Ex Parte Birk et al

Board of Patent Appeals and Interferences

Jun 27, 2007

10240329 (B.P.A.I. Jun. 27, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte UZI BIRK and HANS MARTIN SJOLUND
____________

Appeal 2006-2786
Application 10/240,329
Technology Center 3600
____________

Decided: June 27, 2007
____________

Before BRADLEY R. GARRIS, THOMAS A. WALTZ and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal the final rejection of claims 1, 3-5, 7-9, and 11-23
under 35 U.S.C. § 134. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.

INTRODUCTION
Appellants invented a method and apparatus for separating foremilk in
an automatic milking process (claims 1 and 9; Specification 2). Appellants’
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method and apparatus senses the transparency of the milk to electromagnetic
radiation to determine when the transition from foremilk to good quality
milk occurs (Specification 2-3). Once the transition from foremilk to good
quality milk is sensed, a controller regulates a valve to switch the milk flow
from a waste milk container for the foremilk to a collection vessel for the
good milk (Specification 3).
Claims 1, 4, 5, 9, 15, and 19 are illustrative:
1. A method of separating foremilk in an automatic milking process,
comprising controlling a means operable to divert foremilk away from a
milk line in accordance with a sensed optical property of the milk whereby
the amount of foremilk separated is dependent upon the sensed optical
property, the sensed optical property being transparency of the milk to
electromagnetic radiation.

4. A method according to claim 1, wherein separation of the foremilk
is terminated upon the sensed milk transparency rising after the milk opacity
reaches an initial peak after the start of milking.

5. A method of milking an animal wherein milk extracted from a teat
of an animal is directed along a milk path to a container, an initial portion of
the milk extracted from the teat being diverted from the milk path, an optical
property of the milk extracted from the teat is sensed, the sensed optical
property being the transparency of the milk to electromagnetic radiation, and
the diversion of the initial milk flow from the milk path leading to the
container is controlled in dependence upon the sensed optical transparency.

9. An apparatus for the automatic milking of animals comprising a
teat cup connected to a main milk line through which milk extracted from a
teat is conveyed, a device for directing milk to flow through the main milk
line or to a branch line, control means for controlling the device so that an
initial amount of milk extracted from a teat is directed into the branch line,
and an optical sensing means for sensing an optical property of the milk
upstream of the flow directing device, wherein the optical sensing means
comprises a device that senses the transparency of the milk and produces a
signal dependent on the milk transparency, and the control means receives
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the signal produced by the optical sensing means and detects a
predetermined change in the transparency sensed by the optical sensing
means, the control means operating the flow directing device to terminate
the flow of milk into the branch line and to direct the milk to flow through
the main milk line in response to the predetermined change in the milk
transparency being detected.

15. An automatic milking method in which premilking is performed to
remove foremilk prior to a main milking stage, wherein transparency of the
milk is sensed at least during an initial period of the main milking stage and
therefrom it is determined whether premilking was carried out correctly.

19. An automatic milking apparatus comprising means for premilking
a teat from an udder, a teat cup for attachment to the teat after premilking for
carrying out a main milking stage in which milk extracted by the teat cup is
conducted through a milk line to a container, and a transparency sensing
means for sensing the transparency of the milk extracted from the teat by the
teat cup, wherein the transparency sensing means produces a signal
dependent on the milk transparency, and a control device is provided to
receive the signal produced by the transparency sensing means and detect a
predetermined change in the transparency sensed by the transparency
sensing means whereby the transparency falls initially and then rises at the
beginning of milk extraction during the main milking stage, and wherein a
means controlled by the control device is provided to interrupt delivery of
milk to the container in response to the predetermined change in
transparency detected by the control device.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Tamas US 4,190,020 Feb. 26, 1980
Brayer US 5,116,119 May 26, 1992
Petterson WO 99/31966 Jul. 1, 1999

The rejections as presented by the Examiner are as follows:
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1. Claims 1, 3-5, 7-9, 11-20, 22, and 23 are rejected under 35 U.S.C.
§ 102(a) as being unpatentable over Petterson.
2. Claims 15-23 are rejected under 35 U.S.C. § 102(b) as being
unpatentable over Tamas.
3. Claims 1, 3-5, 7-9, and 11-14 are rejected under 35 U.S.C. § 103(a)
over Tamas in view of Brayer.
4. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
Petterson in view of Tamas.

