Ex Parte Garwood

Board of Patent Appeals and Interferences

Jan 7, 2009

10368933 (B.P.A.I. Jan. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte ANTHONY J.M. GARWOOD 8
___________ 9
10
Appeal 2008-3555 11
Application 10/368,933 12
Technology Center 1700 13
___________ 14
15
Decided: January 7, 2009 16
___________ 17
18
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
STATEMENT OF THE CASE 26
27
Anthony J.M. Garwood (Appellant) seeks review under 28
35 U.S.C. § 134 of a Final Rejection of claims 44-59, the only claims 29
pending in the application on appeal. 30
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We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 1
(2002). 2
3
We AFFIRM-IN-PART. 4
The Appellant invented a way for processing and packaging under 5
conditions of reduced oxygen for substantially decontaminating and 6
prolonging the shelf life of perishable goods, such as beef. (Specification 7
1:24 – 2:2). 8
An understanding of the invention can be derived from a reading of 9
exemplary claims 44, 50, and 56, which are reproduced below [bracketed 10
matter and some paragraphing added]. 11
44. A method for tracking ground meat to an animal from 12
which the meat was harvested, comprising: 13
[1] obtaining animal portions having information associated 14
therewith; 15
[2] transferring the portions to a conduit, said conduit including 16
a meat grinder; 17
[3] measuring the amount of portions entering the conduit; 18
[4] grinding the portions to provide ground meat; 19
[5] measuring the amount of ground meat leaving the conduit; 20
[6] determining via a computer, 21
when an amount of ground meat leaving the conduit 22
corresponds to an amount of portions entering the 23
conduit; and 24
[7] associating the information with the ground meat leaving 25
the conduit. 26
27
50. A method for associating packaged meat with information 28
about an animal from which the meat is harvested, comprising: 29
[1] providing an animal having information associated 30
therewith on a RFID tag; 31
[2] reading said RFID tag and storing the information in a 32
computer; 33
[3] processing the animal into animal portions; 34
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[4] transferring the animal portions from location to location; 1
and 2
[5] associating the information with the animal portions when 3
the portions are transferred from location to location. 4
5
56. A method for associating packaged meat with information 6
about an animal from which the meat is harvested, comprising: 7
[1] providing an animal having information associated 8
therewith; 9
[2] transferring said information to a location that is accessible 10
to one or more users of the information; 11
[3] harvesting meat from the animal; 12
[4] providing packages containing a mark on each package; 13
[5] reading the mark on a package and keeping track of said 14
package before the package is provided with meat; and 15
[6] placing the meat in the packages to associate packaged meat 16
with the information about the animal from which the meat is 17
harvested. 18
19
This appeal arises from the Examiner’s Final Rejection, mailed 20
October 14, 2004. The Appellant filed an Appeal Brief in support of the 21
appeal on July 26, 2007. An Examiner’s Answer to the Appeal Brief was 22
mailed on September 27, 2007. 23
PRIOR ART 24
The Examiner relies upon the following prior art: 25
Knosby US 4,597,495 Jul. 1, 1986 26
Montanari US 5,478,990 Dec. 26, 1995 27
Card US 5,804,802 Sep. 8, 1998 28
29
Aaron Brody & Kenneth Marsh, The Wiley Encyclopedia of Packaging 30
Technology 204-205, 650-655, and 674-680 (2nd Ed., 1996). 31
32
Wayne Gisslen, Professional Cooking 14-15 and 34-37 33
(3rd Ed., 1995). 34
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REJECTIONS 1
Claims 44-45 and 48-49 stand rejected under 35 U.S.C. § 103(a) as 2
unpatentable over Montanari and Gisslen. 3
Claims 46 and 47 stand rejected under 35 U.S.C. § 103(a) as 4
unpatentable over Montanari, Gisslen, and Wiley. 5
Claims 50, 51, 54, and 55 stand rejected under 35 U.S.C. § 103(a) as 6
unpatentable over Montanari and Knosby. 7
Claims 52 and 53 stand rejected under 35 U.S.C. § 103(a) as 8
unpatentable over Montanari, Knosby, and Wiley. 9
Claims 56-59 stand rejected under 35 U.S.C. § 103(a) as unpatentable 10
over Montanari and Card. 11
Claims 44-59 stand rejected under provisional non-statutory 12
obviousness type double patenting. 13
14
ISSUES 15
The issues pertinent to this appeal are 16
• Whether the Appellant has sustained its burden of showing that the 17
Examiner erred in rejecting claims 44-45 and 48-49 under 35 U.S.C. § 18
103(a) as unpatentable over Montanari and Gisslen. 19
• Whether the Appellant has sustained its burden of showing that the 20
Examiner erred in rejecting claims 46 and 47 under 35 U.S.C. § 21
103(a) as unpatentable over Montanari, Gisslen, and Wiley. 22
• Whether the Appellant has sustained its burden of showing that the 23
