Hiniker Co., In re

Decision Date21 July 1998
Docket NumberNo. 97-1408,97-1408
Citation150 F.3d 1362
PartiesIn Re HINIKER CO.
CourtU.S. Court of Appeals — Federal Circuit

R. Carl Moy, Special Counsel, Faegre & Benson, LLP, of Minneapolis, Minnesota, argued for appellant. Of counsel on the brief was Robert L. Farris, Reising, Ethington, Barnard & Perry, LLP, of Troy, Michigan.

Nancy J. Linck, Solicitor, Office of the Solicitor, of Arlington, Virginia, argued for appellee. With her on the brief were Albin F. Drost, Deputy Solicitor, Kevin Baer and Craig R. Kaufman, Associate Solicitors.

Before LOURIE, CLEVENGER, and BRYSON, Circuit Judges.

CLEVENGER, Circuit Judge.

Hiniker's claims in this appeal from a reexamination proceeding are directed toward a row unit of a row crop cultivator, a farm implement. The Patent & Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) affirmed an examiner's rejection of all the claims under 35 U.S.C. § 103(a). Because we hold that the Board's actions were consistent with the reexamination statute, and we agree that the invention as claimed would have been obvious to one of ordinary skill in the art, we affirm.

I

The reexamination proceeding involved U.S. Patent No. 4,834,189 (the Peterson '189 patent), assigned to Hiniker and directed toward a "Row Crop Cultivator." Row crop cultivators are designed to loosen and mix the soil between rows of growing plants such as corn and sugar beets so as to aerate the soil and kill weeds that grow between the rows. A row crop cultivator normally consists of individual row units mounted on a toolbar. The toolbar in turn is attached to the back of a tractor by a hitch. Each row unit is connected to the toolbar by two pivoting members that form a "parallel linkage" and allow the row unit to pivot up and down as the cultivator traverses uneven ground. Each row unit also generally employs one or two gauge wheels, a coulter blade, disks, and pointed sweeps or shovels. Figure 1 of the Peterson '189 patent shows such a row unit:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

In this figure, the row unit is attached to toolbar 12 via parallel linkage members 19, 22 and is designed to travel through a field between two adjacent crop rows. Concave-shaped cut-away disks 66, 68 cut into the soil near the plant rows and toss the soil away from the plants as the disks roll along. A thin, flat coulter blade 62 cuts a groove in the soil in front of a middleworker assembly (having a shank 92, lay shares 102, 103, and a subsoil point member 96), while a pair of adjustable gauge wheels 52, 54 ride on top of the ground and control the unit's depth. In the pictured embodiment, the coulter blade is mounted between the gauge wheels, and its leading edge is located in front of the trailing edge of each gauge wheel. As a result, the gauge wheels hold crop residue, such as old corn stalks or other plant matter, tight to the ground to help the coulter blade slice through the residue. By slicing the residue, the coulter blade helps prevent the residue from hanging up on the shank which leads down to the sweep, thus decreasing the chance that the cultivator will plug up. This feature is especially helpful in minimum tillage applications, i.e., when crop residue from previous growing seasons is not fully worked under the soil surface.

The claims of the Peterson '189 patent, which total 13 in number, were not amended during the reexamination proceeding. Claim 1 recites:

1. A row crop cultivator mounted on an agricultural tool bar to be pulled by a tractor vehicle for working the soil between adjacent crop rows with a plurality of implements and forming the thus worked soil into ridges along said crop rows, said cultivator comprising:

(a) a frame suspended from said tool bar;

(b) a pair of gauge wheels mounted in slightly spaced-apart relation on a common rotational axis, said pair of gauge wheels supporting said frame;

(c) a disk-shaped coulter blade rotatably suspended from said frame and with the leading edge surface of said disk[-]shaped coulter blade positioned between and forward of the trailing edges of said pair of gauge wheels; and

(d) a middleworker assembly suspended from said frame by a shank, said shank having flared wing members on each side of the lower end thereof said middleworker assembly including a point member attached to the lower leading edge of said shank forward of said flared wing members, said point member being generally aligned with and aft of said disk-shaped coulter blade, and a pair of replaceable lay share members detachably secured to said flared wing members on said shank rearward of said point member, said point member providing a downward force on said sweep when being pulled through the soil as said lay share members break up said soil and residue and said middleworker traverses the ground.

