N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ ACME SCALE COMPANY, INC., Appellant

v.

LTS SCALE COMPANY, L LC, Appellee

______________________

2014

- 1721

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 95/001,401.

______________________

Decided: June 10, 2015

______________________
G RANT H. P ETERS , Barnes & Thornburg LLP, Chicago, IL, argued for appellan t. Also represented by D ANIEL P. A LBERS

.

B RIJ K UMAR A GARWAL , E ckert Seamans Cherin & Mellott, LLC, Pittsburgh, PA, argued for appellee. Also represented by R OBERTA J ACOBS -M EADWAY , Philadelphia, PA.

______________________
Before W ALLACH , T ARANTO , and C HEN , Circuit Judges.ACME SCALE CO

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W ALLACH , Circuit Judge

. Acme Scale Company, Inc. (“Acme”) appeals the dec ision of the Patent Trial and Appeal Board (“Board”) finding claims 9, 10, and 20

– 22 of U.S. Patent No. 7,757,946 (“the ’946 patent”) unpatentable under 35 U.S.C . §§ 102(b) and 103(a). 1 See LTS Scale Co., LLC v. Acme Scale Co. , No. 2012

- 009300, 2014 WL 1692219 , at *1 ( P.T.A.B. Apr. 28, 2014) (“Rehearing Decision”). Because of the reasons set forth below, this court reverses and remands.

B ACKGROUND

I. The ’946 P atent The ’946 patent is titled “Material Transport In

Motion Product Dimensioning System and Method” and relates to “[m]ethods, systems, and devices to obtain dimensions of an article or product in association with material handling vehicles.” ’946 paten t, Abstract. “A dimension detection device is installed in an enclosure and is used to acquire geometrical dimensions of the object in association with the vehicle.” Id . In order to determine the precise dimensions, including the weight of the object, a “computer system subtracts a predetermined or recalled dimension f o r the material handling vehicle from the total dimension of the product and material handling vehicle to determine the dimensions of the product alone.” Id. col. 1 ll. 62

– 65.

Claim 9 is illustrative and recites:

1 Section 103 has since been amended. See Leahy Smith America Invents Act, Pub. L. No. 112

- 29, § 3(c), 125 Stat. 284, 287

– 88 (2011) (“AIA”). However, because the application that led to the ’ 946 patent was filed before March 16, 2013, the pre

- AIA § 103(a) applies. See AIA, 125 Stat. at 293.ACME SCALE CO

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A system for ac tiv e ly di me nsioning an a rti cle, the system com prisi n g:

a ma te ri al ha ndling ve hi cle

, at le a st one ac tive linear dimension detection devi ce a tta c hed to a portion of the material ha ndli ng

ve hi cle, the di me nsion detec tion de vi ce position ed
to move w ith the ve hi cle a nd to activ e ly detect at l ea st one lin ea r dimen sion of the a rti cle wh en the artic le is lo aded onto the mate ri al ha ndling veh icle; a nd

a com puter syst em in communi ca tion w ith at least

one lin ea r di me nsion detection de vi ce , the com pu ter system be ing ada pt ed to determ ine at l ea st one lin ea r di me nsion of the ar ti cle.

Id . col. 6 ll. 25

– 37 (emphasis added to disputed claim language)

. II. The Prior Art: BourgoinACME SCALE CO

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cessing card, a connection card and a video card. ” Id . col. 2 ll. 35

– 38.

III. Procedural Posture

A fter issuance of the ’946 patent, LTS Scale Company, LLC (“LTS”) filed a reexamination request with the United States Patent and Trademark Office (“PTO”)

. On August 15, 2011, the PTO Examiner (“Examiner”) issued

a decision confirming the patentability of claims 9, 10, and 20

– 22 of the ’946 patent

. LTS subsequently filed an appeal from the Examiner’s decision. The appeal resulted in a May 18, 2013

, Decision on Appeal , (J.A. 2

– 16), (“In itial Decision”) by the Board reversing the Examiner’s decision and thereby rejecting claims 9 and 20

– 22 of the ’946 patent as unpatentable under 35 U.S.C. §§ 102(b) and 103(a) in light of Bourgoin individually

, and Bourgoin in combination with other prior art. The Board also rejected claim 10 as obvious in light of Bourgoin in comb ination with other prior art.