Regarding the § 102(a) rejection over Petterson, Appellants separately
argue claims 1, 4, 5, 8, 9, and 19. Accordingly, claims 3, 7, 11-18, and 20-
23 stand or fall with claims 1, 4, 5, 8, 9, and 19.
Regarding the § 102(b) rejection over Tamas, Appellants separately
argue claims 15 and 19. Accordingly, claims 16-18, and 20-23 stand or fall
with claims 15 and 19.
Regarding the § 103(a) rejection over Tamas in view of Brayer,
Appellants separately argue claims 1, 5, and 9. Accordingly, claims 3-4, 7-8
and 11-14 stand or fall with claims 1, 5, and 9.

OPINION
35 U.S.C. § 102(a) REJECTION OVER PETTERSON

INDEPENDENT METHOD CLAIMS 1 AND 5
Appellants argue that Petterson fails to disclose that sensing the
transparency of the milk may be used as a means to control any aspect of the
method (Br. 7). Appellants contend that Petterson does not disclose
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separating foremilk, rather, Petterson senses whether milk, be it foremilk or
normal milk, has blood or clots and then discards the milk if it does contain
blood or clots or sends it to the collection vessel if it does not contain blood
or clots (Br. 7-8). Appellants further argue that Petterson’s embodiment of
Figures 7 and 8 does not show “means operable to divert foremilk away
from a milk line” (Br. 8)
We cannot agree with Appellants’ arguments for the reasons
discussed below.
Petterson discloses a method and apparatus for sensing milk quality to
ensure that “no foremilk or milk not suitable for human consumption comes
into the milk line system including the milk tank” (Petterson 6, ll. 19-22;
Figure 1). Petterson describes Figure 1 as “. . . an apparatus for separation,
analysing and taking care of foremilk according to the invention” (Petterson
4). To ensure that “no foremilk” comes into the milk tank or milk line,
Petterson uses sensing means 36 to analyze the milk quality and send a
signal to control unit 14 (Petterson 6-7). The control unit 14 controls valve
device 32 and three-way valve 37 depending upon the milk quality sensed
by sensing means 36 (Petterson 7). Petterson’s sensing means 36 may be
“light emitting diodes (LED), light sensing means, infrared detectors and
video systems. . .” (Petterson 11).
Appellants disclose that the sensing means used in their method and
apparatus for separating foremilk includes “a light source, such as a light
omitting [sic emitting] diode and a photosensitive component, e.g. a
phototransistor” (Specification 3).
Therefore, Petterson’s sensing means are the same as Appellants’
sensing means (i.e., a light emitting diode and a photosensitive component
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(i.e., a light sensing means)). Because both sensing means are the same they
must sense the same property (i.e., transparency of the milk). Accordingly,
we find that Petterson’s sensing means for detecting the presence of blood or
clots performs this function by detecting a change in transparency.
Moreover, Appellants state that milk transparency varies with the “fat
and protein content” of the milk (Br. 10). Thus, changes in protein and fat
content will affect the transparency of the milk. Blood and clots contain
protein1 such that the additional protein added to the milk by the blood and
clots would affect the transparency of the milk and would be sensed by the
sensing means (i.e., light emitting diodes). Therefore, Petterson’s detection
of blood and clots involves measuring the transparency of the milk. For
these reasons, we find that Petterson discloses sensing the transparency of
the milk.
Petterson further discloses that the sensing means 36 (i.e.,
transparency sensor) sends a signal regarding milk quality to control unit 14,
which controls three-way valve 37 (i.e., “means operable to divert foremilk
away from a milk line” (claim 1)) to send the milk to either a waste tank 22
or milk tank 20 depending upon the signal from the sensing means 36
(Petterson, 6, l. 14 to 7, l. 1-15). Therefore, contrary to Appellants’
arguments, Petterson discloses using transparency to determine milk quality
and, based upon the transparency measured, where the milk should be sent
(i.e., the waste tank or milk tank).
Regarding Appellants’ argument that Petterson does not distinguish
between foremilk and “normal milk” (Br. 8), we understand Petterson’s

1 Hawley’s Condensed Chemical Dictionary, 12th Ed., “blood,” p. 157, ©
1993.
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disclosure as stating that all foremilk is separated out so as to prevent any of
the foremilk from entering a milk line or milk tank 20. Specifically,
Petterson states:
Hence, by setting a predetermined value in the control unit 14, which
depends on the required milk quality it is possible to ascertain that no
foremilk or milk not suitable for human consumption comes into the
milk line system including the milk tank. (emphasis added) (Petterson
6, ll. 19-22).

