Ex Parte 7,757,946 et al

Patent Trial and Appeal Board

Apr 28, 2014

95001401 (P.T.A.B. Apr. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,401 07/20/2010 7,757,946 297341-00022 8810
23644 7590 04/29/2014
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
EXAMINER
TON, MY TRANG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/29/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

LTS SCALE COMPANY, LLC
Requester and Appellant

v.

ACME SCALE COMPANY INC.
Patent Owner
________________

Appeal 2012-009300
Reexamination Control 95/001,401
Patent 7,757,946 B2
Technology Center 3900
________________

Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON REHEARING

Patent Owner Acme Scale Company, Inc. (“Acme”) requests
rehearing (“Reh. Req.”) under 37 C.F.R. § 41.79 in the above-entitled inter
partes reexamination of US 7,757,946 (“the ‘946 Patent”) with respect to the
conclusion of the Patent Trial and Appeal Board (“Board”) that claims 9, 10,
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Patent 7,757,946 B2

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and 20-22 are not patentable under 35 U.S.C. §§ 102(b) and 103(a) on
various stated grounds, the concurrent decisions reversing the Examiner’s
conclusion that those claims are patentable and entering new grounds of
rejections of those claims. The Board’s conclusions were reached in a
Decision on Appeal mailed on May 18, 2013 (“Decision”). Appellant and
Requester LTS Scale Company (“LTS”) opposes the Request for Rehearing.
The Bourgoin Reference
All of the newly entered grounds of rejection of claims 9, 10, and 20-
22 are based on Bourgoin as the primary reference.
Owner’s Argument That Bourgoin Does Not Disclose
A Device That Moves With The Vehicle Is Not Persuasive
One of Acme’s contentions is that “both claims 9 and 20 . . . include
terminology in which the system or method includes a ‘material handling
vehicle’ with a device attached to the material handling vehicle ‘to move
with the vehicle’” Reh. Req. 3. See also Reh. Req. 4 (“a ‘material handling
vehicle’ having a device to detect the dimensions of another article carried
on the vehicle and move with the vehicle”); Id. at 7 (“Claims 9 and 20 were
amended . . . to clarify that the dimension detection device . . . ‘moved with
the vehicle.’”). Neither claim recites that the material handling vehicle
actually moves, or that the dimension detecting device actually moves, or
that the dimension detection device actually moves with the material
handling vehicle. Accordingly, neither claim recites a device that is attached
to the material handling vehicle so that it “move[s] with the vehicle.”
Instead, claim 9 recites that “the dimension detection device [is] positioned
to move with the vehicle.” (emphasis added). Similarly, claim 20 recites
“positioning at least one active linear dimension detection device on a
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portion of the material handling vehicle and retaining the device thereon to
move with the vehicle.” (emphasis added). Therefore, this argument is not
persuasive because it is not commensurate with the claim language.
The Issue On Appeal
Without discussing the claims in the context of either Section 102 or
Section 103 and without discussing any of the secondary references, Acme’s
Respondent Brief broadly focused on the meaning of the claim terms
“vehicle” and “material handling vehicle” solely in the context of the
primary reference, Bourgoin. See Resp. Br. 3 (“the Examiner has properly
interpreted this term [material handling vehicle] as used in the claims and as
provided in the specification.”) See also Resp. Br. 5 (“The plain meaning of
the term ‘material handling vehicle’ is a ‘vehicle.’”). Based on its
contention that Bourgoin’s table is “is not intended to be a material handling
vehicle” (Resp. Br. 3), Acme further broadly contended that “the table
identified in Bourgoin cannot be considered to be the equivalent of a
‘vehicle’ such as a ‘transportation vehicle’ or ‘truck,” again without
discussing Bourgoin in the context of either Section 102 or Section 103.
(Resp. Br. 5).
The Decision presented the issue for resolution in this appeal as
“Under § 102, does Bourgoin disclose a material handling vehicle?”
Decision 5.
In its Request for Rehearing, Acme now contends that the Board
should reverse itself based upon the Board’s statement of the issue as being
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based solely on Section 102.1 For example, Acme contends that “Bourgoin
does not anticipate the invention and requests withdrawal of the new
grounds of rejection” (Reh. Req. 3) and “the Bourgoin reference is not an
appropriate reference to support a rejection under 35 U.S.C. § 102.” (Reh.
Req. 4). Acme further contends that “[t]he new grounds of rejection are all
based on the erroneous decision by the Board that the Bourgoin reference is
an appropriate reference to support a rejection under 35 U.S.C. § 102 and to
provide[] a primary foundational reference under 35 U.S.C. § 103 either
alone, or in combination” with the secondary references. Reh. Req. 9.
According to Acme, “the failure of Bourgoin to disclose a material handling
vehicle means that it must fail as a reference to support any of the rejections
set forth in the new grounds of rejection.” (Reh. Req. 10) (emphasis added).
Based upon Acme’s arguments, we conclude that the issue stated in
the Decision was too narrowly stated. We modify the issue on appeal to be
Does Bourgoin Disclose, Or Teach Or
Suggest, A Material Handling Vehicle?
Bourgoin discloses that its table is a material handling vehicle
and alternatively suggests and teaches that its table can be used
as a material handling vehicle

Bourgoin discloses “a system for measuring the characteristics of an
object,” which may be a package. Col. 1, ll. 5-8. The system is used in an
industrial environment (col. 2, ll. 58-59) and may be used in the following
exemplary fields: express parcel transport and shipment of parcels; stock
management, storage, handling, and warehouses; packaging. Col. 2, l. 66-

1 Under 37 C.F.R. § 41.79(b)(3), “[n]ew arguments responding to a new
ground of rejection made pursuant to § 41.77(b) are permitted.”
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col. 3, l. 4. The system includes scales 10 equipped with a weighing
platform (col. 2, ll. 16-18; col. 3, l. 26) and the object/package is placed on
the scale platform. Col. 6, ll. 10-11. In one embodiment, the system “is
composed of four hardware assemblies [including] a mechanical module
which supports the other four modules and comprises a table 21 with rollers
to facilitate its displacement.” Col. 4, ll. 11-16. “[T]he system . . . is placed
on a table 21 fitted with rollers, so that it can be displaced to suit the user’s
needs.” Col. 3, ll. 41-43. Measurements may be carried out by a single
independent machine. Col. 2, ll. 60-63. “[T]he objects to be measured are
placed on the machine at the center of the scales for the measurements.”
Col. 5, ll. 59-61. “[T]he machine may be moved in workshops or to other
sites.” Col. 2, l. 6.
Although Acme asserts that the ‘946 Patent defines some terms (see
Reh. Req. 5, citing col. 2, ll. 32-41; col. 4, ll. 11-17), Acme does not cite to a
specific definition of the term “material handling vehicle.” Instead, Acme
“primarily relies on the ‘ordinary and customary meaning’” and asserts that
“these term clarifications act as a glossary for the meaning of these terms in
the context of the ‘946 Patent and the associated claims.” Reh. Req. 5.
Acme also relies upon the ‘946 Patent’s “numerous references to the specific
claim term ‘material handling vehicle’” (Reh. Req. 5).
Acme acknowledges, as it must, that the ‘946 Patent states that “[t]he
term material handling vehicle is meant to broadly include transportation
vehicles such as, for example, but not limited to, a fork lift truck, a flatbed
truck, or a pallet truck.” Reh. Req. 5, citing col. 2, ll. 38-41. Acme argues
that the word “broadly” should be considered as limited to the specific sub-
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species of “material handling ‘transportation vehicle’” identified as trucks.
Reh. Req. 5.
We disagree with Acme’s assertion. First, the ‘946 Patent does not
limit its reference to “transportation vehicles” only to the trucks identified at
column 2, lines 38-41. Instead, it states that its system “may be used to
determine the weight of people aboard a transportation vehicle, such as a
bus.” Spec., col. 2, ll. 36-38 (emphasis added). Second, although parts of
the ‘946 Patent refer specifically to a “material handling vehicle 16” (see,
e.g. col. 2, ll. 45-46, 57; col. 4, ll. 46-47) many parts of the ‘946 Patent more
generally refer to element 16 as a “vehicle,” rather than as the more limited
“material handling vehicle.” See, e.g., col. 2, ll. 61, 63; col. 3, ll. 7, 9, 20-21,
40, 47. Third, the ‘946 Patent repeatedly states that the concepts and
embodiments shown in the drawings are not restrictive and are only
illustrative. See col. 2, ll. 6-10, 25-31; col. 5, ll. 22-42.
Fourth, the ‘946 Patent states that it is “a system and method for
determining the dimension and weight of products on or in forklifts, pallets,
or lift trucks” (Col. 1, ll. 48-49); again, not limiting the invention to the use
of trucks. A “pallet” is, for example, “a portable platform for handling,
storing, or moving materials and packages (as in warehouses, factories, or
vehicles).” Webster’s Ninth New Collegiate Dictionary (Merriam-Webster
Inc. 1986) (“Merriam-Webster”) 848. A pallet is therefore not necessarily a
truck.
In addition, we note that claim 8 of the ‘946 Patent, as originally filed
on April 18, 2005, recited “the material handling vehicle being one of a fork
lift, a lift truck, a flat bed, and a pallet truck.” Originally filed claims are
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part of the original disclosure. See MPEP 2163.05; 35 U.S.C. § 112, second
paragraph (“the specification shall conclude with one or more claims”); In re
Benno, 768 F.2d 1340, 1346 (Fed. Cir. 1985) (“claims [are] technically part
of the ‘specification,’ 35 USC 112, 2d par.”). Claim 8, as originally filed,
thus recites a “fork lift,” not a “fork lift truck” and a “flat bed,” not a “flat
bed truck,” thereby disclosing and suggesting embodiments that are not
“trucks.” Therefore, this originally filed disclosure indicates that the ‘946
Patent as originally filed was not limited to trucks.
Similarly, claim 22, dependent from claim 9 and contained in the ‘946
Patent when it issued, recites “the material handling vehicle being one of a
fork lift, a lift truck, a flat bed, and a pallet truck.” Consequently, the
recitation of such specific structure in claim 22, which depends from claim
9, indicates that claim 9 does not include that specific structure. See Phillips
v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (the presence
of a dependent claim adding a particular limitation creates a presumption
that the limitation is not present in the independent claim). That is, the
doctrine of claim differentiation creates a presumption that claim 9 does not
contain the limitation of claim 22, as “’the presence of a dependent claim
that adds a particular limitation raised a presumption that the limitation in
question is not found in the independent claim.’” Bancorp Serv. V. Sun Life
Assurance Co., 687 F.3d 1266, 1275 (Fed. Cir. 2012) (citation omitted). See
also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir.
2004) (the doctrine of claim differentiation is at its strongest where
Appellant wants to read a feature from a dependent claim into a term in an
independent claim). The doctrine of claim differentiation therefore means
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that “material handling vehicle” in claim 9 is not limited to, and does not
include, the fork lift, lift truck, flat bed, or pallet truck recited in claim 22.
In addition, Acme does not cite us to, and we do not find, an explicit
definition of “material handling vehicle” that requires the vehicle to be a
truck. Instead, the cited portions of the ‘946 Patent merely describe
preferred embodiments which use trucks. The Specification also uses the
qualifying terms “such as” and “for example”: “a transportation vehicle,
such as a bus” (col. 2, ll. 37-38); “material handling vehicle . . . such as, for
example, but not limited to” (col. 2, ll. 38-40). These descriptions do not
limit the vehicles to trucks.
Furthermore, it is well settled that even if a patent describes only a
single embodiment, the patent’s claims are not limited to that embodiment
absent a clear intent to limit the claims’ scope using words or expressions of
manifest exclusion or restriction. Liebel-Flarsheim Co., 358 F.3d at 906;
See also Gillette Co. v Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed.
Cir. 2005) (“’[W]ords or expressions of manifest exclusion’ or ‘explicit’
disclaimers in the specification are necessary to disavow claim scope.”).
Acme has not identified – nor can we find – any such manifest exclusionary
or restrictive intent on this record to support Acme’s sought-after narrow
construction of “material handling vehicle” as Acme indicates.
This is also not a case where the Specification defines the term by
implication as Acme suggests. See Reh. Req. 6 (“The specification clearly
provides specific clarification to help interpret the plain meaning of material
handling vehicle.”) See also Phillips, 415 F3d at 1321 (“Even when
guidance is not provided in explicit definitional format, the specification
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may define claim terms by implication such that the meaning may be found
in or ascertained by a reading of the patent documents.”) (citations and
internal quotation marks omitted). Rather, this is a case where the recited
material handling vehicle is, at best, described in connection with certain
embodiments: a description that hardly limits the term’s broadest reasonable
interpretation in light of the Specification.
A truck, moreover, can be defined as “a small heavy rectangular
frame supported on four wheels for moving heavy objects;” “a shelved stand
mounted on casters.” Merriam-Webster 1266. Bourgoin’s table fits this
definition.
Acme contends that Bourgoin’s table 21 fitted with rollers does not
provide any form of “transportation” because the rollers only “incidentally”
allow the table to be displaced to suit the user’s needs (Reh. Req. 6-7) and
that the table is “a primarily stationary device.” Reh. Req. 8. Acme neither
cites anything in Bourgoin in support of its “incidental” and “primarily
stationary” assertions nor provides any evidence in support of its
contentions. Acme also does not provide a definition of “transport” that
excludes a purported incidental displacement of the table. In fact,
“transport” can be defined as “to transfer or convey from one place to
another < mechanisms of ~ ing ions across a living membrane>2.” Merriam-
Webster 1255. Bourgoin’s wheeled table transfers or conveys the illustrated

