Ex Parte Saurer et al

Board of Patent Appeals and Interferences

Oct 18, 2011

10512275 (B.P.A.I. Oct. 18, 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.
10/512,275 05/18/2005 Rouven Saurer R.302946 2705
2119 7590 10/18/2011
RONALD E. GREIGG
GREIGG & GREIGG P.L.L.C.
1423 POWHATAN STREET, UNIT ONE
ALEXANDRIA, VA 22314
EXAMINER
BIDWELL, JAMES R
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
10/18/2011 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 ROUVEN SAURER, ULRICH WIEDUWILT, and
WALTER DIETRICH
____________________

Appeal 2009-014943
Application 10/512,275
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014943
Application 10/512,275
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STATEMENT OF THE CASE
Rouven Saurer et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s rejection of claims 6-20 under 35 U.S.C. § 112, second
paragraph, as indefinite, and under 35 U.S.C. § 112, first paragraph, as
lacking enablement.1,2 We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM, but we denominate our affirmance a NEW GROUND
OF REJECTION pursuant to 37 C.F.R. § 41.50(b).

THE INVENTION
Appellants’ invention is directed to “an improved apparatus for
delivering package inserts from a brochure device to a product conveyor
system.” Spec., para. 2. Claim 6, reproduced below, is illustrative of the
claimed subject matter.
6. An apparatus (10) for delivering package inserts (1) from a
brochure device (15) to a product conveyor system (13), the
apparatus comprising;
an endless conveyor chain (18) on which gripper
elements (19), each for one package insert (1), are disposed at
uniform intervals,

1 The Examiner has withdrawn the rejection of claims 6-20 under 35 U.S.C.
§ 112, first paragraph, as failing to disclose the best mode contemplated by
the inventors. Ans. 3.
2 Although Appellants present arguments directed to the issue of whether the
Specification provides written description support for the claimed subject
matter, the Examiner has not in fact rejected the claims under 35 U.S.C.
§ 112, first paragraph, for failure to comply with the written description
requirement. See App. Br. 17-18; Ans. 3; Fin. Rej. 4-5. In the Final
Rejection, the Examiner objected to claims 7, 9, 11, 13, 15, 17, and 19,
without further explanation, “as containing new matter.” Fin. Rej. 3.
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the conveyor chain (18) extending parallel to and over
part of the conveyor path of the product conveyor system (13),
drive means driving the endless conveyor chain (18)
synchronously with the product conveyor system (13),
dispensing means furnishing the package inserts (1) from
the brochure device (15) to a takeover point (22) located above
and laterally offset from the product conveyor system (13),
the conveyor chain (18) being capable of lateral
deflection to go around curves,
deflection means pivoting the conveyor chain (18) out of
the plane near the conveyor path of the product conveyor
system (13) in the direction of the takeover point (22); and
means guiding the conveyor chain (18) to the takeover
point (22) extending from the level of the product conveyor
system (13) to the level of the takeover point (22).

