UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`H&S MANUFACTURING COMPANY, INC.
`
`Petitioner,
`v.
`
`OXBO INTERNATIONAL CORPORATION
`
`Patent Owner.
`______________
`
`Case No.: IPR2016-00950
`______________
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,166,739
`
`
`
`
`
`

`
`
`
`
`
`Table of Contents
`
`Table of Authorities ................................................................................................. iii 
`Certificate of Service ............................................................................................... iv 
`List of Evidence and Exhibits Relied Upon in the Petition ....................................... v 
`I. 
`INTRODUCTION ............................................................................................ 1 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. §42.8(a)(1) ........................... 2 
`A. 
`Real Party-In-Interest Under 37 C.F.R. §42.8(b)(1) .................................. 2 
`B. 
`Related Matters Under 37 C.F.R. §42.8(b)(2) ........................................... 2 
`C. 
`Lead and Back-Up Counsel Under 37 C.F.R. §42.8(b)(3) ........................ 2 
`D. 
`Service Information Under 37 C.F.R. §42.8(b)(4) .................................... 2 
`III.  PAYMENT OF FEES REQUIRED BY 37 CFR §42.15(a) ............................ 3 
`IV.  SUMMARY OF THE ‘739 PATENT .............................................................. 3 
`A. 
`Description of the Claimed Invention of the ‘739 Patent .......................... 3 
`B. 
`Summary of the Prosecution History of the ‘739 Patent ........................... 4 
`V.  REQUIREMENTS UNDER 37 C.F.R. §42.104 .............................................. 5 
`A. 
`Grounds for Standing Pursuant to 37 C.F.R. §41.104(a) .......................... 6 
`B. 
`Identification of Challenged Claims and Relief Requested Pursuant to
`37 C.F.R. §41.104(b)(1) ............................................................................. 6 
`The Specific Art and Statutory Ground(s) on Which the Challenge Is
`Based Pursuant to 37 C.F.R. §41.104(b)(2) ............................................... 6 
`How the Challenged Claims Are Construed Pursuant to 37 C.F.R.
`§41.204(b)(3) ............................................................................................. 7 
`1.  Conveyor .................................................................................................... 8 
`2.  Continuous line of material pickup ............................................................ 8 
`VI.  DETAILED EXPLANATION OF PERTINENCE AND MANNER OF
`APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH
`REVIEW IS REQUESTED .............................................................................. 8 
`Person of Ordinary Skill in the Art ............................................................ 9 
`A. 
`Applicable Law .......................................................................................... 9 
`B. 
`1.  Obviousness (pre-AIA 35 U.S.C. §103) .................................................... 9 
`
`D. 
`
`C. 
`
`
`
`i
`
`

`
`
`
`C. 
`
`D. 
`
`Ground 1 – Claim 1 is obvious over U.S. Patent No. 4,932,196 to
`Schnittjer in view of U.S.S.R. Inventor’s Certificate No. SU 835359A1
`to Zhavoronkin ......................................................................................... 11 
`Ground 2 – Claim 1 is obvious over U.S. Patent No. 6,205,757 to Dow in
`view of U.S. Patent No. 3,468,107 to van der Lely and further in view of
`von Allwörden ......................................................................................... 22 
`Ground 3 – Claim 1 is obvious over EP Patent Application 0789990A1
`to Declementi in view of U.S. Patent No. 5,031,394 to Honey, further in
`view of U.S. Patent No. 6,415,590 to Lohrentz ....................................... 32 
`Ground 4 – Claim 1 is obvious over U.S.S.R. Inventor’s Certificate No.
`SU 835359A1 to Zhavoronkin in view of Canadian Patent No. 1151431
`to Honey et al. .......................................................................................... 43 
`VII.  Conclusion ...................................................................................................... 56 
`
`E. 
`
`F. 