D ISCUSSION

I. This Court Has Jurisdiction over Acme’s Appeal As a threshold matter, LTS argues “[t]his [c]ourt does not have jurisdiction over this Appeal because Acme failed to exhaust its right to request rehearing before the Board.” Appellee’s Br. 16. LTS also contends that Acme was required “to request that the Acme Patent be r emanded to the reexamination Examiner to consider an amendment to the rejected claims and/or new evidence related to the claims so rejecte d, along with any further comments or response thereto regarding the Rehearing Decision.” Id . (internal citation s omitted).

Acme counters that it “exhausted its remedies below and it would be futile in any event to seek further review” because “[t]he Board granted the rehearing only to fu rther interpret Bourgoin to invalidate th [e] claims [at issue] .” Reply Br. 6. Th erefore , Acme argues “[t]heACME SCALE CO

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[Board’s] decision did not change in substance or effect. ” Id

. Instead, according to Acme, “ the Board merely f urther explained the basis for its first decision.” Id

. “The parties to an appeal to the Board may not appeal to [ this court] under [37 C.F.R,] § 1.983 [ 2 ]

. . . until all parties’ rights to request rehearing have been exhausted, at which time the decisio n of the Board is final and a ppealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81 (2014)

. The initial appeal to the Board resulted in a decision dated May 18, 2013. Acme subsequently filed for rehea ring and the Board issued its decision on April 29, 2014. The Board stated the decision “is deemed to incorporate the [May 18, 2013 decision] reflecting [ the Board’s ] dec ision for appeal.” Rehearing Decision at *6 (second alter ation in original) (quoting 37 C.F. R. § 41.79(d)). The Board also stated the “R ehearing decision is hereby designated, with respect to the facts addressed here, ‘in effect, a new decision .’” Id . (quoting 37 C.F.R. § 41.77(d)) (emphasis added).
In reversing an Examiner’s determination not to make a rejection proposed by a third party requester, the

“ proposed rejection [] will be set forth in the decision of

2 37 C.F.R. § 1.983 states: (a) The patent owner or third party r e quester in an inter partes reexamination pr o ceeding who is a party to an appeal to the Patent Trial and Appeal Board and who is dissatisfied with the d ecision of the Patent Trial and Appeal Board may, subject to § 41.81, appeal to the U.S. Court of A ppeals for the Federal Circuit and may be a party to any a p peal thereto taken from a reexamin a tion decision of the Patent Trial and Appeal Board.ACME SCALE CO

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the [Board] as a new ground of rejection .” 37 C.F.R. § 41.77(a). “Any decision which includes a new ground of rejection . . . shall not be considered final for judicial review.” Id . § 41.77(b). When a new ground of rejection is made, the patentee, “within one month from the date of the decision, must exercise one of the following two o ptions with respect to the new ground of rejection to avoid termination of the appeal proceeding as to the rejected claim.” Id

. (emphasis added)

. The patentee may either reopen prosecution or request rehearing.
By contrast, in a rehearing decision, as opposed to an initial appeal taken by a party, whe n the Board dete rmines its decision is a “new decision,” parties to the appeal “ may , within one month of the new decision, file a further request for rehearing of the new decision.” Id

. § 41.79(d) (emphasis added) . Th erefore

, as it did in this instance, when the Board renders its decision on rehea ring as a new decision, both parties have a one month window to request a rehearing of the rehearing decision. However, the language employed by the regulation is permissive and provides a party the opportunity to pursue another rehearing should it choose to do so. Such permi ssive language stands in contrast to the language e mployed in § 41.77( b ) of the same regulation, which mandates that parties must either reopen prosecution or request rehearing. Id