2 “Definitions are sometimes followed by verbal illustrations that show a
typical use of the word in context. These illustrations are enclosed in angle
brackets and the word being illustrated is usually replaced by a lightface
swung dash. The swung dash stands for the boldface entry word.”
Merriam-Webster 18.
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machine, including the object 23 and the scales 10 from one place to
another, regardless of whether the movement is incidental or not, thereby
transporting them.
Our original decision states that “we do not discern that the ‘946
Patent provides any clear and explicit lexicographic definition of the term
‘material handling vehicle.’” Decision 11. Acme has still not pointed us to
any such clear and explicit lexicographic definition of the term.
Based on the above discussion, we maintain our conclusion that
Bourgoin discloses a material handling vehicle. We also conclude that one
of ordinary skill in the art would have viewed Bourgoin as teaching or
suggesting that Bourgoin’s table with rollers could be used to transport the
package or object 23 from one location to another location, thereby using it
as a material handling vehicle.
DECISION
For all of the above reasons, we GRANT rehearing and modify the
issue to be decided on appeal; but we DENY the relief Acme has requested
and adhere to our decision that designates the new grounds of rejection.
REHEARING GRANTED-IN-PART
This Rehearing decision “is deemed to incorporate the earlier opinion
reflecting [the Board’s] decision for appeal.” 37 C.F.R. § 41.79(d). This
Rehearing decision is hereby designated, with respect to the facts addressed
here, “in effect, a new decision, . . . [and] any party may within one month
of the new decision, file a further request for rehearing of the new decision
under this subsection. Such request for rehearing must comply with
paragraph (b) of this subsection.” 37 C.F.R. § 41.77(d).
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PATENT OWNER:
BARNES & THORNBURG LLP
ONE NORTH WACKER DRIVE
SUITE 4400
CHICAGO, IL 60606-2809

THIRD PARTY REQUESTER:
ECKERT SEAMANS CHERIN & MELLOTT, LLC
600 GRANT STREET, 44TH FLOOR
PITTSBURGH, PA 15219