Provisur Technologies, Inc. v. WEBER, INC., Cross-Appellant 2021-1942, 2021-1975 Appeals from the United States…

United States Court of Appeals
for the Federal Circuit
______________________
PROVISUR TECHNOLOGIES, INC.,
Appellant
v.
WEBER, INC.,
Cross-Appellant
______________________
2021-1942, 2021-1975
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
01466.
______________________
Decided: September 27, 2022
______________________
SARA T ONNIES HORTON, Willkie Farr & Gallagher LLP,
Chicago, IL, argued for appellant. Also represented by
MICHAEL BABBITT , REN-H OW HARN, CRAIG C. MARTIN.
T YLER D UTTON, Sterne Kessler Goldstein & Fox, PLLC,
Washington, DC, argued for cross-appellant. Also repre-
sented by D ONALD B ANOWIT , RALPH WILSON P OWERS , III,
J ON WRIGHT .
______________________
Before P ROST , REYNA, and STARK, Circuit Judges.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 2
P ROST , Circuit Judge.
Weber, Inc. (“Weber”) petitioned for inter partes review
(“IPR”) of claims 1–14 of U.S. Patent No. 6,997,089 (“the
’089 patent”). In a final written decision, the Patent Trial
and Appeal Board (“Board”) concluded that Weber had
proved unpatentable as obvious claims 1–10, 13, and 14 but
not claims 11 or 12. Weber, Inc. v. Provisur Techs., Inc., No.
IPR2019-01466, Paper No. 36 (P.T.A.B. Mar. 8, 2021) (“Fi-
nal Written Decision”). Patent Owner Provisur Technolo-
gies, Inc. (“Provisur”) appeals the Board’s unpatentability
determinations. Weber cross-appeals the Board’s determi-
nation that claims 11 and 12 are not unpatentable. For the
reasons set forth below, we affirm in part, vacate in part,
and remand.
BACKGROUND
I
The ’089 patent describes a method and system for
“classifying slices or a portion cut from a food product ac-
cording to an optical image of the slice.” ’089 patent Ab-
stract. Some types of food products, like bacon or cold cuts,
are packaged and sold in groups of slices and “in accord-
ance with a particular weight requirement.” Id. at col. 1
ll. 13–15. Systems of conveyors and slicers create and
gather these groups for packaging. The ’089 patent ex-
plains that, while slicing apparatuses and conveyor sys-
tems were known in the art, it remained “desirable to
provide a system which would be directly responsive to the
quality of cut slices and which would provide a compact and
effective arrangement to classify slices based on fat content
and fat deposits.” Id. at col. 1 ll. 26–50. To that end, the
patent describes an apparatus that includes a slicing sta-
tion with a blade for removing slices from a food product.
Id. at col. 3 ll. 31–34. The slices are moved on a series of
conveyors to a weigh conveyor, which weighs the slice or
stack and communicates the result to a CPU. Id. at col. 3
ll. 35–53. An image processing system is arranged above
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 3
the weigh conveyor and “preferably includes,” among other
components, an “ELECTRIM EDC-1000N black and white
640x480 pixel digital camera.” Id. at col. 3 ll. 54–64. The
image processing system captures an image of the top slice
of the stack while the stack passes within its field of vision.
Id. at col. 4 ll. 20–30. Software in the image processing sys-
tem or in the apparatus’s CPU analyzes the image, deter-
mining perimeter or boundary dimensions and the fat-to-
lean ratio of the food using pixel-by-pixel image data. Id.
at col. 4 ll. 33–44. The system compares this data to pre-
determined or programmable standards and classifies the
food according to its fat content or flaws. Id. at col. 4
ll. 56–64. The image processing system or the CPU then
sends a signal to an actuator, which pivots “to deliver slices
alternately to” the appropriate conveyor. Id. at col. 4
ll. 9–13.
Claim 1 of the ’089 patent is illustrative of the issues
on appeal and recites:
1. A method of classifying groups of slices collected
in a stack after being cut from a food product, com-
prising the steps of:
removing a plurality of slices in succession
from a food product by cutting, using a high speed
slicing apparatus;
dropping said plurality of slices from said food
product and accumulating said plurality into a
stack on a conveyor system having at least one con-
veying surface;
moving said stack on said conveying surface
into an image field of a digital image receiving de-
vice;
generating pixel-by-pixel image data of a top
slice of said stack using the digital image receiving
device;
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 4
determining a surface area of the top slice from
the data;
determining a fat content of said top slice on a
pixel-by-pixel basis;
comparing the fat content to at least one prede-
termined limit; and
classifying said stack according to said fat con-
tent and said limit; and
depending on how said stack is classified, con-
veying said stack to a corresponding destination.
