Ex parte Chiappe et al.

Board of Patent Appeals and Interferences

Jul 29, 1999

08462133 (B.P.A.I. Jul. 29, 1999)

Application for patent filed June 5, 1995. According to appellants,1
this application is a continuation of Application 08/203,871, filed March 1,
1994; which is a continuation of Application 08/000,594, filed January 5,
1993; which is a continuation of Application 07/787,730, filed November 4,
1991; which is a continuation of Application 07/550,476, filed July 10, 1990
(now abandoned).
1
Paper No. 47
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte WAYNE T. CHIAPPE
and
RANDY W. GASQUOINE
______________
Appeal No. 97-1754
Application 08/462,1331
_______________
ON BRIEF
_______________
Before FRANKFORT, STAAB, and BAHR, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
Appeal No. 97-1754
Application 08/462,133
2
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 2 and 3, all the claims currently pending in the
application. An amendment to the specification filed
subsequent to the final rejection has been entered.
Appellants’ invention pertains to an apparatus for
regulating the flow of articles from an upstream work station
to a downstream work station, and is said to be an improvement
over appellants’ earlier flow regulating apparatus disclosed
in U.S. Patent No. 4,808,057. Claims 2 and 3, a copy of which
is found in an appendix to appellants’ main brief, define the
appealed subject matter.
The references relied upon by the examiner as evidence of
obviousness are:
Chiappe et al. (Chiappe) 4,808,057 Feb. 28,
1989
Murphy et al. (Murphy) 4,946,340 Sept. 30, 1988
Mojden et al. (Mojden) 4,979,870 May 18, 1988

Claims 2 and 3 stand rejected under 35 U.S.C. § 112,
second paragraph, “as being indefinite for failing to
Appeal No. 97-1754
Application 08/462,133
3
particularly point out and distinctly claim the subject matter
which applicant regards as the invention” (answer, page 3).
Claims 2 and 3 stand further rejected under 35 U.S.C. §
103 as being unpatentable over Chiappe in view of Murphy and
Mojden.
The rejections are explained in the examiner’s answer
(Paper No. 40).
The opposing viewpoints of appellants are set forth in
the main brief (Paper No. 39) and the reply brief (Paper No.
42).
The 35 U.S.C. § 103 Rejection
Considering first the standing § 103 rejection, for
reasons stated infra in our treatment of the examiner’s
rejection of the appealed claims under 35 U.S.C. § 112, second
paragraph, we have encountered considerable difficulty
understanding the meaning of certain terminology appearing in
appealed claim 2. Normally a claim which fails to comply with
the second paragraph of § 112 will not be analyzed as to
Appeal No. 97-1754
Application 08/462,133
All references herein to line numbers for the appealed claims are 2
with respect to the claims as they appear in the appendix to appellants’
main brief.
4
whether it is patentable over the prior art since to do so
would of necessity require speculation with regard to the
metes and bounds of the claimed subject matter. See In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962) and
In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970). Nevertheless, in the case of claim 2, we are of the
opinion that the examiner’s § 103 rejection cannot be
sustained based on those portions of the claim that are
understandable. Specifically, appealed claim 2 at lines 28-
38 calls for2
at least one pallet feeding assembly
including a vertically extending elevator
shaft perpendicularly intersecting the
transfer station at a said storage
placement and retrieval area, said pallet
feeding assembly further including an empty
pallet staging area and a filled pallet
staging area, each of said staging areas
extending normally to the elevator shaft in
spaced vertical relation to each other . .
. . [Emphasis added.]
This arrangement is shown, for example, in appellants’ Figures
Appeal No. 97-1754
Application 08/462,133
5
4 and 5, wherein in the center of each figure there is shown a
vertical elevator shaft, and to the right thereof a pallet
staging area comprising an upper storage area for empty
pallets overlying a lower storage area for filled pallets.
