Ex Parte 6,336,312 et al

Patent Trial and Appeal Board

Apr 29, 2013

95000244 (P.T.A.B. Apr. 29, 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.
95/000,244 04/26/2007 6,336,312 26.0.3.235/C 9125
27572 7590 04/29/2013
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/29/2013 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
____________________

THE TORO COMPANY1
Requester

v.

TEXTRON INNOVATIONS, INC.2
Patent Owner, Appellant
____________________

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Technology Center 3900
____________________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON and
DANIEL S. SONG, Administrative Patent Judges.
SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 The Toro Company is the third party Requester and real party in interest
(Req. for Inter Partes Reexam 3).
2 Textron Innovations, Inc. is the Patent Owner and real party in interest
(Appeal Brief filed on December 16, 2011 (hereinafter "App. Br.") 1).
3 Issued January 8, 2002 to Bednar et al. (hereinafter "'312 patent").
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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134 and 315 from the
Examiner's Final Rejection of claims 1, 2, 8-10, 14, 15, 19, 20, 24, 25 and
28-34. The other claims were either not subject to reexamination, or the
rejections therefor have been withdrawn (Reb. Br. 2). An oral hearing with
the Patent Owner's representative was held before the Patent Trial and
Appeal Board on February 27, 2013, a transcript of which will be entered
into the electronic record in due course. We have jurisdiction under 35
U.S.C. §§ 134(b) and 315.
The '312 patent was involved in an infringement litigation titled
Textron Innovations Inc. v. The Toro Company, Civil Action No. 05-486 (D.
Del.) which was resolved and dismissed on March 5, 2010 (App. Br. 1). The
Requester in this proceeding is the same Toro Company in the litigation.
The Requester did not file a cross-appeal or submit any briefs in response to
the Patent Owner's appeal, and has filed a "Notice of Future Non-
Participation" on March 5, 2010 which notes settling of said patent litigation
between the parties and also stating that the Requester will not participate
further in this inter partes reexamination.

RELATED CASES
This appeal is related to two earlier appeals at the Board4 for
reexaminations involving patents issued from applications parent to that
which issued as the subject '312 patent. In particular, the '312 patent issued

4 Known as the "Board of Patent Appeals and Interferences" at the time of
the earlier appeals.
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from a continuation-in-part application of an application that issued as U.S.
Patent No. 6,336,311 (hereinafter "'311 patent). The '311 patent issued from
a continuation application of a parent application which issued as U.S.
Patent No. 6,047,530 (hereinafter "'530 patent"). Thus, the specifications of
the '311 patent and the '530 patent are the same. The specification of the
subject '312 patent includes the same disclosure, but includes additional
subject matter shown in Figures 7 to 24, and the discussions related thereto.
The '311 patent was the subject of inter partes reexamination control
95/000,245 appealed to the Board (Appeal 2011-005535), the Board
rendering its decision in The Toro Company v. Textron Innovations, Inc.,
reversing the rejections of the Examiner. 2011 WL 3666749 (BPAI 2011).
The '530 patent was the subject of ex parte reexamination control
90/008,574 appealed to the Board (Appeal 2010-011891), the Board
rendering its decision in Ex parte Textron Innovations. 2011 WL 2095629
(BPAI 2011).
It is also our understanding that because the subject '312 patent was
asserted in the Textron Innovations litigation together with the related '311
'530 patents, and the evidentiary records of the reexamination proceedings
before the board related to the asserted patents stem from the litigation, the
evidentiary record in the present reexamination appeal is substantially
identical to that of the earlier related proceedings Ex parte Textron and/or
Toro Co. v. Textron Innov.5

5 During the Oral Hearing, the Patent Owner's representative was questioned
regarding the secondary considerations evidence in the record as compared
to the records in the appeals of the related '530 and '311 patents as follows:

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Therefore, the present Decision relies on the findings of fact and
conclusions of law as set forth in Ex parte Textron and Toro Co. v. Textron
Innov., and cites to portions thereof where the pertinent issue on appeal has
already been discussed in detail and decided.

THE INVENTION
The invention is directed to gang-type rotary lawn mower as well as a
rotary cutting deck. Figures 15 and 20 of the '312 patent are reproduced
below.

JUDGE SONG: Well, my question wasn't so much the issue as
it is the actual documentary evidence.

MR. SCOTT: It's identical.

JUDGE SONG: It's identical?

MR. SCOTT: Yes. And so, really, the only issue, and which I
was going to address, is whether or not the claim limitations are
the same and are directed to the same features that this board
found enjoyed commercial success in the prior appeals.

(Hearing Transcript, pg. 4).

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Figure 15 of the '311 patent reproduced above shows a top plan view
of a cutting deck assembly 250 having a pair of rear wheels 252 coupled to
side plates 254, 256, and "a unitary, one-piece roller 260" which extends
"between side plates 254 and 256 a distance less than the entire width of
deck 258." (Col. 2, ll. 49-50; col. 7, ll. 14-22; Fig. 15). Figure 20 of the '311
patent reproduced above shows a top plan view of a cutter deck assembly
308 that includes a stepped and segmented roller assembly 310 with
outboard rollers 312, and provides a striped pattern "having a width greater
than the width of deck 322." (Col. 2, ll. 59-60; col. 7, ll. 59-67; Fig. 20).
Representative independent claims 1 and 19 read as follows (Claims
App'x., emphasis added):
1. A gang-type rotary lawn mower comprising:
a frame supported by front wheels and at least one rear
wheel for movement over the ground;
a power source which is mounted on said frame and
which drives at least two of said wheels;
an operator's seat mounted on said frame;
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a steering system enabling the operator to steer said lawn
mower;
at least two side-by-side front rotary cutting deck
assemblies mounted on said frame in front of said front wheels,
said front deck assemblies defining a gap between adjacent
front deck assemblies; and
at least one rear rotary cutting deck assembly mounted on
said frame behind said front deck assemblies and between said
front wheels, each rear deck assembly being aligned with a
respective gap between adjacent front deck assemblies;
each of said front and rear deck assemblies including a
deck defining a downwardly opening space, at least one cutting
blade mounted on a spindle for rotation therewith and a first
roller supporting said deck for movement over the ground, said
first roller extending only partially across the width of said
deck.

