Ex Parte LaSalle

Board of Patent Appeals and Interferences

Oct 14, 2009

10779960 (B.P.A.I. Oct. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL E. LaSALLE
____________

Appeal 2009-005627
Application 10/779,960
Technology Center 3700
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Decided: October 14, 2009
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Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005627
Application 10/779,960

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STATEMENT OF THE CASE
Michael E. LaSalle (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting claims 12-14 and 25-27. Claims 1-
11, 15-24, and 28-37 have been cancelled. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to fabricating, handling, and
transporting elongate bags of material, such as loose-fill thermal insulation.
Layers of the bags are stacked on pallets in a cross-stacked pattern, where at
least one bag is orthogonal to the lengthwise bags. Fig. 1B. This
configuration makes it easier for a forklift to lift the products, but more
difficult for a clamping stacker machine to grab, move, and stack the layer of
bags in the first place because the clamping forces can cause the lengthwise
bags to slip past one another, leading to roll-out, where the bags fall from the
clamp. Spec. 2:12 to 3:2, fig. 1C. Therefore, the clamp of the stacker
machine of the claimed invention, made of stacking head 303 and fingers
305A-D, further includes chains 307A and 307B that become sandwiched
between the lengthwise bags, providing enough friction between the
clamped bags to prevent roll-out. Spec. 8:10 to 9:10, fig. 3.
Claim 12, reproduced below, is illustrative of the claimed invention.
12. A method of handling material comprising:
packaging material into elongate bags;
automatically arranging the elongate bags
into groups, wherein at least one group has a cross-
stacked configuration wherein a first set of bags
are disposed side-by-side along their lengths and at
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least one additional bag is disposed orthogonal to
and adjacent said first set of bags; and
automatically lifting and transporting said
groups of elongate bags, group by group, to form a
multi-row stack of elongate bags, said lifting and
transporting accomplished by applying opposed
clamping forces to opposite sides of at least one
group having a cross-stacked configuration while
preventing elongate bags disposed side-by-side in
said cross-stacked configuration from sliding past
one another, said opposed clamping forces being
applied to only two sides of the at least one group
and said opposed clamping forces alone being
sufficient to lift the at least one group;
wherein said automatic lifting and
transporting said groups of elongate bags is carried
out by a stacker machine having a moveable
stacker head with two fingers that apply opposed
clamping forces to grip a given group of elongate
bags and at least one support structure that is
operably disposed between bags disposed side-by-
side in said cross-stacked configuration to prevent
such bags from sliding past one another while not
providing resistance to the opposed clamping
forces.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Pagdin US 2,920,916 Jan. 12, 1960
Milholen US 3,992,049 Nov. 16, 1976
Tygard US 5,516,255 May 14, 1996
Seaberg US 6,135,704 Oct. 24, 2000
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Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 103(a) of claims 12 and 25 as being unpatentable over Pagdin and Tygard
and, alternatively, over Pagdin, Seaberg, and Tygard; and of claims 13, 14,
and 25-27 as unpatentable over Pagdin, Tygard, Applicant Admitted Prior
Art1, and Milholen.

SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION.

ISSUE
In relevant part, claims 12 and 25 both require a lifting machine with
fingers that apply a clamping force to cross-stacked bags, the machine
having a support structure operably disposed between the lengthwise bags,
the support structure "not providing resistance to the opposed clamping
forces." However, as the Examiner notes, Appellant's claimed support
structure inherently provides resistance to the opposed clamping forces of
fingers 305. Ans. 6. Therefore, the dispositive issue in this appeal is
whether a person of ordinary skill in the art would be able to ascertain the
metes and bounds of the limitation recited in claims 12 and 25, in which a
support structure is described as operably disposed between bags "while not
providing resistance to the opposed clamping forces," when that limitation is
read in light of Appellant’s Specification.