Chiappe, the examiner’s primary reference, is appellants’
prior art jumping off point. With reference to Figure 1,
Chiappe operates generally in the same manner as appellants’
claimed apparatus in the sense that when the output flow of
articles from upstream work stations 14-22 matches the demand
for articles by downstream work stations 34a-34c, regulating
apparatus 46 simply moves articles from inbound lanes 26a,
26b, etc. to outbound lanes 30a, 30b, etc. However, when the
output flow of articles from the upstream work stations does
not match the demand for articles by the downstream work
stations, regulating apparatus functions to either (a) add
extra articles to the flow of articles, as when downstream
demand excesses upstream supply, or (b) remove extra articles
from the flow, as when downstream demand is less than upstream
supply.
Appeal No. 97-1754
Application 08/462,133
6
Looking now at Figures 6 and 7 of Chiappe, groups of
articles to be either added to or removed from the flow of
articles are stored in trays 64. In particular, empty trays
are stored to the right of the inbound and outbound lanes in
empty tray magazine 50 and filled trays are stored to the left
of the inbound and outbound lanes in filled tray magazine 52.
Articles are loaded onto or removed from a tray 64 in deposit
and retrieval area 51 by means of a transfer head. When there
is a need to add articles to the flow and a tray 64 in area 51
becomes empty, it is moved to the right by a conveyor to
magazine 50 and replaced by a filled tray from magazine 52.
Conversely, when there is a need to remove articles from the
flow and a tray 64 in area 51 becomes filled, it is moved to
the left by the conveyor to magazine 52 and replaced by an
empty tray from magazine 50. As is readily apparent from an
inspection of Figure 6, the empty tray storage magazine 50 and
the filled tray storage magazine 52 are not spaced in vertical
relation to each other.
Murphy is directed to a parts unloading apparatus. A
pallet of trays filled with articles enters the apparatus on
Appeal No. 97-1754
Application 08/462,133
7
infeed conveyor 50 and is elevated by scissors lift 36 to an
unloading station where the topmost tray is unloaded. The
unloaded tray is then conveyed to an adjacent scissors lift 38
where it is temporarily stored. Thereafter, the next tray on
the scissors lift 36 is elevated to the unloading station for
unloading. As the process is repeated, filled trays are
unloaded and trans-ferred from lift 36 to lift 38.
Eventually, scissors lift 38 is lowered and a pallet of empty
trays leaves the apparatus via outfeed conveyor 60 for
recycling. As is apparent from a review of Figure 2, the
storage areas for filled and empty trays defined in part by
scissors lifts 36 and 38 are not in spaced vertical relation
to each other.
Mojden pertains to an apparatus for regulating the flow
of articles from an upstream work station to a downstream work
station. With reference to Figures 1 and 2, each and every
one of the inbound articles from work station 25 is unloaded
from inbound lanes onto trays 55, which trays when filled are
transferred from empty tray stack table 60 to filled tray
stack table 62. The stacks of filled trays are then conveyed
Appeal No. 97-1754
Application 08/462,133
8
either directly by conveyor 40 to a similar unloading station
on the opposite side of the apparatus for unloading articles
onto outbound lanes, or to a storage area 41 to be held for
use later as desired. As can be seen in Figure 2, storage
areas defined in part by the empty tray stacking table 60 and
the filled tray stacking table 62 are not in spaced vertical
relation to each other.
In rejecting claim 2, the examiner has taken the position
on page 4 of the answer that it would have been obvious “[t]o
modify the apparatus of Chiappe et al so as to provide means
to feed a pallet full of trays to the elevator area” in view
of Murphy, and “[t]o modify the apparatus of Chiappe et al so
as to move the transfer head, as claimed” in view of Mojden.
However, even if it would have been obvious to one of ordinary
skill in the art to modify Chiappe in the manner proposed by
the examiner in light of the teachings of the secondary
references, a prima facie case of obviousness would not ensue.
This is so because none of the applied references discloses,
suggests or implies an empty pallet staging area and a filled
pallet staging area, each extending normally to the elevator
Appeal No. 97-1754
Application 08/462,133
9
shaft in spaced vertical relation to each other, as called for
in claim 2. On this basis alone the standing § 103 rejection
of claim 2 cannot be sustained.