`
`
`
`ii
`
`
`
`
`
`

`
`
`
`Case
`
`Table of Authorities
`
`Page
`
`Belden Inc. v. Berk-Tek LLC,
`
`Nos. 2014-1575, -1576. Slip. Op. at 13 (Fed. Cir. Nov. 5, 2015) ................. 12
`
`Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361 (Fed. Cir. 2000) ................. 56
`
`Geo M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294 ..................... 56
`
`Graham v. John Deere, 383 U.S. 1 (1966) ........................................................ 12, 55
`
`In re Cuozzo Speed Techs., 778 F.3d 1271 (Fed. Cir. 2015) ..................................... 9
`
`In re Hilmer, 359 F.2d 859, 149 .............................................................................. 56
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) .............................................................. 12
`
`In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) ............................................... 52, 55
`
`KSR Int'l Co. v. Teleflex Inc.,
`
`127 S. Ct. 1727 (2007) ........................................ 13, 22, 30, 32, 41, 43, 50, 52
`
`
`
`Statutes & Rules
`
`
`
`35 U.S.C. §103 ........................................................................................................... 8
`
`37 C.F.R. §41.200(b) ................................................................................................. 9
`
`Other Authorities
`
`MPEP § 2143(I) .................................................................. 22, 30, 32, 41, 43, 50, 53
`
`
`
`
`
`
`
`iii
`
`

`
`Certificate of Service
`
`
`I hereby certify that on April 27, 2016, a copy of this Petition and Exhibits
`
`
`
`
`
`1001-1021 were personally served on the following counsel of record for the
`
`Patent Owner:
`
`
`
`
`
`Dated: April 27, 2016
`
`
`
`
`
`
`
`
`
`
`Merchant & Gould
`3200 IDS Center
`80 South Eighth Street
`Minneapolis, MN 55402
`
`Attn: Thomas R. Johnson
`
`
`
`Respectfully submitted,
`
`
`/Brad Pedersen/
`Brad D. Pedersen
`Reg. No. 32,432
`
`
`
`
`
`Attorney for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`iv
`
`

`
`
`
`
`
`List of Evidence and Exhibits Relied Upon in the Petition
`
`Exhibit #
`
`Name
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`U.S. Patent No. 7,310,929 (the ‘929 Patent)
`
`RESERVED
`
`U.S. Patent No. 8,166,739 (the ‘739 Patent)
`
`Prosecution History for the ‘739 Patent
`
`RESERVED
`
`RESERVED
`
`Power of Attorney for Petitioner H&S Manufacturing
`Company, Inc.
`
`Declaration of Dan Undersander
`
`Declaration of Ralph Shirley
`
`RESERVED
`
`U.S. Patent No. 4,932,196 (Schnittjer)
`
`U.S.S.R. Inventor’s Certificate No. SU 835359A1
`(Zhavoronkin)
`
`U.S. Patent No. 6,205,757 (Dow)
`
`U.S. Patent No. 3,468,107 (van der Lely)
`
`EP Patent Application 0789990A1 (Declementi)
`
`U.S. Patent No. 6,415,590 (Lohrentz)
`
`U.S. Patent No. 5,031,394 (Honey)
`
`Canadian Patent No. 1151431B (Honey)
`
`U.S. Patent No. 6,775,969 (Wuebbels)
`
`v
`
`

`
`
`
`
`
`1020
`
`1021
`
`U.S. Patent No. 5,911,625 (von Allwörden )
`
`U.S. Patent No. 7,628,004 (Geiser)
`
`vi
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
`
`
`INTRODUCTION
`
`U.S. Patent No. 8,166,739 relates to agricultural equipment, namely a
`
`I.
`
`
`
`windrow merger for gathering, merging and/or moving material such as cut crops
`
`like forage (e.g., alfalfa, grasses) into larger windrows for harvesting or baling. Ex.
`
`1003,1:15-19,2:42-44. Independent claim 1 is directed to a windrow merger
`
`apparatus having three pickup assemblies, each pickup assembly including a belt
`
`conveyor independently driven and operable in either direction independently of
`
`the other belt conveyors. Id.,10:36-61.
`
`
`
`As of the earliest priority date of the ‘739 Patent (March 31, 2003), windrow
`
`mergers utilizing multiple pickup heads and conveyors for moving material were
`
`well known in the art. Id., 1:21-27,48-54. The ‘739 Patent was improperly granted
`
`after the Examiner failed to consider that independently driven and independently
`
`operable conveyors are well known in the art.