Examiner erred in rejecting claims 50, 51, 54, and 55 under 35 U.S.C. 24
§ 103(a) as unpatentable over Montanari and Knosby. 25
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• Whether the Appellant has sustained its burden of showing that the 1
Examiner erred in rejecting claims 52 and 53 under 35 U.S.C. § 2
103(a) as unpatentable over Montanari, Knosby, and Wiley. 3
• Whether the Appellant has sustained its burden of showing that the 4
Examiner erred in rejecting claims 56-59 under 35 U.S.C. § 103(a) as 5
unpatentable over Montanari and Card. 6
• Whether the Appellant has sustained its burden of showing that the 7
Examiner erred in rejecting claims 44-59 under provisional non-8
statutory obviousness type double patenting. 9
The issues pertinent to claims 44-49 turn on whether the art applied 10
describes or suggests determining via a computer when an amount of ground 11
meat leaving a grinder conduit corresponds to an amount of portions 12
entering the conduit. The issues pertinent to claims 50-55 turn on whether 13
the art applied describes or suggests associating RFID tag information on an 14
animal with processed animal portions. The issues pertinent to claims 56-59 15
turn on whether the art applied describes or suggests providing packages for 16
meat that are pre-marked for tracking. 17
18
FACTS PERTINENT TO THE ISSUES 19
The following enumerated Findings of Fact (FF) are believed to be 20
supported by a preponderance of the evidence. 21
Montanari 22
01. Montanari is directed to tracking food products such as meat 23
products through a growing or production process to verify 24
origination and record production methods, additives and 25
treatments (Montanari 1:6-11). 26
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02. Montanari describes a meat fabrication process at a fabrication 1
plant in which portions from various animals are gathered and 2
combined (Montanari 5:9-21). 3
03. Montanari uses a computer database to maintain the identity 4
read from tags of a food item subjected to each segment of the 5
production process (Montanari 8:35-46). 6
04. Montanari describes each animal that is to be slaughtered 7
having an animal tracking number (A-TN) on some tag 8
(Montanari 9:41-44). After slaughter and quartering, quarter 9
tracking number tag that duplicate the A-TN tag is generated 10
(Montanari 13:5-11). The pieces that each quarter are processed 11
into then have production tracking number tags (P-TN) generated 12
that are associated with the A-TN and Q-TN (Montanari 14:1-10). 13
05. Montanari describes a meat portion container to hold meat 14
products to be ground identified using a Lot Production 15
Information Number (L-PIN). Once the meat portion container is 16
full, the meat portions are fed into a grinder and the resulting 17
product is collected in a second ground meat container. A L-PIN 18
tag is generated that is identical to that of the first container and is 19
attached to the ground meat container. The ground meat container 20
is then emptied and its contents packaged into individual packages 21
(Montanari 16:7-19). 22
Gisslen 23
06. Gisslen is directed to professional cooking (Gisslen: Title). 24
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07. Gisslen describes the dangers of bacteria and recommends 1
keeping bacteria from spreading (Gisslen 15: Protection against 2
Bacteria). 3
08. Gisslen describes a food grinder for grinding meats by forcing 4
food through a feed tube into a screw, which pushes food through 5
holes in a plate, where the food is cut by a rotating blade (Gisslen 6
36: Attachments for Mixers and Food Chopper). 7
Knosby 8
09. Knosby is directed to identifying livestock and their food 9
(Knosby 1:5-9). 10
10. Knosby’s animal carcasses are hung on gambrels (a gambrel is 11
used by butchers for hanging carcasses by the legs) attached to a 12
moving trolley line. Each trolley is numbered with a code. Each 13
carcass is separately numbered with a code. Knosby’s system 14
tracks which trolley contains which carcass (Knosby 1:56 – 2:18). 15
11. Knosby describes several techniques for physically identifying 16
animals, including radio frequency chips (Knosby 3:46-54). 17
Wiley 18
12. Wiley is directed to packaging technology (Wiley:Title). 19
Card 20
13. Card is directed to determining the disposition of packages in a 21
shipping terminal (Card 1:5-8). 22
14. Card describes applying bar codes to items placed inside a bin, 23
but does not describe applying bar codes to bins themselves (Bard 24
1:43-47). 25
Facts Related To The Level Of Skill In The Art 26
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15. Neither the Examiner nor the Appellant has addressed the level 1
of ordinary skill in the pertinent arts of systems analysis and 2
programming, meat packing systems, and inventory and 3
production management systems. We will therefore consider the 4