II
Weber’s IPR petition set forth two grounds: (1) that
claims 1, 3–5, 8–10, 13, and 14 were invalid as obvious over
United Kingdom Patent GB 2,239,787 (“Whitehouse”) in
view of U.S. Patent No. 5,267,168 (“Antonissen”) and U.S.
Patent No. 4,016,788 (“Hardy”); and (2) that claims 2, 6, 7,
11, and 12 were invalid as obvious over Whitehouse in view
of Antonissen and Hardy and further in view of U.S. Patent
No. 4,136,504 (“Wyslotsky”). Weber argued that Antonis-
sen, which discloses a camera that “may be of any known
type . . . but will preferably use an asynchronous CCD
[charge-coupled device] to ensure rapid capture of the
frame,” J.A. 658, teaches the claimed “digital image receiv-
ing device.” Provisur, in its Patent Owner Response, dis-
puted Weber’s characterization and argued that
Antonissen does not disclose a digital camera because its
camera uses an analog-to-digital converter external to the
camera’s housing. Provisur also argued that Weber had
failed to show how the combination of Whitehouse with An-
tonissen would have been able to “determine[] a surface
area of the top slice” from “pixel-by-pixel image data” as
required by the claims.
To address Provisur’s argument that Antonissen does
not disclose a digital camera, Weber submitted with its
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 5
reply several pieces of evidence about ELECTRIM cam-
eras, including (1) an article about the ELECTRIM EDC-
1000 series, (2) an Internet Archive capture of the Fre-
quently Asked Questions page on ELECTRIM’s website,
and (3) a technical manual for the EDC-1000 series cam-
eras. Weber also submitted a supplemental declaration
from its expert explaining that Weber’s original position
that Antonissen describes a digital camera was correct be-
cause that camera works the same way as the ELECTRIM
cameras do. Provisur deposed the expert and learned that
Weber possessed the ELECTRIM evidence when it filed its
petition. Provisur also probed the expert’s knowledge of
the difference between different ELECTRIM camera mod-
els, prompting Weber, on redirect, to introduce a data sheet
showing various models, including the EDC-1000 and the
EDC-1000N.
Provisur asked the Board to exclude Weber’s
ELECTRIM-related evidence, arguing that it (1) was un-
duly prejudicial under Rule 403 of the Federal Rules of Ev-
idence and (2) violated the Board’s rules because Weber
introduced it too late. In its Final Written Decision, the
Board rejected Provisur’s arguments, concluding that the
evidence was “highly probative of how the camera men-
tioned in the ’089 patent operates” and that it was not un-
timely because it responded to Provisur’s “argument that
Antonissen’s imaging hardware is not akin to the imaging
hardware that is described in the Specification and recited
in every claim in the ’089 patent.” Final Written Decision,
at 31, 34. The Board also found that Provisur “had a full
and fair opportunity at [Weber’s expert]’s deposition to
meet the evidence as reflected in the extensive cross-exam-
ination on this evidence” and to “respond[] to this evidence
in its Sur-reply.” Id. at 35.
On the petition’s merits, the Board concluded that We-
ber had proven by a preponderance of the evidence that all
of the challenged claims were unpatentable except for
claims 11 and 12. Id. at 36. Stating its belief that Provisur
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 6
did “not dispute that [Weber] ha[d] demonstrated that the
combined teachings of Whitehouse, Antonissen, and Hardy
describe or suggest all limitations of claim 1 other than the
‘digital image receiving device’ of element 1.3,” the Board
confined its analysis of Ground 1 to whether Antonissen
teaches the claimed “digital image receiving device.” See
id. at 13. Relying on Weber’s ELECTRIM evidence, the
Board concluded that it does. Id. at 14–16. It then rejected
Provisur’s motivation-to-combine arguments and con-
cluded that Weber had shown that claims 1, 3–5, 8–10, 13,
and 14 were invalid as obvious. Id. at 16–23. With respect
to Ground 2, the Board concluded that the addition of
Wyslotsky to the Whitehouse/Antonissen/Hardy combina-
tion rendered obvious claims 2, 6, and 7 because Wyslotsky
discloses the concept of weighing the stack “at the same
time” as the combined system generates a digital image of
the stack. Id. at 26–28. But for claims 11 and 12, which
recite a physical arrangement of a camera over a weighing
conveyor, the Board concluded that Weber had failed to
show that Wyslotsky discloses a scale located under a cam-
era or to offer a “persuasive reason why an ordinarily
skilled artisan would have modified the references to
achieve such an arrangement.” Id. at 28–29.