`
`
`
`The prior art presented herein includes art that was not before the Examiner
`
`during prosecution of the ‘739 Patent, as well as art that was before the Examiner
`
`but not fully appreciated. The teachings of the prior art presented herein establish
`
`that Petitioner has a reasonable likelihood of prevailing on the grounds presented
`
`in this Petition that at least one of the claims of the ‘739 Patent is invalid as
`
`anticipated or obvious. Petitioner therefore respectfully requests that an Inter
`
`Partes Review (IPR) of the ‘739 Patent be instituted.
`
`
`
`1
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8(a)(1)
`
`The following mandatory notices under the Rules are provided.
`
`
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. §42.8(b)(1)
`
`Petitioner certifies and submits that the real party-in-interest for this Petition
`
`is H&S Manufacturing Company, Inc., a Wisconsin corporation. Ex. 1007.
`
`Related Matters Under 37 C.F.R. §42.8(b)(2)
`B.
`The ‘739 Patent is currently being asserted in federal district court. Oxbo
`
`Int’l Corp. v. H&S Mfgr’g Co., No. 15-292-jdp (W.D. Wis. 2015).
`
`C.
`
`Lead and Back-Up Counsel Under 37 C.F.R. §42.8(b)(3)
`
`Petitioner designates lead and backup counsel as:
`
`Lead Counsel
`Brad D. Pedersen
`Reg. No. 32,432
`Patterson Thuente Pedersen, P.A.
`80 South 8th Street, Suite 4800
`Minneapolis, MN 55402
`Phone: 612.349.5774
`Fax: 612.349.9266
`pedersen@ptslaw.com
`
`Backup Counsel
`Eric H. Chadwick, Reg. No. 41,664
`Mike P. Gates, Reg. 60,194
`Patterson Thuente Pedersen, P.A.
`80 South 8th Street, Suite 4800
`Minneapolis, MN 55402
`Phone: 612.349.5740
`Fax: 612.349.9266
`chadwick@ptslaw.com,
`gates@ptslaw.com
`
`D.
`
`Service Information Under 37 C.F.R. §42.8(b)(4)
`
`Papers concerning this matter should be served on lead and backup counsel
`
`as designated in Section II(C), with a courtesy e-mail copy to: prps@ptslaw.com.
`
`Petitioner hereby consents to email service of any papers in this proceeding.
`
`
`
`2
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
`
`III. PAYMENT OF FEES REQUIRED BY 37 CFR §42.15(a)
`
`Payment of the fees is made concurrently herewith via the USPTO EFS
`
`payment system. The Director is authorized to charge any additional fees that
`
`might be due in connection with this Petition to Deposit Account No. 16-0631.
`
`IV. SUMMARY OF THE ‘739 PATENT
`
`A. Description of the Claimed Invention of the ‘739 Patent
`
`Independent claim 1 of the ’739 Patent is directed to a windrow merger
`
`apparatus having three pickup assemblies. Ex. 1003,10:36-61. Claim 1 further
`
`specifies that at least two of the pickup assemblies are foldable between an
`
`extended position (as depicted in Fig. 1 of the ’739 Patent below), and a retracted
`
`travel position (as depicted in Fig. 5 of the ’739 Patent below). Id., at 10:36-61,
`
`Figs. 1 and 5.
`
`
`
`3
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
`
`
`
`
`In the extended use position, the three pickup assemblies are aligned side by side to
`
`form an unobstructed continuous line of material pickup. Id. Additionally, each of
`
`the pickup assemblies includes a belt conveyor driven by a dedicated motor, each
`
`belt conveyor arranged to convey the picked up material in a direction transverse to
`
`the direction that the window merger is traveling and being operable in either
`
`direction independently of the other belt conveyors. Id.
`
`B.
`
`Summary of the Prosecution History of the ‘739 Patent
`
`
`
`The ’739 Patent issued from U.S. Application No. 12/925,405, filed on
`
`October 19, 2010, as a continuation of U.S. Patent No. 7,827,774 (the ’774 Patent),
`
`which was filed as a continuation of U.S. Patent No. 7,310,929 (the ’929 Patent).
`
`
`
`4
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
`
`Id., p.1; Ex.1001, p.1. The ’739 Patent is governed by US patent laws prior to the
`
`America Invents Act (pre-AIA).