cited prior art as representative of the level of ordinary skill in the 5
art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 6
2001) (“[T]he absence of specific findings on the level of skill in 7
the art does not give rise to reversible error ‘where the prior art 8
itself reflects an appropriate level and a need for testimony is not 9
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 10
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 11
Facts Related To Secondary Considerations 12
16. There is no evidence on record of secondary considerations of 13
non-obviousness for our consideration. 14
15
PRINCIPLES OF LAW 16
Claim Construction 17
During examination of a patent application, pending claims are 18
given their broadest reasonable construction consistent with the 19
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 20
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). 21
Limitations appearing in the specification but not recited in the claim 22
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 23
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 24
specification” without importing limitations from the specification into the 25
claims unnecessarily). 26
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Although a patent applicant is entitled to be his or her own 1
lexicographer of patent claim terms, in ex parte prosecution it must be 2
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 3
must do so by placing such definitions in the Specification with sufficient 4
clarity to provide a person of ordinary skill in the art with clear and precise 5
notice of the meaning that is to be construed. See also In re Paulsen, 30 6
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 7
specific terms used to describe the invention, this must be done with 8
reasonable clarity, deliberateness, and precision; where an inventor chooses 9
to give terms uncommon meanings, the inventor must set out any 10
uncommon definition in some manner within the patent disclosure so as to 11
give one of ordinary skill in the art notice of the change). 12
13
Obviousness 14
A claimed invention is unpatentable if the differences between it and 15
the prior art are “such that the subject matter as a whole would have been 16
obvious at the time the invention was made to a person having ordinary skill 17
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S. 18
Ct. 1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 19
(1966). 20
In Graham, the Court held that the obviousness analysis is bottomed 21
on several basic factual inquiries: “[(1)] the scope and content of the prior art 22
are to be determined; [(2)] differences between the prior art and the claims at 23
issue are to be ascertained; and [(3)] the level of ordinary skill in the 24
pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex Inc., 25
127 S. Ct. at 1734. “The combination of familiar elements according to 26
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known methods is likely to be obvious when it does no more than yield 1
predictable results.” KSR, at 1739. 2
“When a work is available in one field of endeavor, design incentives 3
and other market forces can prompt variations of it, either in the same field 4
or a different one. If a person of ordinary skill can implement a predictable 5
variation, § 103 likely bars its patentability.” Id. at 1740. 6
“For the same reason, if a technique has been used to improve one 7
device, and a person of ordinary skill in the art would recognize that it would 8
improve similar devices in the same way, using the technique is obvious 9
unless its actual application is beyond his or her skill.” Id. 10
“Under the correct analysis, any need or problem known in the field 11
of endeavor at the time of invention and addressed by the patent can provide 12
a reason for combining the elements in the manner claimed.” Id. at 1742. 13
14
ANALYSIS 15
Claims 44-45 and 48-49 rejected under 35 U.S.C. § 103(a) as unpatentable 16
over Montanari and Gisslen. 17
18
The Examiner found that Montanari described all of the limitations of 19
independent claim 44 except for a conduit grinder structure, for which the 20
Examiner applied Gisslen, and the determining by a computer step of when 21
the amount leaving corresponds to an amount entering. The Examiner 22
inferred from Gisslen’s description of the necessity of keeping bacteria from 23
spreading that one of ordinary skill would have therefore portioned meat and 24
weighed it going in and out of the grinding process to isolate portions of 25
meat (Answer 4-5). 26
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The Appellant contends that neither reference describes weighing the 1
amounts and using the computer to determine when the amount leaving 2
corresponds to the amount entering (Br. 11-14). We agree with the 3
Appellant. The Examiner has articulated a reason to weigh the amounts, but 4
has provided no evidence that one of ordinary skill would have known to do 5
