Ex Parte 5726772 et al

Board of Patent Appeals and Interferences

Jun 14, 2010

90007187 (B.P.A.I. Jun. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/007,187 08/31/2004 5726772 6620-62158-02 3842
7590 10/13/2010
Michael Greenbaum
Blank Rome LLP
600 New Hampshire Avenue NW
Washington, DC 20037
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/13/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
The date for filing an appeal should be determined from the MAIL DATE on the
accompanying Form PTOL-90A.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BOARD OF PATENT APPEALS AND INTERFERENCES
____________

Ex parte RESEARCH CORPORATION TECHNOLOGIES, INC.
____________

Appeal 2010-007802
Reexamination Control 90/007,187
Patent 5,726,772
Technology Center 3900
____________

Before JAMESON LEE, RICHARD TORCZON and SCOTT R.
BOALICK, Administrative Patent Judges.

TORCZON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The appellant (RCT) requests rehearing under 37 C.F.R. § 41.52 of
the board's decision affirming final rejection of RCT claims. While the
decision has been reconsidered, the request for relief is DENIED.
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Patent 5,726,772
2
OPINION
Introduction
RCT has presented eleven points of error. We address them in the
order presented.
Misapprehension of the scope of the invention
Ipsis verbis test
RCT argues that the board mistakenly applied an ipsis verbis test,1
that is, require that the specification in question disclose the claim limitation
in essentially the same terms. Of course, binding precedent has long-
established that ipsis verbis disclosure is neither necessary nor, depending on
the facts of the case, even sufficient.2 The board is well aware of this
precedent and even cited several cases discussing this proposition. The
opinion did not expressly discuss the propriety of an ipsis verbis test in this
case because it was not relevant to the board's analysis.
RCT does not point to any language in the opinion expressly imposing
an ipsis verbis disclosure requirement; rather, RCT infers the imposition
from the following sentence in the final paragraph of the analysis section in
the opinion:3
Substantial evidence supports the finding that a blue-noise
mask is central to the invention disclosed in the 1991
application and, thus, its absence is not supported.

1 Amended request for rehearing, entered 16 August 2010 (Reh'g req.) at 2.
2 Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir.
2010) (en banc) (observing that ipsis verbis disclosure might not even be
sufficient for a generic invention).
3 Reh'g req. at 3.
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The sentence does not on its face imply an ipsis verbis requirement. Instead,
the sentence merely summarizes previous findings based on a thorough
consideration of the 1991 application.
The board cannot have misapplied a test that is not expressly or
implicitly in its opinion.
Proper test
RCT argues that the board "incorrectly began its analysis of the
written description requirement with an analysis of the [1991] specification
rather than the claims at issue."4 The portion of the board's opinion on
which RCT relies5 appears on the penultimate page of the opinion and thus
does not support RCT's contention about where the board "began its
analysis". In fact, after laying out some procedural history, the opinion
promptly proceeds to "focus on RCT's claim 1" since the claims were not
separately argued.6 The opinion continues by discussing the contested
language from the claim and RCT's failure to define this language expressly,
thus forcing the board to turn to the Ulichney treatise for a more complete
explanation.7 Only after construing the contested language does the opinion
begin to address RCT's benefit claim.8

4 Reh'g req. at 4.
5 Id., pointing to Decision on Appeal (Dec.) at 11.
6 Dec. at 3.
7 Id. at 4-5, citing R. Ulichney, Digital Halftoning (1987).
8 Dec. at 5-11.
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A tribunal need only construe contested terms.9 The opinion begins
by doing just that. In short, the opinion does precisely what RCT urges that
it failed to do.
The board cannot have erred by failing to do what it in fact did.
Omitted element test
In a paragraph, RCT argues the board erroneously mimicked the
"omitted element" analysis rejected in precedent. The "omitted element"
test, sometimes called the "essential element" test has been broadly
criticized. It is instructive that one of the most widely vilified decisions in
this context, Gentry Gallery, Inc. v. Berkline Corp., which affirmed an
invalidity based on the absence of a key element, has never been overturned.
How can this apparent paradox be explained? The key lies in the
caution repeated in our decision: written description determinations are so
fact-specific that it is hazardous to read too much into any precedent.10 The
Gentry Gallery court had to determine whether a finding that the
specification as a whole conveyed a requirement for a specific element was
clearly erroneous. In determining it was not, the court expressly rejected an
over-reading of its holding:11

