Ex Parte Nugent

Board of Patent Appeals and Interferences

Sep 12, 2007

10024800 (B.P.A.I. Sep. 12, 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The opinion in support of the decision being entered today is not binding
precedent of the Board.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 PAUL F. NUGENT, JR.
____________

Appeal 2007-1840
Application 10/024,800
Technology Center 2800
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Decided: September 12, 2007
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Before LEE E. BARRETT, ANITA PELLMAN GROSS, and
JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
Appeal 2007-1840
Application 10/024,800

STATEMENT OF THE CASE
Appellant invented a weigh scale. Specifically, the scale comprises
two elongate support members that each contains a strain gauge to indicate
the weight of an item placed across the two members. The support members
are structurally connected solely by a surface plate that rests on the support
members to provide a flat surface to receive items to be weighed.1 Claims 1
and 8 are illustrative with the relevant limitations in dispute emphasized:
1. A scale comprising a pair of elongate support members, each
member containing a gauge which provides an indication of the weight of an
item placed across the two members, the members being structurally
connected solely via a surface plate adapted to rest on the support members
to provide a substantially flat surface to receive items to be weighed.

8. A scale, comprising:

a first gauge assembly having (i) a first gauge operable to generate a
first output in response to force being applied thereagainst, and (ii) a first
elongated support member positioned in relation to said first gauge such that
force applied against said first elongate support member causes force to be
applied against said first gauge;

a second gauge assembly having (i) a second gauge operable to
generate a second output in response to force being applied thereagainst, and
(ii) a second elongated support member positioned in relation to said second
gauge such that force applied against said second elongate support member
causes force to be applied against said second gauge; and

a load plate configured to rest on said first elongated support member
and said second elongated support member,

wherein said first gauge assembly and said second gauge assembly are
structurally connected solely via said load plate when said load plate rests on

1 See generally Specification 2:11-18.
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Application 10/024,800

said first elongated support member and said second elongated support
member.

The Examiner relies on the following prior art reference to show
unpatentability:
Sternberg US 2003/0111275 A1 Jun. 19, 2003
(filed Dec. 18, 2001)

1. Claims 1, 2, 5, 8-11, and 15-19 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Sternberg.
2. Claims 3, 4, 6, 7, 12-14, and 20-22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sternberg.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Brief and the Answer2 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
OPINION
I. The Anticipation Rejection
We first consider the Examiner’s rejection of claims 1, 2, 5, 8-11, and
15-19 under 35 U.S.C. § 102(e) as being anticipated by Sternberg.
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a

2 A Brief was initially filed on Nov. 26, 2004 and an Answer mailed May
19, 2005. A second Brief, however, was filed on Feb. 7, 2006 responsive to
an Order from the Board. A second Answer was mailed on Mar. 6, 2006.
We refer to the Feb. 2006 Brief and the Mar. 2006 Answer throughout this
opinion.
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claimed invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984); W.L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983).

Independent Claim 8
The Examiner has indicated how the claimed invention is deemed to
be fully met by the disclosure of Sternberg (Answer 3-4). Regarding
independent claim 8, Appellant argues that Sternberg does not disclose a
load plate configured to rest on the first and second elongated support
members as claimed. According to Appellant, Sternberg discloses a
mattress support 12 which is the combination of a mattress-like top member
and a box spring-like bottom member. Such a structure, Appellant contends,
simply does not possess the qualities of a plate (Br. 10-11).
Appellant does not dispute that Sternberg discloses all of the
limitations of claim 8 except for the disputed “load plate” limitation. The
issue before us, then, is relatively narrow: can Sternberg’s mattress support
structure reasonably constitute a “load plate”? Based on the record before
us, we do not find that it can giving the term “load plate” its broadest
reasonable interpretation in light of Appellant’s disclosure.
At the outset, since Appellant has not specifically defined the term
“plate” in the specification, we construe the term with its plain meaning (i.e.,
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the ordinary and customary meaning given to the term by those of ordinary
skill in the art).3
To support their respective interpretations of the term “plate,” the
Appellant and the Examiner provide competing dictionary definitions.
Appellant contends that the term “plate” is defined as “a flat, thin piece of
material, such as metal” (Br. 11 n.1; Ev. App.). The Examiner, on the other
hand, cites two dictionary definitions of the term “plate”: (1) “a horizontal
structural member that provides bearing and anchorage”; and (2) “[a]
smooth, flat, relatively thin, rigid body of uniform thickness” (Answer 6).
Based on this evidence, we find that Appellant’s definition of “plate” more
reasonably comports with the ordinary and customary meaning of the term
“plate” in light of Appellant’s disclosure.4 We therefore decline to adopt
the Examiner’s construction of “plate.”
Regarding the Examiner’s first definition of the term “plate,”5 the
Examiner notes that the bed frame of Sternberg is horizontal and serves as a
structural member for the bed. The Examiner also indicates that Sternberg’s