19. A cutting deck assembly for a gang-type rotary lawn
mower having a frame, the cutting deck assembly comprising:
a deck defining a downwardly opening space;
at least one cutting blade mounted on a spindle for
rotation therewith;
a pair of laterally-spaced, generally vertically extending
side plates having forward ends;
a first front wheel supporting one of said side plates for
movement over the ground;
a second front wheel supporting the other of said side
plates for movement over the ground;
a roller extending between said side plates supporting
said side plates for movement over the ground, wherein said
deck is coupled to said side plates and located in front of said
roller such that the height of said deck relative to the ground is
adjustable by changing the position of said deck relative to said
side plates; and
a lifting arm adapted to pivotally interconnect said
cutting deck assembly and the frame.

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Independent claim 24 is similar to claim 1 and is directed to a "gang-
type rotary lawn mower" where the front and rear deck assemblies include a
"first roller extending only partially across the width of said deck."
Independent claim 28 is similar to claim 19 and is directed to a "cutting deck
assembly for a gang-type rotary lawn mower" that comprises a roller
extending between the side plates.

EVIDENCE RELIED UPON
The patent publications relied upon by the Examiner in rejecting the
claims are:
Smith US 1,954,579 Apr. 10, 1934
Irgens US 3,611,684 Oct. 12, 1971
Witt et al. US 4,325,211 Apr. 20, 1982

Other non-patent documents relied upon by the Examiner in rejecting
the claims are:
1. The Sebring News, pg. 13A photograph of Lesco 500D Rotary
Gang Mower, January 27, 1988.
2. "Ransomes Boom Mower Model BM 425 Technical Manual,"
Nov. 1990 (hereinafter "Ransomes Boom").
3. "Nunes Rotary Mower" Brochure, June, 1993 (hereinafter
"Nunes").
4. "Cheap and Careful," Turf Management, May 1994.
5. "Groundsmaster with Contour 66 Deck" Brochure, February 1999
(hereinafter "Contour 66").

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THE REJECTIONS6
The Examiner's rejections appealed by the Patent Owner are as
follows:
1. Claims 1, 2, 8, 9, 14, 15, 24 and 25 under 35 U.S.C. § 102(a) as
anticipated by the Contour 66 brochure;
2. Claim 10 under 35 U.S.C. § 103(a) as obvious over Contour 66
brochure;
6. Claims 19 and 20 under 35 U.S.C. § 103(a) as obvious over
Ransomes Boom Mower in view of Smith or Irgens;
14. Claims 19 and 20 under 35 U.S.C. § 103(a) as obvious over
Nunes in view of Smith or Irgens;
15. Claims 28-34 under 35 U.S.C. § 103(a) as obvious over Nunes in
view of Smith and Witt;
17. Claims 19 and 20 under 35 U.S.C. § 103(a) as obvious over
Sebring News in view of Smith or Irgens;
18. Claims 28-34 under 35 U.S.C. § 103(a) as obvious over Sebring
News in view of Smith and Witt; and
20. Claim 30 under 35 U.S.C. § 112, first paragraph, as lacking
written descriptive support.

6 For clarity, the rejections appealed by the Patent Owner are referred to
herein using the numerals of the "Issues" in the Examiner's Answer of June
28, 2012 (hereinafter "Ans.") that set forth the rejections, and also used in
the Patent Owner's Rebuttal Brief (hereinafter "Reb. Br."). The other
proposed rejections were either not adopted, or withdrawn by the Examiner
in the Answer in view of the Board's decisions in Ex parte Textron and/or
and/or Toro Co. v. Textron Innov. (Ans. 25-32).
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We AFFIRM-IN-PART.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner erred in rejecting claim 30, which recites
a roller wider than the downwardly opening space as lacking written
descriptive support.
2. Whether the Examiner erred in finding that Contour 66
brochure discloses front rollers that extend only partially across the
width of the mowing deck.
3. Whether the Examiner erred in finding that the front wheels of
the mowing deck disclosed in the specification of the '312 patent are
not rollers.
4. Whether the Examiner erred in finding that Contour 66
brochure discloses the recited rolling path of claim 9.
5. Whether the Examiner erred in finding that Contour 66
brochure inherently discloses a lifting arm which pivots about an axis
recited in claim 14.
6. Whether the Patent Owner has shown that the Examiner erred
in concluding that it would have been obvious to modify the mower of
Ransomes Boom Mower to provide front wheels.
7. Whether the Patent Owner has shown that the Examiner erred
in concluding that it would have been obvious to modify the mower
shown in Nunes so as to provide rear roller mounted on side plates as
taught by Smith or Irgens.
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8. Whether the Patent Owner has demonstrated non-obviousness
of the claims based on the secondary considerations evidence.

FINDINGS OF FACT
The Findings of Fact as set forth and enumerated 1 to 28 in Ex parte
Textron Innov., 2011 WL 2095629, *4-*12 are adopted herein as findings of
fact in the present appeal. In addition, the Findings of Fact as set forth and
enumerated 29 to 31 in Toro Co. v. Textron Innov., 2011 WL 2095629, *5
are adopted herein as findings of fact in the present appeal. These findings
of fact are referred to in this Decision.
The record also supports the following additional findings of fact by a
preponderance of the evidence.
4.C. Smith also discloses that the mower includes front wheels 15,
16 (pg. 1, ll. 69-72; Fig. 1).

32. Irgens discloses lawn mower including side walls 15, 16 to
which a pair of front wheels 32 and a rear roller 40 are mounted
(col. 2, ll. 35-48; Figs. 1-3).

33. Witt discloses a floating deck of a riding mower, the deck
including brackets 52 with a plurality of vertically spaced holes
53 that receive pins 51 and allow adjustment of the height of
cut of a mower deck (col. 4, l. 59-col. 5, l. 15; Fig. 2).

34. Contour 66 brochure includes photographs of a gang-type
mower. The entirety of the first photograph of the Contour 66
brochure, and a portion of the second photograph are
reproduced below.

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The first photograph reproduced above shows a front view of a
gang-type mower having a plurality of full-floating mowing
decks, each mowing deck having front rollers (first photograph
at the top of the brochure).

The portion of the second photograph reproduced above shows
a side view of the gang-type mower, the mowing deck having a
rear roller that is said in the brochure to provide "attractive
striping." (Second photograph at the bottom of the brochure and
bullet point on the right side thereof).

