COMMISSIONER'S DECISION
OBVIOUS: Amendment Avoided Prior Art of Record.
RULE 46 PROCEDURE: Amendment Modified - Admissable in part.
Amended claims overcome grounds of obviousness but
examiner directed to seek amendment to overcome informalities.
Applicant obtained extension of time and presented new set
of eleven claims. Entry of the amendment permissible except
for two claims, and the application referred for prosecution
in view of uncited art.
FINAL ACTION: Objection overcome, amendment admissible in
part.
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This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated February 2, 1972 on
application 999,786. This application was filed in the name of
C. Van Der Lely N.V. (Cornelis van der Lely) and refers to "Mowing
Machines".
In the prosecution terminated by the Final Actin the examiner
refused the claim for failing to distinctly and explicitly state the
combination regarded as new in view of prior art. The prior art cited
is as follows:
United States Patents
3,053,033 Sept. 11, 1962 - Maguire
3,063,225 Nov. 13, 1962 - Barrentine
In the Final Action the examiner stated in part:
The patent to Barrentine discloses a mower mounted on the
three-point hitch linkage of a tractor. The mower comprises a
frame including two parts pivotally interconnected on an axis
extending in the direction of travel of the mower. The mower
is supported on a ground wheel and includes a rotary cutter
counted on a vertical axis.
The Patent to Barrentine does not disclose a spring on the top
link of the three point linkage, however the use of a spring to
reduce a load on the ground by the cutter bar of a tractor mounted
mower is common general knowledge in the art.
The feature that the applicant uses two mowers mounted on one
frame while Barrentine discloses only one mower cannot be considered
of any patentable significance, because the duplication of mowers
does not produce a new mode of operation or a new unitary result.
The patent to Maguire is cited to show a ground support mounted
in front of a circle made by a cutting blade.
The use of rotary mowers with spherical downwardly extending
projections is common general knowledge obvious to anyone skilled
in the art.
It is pointed out that the addition of a screen to the mower
does not improve the combination of the mower and the three point
hitch linkage.
The claims are indefinite because they fail to distinctly and
correctly state the invention, moreover, the claims require
revision to correct the idiom and English and put the claims into
acceptable form.
In the applicant's response of May 2, 1972 he submitted an amended
set of 14 claims and presented arguments to show that the new set of
claims were distinct and explicit, and that the amended claims avoided
the prior art.
Following this response the grounds of obviousness were withdrawn
in view of the art of record and the Board directed the examiner to
seek an acceptable amendment to overcome informalities which still
existed in the amended claims.
On August 2, 1972 the applicant, after discussions with the examiner,
presented an amended set of eleven claims and stated:
Accompanying this amendment is an Affidavit in support of
applicant's request for an extension of time of three months
within which to deal with the objections expressed in the offi-
cial action of February 2nd, 1972. In an interview which was
recently courteously granted by the Examiner to a representative
of applicant's Canadian agents, it was agreed that further
amendments were necessary in order to overcome the objections
raised in the official action of February 2nd. The claims now
presented with the exception of claim 11, which has been drafted
for the sake of reconsideration of this application by the Appeal
Board, have been amended to meet all of the Examiner's objections.
The applicant needs a claim of this scope in order to protect
himself against a potential infringer who may be able to avoid
the claims which the Examiner has indicated to be acceptable
to the Office. If claim 11 is accepted, applicants would wish
to add further dependent claims and permission to add this claim
is therefore requested under Rule 46(3)(c).
In view of the fact that applicant has only declared interest in
the recently filed eleven amended claims the Board will only consider
these claims and assumes that the present claims on file are held to be
abandoned.
The Board is satisfied that claims 1 and 2 are amended as required
in the Final Action. Claim 3 is improperly dependent because it repeats
in different terms the subject matter of the preceding claim 1 with
reference to a ground wheel. Claims 4 - 10 inclusive are also amended
as required in the Final Action.
However, claim 11 is indefinite with regard to the critical part
of the alleged invention; namely, the mounting of the means for resting
pivotal movement of the machine and, moreover, it is not clear whether
the applicant is including the tractor as part of his combination or
not. For example; in lines 8 etc. the applicant states that: "...
second pivot means between the second frame portion and two lower
points...." and in lines 15 and 16, he states that: "... the first
frame portion extending to one side of the tractor ...." The claim
rust take clear the bounds of the intendied monopoly which appear to
embrace the prior art found in a search against amended claim 11;
which art will be considiered when prosecution resumes.
The Board, therefore, recommends that amended claims 1, 2 and
4 - 10 inclusive may be entered in the application as overcoming the
resections in the Final Action, and that claims 3 and 11 be refused
for reasons stated herein.
R.E. Thomas
Chairman
Patent Appeal Board
I concur with the findings of the Patent Appeal Board and refuse
to enter clams 3 and 11 for the reasons stated, and in view of the fact
that pertinent art has been found with respect to amended claim 11 the
application is returned to the examiner for resumption of prosecution.
A.M. Laidlaw
Commissioner of Patents
Dated at Ottawa, Ontario
this 14th day of September, 1972.
Agent for Applicant
Fetherstonhaugh & Co., Ottawa.