Each party appeals aspects of the decision adverse to
it. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
I
We begin with Provisur’s appeal, which raises two chal-
lenges. First, Provisur argues that the Board abused its
discretion when it denied Provisur’s motion to exclude the
ELECTRIM-related evidence. Second, Provisur contends
that the Board violated the Administrative Procedure Act
(“APA”) by failing to address all of Provisur’s patentability
arguments. We address each argument in turn.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 7
A
Provisur first challenges the Board’s decision denying
its motion to exclude Weber’s reply evidence. We review
the Board’s evidentiary determinations, including whether
a party exceeded the scope of a proper reply, for abuse of
discretion. VidStream LLC v. Twitter, Inc., 981 F.3d 1060,
1064 (Fed. Cir. 2020); Apple Inc. v. Andrea Elecs. Corp.,
949 F.3d 697, 705 (Fed. Cir. 2020). “The Board abuses its
discretion if its decision (1) is clearly unreasonable, arbi-
trary, or fanciful; (2) is based on an erroneous conclusion of
law; (3) rests on clearly erroneous fact finding; or (4) in-
volves a record that contains no evidence on which the
Board could rationally base its decision.” ClearOne, Inc. v.
Shure Acquisition Holdings, Inc., 35 F.4th 1345, 1351
(Fed. Cir. 2022).
The Board did not abuse its discretion. Weber’s IPR
petition purported to explain why the ’089 patent’s claims
were invalid, Provisur’s response argued that the prior art
did not disclose a digital camera, and Weber’s reply ex-
plained that the prior art used the same type of camera as
the one described in the ’089 patent’s specification. The
Board properly concluded that the reply evidence was both
directly responsive to Provisur’s arguments and highly pro-
bative. Final Written Decision, at 31, 33. Importantly, We-
ber’s invalidity theories did not change, nor did the reply
fill any holes in Weber’s petition.1 Weber’s reply merely
explained why Provisur was incorrect about the scope of
the ’089 patent’s claims and reiterated how the prior art
taught the same technology. Nothing in the reply violated
the Board’s rules or our precedent, so it was appropriate for
the Board to admit the new evidence.
1 Provisur contends that Weber’s reply “gap-filled”
the petition, but the gaps it points to are the holes it tried—
and failed—to poke with its responsive arguments.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 8
Provisur faults the Board for failing to address the fact
that Weber could have included the ELECTRIM evidence
in its IPR petition yet didn’t. But the Board’s conclusion
that Weber’s reply responded to Provisur’s arguments ob-
viated the need to address when Weber first possessed the
evidence. By concluding that Weber’s reply evidence
properly rebutted Provisur’s arguments, the Board neces-
sarily also determined that Weber didn’t have to submit
the evidence with its petition. Provisur’s argument con-
flates capability with obligation: Weber could have submit-
ted the ELECTRIM evidence with its petition, but nothing
obligated it to, nor does Provisur convincingly argue other-
wise. The petition set forth a prima facie obviousness case,
and the reply adduced evidence shedding light on the
’089 patent’s scope after Provisur had tried to narrow it.
Provisur also argues that Weber’s late submission of
the ELECTRIM evidence prejudiced it and that the evi-
dence should have been excluded under Rule 403 of the
Federal Rules of Evidence. The Board did not abuse its
discretion in admitting the evidence: it is highly proba-
tive—indeed, it appears to have been dispositive—and Pro-
visur had an opportunity to respond both by cross-
examining Weber’s expert and in a sur-reply to the Board.
