Ex Parte Eriksson

Board of Patent Appeals and Interferences

Mar 14, 2011

10480435 (B.P.A.I. Mar. 14, 2011)

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.
10/480,435 12/12/2003 Jan Eriksson 19200-000028/US 2556
30593 7590 03/15/2011
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
03/15/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAN ERIKSSON
____________

Appeal 2009-011515
Application 10/480,435
Technology Center 3600
____________

Before WILLIAM F. PATE, III, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Jan Eriksson (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 15-24 under 35 U.S.C. § 112, first

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

Appeal 2009-011515
Application 10/480,435

2
paragraph, as failing to comply with the written description requirement and
under 35 U.S.C. § 102(b) as anticipated by Bazin (U.S. Patent No.
5,743,209, issued Apr. 28, 1998). Appellant cancelled claims 1-14. We
have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to a method in a computer-controlled
milking facility aimed at improving milk measurements.
Claim 15, reproduced below, is representative of the subject matter on
appeal.
15. A method in a computer-controlled
milking facility provided with on-site measuring
equipment capable of measuring a quality and/or
quantity of milk being produced in said milking
facility, wherein the milk produced is stored in a
milk tank of the milking facility and is then
collected and transported to a dairy plant, said
method comprising the steps of:
- providing a first measured value of milk
produced in the milking facility as measured by the
on-site measuring equipment of the milking
facility;
- receiving a corresponding second
measured value of said milk from a site equipped
with high-quality measuring equipment, and to
which a sample of said milk is transported, or from
the dairy plant to which said milk is transported,
wherein the dairy plant is provided with high-
quality measuring equipment, or is in
communication with the site equipped with high-
quality measuring equipment, and to which a
sample of said milk is transported, the first
measured value and the second measured value
measuring at least one same characteristic of the
milk;
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- comparing the at least one same
characteristic of the first and the second measured
values; and
- calibrating said on-site measuring
equipment of the milking facility depending on the
result of said comparison.

OPINION
Issues
The determinative issues in this appeal are:
(1) Whether claim 15’s recitation of “the first measured value and the
second measured value measuring at least one same characteristic of the
milk,” which was added by amendment, fails to comply with 35 U.S.C.
§ 112, first paragraph, as lacking written description in the Specification.
(2) Whether the Examiner has established by a preponderance of the
evidence that the disclosure of Bazin anticipates the claimed method as set
forth in claim 15.
Analysis
Issue (1)
Appellant contends that the Specification discloses several instances
of an identical milk characteristic for both the first measured value and the
second measured value and points to examples, including at page 12, lines
26-28, wherein it states that “[a]t least one of the quality parameters
measured in the step 63 is also measured in the step 87.” App. Br. 8-9.
Appellant also contends that at page 13, lines 11-24, the Specification
discusses a comparison between two milk measurements taken on different
measuring devices and a calibration of the measuring devices based upon the
comparison, which calibration inherently requires comparison of at least two
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identical characteristics. App. Br. 9-10. Appellant also points to original
claim 7 (i.e., part of the original disclosure) as written description supporting
claim 15’s recitation of “the first measured value and the second measured
value measuring at least one same characteristic of milk” since claim 7
clearly describes measurement of a same milk quality characteristic (i.e., fat
content) at both the milking facility and high-quality site and comparison of
the measured values having the same characteristic. Reply Br. 3-4.
The Examiner posits that claim 15’s recitation of “the first measured
value and the second measured value measuring at least one same
characteristic of the milk,” which was added by amendment, is not supported
in the Specification because the Specification does not explicitly state that
the same characteristics, such as quality to quality or quantity to quantity,
are compared for the calibration step. Ans. 3. The Examiner also posits that
“anytime calibration or verification is mentioned, quantity and quality are
always incorporated in for calibration or verification” and as support for this,
the Examiner points to paragraph numbers [0045], [0060], and [0061] of the
published application2. Ans. 4. The Examiner also posits that “[c]alibration
or verification is always done by the measured values from quantity reading
by a flow meter 9 AND quality reading by conductance measuring device 9a
and infrared spectrometer device 9b.” Id.
New or amended claims which introduce elements or limitations
which are not supported by the as-filed disclosure violate the written

