Function Chains Pty Ltd.

Patent Trials and Appeals Board

Oct 2, 2020

15196360 - (D) (P.T.A.B. Oct. 2, 2020)

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.
15/196,360 06/29/2016 Jinhuan Huangfu 43638-0003002 6502
26161 7590 10/02/2020
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
KATCOFF, MATTHEW GORDON
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JINHUAN HUANGFU
and PHILLIP MORRIS DOHNT

Appeal 2020-002225
Application 15/196,360
Technology Center 3700
Before HYUN J. JUNG, BARBARA A. BENOIT, and
PHILLIP A. BENNETT, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s Final decision to reject claims 15–26.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). The Appellant identifies Function Chains Pty Ltd. as the real
party in interest. Appeal Br. 1.
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Application 15/196,360

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CLAIMED SUBJECT MATTER
Claim 15, reproduced below with emphasis added, is illustrative of the
claimed subject matter:
15. A flailing apparatus for debarking trees, the flailing
apparatus comprising:
a rotatable drum; and
a plurality of flail chains, at least one flail chain
comprising:
a first end chain link fixed to the drum;
a second end chain link free to extend from the
drum during drum rotation; and
a plurality of intermediate chain links sequentially
linked together and connecting the first and second end chain
links, the intermediate chain links including square links having
four shanks all lying in a common plane and connected by four
link corners, each shank extending as a straight link segment
between adjacent link corners, such that when the square chain
links are engaged with adjacent chain links at opposite corners,
another link corner of each square chain link is exposed to
engage bark.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Jensen US 7,878,227 B2 February 1, 2011

REJECTION
The Appellant seeks our review of the rejection of:
claims 15–26 under 35 U.S.C. § 103(a) as unpatentable over Jensen;
and
claims 15–26 under 35 U.S.C. § 112(a), first paragraph, as failing to
comply with the written description requirement.
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OPINION
Rejection Under 35 U.S.C. § 103(a)
The Examiner determines that Figures 3, 11A, and 11C of Jensen
disclose the limitations of claim 15. Final 5–6. The Examiner also states
that “[A]pplicant has not set forth any criticality of the links being square or
substantially square in shape” or “provided any unexpected result of the use
of such shape” and that the Specification indicates any substantially
symmetric polygon provides the same function as a square link. Id. at 6; see
also Ans. 3 (Stating similarly that the Specification describes that linkage
elements “may be in the shape of any symmetric polygon” and there is “no
criticality to a square or substantially square shape.”).
The Examiner also determines that Jensen has the same shape and
function as the claimed square link. Final 6. According to the Examiner,
“[t]here are only a finite number of shapes that one could use and still retain
the functionality of Jensen, so it would have been obvious to a person of
ordinary skill in the art to turn the substantially square shaped links of
Jensen into completely square links” and “such a shape was a matter of
mechanical expediency as a person of ordinary skill in the art would have
found such a shape obvious absent persuasive evidence that the particular
configuration of the claimed shape was significant.” Id. at 6–7.
For claims 16–22 which depend directly or indirectly from claim 15,
Examiner determines that Figures 3 and 11A of Jensen disclose their
limitations. Id. at 7–8. Applying Figures 11A and 11C of Jensen and the
same reasons for independent claim 15, the Examiner determines that Jensen
would have rendered obvious independent claim 23. Id. at 8–10. The
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Examiner also determines that Figure 11A of Jensen discloses claims 24–26
which depend directly from claim 23. Id. at 10.
The Appellant argues claims 15–26 as a group. Appeal Br. 3–18. We
select claim 15 as the representative claim, and claims 16–26 stand or fall
with claim 15. See 37 C.F.R. § 41.37(c)(1)(vii) (2019).
The Appellant first argues that the figures the Examiner cites (Figures
11A and 11C of Jensen from the issued patent) are not prior art because they
were filed two years after the priority date of the present application.
Appeal Br. 6 (citing Ex. 1003, 40–472). According to the Appellant, these
figures were revised in response to an objection, and the revised figures are
not identical to Figures 11A and 11C in Jensen’s provisional or published
application. Id. at 7–8 (citing Ex. 1003, 27–28, 40–47, 56, 124–125;
Ex. 1004, 41, 423). The Appellant also argues that the Examiner’s response
that “patents are assumed to be valid” does not apply because Jensen’s
validity is not at issue. Id. at 8 (quoting Final 2).
Additionally, the Appellant argues that, even if Jensen’s revised
Figures 11a and 11c were prior art, they do not show the claimed “square
links.” Id. at 9–12. In the Appellant’s view, Jensen’s disclosure “repeatedly