`
`
`
`The prosecution of the ’739 Patent was brief, consisting of just two Office
`
`Actions and an Examiner Interview. See Ex. 1004, p. 71-74, 82-90, 289-292. The
`
`application was filed with a single claim, 1, that was rejected in a Non-Final
`
`Rejection dated June 24, 2011, as being anticipated by U.S. Patent No. 4,409,780
`
`to Beougher et al. Id.,73. An in-person interview was conducted at the Patent
`
`Office on August 23, 2011. Id. at p. 90. During the interview numerous claims
`
`were proposed to the Examiner. Id. at pp. 85-90. The Examiner agreed that a
`
`proposed dependent claim 9 would be allowable if written in independent form to
`
`include proposed independent claim 7. See id. at pp. 82-83. The subject matter of
`
`proposed claim 9 (which would become issued claim 1 of the ‘739 Patent)
`
`considered to be allowable by the Examiner was a windrow merger apparatus with
`
`“each of the first, second and third belt conveyors being operable in either
`
`direction independently of the other belt conveyors.”
`
`
`
`After approval of Terminal Disclaimers to overcome double patenting
`
`rejections to the ’774 Patent and the ’929 Patent, the ‘739 Patent was allowed on
`
`February 27, 2012. Id. at pp.318-322.
`
`V. REQUIREMENTS UNDER 37 C.F.R. §42.104
`
`As set forth below, Petitioner submits that each requirement for institution of
`
`5
`
`
`
`
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
`
`an IPR of the ’739 Patent is satisfied.
`
`A. Grounds for Standing Pursuant to 37 C.F.R. §41.104(a)
`
`Petitioner certifies and submits that the ’739 Patent is available for IPR, and
`
`that Petitioner is not barred or estopped from filing this Petition. Ex. 1007.
`
`B.
`
`Identification of Challenged Claims and Relief Requested Pursuant
`to 37 C.F.R. §41.104(b)(1)
`
`The precise relief requested by Petitioner is that claim 1 of the ’739 Patent
`
`
`
`be found unpatentable.
`
`C.
`
`The Specific Art and Statutory Ground(s) on Which the Challenge
`Is Based Pursuant to 37 C.F.R. §41.104(b)(2)
`
`Petitioner requests an IPR of the ‘739 Patent be instituted for any/all of the
`
`
`
`following grounds of unpatentability under pre-AIA 35 U.S.C. §103 (obviousness):
`
`Ground 1 – Claim 1 is obvious over U.S. Patent No. 4,932,196 to Schnittjer
`
`(Ex. 1011) (“Schnittjer”) in view of U.S.S.R. Inventor’s Certificate No. SU
`
`835359A1 to Zhavoronkin (Ex. 1012) (“Zhavoronkin”).
`
`
`
`Ground 2 – Claim 1 is obvious over U.S. Patent No. 6,205,757 to Dow (Ex.
`
`1013) (“Dow”) in view of U.S. Patent No. 3,468,107 to van der Lely (Ex. 1014)
`
`(“van der Lely”) and further in view of U.S. Patent No. 5,911,625 to von
`
`Allwörden (Ex. 1020) (“von Allwörden”).
`
`
`
`
`
`Ground 3 – Claim 1 is obvious over European Patent Application
`
`6
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
`
`0789990A1 to Declementi (Ex. 1015) (“Declementi”) in view of U.S. Patent No.
`
`5,031,394 to Honey (Ex. 1017) (“US Honey”), further evidenced by U.S. Patent
`
`No. 6,415,590 to Lohrentz (Ex. 1016) (“Lohrentz”).
`
`
`
`Ground 4 – Claim 1 is obvious over U.S.S.R. Inventor’s Certificate No. SU
`
`835359A1 to Zhavoronkin (Ex. 1012) (“Zhavoronkin”) in view of Canadian Patent
`
`No. 1151431B to Honey et al. (Ex. 1017) (“CA Honey”).
`
`D. How the Challenged Claims Are Construed Pursuant to 37 C.F.R.