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PRINCIPLES OF LAW
The Principles of Law as set forth in Ex parte Textron, 2011 WL
2095629, *12-*13 as well as Toro Co. v. Textron Innov., 2011 WL 3666749,
*5-*6 are incorporated herein as principles of law applicable in the present
appeal. We also observe the following additional principles of law.
"Commercial success evidence should be considered 'so long as what
was sold was within the scope of the claims.' Id." In re Glatt Air Techniques,
Inc., 630 F.3d 1026, 1030 (Fed. Cir. 2011); see also In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011). One "need not sell every conceivable
embodiment of the claims in order to rely upon evidence of commercial
success.'" In re DBC, 545 F.3d 1373, 1384 (Fed.Cir.2008) (quoting Applied
Materials, Inc. v. Adv. Semiconductor Materials Am., Inc., 98 F.3d 1563,
1570 (Fed.Cir.1996)).
However, secondary considerations are only a part of the "totality of
the evidence"; its mere existence does not control the conclusion of
obviousness. Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483
(Fed. Cir. 1997). A "nexus" must be established between the merits of the
claimed invention and the evidence of secondary considerations in order for
the evidence to be given substantial weight. See In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995). The scope of the "objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support." In re Tiffin, 448 F.2d 791, 792 (CCPA
1971); In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980); see also Asyst
Technologies, Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008).

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ANALYSIS
We address each of the rejections listed above, but in a slightly
different order. In addition, in view of the decisions in Ex parte Textron
Innov., and Toro Co. v. Textron Innov., we limit our analysis to those issues
not already addressed in those prior decisions. Furthermore, we only
consider those arguments actually made. See 37 C.F.R. § 41.67(c)(1)(vii).

Rejection 20
Claim 30 stands rejected by the Examiner under 35 U.S.C. § 112, first
paragraph, as lacking a written description in the '312 patent specification
(Ans. 8). Claim 30 depends from independent claim 28, and recites
"wherein the roller is wider than the downwardly opening space." The
Examiner finds that there is no support in the specification of the '312 patent
that "a roller" is wider than the opening, and states that this same rejection
was upheld by the Board in Toro Co. v. Textron Innov. (Ans. 23). The
Examiner finds that only the V-shaped segmented roller assemblies shown
in Figures 20 and 22 are disclosed as being wider than the opening but such
segmented roller assemblies are not referred to as "a roller" in the '312 patent
(Ans. 23-24). Thus, the Examiner considers the limitation of claim 30
disclosed only with respect to the V-shaped roller assembly.
The Patent Owner argues that the recitation of "the roller" in claim 30
is not limited to a single roller, but instead "[a] roller includes a single roller,
a segmented roller, or a V-shaped roller" described in the '312 patent, and
there is "no evidence that the inventors intended to limit the definition of
'roller.'" (App. Br. 71). The Patent Owner also refers to varies portions of
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the '312 patent which state that segmented rollers can include any number of
roller segments in support of its argument (Id.).
The Examiner's articulation of the rejection and the arguments
proffered by the Patent Owner raise issues of claim construction as well as
written description. Preliminarily, as to claim construction, the rejection
raises the issue as to whether a person of ordinary skill in the art would
construe "the roller" of claim 30 and other claims of the '312 patent, as
excluding segmented roller assemblies such as the V-shape roller assembly
which is disclosed in the '312 patent as being wider than the downwardly
opening space.
We generally agree with the Patent Owner. Claims are given their
broadest reasonable interpretation consistent with the specification, reading
claim language in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). In our view, a person of ordinary skill in the
art would understand the recitations of "roller" within claim 30 and other
claims of the '312 patent as referring to the genus of roller structures of
which unitary, one-piece roller, a segmented roller assembly, and V-shaped
roller assembly, are all species. This claim scope is supported by the
doctrine of claim differentiation in that dependent claims 15 and 20 (that
depend from independent claims 1 and 19, respectively) each specify that
the first roller is a unitary, one-piece roller, while claims 16 and 217 (that
also depend from claims 1 and 19, respectively) specify that the first roller is

7 While claims 16 and 21 are not subject of the present reexamination
proceeding, that does not detract from their significance in properly
construing the term "roller" as used in the claims of the '312 patent.
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a segmented roller. See Nazomi Communications, Inc. v. Arm Holdings,
PLC., 403 F.3d 1364, 1370 (Fed. Cir. 2005) (Claim differentiation "normally
means that limitations stated in dependent claims are not to be read into the
independent claim from which they depend." (quoting Karlin Techs., Inc. v.
Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir. 1999))).
Of course, the claim scope determination above does not fully resolve
the issue of written descriptive support as the Examiner's rejection is also
premised on the fact that the specifically recited dimension of the roller
recited in claim 30 is only illustrated in the V-shaped roller assembly
embodiment. However, the specification need not recite the claimed
invention in haec verba, and compliance with written disclosure is
determined from the perspective of those skilled in the art. Ariad Pharma.,
598 F.3d at 1351-52. The fact that the recited dimension of the roller recited
in claim 30 is only illustrated in the embodiment of the V-shaped roller
assembly does not mean that the specification does not reasonably convey to
those skilled in the art that the inventor had possession of the claimed
subject matter. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010). Indeed, we are of the view that one of ordinary
skill in the art would understand that the inventor was in possession of
rollers illustrated in the different embodiments but are also dimensioned to
be wider than the downwardly opening space as claimed.
As to the Examiner's assertion that this same rejection was upheld by
the Board with respect to the '311 patent in Toro Co. v. Textron Innov. (Ans.
23), we observe that the subject '312 patent includes substantial additional
subject matter. In particular, the '312 patent explicitly discloses a
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configuration of a roller (V-shaped roller assembly) that has "a width greater
than the width of [the] deck" (col. 7, ll. 59-67; Fig. 20), and thus, has a width
wider than the downwardly opening space. Correspondingly, this additional
subject matter in the '312 patent leads to a different result than that of Toro
Co. v. Textron Innov.
Therefore, in view of the above, we do not sustain the Examiner's
rejection of claim 30 as lacking written descriptive support.

Rejection 1
The Examiner rejects claims 1, 2, 8, 9, 14, 15, 24 and 25 as
anticipated, finding that the Contour 66 brochure discloses every limitation
of these claims, including a front roller that extends only partially across the
width of the deck as recited in independent claims 1 and 24.
Preliminarily, the Patent Owner argues that the Examiner did not
previous specify which paragraph of 35 U.S.C. § 102 was being applied in
the rejection based on Contour 66 brochure, and that no date has been
provided for the Contour 66 brochure in now specifying 35 U.S.C. § 102(a)
so as to allow the Patent Owner to antedate the reference (Appeal Brief 39).
The Examiner responds that the Contour 66 brochure includes a copyright
year of 1999, that the pertinent date of public availability was established by
the declaration of Koch submitted with the Replacement Detailed Request
for Inter Partes Patent Reexamination dated April 26, 2007, and that the
Patent Owner only objected to the date of the Contour 66 brochure during
the appeal whereas it has had adequate time to predate the reference (Ans.
12-13).
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We decline to reverse the rejection on this basis. Indeed, the Patent
Owner does not address the Examiner's’ findings regarding the copyright
year of the Contour 66 brochure or the declaration of Koch. In addition,
such matters based on the form of the rejection should have been resolved
through petition to the Director asking for more specificity rather than
raising it at this late, appeal stage of the reexamination.