OPINION
We turn our attention first to the issue of whether the claims
particularly point out and distinctly claim the invention as required by 35
U.S.C. § 112, second paragraph.
We agree with Appellants that the introduction of the terms “fastening
plane” in claims 8 and 9 and “segment” in claims 14-20 do not raise a
definiteness problem. See App. Br. 19. Thus, the two issues alluded to by
the Examiner on page 3 of the Answer, in the statement of the rejection
under 35 U.S.C. § 112, second paragraph, do not constitute a basis for
sustaining the rejection.
However, Appellants’ independent claim 6, and thus each of claims 7-
20 depending therefrom, recites “dispensing means furnishing the package
inserts (1) from the brochure device (15) to a takeover point (22) located
above and laterally offset from the product conveyor system (13),”
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“deflection means pivoting the conveyor chain (18) out of the plane near the
conveyor path of the product conveyor system (13) in the direction of the
takeover point (22),” and “means guiding the conveyor chain (18) to the
takeover point (22) extending from the level of the product conveyor system
(13) to the level of the takeover point (22).” Each of these recitations is a
means-plus-function recitation as provided for in 35 U.S.C. § 112, sixth
paragraph, which states:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
As stated in In re Dossel, 115 F.3d 942, 946 (Fed. Cir. 1997) (quoting
In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994)),
[a]lthough paragraph six statutorily provides that one may use
means-plus-function language in a claim, one is still subject to
the requirement that a claim “particularly point out and
distinctly claim” the invention. Therefore, if one employs
means-plus-function language in a claim, one must set forth in
the specification an adequate disclosure showing what is meant
by that language. If an applicant fails to set forth an adequate
disclosure, the applicant has in effect failed to particularly point
out and distinctly claim the invention as required by the second
paragraph of section 112.
Appellants’ Specification describes a “brochure device 15” including
a magazine 16 for holding flat blanks of the brochures or package inserts.
Spec., para. 13. The Specification further discloses that the inserts are
“gradually withdrawn from the magazine 16, folded, and then transferred to
a conveyor system for the package inserts.” Id. The Specification
additionally describes an insert conveyor system comprising a conveyor
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chain 18 with brochure tongs 19. Spec., para. 14. The Specification,
however, does not disclose the structure which withdraws and transfers the
inserts/brochures from the brochure device 15 to the insert conveyor system.
Appellants’ Specification states that the “brochure device 15 as described
thus far is likewise known per se.” Spec., para. 13. It is not clear whether
such “known” device includes the structure for withdrawing, folding, and
transferring the inserts/brochures. The earlier reference in Appellants’
Specification to a “known apparatus” describes a device comprising two
opposed extracting belts for withdrawing the package inserts from a
brochure device, but implies that such withdrawing device is not part of
Appellants’ invention. See Spec., para. 3. Accordingly, Appellants have not
set forth in their Specification a clear disclosure of structure, aside from the
conveyor chain 18, which performs the function of dispensing or furnishing
the package inserts from the brochure device to a takeover point located
above and laterally offset from the product conveyor system. Indeed, the
reader is left to wonder whether the claimed “conveyor chain (18)” and the
claimed “dispensing means” in fact both read on the same disclosed
structure, i.e., the conveyor chain 18.
For the above reasons, Appellants have failed to set forth an adequate
disclosure showing what is meant by the language “dispensing means
furnishing the package inserts (1) from the brochure device (15) to a
takeover point (22) located above and laterally offset from the product
conveyor system (13).”
Appellants’ Specification describes “a guide plate or deflection means
25, which has a guide groove 26 for the conveyor chain 18” for guiding the
conveyor chain 18. Spec., para. 16. The disposition of the guide plate 25 on
frame 27 of the product conveyor system 13 at an oblique angle and the
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deformability of the conveyor chain 18 appear to permit the conveyor chain
to be guided or deflected toward and away from the product conveyor
system. Spec., para. 16. As such, the guide plate 25 with its groove 26
appears to be the structure for performing the guiding function of the “means
guiding . . .” recitation. Claim 6, however, further recites “deflection means
pivoting the conveyor chain (18),” and Appellants’ Specification does not
disclose any additional structure for performing this function. Accordingly,
Appellants have failed to set forth an adequate disclosure showing what is
meant by the language “deflection means pivoting the conveyor chain (18)”
as an additional recitation separate from the “means guiding . . .” recitation.
In failing to set forth an adequate disclosure of the structure
corresponding to the “dispensing means,” “deflection means,” and “means
guiding” recitations in claim 6, Appellants have in effect failed to
particularly point out and distinctly claim the invention as required by
35 U.S.C. § 112, second paragraph. We therefore agree with the Examiner’s
remark that the metes and bounds of the recited “dispensing means,”
“deflection means,” and “means guiding” in claim 6 cannot be ascertained.
See Ans. 6. We thus sustain the rejection of claims 6-20 under 35 U.S.C.
§ 112, second paragraph. However, because our explanation of the source of
the problem with the claims substantially expounds upon the off-hand
comment made by the Examiner, and because this basis for the rejection
differs from that articulated by the Examiner in the rejection,3 we
denominate our affirmance as a new ground of rejection pursuant to

3 In stating the rejection under 35 U.S.C. § 112, second paragraph, the
Examiner never mentioned this as a basis for the rejection. See Ans. 3; Fin.
Rej. 5; Non-Fin. Rej. 5-6.
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37 C.F.R. § 41.50(b), to provide Appellants with an opportunity to respond
thereto.
In light of our determination that the metes and bounds of claims 6-20
cannot be ascertained, such that substantial speculation as to the scope of the
claims would be required to permit a determination as to compliance with
the first paragraph of 35 U.S.C. § 112, we do not reach the issue of whether
Appellants’ Specification provides an enabling disclosure of the subject
matter of claims 6-20.

DECISION
For the above reasons, we affirm the Examiner’s decision to reject
claims 6-20, but we denominate our affirmance as a new ground of rejection.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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