3 See Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298,
67 USPQ2d 1132, 1136 (Fed. Cir. 2003) (“In the absence of an express
intent to impart a novel meaning to the claim terms, the words are presumed
to take on the ordinary and customary meanings attributed to them by those
of ordinary skill in the art.”); see also Phillips v. AWH Corp., 415 F.3d 1303,
1312, 75 USPQ2d 1321, 1326 (Fed. Cir. 2005) (en banc).
4 See Free Motion Fitness, Inc. v. Cybex Int'l, Inc., 423 F.3d 1343, 1348, 76
USPQ2d 1432, 1436 (Fed. Cir. 2005) (internal citations omitted) (noting that
reliance on dictionaries must accord with the intrinsic evidence: the claims,
specification, and the prosecution history).
5 The Examiner’s first definition of “plate” is “[a] horizontal structural
member that provides bearing and anchorage” (Answer 6).
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bed fully meets the second definition of “plate”6 since the bed is not only
smooth, flat, and uniformly thick, its frame is rigid. Although the Examiner
acknowledges that it is unclear whether the bed is “relatively thin” under this
definition, the Examiner nonetheless contends that the term is not dispositive
since it merely recites a relative thinness, but does not indicate what such
thinness is relative to (Answer 6-7).
We will not sustain the Examiner’s rejection of independent claim 8.
Sternberg discloses a portable weighing system for a bed 10 that accurately
determines the weight of a person in bed. The weighing system comprises a
pair of scales 20 placed under the legs or support members 14 of the bed.
The scales are connected to a weight data collector 50. The scales are
positioned directly below the ends of the bed and rest on the floor. The
bed’s legs or support members are then placed on the scales (Sternberg,
abstract; ¶ 0037; Figs. 1, 2, and 5).
We do not agree with the Examiner that Sternberg’s mattress support
member 12 can be reasonably construed as a “plate” – even under the
Examiner’s own definitions. Although the Examiner contends that the
mattress support 12 can be construed as “a horizontal structural member that
provides bearing and anchorage” under the Examiner’s first definition, we
nonetheless find that skilled artisans would simply not reasonably consider
this structure a “plate” as the term is ordinarily understood.
As Appellant indicates, a “plate” is a “flat, thin piece of material, such
as metal” (Br. 11 n.1; emphasis added). While a plate need not be metal
under this definition, it must nevertheless be a “piece of material” – a

6 The Examiner’s second definition of “plate” is “[a] smooth, flat, relatively
thin, rigid body of uniform thickness” (Answer 6).
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description which strongly suggests a unitary structure. While the Sternberg
reference is hardly a model of clarity regarding what exactly constitutes the
mattress support member 12, we can say that it is hardly a “piece of
material” under this definition and therefore not a “plate” as the term would
be understood by skilled artisans. In our view, to hold that this mattress
support 12 somehow constitutes a “plate” simply strains any reasonable
construction of the term.
Furthermore, we find Sternberg’s mattress support 12 falls short even
under the Examiner’s second definition7 as well. At the outset, it is unclear
whether the Examiner considers both the bed and bed frame to correspond to
the “plate” under this definition.8
In any event, Sternberg’s Figure 4 illustrates generally that the
mattress support 12 is flat. Arguably, the mattress support is also rigid and
has a uniform thickness. Indeed, if it were not rigid, it would not have a
uniform support elevation between the legs 14 and would sag (or even
collapse). Nonetheless, we fail to see how the mattress support member can
also be “relatively thin” and “smooth” as required by the Examiner’s
definition.
There is no reasonable indication in Sternberg that the mattress
support is “smooth.” Not only is the specification of the reference silent on
this point, the figures merely depict the structure generally. Such a general
depiction hardly guarantees a “smooth” structure. Moreover, we find the
Examiner’s position that the mattress support is “relatively thin”

7 See P. 5, supra, of this opinion.
8 “The bed of Sternberg certainly is “‘smooth’, ‘flat’ and has a ‘uniform
thickness’. The bed frame is obviously ‘rigid’….” (Answer 6; emphasis
added).
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problematic. Although such a term merely indicates a relative degree of
thinness as the Examiner indicates, to hold that the mattress support in
Sternberg is “relatively thin” would simply strain the meaning of the term
beyond reasonable limits. At best, the skilled artisan would have to consider
the thickness of the mattress support structure as “relatively thin” with
respect to the entire structure (i.e., from the bed base 26 to the mattress).
This construction, along with the other strained constructions noted
previously, simply does not comport with the ordinary and customary
meaning of the term “plate” in light of Appellant’s disclosure.
Therefore, we find that Sternberg’s mattress support does not
reasonably constitute a “load plate” for this additional reason.
For the foregoing reasons, we will not sustain the Examiner’s
rejection of independent claim 8 or dependent claims 9-11 and 15 which fall
with claim 8.

