Macdon Industries Ltd.

Patent Trials and Appeals Board

Mar 18, 2021

2020003620 (P.T.A.B. Mar. 18, 2021)

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.
15/681,485 08/21/2017 Francois R. Talbot 80070-129US1 / ADB 6921
6470 7590 03/18/2021
MILLER, CANFIELD, PADDOCK AND STONE
150 W. JEFFERSON, SUITE 2500
DETROIT, MI 48226
EXAMINER
NGUYEN, MAI T
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
03/18/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDocket@millercanfield.com
Seccombe@millercanfield.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANCOIS R. TALBOT
____________

Appeal 2020-003620
Application 15/681,485
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
BRANDON J. WARNER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Sept. 7, 2018, hereinafter “Final
Act.”) rejecting claims 1–9 and 16.2 We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. MacDon Industries Ltd. is identified as the real party in
interest. See Appellant’s Appeal Brief (filed Aug. 6, 2019, hereinafter
“Appeal Br.”) 1.
2 Claims 10–15 and 17–22 are canceled. See Appeal Br. 2, 15 (Claims
App.).
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SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention relates “to a sickle knife cutter system for
harvesting crop with improved cutting action.” Spec. 1, ll. 7–8.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A sickle cutting apparatus comprising:
a frame structure arranged for forward travel over ground
having a standing crop thereon;
a cutter bar secured to the frame structure and extending
transversely across a front end of said frame structure;
a plurality of knife guards mounted along the cutter bar
and projecting forwardly therefrom;
each of said guards having at least one guard finger so
that the guard fingers are arranged in a row along the cutter bar
with a space between each guard finger and the next allowing
crop to enter the space up to a position of engagement with a
surface of the guard;
each guard finger having an upwardly facing ledger
surface with opposed side edges thereof arranged to provide
first and second shearing edges;
a sickle bar mounted in transversely extending position
and being driven for reciprocating movement relative to said
guard fingers;
the sickle bar having a plurality of the sickle knife blades
mounted thereon for movement therewith;
a center line spacing between each guard finger and a
next guard finger being equal to a center line spacing between
each sickle knife blade and a next sickle knife blade;
each sickle knife blade comprising a blade body having a
cutting surface for passing across the ledger surface of the knife
guard fingers and an opposed surface with the blade body
having on first and second sides first and second side cutting
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edges to cooperate with said shearing edges of said guard
fingers;
wherein cooperation between the blade and the ledger
surface of the guard defines a transverse rearmost cutting line at
which a cutting action occurs;
wherein a length of each sickle knife blade from the
transverse line to a forwardmost tip of the sickle knife blade is
equal to or greater than 2.2 inches;
wherein a width of each guard finger at the transverse
line is greater than 1.2 inches;
and wherein a width of each sickle knife blade at the
transverse line is greater than the width of each guard finger at
the transverse line.

REJECTIONS3

I. The Examiner rejects claims 1–9 under 35 U.S.C. § 103 as
being unpatentable over Kowalik4 and Stroburg.5
II. The Examiner rejects claim 16 under 35 U.S.C. § 103 as being
unpatentable over Kowalik, Stroburg, and Snider.6

ANALYSIS
Rejection I
Appellant has not presented arguments for the patentability of claims
2–9 apart from claim 1. See Appeal Br. 4 (“Claims 2 to 9 . . . will stand or
fall with [c]laim 1.”). Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(iv), we select claim 1 as the representative claim to decide the

