Ex parte VERMEER et al.

Board of Patent Appeals and Interferences

Sep 16, 1998

08296122 (B.P.A.I. Sep. 16, 1998)

Application for patent filed August 25, 1994.1
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not binding precedent of the Board.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 WILLIAM H. VERMEER, ROBERT W. DAMSTETTER
and WILLIAM E. RYAN IV
_____________
Appeal No. 97-2480
Application 08/296,1221
______________
ON BRIEF
_______________
Before STONER, Chief Administrative Patent Judge,
COHEN and ABRAMS, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claim 14, a new claim entered into the application
subsequent to the final rejection. This claim is the sole
Appeal No. 97-2480
Application 08/296,122
2
claim remaining in the application.
Appellants’ invention pertains to a method of encasing a
meat product. An understanding of the invention can be
derived from a reading of claim 14, a copy of which appears in
the “APPENDIX” to the brief (Paper No. 15).
As evidence of obviousness, the examiner has applied the
document specified below:
Meier 4,370,779 Feb. 01,
1983
The following rejection is before us for review.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Meier.
The full text of the examiner's rejection and response to
the argument presented by appellants appears in the answer
(Paper No. 16), while the complete statement of appellants’
argument can be found in the brief (Paper No. 15).
OPINION
Appeal No. 97-2480
Application 08/296,122
In our evaluation of the applied patent, we have considered all of the2
disclosure thereof for what it would have fairly taught one of ordinary skill
in the art. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not only the
specific teachings, but also the inferences which one skilled in the art would
reasonably have been expected to draw from the disclosure. See In re Preda
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
3
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
considered appellants’ specification and claim 14, the applied
patent, and the respective viewpoints of appellants and the2
examiner. As a consequence of our review, we make the
determination which follows.
We affirm the examiner’s rejection of claim 14.
Claim 14 is drawn to a method of encasing a meat product
flowing through an encasing machine, the method requiring,
inter alia, moving the encased product exiting the machine
onto a weighing scale, weighing the encased meat product
exiting the machine and comparing the weight thereof to a
predetermined target weight, and increasing or decreasing the
rate of flow of meat product from a pump to compensate for any
variance in weight between the weighed encased product and the
Appeal No. 97-2480
Application 08/296,122
4
target weight, the weight of the encased product being
determined by the scale and not computed by the operation of
the pump.
The patent to Meier, the evidence of obviousness, informs
us that, at the time of appellants’ invention, those having
ordinary skill in the art were concerned with the size of the
whole portion (predetermined quantity) of sausage casing. A
method taught by Meier involves, inter alia, the selection of
a desired volume portion for a sausage casing, measuring the
volume of sausage material dispensed to ascertain the volume
of a terminal mass, and flowing the terminal mass of sausage
material into a casing to substantially complete the dispensed
amount, resulting in the desired portion size. However, the
patentee expressly instructs those versed in the art (col. 2,
lines 34 through 42) that
The size of the whole portion, of the
terminal mass and of the dispensed sausage
material can be measured by weighing, that
is, in the form of the corresponding
weights. Preferably, however, they are
Appeal No. 97-2480
Application 08/296,122
5
measured by volume of the portion, of the
terminal mass and of the dispensed material
since, in contrast to measuring by weight,
measuring by volume poses no problem even
under the generally high frequency at which
the dispensing steps take place.
As we see it, appellants’ claimed method, in effect,
involves the application of traditional feedback principles to
assure a desired weight, i.e., the method ascertains a
difference
between a desired weight and an actual weight and compensates
for the difference by increasing or decreasing flow.
From our perspective, the overall teaching of Meier, as
described above, would have been fairly suggestive of
obtaining a desired size of sausage casing by the alternatives
of volume measurement or weight measurement.
At this point, we particularly note that this panel of
the board presumes skill on the part of those practicing this
art. See In re Sovish, 769 F.2d 738, 742, 226 USPQ 771, 774
(Fed. Cir. 1985). With this in mind, it is our opinion that
Appeal No. 97-2480
Application 08/296,122
6
the method now claimed would have been obvious to one of
ordinary skill in the art based upon the explicit teaching by
Meier of measuring weight en route to obtaining a desired
sausage size, and the common knowledge of feedback principles
as likewise exemplified by Meier. To obtain a weight
measurement, it is quite apparent to us that those having
ordinary skill in the art would have turned to a weighing
scale, for example. With a weight analysis as the basis for
achieving a desired sausage size, the weight of the encased
product, as claimed, would clearly not be computed by a pump.
The argument advanced by appellants in the brief (pages 3
through 5) fails to persuade us that the examiner erred in
rejecting claim 14 under 35 U.S.C. § 103. The brief (page 4)
addresses the Meier teaching of weighing as conceptual. We
disagree. Akin to appellants’ broad disclosure of an
operative connection (i.e., without structural detail) between
the scale and pump to compensate for weight variations, we are
convinced that the broad recitation of weight measurement by
Meier, in the overall context of the patent’s disclosure,
Appeal No. 97-2480
Application 08/296,122
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would have informed those versed in the art of the need for a
weighing scale to accomplish the weighing function, the scale
being positioned to weigh an encased product exiting an
encasing machine. Thus, contrary to appellant’s concern that
Meier lacks the “how and where” a scale would be used (brief,
page 4), we are of the view that the Meier teaching would have
been highly instructive to one of ordinary skill in the art.
Appellants also consider the volume determination method of
Meier as not reliable and as less likely to be understood by a
machine operator (brief, page 4). Notwithstanding this latter
subjective assessment of a volume method, Meier nevertheless
explicitly teaches weighing, as an alternative, to those
having ordinary skill in the art. For the
preceding reasons, and again contrary to the view advocated by
appellants (brief, page 4), we have concluded that the claimed
method would have been obvious.

