Ex Parte Mills

Board of Patent Appeals and Interferences

Aug 7, 2008

09728395 (B.P.A.I. Aug. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL MILLS
____________

Appeal 2008-0342
Application 09/728,395
Technology Center 3700
____________

Decided: August 7, 2008
____________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and JOHN C.
KERINS, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Paul Mills (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-13. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).
Appeal 2008-0342
Application 09/728,395

2
The Invention
Appellant’s claimed invention is directed to a packaging system for
packaging a plurality of articles into packs and collecting together a plurality
of packs into a packaged unit (Specification 1). Appellant’s system is
provided with a plurality of components connected to a data bus by
respective connecting means and a control means for controlling and
coordinating the components by sending appropriately addressed data bus
commands via the data bus to each of the connected components using a
common computer protocol. Each of the connecting means includes means
to translate data bus commands appropriate to its respective component into
a command protocol that is read by the connected component.
(Specification 2-3.) Consequently, Appellant’s system permits a single
controller using a single command protocol to control connected
components that use different command protocols (Specification 2, 3).
Independent claim 1 is illustrative of the claimed invention and reads
as follows:
1. A packaging system for packaging a plurality of
individual articles into packs and for collecting
together a plurality of packs into a packaged unit,
the system including
a first part where the individual articles are
marked utilising [sic: utilizing] a first marking
means,
a second part where the packs are marked
utilising [sic: utilizing] a second marking means,
and
a third part where the packaged unit is
marked utilising [sic: utilizing] a third marking
means, and
Appeal 2008-0342
Application 09/728,395

3
the first part including packing means for
packing the articles into packs and first conveying
means for moving the packs from the first part to
the second part, and
the second part including second conveying
means for conveying the packs from the second to
the third system part, and
the third part including means to collect the
plurality of packs into a packaging unit, wherein
each of the first, second and third marking means,
and the means for collecting[1] the plurality of
packs into a packaged unit are connected to a data
bus by respective connecting means,
there being a control means also connected
to the data bus, the control means sending
appropriately addressed data bus commands on the
data bus to each of the connected components, the
data bus commands all using a common computer
protocol, and each of the connecting means of the
connected components including means to
translate data bus commands appropriate to that
component into a command protocol which is read
by the connected component which responds by
performing a productive function, whereby the
control means is able to control each of the
connected components independent of command
protocols recognised [sic: recognized] by the
connected components.
The Rejection
Appellant seeks review of the Examiner’s rejections of claims 1, 2,
and 6 under 35 U.S.C. § 102(e) as anticipated by Komiya (US 6,155,025,

1 The “means to collect” should be changed to “means for collecting” for
consistency and to provide clear antecedent basis for “means for collecting.”
Appeal 2008-0342
Application 09/728,395

4
issued December 5, 2000) and claims 3-5 and 7-13 under 35 U.S.C. § 103(a)
as unpatentable over Komiya.
The Examiner provides reasoning in support of the rejections in the
Answer, mailed December 1, 2006. Appellant presents opposing arguments
in the Appeal Brief (“Appeal Br.”), filed September 14, 2005, and Reply
Brief (“Reply Br.”), filed January 29, 2007. Appellant’s counsel presented
oral argument on July 9, 2008.

OPINION
This appeal focuses on the limitation in claim 1 that each of the
connecting means of the connected components include means to translate
data bus commands appropriate to that component into a command protocol
that is read by the connected component, whereby the control means is able
to control each of the connected components independent of command
protocols recognized by the connected components.2 In particular, the
dispositive issue is whether Komiya inherently includes such means to
translate in the connection between the various component computers and
the main controller (information management computer 66), so as to
anticipate the subject matter of claim 1.
Komiya teaches an article packaging system for labeling and
packaging articles (photographic film cartridges 12) into packs (small boxes
30) (Komiya, col. 9, ll. 19-21 and 63-67). The small boxes 30 are printed

2 We interpret the language “there being a control means also connected to
the data bus” in claim 1 as a statement that the claimed system includes the
recited control means connected to the data bus.
Appeal 2008-0342
Application 09/728,395