As to the standing § 103 rejection of claim 3, for
reasons stated infra in our treatment of the examiner’s
rejection of the appealed claims under 35 U.S.C. § 112, second
paragraph, we also have encountered considerable difficulty
understanding the meaning of certain terminology appearing in
appealed claim 3. However, in this instance, we do not
understand the metes and bounds of the claimed subject matter
sufficiently to be able to address the merits of the
examiner’s § 103 rejection. While we might speculate as to
what is meant by the claim language, our uncertainty provides
us with no proper basis for making the comparison between that
which is claimed and the prior art, as we are obligated to do.
Rejections based on 35 U.S.C. § 103 should not be based upon
“considerable speculation as to the meaning of the terms
employed and assumptions as to the scope of the claims.” In
re Steele, supra. When no reasonably definite meaning can be
ascribed to certain terms in a claim, the subject matter does
Appeal No. 97-1754
Application 08/462,133
10
not become obvious, but rather the claim becomes indefinite.
In re Wilson, supra. Accordingly, we are constrained to
reverse the examiner’s rejection of claim 3 under 35 U.S.C. §
103 on procedural grounds. We hasten to add that this
reversal is not based upon any evaluation of the merits of the
rejection. We take no position as to the pertinence of the
prior art as applied by the examiner against claim 3.
The 35 U.S.C. § 112, Second Paragraph, Rejection
We agree with the examiner’s bottom line determination
that claims 2 and 3 do not comply with the second paragraph of
35 U.S.C. § 112. However, our reasons for so concluding
differ substantially from those expressed by the examiner in
the answer. Accordingly, we will affirm the decision of the
examiner rejecting claims 2 and 3 under 35 U.S.C. § 112,
second paragraph, but because of the altered thrust of our
rationale in so doing, we will denominate said affirmance a
new ground of rejection pursuant to our authority under 37 CFR
§ 1.196(b) in order to allow appellants a fair opportunity to
response thereto.
Appeal No. 97-1754
Application 08/462,133
However, mere incantation of the word “means” in a clause reciting3
predominately structure does not evoke the sixth paragraph of 35 U.S.C. § 112.
See York Prods. Inc. v. Central Tractor Farm & Family Center, 99 F.3d 1568,
1574, 40 USPQ2d 1619, 1623 (Fed. Cir 1996).
11
Looking first at the examiner’s reasons for rejecting
claims 2 and 3 under the second paragraph of § 112, we do not
agree with the examiner that the claims are indefinite because
no functional
language is associated with the term “storage container means”
appearing in lines 24-25 of claim 2 and line 15 of claim 3.
We are aware of no authority, and the examiner has cited none,
that requires a function to be directly tied to the word
“means” when the word “means” is used to claim an element of a
claim, or that the failure to link a function with the word
“means” violates the second paragraph of § 112. As to the3
examiner’s contention that claim 3 is indefinite because there
is no proper antecedent basis for the recitation in line 35 of
“the same plane,” for reasons explained infra we also have
encountered difficulty in understanding the meaning of this
term; however, our difficulty does not stem from that term’s
Appeal No. 97-1754
Application 08/462,133
12
lack of a strict antecedent. Finally, as to the examiner’s
contention that lines 9 and 37 of claim 3 are confusing,
appellants have not disputed the examiner’s position in this
regard. Rather, appellants merely state on page 1 of the
reply brief that typographical errors appear in these lines,
and that correction thereof would render the meaning of the
claim clear. Since appellants have not disputed the
examiner’s position with respect to lines 9 and 37, we will
summarily sustain the examiner’s position that the meaning of
lines 9 and 37 in claim 3 is not clear.
