Ex parte Troisi

Board of Patent Appeals and Interferences

Jan 31, 2000

08370095 (B.P.A.I. Jan. 31, 2000)

Application for patent filed January 9, 1995, entitled1
(as amended in Paper No. 5) "Checkweigher Which Weighs Product
Suspended By Flange," which is a continuation of Application
07/942,647, filed September 9, 1992, now U.S. Patent
5,434,366, issued July 18, 1995.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
_______________
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte DAVID A. TROISI

Appeal No. 1997-4441
Application 08/370,0951

ON BRIEF

Before THOMAS, BARRETT, and DIXON, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
Appeal No. 1997-4441
Application 08/370,095
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DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 3-7, 9, and 11.
We reverse.
BACKGROUND
The disclosed invention is directed to method and
apparatus for weighing products having an outwardly extending
flange.
Claim 1 is reproduced below.
1. In a checkweigher for use in weighing products
having a footprint and an outwardly projecting flange of
either a circular or oval configuration above said
footprint, said checkweigher having a weigh pan
vertically deflectable to provide a signal indicative of
the weight of said products and a product conveyor having
a pair of parallel, product supporting conveyor elements
arranged to move across and in surface engagement with
said weigh pan for transporting said products one at a
time across said weigh pan to effect weighing thereof,
the improvement comprising in combination:
said conveyor elements being arranged to underengage
with said flange of said product only immediately
adjacent the periphery of said flange of said product
while said product is moving across said weigh pan, and
said weigh pan having a length in a direction of movement
of said conveyor elements corresponding essentially to
the length of said products, as measured in said
direction of movement.
The Examiner relies on the following prior art
references:
Appeal No. 1997-4441
Application 08/370,095
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Brook 4,163,488 August 7, 1979
Born et al. (Born) 4,802,571 February 7, 1989
Harwood et al. (Harwood) 2,160,985 January 2,
1986
(UK Patent Application)
Claims 1, 3-7, 9, and 11 stand rejected under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out
and distinctly claim the subject matter which applicant
regards as his invention.
Claims 1, 3-7, and 9 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Born and Brook.
Claim 11 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Born, Brook, and Harwood.
We refer to the Final Rejection (Paper No. 9) (pages
referred to as "FR__") and the Examiner's Answer (Paper
No. 14) (pages referred to as "EA__") for a statement of the
Examiner's position and to the Appeal Brief (Paper No. 13)
(pages referred to as "Br__") for a statement of Appellant's
arguments thereagainst.
OPINION
35 U.S.C. § 112, second paragraph
Appeal No. 1997-4441
Application 08/370,095
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The Examiner states (FR2): "The limitation that the
'weigh pan' has a length that is essentially the length of the
products to be weighed is indefinite because the length of the
weigh pan is based on an unspecified product with an
unspecified length. See MPEP § 2173.05(b) and
Ex parte Brummer, 12 USPQ2d 1652 (Bd. Pat. App. & Inter.,
1989)."
Appellant argues that apparatus claims 1, 3-6, and 11 are
definite because "checkweighers are designed for weighing a
particular product having given dimensions, including a
predetermined length in their direction of movement across the
weigh pan" (Br8) and "[a] checkweigher manufacturer, seller,
or user can readily ascertain whether the limitation as to
weigh pan length is met because the checkweigher is configured
for a stream of like-sized products having known dimensions"
(Br8).
The Examiner responds that it cannot be determined
whether a checkweigher will infringe because the product being
weighed is not part of the claimed subject matter (EA4-5).
We understand the Examiner's position, but we view the
claim language in question as being very broad rather than
Appeal No. 1997-4441
Application 08/370,095
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indefinite. Although the actual dimensions of the lengths are
not specified, it is known when the weigh pan has a "length
. . . corresponding essentially to the length of said
products" (claim 1). Thus, the limitations are definite.
This is different from the facts in Brummer where for given
spacing between front and rear wheels, it was impossible to
determine "the height of the rider that the bicycle was
designed for." For example, for a 4' wheel spacing it could
not be determined whether the spacing was designed for a 5'4'
rider (using the 75 percent value) or designed for a 6'8"
rider (using a 60 percent value). It is the language "that
the bicycle was designed for" that rendered the claim
indefinite.
The apparatus claims at issue are very broad because the
product is not claimed as part of the apparatus and the
relationship between the length of the product to be measured
and the length of the weigh pan is a mere statement of
intended use; i.e., the checkweigher is intended for use with
a product having a length about the same length as the weigh
pan. Statements of intended use do not serve to distinguish
structure over the prior art. See In re Pearson,
Appeal No. 1997-4441
Application 08/370,095
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494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974);
In re Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA
1973); In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA
1967). Appellant recognizes that "products are not a
structural part of the claimed apparatus" (Br10). All prior
art checkweighers should meet the claim limitation of "said
weigh pan having a length in a direction of movement of said
conveyor elements corresponding essentially to the length of
said products, as measured in said direction of movement"
(claim 1), and the similar limitation of claim 11, because
nothing structurally prevents them from being be used with
products having a length corresponding essentially to the
length of the weigh pan. For example, prior art checkweighers
where the conveyor elements do not engage the periphery of the
product (as in the example in Chart I, specification, page 7)