2 The Appellant states that Exhibit 1003 is the “File Wrapper of US
11/279,502; published as US 2007/0079899 (‘The Jensen Publication’);
issued as US 7,878,227 (‘The Jensen Patent’).” Appeal Br. 22. Although
the Appeal Brief cites to specific pages of Exhibit 1003 and we identify the
page numbers in this Decision, the exhibit does not have any page
numbering. Based on the surrounding context, it is sufficiently clear which
parts of the file wrapper the Appellant relies on for its arguments.
3 The Appellant states that Exhibit 1004 is the “File Wrapper of US
60/671,012 (‘The Jensen Provisional’).” Appeal Br. 22. Exhibit 1004 also
does not have page numbering.
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and consistently refers to round links in its detailed description of
embodiments,” “goes on to provide a specific example depicting and
describing links that are at least generally or substantially round,” and
describes how its chain links 940 are made round. Id. at 9–12 (citing Jensen,
1:11–17, 3:46–55, 4:43–5:23, 5:50–6:51, 7:14–37, 8:56–60, 9:24–46, 10:62–
65, Figs. 1, 11A; Ex. 1003, 28). The Appellant, thus, argues that one of
ordinary skill in the art would not have viewed Figures 11A and 11C in a
manner divorced from and contrary to Jensen’s disclosure. Id. at 11–12.
The Appellant further argues that the Examiner does not provide a
reasoned explanation for modifying Jensen to have square links absent
hindsight. Id. at 13. The Appellant contends that one of ordinary skill in the
art would not have ignored Jensen’s teachings directed at round links and
that Jensen teaches square links were deficient, thereby discouraging one of
ordinary skill in the art from pursuing square links. Id. (citing Jensen,
10:62–65). The Appellant additionally alleges commercial success and
copying as objective evidence of nonobviousness that were also previously
presented to the Examiner. Id. at 14–18 (citing Final 2, 6–7; Ex. 1002, 2–8).
The Examiner answers that Jensen discloses “at least a polygonal
shape which is the only requirement by [A]ppellant to be able to perform the
functions of the invention” and “a substantially square link in [F]igure 11c.”
Ans. 3–4 (quoting from Spec. 6:15–18). The Examiner also determines that
the Appellant’s declaration “is at odds with [A]ppellant’s disclosure”
because “there is no criticality to the square shape.” Id. at 4. Regarding
whether the cited figures of Jensen are prior art, the Examiner answers that
“every patent is presumed to be valid” and “[a]s such Figure 11c is
presumed to be supported by the original disclosure of Jensen.” Id.
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The Appellant replies that it is not arguing that Jensen is invalid, the
Examiner is presuming that “all contents of an issued patent are irrefutably
deemed to have been filed with the priority application, even if added later,”
and the Examiner is not addressing whether the particular disclosure was
part of the application as filed. Reply Br. 1–3. The Appellant maintains that
the relevant figures of Jensen are from the published application and that it
would be prejudicial to the Appellant to apply later revised figures filed after
the priority date of the claims. Id. at 3.
Because the Appellant disputes what Figures 3, 11A, and 11C of
Jensen show and these figures appear to differ from the corresponding
figures in the provisional and published applications, we, like the Appellant,
turn to Jensen’s disclosure to determine what one of ordinary skill in the art
would have understood from those figures at the time of Jensen’s filing date.
The Appellant does not dispute that Jensen’s disclosure is prior art, only the
figures filed after the filing of Jensen’s application. See generally Appeal
Br.; Reply Br.
Jensen discloses a “debarking chain including a plurality of
interconnected chain links, each chain link being a continuous strand of
chain material surrounding and defining a central opening through which the
continuous strand of any adjacent, interconnected chain links pass” and
“including at least one passing link.” Jensen 2:28–34. Jensen also states
that “‘passing’ links will have an inner perimeter, surrounding an open space
in the center of the link that will be arcuate in at least three different regions
of this inner perimeter that may or may not be separated by substantially
straight inner perimeter surfaces.” Id. at 6:1–5. Thus, we agree with the
Examiner that Jensen teaches or suggests a square chain link, because
