NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit ______________________ 

ACME SCALE COMPANY, INC.,

Appellant

v.

LTS SCALE COMPANY, LLC,

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

______________________ 

 GRANT H. PETERS, Barnes & Thornburg LLP, Chicago, 

IL, argued for appellant. Also represented by DANIEL P.

ALBERS. 

 BRIJ KUMAR AGARWAL, Eckert Seamans Cherin & 

Mellott, LLC, Pittsburgh, PA, argued for appellee. Also 

represented by ROBERTA JACOBS-MEADWAY, Philadelphia, 

PA.

______________________ 

Before WALLACH, TARANTO, and CHEN, Circuit Judges.
2 ACME SCALE CO. v. LTS SCALE CO. 

WALLACH, Circuit Judge. 

Acme Scale Company, Inc. (“Acme”) appeals the decision 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. 

BACKGROUND

I. The ’946 Patent

The ’946 patent is titled “Material Transport InMotion 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 patent, 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 for 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. v. LTS SCALE CO. 3

A system for actively dimensioning an article, the

system comprising: 

a material handling vehicle, 

at least one active linear dimension detection device attached to a portion of the material handling 

vehicle, the dimension detection device positioned 

to move with the vehicle and to actively detect at

least one linear dimension of the article when the

article is loaded onto the material handling vehicle; and

a computer system in communication with at least

one linear dimension detection device, the computer system being adapted to determine at least one

linear dimension of the article. 

Id. col. 6 ll. 25–37 (emphasis added to disputed claim 

language). 

II. The Prior Art: Bourgoin

ACME SCALE CO. v. LTS SCALE CO. 5

cessing card, a connection card and a video card.” Id. col. 

2 ll. 35–38. 

III. Procedural Posture

After 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), (“Initial 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 combination with other prior art. 

DISCUSSION

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 remanded to the reexamination Examiner to consider an 

amendment to the rejected claims and/or new evidence 

related to the claims so rejected, along with any further 

comments or response thereto regarding the Rehearing 

Decision.” Id. (internal citations 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 further interpret Bourgoin to invalidate th[e] claims [at 

issue].” Reply Br. 6. Therefore, Acme argues “[t]he 
6 ACME SCALE CO. v. LTS SCALE CO. 

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

Id. Instead, according to Acme, “the Board merely further 

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 decision of the Board is final and appealable 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 rehearing 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] decision for appeal.” Rehearing Decision at *6 (second alteration in original) (quoting 37 C.F.R. § 41.79(d)). The Board 

also stated the “Rehearing 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 requester 

in an inter partes reexamination proceeding who 

is a party to an appeal to the Patent Trial and 

Appeal Board and who is dissatisfied with the decision of the Patent Trial and Appeal Board may, 

subject to § 41.81, appeal to the U.S. Court of Appeals for the Federal Circuit and may be a party 

to any appeal thereto taken from a reexamination 

decision of the Patent Trial and Appeal Board. 

 
ACME SCALE CO. v. LTS SCALE CO. 7

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 options 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, when the Board determines 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). Therefore, as it did in this 

instance, when the Board renders its decision on rehearing 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 permissive language stands in contrast to the language employed 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). Therefore, the 

PTO imposes 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 regulation, 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 the PTO 

would continuously require parties to seek further rehearings, irrespective of the fact that the Board has already 
8 ACME SCALE CO. v. LTS SCALE CO. 

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 altogether whenever the Board declares 

its ruling on rehearing to be a “new decision.” See 37 

C.F.R. § 41.79(d). By entering a “new decision” when a 

party seeks a rehearing after an earlier rehearing decision, the Board could theoretically create a perpetual 

appeal rehearing cycle, thus abrogating this court’s appellate 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. We think 

the PTO never intended such an outcome. 