Independent claim 1
We will also not sustain the Examiner’s rejection of independent
claim 1 for similar reasons. Our previous discussion regarding the failure of
Sternberg’s mattress support member to reasonably constitute a “load plate”
applies equally for the disputed “surface plate” limitation recited in claim 1.
We therefore incorporate that discussion by reference.
Accordingly, we will not sustain the Examiner’s rejection of claim 1
for reasons similar with those indicated with respect to claim 8. Likewise,
we will not sustain dependent claims 2 and 5 which fall with claim 1.

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Application 10/024,800

Independent claim 16
We will, however, sustain the Examiner’s rejection of independent
claim 16. Claim 16 differs from the other independent claims in two
significant respects. First, claims 1 and 8 require that the elongated support
members (claim 1) or gauge assemblies (claim 8) are structurally connected
solely via the load (or surface) plate. Claim 16, however, contains no such
limitation. Second, claim 16 positively recites that the load plate “rest[s]
on” the elongated support members.
With respect to the first key difference, we find that the horizontal
portion of the unlabeled angled structural member located between the legs
14 and the lower mattress support member 12 as shown in Figs. 4 and 5 of
Sternberg reasonably constitutes a “load plate” as claimed. Not only does
this horizontal portion bear the weight of the overlying bed and support
structure, its flat, thin structure also fully meets a “plate” under either the
Appellant’s or the Examiner’s definitions.9 Significantly, unlike claims 1
and 8, this “plate” need not solely structurally connect the elongate support
members or gauge assemblies as noted above.10 See the enlarged detail view
of Sternberg’s Figure 5 for clarity:

9 See P. 5, supra, of this opinion.
10 In fact, to meet this limitation in claims 1 and 8, the load (or surface) plate
must include at least the entire length of the mattress support 12 that spans
the distance between the respective support members (scales) 20. See
Sternberg, Fig. 4.
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Application 10/024,800

Figure 1: Enlarged Detail View of Figure 5 of Sternberg Illustrating “Load
Plate”

We now address the second key difference distinguishing independent
claim 16 noted above. Appellant reiterates that Sternberg does not disclose a
“load plate,” but adds that Sternberg also fails to disclose a load plate that
rests on the first and second elongated support members as claimed.
According to Appellant, Sternberg’s mattress support 12 does not “rest on”
the scales 20 due to the presence of legs 14 interposed therebetween (Br.
13).
The Examiner notes that nothing in the claim requires that the load
plate rest directly upon its supports. As such, the Examiner argues, the bed
frame effectively “rests upon” the scales (supports) via the intervening legs
14.
We agree with the Examiner. Even assuming that Sternberg’s angled
“load plate” does not directly rest on the underlying support members
(scales), the scope and breadth of the claim language simply does not
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preclude this plate “resting upon” the support members via the intervening
leg members 14. Claim 16 is therefore fully met by Sternberg.
For the foregoing reasons, we will sustain the Examiner’s rejection of
independent claim 16. Moreover, since Appellant has not separately argued
the patentability of dependent claims 17-19 with particularity, these claims
fall with claim 16. See 37 C.F.R. § 41.37(c)(1)(vii).

II. The Obviousness Rejection
We now consider the Examiner’s rejection of claims 3, 4, 6, 7, 12-14,
and 20-22 under 35 U.S.C. § 103(a) as unpatentable over Sternberg. In
rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner
to establish a factual basis to support the legal conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). In so doing, the Examiner must make the factual determinations set
forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966). Furthermore, “‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness’ . . . .
[H]owever, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
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the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).

Claims 3, 4, 6, 7, and 12-14
Regarding the rejection of dependent claims 3, 4, 6, 7, and 12-14
under 35 U.S.C. § 103, the Examiner has presented no further evidence or
explanation in the rejection of these claims that would cure the deficiencies
noted above with respect to independent claims 1 and 8. Accordingly, the
obviousness rejection of claims 3, 4, 6, 7, and 12-14 is also not sustained.

Claims 20-22
Since no further arguments were presented regarding the obviousness
of claims 20-22, the Examiner’s prima facie case of obviousness for these
claims has not been persuasively rebutted. Accordingly, we will sustain the
Examiner’s rejection of these claims for the same reasons as for the rejection
of claims 16-19.

DECISION
We have not sustained the Examiner's rejections with respect to
claims 1-15. We have, however, sustained the Examiner’s rejection of
claims 16-22. Therefore, the Examiner’s decision rejecting claims 1-22 is
affirmed-in-part.
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).

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Application 10/024,800

AFFIRMED-IN-PART

tdl/ce

PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
1700 S. PATTERSON BLVD.
DAYTON, OH 45479-0001
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