Claims 1 and 2
Substantively, the Patent Owner further argues that in contrast to the
Examiner's assertion, the Contour 66 brochure merely discloses front wheels
and not front rollers (App. Br. 39; Reb. Br. 9-10). The Patent Owner further
argues that the Contour 66 brochure was a copy of the Patent Owner's
product AR-250, and thus, was derived therefrom so that it cannot show
more than that was in possession of the Patent Owner (Reb. Br. 8).
Accordingly, the Patent Owner asserts that to any extent the Contour 66
brochure can be considered to disclose front rollers, the Contour 66 brochure
is not prior art because the '312 patent is entitled to the benefit of the earlier
filing of its parent applications since Figures 3 and 4 also discloses "front
rollers" that extend only partially across the width of the deck as recited
(Reb. Br. 9-10). The Patent Owner also asserts that there is "no support for
the semantic distinction made by the Examiner." (Reb. Br. 9).
We disagree with the Patent Owner and find its arguments
unpersuasive. Firstly, as to the disclosure in the Contour 66 brochure, the
Examiner's finding that the "front roller in Contour 66 reads on the partial
width 'first roller' of claim 1 and claim 24" (Ans. 3, 13) in that it discloses a
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pair of small rollers located at the front of the deck, either one of which can
be considered a "first roller" is supported by the photographs therein (FF 34;
see also Reb. Br. 10, photo reproduced therein with components annotated
as "Wheels" by the Patent Owner). In addition, contrary to the Patent
Owner's apparent assumption, even if Contour 66 brochure shows a product
that was "derived" from Patent Owner's AR-250, that fact does not establish
that such product was an exact copy in all respects with no differentiating
features as compared to the AR-250. Indeed, in Ex parte Textron Innov.,
while discussing the secondary evidence of copying, we specifically noted
that "Toro's commercial products do not appear to be identical to AR 250."
2011 WL 2095629, *24.
As to the scope of disclosure of the '312 patent, we also agree with the
Examiner (Ans. 15) that the '312 patent is not entitled to the benefit of the
earlier parent filings as to this limitation because the components relied upon
by the Patent Owner are wheels and not rollers. The Patent Owner's
disclosure in the parent applications (and thus, the subject '312 patent)
makes clear that the component 50 shown in Figures 3 and 4 at the front of
the mowing deck are "wheels." (Col. 3, ll. 58-62; Figs. 3 and 4). These
components are not referred to as "rollers" and are not illustrated as such.
The Patent Owner argues that the Examiner has not offered "an
interpretation of the term 'roller' that excludes the front 'wheels' of the parent
disclosure." (Reb. Br. 9). However, we observe that not all claim limitations
need interpretation. In addition, as acknowledged by the Patent Owner, the
Examiner has made clear that rollers are wider than wheels (Reb. Br. 9). We
agree with the Examiner that the width differential serves as a structural
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distinction between wheels and rollers. In this regard, the Patent Owner's
argument is undermined by its own disclosure in the '312 patent and related
parent patents which identifies certain components as "wheels," while
identifying others as "rollers," thereby indicating a distinction that was
apparent to the Patent Owner in preparing the applications that issued as the
'312 patent as well as the related parent patents.
The Patent Owner refers to numerous components in the '312 patent
purporting to disclose wheels of varying sizes as providing support that a
person of ordinary skill would not differentiate between the wheels 50 in the
specification to the component shown in the Contour 66 brochure (Reb. Br.
9). In this regard, the Patent Owner observes that "there is almost no
difference in width in the wheels 252 in Figure 15 and the rollers 264 in
Figure 16." (Id.). However, the Patent Owner obfuscates the rejection set
forth by the Examiner. When the Examiner distinguishes rollers from
wheels based on width, it is not the absolute width that the Examiner refers
because it is common knowledge that wheels come in many different sizes,
and thus, have different widths. Rather, it is that rollers are proportioned
with wider widths as compared to the proportions for wheels. Stated in
another way, it is the general shape of the component, i.e., the squatty shape
caused by the wide width in proportion to the height which distinguishes
rollers from wheels that are not so shaped.
The Patent Owner observes that the widths of roller 264 shown in
Figure 16 is the same as the illustrated wheel 252 (enumerated in Fig. 15)
although they are referred to as a "roller" and a "wheel" respectively in the
'312 patent. However, when one considers the general shape of these
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components in all respects including their height (i.e., diameter), it is readily
apparent that the roller 264 is proportionately much wider in width as
compared to the wheel 252. As noted, this distinction was apparently
appreciated by the Patent Owner in preparation of the application that issued
as the '312 patent.
Thus, we are not persuaded that the Examiner erred in rejecting claims
1 and 2 as anticipated by the Contour 66 brochure.

Claims 8 and 9
Dependent claim 8 recites that the first roller of a front deck assembly
and a rear deck assembly each define a rolling path, and claim 9 which
depends from claim 8 further recites that "said rolling path defined by said
front deck assembly roller overlaps said rolling path defined by said rear
deck assembly roller." As to claim 9, the Examiner finds that the roller of
the Contour 66 brochure "inherently provides overlap if only to a slight
degree." (Ans. 3; see also Ans. 16). The Patent Owner argues that there is
no support in the Contour 66 brochure for the Examiner's assertion (Reb. Br.
11). We agree with the Patent Owner.
Claim 9 requires an overlap of the rolling path of the front rollers of
two different deck assemblies, namely, front and rear deck assemblies. It is
not apparent how the Contour 66 brochure necessarily satisfies this
limitation. While we do not disagree with the Examiner's assertion that the
front and rear decks in the Contour 66 brochure would overlap (Ans. 16), the
Examiner appears to misunderstand claim 9 which is more specifically
directed to the path of the front rollers of the decks, and not to the path of the
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decks generally. Thus, we do not sustain the Examiner's rejection of claim
9.
Whereas the Patent Owner also asserts that the anticipation rejection
is in error with respect to claim 8, we observe that no specific arguments
have been are submitted thereto. In addition, we observe that claim 8 merely
recites that the first roller of a front deck assembly and a rear deck assembly
each define a rolling path. The first rollers of the decks disclosed in the
Contour 66 brochure would clearly define their respective rolling paths.
Thus, the Examiner's rejection with respect to claim 8 is sustained.