Provisur does not convince us that two days, the amount of
time it had after the expert’s deposition to submit its sur-
reply, was insufficient time for it to respond to arguments
characterizing the very technology Provisur’s patent de-
scribes. Nor are we moved by Provisur’s argument that 10
minutes was insufficient time to re-cross Weber’s expert on
the data sheet Weber introduced at the deposition; Provi-
sur was entitled to two hours of record time for re-cross ex-
amination under 37 C.F.R. § 42.53(c), and Weber’s
deposition tactics, however inappropriate,2 did not compel
2 See J.A. 2847–48 (APJ Weatherly commenting,
“[s]uffice it to say if it’s not clear already, I believe [Weber]
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 9
Provisur to leave when it did. Provisur has not shown that
the danger of unfair prejudice, waste of time, or confusion
of the issues substantially outweighs the highly probative
value of the ELECTRIM camera evidence.
We therefore affirm the Board’s decision denying Pro-
visur’s motion to exclude.
B
Provisur next argues that the Board erred by failing to
address Provisur’s argument that Weber failed to explain
how its prior-art combinations “determin[e] a surface area
of the top slice from the [pixel-by-pixel image] data [of a top
slice of the stack].” This element appears in claim 1, and
an identical or substantially similar element appears in
each of the other independent claims. Provisur refers to
these claim elements as the “surface-area limitations,” and
we do the same.
Under the APA, the Board must fully and particularly
set out the bases upon which it reached its decision. In re
Sang-Su Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002). To per-
mit effective appellate review, the Board’s patentability
analysis must be “clearly disclosed and adequately sus-
tained.” See SEC v. Chenery Corp., 318 U.S. 80, 94
(1943); In re Thrift, 298 F.3d 1357, 1364 (Fed. Cir.
2002) (emphasizing that the Board is required to “docu-
ment its reasoning on the record to allow accountability”
and to facilitate “effective judicial review”); Gechter v. Da-
vidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997) (explaining
that the Board must explain its reasoning with sufficient
specificity to enable this court, “without resort to
should have allowed [Provisur] to contact [the Board] for a
ruling on this issue [regarding the scope of the redirect ex-
amination] during the deposition. And I think that [We-
ber’s] refusal to do so, frankly, was unreasonable and
borderline embarrassing.”).
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 10
speculation,” to effectively evaluate an anticipation rejec-
tion). “We may affirm an agency ruling if we may reason-
ably discern that it followed the proper path, even if that
path is less than perfectly clear.” Ariosa Diagnostics v. Ver-
inata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015).
We conclude that the Board failed to meet that standard
here.
The Board never explained how the Whitehouse/Anto-
nissen/Hardy combination teaches or suggests the surface-
area limitations. Instead, the Board limited its analysis of
the independent claims to the “digital image receiving de-
vice” limitation. Final Written Decision, at 13–19. For all
other claim limitations, including the surface-area limita-
tions, it said only that “Petitioner’s argument and evidence
summarized above, which we adopt as our own, persuades
us that the combination of Whitehouse, Antonissen, and
Hardy collectively disclose or suggest all elements of
claim 1 other than the ‘digital image receiving device.’” Id.
at 13. It did this, presumably, because of its impression
that Provisur had “not dispute[d] that [Weber] ha[d]
demonstrated that the combined teachings of Whitehouse,
Antonissen, and Hardy describe or suggest all limitations
of claim 1 other than the ‘digital image receiving device.’”
Id. But that is not an accurate characterization of Provi-
sur’s arguments. In its Patent Owner Response, Provisur
argued that “Weber failed to show how the purported com-
bination would have worked to determine a ‘surface area’
from the ‘pixel-by-pixel image data.’” J.A. 1507. Provisur
then proceeded to examine the disclosures Weber had re-
lied on as teaching that claim element and concluded that
“Weber offers no explanation on how the two [references]
would be combined to disclose this claim limitation.”
J.A. 1508. And Weber responded to that argument in its
reply. See J.A. 2123–24. Provisur plainly argued that the
prior art did not render obvious the surface-area limitation,
and the Board’s analysis does not explicitly address those
arguments or even implicitly explain how the combined
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 11
system “determin[es] a surface area of the top slice from
the [pixel-by-pixel image] data” in a way that fairly con-
templates and resolves those arguments. The Board’s
adoption of Weber’s argument and evidence, coupled with
its mischaracterization of Provisur’s arguments, precludes
us from engaging in meaningful appellate review and,
therefore, violates the APA.
