Ex Parte Pearson

Board of Patent Appeals and Interferences

Jul 11, 2008

11140228 (B.P.A.I. Jul. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WALTER G. PEARSON
____________

Appeal 2008-1312
Application 11/140,228
Technology Center 3700
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Decided: July 11, 2008
____________

Before WILLIAM F. PATE, III, MURRIEL E. CRAWFORD, and
LINDA E. HORNER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Walter G. Pearson (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-4, 6, 7, 16, 19, and 22-31. Claims 5,
8-15, 17, and 18 have been canceled. Claims 20 and 21 were objected to as
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being in improper multiple dependent format, and thus the Examiner did not
treat these claims on their merits. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is to packaging systems for objects
such as pills (Spec. 1:¶0002). Claim 1, reproduced below, is representative
of the subject matter on appeal.
1. A device comprising a planar member
having a top surface and a bottom surface, wherein
the top surface defines an array of recesses
configured for substantial alignment with an array
of blister-like chambers formed by a sheet for
receiving a plurality of objects, wherein all of the
recesses defined by the planar member are
substantially uniform in size and each recess is
sized and configured so that substantially all of at
least one of the plurality of objects may fit therein,
and wherein the planar member defines a plurality
of fluid passageways, each passageway opening
respectively into one of the recesses defined by the
top surface of the planar member, at least a portion
of each fluid passageway being more narrow in
cross-section than its respective recess.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Scharch US 5,052,167 Oct. 1, 1991
Berry US 5,255,618 Oct. 26, 1993
The following rejections are before us for review:
1. Claim 31 is rejected under 35 U.S.C. § 112, first paragraph, for failing
to comply with the written description requirement.
2. Claim 31 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
3. Claims 1, 4(1)1, 6, 16, 22, 23, and 27 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Berry.
4. Claims 2, 3, 4(2/3), 7, 19, 23-26, 28-30, and 31(1/2/3/30) are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Berry and
Scharch.

ISSUES
The first issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claim 31 under 35 U.S.C. § 112, first paragraph.

1 The claim set contains multiple dependent claims. We use the
nomenclature “4(1)” to refer to the instance in which claim 4 depends from
claim 1. Likewise, we use the nomenclature “4(2/3)” to refer to the instance
in which claim 4 depends from claims 2 or 3. Similarly, “31(1/2/3/30)”
refers to the instance in which claim 31 depends from claims 1, 2, 3, or 30.
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This issue turns on whether Appellant’s disclosure fully sets forth the
invention of claim 31.
The second issue before us is whether the Appellant has shown that
the Examiner erred in rejecting claim 31 under 35 U.S.C. § 112, second
paragraph. This issue turns on whether one skilled in the art would
understand what is claimed when claim 31 is read in light of the
specification.
The third issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1, 4(1), 6, 16, 22, 23, and 27 under 35
U.S.C. § 102(b) as being anticipated by Berry. This issue turns on whether
Berry discloses recesses each sized and configured so that substantially all of
at least one of the plurality of objects may fit within each recess.
The fourth issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 2, 3, 4(2/3), 7, 19, 23-26, 28-30, and
31(1/2/3/30) under 35 U.S.C. § 103(a) as being unpatentable over Berry and
Scharch. This issue turns on whether an apparent reason exists as to why
one having ordinary skill in the art would have modified the seeder
apparatus of Berry with the teachings of Scharch.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
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1. The ordinary and customary meanings of “substantially” include
“considerable in extent” or “largely but not wholly that which is
specified.” The American Heritage Collection Dictionary 1475
(3d ed. 1997) and American Heritage Dictionary Second College
Ed. 1213 (2d ed. 1982), respectively.
2. Berry discloses a seeder apparatus having a seeder plate 18 with
counter-sunk seed holes 38 therethrough (Berry, col. 2, ll. 60-62).
3. The counter-sunk seed holes 38 are larger on a front side 40 than
on a backside 41 (Berry, col. 2, ll. 62-64).
4. Berry describes:
[W]hen the operator moves the seeder plate 18 to
the loading position of FIG. 1, round seed pellets
which have been temporarily stored in the sump 49
spread across the front side 40 of the seeder sheet
36 and the operator manipulates the seeder plate 18
into and out of the horizontal to thereby cause
these seed pellets to roll into the seed holes 38 to
which a negative pressure is being applied from
the pressure plenum 48. Thus, once a seed pellet
finds a seed hole it is held there by this negative
pressure. In this regard, the seed pellets are larger
in size than the holes and will not actually pass
through the holes but rather will be held thereat.
(Berry, col. 4, ll. 3-14.)
5. It is unclear from a reading of Berry whether the seed pellets are
larger in size than the size of the holes on the front side 40 of the
seeder plate 18 or the backside 41 of the seeder plate 18.
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6. Berry does not describe or depict in any of its drawings where the
seed pellets reside relative to the holes in the seeder plate

