COMMISSIONER'S DECISION
Obviousness: Root Crop Harvester
Some claims, which did not include the "force feeding means," were
refused for failing to define a patentable advance in the art.
Final Action: Affirmed
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated October 29, 1975, on
application 209123 (Class 55-1). The application was filed on Septem-
ber 12, 1974, in the name of Deere & Company, and is entitled "Root
Crop Harvesting Implement."
The application, which is a reissue of Patent 952320, relates to agricultur-
al harvesting equipment. The harvester includes a main frame, a plurality
of digger wheels on the front of the main frame, a conveyor means
supported on the frame to receive roots and a transversely extending
auger conveyor which moves the roots to a vertical auger conveyor. It is
necessary that the vertical auger be force-fed as will be discussed below.
Figure 1, shown below, is illustrative of that arrangement.
<IMG>
In the Final Action the examiner refused claims 1 to 3, 8 and 12 for
failing to define patentable subject matter over the following references:
United States Patents
1,067,884 July 22, 1913 Sladinska
2,693,706 Nov. 2, 1954 Rodin
3,348,706 Oct. 24, 1967 Hyman
German Patent
48,090 Aug. 7, 1889 Kurts
The examiner also advised the applicant that claims 4 to 7 and 9 to 11
are directed to patentable subject matter "and they would be considered
as allowable when written in proper [independent] form."
In response to the Final Action the applicant cancelled all the claims
on file and substituted new claims 1 to 12 inclusive. In view of the
fact that all the claims were cancelled we do not deem it necessary to
state the examiner's position in the Final Action, nor do we think it
necessary to give the position of the applicant in his response thereto for
the following reasons.
In reviewing the prosecution of this application we find that the applicant
stressed the necessity of forcefeeding the vertical auger. On that point
he stated, on page 2 of the action of June 20, 1975, as follows:
Auger conveyors are most efficient when working at or
near the horizontal and have a decrease in efficiency
as they approach the vertical position, it becomes
necessary to forcefeed the auger conveyor so that the
material entering the auger conveyor will prevent other
material being conveyed by the auger from gravitating
on the vertical flight of the conveyor.
It is clear then that the forcefeeding arrangement (also known as a
trough means) is an essential feature which must be included in any allow-
able claim. The apparatus is simply not a useful machine without that
feature. The applicant states that "Neither prior reference [Rodin or Kurts]
provides the forcefeeding nor even suggests it." This, of course, was
appreciated by the examiner when, in a capably prepared Final Action, he
indicated that claims 4 to 7 and 9 to 11 were considered as allowable
over the prior art because this feature was present. These claims
specifically recited a conveyor means which includes an elongated trough
means or the equivalent.
We will now consider the amended claims. Claims 1 and 4 read as follows:
1. A root crop harvester comprising: a main frame; root
digging means secured across the forward end of the frame;
elevator means including a substantially upright auger
conveyor mounted on the frame transversely offset of the
fore-and-aft center line, for moving roots from the lower
end thereof upwardly to a deposit area; and conveyor means
supported on the main frame to receive roots from the
digging means and moving the same upwardly from the root
digging means including conveyor means for supporting and
moving the roots laterally, thereby forcefeeding to the
lower end of the upright auger conveyor.
4. A root crop harvesting implement as set forth in claim 3
further characterized in that the second conveyor means includes
elongated trough means extending transversely along the upper
rear end of the first conveyor means and an auger journaled in
the trough means for moving roots deposited in the trough
means along the trough to the lower end of the upright auger
conveyor. [emphasis added]
When we consider claim 1 we find that it refers, in part, to a conveyor
for moving the roots laterally, "thereby forcefeeding to the lower end of the
upright auger conveyor." At first blush this would appear to satisfy the
requirement that a forcefeeding arrangement, the essential feature for an
allowable claim, is then present. This, in fact, is not the situation.
The lateral conveyor will not, by itself, forcefeed the upright auger; it
must be accompanied by some other means such as "the trough means." Claim 1
then does not include the specific means on which basis the invention is
predicated. Furthermore, without this feature, as previously mentioned,
the machine will not function as promised. This claim then should be
refused for failing to claim a practical and truly operable embodiment. In
addition to the above this claim is clearly not directed to "a means of
force feeding" which was clearly set out,by the applicant, as the advance in
the art. In the circumstances no discussion of the prior art is deemed
necessary.
Claims 2, 3, 8 and 12 also fail to make reference to a forcefeeding means.
The same arguments used to refuse claim 1 apply equally to these claims and
they should also be refused.
By contrast, claim 4, which depends on claim 3 as noted above, does include
the forcefeeding means and is covered by the following, "... the second conveyor
means includes elongated trough means...." It follows that this claim then
would be an allowable claim if written in independent form. Claims 5, 6 and 7
would also be allowable if they were made dependent directly or indirectly on
claim 4.
Claims 9, 10 and 11, which depend directly or indirectly on refused claim 8,
are also allowable using the same reasoning as discussed above with respect
to claims 4, 5, 6 and 7. Claim 9, of course, would have to be written in
independent form.
In summary, claims 1, 2, 3, 8 and 12 should be refused for failing to define
the invention disclosed, as set forth and discussed by the applicant,
with sufficient particularity and distinctness. By contrast we find that
claims 4 to 7 and 9 to 11 are considered to relate to a patentable advance
in the art when presented in the recommended form.
We recommend that amended claims 1, 2, 3, 8 and 12 be refused, but that
claims 4 to 7 and 9 to 11 be allowed when presented in the recommended form.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and considered the
recommendation of the Patent Appeal Board. In the circumstances I re-
fuse to allow claims 1, 2, 3, 8 and 12, but I am prepared to allow
claims 4 to 7 and 9 to 11 when presented in proper form as indicated by
the Board. The applicant has six months within which to remove claims
1, 2, 3, 8 and 12 and resubmit claims 4 to 7 and 9 to 11, or to appeal
this decision under the provision of Section 44 of the Patent Act.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 7th. day of March, 1977
dent for Applicant
Scott & Aylen
170 Laurier Ave. W.
Ottawa, Ont.