While Weber does not argue that the Board explicitly
addressed Provisur’s surface-area-limitations argument, it
does suggest that the Board’s logic is reasonably discerna-
ble from the record. But it only points to the Board’s sum-
mary of Whitehouse’s teachings. See Cross-Appellant’s
Br. 48–49 (citing Final Written Decision, at 9). That the
Board understood Whitehouse’s disclosure does not show
how the Board thought that it (or anything else) rendered
obvious the surface-area limitations, even if Weber relied
on some of the cited excerpts in its petition in making its
surface-area-limitation arguments. Weber offers no other
explanation for how the Board’s logic is reasonably discern-
ible from its analysis, nor do we perceive any: the Final
Written Decision does not address the surface-area limita-
tions at all. Accordingly, we vacate the Board’s decision
with respect to claims 1, 9, and 13. Because those three
claims are all of the ’089 patent’s independent claims, we
also vacate the Board’s judgment as to all claims found un-
patentable and remand for the limited purpose of the
Board’s consideration of Provisur’s surface-area-limitation
arguments.
II
We turn next to Weber’s cross-appeal, which raises just
one issue: whether the Board erred in upholding the pa-
tentability of claims 11 and 12 of the ’089 patent. We re-
view the Board’s legal determinations de novo and its fact
findings for substantial evidence. ACCO Brands Corp. v.
Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016). “Sub-
stantial evidence is such relevant evidence as a reasonable
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 12
mind might accept as adequate to support a conclusion.” In
re Bd. of Trs. of Leland Stanford Junior Univ., 991 F.3d
1245, 1250 (Fed. Cir. 2021) (cleaned up).
Weber asserts two bases for overturning the Board’s
patentability determinations for claims 11 and 12: (1) the
Board erred in construing “weigh conveyor” to mean
“scale”; and (2) the Board incorrectly viewed Wyslotsky’s
teachings in isolation rather than in the context of Weber’s
asserted Whitehouse/Antonissen/Hardy/Wyslotsky combi-
nation. We do not address the claim-construction argu-
ment because we agree that the Board erred in considering
Wyslotsky alone, and we conclude that this error warrants
vacatur of the Board’s judgment as to claims 11 and 12.
In concluding that claims 11 and 12 were patentable
over the cited prior art, the Board focused its analysis on
Wyslotsky’s teachings. It began by agreeing with Provisur
that “Wyslotsky does not disclose or render obvious . . .
placing a camera above a ‘weigh conveyor.’” Final Written
Decision, at 28. It then acknowledged that Wyslotsky
teaches a “photoscanning device 40 that is an alternative
to a scale for weighing slices” and that “the actual weight
of slices may be detected by weighing on an automated
scale” before dismissing that teaching because it “fails to
mention or establish where the ‘automated scale’ is located
and wholly fails to disclose such a scale being located under
photoscanning device 40.” Id. at 28–29. It concluded that
“none of the prior art marshalled by [Weber] discloses the
claimed physical arrangement of the camera and weighing
conveyor recited in claims 11 and 12 and [Weber] offers no
persuasive reason why an ordinarily skilled artisan would
have modified the references to achieve such an arrange-
ment.” Id. at 29. The Board’s analysis is faulty for two
reasons.
First, Weber’s IPR petition did not rely on Wyslotsky
as teaching the claimed physical arrangement of a camera
over a weighing conveyor, as the Board’s analysis suggests.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 13
Instead, Weber relied on the physical components de-
scribed in Whitehouse and Antonissen—specifically,
Whitehouse’s conveyors and Antonissen’s digital camera—
and then pointed to Wyslotsky’s teachings for why a person
of skill in the art would choose to position the weigh con-
veyor under the camera. See J.A. 129–130. The Board’s
analysis does not substantively engage with these argu-
ments, even if we charitably read its concluding sentences
referring to “the prior art marshalled by [Weber]” as refer-
ring to the entire combination rather than the single refer-
ence the Board had discussed in the immediately preceding
sentences. See Final Written Decision, at 29. Because the
Board never directly or implicitly addressed the arguments
that Weber had set forth in its petition, it erred.