`§41.204(b)(3)
`
`A claim in IPR is given the “broadest reasonable construction in light of the
`
`
`
`specification.” 37 C.F.R. §41.200(b); In re Cuozzo Speed Techs., 778 F.3d 1271,
`
`1279 (Fed. Cir. 2015). To the extent that may be necessary under this standard,
`
`Petitioner has set forth the broadest reasonable interpretation (BRI construction) of
`
`certain of the claim terms below.1 Petitioner submits that the remaining terms
`
`recited in the claims need no specific BRI construction because such terms would
`
`be readily understood and should be given their plain and ordinary meaning. Ex.
`
`1009,¶ 38.
`
`1All discussions in the Petition of BRI construction are presumed to be as
`
`understood by a person of ordinary skill in the art at the time of invention. Since
`
`Petitioner has proposed the same construction in this Petition as in the district court
`
`proceeding, Petitioner does not assert that the proposed constructions would differ.
`
`
`
`7
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
`
`
`1.
`
`Conveyor
`
`
`
`Claim 1 of the ‘739 Patent recites first, second and third conveyors, each
`
`conveyor arranged to convey material in a direction transverse to a first direction
`
`of travel. Ex. 1003,10:36-61. The BRI construction of “conveyor” in claim 44 is:
`
`“an apparatus that moves material.” Ex. 1009, ¶ 32.
`
`2.
`
`Continuous line of material pickup
`
`
`
`The limitations of the first, second and third pickup assemblies in claim 44
`
`require that they are aligned side by side to provide an unobstructed continuous
`
`line of material pickup. Ex.1003,10:36-61. The BRI construction of “a continuous
`
`line of material pickup” is: “a pickup face uninterrupted by gaps.” Ex. 1009,¶ 34.
`
`The continuous line of material is understood to refer to the structure of the
`
`windrow merger apparatus, and not referring to the crops being harvested. Id.,¶ 35.
`
`VI. DETAILED EXPLANATION OF PERTINENCE AND MANNER OF
`APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH
`REVIEW IS REQUESTED
`
`The prior art presented in the grounds below includes art that was not before
`
`
`
`the Examiner during prosecution of the ‘739 Patent, as well as art that was before
`
`the Examiner but not fully appreciated during prosecution, and illustrates that the
`
`purportedly novel and non-obvious subject matter of claim 1, a windrow merger
`
`apparatus with “each of the first, second and third belt conveyors being operable in
`
`either direction independently of the other belt conveyors” was in fact taught by
`
`
`
`8
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
`
`the prior art and known to persons of ordinary skill in the art.
`
`A.
`
`Person of Ordinary Skill in the Art
`
`
`
`Petitioner proposes that a person of ordinary skill in the art in the field of the
`
`‘739 Patent at the time of invention would be someone with a Bachelor of Science
`
`in Mechanical Engineering (BSME) or equivalent degree, and have at least three
`
`years experience designing agricultural equipment or associated/equivalent
`
`components, systems or implements. Alternatively, a person of ordinary skill in the
`
`art relevant to the ‘739 Patent may lack the above-referenced engineering bachelor
`
`degree but may have at least five years education or experience or combined
`
`education and experience related to the design, construction, modification and/or
`
`fabrication of agricultural equipment or associated/equivalent components, systems
`
`or implements. Ex.1009,¶ 18.
`
`B.
`
`Applicable Law
`
`
`
`1.
`
`Obviousness (pre-AIA 35 U.S.C. §103)
`
`A patent claim is invalid under pre-AIA 35 U.S.C. Section 103 if the
`
`differences between the claimed invention and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which the subject matter
`
`
`
`9
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
`
`pertains.2 Graham v. John Deere, 383 U.S. 1, 17-18 (1966). The determination of
`
`obviousness is based on the scope and content of the prior art, the differences
`
`between the prior art and the claim, the level of ordinary skill in the art at the
`
`relevant time, and any objective evidence (secondary indicia) of non-obviousness,
`
`to the extent such evidence exists. Id. at 13.
`
`“[R]ejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead, there must be some articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness.” In re
`
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[O]bviousness concerns whether a
`
`skilled artisan not only could have made but would have been motivated to make
`
`the combinations or modifications of prior art to arrive at the claimed invention.”