Claim 14
Dependent claim 14 requires a lifting arm for pivotally connecting
each of the front deck assemblies, "said lifting arm pivoting about an axis
laterally extending across said deck assembly substantially parallel to the
ground and perpendicular to the direction of travel." The Examiner finds
that "those having ordinary skill in the art would have understood from the
Contour 66 figures that the u-shaped carriers for the deck amount to lifting
arms that allow lateral pivoting as claimed." (Ans. 17). The Patent Owner
argues that it cannot be determined that the lifting arms of Contour 66
brochure pivots about an axis that extends in the direction claimed (App. Br.
43). We agree with the Patent Owner.
While the Contour 66 brochure discloses that the decks follow ground
contours, it is not apparent from the Contour 66 brochure that the lifting arm
pivots about an axis that laterally extends across the deck substantially
parallel to the ground and perpendicular to the direction of travel as recited.
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In addition, it is also not apparent why the lifting arm must inherently pivot
along such an axis. Thus, we do not sustain the Examiner's anticipation
rejection of claim 14.

Claim 15
Dependent claim 15 recites that "said first roller is a unitary, one-
piece roller." The Patent Owner argues that it is not clear what element
shown in Contour 66 is being relied upon for disclosing the recited first
roller (Reb. Br. 11). The Patent Owner also argues that "[t]o the extent that
the Examiner could possibly be relying [on] the two front wheels" of the
Contour 66 brochure, the two front wheels would not be a unitary, one-piece
roller as recited by claim 15 (Reb. Br. 11).
However, the Examiner relies on the front roller (singular) as
corresponding to the claimed first roller (Ans. 3), not on the pair of first
rollers of the Contour 66 brochure. As noted supra, the Contour 66 brochure
discloses a pair of small rollers located at the front of the deck, either one of
which can be considered a "first roller." (FF 34). Thus, we are not
persuaded of Examiner error.

Claims 24 and 25
Claims 24 and 25 require a gap to be defined between adjacent front
deck assemblies, and a rear deck that is aligned with the gap between the
front deck assemblies. These claims also require first, second and third
rollers supporting the deck, "said first roller extending only partially across
the width of said deck." The Examiner rejects these claims for the reasons
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set forth relative to claims 1, 8 and 9 (Ans. 3, 17). The Patent Owner argues
that "[t]here is no way to tell whether a rear deck assembly is aligned with a
gap" between the front cutting deck assemblies (App. Br. 43), and fails to
show the recited three rollers wherein the first roller extends only partially
across the width of the deck (Reb. Br. 12).
However, we agree with the Examiner and find that in view of the
disclosure of a width of cut that is smaller than the width of the decks, a
person of ordinary skill in the art would infer that the sole rear deck
assembly disclosed in the Contour 66 brochure would be positioned so as to
be aligned with the gap between the front deck assemblies. Otherwise, the
mower would either leave strips of uncut grass and/or increase the likelihood
of leaving such strips during turns if the rear deck was not aligned with the
gap between the front deck assemblies. In addition, we observe that the
Contour 66 brochure discloses decks having three rollers, two small front
rollers and a rear roller (Contour 66 brochure, frontal photograph). Thus, the
Patent Owner's assertion to the contrary is without merit.
Thus, in view of the above, Rejection 1 is affirmed with respect to
claims 1, 2, 8, 15, 24 and 25, but is reversed with respect to claims 9, 14

Rejection 2
Claim 10 ultimately depends from independent claim 1 and recites
that "said rolling path defined by said front deck assembly roller includes an
inboard edge aligned with an outboard edge of said rolling path defined by
said rear deck assembly roller." The Examiner concludes that this claim
would have been obvious over the Contour 66 brochure, stating that "it
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would have been obvious to those of ordinary skill in the art to align the
roller paths," and also refers to Action Closing Prosecution of record which
states that altering the overlap path of the rollers amounts to merely
adjusting the lateral alignment which would have been obvious and routine
to those of ordinary skill in the art (Ans. 4, 17 (emphasis omitted); ACP
dated Nov. 4, 2009, pg. 22; ACP dated May 27, 2008, pg. 22).
The Patent Owner argues that "Contour 66 cannot anticipate this
claim for the same reasons it does not anticipate claim 9." (Reb. Br. 11; see
also App. Br. 43). However, we observe that this rejection is based on
obviousness, not anticipation. The Patent Owner also argues that non-
obviousness of this claim has been shown through evidence of secondary
considerations which the Examiner has failed to properly weigh (Id.).
Because the arguments with respect to secondary considerations evidence
are applicable to other rejections on appeal, and require consideration of the
decisions in Ex parte Textron Innov., and Toro Co. v. Textron Innov., we
address this issue separately infra under the heading "Secondary
Considerations." For the reasons discussed in detail infra, the secondary
considerations evidence does not demonstrate non-obviousness because
inadequate nexus has been established and the evidence is not commensurate
with the scope of the claims. Thus, we affirm this rejection.