From this disclosure it is clear that Petterson uses control unit 14 to operate
the apparatus to remove all foremilk so that “no foremilk” enters the milk
line system including the milk tank. Control unit 14 is disclosed as being
coupled to sensing means 36 to perform the foremilk removal (Petterson 6-
7).
Petterson also states that Figure 1 “is a general diagram of an
apparatus for separation, analysing and taking care of foremilk according to
the invention” (emphasis added), and Figure 2 “is a diagram of an example
of an arrangement of devices, which are included in the apparatus according
to fig. 1” (Petterson, 4). This disclosure further underscores that Petterson
discloses a method and apparatus for separating out the foremilk.
For the above reasons we are not persuaded by Appellants’ arguments
regarding the § 102(a) rejection of claims 1 and 5 over Petterson.

DEPENDENT METHOD CLAIMS 4 AND 8
Claims 4 and 8 depend upon claims 1 and 5, respectively, and are
rejected under § 102(a) over Petterson. Appellants argue that Petterson does
not disclose the following feature of claims 4 and 8: “separation of the
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foremilk is terminated upon the sensed milk transparency rising after the
milk opacity reaches an initial peak after the start of milking” (claims 4 and
8) (Br. 8-9).
We cannot agree with Appellants’ arguments for the reasons below.
As previously noted in our discussion of claims 1 and 5, Petterson
discloses a method for separating foremilk using a transparency sensing
means 36 (Petterson, 6, l. 14 to 7, l. 10). That is, the transparency sensing
means 36 for sensing the presence of clots or blood performs this function
by sensing the transparency of the milk (See our discussion in the CLAIMS
1 AND 5 section of this opinion).
Based on our previous analysis regarding claims 1 and 5, the presence
of blood or clots translates into an increase in the opacity of the foremilk due
to an increase in protein in the foremilk from the blood or clots.
Correspondingly, as the amount of blood or clots in the foremilk decreases,
the transparency of the foremilk increases. Thus, Petterson’s sensing means
36 sends a signal to the control unit 14 indicating the increase in
transparency, and the control unit 14 sends a signal to the three-way valve
37 to control separation in accordance with the transparency measurement
(Petterson, 6, l. 14 to 7, l. 10).
From the foregoing discussion, we find that Petterson satisfies the
termination step of claims 4 and 8.

INDEPENDENT APPARATUS CLAIMS 9 AND 19
Appellants argue that Petterson does not disclose the following claim
features: (1) “control means that receives the signal produced by the optical
sensing means and detects a predetermined change in the transparency
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sensed by the optical sensing means, the control means operating the flow
directing device to terminate the flow of milk into the branch line and to
direct milk to flow through the main milk line in response to the
predetermined change in the milk transparency being detected” (claim 9)
(Br. 9), and (2) “a control device provided to receive the signal produced by
the transparency sensing means and detect a predetermined change in the
transparency sensed by the transparency sensing means whereby the
transparency falls initially and then rises at the beginning of milk extraction
during the main milking stage, and wherein a means controlled by the
control device is provided to interrupt delivery of milk to the container in
response to the predetermined change in transparency detected by the
control device”2 (claim 19) (Br. 9).
As we previously indicated in our discussion of claims 1 and 5,
Petterson discloses a control unit 14 which receives signals from sensing
means 36 and uses those signals to control the three-way valve 37 to either
direct the foremilk into the waste tank 22 or milk tank 20 (Petterson 6, l. 14
to 7, l. 10). Thus, Petterson discloses “control means [i.e., control unit 14]
operating the flow directing device [i.e., three-way valve 37] to terminate the

