Ex Parte Sames

Patent Trial and Appeal Board

Jan 22, 2013

10892389 (P.T.A.B. Jan. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JORG SAMES
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Appeal 2010-006255
Application 10/892,389
Technology Center 3600
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Before: WILLIAM V. SAINDON, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/892,389

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 33-42. Claims 1-22 are cancelled and claims 23-32
are withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 33, 37, and 40 are independent. Claim 33, reproduced below,
is illustrative of the claimed subject matter:
33. A pickup apparatus for use with sausage
packaging machines having a loop feed means for
transporting loops, the pickup apparatus
comprising:
a non-rotating pickup having a front end
extending downward from a horizontally
extending portion;
a moveable pin movable vertically between
a first position extending through a transported
loop and engaging the pickup front end and a
second position distal the pickup front end; and
a torque support positioned about the pickup
front end, the torque support selectively engaging
the pickup front end,
the moveable pin having a contact surface
engaging the pickup front end is such a way that
the pickup front end does not bear against the
torque support when the moveable pin is in the
first position.

REJECTIONS
1. Claims 33-42 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement;
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2. Claims 33-42 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite; and
3. Claims 33 and 35 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Jahns (DE 38 06 467; pub. May 11, 1989).

OPINION
Enablement
The Examiner asserts that
[t]he movement of the loop from positions indicated at 130 to
the position at 116 is not described in the specification in such a
way as to enable one skilled in the art to which it pertains, or
with which it is most nearly connected, to make and/or use the
invention because it is not understood how the loop can cross
the torque support means absent interference.
Ans. 3. Appellant challenges the Examiner’s enablement rejection of claims
33-42. App. Br. 7-11; Reply Br. 5-6.
When rejecting a claim for lack of enablement, the USPTO bears an
initial burden of setting forth a reasonable explanation as to why the
Examiner believes that the scope of protection provided by the claim is not
adequately enabled. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993).
The Examiner makes no attempt to explain why it would require undue
experimentation for one of ordinary skill in the art to make and/or use the
invention. Ans. 3. For example, the Examiner does not address any of the
Wands factors. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Even if
it is not clear from Appellant’s disclosure exactly how the loop can cross the
torque support means without interference, as the Examiner maintains, it
does not necessarily follow that undue experimentation would be required to
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Application 10/892,389

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make and use the claimed invention. Accordingly, we do not sustain the
Examiner’s rejection of claims 33-42 as lacking enablement.

Indefiniteness
The Examiner asserts that claims 33-42 are indefinite because “the
preamble recites a ‘pickup apparatus’, but it is not set forth what the
apparatus does; i.e., what item does it pick up and how?” Ans. 3-4. The
Examiner explains that the issue “is that the body of the claims do not recite
any structure which operates to perform the function recited in the
preamble.” Ans. 7. Failure of the body of the claim to recite structure which
carries out the purpose recited in the preamble may raise a question as to
whether the preamble should be given patentable weight, but it does not
make the claim per se indefinite.
The Examiner has not identified any ambiguity in the claims that
would result in the claims being insolubly ambiguous or that would result in
multiple plausible claim constructions. Therefore, we do not sustain the
rejection of claims 33-42 as being indefinite.

Anticipation
The Examiner finds that Jahns discloses each of the features recited in
claims 33 and 35 including “a torque support means (the unlabeled pins
adjacent and to the right of pin 13 as seen in figs. 1-2) selectively engaging
the pickup front end.” Ans. 4. Appellant argues that “[t]he claims
distinguish over Jahns by including a torque support positioned about the
pickup front end where the torque support selectively engages the pickup
front end.” App. Br. 12; Reply Br. 7. Appellant explains that “[t]he piston
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cylinder units [18] of Jahns engage the main portion of the pickup means”
and “do not selectively engage the downwardly extending front end of the
pickup means.” App. Br. 12; Reply Br. 7-8. In response, the Examiner
explains that “the recitation of the ‘pickup having a front end extending
downward from a horizontally extending portion’ does not define over
Jahns, since the downwardly extending portion of the pickup does not
necessarily comprise the entire front end.” Ans. 4.
During examination of a patent application, pending claims are given
their broadest reasonable interpretation consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). While
Appellant’s Specification describes an embodiment in which the portion of
the front end engaged with the torque support is a downwardly extending
portion of the pickup (Spec. paras. [0026], [0032]; figs. 2, 3), we are not
constrained to read any such arrangement into claim 33 when Appellant has
chosen to claim the invention using broad language, which under the
broadest reasonable interpretation, does not require such an arrangement.
Appellant does not point to anything other than the claim language itself to
support the position that claim 33 requires the entire front end to extend
downward.
We agree with the Examiner that the claim language “a front end
extending downward from a horizontally extending portion,” under its
broadest reasonable interpretation, does not require the entire front end to
extend downward. Therefore, we also agree with the Examiner’s finding
that “the portion of Jahn’s pickup that the torque support means selectively
engages is considered to be ‘a front end’ of the pickup (as is apparent from
figs. 1-2) . . . even though it is not the downwardly extending portion
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thereof.” Ans. 4-5. Accordingly, we sustain the Examiner’s rejection of
claim 33 as being anticipated by Jahns. Claim 35 depends from claim 33
and is not argued separately. Thus, claim 35 falls with claim 33.

DECISION
We REVERSE the Examiner’s decision to reject claims 33-42 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
We REVERSE the Examiner’s decision to reject claims 33-42 under
35 U.S.C. § 112, second paragraph, as indefinite.
We AFFIRM the Examiner’s decision to reject claims 33 and 35
under 35 U.S.C. § 102(b) as being anticipated by Jahns.

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).

AFFIRMED-IN-PART

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