Rejection 6
The Examiner rejects claims 19 and 20 concluding that it would have
been obvious to modify the mower deck of Ransomes Boom Mower to
provide front wheels as taught in the mowers of Smith or Irgens instead of a
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roller (Ans. 5, citing Request for Inter Partes Reexamination, pg. 63).
Findings of fact with respect to Ransomes Boom Mower were set forth in
Toro Co. v. Textron Innov., 2011 WL 3666749, *5 (FF 29A-29D). Findings
of fact with respect to Smith were set forth in Ex Parte Textron Innov., 2011
WL 2095629, *5 (FF 4A, 4B). We further find herein that the lawn mowers
disclosed in both Smith and Irgens include front wheels (FF 4C, 32). We
agree with the Examiner's conclusion of obviousness and address the Patent
Owner's arguments infra.
The Patent Owner first argues that this rejection is improper as it is
not based on a substantial new question of patentability (App. Br. 47-48).
However, in inter partes reexaminations, issues pertaining to the
determination of the existence of a Substantial New Question of
Patentability are not appealable. See 35 U.S.C. § 312(c) (stating "[a]
determination by the Director under subsection (a) [regarding determination
as to whether a substantial new question of patentability is raised] shall be
final and non-appealable.").
The Patent Owner further argues that these claims recite "a cutting
deck assembly for a gang-type rotary lawn mower having a frame" and none
of the references relied upon disclose a gang-type rotary lawn mower (App.
Br. 49, emphasis in original). However, as noted by the Examiner (Ans. 19),
these claims are directed to a cutting deck assembly and not to a gang
mower. The language pertaining to gang-type rotary lawn mower in the
preamble is merely a statement of intended use for the recited cutting deck
assembly. Thus, the claim can be satisfied by a deck that is capable of being
used in a gang-type configuration.
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The Patent Owner asserts that it is speculative to conclude that a boom
deck can be mounted to a lifting arm of a gang-type rotary lawn mower
because an extension boom "serves a significantly different purpose in a
very different way than the claimed lift arm." (App. Br. 49). However, as
the Examiner noted (Ans. 19), the Patent Owner does not direct us to
specific structure in the deck of the Ransomes Boom Mower, or provide
persuasive reasons as to why it cannot be used in a gang-type mower (Id).
The Patent Owner also argues that the purpose of a boom "is to hold the
mower out away from the frame of the mower, whereas a lift arm is
designed to attach the mower directly to the frame." (App. Br. 49). This
argument is unpersuasive because both the boom and lift arm serve to
connect the deck to the frame of the mower.
The Patent Owner further argues that a person of ordinary skill would
not combine the Ransomes Boom Mower with the wheels of Smith or Irgens
which are merely directed to a home-use lawn mower, and that such
modification would leave the Ransomes Boom Mower "more vulnerable to
damage and less able to serve its intended purpose." (App. Br. 48-49).
However, the Patent Owner again ignores the fact that the claims are
directed to the mower deck that is suitable for use in a gang-type mower.
Whereas the Ransomes Boom Mower may be beyond that which is required
for home use, the proper inquiry is whether one of ordinary skill in the art
would have considered the mowing deck of Ransomes Boom Mower as
being usable in a gang-type mower, and would have found it obvious to
replace the front roller with front wheels knowing that such configuration is
used in the lawn mower arts as evidenced by Smith and Irgens. A person of
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ordinary skill in the art of mowers would be familiar with mowers for
commercial as well as home applications, and application of solutions and
techniques from one application to another would have been obvious to one
of ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) ("When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability. For the same reason,
if 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."). For instance, use of conventional caster wheels in
the front of the deck would improve maneuverability and potentially reduce
costs in less demanding applications of the deck.
To any extent that such modification would make the deck more
vulnerable to damage as asserted by the Patent Owner, we are of the opinion
that one of ordinary skill in the art would consider such modified decks in
those mowing applications where such modified decks would be adequately
robust so as to not be damaged and still capable of being used as a gang-type
mower. We are not directed to persuasive evidence that a person of ordinary
skill would be dissuaded from modifying the mowing deck of Ransomes
Boom Mower to have front wheels in applications where the deck is utilized
for a gang-type mower instead of a boom-type mower. In this regard, we
further observe that the obviousness analysis does not require that an item of
prior art can only be modified to assume an ideal or optimal configuration.
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See, e.g., Medichem, S.A. v. Rolabo, S.L.¸437 F.3d 1157, 1165 (Fed. Cir.
2006) ("a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine.").
The Patent Owner further argues that these rejections should be
reversed because the Examiner failed to consider evidence of non-
obviousness (Reb. Br. 12). However, for the reasons discussed in detail
infra, we do not find the evidence persuasive as to demonstrating non-
obviousness of these claims. Thus, we affirm Rejection 6.

Rejections 14 and 15
The Examiner rejects claims 19 and 20 (Rejection 14) concluding that
it would have been obvious to modify the mower decks shown in Nunes so
as to provide rear roller mounted on side plates as taught by of Smith or
Irgens (Ans. 20; see also Ans. 3 citing Request for Inter Partes
Reexamination, pg. 66). The Examiner also rejects claims 28-34 (Rejection
15) concluding that it would have been obvious to further modify such a
mower in view of Witt to provide vertically spaced holes in order to allow
cut height adjustment (Ans. 22; see also Ans. 5-6 citing Request for Inter
Partes Reexamination, pg. 66, and Requester Comments filed Nov. 15,
2007, pgs. 40-43).
Findings of fact with respect to Nunes and Smith were set forth in Ex
Parte Textron Innov., 2011 WL 2095629, *4-*5 (FF 1A-1C, 4A, 4B). The
disclosure of Irgens is substantively similar to Smith to the extent that Irgens
discloses a rear roller 40 mounted on side walls 15, 16 (FF 32). In addition,
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Witt discloses brackets 52 having plurality of vertically spaced holes 53 that
allow adjustment of the height of cut of a mower deck (FF 33). We agree
with the Examiner's conclusion of obviousness and address the Patent
Owner's arguments infra.
The Patent Owner argues that rollers such as those disclosed in Smith
or Irgens are "not interchangeable with wheels such as those in the Nunes
device." (App. Br. 63). The Patent Owner further points to the different
shapes of the decks to assert that there is "no way of knowing whether
making such a modification to Nunes' deck would even be possible since the
deck mounted underneath the mower likely would no longer fit" and require
"drastic design modification" of the Nunes mower as well as its decks (App.
Br. 63, 65- 66). These arguments are similar to those already addressed in
Ex Parte Textron Innov., and are unpersuasive because they are based on
bodily incorporation 2011 WL 2095629, *21-*22. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art"). We are not persuaded by the Patent
Owner's unsubstantiated assertion that the necessary changes would have
been beyond the skill of those of the ordinary skill in the art.
The Patent Owner also argues that the secondary references Smith and
Irgens are for home use whereas Nunes discloses a mower for commercial
applications so that a person of ordinary skill would not consider Smith or
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Irgens (App. Br. 64). However, this argument is unpersuasive as a person of
ordinary skill in the art of mowers would be familiar with mowers for
commercial as well as home applications, and application of solutions and
techniques from one application to another would have been obvious to one
of ordinary skill in the art. See KSR, 550 U.S. at 417.
The Patent Owner further argues that Nunes brochure is less relevant
than a Nunes patent cited during the original prosecution, and that Smith and
Irgens references are less relevant than the Mountfield reference also cited
during the original prosecution (App. Br. 64). Although not explicitly
stated, the Patent Owner appears to be challenging the determination as to
the existence of a substantial new question of patentability based on the
combination of Nunes and Smith or Irgens. However, as noted supra, issues
pertaining to the determination of the existence of a Substantial New
Question of Patentability are not appealable in inter partes reexaminations.
See 35 U.S.C. § 312(c).
As to claims 28-34 which stand rejected based on the combination of
Nunes, Smith and Witt, the Patent Owner again relies on its unpersuasive
argument that the suggested combination requires a complete redesign of
Nunes (App. Br. 66-67, 69). As to claims 32-34 in particular, the Patent
Owner also refers to its submitted argument with respect to rejections based
on Risboro or Wulff (App. Br. 69) where it was argued that "Witt does not
even disclose holes in a deck plate or a side plate, but rather adjusts the
height of the deck relative to the suspension frame so that the deck is
suspended." (See App. Br. 58). However, the rejection is not based on
replacing the side plate and adjustable feature of Smith with the structure
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disclosed in Witt. Rather, the rejection is that it would have been obvious to
one of ordinary skill that the slotted adjustment provided in the side plate of
the mower as disclosed in Smith can be replaced with known adjustment
hole patterns such as those disclosed in Witt (Ans. 5-6).
The Patent Owner also argues that these rejections should be reversed
because the Examiner failed to consider evidence of non-obviousness (Reb.
Br. 12-13). However, as discussed in detail infra, we do not find the second
consideration evidence persuasive as to demonstrating non-obviousness of
these claims. Thus, we affirm Rejections 14 and 15.

