       NOTE: This disposition is nonprecedential.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 deci-
sion 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”). Be-
cause of the reasons set forth below, this court reverses
and remands.
                         BACKGROUND
                    I.   The ’946 Patent
    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 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 de-
    vice 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 vehi-
    cle; and
    a computer system in communication with at least
    one linear dimension detection device, the comput-
    er 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), (“Ini-
tial 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 combi-
nation 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 re-
manded 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 fur-
ther 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 ap-
pealable 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 rehear-
ing 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] deci-
sion for appeal.” Rehearing Decision at *6 (second altera-
tion 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 de-
    cision of the Patent Trial and Appeal Board may,
    subject to § 41.81, appeal to the U.S. Court of Ap-
    peals 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 op-
tions 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 deter-
mines 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 rehear-
ing 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 permis-
sive language stands in contrast to the language em-
ployed 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 rehear-
ings, 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 deci-
sion, the Board could theoretically create a perpetual
appeal rehearing cycle, thus abrogating this court’s appel-
late 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 re-
jections over Bourgoin in combination with other art, i.e.,
[r]ejections 3–5.” Appellee’s Br. 18. In its Initial Deci-
sion, 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 Bour-
goin in view of Berg and U.S. Patent Application Publica-
tion 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 antici-
pate 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 lan-
guage 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 sub-
stantial 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 inven-
tion 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 reexam-
ination 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” be-
cause “[t]he table with rollers in Bourgoin is not a materi-
al 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 devi-
ate 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 re-
striction, 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 in-
clude[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.” Alt-
hough the term “broadly” suggests the patent encom-
passes 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 vibra-
tion 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 rea-
sonable 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 incon-
sistent 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 Bour-
goin. 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 ob-
viousness 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 determi-
nation 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 determina-
tion include the scope and content of the prior art, the
differences between the prior art and the claimed inven-
tion 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 Ac-
me’s anticipation arguments and thereby limited the
discussion to whether, “[u]nder § 102, [] Bourgoin dis-
close[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 mate-
rial 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 Ac-
me’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 Bour-
goin 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 exert-
ed 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