so at the time of the invention. More critically, the Examiner has made no 6
findings that one of ordinary skill would have used a computer to determine 7
when the amount leaving corresponded to the amount entering the grinding 8
process. The Examiner’s findings only refer to comparing the weights, not 9
to how a computer would be used. 10
The Appellant has sustained its burden of showing that the Examiner 11
erred in rejecting claims 44-45 and 48-49 under 35 U.S.C. § 103(a) as 12
unpatentable over Montanari and Gisslen. 13
14
Claims 46 and 47 rejected under 35 U.S.C. § 103(a) as unpatentable over 15
Montanari, Gisslen, and Wiley. 16
17
Claims 46 and 47 depend from claim 44, whose rejection was not 18
sustained supra. Nothing in Wiley makes up for the deficiencies in the 19
rejection of claim 44. The Appellant has accordingly sustained its burden of 20
showing that the Examiner erred in rejecting claims 46 and 47 under 35 21
U.S.C. § 103(a) as unpatentable over Montanari, Gisslen, and Wiley for the 22
same reason as claim 44. 23
24
Claims 50, 51, 54, and 55 rejected under 35 U.S.C. § 103(a) as unpatentable 25
over Montanari and Knosby. 26
27
The Appellant argues these claims as a group. 28
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Accordingly, we select claim 50 as representative of the group. 1
37 C.F.R. § 41.37(c)(1)(vii) (2007). 2
The Examiner found that Montanari described the limitations of claim 3
50 except for applying an RFID tag to the animal, which the Examiner found 4
described by Knosby. The Appellant contends that there is no motivation or 5
convincing rationale to combine Montanari and Knosby. The Appellant 6
contends that Knosby tracks only a whole carcass whereas Montanari tracks 7
tracking animal parts and that it would alter the mode of operation or be 8
prohibitive or impossible to physically incorporate Knosby’s RFID tags in 9
Montanari’s identifications (Br. 20-23). 10
We disagree with the Appellant. Montanari provides an animal 11
having information associated therewith on an animal tracking number tag 12
(FF 04); reads the tag and stores the information in a computer (FF 03); 13
processes the animal into animal portions while transferring the animal 14
portions from location to location (FF 02); and associates the information 15
with the animal portions when the portions are transferred from location to 16
location (FF 04). Knosby describes using radio frequency tags, of which 17
RFID tags would be a well known embodiment, for animal tracking tags (FF 18
11). The Appellant contends one would not replace Montanari’s tags with 19
RFID tags (Br. 21: Bottom ¶). This argument is not well founded. 20
"The test for obviousness is not whether the features of a secondary 21
reference may be bodily incorporated into the structure of the primary 22
reference .... Rather, the test is what the combined teachings of those 23
references would have suggested to those of ordinary skill in the art." In re 24
Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d 25
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the 26
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references be physically combinable to render obvious the invention under 1
review."); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining 2
the teachings of references does not involve an ability to combine their 3
specific structures."). 4
Although Knosby describes radio frequency tags for the animals, 5
Knosby also describes using other codes such as those on the containers 6
transporting carcasses and associating the animal and container identifiers 7
(FF 10). Montanari describes creating additional tags for production 8
tracking that are related to the original animal tracking tag (FF 04). Nothing 9
in Montanari or Knosby describe or suggest that the additional tags produced 10
to track production are necessarily of the same format as the original animal 11
tracking tag. Since the tags in Montanari are system generated, they may be 12
in whatever media is most conducive to the fabrication process. The 13
Appellant appears to take Montanari’s description of creating Q-TN tags as 14
requiring absolute identity of labels (Br. 21First full ¶). However, closer 15
reading of Montanari shows it is identity of the number, not the medium, 16
that is preserved. The Appellant also contends that radio frequency tags are 17
not easily duplicated (Br. 21:Bottom ¶). But again, identity of the tag media 18
is not required by Montanari. 19
Further, nothing in claim 50 requires that the animal portion 20
information be recorded in the same media as the original animal tracking 21
tag. Therefore, bodily incorporation of Knosby’s radio frequency tags into 22
Montanari’s production tags is not an issue. 23
Finally, the Appellant contended there is no rationale provided for 24
combining the references (Br. 22-23). But the Examiner found that RFID 25
