Ex Parte Thompson

Patent Trial and Appeal Board

Mar 6, 2013

11400508 (P.T.A.B. Mar. 6, 2013)

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.
11/400,508 04/10/2006 Calvin Thompson PNL21502 2901
77407 7590 03/06/2013
Novak Druce Connolly Bove + Quigg LLP
1875 I ST NW
SUITE 1100
Washington, DC 20006-5421
EXAMINER
TROUTMAN, MATTHEW D
ART UNIT PAPER NUMBER
3671
MAIL DATE DELIVERY MODE
03/06/2013 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 CALVIN THOMPSON
____________

Appeal 2011-000604
Application 11/400,508
Technology Center 3600
____________

Before JAMES P. CALVE, SCOTT A. DANIELS, and NEIL T. POWELL,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
35-41 under 35 U.S.C. § 103(a) as unpatentable over Sphar (US 4,193,457;
iss. Mar. 18, 1980) and Tarbell (US 1,548,395; iss. Aug. 4, 1925). App. Br.
2, 3. Claims 1-34 are cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appeal 2011-000604
Application 11/400,508

2
CLAIMED SUBJECT MATTER
Claim 35, the sole independent claim on appeal, is reproduced below:
35. An implement mountable on a machine operable to
maneuver said implement along a tract of ground to compact
and condition said ground, comprising:
a drum rotatably mountable on said machine;
a plurality of cleats disposed transversely and spaced
circumferentially on said drum; and
a plurality of segments comprised of loosely connected
components, each loosely, transversely disposed between a
successive pair of said cleats.

ANALYSIS
Claims 35 and 36
Regarding claim 35, the Examiner found that Sphar discloses an
implement that is mountable on a machine for compacting and conditioning
ground and comprises a drum 5 that is rotatably mounted on the machine
with a plurality of cleats 13 disposed transversely on the drum 5. Ans. 3.
The Examiner also found that Sphar lacks segments of loosely connected
components transversely disposed between successive pairs of cleats, but
found that Tarbell discloses an implement for conditioning a tract of ground
with chains 5 that are loosely and transversely disposed on a drum D to be
drawn over the ground. Ans. 3-4. The Examiner determined that it would
have been obvious to use such chains on Sphar based on Tarbell’s teaching
that it is old and well known in the art to provide transverse chains on a
drum to condition a tract of ground for predictable results of adding a plant
or soil tearing functionality to Sphar. Ans. 4, 8. The Examiner also found
that Sphar and Tarbell disclose the claimed structure and teach devices that
compact and condition the ground. Ans. 5-8.
Appeal 2011-000604
Application 11/400,508

3
Appellant argues that Sphar and Tarbell do not disclose implements
that are intended to be operated to compact the ground. App. Br. 4-5. In
particular, Appellant argues that Sphar discloses a roller that crushes and
reduces debris in a reforestation operation and not to forcefully compact a
surface of soil. App. Br. 3-4. Appellant argues that Tarbell is dragged along
the ground and oscillated to tear and loosen plants lying along the ground,
crush the plants, and not to use a set of chains to form depressions in the soil
that is being compacted. App. Br. 4-5; Reply Br. 2-3. These arguments are
not persuasive because the preamble of claim 35 recites an intended use of
the claimed implement (i.e., the implement is maneuvered along a tract of
ground to compact and condition the soil). This intended use does not
distinguish the structure of the claimed implement from Sphar and Tarbell.
See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled
that the recitation of a new intended use for an old product does not make a
claim to that old product patentable”). Nor do these arguments persuade us
of error in the Examiner’s findings that Sphar and Tarbell disclose devices
that condition and compact soil and also disclose the claimed structure and
thus are capable of compacting ground. See Ans. 5, 7-8 (citations omitted).
Appellant also argues that Tarbell does not teach the addition of a set
of chains between the ribs of the roller of Sphar for forming depressions in
the soil being compacted and dislodging soil that is lodged between the ribs
of the roller, because Tarbell’s chains are not mounted on a roller and are not
intended to form depressions in the ground being rolled or to dislodge soil
compacted between a set of ribs on a roller, but simply crush and pulverize
plants disposed along the ground surface as the drum causes the chains to be
dragged along a line of travel and oscillated vertically. App. Br. 5. These
Appeal 2011-000604
Application 11/400,508

4
arguments are a piecemeal attack on the references where the Examiner has
relied on the combined teachings of Sphar and Tarbell to render obvious the
subject matter of claim 35. These arguments do not persuade us of error in
the Examiner’s determination that it would have been obvious to include
Tarbell’s chains on Sphar as a means to condition the soil based on Tarbell’s
teaching that chains provide this functionality. Ans. 4. We sustain the
rejection of claims 35 and 36.
Claims 37-41
Claims 37-41 depend from claim 35 and recite that the implement
includes a pair of connecting segments disposed circumferentially on the
drum and connected to the ends of the first segments that comprise chains.
The Examiner found that Sphar and Tarbell do not disclose the claimed
specific mounting arrangement but determined that it would be well within
the skill of a person in the art to provide sufficient mounting structure to
mechanically support chains on a drum wherein the mounting arrangement
comprises a plurality of connecting segments trained about the ends of the
cleats to support the chains during use. Ans. 4-5, 8-9.
We agree with Appellant that Sphar and Tarbell fail to disclose the
features recited in claims 37-41. App. Br. 5. The Examiner’s finding that it
would have been within the skill of a person in the art to provide the claimed
mounting arrangement does not explain why it would have been obvious to
do so, particularly in the absence of any disclosure of such features in Sphar
and Tarbell. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (a
prima facie case of obviousness is not established “merely by demonstrating
that each of its elements was, independently, known in the prior art”). We
cannot sustain the rejection of claims 37-41.
Appeal 2011-000604
Application 11/400,508

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DECISION
We AFFIRM the rejection of claims 35 and 36 and REVERSE the
rejection of claims 37-41.
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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