Rejections 17 and 18
These rejections are substantively the same as Rejections 15 and 16
discussed supra except that the Examiner relies on the Lesco 500D Rotary
Mower shown in Sebring News instead of the mower shown in Nunes (Ans.
7-8). The Patent Owner relies on the arguments submitted with respect to
Nunes, and further argues that because of the poor quality photographs, it
cannot be determined how the height of cut is adjusted if it is adjusted at all
(App. Br. 69-70). In view of our affirmance of Rejections 15 and 16 based
on Nunes, we do not reach the Examiner's rejections based on Sebring
News.

Secondary Considerations
The Patent Owner asserts that the Examiner's obviousness rejections
are improper because the Examiner failed to properly consider the evidence
of non-obviousness (Reb. Br. 11-13). We initially note that such evidence is
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not pertinent to Rejection 1 which is based on anticipation. See In re
Wiggins, 488 F.2d 538, 543 (CCPA 1973). Thus, the Patent Owner's
reliance on the secondary considerations evidence is only pertinent to the
Examiner's obviousness rejections of claims 10, 19, 20 and 28-34.
As also noted supra, the evidentiary record in the present appeal of
the '312 patent is substantially identical to that of the earlier related appeals
regarding the '530 and '311 patents. The pertinent evidence set forth in those
related cases was based on commercial products AR 250, and
Groundsmaster 3500-D, 4500-D and 4700-D products. Ex Parte Textron
Innov., 2011 WL 2095629, *6-*12 (FF 7-28). In Ex Parte Textron Innov.,
we found the evidence of copying and commercial success as rebutting the
prima facie case of obviousness set forth by the Examiner with respect to
claims 1-5 based on the combination of Nunes and other secondary
references. 2011 WL 2095629, *24-*26. In Toro Co. v. Textron Innov., we
found the evidence of copying and commercial success as rebutting the
prima facie case of obviousness set forth by the Examiner with respect to
claims 2-5, 7, 8, and 10-12 also based on the combination of Nunes and
other secondary references. 2011 WL 3666749, *11-*13.
In both of the earlier related appeals, each of the claims for which the
evidence was found to rebut the obviousness rejections specifically recites
that "the roller extends across substantially the entire width of the deck"
('530 patent, independent claim 1), or "said roller extending substantially
across the entire width of said deck." ('311 patent,8 independent claims 2 and

8 We note that with respect to the '311 patent, a Reexamination Certificate
issued with claims that more broadly recite a roller "extending at least
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10). In addition, the specifications of the '530 and '311 patents only include
Figures 1 to 6 (which are included in the specification of the subject '312
patent) illustrating a rear a rear roller that extends "substantially the entire
width" of the deck, and discussions related thereto (see, e.g., '530 patent,
Figs. 2, 3 and 5).
Furthermore, the evidence demonstrates that AR 250, and
Groundsmaster 3500-D, 4500-D and 4700-D all have a rear roller on the
mower decks that extends "substantially the entire width" of the deck. See
Ex Parte Textron Innov., 2011 WL 2095629, *6, 7* (evidence referred to in
FF 8A-12). Indeed, we stated:
In particular, both independent claims 2 and 10 of the '311
patent specifically recite a gang-type lawn mower having rotary
cutting deck assemblies that include a roller supporting the
deck, the roller extending substantially across the entire width
of the deck. These are the primary features that makes the
claimed invention novel and not anticipated by the prior art of
record in the reexamination proceedings for both '311 and '530
patents.
Toro Co. v. Textron, 2011 WL 3666749, *12.

Claims 10, 19, 20 and 28-34 of the subject '312 patent differ from
those of the related '530 and '311 patents in that the present claims at issue
do not require a rear roller that extends "substantially the entire width" of the
deck. We turn first to claims 19, 20 and 28-34 before addressing claim 10.