PRINCIPLES OF LAW
Written Description Requirement
The purpose of the written description requirement is to convey 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. Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The possession test
alone, however, is not always sufficient to meet the written description
requirement. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969
(Fed. Cir. 2002). Rather, “the written description requirement is satisfied by
the patentee’s disclosure of ‘such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set forth the claimed invention.’”
Id. (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997)).

Indefiniteness
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).

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Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
The Supreme Court stated that when the claimed subject matter
involves “more than the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement,” then an apparent reason to combine the known
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elements in the fashion claimed must be shown. Id. at 1740. The Court
explained:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.
Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis
should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)). However, “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.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472.
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Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. Id.

ANALYSIS
Rejection of claim 31 under 35 U.S.C. § 112, first paragraph
The Examiner determined that the portion of claim 31 which recites
“a number of different planar members can be interchanged into the device”
is not disclosed in the Appellant’s originally-filed Specification (Ans. 3). In
particular, the Examiner stated that “[a]ccording to claims 1, 2, 3 or 30, the
planar member is itself the claimed device; and based on the description on
page 6, paragraph 0023, each planar member of different size is configured
for a particular object; therefore, one planar member cannot be interchanged
into another planar member of different size” (Ans. 7).
Claim 1, from which claim 31 depends both directly and indirectly,
recites a device comprising a planar member. Thus, the planar member is
not itself the device, but is instead only an element of the device. The claim
uses the open-ended term comprising, which means that other elements
could be included in the device. For example, the device might also include
a vacuum chamber disposed beneath the planar member, in which case
different planar members, used to accommodate objects having different
shapes and sizes, could be interchanged on top of the vacuum chamber (see
e.g., Spec. 7:¶0027 and Fig. 5). The Appellant’s Specification provides that
if the planar members are specifically configured to the particular object
being loaded into the chambers of the sheet, then “the user who loads a
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variety of objects into target sheets may wish to have a number of planar
members at his or her disposal” (Spec. 6:¶0023). Using our reading of
claim 31, we find that the Appellant’s Specification as originally filed
contains sufficient written description to convey that the Appellant was in
possession of the invention of claim 31.

Rejection of claim 31 under 35 U.S.C. § 112, second paragraph
The Examiner determined that the portion of claim 31 which recites
“when a vacuum is produced within the passageway” renders the claim
indefinite because there is no vacuum source recited in the claim (Ans. 3).
Claim 31 further limits claims 1, 2, 3, and 30 by reciting details about the
structure of the passageway opening. In particular, claim 31 recites that the
passageway opening is “sized and configured so that the object is retained
within the recess when a vacuum is produced within the passageway.” As
such, claim 31 adds a limitation as to the size and configuration of the
passageway opening in terms of its operation under certain conditions, i.e.,
when a vacuum is pulled within the passageway.
The Appellant’s Specification describes that in operation, a pump P
forms a vacuum within each fluid passageway 22 and that the vacuum tends
to draw an object toward the floor of a respective recess 20 (Spec. 8:¶0028).
The Figures also show an object disposed in one of the recesses 20 and show
that the fluid passageway 22 beneath the object is narrower than the width of
the object so that the object is retained within the recess when the vacuum is
produced (Figs. 2A and 2B). Based on this description in the Appellant’s
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Specification, we find that the claim is clear to those skilled in the art, and
thus the claim does not necessitate a positive recitation of the vacuum source
in order to clarify the subject matter of the claim.
The Examiner also determined that the portion of claim 31 which
recites “a number of different planar members can be interchanged into the
device” renders the claim indefinite because this recitation lacks proper
antecedent basis in the Specification (id.). As we found supra, the
originally-filed Specification provides sufficient written descriptive support
for this recitation of claim 31, and as such, the claim is definite.