9 In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (only
construing contested terms).
10 Dec. at 8 n.31, citing Union Oil Co. of Cal. v. Atl. Richfield Co., 208 F.3d
989, 1001 (Fed. Cir. 2000) (precedent of limited value), itself distinguished
in Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 928 (Fed. Cir.
2004); In re Driscoll, 562 F.2d 1245, 1249 (CCPA 1977) (same); cf. In re
Alton, 76 F.3d 1168, 1176 (Fed. Cir. 1996) (vacating for treating written
description issue as a legal rather than fact question).
11 Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir.
1998).
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It is a truism that a claim need not be limited to a preferred
embodiment. However, in a given case, the scope of the right
to exclude may be limited by a narrow disclosure.

Critics of Gentry Gallery have often converted the decision into a straw-man
for criticism. Any opinion when so caricatured can be made to seem foolish.
When the opinion is read narrowly, in light of the specific facts of the case,
as the court intended, it remains a viable (albeit limited) opinion.
In any case, the problem with this argument is similar to the problem
with the ipsis verbis argument: there is no express or implicit support in the
opinion that the board applied a per se omitted element test.
While it is true that the opinion closely examines a particular aspect of
the 1991 application, use of a blue-noise mask, it does so in the context of
evaluating the prima facie case of the reexamination requester and the
examiner.12 Under the procedural case law of written description, the
burden of production (as opposed to the ultimate burden of proof) shifts to
the appellant if the examiner reasonably points out the "nonexistence" of
disclosure consistent with what is now claimed.13 This procedure is a
pragmatic recognition that, while the examiner is in the difficult position of
having to "prove a negative", the applicant should be in the best position to
positively demonstrate why the specification does in fact support the claim
expressly or inherently. Once the examiner has reasonably and explicitly
identified a facial discrepancy, RCT should be able to point easily to the
description on which it relies.
RCT does not contest that the examiner (and requester) specifically
identified a discrepancy. The opinion simply tested whether the discrepancy

12 E.g., Dec. at 8.
13 Hyatt v. Dudas, 492 F.3d 1365, 1370-71 (Fed. Cir. 2007).
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was facially reasonable and determined that it was. It found, inter alia, that
the acknowledged prior art was well-developed. In this context, the 1991
application's focus on use of a blue-noise mask appeared to be significant as
an effort to carve out an improvement in a crowded field.14 These findings
were not the end of the analysis based on a per se rule; rather, they were a
basis to seek an explanation from the one best suited to provide the
explanation, RCT.15 RCT failed to provide a substantive response.
The opinion does not limit the permissible claim scope to an
embodiment as a per se rule. Instead, it engaged in precisely the sort of fact-
specific analysis endorsed by precedent.16
What was originally disclosed
New argument
RCT argues that the original disclosure supports a broader claim
scope17 and provides several block quotes and numerous citations18 from the
patent undergoing reexamination.19 RCT does not, however, point to where