2 The Examiner has cited to U.S. Patent Application Publication No.
2004/0154548 A1, published Aug. 12, 2004. However, we note that
paragraph number [0045] is the same as page 10, lines 3-7 of the originally
filed Specification, and paragraph numbers [0060] and [0061] are the same
as page 13, lines 11-19 and lines 20-24 of the originally filed Specification.
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description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA
1971). “The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required ‘to recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation.’” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1330 (Fed. Cir. 2003) (citing Vas Cath Inc. v. Mahurkar, 935 F.2d
1555, 1561 (Fed. Cir. 1991)). There is no in haec verba requirement that
newly added claim limitations must be supported in the Specification
through express, implicit, or inherent disclosure. The fundamental factual
inquiry is whether the Specification conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. See, e.g., Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). When an explicit
limitation in a claim is not present in the written description it must be
shown that a person of ordinary skill would have understood that the
description requires that limitation. See Hyatt v. Boone, 146 F.3d 1348,
1353 (Fed. Cir. 1998). If the originally filed disclosure does not provide
support for each claim limitation, a new or amended claim must be rejected
under 35 U.S.C. 112, paragraph 1, as lacking adequate written description.
“Whether a specification complies with the written description requirement
of § 112, ¶ 1, is a question of fact . . . ” Regents of the Univ. of Cal. v. Eli
Lilly & Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)); see also Ariad Pharm.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)(en banc).
The Examiner has the initial burden of presenting evidence or reasoning to
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explain why persons skilled in the art would not recognize in the original
disclosure a description of the invention defined by the claims. See In re
Wertheim, 541 F.2d 257, 263 (CCPA 1976).
We agree with Appellant that it is inherent that the comparison done
for calibration must be done on the same milk characteristic. The Examiner
has not met the initial burden of presenting persuasive evidence or reasoning
to explain why persons skilled in the art would not recognize, in the original
disclosure, a description of the invention defined by the claims. Although
the explicit limitation in the claim (i.e., “the first measured value and the
second measured value measuring at least one same characteristic of the
milk”) is not present in the written description, we are satisfied that a person
of ordinary skill in the art would have understood that the description
requires that limitation because calibration inherently requires measurement
and comparison of the same characteristics (i.e., quality to quality or
quantity to quantity). Indeed, Appellant’s specification has an example of
“the first measured value and the second measured value measuring at least
one same characteristic of the milk” as specified by the Appellant at page
12, lines 26-28 (i.e., “[a]t least one of the quality parameters measured in the
step 63 is also measured in the step 87”) and as shown in Figure 2 (i.e. step
63 of “[m]easuring a milk quality parameter” in the milking facility and step
87 of “[m]ilk quality measured in laboratory” at the dairy plant). Thus, a
person of ordinary skill in the art would clearly understand that to perform a
calibration, the same characteristics of the first and second measured values
have to be compared.
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In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 15-24 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
Issue (2)
Appellant contends that Bazin does not inherently or explicitly
disclose the claim limitations of “the first measured value and second
measured value measuring at least one same characteristic of milk” because
Bazin teaches a first measurement from a flow meter measuring only milk
quantity and a second measurement from a spectrometer/analyzer measuring
only milk quality and quantity and quality are not the same characteristic of
milk. App. Br. 12. Appellant also contends that because Bazin fails to teach
or suggest two corresponding measurements of the same milk characteristic,
Bazin fails to disclose the steps of comparing the at least one same
characteristic of the first and second measured values, and calibrating said
on-site measuring equipment of the milking facility depending on the result
of said comparison. Id. Appellant also contends that although Bazin
mentions calibration, it does not follow that the calibration being discussed
is necessarily based upon a comparison of measured milk values because
calibration through internal controls or non-milk standardizing tests are
equally plausible. Id.
The Examiner’s position is that Bazin discloses providing a first
measured value from the flow meter in the quantitative control module 13a
shown in Figure 2 and a second measured value from the spectrometers in
qualitative control module 14a in Figure 2. Ans. 5. The Examiner does not
cite to anything in Bazin which supports “the first measured value and the
second measured value measuring at least one same characteristic of the
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milk.” Id. The Examiner posits that the micro-computer 11a and software
perform the comparing step by comparing the values obtained from the flow
meter and spectrometer/analyzer. Id. The Examiner also posits that Bazin
teaches the calibrating step because column 7, lines 30-40, describe testing
coherence and column 10, lines 10-15, states that “the system includes
modules for calibrating the various quantitative and qualitative measurement
systems.” Id.
We agree with Appellant that Bazin does not anticipate claim 15. The
Examiner has not pointed to anywhere in Bazin where it teaches that first
and second measured values measure at least one same characteristic of the
milk. Without a showing that Bazin is measuring the same characteristic of
the milk, the Examiner cannot establish that Bazin discloses either the
comparing or calibrating steps. Thus, the Examiner has failed to establish
by at least a preponderance of the evidence that the disclosure of Bazin
anticipates the claimed method as set forth in claim 15.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 15-24 under 35 U.S.C. § 102(b) as anticipated by Bazin.

CONCLUSIONS
Claim 15’s recitation of “the first measured value and the second
measured value measuring at least one same characteristic of the milk,”
which was added by amendment, complies with 35 U.S.C. § 112, first
paragraph, as having written description in the Specification.
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The Examiner has failed to establish by a preponderance of the
evidence that the disclosure of Bazin anticipates the claimed method as set
forth in claim 15.
DECISION
We reverse the Examiner’s rejections of claims 15-24 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement and under 35 U.S.C. § 102(b) as anticipated by
Bazin.
REVERSED

Klh

HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195