2 Neither Appellants nor the Examiner has expressly interpreted the “means-
plus-function” language of these claims. In any event, when properly
interpreted, the here claimed “means” encompasses the structure of
Petterson. For example, Petterson’s “three-way valve” is the same as
Appellants’ “means” for interrupting delivery of milk as recited in claim 19
with the corresponding structure (i.e., a three-way valve) for such “means-
plus-function” language recited in claim 21 (which ultimately depends on
claim 19) and disclosed on page 6, lines 12-19 of the Specification. In re
Donaldson, 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994)
(en banc).
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flow of milk into the branch line and to direct the milk to flow through the
main milk line” (claim 9) and “means controlled by the control device is
provided to interrupt delivery of milk to the container” (claim 19) (i.e.,
three-way valve 37), which are controlled based on the transparency sensed
by sensing means 36.
We also add that since claims 9 and 19 are apparatus claims, they
must structurally define over the prior art. In re Schreiber, 128 F.3d 1473,
1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Petterson’s milking
apparatus structurally satisfies each of Appellants’ features of claims 9 and
19 such that it need only be capable of performing Appellants’ functional
recitations. Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. Petterson’s
apparatus is structured (i.e., the control means 14 receives a signal from the
sensing means 36 and the signal is used to control three-way valve 37 and
valve device 32) such that it is capable of performing the recited functions.
Accordingly, Petterson discloses both of Appellants’ argued features
of claims 9 and 19.
Based on the foregoing analysis of claims 1, 4, 5, 8, 9, and 19, we
affirm the Examiner’s § 102(a) rejection of argued claims 1, 4, 5, 8, 9, and
19 and non-argued claims 3, 7, 11-18, 20, 22, and 23 over Petterson.

35 U.S.C. § 102(b) REJECTION OVER TAMAS
INDEPENDENT METHOD CLAIM 15 AND APPARATUS CLAIM 19
Appellants argue that Tamas uses a color sensor, not a transparency
sensor, to sense bloody and purulent milk (Br. 11, 13). Appellants further
contend that Tamas removes the foremilk based on “a predetermined
duration or determined by a unit of time or within a certain number of pulses
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[of the milking machine]” such that Tamas does not use transparency
sensing to control foremilk removal (Br. 11).
We agree with the Appellants’ arguments for the reasons discussed
below.
Claim 15 recites that the “transparency of the milk is sensed at least
during an initial period of the main milking stage” (claim 15). Claim 19
recites “a transparency sensing means for sensing the transparency of the
milk extracted from the teat by the teat cup” (claim 19). In contrast, Tamas
discloses that “segregation of bloody, and purulent milk respectively is
accomplished on the basis of its colour” (Tamas, col. 2, ll. 18-19).
Moreover, Tamas discloses that the “first squirts of milk” (i.e., the foremilk)
are removed based upon the “length of time” or “number of pulses,” not the
sensed transparency (Tamas, col. 1, l. 61 to col. 2, l. 6).
Therefore, Tamas does not disclose either expressly or inherently the
claim features “the transparency of the milk is sensed” (claim 15) or “a
transparency sensing means” (claim 19). Anticipation requires that each
claim feature be found either expressly or inherently in the prior art.
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987). It follows that Tamas fails to
anticipate claims 15 and 19.
We reverse the Examiner’s § 102(b) rejection over Tamas of
independent claims 15 and 19 and of dependent claims 16-18 and 20-23.

