Ex Parte Armington et al

Board of Patent Appeals and Interferences

Oct 13, 2009

11038693 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN E. ARMINGTON, RICHARD O. RATZEL,
PAUL J. GUTH, and MACDONALD C. BOOZE
____________________

Appeal 2009-001751
Application 11/038,693
Technology Center 3700
____________________

Decided: October 13, 2009
____________________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Steven E. Armington et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 194-200 and 228-234. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed to a packaging system
including a packaging material consumption monitoring system, wherein the
materials consumed in the packaging of parts are monitored (Spec. 14:23-
Spec. 15:4).
Claim 194, reproduced below, is representative of the subject matter
on appeal.
194. A packaging system, comprising:
a packaging material dispenser for
dispensing packaging material for at least one
article to be packaged in a container; and
a packaging system controller in
communication with the packaging material
dispenser that is operable to monitor a quantity of
packaging material consumed, and to generate a
report of the packaging material consumed.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Chow US 4,922,687 May 8, 1990
Haze US 5,479,756 Jan. 2, 1996
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The following rejections by the Examiner are before us for review:
1. Claims 194-198 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Haze.
2. Claims 199-200 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haze.
3. Claims 194-200 and 228-234 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Haze in view of Chow.

ISSUES
The issues before us are: (1) has the Examiner erred in finding that
Haze describes a packaging system controller that is operable to monitor a
quantity of packaging material consumed and to generate a report of the
packaging material consumed as called for in claim 194 (App. Br. 8); (2) has
the Examiner erred in concluding that it would have been obvious to
combine Haze’s packaging apparatus with Chow’s loose fill packaging
system to achieve a packaging system controller that is operable to monitor a
quantity of packaging material consumed (App. Br. 11).

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
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The Examiner’s Findings
Rejection under 35 U.S.C. § 102(b)
1. The Examiner finds that Haze describes all of the limitations called
for in claim 194 (Ans. 4).
2. The Examiner finds that Haze describes a packaging system
comprising a packaging material dispenser, a packing apparatus 7,
and a packaging system controller in communication with the
packaging material dispenser via control means 10, 15 that is
operable to monitor a quantity of packaging material dispensed
(col. 7, ll. 45-49, and memory means 16), and to generate a report
(col. 7, ll. 49-52) (Ans. 4, 6).
3. The Examiner finds that (1) Haze’s bag lengths are the equivalent
of the limitation “monitor a quantity” as called for in claim 194
(Ans. 4); (2) Haze’s memory means 16 is used to control the length
of the packaging material (col. 7, ll. 45-48) and, therefore, is the
equivalent of the claimed ”monitor a quantity of packaging
material” (Ans. 11-12); and (3) “controlling the length of the
packaging material as a condition of operation is the same as
monitoring the operation.” (Ans. 12).
Rejection under 35 U.S.C. § 103(a): Haze in view of Chow
4. The Examiner finds that Haze describes all of the limitations called
for in claim 194, except that Haze does not clearly describe the
means for monitoring a quantity of packaging material dispensed
as called for in claim 194 (Ans. 6).
5. The Examiner finds that Chow describes a similar packaging
system including means for monitoring a quantity of packaging
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material dispensed via valve 32 of gate 46 [sic, 38] (col. 4, ll. 12-
14, 22-24 and 40-42) (Ans. 6).
6. The Examiner concludes that it would have been obvious to
combine the teachings of Haze and Chow by substituting in Haze
for packing apparatus 7 the dunnage packaging apparatus as taught
by Chow in column 1, lines 60-65 in order to control the use of the
packaging material and to use the exact required packaging
material (Ans. 6-7).
The Board’s Findings
7. Haze describes packaging food items in a film sheet pulled off a
roll (col. 1, ll. 5-11; col. 6, ll. 40-54).
8. Haze further describes “. . . data can be retrieved from the master
file 33 . . . through their control means 10, 15, . . . or the master
control means 37” (col. 13, ll. 23-34).
9. Haze further describes “[a] system . . . may further comprise a
supply detector means for detecting the cumulative sum of amount
(weight or number) of materials . . . per unit time to a specified
apparatus . . . , and a discharge detector means for detecting the
cumulative sum of amount (weight or number) of completed
products discharged . . . ” (col. 4, ll. 1-9).
10. Haze further describes that “[t]he master file 33 is provided with a
first input-output quantity memory means 48 for storing the
cumulative supply and discharge quantities thus calculated . . . ”
(col. 14, ll. 54-57).
11. Haze still further describes a “. . . means for storing the
aforementioned cumulative sums . . . ” (col. 4, ll. 9-15).
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12. Haze still further describes that “[s]ince data on the yield are stored
in the first input-output quantity memory means 48, the history of
the yield can be made available to the user.” (col. 15, ll. 25-33).
13. Chow describes using loose fill to protect a packaged item from
damage (col. 1, ll. 17-19).
14. Chow describes a computer 15 controlling all of the operations of
the filling machine (col. 4, ll. 22-24).
15. The ordinary meaning of the word “operable” includes “being such
that use or operation is possible.” THE AMERICAN HERITAGE®
DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000).
16. The ordinary meaning of the word “monitor” includes “(a) to keep
track of systematically with a view to collecting information; or (b)
to keep close watch over, supervise.” THE AMERICAN HERITAGE®
DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000).
17. The ordinary meaning of the word “generate” includes “to bring
into being.” THE AMERICAN HERITAGE® DICTIONARY OF THE
ENGLISH LANGUAGE (4th ed. 2000).
18. The ordinary meaning of the word “report” includes “an account
presented usually in detail.” THE AMERICAN HERITAGE®
DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000).
19. Additional findings as necessary appear in the Analysis portion of
this opinion.

PRINCIPLES OF LAW
Appellants’ Burden
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
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(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). See also Ex parte Yamaguchi, 88 USPQ2d 1606, 1614
(BPAI 2008) [burden on appeal] (on appeal, applicant must show examiner
erred); Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan,
83 USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d
1509, 1519 (BPAI 2007).

Anticipation
“Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). It is not necessary that the
reference teach what the subject application teaches, but only that the claim
read on something disclosed in the reference, i.e., that all of the limitations
in the claim be found in or fully met by the reference. Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented 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 said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
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factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”).
In KSR, the Supreme Court stated that “when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 416 (citing United
States v. Adams, 383 U.S. 39, 50-51 (1966)).
In KSR, the Supreme Court stated that:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.

KSR, 550 U.S. at 418.

The Court noted that “[t]o facilitate review, this analysis should be made
explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[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
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obviousness.”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
In KSR, the Supreme Court stated that:
Helpful insights, however, need not become rigid
and mandatory formulas; and when it is so applied,
the TSM test is incompatible with our precedents.
. . . There is no necessary inconsistency between
the idea underlying the TSM test and the Graham
analysis. But when a court transforms the general
principle into a rigid rule that limits the
obviousness inquiry, as the Court of Appeals did
here, it errs.
See KSR, 550 U.S. at 419

Material Or Article Worked Upon Does Not Limit Apparatus Claims
“[I]inclusion of the material or article worked upon by a structure
being claimed does not impart patentability to the claims.” In re Otto, 312
F.2d 937, 940 (CCPA 1963).

ANALYSIS
Appellants argue claims 194-198 rejected under 35 U.S.C. § 102(b) as
a group (App. Br. 8). As such, we select claim 194 as representative of the
group, and claims 195-198 rejected under 35 U.S.C. § 102(b) will stand or
fall with claim 194. Appellants further argue claims 194-200 and 228-234
rejected under 35 U.S.C. § 103(a) as a group (App. Br. 11). As such, we
select claim 194 as representative of the group, and claims 195-200 and 228-
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234 rejected under 35 U.S.C. § 103(a) will stand or fall with claim 194. 37
C.F.R. § 41.37(c)(1)(vii) (2007). In contesting the rejection of claims 199-
200 under 35 U.S.C. § 103(a) as being unpatentable over Haze, Appellants
provide no further arguments regarding these claims than those presented for
claim 194 (App. Br. 8).

Rejection of claims 194-198 under 35 U.S.C. § 102(b) as being anticipated
by Haze; and claims 199-200 under 35 U.S.C. § 103(a) as being
unpatentable over Haze
Appellants contend that nothing in Haze teaches or suggests
monitoring the bag length actually produced (App. Br. 10). Appellants
further contend that Haze does not generate a report of the packaging
material consumed (App. Br. 10).
The Examiner found that Haze describes all of the limitations called
for in claim 194 (Facts 1-3).

NEW GROUND OF REJECTION1
We see no error in the Examiner’s finding that Haze describes all of
the limitations called for in claim 194 (Facts 1-3).
Haze describes “data can be retrieved from the master file 33 . . .
through their control means 10, 15, . . . or the master control means 37”
(Fact 8). Haze further describes “[a] system . . . may further comprise a
supply detector means for detecting the cumulative sum of amount (weight

1 The Board’s rationale differs from the Examiner’s rationale in applying
Haze against claims 194-198 under 35 U.S.C. § 102(b) and claims 199-200
under 35 U.S.C. § 103(a). Therefore, we have denoted the new rationale as
a new ground of rejection to provide Appellants with an opportunity to
respond thereto.

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or number) of materials . . . per unit time to a specified apparatus . . . , and a
discharge detector means for detecting the cumulative sum of amount
(weight or number) of completed products discharged . . . ” (Fact 9). Haze
further describes that “[t]he master file 33 is provided with a first input-
output quantity memory means 48 for storing the cumulative supply and
discharge quantities thus calculated . . . ” (Fact 10). Haze still further
describes a “means for storing the aforementioned cumulative sums . . . ”
(Fact 11). Haze still further describes that “[s]ince data on the yield are
stored in the first input-output quantity memory means 48, the history of the
yield can be made available to the user.” (Fact 12).
The ordinary meaning of the word “operable” includes “being such
that use or operation is possible” (Fact 14) and the ordinary meaning of the
word “monitor” includes to keep track of systematically with a view to
collecting information” (Fact 15).
We find that Haze’s control means 10, 15, 37 is a controller.
Therefore, in order for Haze’s controller 10, 15, 37 to be operable to monitor
a quantity of packaging material consumed, it must be possible for the
controller to keep track of a quantity of packaging material consumed with a
view to collecting information regarding the quantity of packaging material
consumed.
We find that Haze’s supply detector means detects the cumulative
sum of amount (weight or number) of materials supplied (e.g., bag and
product) per unit time to a specified apparatus (Fact 9). We find that Haze
collects information regarding the amount of materials supplied (Facts 10-
12). We find that the materials supplied are the equivalent of the materials
consumed. Therefore, we find that Haze’s controller 10, 15, 37 is operable
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to monitor a quantity of packaging material2 consumed as called for in claim
194.
The ordinary meaning of “generate” includes “to bring into being”
(Fact 16) and the ordinary meaning of the word “report” includes “an
account presented usually in detail” (Fact 17).
Therefore, in order for Haze’s controller 10, 15, 37 to be operable to
generate a report it must be possible for the controller to create an account.
We find that in Haze, since the data on the yield of the materials
supplied is stored in memory means 48 and the history of the yield of the
materials supplied can be made available to the user, a report has been
generated of the history of the yield of the materials supplied. For the
reasons previously set forth, we find that the materials supplied are the
equivalent of the material consumed. Therefore, we find that Haze’s
controller 10, 15, 37 is operable to generate a report of the packaging
material consumed as called for in claim 194.
Therefore, we conclude that the Appellants have not demonstrated
that the Examiner erred in rejecting claim 194 over Haze. Appellants have
likewise not demonstrated error in the Examiner’s rejection of claims 195-
198, which fall with claim 194.
As Appellants have provided no further contentions regarding claims
199-200 than those presented for claim 194 (App. Br. 8), we find that
Appellants’ contentions are not persuasive for the reasons set forth in our
discussion of claim 194 as being anticipated by Haze.

2 Packaging materials, per se, are not positively called for in claim 194. All
that is claimed is a dispenser and a controller for monitoring the packaging
material consumed.
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Therefore, we conclude that Appellants have not demonstrated error
in the Examiner’s rejection of claims 199-200, which depend from claim
194.

Rejection of claims 194-200 and 228-234 under 35 U.S.C. § 103(a) as being
unpatentable over Haze in view of Chow
For the reasons set forth above in our discussion of the anticipation
rejection, we find that Haze describes a controller operable to monitor a
quantity of packaging material and to generate a report of the packaging
material consumed. For that reason alone, Appellants’ arguments with
respect to the combination of Haze and Chow fail to demonstrate error in the
Examiner’s conclusion that Haze and Chow render obvious the subject
matter of claim 194. A disclosure that anticipates under 35 U.S.C. § 102
also renders the claim unpatentable under 35 U.S.C. § 103, for “anticipation
is the epitome of obviousness.” Jones v. Hardy, 727 F.2d 1524, 1529 (Fed.
Cir. 1984). See also In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
Moreover, for the reasons set forth below, Appellants also have not
demonstrated error in the Examiner’s combination of Haze and Chow.
Appellants contend that it is unclear why a person would substitute
and/or modify the packaging system of Haze with the packaging system of
Chow (App. Br. 12).
To the extent that Appellants are arguing for a rigid application of the
teaching-suggestion-motivation test, this argument is not persuasive in light
of the Court’s decision in KSR, 550 U.S. at 419 (holding that it is error to
apply the teaching-suggestion-motivation test as a rigid formula to limit the
obviousness inquiry).
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Appellants further contend that (1) Chow does not monitor the amount
of loose fill that flows into a container (App. Br. 11), (2) Chow is only
concerned with filling a box to a prescribed level and does not monitor the
quantity of material dispensed (App. Br. 13), and (3) it defies common sense
to provide loose-fill dunnage in place of plastic bags to wrap candy (App.
Br. 12).
The Examiner found that Haze describes all of the limitations called
for in claim 194, except that Haze does not clearly describe the means for
monitoring a quantity of packaging material dispensed as called for in claim
194 (Fact 4). The Examiner further found that Chow describes a similar
packaging system including means for monitoring a quantity of packaging
material dispensed via valve 32 of the gate 38 (Fact 5). The Examiner
concluded that it would have been obvious to combine the teachings of Haze
and Chow by substituting in Haze for packing apparatus 7 the dunnage
packaging apparatus as taught by Chow in column 1, lines 60-65 in order to
control the use of the packaging material and to use the exact required
packaging material (Fact 6).
The ordinary meaning of the word “monitor” includes “supervise”
(Fact 15).
Chow describes (1) using loose fill to protect a packaged item from
damage (Fact 13), and (2) a computer 15 controlling all of the operations of
the filling machine (Fact 14). Therefore, we find that Chow’s computer 15
is a controller that supervises the operations of the filling machine, including
the dispensing of the loose fill. Thus, we find that Chow describes a
controller that monitors a quantity of packaging material (loose fill)
dispensed as called for in claim 194.
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We see no error in the Examiner’s analysis (Fact 6) and conclude that
it would have been obvious to a person having ordinary skill in the art to
combine the teachings of Haze and Chow by substituting in Haze for
packing apparatus 7 the dunnage packaging apparatus controlled by a
computer (controller) as taught by Chow in column 4, ll. 22-24 in order to
monitor the packaging material dispensed.
The Examiner’s legal conclusion of obviousness is supported by
rational underpinning. See KSR, 550 U.S. at 418. We find that the
substitution of one packaging apparatus for another could have been
reasonably predicted to yield the result of monitoring the packaging material
dispensed. See id. at 416 (In KSR, the Supreme Court stated that “when a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.”).
Therefore, we conclude that Appellants have not demonstrated that
the Examiner erred in rejecting claim 194 over Haze in view of Chow.
Appellants have likewise not demonstrated error in the Examiner’s rejection
of claims 195-200 and 228-234, which fall with claim 194.

CONCLUSIONS OF LAW
Appellants have not established that the Examiner erred in finding that
Haze describes a packaging system controller that is operable to monitor a
quantity of packaging material consumed, and to generate a report of the
packaging material consumed as called for in claim 194, in view of this
Board’s new rationale. Appellants have not established that the Examiner
erred in concluding that it would have been obvious to combine Haze’s
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packaging apparatus with Chow’s loose fill packaging system to describe a
packaging system controller that is operable to monitor a quantity of
packaging material consumed.

DECISION
The decision of the Examiner to reject claims 194-200 and 228-234 is
affirmed.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides "[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the Examiner,
in which event the proceeding will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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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) (2007).

AFFIRMED; 37 C.F.R. § 41.50(b)

Klh

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