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tags described by Knosby were a convenient and efficient mechanism for 1
storing Montanari’s animal tracking number (Answer 7). 2
The Appellant has not sustained its burden of showing that the 3
Examiner erred in rejecting claims 50, 51, 54, and 55 under 35 U.S.C. § 4
103(a) as unpatentable over Montanari and Knosby. 5
6
Claims 52 and 53 rejected under 35 U.S.C. § 103(a) as unpatentable over 7
Montanari, Knosby, and Wiley. 8
9
The Appellant has not separately argued these claims and therefore, 10
since they depend from claim 50, has not sustained its burden of showing 11
that the Examiner erred in rejecting claims 52 and 53 under 35 U.S.C. § 12
103(a) as unpatentable over Montanari, Knosby, and Wiley. 13
14
Claims 56-59 rejected under 35 U.S.C. § 103(a) as unpatentable over 15
Montanari and Card. 16
17
The Examiner found that Montanari described the limitations of claim 18
56 except for the pre-marked packages and reading the mark prior to filling 19
with meat. The Examiner found that Card described tracking marked 20
packages throughout a distribution system and concluded that Card’s 21
description of using the marks for tracking inventory would have motivated 22
one of ordinary skill to use Card’s marking system to track the inventory of 23
containers in Montanari (Answer 8-9). 24
The Appellant argues that nothing in either reference suggests 25
marking the container prior to filling with meat as required by limitations [4] 26
and [5] of claim 56. We agree with the Appellant. The Examiner refers to 27
Card 1:43 for support for placing a mark on containers for inventory control. 28
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This portion of Card describes marks placed on inventory placed in 1
containers, not the containers themselves (FF 14). The Examiner found that 2
applying this technique to the containers themselves would have improved 3
control over the containers themselves. The Examiner has provided no 4
evidence, even in the form of official notice, that one of ordinary skill knew 5
to number the containers in addition to the items in the containers, and has 6
provided no evidence that there was any reason to apply the cost and 7
resources to such control over the containers. 8
The Appellant has sustained its burden of showing that the Examiner 9
erred in rejecting claims 56-59 under 35 U.S.C. § 103(a) as unpatentable 10
over Montanari and Card. 11
12
Claims 44-59 rejected under provisional non-statutory obviousness type 13
double patenting. 14
15
The Examiner rejected claims 44-59 as provisionally unpatentable 16
under the doctrine of obviousness type double patenting over the claims of 17
applications 10/769,714; 10/769,677; and 10/769,674 (Answer 10). All 18
three of these applications stand abandoned for failure to respond to Office 19
actions mailed March 15, 2007, October 22, 2007, and October 19, 2007 20
respectively. Thus the provisional rejections are not sustained due to the 21
abandonment of the applications upon which the rejections are made. 22
23
CONCLUSIONS OF LAW 24
The art applied does not describe or suggest determining via a 25
computer when an amount of ground meat leaving a grinder conduit 26
corresponds to an amount of portions entering the conduit. The art applied 27
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does describe or suggest associating RFID tag information on an animal with 1
processed animal portions. The art applied does not describe or suggest 2
providing packages for meat that are pre-marked for tracking. 3
The Appellant has not sustained its burden of showing that the 4
Examiner erred in rejecting claims 50-55, but has sustained its burden of 5
showing that the Examiner erred in rejecting claims 44-49 and 56-59 under 6
35 U.S.C. § 103(a) as unpatentable over the prior art. 7
8
DECISION 9
To summarize, our decision is as follows: 10
• The rejection of claims 44-45 and 48-49 under 35 U.S.C. § 103(a) as 11
unpatentable over Montanari and Gisslen is not sustained. 12
• The rejection of claims 46 and 47 under 35 U.S.C. § 103(a) as 13
unpatentable over Montanari, Gisslen, and Wiley is not sustained. 14
• The rejection of claims 50, 51, 54, and 55 under 35 U.S.C. § 103(a) as 15
unpatentable over Montanari and Knosby is sustained. 16
• The rejection of claims 52 and 53 under 35 U.S.C. § 103(a) as 17
unpatentable over Montanari, Knosby, and Wiley is sustained. 18
• The rejection of claims 56-59 under 35 U.S.C. § 103(a) as 19
unpatentable over Montanari and Card is not sustained. 20
• The rejection of claims 44-59 provisional non-statutory obviousness 21
type double patenting is not sustained. 22
No time period for taking any subsequent action in connection with 23
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 24
25
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AFFIRMED-IN-PART 1
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