Ex Parte Erich

Board of Patent Appeals and Interferences

Jun 12, 2009

10398693 (B.P.A.I. Jun. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDER ERICH
____________

Appeal 2009-000318
Application 10/398,693
Technology Center 3600
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Decided: 1 June 12, 2009
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and
STEFAN STAICOVICI Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Eder Erich (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-33, 35, 36, and 38-62. Claims 34
and 37 have been canceled. We have jurisdiction over this appeal under 35
U.S.C. § 6 (2002).

THE INVENTION
The Appellant’s invention is drawn toward an apparatus for labeling
items 40 including a carousel 1, a plurality of rotary plates 2, a conveyor belt
5, an intake star wheel 3, a discharge star wheel 4, and at least one free-
standing labeling unit 30. Specification 1, ¶ [0001]; Specification 2, ¶
[0008]; Specification 4, ¶ [0020]; and fig. 1.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A machine for the labeling of items (40), comprising at
least one carousel (1), at least one free-standing labeling
unit (30) for the labeling of items (40) positioned at the
periphery, synchrononously driven transport elements (3,
4, 5, 6) for correctly positioned delivery and removal of
the items (40), the transport elements (3, 4, 5, 6) being
supported on a table plate (7), and the carousel (1) being
supported in a rotary bearing (11) positioned outside the
table plate (7).

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Everett US 2,657,816 Nov. 3, 1953

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The following rejections are before us for review:2
The Examiner rejected claims 1-33, 35, 36, and 38-62 under 35
U.S.C. § 112, second paragraph, as being indefinite.3
The Examiner rejected claims 1-33, 35, 36, and 38-62 under 35
U.S.C. § 102(b) as anticipated by Everett.

THE ISSUES
1. Has the Appellant shown that the Examiner erred in determining that
the limitation of a “free-standing labeling unit,” as recited in
independent claims 1 and 22, is indefinite under 35 U.S.C. § 112,
second paragraph?
2. Has the Appellant demonstrated that the Examiner erred in
determining that Everett teaches a labeling machine including a “free-
standing labeling unit?”

SUMMARY OF DECISION
We AFFIRM.

2 The Examiner has withdrawn the objection to the drawings (filed on
March 26, 2006) under 37 C.F.R. § 1.83(a). Ans. 3.
3 On Pages 4-5 of the Final Rejection (mailed June 6, 2006), the
Examiner rejects claim 5 under 35 U.S.C. § 112, second paragraph, as being
indefinite because the drawings do not show that the upper side of table 14 is
inclined, as required by claim 5. The Examiner’s Answer is silent with
respect to a specific rejection of claim 5 on this basis. However, as noted
above, on Page 3 of the Answer, the Examiner has specifically withdrawn
the objection to the drawings filed on March 23, 2006, which specifically
shows a table 14 having an inclined surface. See Figure 2 as amended by
the drawings filed on March 23, 2006. Therefore, for the purpose of this
appeal we shall consider this basis for the rejection of claim 5 to have also
been withdrawn by the Examiner.
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FINDINGS OF FACT
The following enumerated findings of facts (FF) 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).
1. The Examiner determines that an ordinary and customary
meaning of the term “free-standing” is “standing alone or on its
own foundation free of support or attachment.” Ans. 3, citing
to WEBSTER’S DICTIONARY 10th Edition.
2. The Appellant “wholly agrees” with the Examiner’s
construction of the term “free-standing.” Br. 21.
3. The Appellant’s Specification states that labeling units 30
connect to outer ring 23 at any chosen point using vertical bolts
or pins 29. In turn, the outer ring 23 connects to the carousel 1
by several brackets 22. Specification 6-7, ¶ [0025] and figs. 1
and 4.
4. Everett teaches a labeling machine including a supply conveyor
52, an intake spider 54 (intake starwheel), a conveying plate 10
(carousel), labeling mechanisms 18, 20, and a discharge spider
57 (discharge starwheel). Everett, col. 2, ll. 32-35, 43-50; col.
3, ll. 12-13; and fig. 1.
5. Everett further teaches that the plate 10 (carousel) rotates about
a stationary supporting shaft 12 which is supported by base 30.
Everett, col. 2, ll. 35-37; col. 3, ll. 24-27; and fig. 2.
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6. The labeling mechanism 18 of Everett rotates about a stationary
supporting shaft 134, which likewise is supported by base 30.
Everett, col. 5, ll. 29-35 and fig. 2.