We now turn our attention to our own difficulties in
understanding the meaning of claims 2 and 3. Considering
first claim 2, lines 19-23 set forth “article group transfer
means
. . . for advancement downstream” and lines 23-28 set forth
“means for transferring . . . to said outbound accumulator
means.” In that the disclosed reciprocating transfer head 24
appears to perform both the function called for in the
“article group transfer means” limitation and the function
called for in the “means for transferring” limitation, it is
Appeal No. 97-1754
Application 08/462,133
13
not clear whether these “means” limitations are directed to
different structures or to the same structure. Second, it
appears that the term “storage container means” in lines 24-25
and the term “storage trays” in line 36 refer to the same
element. Likewise, it appears that the “storage area” of line
24 and the “group-receiving storage areas” of line 37-38 refer
to the same storage areas. If true, the use of multiple terms
for the same elements is confusing and needlessly obscures the
metes and bounds of the claim. On the other hand, if these
terms do not refer to the same elements, the meaning of the
claim is not clear. Third, in line 40, “the elevator shaft
area” lacks a proper antecedent and it is not clear what this
term refers to.
Turning to claim 3, lines 10-13 set forth “article group
transfer means . . . for advancement downstream” and lines 13-
18 set forth “means for transferring . . . downstream bound
articles are accumulating.” In that the disclosed
reciprocating transfer head 24 appears to perform both the
function called for in the “article group transfer means”
limitation and the function called for in the “means for
Appeal No. 97-1754
Application 08/462,133
It is suggested that, in the event of further prosecution, the claims4
be checked for consistency of terminology.
14
transferring” limitation, it is not clear whether these
“means” are directed to different structures or to the same
structure. Second, “said area in which said articles are to
be accumulated for advancement downstream” (lines 12-13) and
“said inbound accumulating area” (lines 14-15) each lacks a
proper antecedent and it is not clear what these terms refer
to. Claim 3 is replete with additional terms that lack a
proper antecedent. See, for example, “said inbound
accumulator means” (lines 32-33), “said outbound accumulator
means” (line 33), and “said article group receptacle areas”
(line 34). Also, it is not clear whether “said transfer
means” (line 20 and lines 33-34) refers to the “article group
transfer means . . .” of lines
10-13, or to the “means for transferring . . .” of lines 13-
18. In short, the lack of proper antecedent for numerous
terms in claim 3 is confusing and needlessly obscures the
metes and bounds thereof. Third, it is not clear what4
Appeal No. 97-1754
Application 08/462,133
15
constitutes the “length dimension” of the inbound accumulator
means, the outbound accumulator means, the transfer means, and
the article group receptacle areas, nor what constitutes “the
same plane” in which these elements “extend[] generally in,”
as called for in lines 32-35. Also, it not clear how these
elements extend “generally parallel to each other” and
“generally perpendicular with respect to” the transfer axis of
the group transfer means, as called for in lines 36-39.
In light of the foregoing, we will affirm the examiner’s
decision rejecting claims 2 and 3 for failing to comply with
the second paragraph of 35 U.S.C. § 112, with the proviso that
our affirmance constitutes a new ground of rejection pursuant
to
37 CFR § 1.196(b).
Appeal No. 97-1754
Application 08/462,133
16
Summary
The rejection of claims 2 and 3 under 35 U.S.C. § 103 is
reversed on the merits with respect to claim 2 and on
procedural ground with respect to claim 3.
The rejection of claims 2 and 3 under 35 U.S.C. § 112,
second paragraph, is affirmed, our affirmance being
denominated a new ground of rejection pursuant to 37 CFR §
1.196(b).
Since at least one rejection of each of the appealed
claims has been affirmed, the decision of the examiner finally
rejecting claims 2 and 3 is affirmed.
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 that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that appellants WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
Appeal No. 97-1754
Application 08/462,133
17
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 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. . . .
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)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JENNIFER BAHR )
Appeal No. 97-1754
Application 08/462,133
18
Administrative Patent Judge )

LJS/cam
Appeal No. 97-1754
Application 08/462,133
19
Angelo J. Bufalino
James R. Fitzgibbon
Vedder, Price, Kaufman & Kammholz
222 North LaSalle, 26th Floor
Chicago, IL 60606`