. § 41.77 (b)(1)

– (2)

. Th erefore, the PTO impose s different demands on parties who receive Board decisions containing new grounds of rejections and those who receive a Board rehearing decision deemed a “new decision.” As dictated by the permissive language of the re gulation, it is not incumbent on a party to seek a rehearing after the Board issues its decision on a request for rehearing that it deems a “new decision.”
A different reading of the regulation as urged by LTS would engender an illogical outcome where th e PTO would continuously require parties to seek further rehea rings, irrespective of the fact that the Board has alreadyACME SCALE CO

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entertained the party’s claim on the initial request for rehearing

. Additionally, during oral arguments, counsel for LTS argued that upon the Board’s rehearing decision, Acme is only entitled to pursue one of two options: 1) it may protect its appellate rights by filing another request for rehearing; or 2) “the party might decide to go home.” Oral Arg. at 22 : 58

– 23: 05
, available at http://www.cafc

. uscourts.gov/oral

- argument

- recordings/2014

- 1721/all

. In other words, counsel for LTS asserts that a party must file a second request for rehearing to the Board or lose its appellate rights al together whenever the Board declares its ruling on rehearing to be a “ new decision. ” See 37 C.F.R. § 41.79(d)

. B y entering a “new decision” when a party seeks a rehearing after an earlier rehearing dec ision

, the Board could theoretically create a perpetual appeal rehearing cycle, thus abrogating this court’s appe llate jurisdiction

. In effect, LTS’s reading of the regulation would permit the PTO (an executive branch entity) to strip away this court’s appellate jurisdiction . W e think the PTO never intended such an outcome.

II. Acme’s Claims Are Properly Before t his Court LTS next argues that Acme failed to “challenge the r ejections over Bourgoin in combination with other art , i.e., [r]ejections 3

– 5.” Appellee’s Br. 18. In its Initial Dec ision, in addition to i ts rejection of claims 9 and 20

– 22 under 35 U.S.C. §§ 102(b) and 103(a) as anticipated and obvious in light of Bourgoin, the Board also rejected the claims as obvious over Bourgoin in view of U.S. Patent No. 6,115,114 (“Berg”). The Board rejected claims 9 and 20 as obvious over Bourgoin in view of U.S. Patent No. 6,983,883 (“Riddling”) and claim 10 as obvious over Bou rgoin in view of Berg and U.S. Patent Application Public ation No. 2004/0102870 (“Anders e n”)

. LTS contends that because
[t]hese rejections have not been challenged by Acme[,] . . . even if this [c]ourt were to grant theACME SCALE CO

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relief sought by Acme in this [a]ppeal by reversing [r]ejections 1 and 2

. . . all of claims 9

– 10 and 20

– 22 would still re main rejected under one or more of [r]ejections 3

– 5. Appell ee’s Br. 18. Acme claims that because Bourgoin does not antic ipate claims 9, 10 or 20

– 22, “it

. . . cannot be applied on its own or used in combination with other references because it does not teach that element . . . and therefore, would not be combined with other references under 35 U.S.C. § 103 in order to render the claims obvious.” Reply Br. 8– 9.

The three other prior art reference bases f or rejection which Acme does not challenge on appeal d o not rely on Bourgoin to disclose a material ha ndling vehicle, but instead appears to combine Bourgoin with a forklift disclosed in Berg, Ridling

, and Anderson

. Although the Board cited these prior art references

, neither the Initial nor the Rehearing Decision ground the obviousness rejections of claim s 9, 10
, and 20

– 22 on these secondary references in combination with Bourgoin

. Accordingly, Bourgoin is the only reference before this court. We now address whether substantial evidence support s the Board’s finding that Bourgoin discloses or teaches a

ma terial handling vehicle within the meaning of that terminology in the ’946 patent.