1 The Examiner’s rejection does not specify what admissions of Appellant
are relied upon in rejecting these claims.
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Application 10/779,960

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PRINCIPLES OF LAW
"The claim language itself defines the scope of the claim." Eastman
Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 1552 (Fed. Cir.
1997) (quoting York Prods., Inc. v. Central Tractor Farm & Family Center,
99 F.3d 1568, 1572 (Fed. Cir. 1996)). However, "[c]laims must be read in
view of the specification, of which they are a part." Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (citing Autogiro Co. of
Am. v. United States, 384 F.2d 391, 397 (Ct. Cl. 1967)). See also In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) ("[T]he
PTO must give claims their broadest reasonable construction consistent with
the specification").
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 second paragraph of 35 U.S.C. § 112 requires claims to set
out and circumscribe a particular area with a reasonable degree of precision
and particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA 1977). In
determining whether this standard is met, the definiteness of the language
employed in the claim must be analyzed, not in a vacuum, but always in
light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art. Id.

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ANALYSIS
Claims 12 and 25, in relevant part, recite a support structure operably
disposed between the lengthwise bags, the support structure "not providing
resistance to the opposed clamping forces." The plain meaning of the
claimed support structure "not providing resistance" is that the support
structure provides zero resistance to the clamping force. See Eastman
Kodak Co., 114 F.3d at 1552 ("The claim language itself defines the scope
of the claim.").
The Specification, however, implies a different meaning. Cf.
Markman, 52 F.3d at 979 (claims must be read in view of the Specification)
and Orthokinetics, 806 F.2d at 1576 (the test for definiteness is whether
"those skilled in the art would understand what is claimed when the claim is
read in light of the specification”). In the Specification, the support
structure, made of chains, ropes, wires, or the like, fits between the two
lengthwise bags in the cross-stacked pattern and prevents these bags from
slipping past one another by providing friction between the bags. Spec. 8:19
to 9:5. The friction force provided by the support structure is a result of the
forces pressing the lengthwise bags together against the support structure.
Thus, some amount of the clamping force applied to the ends of the
lengthwise bags is transferred to the support structure. As pointed out by the
Examiner, this force transferred through the bags to the support structure
must inherently result in the support structure providing some amount of
resistance to the force. Ans. 6. If the support structure did not provide some
amount of resistance, it would be crushed or moved, and ineffective in
providing friction between the bags for the bag handling machine. Thus, we
find that Appellant's Specification inherently discloses that the support
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structure provides some amount of resistance to the clamping forces, but is
silent regarding the degree of this resistance. This disclosure stands in stark
contrast to a support structure "not providing resistance," as required by
claims 12 and 25.
Therefore, reading claims 12 and 25 in light of Appellant's disclosure,
as we must, we find an inexplicable inconsistency within claims 12 and 25,
which renders claims 12 and 25 indefinite. See In re Cohn, 438 F.2d 989,
993 (CCPA 1971) (sustaining rejection of claims under 35 U.S.C. § 112,
second paragraph, as being indefinite when the claims were inherently
inconsistent with the description, definitions, and examples appearing in
applicant’s specification). Further, the prior art rejections must fall because
they are necessarily based on a speculative assumption as to the meaning of
the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should
be understood, however, that our decision in this regard is based solely on
the indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.

CONCLUSION
Claims 12 and 25 are indefinite because of the inexplicable
inconsistency between the claimed disposition of a support structure
between the bags "while not providing resistance to the opposed clamping
forces" and the description of the support structure in the Specification.
Likewise, dependent claims 13, 14, 26, and 27 are indefinite. Consequently,
we will not sustain the Examiner's prior art rejections, because they are
necessarily based on speculative assumption as to the meaning of the claims.

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DECISION
The Examiner's decision is reversed as to claims 12-14 and 25-27.
Pursuant to our authority under 37 C.F.R. § 41.50(b) (2008), we enter a new
ground of rejection of claims 12-14 and 25-27 as indefinite under 35 U.S.C.
§ 112, second paragraph.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 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 Appellant, 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.…
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).

REVERSED; 37 C.F.R. § 41.50(b)
Appeal 2009-005627
Application 10/779,960

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hh

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