partially across the width of the deck." Those claims were rejected based on
references that were found not to be prior art during the appeal. Hence, with
respect to those claims of the '311 patent, the evidence of secondary
considerations was not at issue.
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As to independent claims 19 and dependent claim 20, we again
observe that these claims are directed to a "cutting deck assembly" rather
than a gang-type rotary lawn mower. These claims also do not have any
restrictions as to the roller except that the roller "extend[s] between said side
plates supporting said side plates for movement over the ground."
Independent claim 28 and claims 29-34 that ultimately depend therefrom are
similarly directed to the cutting deck assembly and merely recite "a roller
extending between the first generally vertically extending side plate and the
second generally vertically extending side plate."
The Examiner states that the evidence found persuasive by the Board
in the earlier related appeals is not pertinent and unpersuasive as to the
broader claims at issue which are merely directed to the cutting deck
assembly (Ans. 9, 10, 21). The Patent Owner argues that it is the cutting
deck that drove the copying and success by Toro in the Groundsmaster
commercial mowers, and thus, the secondary evidence directed toward gang-
type rotary lawn mower that is of record demonstrates the non-obviousness
of these rejected claims (Reb. Br. 3-4).
We generally agree with the Examiner and find the evidence
unpersuasive to rebut the prima facie showing of obviousness of claims 19,
20 and 28-34. As noted by the Examiner, there is no specific secondary
consideration evidence demonstrating commercial sales of just the cutting
deck having a roller. Even if we were to agree with the Patent Owner's
arguments that it is the cutting deck that drove the copying and success, the
independent claims 19 and 28 merely recite "a roller" that is between the
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side plates. Thus, these independent claims do not limit the recited roller's
size or configuration.
As discussed supra with respect to Rejection 20, the Patent Owner has
argued, and we agree, that the term "roller" as used in the '312 patent should
be broadly construed so as to encompass "a single roller, a segmented roller,
or a V-shaped roller" (App. Br. 71) which are all described in the '312
patent. Thus, the pertinent roller limitations in independent claims 19 and
28 encompass single rollers that extend only partially across the width of the
deck (such as Figures 14 and 15), segmented rollers that extend only
partially across the width of the deck (such as Figures 13 and 19), and V-
shaped segmented rollers that is wider than the downwardly opening space
of the deck (such as Figure 20), as well as a single, non-segmented rear
roller that extends substantially the entire width of the deck (such as Figures
2 and 3).
However, the secondary considerations evidence of record is directed
to a single configuration and embodiment wherein the roller is a single, non-
segmented rear roller that extends substantially the entire width of the deck.
Correspondingly, the Patent Owner has not established adequate nexus
between claims 19 and 28, and the submitted evidence of copying and
commercial success that would allow for the evidence to be given substantial
weight. See In re GPAC, Inc., 57 F.3d at 1580. To be clear, we are not
requiring that each of the embodiment of the claims to be sold in order to
rely on the submitted evidence. See In re DBC, 545 F.3d at 1384. However,
the objective evidence is not commensurate in scope with these claims, and
any nexus between the provided evidence of record and the claims is greatly
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attenuated so that the evidence has little probative value in demonstrating
non-obviousness of claims 19 and 28. See In re Tiffin, 448 F.2d at 792; In re
Clemens, 622 F.2d at 1036.
Similar reasoning applies with respect to dependent claims 20 and 29-
34. For example, as to dependent claim 20 which specifies that the roller is
a unitary, one-piece roller, we again observe that this claim does not recite
any limitation on width relative to the deck. Thus, claim 20 encompasses an
unspecified spectrum of roller widths including those that extend only
partially across the width of the deck, or are wider than the deck or opening.
However, the submitted evidence of record only pertains to commercial
products in which the roller extends "substantially the entire width" of the
deck. As to dependent claim 30 which recites that the roller is wider than
the downwardly opening space, this claim encompasses the V-shaped
segmented roller assemblies as discussed supra relative to Rejection 20.
However, the submitted evidence does not have a roller remotely resembling
such a configuration. Whereas dependent claim 31 further recites that the
roller is narrower than the deck, it does not limit the configuration of the
roller so as to encompass the V-shaped segmented roller assemblies as well.
However, the submitted evidence only pertains to commercial products
having a unitary, one-piece roller that extends "substantially the entire
width" of the deck.
Turning now to claim 10 (which ultimately depends from claim 1), it
recites that "said first roller extend[s] only partially across the width of said
deck." Thus, claim 10 is directed to different subject matter than that
disclosed in the related '530 and '311 patents and the evidence is not
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persuasive of non-obviousness for similar reasons discussed supra. A
person of ordinary skill in the art would appreciate that these claims are
directed to embodiments shown, for example, in Figures 13-15 of the '312
patent which are described as having a roller that "does not extend the entire
width of the mower deck" or as extending "a distance less than the entire
width of the deck." (Col. 7, ll. 7-22; Figs. 13-15). However, the evidence
does not demonstrate copying or commercial success of a mower wherein
the roller does not extend across substantially the entire width of the deck.
Rather, as noted, the evidence of record is based on commercial mowers that
include a rear roller extending across substantially the entire width of the
deck. Such evidence is inadequate to demonstrate non-obviousness of claim
10.
Therefore, in considering the totality of the evidence, we are of the
view that the evidence of copying and commercial success based on
commercial mowers AR 250 and Groundsmaster 3500-D, 4500-D and 4700-
D mowers fails to demonstrate non-obviousness of claims 10, 19, 20 and 28-
34 because a proper nexus between the commercial mowers and these claims
have not been established, and is not commensurate in scope. See
Richardson-Vicks v. Upjohn, 122 F.3d at 1483. Thus, these claims remain
rejected as obvious for the reasons already discussed supra.

CONCLUSIONS
1. The Examiner erred in finding the limitation reciting a roller
wider than the downwardly opening space as lacking written
descriptive support.
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2. The Examiner did not err in finding that the Contour 66
brochure discloses front rollers that extend only partially across the
width of the mowing deck.
3. The Examiner did not err in finding that the front wheels of the
mowing deck disclosed in the specification of the '312 patent are not
rollers.
4. The Examiner erred in finding that the Contour 66 brochure
discloses the recited rolling path of claim 9.
5. The Examiner erred in finding that the Contour 66 brochure
inherently discloses a lifting arm which pivots about an axis recited in
claim 14.
6. The Patent Owner has not shown that the Examiner erred in
concluding that it would have been obvious to modify the mower of
Ransomes Boom Mower to provide front wheels.
7. The Patent Owner has not shown that the Examiner erred in
concluding that it would have been obvious to modify the mower
shown in Nunes so as to provide rear roller mounted on side plates as
taught by Smith or Irgens.
8. The Patent Owner has not demonstrated non-obviousness of the
claims based on the secondary considerations evidence.

ORDERS
1. A. Rejection 1 of claims 1, 2, 8, 15, 24 and 25 as anticipated by
Contour 66 brochure is AFFIRMED; and
Appeal 2012-012493
Reexamination Control 95/000,244
Patent US 6,336,312 B1

39
B. Rejection 1 of claims 9 and 14 as anticipated by Contour 66
is REVERSED.
2. Rejection 2 of claim 10 as obvious over Contour 66 brochure is
AFFIRMED.
3. Rejection 6 of claims 19 and 20 as obvious over Ransomes Boom
Mower in view of Smith or Irgens is AFFIRMED.
4. Rejection 14 of claims 19 and 20 as obvious over Nunes in view
of Smith or Irgens is AFFIRMED.
5. Rejection 15 of claims 28-34 as obvious over Nunes in view of
Smith and Witt is AFFIRMED.
6. We do not reach Rejections 17 and 18.
7. Rejection 20 of claim 30 as lacking written descriptive support is
REVERSED.

AFFIRMED-IN-PART

Patent Owner:

Harness, Dickey & Pierce, P.L.C.
PO Box 828
Bloomfield, MI 48303

Third Party Requestor

James W. Miller
Suite 1960 Rand Tower
527 Marquette Ave
Minneapolis, MN 55402