PRINCIPLES OF LAW
Claim Construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Indefiniteness
A specification must conclude with claims "particularly pointing out
and distinctly claiming the subject matter which the applicant regards as his
invention." 35 U.S.C. § 112, ¶ 2 (2000). The essence of the requirement
under 35 U.S.C. § 112, second paragraph, that the claims must be definite, is
that the language of the claims must make it clear what subject matter the
claims encompass. In re Hammack, 427 F.2d 1378 (CCPA 1970).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
The primary purpose of the definiteness requirement is to ensure that
the claims are written in such a way that they give notice to the public of the
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extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine
whether or not they infringe. All Dental Prodx, LLC v. Advantage Dental
Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002) (citing Warner-
Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 28-29 (1997)).
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros, Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
OPINION
Issue (1)
The Examiner notes that the Appellant’s Specification does not
provide a definition of the term “free-standing,” as required by independent
claims 1 and 22. Citing to WEBSTER’S DICTIONARY 10th Edition, the
Examiner takes the position that a customary and ordinary meaning of the
term “free-standing” is “standing alone or on its own foundation free of
support or attachment.” Ans. 3 and FF 1. In response, the Appellant
“wholly agrees with the definition of ‘free standing,’” as provided by the
Examiner. Br. 21 and FF2. Emphasis added. As such, we find that the
construction of the term “free-standing” is not in contention.
As noted above, we find that the Appellant’s Specification specifically
states that labeling units 30 connect to outer ring 23 at any chosen point
using vertical bolts or pins 29. In turn, the outer ring 23 connects to the
carousel 1 by several brackets 22. FF 3. The Appellant argues that because
the underframe 31 of the labeling unit 30 rests on the ground and its height
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and inclination can be adjusted, the “labeling unit 30 is not carried by any
part of the carousel 1 or the remaining machine,” and as such “the labeling
unit 30 is free-standing.” Br. 21-22. See also Specification 8, ¶ [0029] and
fig. 4. The Appellant further argues that although bolts or pins “can be used
to suspend labeling units 30…the bolts or pins 29 only serve to radially
position the labeling units 30 relative to the carousel 1.” Br. 22 (emphasis in
original).
Although we appreciate the Appellant’s position, nonetheless, as
shown above, the labeling units 30 connect to the carousel 1. Hence, the
labeling units 30 do not satisfy the ordinary and customary meaning of the
term “free-standing” as construed by both the Appellant and the Examiner.
That is, the labeling unit 30 does not “stand alone or on its own foundation
free of support or attachment.” In contrast, the Appellant’s labeling unit 30
is supported or attached to the carousel 1 using bolts or pins 29, ring 23, and
brackets 22. Even if assuming arguendo that the purpose of the bolts or pins
29 is merely to radially position the labeling unit 30 relative to carousel 1, as
the Appellant argues, nevertheless, the Appellant’s labeling unit 30 is
supported or attached to the carousel 1. Hence, as long as the labeling unit
30 is supported or attached to the carousel 1 in any manner, it does not
satisfy the ordinary and customary meaning of a “free standing” labeling
unit, as defined by the Examiner and the Appellant.
In conclusion, on the record before us, the Appellant has failed to
show that the Examiner erred in rejecting claims 1-33, 35, 36, and 38-62
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
Appellant regards as the invention. The claims are misdescriptive of
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Appellant’s claimed subject matter. Therefore, the rejection of claims 1-33,
35, 36, and 38-62 under 35 U.S.C. § 112, second paragraph, as being
indefinite is sustained.

Issue (2)
The Appellant argues that Everett does not teach a “free-standing’
labeling unit. Br. 24. In response, the Examiner takes the position that
the entire device of Everett is a free-standing
labeling unit. The Appellants claim does not
preclude that the carousel and the labeling units
having separate bases or supports.
Ans. 5.
As noted in our findings of fact above, Everett teaches a labeling
machine including a supply conveyor 52, an intake spider 54 (intake
starwheel), a conveying plate 10 (carousel), labeling mechanisms 18, 20, and
a discharge spider 57 (discharge starwheel). FF 4. Everett further teaches
that the plate 10 (carousel) rotates about a stationary supporting shaft 12
which is supported by base 30. FF 5. Similarly, the labeling mechanism 18
rotates about a stationary supporting shaft 134, which likewise is supported
by base 30. FF 6. Hence, both the conveying plate 10 (carousel) and the
labeling mechanism 18 are supported by the same base 30. As shown above,
both the Appellant and the Examiner agree that a customary and ordinary
meaning of the term “free-standing” is “standing alone or on its own
foundation free of support or attachment.” Ans. 3 and Br. 21. See also FF 1
and 2. Since the labeling unit 18 is fixed to the same base 30 as the
conveying plate 10 (carousel), we find that a person of ordinary skill in the
art would not have reasonably understood that the labeling unit 18 of Everett
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constitutes a “free-standing labeling unit,” as required by claims 1 and 22.
Specifically, the labeling unit 18 of Everett does not “stand[ing] alone or on
its own foundation free of support or attachment,” but rather is supported by
the same base 30 that supports the conveying plate 10 (carousel).
Lastly, we disagree with the Examiner’s interpretation of the
teachings of Everett so that “the entire device of Everett is a free-standing
labeling unit”. Ans. 5 (emphasis added). To interpret the entire machine of
Everett as a “free-standing labeling unit,” as the Examiner would have us do,
would in essence read out the limitation of a “free-standing labeling unit”
from independent claims 1 and 22 because the labeling machine would
constitute the claimed “free-standing labeling unit.” Claims are construed
with an eye toward giving effect to all terms in the claim. Bicon Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). See Stumbo v. Eastman
Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim
constructions which render phrases in claims superfluous). In conclusion,
we agree with the Appellant that Everett fails to teach a “free-standing
labeling unit,” as required by independent claims 1 and 22.
Inasmuch as we found that Everett does not teach a “free-standing
labeling unit,” as required by independent claims 1 and 22, Everett does not
teach all the elements of independent claims 1 and 22. Accordingly, the
rejection of claims 1-33, 35, 36, and 38-62 under 35 U.S.C. § 102(b) as
anticipated by Everett cannot be sustained.

CONCLUSIONS
1. The Appellant has failed to show that the Examiner erred in
determining that the limitation of a “free-standing labeling unit,” as
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recited in independent claims 1 and 22, is indefinite under 35 U.S.C.
§ 112, second paragraph.
2. The Appellant has demonstrated that the Examiner erred in
determining that Everett teaches a labeling machine including a “free-
standing labeling unit.”

DECISION
The decision of the Examiner to reject claims 1-33, 35, 36, and 38-62
under 35 U.S.C. § 112, second paragraph, as being indefinite is affirmed.
The decision of the Examiner to reject claims 1-33, 35, 36, and 38-62
under 35 U.S.C. § 102(b) as anticipated by Everett is reversed.
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) (2008).

AFFIRMED

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LV

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