Ex parte Bargele et al.

Board of Patent Appeals and Interferences

Jun 29, 1998

08293322 (B.P.A.I. Jun. 29, 1998)

Application for patent filed August 22, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NORBERT BARGELE,
RUDIGER BUDDRUSS AND THORSTEN LORENZEN
____________
Appeal No. 97-3752
Application No. 08/293,3221
____________
ON BRIEF
____________
Before STONER, Chief Administrative Patent Judge, NASE and
CRAWFORD, Administrative Patent Judges.
NASE, Administrative Patent Judge.
Appeal No. 97-3752
Application No. 08/293,322
Independent claims 3 and 4 have been amended subsequent2
to the final rejection.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 18, which are all of the claims
pending in this application.2
We REVERSE.
Appeal No. 97-3752 Page 3
Application No. 08/293,322
BACKGROUND
The appellants' invention relates to a method of
processing fish fillets and apparatus for carrying out the
method. An understanding of the invention can be derived from
a reading of exemplary claims 1, 3 and 4, which appear in the
appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Townsend 2,715,427 Aug. 16,
1955
Braeger 5,288,264 Feb. 22,
1994
Claims 1 through 10 stand rejected under 35 U.S.C. § 103
as being unpatentable over Townsend.
Claims 11 through 18 stand rejected under 35 U.S.C. § 103
as being unpatentable over Townsend in view of Braeger.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
Appeal No. 97-3752 Page 4
Application No. 08/293,322
rejections, we make reference to the final rejection (Paper
No. 8, mailed June 23, 1995) and the examiner's answer (Paper
No. 16, mailed August 1, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
brief (Paper No. 15, filed April 23, 1996) and reply brief
(Paper No. 17, filed October 1, 1996) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1 through 18
under
35 U.S.C. § 103. Our reasoning for this determination
follows.
Appeal No. 97-3752 Page 5
Application No. 08/293,322
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
Appeal No. 97-3752 Page 6
Application No. 08/293,322
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
Townsend discloses an apparatus for removing the fat and
the skin from a ham. As shown in Figures 1 and 2, the
apparatus includes a feed roll 14 provided with grooves 15 and
teeth 16, a pressure shoe 18, a skinning blade 20 and a
fatting attachment having a fatting blade 21. As shown in
Figure 1, the fatting blade 21 is slanted from one side of the
apparatus to the other side of the apparatus. In addition, as
shown in dotted lines in Figure 2, it is desirable to have the
fatting blade 21 nearly contact the skinning blade 20.
Townsend teaches (column 2, lines 5-11) that (1) in addition
to skinning hams, it is quite often desirable to "fat" them
(i.e., remove fat from the ham), (2) the fatting of ham is
usually performed either is some other machine or by hand, and
(3) the fatting attachment permits fatting the ham
simultaneously with the skinning operation.
Appeal No. 97-3752 Page 7
Application No. 08/293,322
Claim 1
Independent claim 1 recites a method for processing fish
fillets including the steps of (1) separating a superficial
layer from the fillet and (2) separating skin from the
superficial layer, wherein the skin is removed from the
superficial layer at a time no later than concurrently with
the separation of the superficial layer from the fillet.
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Townsend and claim 1,
it is our opinion that the differences are the limitations
that
(1) a fish fillet is being processed, and (2) the skin is
removed from the superficial layer at a time no later than
concurrently with the separation of the superficial layer from
the fillet.
Appeal No. 97-3752 Page 8
Application No. 08/293,322
With regard to these differences, the examiner determined
(answer, pp. 3-4) that (1) processing of fish fillets is old
and well known in the butchering art and consequently, the use
of Townsend's apparatus to process fish instead of ham would
have been obvious, and (2) the alignment of Townsend's blades
(20, 21) cause the "initial" cuts not to be concurrent,
nevertheless, the claimed time sequence is not precluded by
Townsend's apparatus.
The appellants argue (brief, pp. 5-11) that (1)
processing fish fillets is characteristically different from
processing ham, (2) Townsend does not teach or suggest
separating the skin from the superficial layer (the fat of the
ham) at a time no later than concurrently with the separation
of the superficial layer from the ham, and (3) there is no
suggestion in the applied prior art to modify the position of
Townsend's fatting blade 21 with respect to the fatting blade
20 to provide the claimed relationship.
In our view, the examiner has not set forth a sufficient
factual basis to establish obviousness with respect to claim
Appeal No. 97-3752 Page 9
Application No. 08/293,322
1. First, the fact that processing of fish fillets is old and
well known in the butchering art does not, in our opinion,
provide any motivation to one skilled in the art to have used
Townsend's apparatus to process fish fillets instead of ham.
Second, the examiner's statement that the claimed time
sequence is not precluded by Townsend's apparatus provides no
factual basis as to why one skilled in the art would have made
such a modification. Thus, it appears to us that the examiner
has resorted to speculation, unfounded assumption and
hindsight reconstruction to supply deficiencies in the factual
basis for the rejection.
For the reasons set forth above, the decision of the
examiner to reject claim 1 under 35 U.S.C. § 103 is reversed.
Claims 3 and 4
Independent claims 3 and 4 recite an apparatus
comprising, inter alia, a conveying roller means, a pressing
means, a first knife means and a second knife means. The
Appeal No. 97-3752 Page 10
Application No. 08/293,322
"Driven" as used in the appellants' specification means3
that the second knife means is moving (e.g., oscillating)
while cutting. "Fixed" as used in the appellants'
specification means that the first knife means is not moving
while cutting.
first knife means is arranged to be "fixed" and the second
knife means is arranged to be "driven." 3
Based on our analysis and review of Townsend and claims 3
and 4, it is our opinion that one difference is the limitation
that the second knife means is arranged to be "driven."
With regard to this difference, the examiner determined
(answer, pp. 4-5) that the limitation arranged to be "driven"
is (1) inferentially recited in the claims and consequently,
this limitation is not given patentable consideration, and (2)
obvious since a driven skinner blade is known.
The appellants argue (brief, pp. 11-12 and reply brief,
pp. 3-4) that the claimed second knife means being arranged to
be "driven" is (1) not disclosed in Townsend, and (2) not
suggested by a driven skinner blade.
Appeal No. 97-3752 Page 11
Application No. 08/293,322
Once again, it is our view that the examiner has not set
forth a sufficient factual basis to establish obviousness with
respect to claims 3 and 4. First, all words in a claim must
be considered in judging the patentability of that claim
against the prior art. See In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970). Thus, the limitation that the
second knife means is arranged to be "driven" must be given
patentable consideration. Second, the examiner's
determination that this limitation (i.e., the second knife
means is arranged to be "driven") was obvious since a driven
skinner blade is known is without factual basis as to why one
skilled in the art would have modified Townsend's fattening
blade 21 to be driven. If anything, a teaching of a driven
skinner blade would have suggested driving Townsend's skinning
blade 20, not the fatting blade 21. Thus, it appears to us
that the examiner has resorted to speculation, unfounded
assumption and hindsight reconstruction to supply deficiencies
in the factual basis for the rejection.
Appeal No. 97-3752 Page 12
Application No. 08/293,322
We have also reviewed Braeger but find nothing therein4
which makes up for the deficiencies of Townsend discussed
above.
For the reasons set forth above, the decision of the
examiner to reject claims 3 and 4 under 35 U.S.C. § 103 is
reversed.
Claims 2 and 5 through 18
The decision of the examiner to reject dependent claims 2
and 5 through 18 under 35 U.S.C. § 103 is reversed for the
reasons set forth above with regard to their respective parent
independent claim.4
Appeal No. 97-3752 Page 13
Application No. 08/293,322
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 18 under 35 U.S.C. § 103 is reversed.
REVERSED
BRUCE H. STONER, JR., Chief )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-3752 Page 14
Application No. 08/293,322
FAY SHARPE BEALL FAGAN MINNICH & MCKEE
104 EAST HUME AVENUE
ALEXANDRIA, VA 22301
APPEAL NO. 97-3752 - JUDGE NASE
APPLICATION NO. 08/293,322
APJ NASE
CAPJ STONER
APJ CRAWFORD
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 24 Jun 98
FINAL TYPED: