, McDonald, and Bussiere.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Vsh