can be used to weigh products having a length "corresponding
essentially to" the length of the weigh pan by using a slower
speed since the effective package length ("pl") is still less
than the overall package length. No distinguishing speed,
settling time, or pitch limitations are recited. The claims
Appeal No. 1997-4441
Application 08/370,095
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are broad, not indefinite. The rejection of apparatus
claims 1, 3-6, and 11 is reversed.
Appellant argues that method claims 7 and 9 are
definite because "products are acted upon (weighed) in the
claimed method" (Br10). We agree that the method claims are
definite because "providing said weigh pan with a length in
said direction of movement not substantially greater than a
length of said products as measured in said direction of
movement" (claim 7) states a definite relationship between the
lengths of the product and the weigh pan. Because the method
acts on the product, the length limitation is not just a
statement of intended use and it is necessary to show the
claimed relationship between the lengths. See In re Mills,
916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990)
("While Mathis' apparatus may be capable of being modified to
run the way Mills' apparatus is claimed, there must be a
suggestion or motivation in the reference to do so."). We
conclude that the method claims are definite. The rejection
of claims 7 and 9 is reversed.
35 U.S.C. § 103(a)
Appeal No. 1997-4441
Application 08/370,095
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Born discloses supporting the product by its flange for
conveying purposes but does not include any weighing means.
Brook discloses transporting poultry carcasses using a
specially designed shackle having a transversely extending pin
which engages the weigh pan. Appellant argues (Br12):
The combination of these references suggests the use of
an intermediate support mechanism, i.e. specially
designed shackles, connecting the products to an overhead
conveyor in a manner whereby a portion of the support
mechanism engages an overhead weigh pan. While
supporting the product by its flange for conveying
purposes is taught, supporting the product by its flange
for weighing purposes is not proposed.
The Examiner states that "[t]he motivation for the
proposed combination seems adequately explained in the final
rejection and the applicant apparently has not explained why
the combination is improper" (EA7).
We find no disclosure or suggestion in Brook that would
have motivated one of ordinary skill in the art to weigh the
products in Born by underengaging the flange of the product
with conveyor elements while the product is moving across a
weigh pan as claimed. The reasons in the Final Rejection are
conclusory and fail to address the significant differences in
structure between the claimed invention and Brook which
discloses using a specially designed shackle. Although the
Appeal No. 1997-4441
Application 08/370,095
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transversely extending pin 24 in Brook could be compared to
the flange of a product, we think that comparison and, thus,
the combination, can only be derived using hindsight. Because
we find no motivation for the combination, the rejection of
claims 1, 3-7, and 9 is reversed. Nevertheless, we also
address the arguments as to the length limitation.
Appellant further argues that the references fail to
teach or suggest the limitation concerning weigh pan length
(Br12):
Born et al lacks weighing means, and thus is silent as to
weigh pan length. In Brook, the weigh pan 18 is not
designed to correspond essentially to the length of the
products because the length of poultry carcasses, by
nature, varies from carcass to carcass. The length of
weigh pan 18, and its relationship to carcass length in
the direction of travel, is neither discussed nor shown
in the drawing figures.
The Examiner states that "the limitation in the claims of
the present application that the length of the weigh pan is
based on a length of an unspecified product with an
unspecified length, is so vague it is meaningless in the
patentable sense" (EA6). As discussed in connection with the
§ 112, second paragraph, rejection, we consider the length
limitation broad, not indefinite. Thus, the Examiner errs to
Appeal No. 1997-4441
Application 08/370,095
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the extent that no weight is given to the limitation in the
patentability analysis.
The Examiner states that the length limitation is a
statement of intended use which does not differentiate the
claimed apparatus from a prior art apparatus satisfying the
structural limitations (EA6). We agree that the length
limitation is a statement of intended use in the apparatus
claims. However, since we find no motivation in Brook to
provide a checkweigher in Born, we do not reach the intended
use issue. As to method claims 7 and 9, the method operates
on the product and the Examiner has not provided any reasoning
why the claimed length limitation would have been obvious. We
think that one of ordinary skill in the checkweighing art had
sufficient knowledge to appreciate that a weigh pan length
equal to the product length is the minimum possible weigh pan
length because otherwise more than one product at a time might
be on the weigh pan. We further believe that one of ordinary
skill in the checkweighing art would have known that a weigh
pan length equal to the product length could be used in prior
art checkweighers because the effective product length ("pl")
is less than the weigh pan length ("wpl"), if one was willing
Appeal No. 1997-4441
Application 08/370,095
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to accept the slower speed. Although not discussed, the
support plate 18 in Brook which forms the weigh pan appears to
be about the same length as the distance between rods 11 and
12. However, none of these reasons have been advanced by the
Examiner. In any case, we find no motivation in the
references for the combination.
We have considered Harwood with respect to claim 11 but
find that it does not cure the deficiencies in Born and Brook.
Accordingly, the rejection of claim 11 is reversed.
CONCLUSION
The rejections of claims 1, 3-7, 9, and 11 are reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 1997-4441
Application 08/370,095
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