Rejection of claims 1, 4(1), 6, 16, 22, 23, and 27 under 35 U.S.C. § 102(b)
The Appellant argues that the Examiner erred in rejecting independent
claim 1 because Berry does not disclose a recess that is “sized and
configured so that substantially all of at least one of the plurality of objects
may fit therein” as recited in the claim (App. Br. 10-12). In particular, the
Appellant contends that the only reasonable reading of Berry is that the
seeds are held at or only partially in the countersunk holes and that such a
disclosure does not anticipate the claim language requiring that
“substantially all” of an object may fit within a recess (App. Br. 12).
In order to determine whether Berry anticipates claim 1, we must first
interpret the phrase “substantially all” as used in claim 1, and then we must
determine the scope and content of Berry. We determine the scope of the
claims in patent applications not solely on the basis of the claim language,
but upon giving claims “their broadest reasonable interpretation consistent
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with the specification” and “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The ordinary and customary meanings of “substantially” include
“considerable in extent” or “largely but not wholly that which is specified”
(Fact 1). The Appellant’s Specification describes, with reference to a
preferred embodiment, “it may be preferable for the planar member recesses
to be sized and configured to receive substantially all of one, and even more
preferably only one, object to be loaded into a blister-like chamber of the
target sheet” (Spec. 6:¶0023). Both embodiments of the planar member,
shown in Figures 2A and 2B, depict a tablet completely disposed within
recess 20 such that the recess is sized and configured to receive the entire
tablet. The Appellant argues that the “substantially all” claim language does
not read on holes sized and configured so that the seeds are held “at or only
partially in the countersunk holes” (App. Br. 12). As such, we find that the
phrase “substantially all” when read in light of the Appellant’s Specification,
requires the recesses of the planar member to be sized and configured so that
the objects fit almost wholly within each recess and do not extend much, if
at all, above the top surface of the planar member. This comports with the
Appellant’s argument that “substantially all” does not read on recesses sized
and configured so that objects are only partially in the recesses. Rather, the
objects should fit largely, or almost wholly, within the recesses.
Bearing this understanding of the claim scope in mind, we now turn to
the disclosure of Berry. Berry discloses a seeder apparatus having a seeder
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plate 18 with counter-sunk seed holes 38 (Fact 2). The counter-sunk seed
holes 38 are larger on a front side 40 than on a backside 41 (Fact 3). Berry
describes that the seed pellets are larger than the countersunk holes and are
held in a hole by a negative pressure applied by a pressure plenum (Fact 4).
It is not clear from our reading of Berry whether the seed pellets are larger in
size than the size of the holes on the front side 40 of the seeder plate 18 or
the backside 41 of the seeder plate 18 (Fact 5). Berry does not describe or
depict in any of its drawings where the seed pellets reside relative to the
holes in the seeder plate (Fact 6).
This disclosure in Berry is inexact and is susceptible of two different
interpretations. The Examiner interprets this passage from Berry to mean
that the countersunk hole can be divided into a major upper portion that is
equivalent to the claimed recess and a minor lower portion that is equivalent
to the claimed fluid passageway (Ans. 8). The Appellant interprets this
passage to mean that the countersunk hole is sized to hold the seeds at or
only partially in the countersunk holes and does not contain a sufficient
disclosure to definitively conclude that the countersunk hole holds
substantially all of each seed therein as claimed (App. Br. 10-12). We agree
with the Appellant that the passage in Berry relied upon by the Examiner is
amenable to these two different interpretations, and that each interpretation
is as likely to be true as the other interpretation.
Fortunately, the law provides a way out of this conundrum. In the
first instance, the Examiner has the burden of proof of establishing prima
facie anticipation by a preponderance of the evidence. That is, the Examiner
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must show that it is more likely than not that the reference discloses the
features upon which the Examiner relies. In this instance, because it is
equally likely that the Appellant’s interpretation of the reference is correct,
rather than the Examiner’s, the Examiner has not satisfied his burden of a
preponderance of the evidence. Accordingly, we are unable to find that the
holes in Berry are sized and configured so that substantially all of the seed
pellets fit within each hole. As such, we find that Berry does not anticipate
the subject matter of claim 1. For these same reasons, we will not sustain
the rejection of claims 4(1), 6, 16, 22, 23, and 27, all of which depend from
claim 1, as anticipated by Berry.