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Jensen’s link is a “continuous strand of chain material” that is “arcuate in at
least three different regions . . . separated by substantially straight inner
perimeter surfaces.” See id. at 2:28–34, 6:1–5. Even if Figures 3, 11A, and
11C of Jensen as issued are not prior art, Jensen’s disclosure states that the
link is “arcuate in at least three different regions,” which means that it may
be curved and/or angled in four different regions, with a straight inner
perimeter surface between the curved regions. Thus, Jensen at least
discloses a link having a four-sided shape, a disclosure that supports the
Examiner’s findings that Jensen teaches or suggests a square link.
Also, there is no indication in the record that the Examiner considered
the Appellant’s submitted objective evidence of nonobviousness. See
generally Ans.; see also Appeal Br. 14 (Arguing that the “strong objective
evidence[] of commercial success and copying submitted by Appellant
should have led the Examiner to a finding of nonobviousness” and
referencing Ex. 1002), 22 (Identifying “Exhibit 1002” as a “37 CFR § 1.132
Declaration of Jinhuan Huangfu and Phillip Dohnt in support of Office
Action Response dated August 12, 2019”).
The Appellant argues that it sells “flail chains” that “include square
links that embody the features recited in independent claims 15 and 23.”
Appeal Br. 15 (citing Ex. 1002 ¶¶ 5–6). Even if nexus exists between the
claimed invention and the asserted objective evidence of nonobviousness,
we would agree with the Examiner that, after weighing such evidence
together with the Examiner’s findings and determinations from Jensen,
claims 15–26 are unpatentable. The asserted commercial success is shown
by the testimony of interested witnesses with no corroborating evidence. Ex.
1002 ¶ 1 (“We are co-inventors of the United States patent application
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marked as Serial No. 15/196,360”). The declarants do not identify any
underlying evidence to support that “Function Chains has now secured about
a 70% share of the Australian flail chain market” and “[i]n our last fiscal
year (July 2018 to June 2019), over 95% of the flail chains Function Chains
shipped to Canada, and over 80% of the flail chains sold by Function Chains
in Australia, were square link chains embodying the invention.” Ex. 1002
¶ 4. Without underlying documentation of the market share assertions made
by the declarants, documentation that presumably is readily available to
Appellant, the statements made in support of commercial success, are not
entitled to significant probative value.
As for copying by others, although we understand that it may be
difficult to obtain, there is insufficient evidence that substantial effort was
expended by others before the asserted copying. See Ex. 1002 ¶¶ 11–14;
Ex. 1003; see also Pentec, Inc. v. Graphic Cntrls. Corp., 776 F.2d 309, 317
(Fed. Cir. 1985) (Alleged copying is not persuasive of nonobviousness when
the copy is not identical to the claimed product, and the other manufacturer
has not expended great effort to develop its own solution); Vandenberg v.
Dairy Equip. Co., a Div. of DEC Int’l, Inc., 740 F.2d 1560, 1567 (Fed. Cir.
1984) (Evidence of copying found particularly persuasive where copyist had
itself attempted for a substantial length of time to design a similar device,
and failed). Therefore, the asserted copying is not particularly persuasive.
For the reasons above, when the submitted evidence of asserted
commercial success and copying are weighed together with the Examiner’s
findings and determinations, we would agree with the Examiner that Jensen
would have rendered obvious claims 15–26. Accordingly, we sustain the
Examiner’s rejection of claims 15–26 under 35 U.S.C. § 103.
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Rejection Under 35 U.S.C. § 112, First Paragraph
The Examiner determines that “[t]here is no support in the original
disclosure for square chain links” because “[t]he [S]pecification only
references ‘a substantially square shaped interior space’ or a ‘substantially
square shape’ or ‘square cross section’ which is not the same as a square
shaped chain link.” Final 2 (Acknowledging that the Appellant filed a
declaration but responding that “figure 1A . . . clearly shows a link (10)
which does not meet the dictionary definition of square” because “[b]y
definition a square has four pointed corners that are at 90 degree angles” and