5
with indicia 38 (Komiya, col. 10, ll. 9-12). A plurality of small boxes 30 are
collected and packed in corrugated boxes (Komiya, col. 11, ll. 14-25).
The various operations of the machines for making the cartridges and
cartridge cases and for packaging the cartridges into small boxes and
corrugated boxes are managed by a molding machine management computer
68, an assembling machine management computer 70, a winding machine
management computer 72, an outer shipping packaging machine
management computer 84, and a packing machine management computer 86
(Komiya, col. 11, ll. 26-45). A production information management
computer 66 manages the operations of all of these computers (Komiya, col.
12, ll. 35-41). Komiya is silent as to whether the various computers and
machines operate using a common protocol or different protocols.
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). Under principles of inherency,
when a reference is silent about an asserted inherent characteristic, it must be
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991).
Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a
certain thing may result from a given set of
circumstances is not sufficient. [Citations omitted.]
If, however, the disclosure is sufficient to show
that the natural result flowing from the operation
as taught would result in the performance of the
Appeal 2008-0342
Application 09/728,395

6
questioned function, it seems to be well settled that
the disclosure should be regarded as sufficient.
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214 (CCPA 1939)).
In rejecting claims 1, 2, and 6 as anticipated by Komiya, the Examiner
concedes that Komiya does not specifically refer to the data bus that
transmits signals from production information management computer 66 to
the peripheral units and translation of commands from the controller
(computer 66) to the peripheral units (Answer 4). Stated differently, the
Examiner finds that Komiya does not expressly teach a data bus and
connection means including means to translate data bus commands into a
protocol that can be read by the connected component. Nevertheless, the
Examiner contends that Komiya anticipates the subject matter of claim 1
because the data bus for connecting all elements to the controller (computer
66) and a means for translating data bus commands are inherent features of
Komiya’s system (Answer 4 and 6). The Examiner reasons that if Komiya
did not possess these features, the component computers of Komiya’s
system would not be able to communicate with one another (Answer 7).
Appellant argues that connecting means including means to translate
data bus commands into a command protocol that can be read by the
connected component is not an inherent feature of Komiya’s system because
Komiya could operate without this feature. For example, according to
Appellant, rather than relying on such translation means, Komiya’s system
could either “(1) rely on equipment being replaced by equipment which
operates according to the same protocol as the replaced equipment or (2)
rely on reprogramming of the computer controller” (Appeal Br. 7). In
Appeal 2008-0342
Application 09/728,395

7
support of this argument, Appellant relies on a declaration under 37 C.F.R.
§ 1.132 by Appellant Paul Mills (the “Mills Declaration”) filed June 1, 2004.
In particular, Appellant points out that
[t]here is no reason to assume that each component
has a “respective connecting means” with a means
to translate the data bus commands to commands
appropriate to the specific device. Instead, it is
more likely to assume Komiya envisaged that if an
item of equipment were to be replaced, it would be
replaced by an item which operates according to
the same protocol (as the one being replaced) or
else, that the computer controller is reprogrammed
(e.g., to use a new driver for the new component)
to cope with such a new item of equipment.
Mills Declaration, ¶ 10.
Appellant offers two very plausible alternatives as to how the
production information management computer 66 of Komiya’s system could
communicate with the peripheral units without having connecting means
including means to translate data bus commands into a command protocol
that is read by the connected component. In so doing, Appellant persuades
us that the Examiner erred in concluding that Komiya inherently possesses
connection means including means to translate data bus commands
appropriate to that component into a command protocol that is read by the
connected component, whereby the control means is able to control each of
the connected components independent of command protocols recognized
by the connected components, as called for in independent claim 1.
Therefore, we cannot sustain the rejection of claim 1, and claims 2 and 6
depending from claim 1, as anticipated by Komiya.
Appeal 2008-0342
Application 09/728,395

8
The Examiner’s rejection of claims 3-5 and 7-13, which depend from
claim 1, as unpatentable over Komiya is grounded in part on the Examiner’s
flawed determination that Komiya inherently possesses connection means
including means to translate data bus commands appropriate to that
component into a command protocol that is read by the connected
component, whereby the control means is able to control each of the
connected components independent of command protocols recognized by
the connected components, as called for in claim 1. Thus, we are also
constrained to reverse the rejection of claims 3-5 and 7-13 under 35 U.S.C.
§ 103(a).
DECISION
The decision of the Examiner to reject claims 1-13 is reversed.
REVERSED

vsh

FISH & RICHARDSON PC
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022