III. Bourgoin Does Not Anticipate Claims 9 and 20

– 22 of the ’946 Patent Because It Does Not Disclose a Material Handling Vehicle “During reexamination, as with original exam ination, the [Board] must give claims their broadest reasonable construction consistent with the specification.” In re ICON Health & Fitness, Inc ., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr ., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). Thus, this court re-ACME SCALE CO

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views the Board’s interpretation of disputed claim la nguage to determine whether it is “reasonable.” In re Morris , 127 F.3d 1048, 1055 (Fed. Cir. 1997)

. In this case, no factual findings underlie the Board’s interpretation

. See Teva Pharm s . USA, Inc. v. Sandoz, Inc ., 135 S. Ct. 831 (2015) (in litigation context, only factual findings underlying claim construction call for deferential review).

“ Anticipation is a question of fact reviewed for su bstantial evidence. ” In re Mo rsa , 713 F.3d 104, 109 (Fed. Cir. 2013). A reference is anticipatory under 35 U.S.C. § 102(b) when the reference discloses each and every element of the claimed invention, whether it does so explicitly or inherently. See Eli Lily & Co. v. Zenith Goldline Pharm s ., Inc ., 471 F.3d 1369, 1375 (Fed. Cir. 2006). Although those elements must be “arranged or combined in the same way as recited in the claim s ,” Net MoneyIN, Inc. v. VeriSign, Inc ., 545 F.3d 1359, 1370 (Fed. Cir. 2008), the reference need not satisf y an ipsissimis verbis test
, In re Bond , 910 F.2d 831, 832 (Fed. Cir. 1990) (citations omitted). Additionally, the reference must “enable one of ordinary skill in the art to make the inve ntion without undue experimentation.” Impax Labs., Inc. v. Aventis Pharm s . Inc ., 545 F.3d 1312, 1314 (Fed. Cir. 2008). Finally, as long as the reference discloses all of the claim limitations and enables the “subject matter that falls within the scope of the claims at issue,” the reference anticipates. Schering Corp. v. Geneva Pharm., Inc ., 339 F.3d 1373, 1380

– 81 (Fed. Cir. 2003).
Both Acme and LTS agree Bourgoin discloses a table fitted with rollers having a system equipped with scales which serves as a dimensioning device to measure the characteristics of an object

. The precise issue on reexa mination and before this court on appeal is whether the broadest reasonable interpretation consistent with the specification of the term “material handling vehicle” encompasses a table with fitted rollers as disclosed in Bourgoin.ACME SCALE CO

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In its Rehearing Decision, the Board concluded that Bourgoin anticipates claims 9, 10

, and 20

– 22 of the ’946 patent because it “discloses a material handling vehicle.” Rehearing Decision at *6. The ’946 patent defines the
term “ material handling vehicl e” to “broadly include transportation vehicles such as

, for example

, but not limited to , a fork lift truck, a flatbed truck, or a pallet truck.” ’946 patent col. 2 ll. 39

– 41 (emphasis added). In its Initial Decision, the Board concluded that “[w]hile the ’946 Patent may contemplate a forklift, pallets, pallet trucks, lift trucks, and flatbed trucks, as exemplary forms of a ‘ material handling vehicle, ’ that is insufficient to imbue the term with a special meaning disassociated from its ordinary and customa ry meaning.” Initial Decision at 11. The Board reiterated this finding in the Rehearing Decision when it found that “Acme [did] not cite to a specific definition of the term ‘material handling vehicle.’” Rehearing Decision at *3.