Rejection of claims 2, 3, 4(2/3), 7, 19, 23-26, 28-30, and 31(1/2/3/30) under
35 U.S.C. § 103(a)
The Appellant contends that the Examiner failed to set forth a prima
facie case of obviousness of claims 2-4, 7, 19, 23-26, and 28-31 because
“there is no explicit analysis of teaching, suggestion or motivation to
combine [Berry and Scharch]” (App. Br. 15). The Examiner determined that
it would have been obvious to modify the seed planting device of Berry by
providing the planar member with rails forming grooves between rows of
countersunk holes, as taught by Scharch, in order to guide the objects along
the groove and into the countersunk holes (id.). The Examiner added that
“[s]uch modification would greatly improve the process of filling
countersunk holes with seeds and is thus obvious to the skilled artisan to
combine the teaching of the two references” (Ans. 10).
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The Examiner’s proposed modification to the seeding device of Berry
is more than just the predictable use of prior art elements according to their
established function. In this case, the Examiner is taking the rails from
Scharch’s device and adding it to Berry’s seeder device. In this instance, the
Examiner must articulate some reasoning with a rational underpinning to
support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR, 127 S. Ct. at 1741. For
example, as explained in KSR, the reasoning might be based on “interrelated
teachings of multiple patents; the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art.” 127 S. Ct. at 1740-
41. In this case, the Examiner has provided only a conclusory statement of
obviousness.
Further, we are persuaded by the Appellant’s argument that
incorporation of rails and grooves on Berry’s seeder plate would be
counterproductive because Berry’s system uses a vibration mechanism to
place the seeds in the countersunk holes (Reply Br. 5). As such, the
Examiner has failed to provide a suitable reason why one having ordinary
skill in the art would have been led to modify the seeder plate of Berry with
the rails and grooves of Scharch to result in the claimed invention. Thus, we
will not sustain the rejection of claims 2, 7, 19, 23, 24, and 28 under 35
U.S.C. § 103(a) as unpatentable over Berry and Scharch. For the same
reasons, we will also not sustain the rejection under 35 U.S.C. § 103(a) of
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claims 3, 4(2/3), 25, 26, 29, 30, and 31(1/2/3/30), which depend directly or
indirectly from claims 1, 2, 19, and 28.

CONCLUSIONS
We conclude the Appellant has shown that the Examiner erred in
rejecting claim 31 under 35 U.S.C. § 112, first and second paragraphs. The
Appellant has further shown that the Examiner erred in rejecting claims 1,
4(1), 6, 16, 22, 23, and 27 under 35 U.S.C. § 102(b) as anticipated by Berry
and claims 2, 3, 4(2/3), 7, 19, 23-26, 28-30, and 31(1/2/3/30) as unpatentable
over Berry and Scharch.

DECISION
The decision of the Examiner to reject claims 1-4, 6, 7, 16, and 19-31
is reversed.
REVERSED

JRG

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