`
`Belden Inc. v. Berk-Tek LLC, Nos. 2014-1575, -1576. Slip. Op. at 13 (Fed. Cir.
`
`Nov. 5, 2015) (emphasis in original). As the Supreme Court has set forth, this
`
`articulated reasoning can include the application of routine skill by one skilled in
`
`the art when there are a finite number of known solutions.
`
` “When there is a design need or market pressure to solve a problem
`
`2All discussions in the Petition of “one skilled in the art” in the context of
`
`anticipation or obviousness are presumed to be as understood by a person of
`
`ordinary skill in the art to which the subject matter pertains at the time of
`
`invention.
`
`
`
`10
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
`
`
`and there are a finite number of identified, predictable solutions, a
`person of ordinary skill in the art has good reason to pursue the known
`options within his or her technical grasp. If this leads to the
`anticipated success, it is likely the product not of innovation but of
`ordinary skill and common sense.”
`KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-1741 (2007).
`
`C. Ground 1 – Claim 1 is obvious over U.S. Patent No. 4,932,196 to Schnittjer
`in view of U.S.S.R. Inventor’s Certificate No. SU 835359A1 to
`Zhavoronkin
`
`U.S. Patent No. 4,932,196 to Schnittjer (Ex. 1011) was filed Nov. 1, 1988.
`
`
`
`Ex. 1009, ¶ 39. Schnittjer issued on June 12, 1990 and qualifies as prior art to the
`
`‘739 Patent under pre-AIA 35 U.S.C. § 102(b). Id. Schnittjer was not cited by
`
`either the Examiner or the Patent Owner during prosecution of the ‘739 Patent.
`
`
`
`U.S.S.R. Inventor’s Certificate No. SU 835359A1 to Zhavoronkin (Ex.
`
`1012) was filed August 8, 1979. Id.,¶ 40. Zhavoronkin published on June 7, 1981
`
`and qualifies as prior art to the ‘739 Patent under pre-AIA 35 U.S.C. § 102(b). Id.
`
`Zhavoronkin was cited by the Patent Owner in an Information Disclosure
`
`Statement filed November 14, 2011 during prosecution of the ‘739 Patent.
`
`Ex.1004, p.140-149. Zhavoronkin was not relied upon by the Examiner to reject
`
`any claims of the ‘739 Patent.
`
`
`
`As set forth in the chart below, Schnittjer and Zhavoronkin, in combination,
`
`teach or suggest each and every limitation of claim 1 of the ‘739 Patent.
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`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
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`1. A windrow merger
`apparatus configured for
`travel in a first direction,
`comprising:
`
`Schnittjer discloses a “windrow turner.” Ex.
`1011, Title, Figure 1. Schnittjer discloses the
`windrow turner “apparatus includes multiple
`elevating conveyors that first elevate that
`material to mix and aerate it and then deposit the
`material onto secondary conveyors that move the
`material transversely to the windrow before it is
`re-deposited. Id. at Abstract. Schnittjer discloses
`an apparatus “adapted for being towed behind a
`primer move [sic], such as a tractor (not shown).”
`Id. at 2:21-22.
`
`a frame;
`
`a first pickup assembly
`supported by the frame,
`
`the first pickup assembly
`including a first belt
`conveyor arranged to convey
`
`
`
`
`Schnittjer discloses a frame (frame member 16),
`e.g., “As best seen in FIGS. 2 and 3, the main
`frame member 16 is a box or tubular member that
`extends the entire width of the windrow turner.”
`Ex. 1011, 2:29-33.
`Schnittjer discloses a first pickup assembly (side
`elevating conveyor 22), e.g., “Supported by the
`main frame member 16 in the manner described
`hereinafter are three elevating conveyors, a
`center elevating conveyor 20 and side elevating
`conveyors 22, one on each side of the conveyor
`20.” Ex. 1011, 2:34-37. Schnittjer discloses “The
`material in the windrow will be picked up by the
`conveyors 20 and 22 and carried upwardly.” Id.
`at 4:16-18.
`Schnittjer discloses a first conveyor (transverse
`conveyor 52), e.g., “As best seen in FIGS. 1 and
`2, behind each of the side elevating conveyors 22
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
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`material in a direction
`transverse to the first
`direction of travel and driven
`by a first motor;
`
`a second pickup assembly
`supported by the frame,
`
`the second pickup assembly
`including a second belt
`conveyor arranged to convey
`material in a direction
`transverse to the first
`direction of travel and driven
`by a second motor;
`
`a third pickup assembly
`supported by the frame,
`
`is a transverse conveyor 52.” Ex. 1011, 3:36-37.
`Schnittjer discloses a first motor, e.g., “Each of
`the conveyors 52 is …independently driven by
`hydraulic motors (not shown).” Ex. 1011, 3:38-
`41.
`Zhavoronkin discloses a first belt conveyor,
`(conveyor 11), e.g., “Behind the pickup devices 9
`are installed transverse swathing conveyors 11
`and 12, connected with the drive 3.” Ex. 1012, p.
`2, ll. 21-22. Zhavoronkin does not disclose the
`first belt conveyor is driven by a first motor. But
`see, Ex. 1009, ¶ 156-159.
`Schnittjer discloses a second pickup assembly
`(center elevating conveyor 20), e.g., “Supported
`by the main frame member 16 in the manner
`described hereinafter are three elevating
`conveyors, a center elevating conveyor 20 and
`side elevating conveyors 22, one on each side of
`the conveyor 20.” Ex. 1011, 2:34-37. Schnittjer
`discloses “The material in the windrow will be
`picked up by the conveyors 20 and 22 and carried
`upwardly.” Id. at 4:16-18.
`Schnittjer does not disclose a second belt
`conveyor driven by a second motor. But see,
`Ex.1009,¶¶56-60.
`
`Zhavoronkin discloses a second swathing
`conveyor (intermediate conveyor 17), e.g., “an
`additional intermediate short conveyor 17.” Ex.
`1012, Fig. 4; p. 3:3-4. Zhavoronkin does not
`disclose a second belt conveyor driven by a
`second motor. But see, Ex. 1009, ¶ 156-159.
`Schnittjer discloses a third pickup assembly (side
`elevating conveyor 22), e.g., “Supported by the
`main frame member 16 in the manner described
`hereinafter are three elevating conveyors, a
`center elevating conveyor 20 and side elevating
`conveyors 22, one on each side of the conveyor
`20.” Ex. 1011, 2:34-37. Schnittjer discloses “The
`material in the windrow will be picked up by the
`
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
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`the third pickup assembly
`including a third belt
`conveyor arranged to convey
`material in a direction
`transverse to the first
`direction of travel and driven
`by a third motor;
`
`wherein at least two of the
`pickup assemblies are
`foldable between an extended
`position and a retracted
`position,
`
`conveyors 20 and 22 and carried upwardly.” Id.
`at 4:16-18.
`Schnittjer discloses a third conveyor (transverse
`conveyor 52), e.g., “As best seen in FIGS. 1 and
`2, behind each of the side elevating conveyors 22
`is a transverse conveyor 52.” Ex. 1011, 3:36-37.
`Schnittjer discloses a third motor, e.g., “Each of
`the conveyors 52 is …independently driven by
`hydraulic motors (not shown).” Ex. 1011, 3:38-
`41.
`Zhavoronkin discloses a third belt conveyor,
`(conveyor 12), e.g., “Behind the pickup devices 9
`are installed transverse swathing conveyors 11
`and 12, connected with the drive 3.” Ex. 1012, p.
`2, ll. 21-22. Zhavoronkin does not disclose the
`first belt conveyor is driven by a first motor. But
`see, Ex. 1009, ¶ 156-159.
`Schnittjer discloses foldable pickup assemblies,
`e.g., “when the operating rod of lift cylinder 46 is
`retracted the tables 24 and 26 and thus the
`conveyors 20 and 22, can be lowered into
`operating position. However, with the operating
`rod of lift cylinder 46 is extended, the tables 25
`and 26 will be elevated to a transport position as
`illustrated in the dotted lines of FIG. 3.” Ex.
`1011, 3:18-24.
`
`
`Zhavoronkin also discloses in Figure 1 the
`outside pickup assemblies being foldable
`between an extended position and a retracted
`position (dotted configuration).