Acme contends that “Bou rgoin does not include each and every element of independent claims 9 and 20” b ecause “[t]he table with rollers in Bourgoin is not a mater ial handling vehicle.” Appellant’s Br. 16

– 17. Acme also argues that “[w]hile the Bourgoin table is fitted with rolle rs, the purpose of the ‘ rollers ’ is ‘so that it can be displaced to suit the user’s needs’ or ‘the machine may be moved in workshops or other sites.’” Id . at 17 (citing Bourgoin col. 3 ll. 42

– 43, col. 2 l. 6). Finally, Acme claims Bourgoin “teaches that one of its ‘ severe constraints ’ is that it must be protected ‘against excessive vibration during transport in alleys or between different sites.’” Id

. at 1 7–1 8 (citing Bourgoin col. 2 l. 6).
LTS asserts that absent a patentee’s ‘“intent to dev iate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction representing a clear disavowal of claim scope,’” patent “ claims are to be given their plain meaning and thus giv en the broadest reason a-ACME SCALE CO

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ble interpretation consistent with the specification .” Appellee’s Br. 23 (quoti ng Am. Acad.

, 367 F.3d at 1365

. LTS argues that the sentence in the ’946 patent that aims to define the term material handling vehicle, “does not . . .

c onstitute an expression of ‘manifest exclusion or r estriction, representing a clear disavowal of claim scope’ that would demonstrate that a meaning other than the plain meaning was intended from the outset.” Id . at 24 ( quoting Am. Acad.

, 367 F.3d at 1365)

. Rather, because the definition employs “broad, inclusive, and non

- limiting expressions like ‘ broadly’, ‘ include ’, ‘ such as ’, ‘ for example ’, and ‘ but not limited to

, ’” the inclusion of devices such as forklifts, flatbed trucks and pallet trucks do not sug gest that the ’946 patent was intended to be limited strictly to these devices. Id

. The ’946 patent’s specification, in defining the term

“ material handling vehicle ,” states that it “broadly i nclude [s] transportation vehicles such as, for example, but not limited to, a fork lift truck, a flatbed truck, or a pallet truck. ” ’946 patent col. 2 ll. 38

– 41

. The ’946 patent identifies only commercial transportation vehicles as exemplary forms of a “material handling vehicle.” Al though the term “ broadly” suggests the patent enco mpasses a wide range of devices which can be considered vehicles, the attachment of a roller to a table

, without

more, does not render the table a vehicle in light of the subspecies of material handling transportation vehicles identified in the ’946 patent

. The broadest reasonable construction of the term “material handling vehicle” is limited to a device that is capable of moving and whose function is to transport the material to be m easured.
Bourgoin satisfies the first aspect of this definition ; when equipped with rollers

, it is capable of movement. However, unlike the dimension detection device in the ’946 patent, the device in Bourgoin was not intended to be “positioned to move with the vehicle

. ” Id

. col. 6 ll. 14

– 15

.ACME SCALE CO

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Bourgoin urges users to protect “against excessive vibr ation during the transport[ation] [of the table] in alleys or between different sites ,” thus suggesting it is not intended for transport. Bourgoin col. 2 ll. 7

– 8. The inclusion of rollers makes movement easier (the table need not be lifted); and the movement can take place with items on the table. However, i t stretches the bounds of any re asonable interpretation to say that, by virtue of those fac ts, the table is a “vehicle.”

If this court were to adopt the Board’s interpretation, any object capable of holding items and made more easily movable by attachment of rollers, would constitute a vehicle

, irrespective of the fact that the object is prima rily intended to be stationary. Such a reading would render the claim language of the ’946 patent overly broad. Therefore, even under the most expansive construction rubric , such an interpretation is unreasonable and inco nsistent with the specification o f the ’946 patent.

IV. Because Bourgoin Does Not Teach or Suggest a Mat e rial Handling Vehicle

, Claims 9 and 20

– 22 of
t he ’946 Patent Are Not Obvious In addition to the Board’s rejection of claims 9 and 20

– 22 as anticipated by Bourgoin, the Board also rej ected the claims under 35 U.S.C. § 103(a) as obvious over Bou rgoin

. An obviousness rejection may be challenged “ by showing that the Board reached an incorrect conclusion

. .