3 The rejection of claims 10, 14, and 15 under 35 U.S.C. § 103 is moot as
claims 10, 14, and 15 are canceled. See Final Act. 7–8; Appeal Br. 2.
4 Kowalik, US 3,066,468, issued Dec. 4, 1962.
5 Stroburg et al., US 2,994,176, issued Aug. 1, 1961.
6 Snider et al., US 2008/0006016 Al, published Jan. 10, 2008.
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appeal of the rejection of these claims, with claims 2–9 standing or falling
with claim 1.
The Examiner finds Kowalik discloses most of the limitations of
independent claim 1 including, inter alia, frame 2, cutter bar 3, a plurality of
knifeguards 4, sickle bar 10, a plurality of sickle knife blades 8 having a
length “from the transverse line to a forwardmost tip of the sickle knife
blade . . . equal to or greater than 2.2 inches.” Final Act. 3 (citing Kowalik,
Figs. 1–4). However, the Examiner finds that “Kowalik does not disclose a
width of each guard finger at the transverse line as being greater than 1.2
inches.” Id. at 3. Nonetheless, the Examiner finds that Stroburg discloses “a
sickle cutting apparatus having a sickle knife blade 38 cooperating with a
knife guard 36 of a similar width, wherein the width is about 1.5 inches,
which is greater than 1.2 inches as claimed.” Id. at 4 (citing Kowalik, col. 1,
ll. 8–11, col. 3, l. 62–col. 4, l. 3, Fig. 5). Thus, the Examiner concludes that
it would have been obvious for a person of ordinary skill in the art “to
modify each knife guard of Kowalik to have a width of about 1.5 inches
(greater than 1.2 inches) as taught by Stroburg” because “the guard width
dimension was old and known in the art as an effective dimension in sickle
cutters for cutting crop.” Id.
Appellant notes that in the prior art the guards have a width of 1 inch
or less and the blades have a length less than 2 inches. Appeal Br. 6. In
contrast, in the invention of claim 1, the guards have a width greater than 1.2
inches and the blades have a length equal to or greater than 2.2 inches. Id. at
14 (Claims App.). Thus, Appellant asserts that in the invention an “increase
in length of the blade is combined with . . . [an] increase in the width of the
guards.” Id. at 9. Accordingly, Appellant contends that “the design of an
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operating cutter system of the type defined [in claim 1] is not a matter of
‘mixing and matching’ components from” Kowalik and Stroburg because
“[t]here is simply no suggestion that these components will operate together
or that the combination would provide any advantage.” Id. at 11–12. For
example, Appellant notes that Stroburg does not disclose a cutter system
having a guard width greater than 1.2 inches and a blade length equal to or
greater than 2.2 inches, as required by claim 1, but rather employs a
conventional short blade length, i.e., less than 2.2 inches. Id. at 10–11
(citing Stroburg, Fig. 5). Moreover, Appellant argues that Kowalik fails to
disclose a blade length equal to or greater than 2.2 inches, but rather,
discloses “the conventional construction of cutting systems of this type
where the blade is relatively short and the guard is relatively narrow.” Id. at
11–12. Hence, Appellant contends that the Examiner’s combination of
Kowalik and Stroburg “teaches away from the specific construction of the
present invention where an improvement has been found to occur where the
length of the blade is increased as defined and the width of the guard is
increased as defined.” Id. at 12.
Appellant’s contentions are not persuasive because Appellant cannot
show nonobviousness by attacking Kowalik and Stroburg individually when
the rejection as articulated by the Examiner is based on a combination of
Kowalik and Stroburg. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Nonobviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. [Each reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.”).
Here, we agree with the Examiner’s uncontested finding that, because
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Kowalik’s Figure 4 is drawn to scale, the dimensions illustrated in Figure 4
can be relied upon to define the precise length of end section 25. See
Examiner’s Answer (dated Dec. 30, 2019, hereinafter “Ans.”) 10; see also
Kowalik, col. 1, ll. 63–64 (“FIGURE 4 is a full-scale plan view of the novel
end section.”). To better understand the Examiner’s position, we reproduce
below the Examiner’s annotated Figure 4 of Kowalik:

The Examiner’s annotated Figure 4 of Kowalik illustrates the length
of end section 25 from a transverse rearmost cutting line at which a cutting
action occurs to a forwardmost tip of end section 25 as being 2.375 inches.
Ans. 10. Thus, the Examiner is correct that a skilled artisan would readily
determine from Kowalik’s Figure 4 that “the approximate length of the
conventional sickle blades 8 relative to the dimensions of blade 25 . . . [is]
2.375 inches[,] which satisfies the claim limitation of the blade length being
equal [to] or greater than 2.2 inches.” Id.; see also Final Act. 9; Kowalik,
Fig. 2, showing knife section 8 with end section 25 (not labeled). Appellant
has not persuasively argued the Examiner’s findings with respect to
Kowalik.
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We further agree with the Examiner’s finding that Stroburg discloses
sickle knife blades 38, 39 having a width of 1.5 inches (“one half as wide as
the [common] three inch wide”) and a guard finger 36 having the same
width as the sickle knife blades 38, 39. Ans. 11 (citing Stroburg, Fig. 5); see
also Stroburg, col. 1, ll. 10–12. Thus, Stroburg discloses a guard finger
having a width of 1.5 inches, “which satisfies the claim limitation of the
guard finger width being greater than 1.2 inches.” Ans. 11. Appellant has
also not persuasively argued the Examiner’s findings in regards to Stroburg.
Accordingly, for the foregoing reasons, Kowalik discloses the blade
length limitation of “equal to or greater than 2.2 inches” and Stroburg
discloses the finger guard width limitation of “greater than 1.2 inches.”
Therefore, the Examiner’s modification to Kowalik’s cutter system to
provide Stroburg’s finger guard width of “greater than 1.2 inches,” because
“the guard width dimension was old and known in the art as an effective
dimension in sickle cutters for cutting crop,” is merely providing details that
are missing from Kowalik. See Final Act. 4. In other words, as Kowalik
does not disclose the width of guard finger 4, providing a width of 1.5
inches, as taught by Stroburg, to Kowalik’s guard finger 4, is merely the
application of a known technique (i.e., a known dimension) to a piece of
prior art ready for the improvement. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). Thus, a skilled artisan would have had good reason to
pursue the known options within his or her technical grasp. See id. at 421
(“If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.”); see also Final Act. 10.
As such, the Examiner is correct that providing Stroburg’s width “greater
than 1.2 inches” to Kowalik’s finger guard 4, would provide [Kowalik with]
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the benefit of . . . [Stroburg’s] known effective dimension of 1.5 inches.”
Ans. 11.
Furthermore, we are not persuaded by Appellant’s arguments that
increasing blade length would not be obvious to a skilled artisan because
“providing longer blades could interfere with [the reciprocation] rate in view
of the greater difficulty in reciprocating longer blades” and “can undergo
increased flexing away from the ledger surface of the guard.” Appeal Br. 9.
We are also not persuaded by Appellant’s argument that a skilled artisan
would not look to increase the guard width as “there is simply no suggestion
in the prior art cited nor in any conventional prior art (not specifically cited)
that the width of the guard will have any effect on the cutting action.” Id.
Such arguments are speculative because, as discussed supra, Kowalik
explicitly discloses a blade length of “equal to or greater than 2.2 inches”
and Stroburg explicitly discloses a finger guard width of “greater than 1.2
inches.” Attorney argument cannot take the place of evidence in the
record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion
of what seems to follow from common experience is just attorney argument
and not the kind of factual evidence that is required to rebut a prima facie
case of obviousness.”). Appellant has not persuasively argued the
Examiner’s findings and reasoning to combine the teachings of Kowalik and
Stroburg.
Lastly, we add that we also do not agree with Appellant that Kowalik
teaches away from Appellant’s invention. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject
matter merely by disclosing a different solution to a similar problem unless
the prior art also criticizes, discredits or otherwise discourages the solution
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claimed). Here, Kowalik does not in any way criticize, discredit, or
otherwise discourage providing a width of 1.5 inches, as taught by Stroburg,
to Kowalik’s guard finger 4.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103 of independent claim 1 as unpatentable over Kowalik
and Stroburg. Claims 2–9 fall with claim 1.

Claim 16
Appellant has not presented arguments for the patentability of claim
16 separate from the arguments discussed supra in the rejection of
independent claim 1. See Appeal Br. 4 (“Claim[] . . . 16 will stand or fall
with [c]laim 1.”). Therefore, for the same reasons discussed above, we also
sustain the rejection of claim 16 as unpatentable over the combined
teachings of Kowalik, Stroburg, and Snider.

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–9 103 Kowalik, Stroburg 1–9
16 103 Kowalik, Stroburg,
Snider
16
Overall
Outcome
1–9, 16

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED