Ex Parte Bosma

Board of Patent Appeals and Interferences

Mar 19, 2012

10511582 (B.P.A.I. Mar. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte EPKE BOSMA
__________

Appeal 2010-004761
Application 10/511,582
Technology Center 3600
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for separating milk. The Examiner rejected the claims as failing to comply
with the enablement requirement, as indefinite and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

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Statement of the Case
Background
The Specification teaches an “apparatus and method that
automatically detects milk with too high cell count and divert that milk
either to a drain or a specific container” (Spec. 2, ll. 14-16).
The Claims
Claims 1-3 and 5-7 are on appeal. Claim 1 is representative and reads
as follows:
1. A method for separating a first quantity of milk
drawn from a milking animal in an automatic milking
machine and a second quantity of milk drawn from
the milking animal in said milking machine,
comprising:
- milking an animal using said automatic
milking machine,
- measuring a first indicator of mastitis during
said milking, and only if said first indicator of mastitis
indicates mastitis, a second indicator of mastitis is
performed, said second indicator of mastitis not based
on a milk quality measured by the first indicator, said
second indicator of mastitis includes:
- analyzing at least a part of said first quantity
of milk using an online cell counter for counting the
number of cells in said first quantity of milk, and
- operating a valve in dependence on the
counted number of cells so that if the counted number
of cells is below a first threshold, said first quantity of
milk is collected in a first container, and if said
counted number of cells is equal to or above said first
threshold, said first quantity of milk is directed to a
drain or a second container.

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The issues
A. The Examiner rejected claims 1-3 and 5-7 under 35 U.S.C. 112, first
paragraph, as failing to comply with the enablement requirement (Ans. 3-4).
B. The Examiner rejected claims 1-3 and 5-7 under 35 U.S.C. 112,
second paragraph, as indefinite (Ans. 4).
C. The Examiner rejected claims 1-3, 5, and 7 under 35 U.S.C. § 103(a)
over van den Berg
1
and Birk
2
(Ans. 5-7).
D. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) over van den
Berg, Birk, and Nilsson
3
(Ans. 7-8).
A. 35 U.S.C. § 112, first paragraph, enablement
The Examiner finds that the “added limitation of „said second
indicator of mastitis not based on a milk quality measured by the first
indicator‟ is not explained or described well enough in the specification for
one to understand” (Ans. 3).
Appellant contends that
the specification as filed at page 7, line 27 through page 8,
line 22, teach how to measure two different aspects of the
same milk if a first aspect indicates mastitis. The example
method of measuring milk conductivity and then measuring
cell count if the conductivity is mastitis-positive disclosed
therein does this. A person skilled in animal husbandry
would be able to discern any required procedures for
executing this step that are not explicitly mentioned in the
specification.

(App. Br. 13.)

1
Karel van den Berg, US 5,704,311, issued Jan. 6, 1998.
2
Birk, SE 200000179A, published Nov. 20, 2000.
3
Jan Ove Nilsson, US 2004/0168643 A1, published Sep. 2, 2004.
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We find that Appellant has the better position. The Examiner has
provided no evidence that the ordinary artisan would not have understood
that the second indicator simply represented a different measure of milk
quality than the first indicator. The Examiner also provided no evidence that
undue experimentation would have been required to make or use the claimed
invention. The Examiner has not met the burden to demonstrate a lack of
enablement. See In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993)
(“When rejecting a claim under the enablement requirement of section 112,
the PTO bears an initial burden of setting forth a reasonable explanation as
to why it believes that the scope of protection provided by that claim is not
adequately enabled by the description of the invention provided in the
specification of the application.”)
B. 35 U.S.C. § 112, second paragraph
The Examiner finds that
added limitation of „said second indicator of mastitis not
based on a milk quality measured by the first indicator‟ is
confusing and unclear because if one reading the lines
preceding this limitation in claim 1, it appears that the
second indicator does based on the quality measured from
the first indicator, and quality indicates mastitis or not.

(Ans. 4.)
Appellant contends that the “primary construction of the claim is
consistent with the specification, which teaches independent quality
measurements of conductivity and cell counts, for the first and second
indicators respectively” (App. Br. 9).
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We find that Appellant has the better position. “The test for
definiteness is whether one skilled in the art would understand the bounds of
the claim when read in light of the specification.” Miles Laboratories, Inc. v.
Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). While claim 1 may not
use optimal phrasing, we agree with Appellant that the ordinary artisan
would understand that the “second indicator of mastitis” clause simply refers
to the use of an indicator different than the first indicator, and claim 1
requires that the second indicator is an on-line cell counter. There is no
substantive room for ambiguity in this claim.
C. 35 U.S.C. § 103(a) over van den Berg and Birk
The Examiner finds that
van den Berg teaches a method for separating a first quantity
of milk drawn from a milking animal in an automatic
milking machine and a second quantity of milk drawn from
the milking animal in said milking machine, comprising:
milking an animal using said automatic milking machine 18,
measuring a first indicator of mastitis during said milking . .
. first indicator indicates mastitis by decreasing below
threshold value D1 calculated from mastitis sensor M and
flow sensor S), and only if said first indicator of mastitis
indicating indicates mastitis (by falling below threshold
value D1), a second indicator of mastitis is performed . . .
second indicator of mastitis is the threshold value D2, which
depends on the extent of the mastitis result of D1, D2 also
based on calculation of mastitis sensor M and flow sensor
S), said second indicator of mastitis not based on a milk
quality measured by the first indictor . . .

(Ans. 5). The Examiner finds that “Birk teaches similar method as that of
van den Berg in which Birk employs an on\- line somatic cell sensor/counter
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25 together with a computer 35 to obtain cell readings to detect mastitis”
(Ans. 6).
The Examiner finds it obvious “to substitute the sensors as employed
in van den Berg with an on-line cell counter as taught by Birk, since a
simple substitution of one known element for another would obtain
predictable results” (id.).
Appellant “submit[s] that Birk does not teach or suggest a „second
indicator of mastitis includ[ing] analyzing at least a part of said first quantity
of milk using an on-line cell counter for counting the number of cells.‟
Rather, Birk very briefly suggests only a measuring element that may be
flow sensor or a floating body whose buoyancy indicates the quality of
milk.” (App. Br. 16.) Appellant contends that “[w]here Birk describes cell
counts as an indicator of mastitis, it does not disclose any apparatuses
capable of doing so, such as an on-line cell counter” (id.).
Appellant “submit[s] that van den Berg fails to teach or suggest a
second indication of mastitis, let alone one based on an independent milk
quality. Instead, van den Berg teaches only a conductivity test for
determining mastitis” (id. at 17).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that the combination of van den Berg and
Birk renders the claims obvious?
Findings of Fact
1. van den Berg teaches “a method of automatically milking
animals, such as cows, in which the animals are milked by one or more
milking robots, and in which milk obtained from an udder quarter is
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discharged to a collector element, such as a milk claw or a milk jar” (van
den Berg, col. 1, ll. 5-10).
2. van den Berg teaches “to prevent mastitis and other illnesses to
the extent possible. To that end, if in an early stage an illness has been
detected in an [u]dder quarter and the milk flow has fallen to below a
defined threshold value (D1), this udder quarter is automatically stripped”
(van den Berg, col. 1, ll. 16-20).
3. van den Berg teaches that
when mastitis has been detected in an udder quarter and
after the milk flow originating therefrom decreases to below
said threshold value (D1), the udder quarter is stripped
further until the milk flow from this udder quarter falls
below a second threshold value (D2), lower than the first-
mentioned threshold value (D1). In this method. the second
threshold value (D2) may depend on the extent to which
mastitis has been detected.

(van den Berg, col. 1, ll. 48-56.)
4. van den Berg teaches that “a mastitis sensor may be
incorporated in each of the milk lines, which causes a signal M to be derived
in a computer, indicating that mastitis has occurred in a given udder quarter”
(van den Berg, col. 2, ll. 10-13).
5. van den Berg teaches that
a milk flow sensor is incorporated in each of the milk lines,
each milk flow sensor supplying to the computer a signal S,
indicating the quantity of the milk flow, the relevant milk
line under a teat cup being closed as soon as the computer
has determined that the milk flow S has decreased to less
than the threshold value D

(van den Berg, col. 2, ll. 17-23).
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6. van den Berg teaches a “mastitis detection which has proved to
be reliable in actual practice, is obtained when milk conductivity sensors are
used as mastitis sensors” (van den Berg, col. 2, ll. 36-38).
7. Birk teaches “the milking machine has four teat cups . . . to be
connected to the animal to be milked. . . . Each of said teat cups . . . is
connected to separate milk conduits . . . . The milking robot is controlled
from a computer 35” (Birk 3, ll. 10-25).
8. Birk teaches that “[e]ach milk conduit preferably compris[es] a
flow sensor for measuring the quantity and or the quality of milk from the
teat. Alternatively said receivers may compris[e] measuring elements 25 for
measuring the quantity and the quality of the milk in said receiver” (Birk 4,
ll. 2-6).
9. Birk teaches that
conductivity, temperature, light absorption, blood content,
somatic cell count etc. of the milk are measures of the health
of the udder of a cow for example an indication of mastitis.
The milk originating from an inflamed quarter has a higher
conductivity, higher temperature, higher light absorption,
higher blood content and higher somatic cell count than that
from a healthy one.

(Birk 4, ll. 8-14.)
10. Birk teaches that depending on quality
milk in each intermediate receiver . . . will be transferred to
a storage container A, B, C having such quality parameters. .
. . In storage container A can for example, milk of a first
quality be stored. . . . In storage container B can for example
milk of a second quality be stored. Said milk is of good
quality, but not as good as the first quality

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(Birk 4, ll. 15-32).
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992).
“Rejections 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
We can agree with the Examiner that van den Berg teaches measuring
an indicator of mastitis where, if mastitis is detected, a second action is
performed (FF 1-5). However, van den Berg does not teach that the second
action taken is to analyze the milk with a second indicator of mastitis, but
rather that “the udder quarter is stripped further until the milk flow from this
udder quarter falls below a second threshold value (D2), lower than the first-
mentioned threshold value (D1)” (van den Berg, col. 1, ll. 51-54; FF 3). Van
den Berg alternately states that “if in an early stage an illness has been
detected in an udder quarter and the milk flow has fallen to below a defined
threshold value (D1), this udder quarter is automatically stripped” (van den
Berg, col. 1, ll. 16-20; FF 2).
Using either formulation, van den Berg strips (fully milks to remove
all available milk) the udder quarter if mastitis is detected (FF 2-3). Van den
Berg does not teach using a second sensor to detect mastitis.
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Birk, while teaching a number of different mastitis sensors (FF 9),
also does not teach using multiple different sensors on the same milk
sample, where if the first sensor detects mastitis, a second mastitis sensor is
employed to further analyse the milk sample.
In the absence of a teaching in any of the cited references of this
concept of using a second sensor to analyze milk for mastitis after a first
sensor indicates that mastitis is present, we are constrained to reverse this
rejection.
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that the combination of van den Berg and Birk renders the claims obvious.
D. 35 U.S.C. § 103(a) over van den Berg, Birk, and Nilsson
This rejection relies upon the underlying obviousness rejection over
van den Berg and Birk which we reversed above. Having reversed the
obviousness rejection over van den Berg and Birk for a failure to present a
prima facie case of obviousness for Claim 1, we necessarily reverse this
obviousness rejection further including Nilsson as this rejection does not
provide any teachings of the missing elements.
SUMMARY
In summary, we reverse the rejection of claims 1-3 and 5-7 under 35
U.S.C. 112, first paragraph, as failing to comply with the enablement
requirement.
We reverse the rejection of claims 1-3 and 5-7 under 35 U.S.C. 112,
second paragraph, as indefinite.
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We reverse the rejection of claims 1-3, 5, and 7 under 35 U.S.C. §
103(a) over van den Berg and Birk.
We reverse the rejection of claim 6 under 35 U.S.C. § 103(a) over van
den Berg, Birk, and Nilsson.

REVERSED

cdc