Although the claims were split into three groups before the Board, Hiniker addresses its arguments on appeal to all of the claims in general, and we accordingly treat the claims together and focus on claim 1.

Hiniker sued several of its competitors in U.S. district court for infringement of the Peterson '189 patent. In June 1995, during the pendency of the district court proceeding, the competitors requested reexamination of the Peterson '189 patent, relying in part on U.S. Patent No. 2,440,174 (Howard), which discloses a moldboard plow having a pair of gauge wheels on each side of a coulter blade and which had been cited but not applied in the original prosecution. The competitors asserted, among other things, that U.S. Patent No. 4,461,355 (Peterson '355), an earlier patent assigned to Hiniker, discloses all of the claim limitations except the pair of gauge wheels with the closely-mounted coulter blade, and that Howard discloses that limitation. Figures from Peterson '355 and Howard are shown below:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Although the examiner expressed doubt as to the strength of the competitors' arguments, he nevertheless determined that a substantial new question of patentability existed in view of Howard. The examiner, on the Commissioner's behalf, thus granted the request for reexamination.

During the reexamination proceeding, the examiner repeatedly called for Hiniker to amend its claims to assure their patentability, and Hiniker repeatedly refused to do so. The first office action rejected the claims for obviousness based on Peterson '355, Howard, and two other patents in various combinations, all of which had been before the examiner during the examination of the application that matured into Hiniker's '189 patent. Subsequently, this court issued its decision in In re Recreative Technologies Corp., 83 F.3d 1394, 38 USPQ2d 1776 (Fed.Cir.1996), which held that a prior art reference that served as a rejection in the prosecution of the original patent could not support a substantial new question of patentability that would permit the institution of a reexamination proceeding. See id. at 1398-99, 38 USPQ2d at 1779-80. We extended that holding in In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed.Cir.1997), which held that prior art that was before the original examiner could not support a reexamination proceeding despite the fact that it was not the basis of a rejection in the original prosecution; as long as the art was before the original examiner it would be considered "old art." See id. at 791, 42 USPQ2d at 1300.

One week after Recreative was published, the examiner here issued a second office action, rejecting all of the claims based on various combinations of Howard, Peterson '355, U.S. Patent No. 4,819,737 (Frase), U.S. Patent No. 4,585,074 (Fleisher), and U.S. Patent No. 1,872,623 (East). (Frase and East are shown below.) Although Howard and Peterson '355 were cited in the original prosecution, Frase, Fleisher, and East were "new art," in that they were not before the examiner during the original prosecution. Hiniker proffered extensive argument and declarations suggesting that the references did not suggest to an artisan of ordinary skill that they should be modified or combined so as to produce an operable cultivator unit as claimed. Rejecting those submissions, the examiner ultimately made a final rejection of the claims based on the five pieces of prior art.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

On appeal, the Board affirmed the rejection. In ruling on all of the claims except claim 5, the Board relied alternatively on Frase or Peterson '355 as primary references disclosing the bulk of the claimed limitations, on Howard as disclosing a coulter blade whose forward edge is located between a pair of gauge wheels, and on the sweep disclosed in East. In ruling on claim 5, the Board also relied on Fleisher as disclosing a narrow shank which would prevent residue from being thrown into the crop rows. In particular, the Board found that Hiniker's arguments and declarations "do not demonstrate that the modification of either primary reference by the teachings of East would encounter insurmountable difficulties or that there was any error in the examiner's determination that East is combinable with either of the primary references." Hiniker appeals from the Board's decision.

II

Hiniker contends that the PTO committed two fatal procedural violations during the reexamination proceeding. First, Hiniker argues that the entire proceeding was improper because it was instituted using art that was before the examiner during the examination of the application that matured into the Peterson '189 patent (i.e., "old art"). Second, Hiniker argues that it was denied due process when the Board ruled on its appeal without providing a hearing.

A

Hiniker asserts that because the reexamination proceeding was instituted using old art (the Peterson '355 patent and the Howard '174 patent), the reexamination was wholly improper under Recreative and...

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