II. Acme’s Claims Are Properly Before this Court

LTS next argues that Acme failed to “challenge the rejections over Bourgoin in combination with other art, i.e., 

[r]ejections 3–5.” Appellee’s Br. 18. In its Initial Decision, in addition to its 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 Bourgoin in view of Berg and U.S. Patent Application Publication No. 2004/0102870 (“Andersen”). LTS contends that 

because 

[t]hese rejections have not been challenged by 

Acme[,] . . . even if this [c]ourt were to grant the 
ACME SCALE CO. v. LTS SCALE CO. 9

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 remain rejected under one or more 

of [r]ejections 3–5. 

Appellee’s Br. 18. 

Acme claims that because Bourgoin does not anticipate 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 for rejection 

which Acme does not challenge on appeal do not rely on 

Bourgoin to disclose a material handling 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 claims 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 supports the 

Board’s finding that Bourgoin discloses or teaches a 

material 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 examination, 

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-
10 ACME SCALE CO. v. LTS SCALE CO. 

views the Board’s interpretation of disputed claim language 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 Pharms. 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 substantial evidence.” In re Morsa, 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 Pharms., 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 claims,” Net 

MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. 

Cir. 2008), the reference need not satisfy 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 invention without undue experimentation.” Impax Labs., Inc. 

v. Aventis Pharms. 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 reexamination 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. v. LTS SCALE CO. 11

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 vehicle” 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 customary 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 “Bourgoin does not include each 

and every element of independent claims 9 and 20” because “[t]he table with rollers in Bourgoin is not a material handling vehicle.” Appellant’s Br. 16–17. Acme also 

argues that “[w]hile the Bourgoin table is fitted with 

rollers, 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 17–18 (citing Bourgoin col. 2 l. 6). 

LTS asserts that absent a patentee’s ‘“intent to deviate 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 given the broadest reasona-
12 ACME SCALE CO. v. LTS SCALE CO. 

ble interpretation consistent with the specification.” 

Appellee’s Br. 23 (quoting 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 . . . 

constitute an expression of ‘manifest exclusion or restriction, 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 suggest 

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 include[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.” Although the term “broadly” suggests the patent encompasses 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 measured. 

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. v. LTS SCALE CO. 13

Bourgoin urges users to protect “against excessive vibration 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, it stretches the bounds of any reasonable interpretation to say that, by virtue of those facts, 

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 primarily 

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 inconsistent with the specification of the ’946 patent. 

IV. Because Bourgoin Does Not Teach or Suggest a 

Material Handling Vehicle, Claims 9 and 20–22 of 

the ’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 rejected 

the claims under 35 U.S.C. § 103(a) as obvious over Bourgoin. 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 predicates.” In re Rouffett, 149 F.3d 

1350, 1355 (Fed. Cir. 1998). 

This court reviews the ultimate determination of obviousness 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, 

427 (2007); In re Gartside, 203 F.3d 1305, 1316, 1319, 

(Fed. Cir. 2000)). This court reviews the Board’s determination of obviousness de novo and its factual findings for 
14 ACME SCALE CO. v. LTS SCALE CO. 

substantial evidence. Gartside, 203 F.3d at 1316. “The 

factual predicates underlying an obviousness determination include the scope and content of the prior art, the 

differences between the prior art and the claimed invention and the level of ordinary skill in the art.” Rouffett, 

149 F.3d at 1355. Substantial 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 addressed only Acme’s anticipation arguments and thereby limited the 

discussion to whether, “[u]nder § 102, [] Bourgoin disclose[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 

section 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 combination’ 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 teaches that its table can be used as a material 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 Acme’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. v. LTS SCALE CO. 15

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 Bourgoin 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 available to a user who 

decides that the table needs 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 exerted by the user when moving the device from one location 

to another. Therefore, the table itself does not function as 

the device that transports. Instead, when fitted with 

rollers, it is the device being transported 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 illogical. 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 vehicles 

simply because the rollers have rendered them capable of 

movement is unreasonable. 

CONCLUSION

For the foregoing reasons, the PTO’s decision is 

REVERSED AND REMANDED