35 U.S.C. § 103(a) REJECTION OVER TAMAS IN VIEW OF BRAYER
As discussed above regarding the § 102(b) rejection over Tamas,
Tamas fails to discloses sensing the transparency of the milk or using a
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transparency sensor. Rather, Tamas uses a sensor that determines the
presence of blood in the milk based on colour (Tamas, col. 2, ll. 15-20).
Moreover, Tamas uses a predetermined duration to segregate the “first
squirts of milk” (i.e., the foremilk), not a sensing means.
Brayer discloses a method and apparatus for measuring liquid flow,
especially the flow of milk (Brayer, col. 1, ll. 7-9). The method and
apparatus includes light sources (20, 22) and detectors (24, 26) for
determining the velocity and composition (transparency) of the milk flowing
through the apparatus (Brayer, col. 1, ll. 42-57, col. 3, ll. 30-34, col. 4, ll. 22-
31, 47-50). Brayer does not disclose sensing foremilk.
Therefore, even if Brayer’s disclosure that “the sensed optical
property is the transparency of the milk to electromagnetic radiation”
(Answer 8, 9, and 10) is combined with Tamas’ method and apparatus for
providing sterile milk free from blood and pus, one would not achieve the
claimed invention. The claimed invention requires that a transparency
sensor be used to direct foremilk (claim 1), “[an] initial milk flow” (i.e.,
foremilk) (claim 5) or “an initial amount of milk extracted from a teat” (i.e.,
foremilk) (claim 9) to a branch line to avoid contaminating the collection of
the main supply of milk. Neither Tamas nor Brayer discloses sensing the
transparency of foremilk.
Moreover, the combination of Brayer’s transparency sensor with
Tamas’ apparatus for providing sterile milk free from pus and blood would
not produce an apparatus capable of performing the function recited in
apparatus claim 9. The Examiner concludes that it would have been obvious
to “add the sensed optical property being the transparency of the milk to
electromagnetic radiation of Brayer” to “the method of Tamas” so as to
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accurately measure the flow of milk (Answer 10). Thus, according the
Examiner, Brayer’s optical sensor would be added to, not substituted for,
Tamas’ color sensor. Accordingly, the apparatus resulting from the
Examiner’s proposed combination of Brayer’s transparency sensor with
Tamas’ apparatus for providing sterile milk free from pus and blood would
not be structured such that the “optical sensing means” (i.e., transparency
sensor) sends a signal to the “control means” to control the flow of the milk
into the “branch line” or the “main milk line” as required by claim 9. Rather,
in accord with Tamas’ disclosure, the colour sensor would control the flow
of the milk based on sensed color changes in the milk caused by blood or
pus. In another words, the Examiner’s proposed combination of Tamas and
Brayer would not be capable of performing the recited functions in claim 9
because the claimed apparatus and the apparatus resulting from the proposed
combination are structurally different. Schreiber, 128 F.3d at 1478, 44
USPQ2d at 1432.
For the above reasons, we reverse the Examiner’s § 103(a) rejection
of independent claims 1, 5, and 9, and dependent claims 3-4, 7-8, and 11-14
over Tamas in view of Brayer.

35 U.S.C. § 103(a) REJECTION OVER PETTERSON IN VIEW OF
TAMAS
Claim 21 recites that the “means for interrupting delivery of milk
comprises a three-way valve.”
Appellants have not separately argued the rejection of claim 21 which
ultimately depends on claim 19. Rather, Appellants rely on the same
arguments made previously regarding the rejection of claim 19 under
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§102(a) over Petterson or under § 102(b) over Tamas. Namely, Appellants
argue that neither Petterson nor Tamas “ha[s] anything to do with the
detection of the transition of a flow of milk from foremilk to normal milk by
monitoring the transparency of the milk” (Br. 17). However, we were
unpersuaded by this argument regarding the § 102(a) rejection over
Petterson for the reasons discussed above.
We add that Petterson discloses a three-way valve 37 for diverting the
milk to either a milk tank 20 or a waste tank 22 depending upon the
transparency value sensed by sensing means 36 (Petterson, 6, l. 14 to 7, l.
10). Accordingly, Petterson’s disclosure anticipates claim 21. Anticipation
is the epitome of obviousness. In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571(CCPA 1982).
For these reasons, we affirm the Examiner’s § 103(a) rejection of
claim 21 over Petterson in view of Tamas.
DECISION
The Examiner’s rejection of claims 1, 3-5, 7-9, 11-20, 22, and 23
under 35 U.S.C. § 102(a) as being unpatentable over Petterson is
AFFIRMED.
The Examiner’s rejection of claim 21 under 35 U.S.C. § 103(a) as
being unpatentable over the Petterson in view of Tamas is AFFIRMED.
The Examiner’s rejection of claims 15-23 under 35 U.S.C. § 102(b) as
being unpatentable over Tamas is REVERSED.
The Examiner’s rejection of claims 1, 3-5, 7-9, and 11-14 under
35 U.S.C. § 103(a) over Tamas in view of Brayer is REVERSED.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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Stinson Morrison Hecker LLP
Attn: Patent Group
1201 Walnut Street, Suite 2800
Kansas City, MO 64106-2150

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