Second, and more importantly, the Board’s findings for
claims 11 and 12 are inconsistent with those it made for
claims 2, 6, and 7.3 Those latter claims require imaging
and weighing food slices “at the same time.” See ’089 pa-
tent col. 6 ll. 3–5, 21–23, 31–33. Weber’s IPR petition relied
on Wyslotsky as teaching that concept and argued that, in
the combined system, a skilled artisan would place
Whitehouse’s weighing cell 32 in conveyor 19 to implement
that teaching in a combined Whitehouse/Antonissen sys-
tem, which otherwise imaged and weighed the food slices
at different times. See J.A. 125–26. A skilled artisan would
have been motivated to take this approach, Weber argued,
3 Though we have vacated the Board’s judgment as
to dependent claims 2, 6, and 7 (because the Board failed
to consider Provisur’s surface-area-limitations arguments,
see supra Discussion Part I.B), we nonetheless address this
aspect of the Board’s decision because, if the Board on re-
mand again concludes that the independent claims are un-
patentable, these findings for claims 2, 6, and 7—otherwise
unchallenged on appeal—would dictate concluding that
claims 11 and 12 are also unpatentable.
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 14
because it would have enabled a skilled artisan to remove
an entire conveyor from the system—Whitehouse con-
veyor 31—resulting in the system depicted below:
See J.A. 126–27. As this Weber-annotated image plainly
shows, the weigh conveyor—the combination of conveyor
19 and scale 32—is situated directly below camera 4. We-
ber repeated these arguments when it explained why
claims 11 and 12 were unpatentable. J.A. 129–30. Cru-
cially, the Board credited them for claims 2, 6, and 7, agree-
ing that Wyslotsky taught the concept of weighing and
imaging at the same time. Final Written Decision, at 27.
And in rejecting Provisur’s argument that Weber had failed
to establish a motivation to combine, the Board noted that
Weber had “persuasively respond[ed] that it identified re-
moving a conveyor from the system as the reason motivat-
ing an ordinarily skilled artisan to have incorporated
teachings relating to Wyslotsky’s photoscanning device”—
a result that would have been possible only if the skilled
artisan had moved the weighing cell 32 from conveyor 31
to conveyor 19, as Weber had suggested. See id. at 27–28.
Since moving the weighing cell to conveyor 19 would have
resulted in precisely the arrangement that claims 11 and
12 require, the Board credited for claims 2, 6, and 7 the
same arguments Weber made for claims 11 and 12. See
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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 15
J.A. 129–130. It nonetheless upheld claims 11 and 12, and
in doing so, it erred.
Provisur’s counterarguments repeat the Board’s mis-
takes. For example, Provisur contends that the Board cor-
rectly rejected Weber’s arguments because Weber had
failed to identify a motivation for a person of skill in the art
to develop a system that includes both a camera with mass
detection means and a cell that weighs slices. But, as
pointed out above, Weber never relied on Wyslotsky’s pho-
toscanning device. Rather, it relied on Wyslotsky only as
teaching the concept of weighing and imaging at the same
time; it always relied on Whitehouse’s and Antonissen’s
physical components. So the combination would not result
in redundant weight-determination means, as Provisur
suggests. Provisur also argues that the Board never cred-
ited Weber’s argument that moving the scale would allow
a skilled artisan to remove a conveyor from the system.
That is plainly incorrect: the Board explicitly noted that
Weber had “persuasively respond[ed] that it identified re-
moving a conveyor from the system as the reason motivat-
ing an ordinarily skilled artisan to have incorporated
teachings relating to Wyslotsky’s photoscanning device.”
Final Written Decision, at 27–28 (emphasis added).
We therefore conclude that the Board erred in deciding
that claims 11 and 12 are not obvious and accordingly va-
cate that judgment. On remand, should the Board find the
independent claims obvious after considering the surface-
area limitations, claims 11 and 12 are also obvious in view
of the Board’s determinations regarding claims 2, 6, and 7,
which we do not otherwise disturb on appeal.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the reasons set forth
above, we affirm in part, vacate in part, and remand this
case to the Board for the limited purpose of addressing the
surface-area limitations of claims 1, 9, and 13.
Case: 21-1942 Document: 39 Page: 15 Filed: 09/27/2022

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PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. 16
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.
Case: 21-1942 Document: 39 Page: 16 Filed: 09/27/2022

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