. or that the Board based its obviousness determination on incorrect factual pre dicates. ” In re Rouffett , 149 F.3d 1350, 1355 (Fed. Cir. 1998).

This court reviews the ultimate determination of o bviousness as a question of law based on relevant factual findings. In re Mouttet , 686 F.3d 1322, 1330 (Fed. Cir. 2012) (citing KSR Int’l Co. v. Teleflex Inc ., 550 U.S. 398, 4 27 (2007); In re Gartside , 203 F.3d 1305, 1316, 1319

, (Fed. Cir. 2000)). This court reviews the Board’s determ ination of obviousness de novo and its factual findings forACME SCALE CO

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substantial evidence. Gartside , 203 F.3d at 131 6. “The factual predicates underlying an obviousness determin ation include the scope and content of the prior art, the differences between the prior art and the claimed inve ntion and the level of ordinary skill in the art.” Rouffett

, 149 F.3d at 1355. Sub stantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison Co. v. NLRB

, 305 U.S. 197, 229 (1938).
In its Initial Decision, the Board addresse d only A cme’s anticipation arguments and thereby limited the discussion to whether, “[u]nder § 102, [] Bourgoin di sclose [s] a material handling vehicle[.]” Initial Decision at 5 . In the Rehearing Decision, the Board acknowledged that the classification of Acme’s contentions solely under sectio n 102 was “too narrowly stated

, ” Rehearing Decision at *2, and subsequently modified the issue on appeal to incorporate Acme’s § 103 arguments that Bourgoin does not provide a ‘“primary foundational reference under 35 U.S.C. § 103 either alone, or in combi nation’ with the secondary references.” Id

. (internal citation omitted). Accordingly, during the Rehearing Decision, the Board modified the issue to whether “ Bourgoin discloses that its table is a material handling vehicle and alternatively suggests and t eaches that its table can be used as a mat erial handling vehicle .” Id

. Although the Board sought to bisect the anticipation and obviousness inquiries during the Rehearing Decision, it failed to do so. The Board’s sole effort to address A cme’s § 103 arguments was a conclusory statement made at the end of the Rehearing Decision stating that “one of ordinary skill in the art would have viewed Bourgoin as teaching or suggesting that Bourgoin’s table with rollers could be used to transport the package or object 23 from one location to another location, thereby using it as a material handling vehicle.” Id

. at *6.ACME SCALE CO

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In addition to this court’s finding that Bourgoin does not disclose a material handling vehicle, we also find that a skilled artisan would not have viewed Bourgoin as teaching or suggesting that a table fitted with rollers could be used as a material handling vehicle. Bourgoin states that the “system may be placed on a table fitted with rollers.” Bourgoin col. 2 ll. 37

– 38. Nothing in Bou rgoin lends support to the idea that the fitted rollers are intended to aid the table in functioning as a mechanism capable of transporting an object from one location to another. Rather, the patent clearly expresses that the rollers are merely an option avail able to a user who decides that the table need s to be relocated.
Bourgoin discloses that the primary utility served by the rollers is to allow the table to be “displaced to suit the user’s needs.” Id

. col. 3 l. 43

. It appears the primary function served by the rollers is to reduce the effort exer ted by the user whe n moving the device from one location to another. Therefore, t he table itself does not function as the device that transports. Instead, when fitted w it h rollers, it is the device being transpo rted as opposed to the device doing the transporting. However, the ability to

move a device primarily intended to be stationary does not transform an object into a vehicle. Any alternative reading is illogica l

. There is no difference between fitting rollers to a table in order to aid movement and fitting such rollers to other heavy objects such as a piano or ping pong table to relocate the object according to the user’s needs . Classifying the aforementioned objects as vehi cles simply because the rollers have rendered them capable of movement is unreasonable.

C ONCLUSION

For the foregoing reasons, the PTO’s decision is

REVERSED AND REMANDE D