14 Dec. at 8. The board appreciates the patent owner's acknowledgement that
this art was crowded. Reh'g req. at 14.
15 Dec. at 8-9.
16 Compare Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158-59 (Fed. Cir. 1998)
(reversing where specification distinguished embodiment from alternative
shapes) with Dec. at 11 (noting consistent use of blue-noise mask for its
advantages over the prior art).
17 Reh'g req. at 7.
18 Id. at 7-13.
19 K.J. Parker & T. Mitsa, Method and apparatus for halftone rendering of a
gray scale image using a blue noise mask, U.S. Patent No. 5,726,772 (issued
10 March 1998) [hereinafter Parker patent]. Technically citing the Parker
patent is a mistake since the relevant specification is the 1991 application,
not the patent, but the mistake for purposes of this determination is harmless.
In re Huston, 308 F.3d 1267, 1270 n.1 (Fed. Cir. 2002) (noting error, but
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in its brief it provided these examples. It is axiomatic that the board cannot
have overlooked an argument that was not made.20 Since this appeal
involves a patent, which is not eligible for a patent term adjustment, there is
no reason to believe RCT has deferred this argument for improper reasons.21
Nevertheless, there is some prejudice to the waiting reexamination requester
and to administrative regularity for RCT to wait until a rehearing request on
appeal to address these arguments to an issue that has been pending since the
request was filed.
Alternative basis
Alternatively, addressing the merits, the newly presented evidence
does not compel a different result. RCT cites a discussion distinguishing the
prior art in which:22
dot profiles are built "on top of" the profiles from lower gray
levels, such that a single valued 2-dimensional function, that is,
the cumulative array or blue noise mask, can be constructed.

holding it to have been harmless). For consistency in citation, we will also
cite to the Parker patent, which RCT represents to have issued from a
continuation of a continuation of the 1991 application.
20 In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (rejecting argument first
raised in improper second request for rehearing for both procedural and
substantive reasons); Bd.R. 37(c)(1)(vii) (requiring argument to be in brief);
Bd.R. 52(a)(1) (excluding new arguments from rehearing request).
21 Since 35 U.S.C. 154(b)(1)(B) provides term adjustments for time spent on
appeal to the board and subsequent judicial review, an applicant could find a
positive incentive to withhold argument or evidence until the last possible
stage, including under one theory a civil action under 35 U.S.C. 145, to
maximize the patent term adjustment. See Hyatt v. Doll, 576 F.3d 1246
(Fed. Cir. 2009) (affirming exclusion of new written description evidence in
civil action), vacated pending rehearing en banc in Hyatt v. Kappos, 366
Fed. Appx. 170 (Fed. Cir. 2010) (en banc).
22 Reh'g Req. at 7.
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RCT urges that the use of the disjunctive "or" between "cumulative array"
and "blue noise mask" proves that more than just a blue noise mask was
contemplated.23 The plain reading of this passage, however, suggests that
"cumulative array" and "blue noise mask" are alternative names for the
single-valued two-dimensional function. The phrase is introduced with "that
is", suggesting an alternative name, while a single article "the" is used for
the alternatives that follow. Moreover, the first time "blue noise mask" is
used, it is offered as the name for "a nonimage array".24 We have no
testimony of how one skilled in the art would have understood this passage
and thus have no basis for departing from the plain meaning.
RCT contends additional sections support its reading. Specifically,
RCT points to the first paragraph of "Summary and Objects of the
Invention", but again the discussion is not helpful. The first sentence
discusses the "need in the art for a method of and apparatus for the halftone
rendering of gray scale images…to provide a binary scale image which is
characterized by the pixelwise comparison of the image being analyzed
against a blue noise mask." The second (and only other) sentence explains
that there is a further "need for the modification of such halftone rendering
process", that is, modification of the process already described in the first
sentence, which expressly uses a blue-noise mask. Indeed, the objectives in
the second sentence appear to be the advantages conferred by using the blue
noise mask. In short, the paragraph reinforces the impression that the
invention is about using a blue-noise mask.25 Indeed, the next paragraph