NEW GROUND OF REJECTION
Under the authority of 37 CFR 1.196(b), this panel of the
board enters the following new ground of rejection.
Appeal No. 97-2480
Application 08/296,122
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Claim 14 is rejected under 35 U.S.C. 112, first
paragraph, as being based upon an underlying disclosure which
lacks descriptive support for claimed subject matter.
The description requirement of 35 U.S.C. 112, first
paragraph, is separate and distinct from the enablement
requirement. That one skilled in the art might realize from
reading a disclosure that something is possible is not a
sufficient indication to that person that the something is
part of an appellant's invention. See In re Barker, 559 F.2d
588, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied, 434
U.S. 1064 (1970). The test for determining compliance with
the written description requirement is whether the disclosure
of the application as originally filed reasonably conveys to
the artisan
that the inventor had possession at that time of the later
claimed subject matter, rather than the presence or absence of
literal support in the specification for the claim language.
Further, the content of the drawings may also be considered in
Appeal No. 97-2480
Application 08/296,122
9
determining compliance with the written description
requirement. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1562-63, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991) and In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983).
In the present case, subsequent to the filing of the
application, appellants submitted claim 14 (Paper No. 11) with
the limitation that the weight of the encased product is
determined by a scale “and not computed by the operation of
said pump”. Appellants did not refer to any basis in the
underlying disclosure in support of the noted negative
limitation appearing in claim 14, and we can find none. It is
evident to us from appellants’ remarks (Paper No. 11) that
this negative limitation was imported into the present
disclosure responsive to and on the basis of the Meier
teaching. In light of the above, we conclude that the
specified negative limitation adds new matter into the
application since it clearly lacks a descriptive basis in the
Appeal No. 97-2480
Application 08/296,122
10
originally filed specification. See Ex parte Grasselli, 231
USPQ 393, 394 (Bd. App. 1983).
In summary, this panel of the board has affirmed the
rejection of Claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Meier. Additionally, we have introduced a
new ground of rejection pursuant to 37 CFR 1.196(b).
The decision of the examiner is affirmed.
In addition to affirming the examiner’s rejection of
one or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
Appeal No. 97-2480
Application 08/296,122
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37 CFR § 1.196(b) also provides that the 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 proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellant elects prosecution before the examiner
Appeal No. 97-2480
Application 08/296,122
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and this does not result in allowance of the application,
abandonment
or a second appeal, this case should be returned to the Board
of
Patent Appeals and Interferences for final action on the
affirmed rejection, including any timely request for rehearing
thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
37 CFR 1.196(b)
)
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 97-2480
Application 08/296,122
13
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS
AND
)
) INTERFERENCES
)
NEAL E. ABRAMS )
Administrative Patent Judge )

vsh
Appeal No. 97-2480
Application 08/296,122
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