“there is nothing in the original disclosure changing the accepted definition
of a square.”), 3–4 (Objecting to the Specification because “there is no
support for ‘square chain links.’”).
The Appellant argues that Figures 1A and 3 provide written
description support as evidenced by the declaration it previously submitted
in response to a prior Office action. Appeal Br. 4. According to the
Appellant, the declaration demonstrates how one of ordinary skill in the art
would have interpreted Figures 1A and 3 in view of the claim language
“square links” and is corroborated by record evidence. Id. at 4–5 (citing
Ex. 1001, 3–4; Ex. 1002, 10–14, 25, 51–58, 61–70). The Appellant
contends that, as explained in the declaration, one of ordinary skill in the art
would not have understood “square links” to be mathematically perfect
squares because they would be impractical. Id. at 5 (citing Ex. 1001, 3–4).
The Appellant also argues that the Examiner erroneously implies that
the exact claim language must be found in the Specification. Id. at 3. The
Appellant further argues that the Examiner should not give more weight to
an unsupported dictionary definition and the Examiner’s opinion of the
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understanding of one of ordinary skill in the art, which are not evidence,
over the Appellant’s submitted declaration. Id. at 3, 5.
The Examiner answers that the disclosure “calls the linkage element
‘substantially square’” and Figure 1a shows “a substantially square shape
but not by definition a square shape.” Ans. 3 (citing Spec. 6:15–18). In
response to the Appellant’s declaration, the Examiner states that “in my look
at this art square links mean to be actually square (for instance four sharp
ninety degree corners).” Id.
The Appellant replies that no reference supports the Examiner’s
assertion regarding a square shape and that “it is a personal assertion that
contradicts the written testimony of a very experienced and knowledgeable
person in this particular art.” Reply Br. 1 (quoting Ans. 3). The Appellant
also argues that such “bare dismissal of the testimony of a skilled person is
inconsistent with proper and unbiased examination.” Id.
We agree with the Appellant that Figures 1A and 3 provide written
description support. Appeal Br. 4. The Examiner acknowledges that Figure
1A shows a substantially square shape. Ans. 3. The Examiner does not
explain why a mathematical definition of “square” over another meaning
should be applied in view of the Specification. See Final 2–4; Ex. 1001, 3–
4. The Examiner also does not address sufficiently the Appellant’s
declaration that indicates one of ordinary skill in the art would have
understood that “square links” do not have to be mathematically perfect
square shapes because such shapes are impractical in the art. See Final 2–4;
Ans. 3–4; Ex. 1001, 3–4. In sum, the record does not make clear why a
narrower interpretation, and not the broadest reasonable interpretation of
“square” in view of the Specification, applies.
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Also, the Examiner determines that the Specification describes only a
square interior space. Final 4. The Specification, however, states that “the
interior space of the linkage element is regularly shaped,” the “term
‘regularly shaped’ . . . refers to a substantially symmetric polygon” and “in
one form of the invention four shank portions and four angled portions may
define a substantially square shaped interior space.” Spec. 2:17–20. The
Specification also states that “a cross section of any one of said shank
portions may be substantially circular.” Id. at 3:10–11. Because the
Specification describes a “substantially square shaped interior space” formed
by portions with circular cross sections, a substantially square link would be
within the scope of that description.
For the reasons above, we do not sustain the Examiner’s rejection of
claims 15–26 under 35 U.S.C. § 112, first paragraph.

DECISION
The Examiner’s rejection of claims 15–26 are affirmed. More
specifically, the Examiner’s rejection of claims 15–26 under 35 U.S.C.
§ 103(a) is sustained but the rejection of claims 15–26 under 35 U.S.C.
§ 112, first paragraph is not sustained.

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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15–26 103(a) Jensen 15–26
15–26 112(a) Written Description 15–26
Overall
Outcome
15–26

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