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
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`
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`Schnittjer discloses “The apparatus of the
`invention consists of three independent vertical
`elevators positioned side by side to provide a
`vertical moving face that is divided into three
`sections , a center section and two side sections.”
`Ex. 1011, 1:50-53, Figure 2.
`
`each of the first, second, and
`third pickup assemblies being
`aligned side by side when
`each of the pickup assemblies
`is positioned in the extended
`position such that the first,
`second, and third pickup
`assemblies provide an
`unobstructed continuous line
`of material pickup;
`
`
`Schnittjer inherently discloses each of the
`conveyors being independently operable in either
`direction. See, Ex. 1009, ¶¶ 57-60.
`
`
`
`each of the first, second and
`third belt conveyors being
`operable in either direction
`independently of the other
`belt conveyors.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
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`Certain of the claim limitations from the above chart are discussed further to
`
`
`
`explain why claim 1 is obvious over Schnittjer in view of Zhavoronkin.
`
`As depicted in annotated Figures 1-2 below, Schnittjer discloses three
`
`pickup assemblies, with the two outer assemblies having conveyors, each of the
`
`first, second, and third pickup assemblies being aligned side by side when each of
`
`the pickup assemblies is positioned in the extended use position, such that the first,
`
`second, and third pickup assemblies provide an unobstructed continuous line of
`
`material pickup.
`
`
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
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`Ex. 1011, Figs. 1 and 2 (annotated).
`
`While Schnittjer does not expressly disclose the conveyors are belt
`
`conveyors, various conveyor types, including belt conveyors, are well known to
`
`persons of ordinary skill in the art, and selection of a type of conveyor is a simple
`
`matter of design choice and substitution of known alternatives. Ex. 1009, ¶ 54.
`
`Further, Schnittjer expressly acknowledges the interchangeability of conveyor
`
`types. Ex. 1011, 3:38-41, 4:62-63; Ex. 1009, ¶ 54.
`
`
`
`Schnittjer does not disclose “the second pickup assembly including a second
`
`belt conveyor driven by a second motor.” Ex. 1009, ¶55. Zhavoronkin teaches a
`
`merger device having four pickup assemblies 9 and two swath conveyors 11,12.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
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`Ex. 1012, Figure 3. Zhavoronkin also teaches modifying the merger device to
`
`include three conveyors, such that the merger device has a left pickup assembly
`
`including a conveyor, a right pickup assembly including a conveyor, and a middle
`
`conveyor positioned between the left and right pickup assemblies. Id.
`
`Ex. 1012, Figure 4 (annotated). Schnittjer discloses that the first and third
`
`conveyors are each driven by individual motors. Ex.1009, ¶56; Ex.1011,3:38-41.
`
`Thus, when the middle conveyor of Zhavoronkin is added to Schnitter, it would be
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,166,739
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`known to one of ordinary skill in the art for that conveyor to have its own
`
`individual motor just like the other two conveyers in Schnitter. Ex. 1009, ¶¶ 58-64.
`
`
`
`Schnittjer does not expressly disclose each of the first, second and third belt
`
`conveyors being operable in either direction independently of the other belt
`
`conveyors. However, providing conveyors operable
`
`in either direction
`
`independently of the other conveyors is well known to persons of ordinary skill in
`
`the art. Ex.1009, ¶¶57,60,65-66.
`
`
`
`The motivation for modifying Schnittjer to include independently driven belt
`
`conveyors which are operable in either direction independently of the other
`
`conveyors can be found in a desire to increase the operating capabilities of the
`
`device such as to allow the device’s operator greater capabilities in quickly
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`navigating obstructions and/or irregularities encountered in the farm field. Ex.
`
`1009, ¶¶ 57-59.
`
`
`
`One of ordinary skill in the art would have been capable of, and motivated
`
`to, modify the second pickup assembly of Schnittjer to include a transverse belt
`
`conveyor as taught by Zhavoronkin and driven by an independent motor, and
`
`configure the first, second, and third belt conveyors being operable in either
`
`direction independently of the other belt conveyors to provide the device with
`
`additional options for discharging the material being picked up and moved as
`
`taught by Zhavoronkin, to arrive at claim