23 Id. at 8.
24 Parker patent at 1:65-67.
25 Reh'g Req. at 8-9; see also Dec. at 6-7 (discussing this section of the
specification).
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that RCT cites explains that "these and other objects of the invention are
accomplished by generating a blue noise mask".26
RCT argues that the emphasis should be on "blue noise" generally
rather than a specific blue noise mask.27 RCT cites a paragraph, however,
that expressly requires use of a blue-noise mask, while crediting the
Ulichney treatise with describing the value of using blue noise generally.
Again, this passage appears to reinforce the impression that the mask is what
distinguishes the invention from the prior art.
RCT also argues that the requester (and by extension, the examiner)
would limit the disclosure to a specific five-element blue-noise mask. We
do not read the reexamination request so narrowly; rather, the facial
requirement is for some sort of blue-noise mask, not the specific five-
element mask.28 Thus, RCT's arguments that it has been improperly limited
to a single embodiment29 are wide of the mark.
The opinion did not misapprehend or overlook arguments and
evidence that was not presented in the appeal brief. In any case, the
argument is based on a mistaken premise about the rejection and thus does
not provide a basis for a different result.
Additional evidence
RCT argues that it is not obligated to submit additional evidence to
support its written description; but does not identify where the opinion
required it to do so. While testimony may be helpful to explain how those in

26 Reh'g Req. at 9.
27 Id. at 10.
28 E.g., Reexam. Req. at 15.
29 Reh'g Req. at 11-13.
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the art would have understood a specification without express support,30 the
opinion notes the Tronzo precedent where such testimony was deemed
unhelpful.31 As a practical matter, the board rarely has the benefit of
testimony on written description in an ex parte proceeding and is thus well
accustomed to deciding the issue without its benefit.
While additional evidence might have been helpful, RCT is correct
that the most relevant evidence, the disclosure, was already in the record
more or less.32 Instead, the problem was RCT's inadequate substantive
response in light of a facially reasonable rejection. Again, written
description is a highly fact-specific inquiry. The reexamination request and
rejection addressed the disclosure in detail, while RCT opted to focus on
legal arguments. For written description, this was a high-risk strategy that
left RCT with no contingency in the event that the legal arguments were
distinguishable.
RCT urges that the board consider the disclosure since it was in the
record all along.33 The opinion did, of course, expressly consider the
disclosure when it evaluated the prima facie case underlying the rejection. It
cannot have erred in failing to apprehend RCT's arguments only now made
for the rehearing. An appellate tribunal has no duty to scour the record for

30 Alton, 76 F.3d at 1172-73.
31 Dec. at 11, discussing Tronzo, 156 F.3d at 1158-59.
32 See n.19, supra, discussing the technical problem with reliance on the
patent disclosure.
33 Reh'g Req. at 14.
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the benefit of the appellant:34 indeed, to do so lightly would be injurious to
the integrity of the process.
Rejecting predictability
RCT argues that the board erred in its treatment of the Bilstad
unpredictability analysis because the cases cited in the opinion are
inapposite.35 RCT had argued in its brief that since its invention was based
in mathematics, it was necessarily highly predictable.36 The opinion cited
two cases involving mathematics-based inventions to illustrate that there is
no per se rule that mathematics-based inventions are highly predictable.37 In
any case, the point is moot since the opinion "for the purposes of this
appeal…will assume the art is predictable."38 Because the opinion granted
RCT its proposition arguendo, the discussion of these cases cannot be a
basis for prejudicial error.
The second Bilstad exception
RCT argues that the board failed to apply Bilstad's express disclaimer
analysis.39 Both RCT40 and Bilstad41 cite Tronzo as the basis for this

34 E.g., In re Swartz, 232 F.3d 862, 864 (Fed. Cir. 2000) (declining to scour
record to identify support for appellant) (affirming utility rejection based on
inadequate response to shift in burden of production).
35 Reh'g Req. at 15, citing Bilstad v. Wakalopulos, 386 F.3d 1116, 1125
(Fed. Cir. 2004).
36 Br. at 17.
37 Dec. at 10, citing PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299,
1306 (Fed. Cir. 2008) (telecommunications vending machine), and
Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(information dispensing system).
38 Dec. at 10.
39 Reh'g Req. at 16.
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analysis. The opinion discusses Tronzo in detail and determines that Tronzo
actually supports the examiner's finding.42 Significantly, neither Bilstad nor
Tronzo require "express disclaimer", although Bilstad notes that the board
did not find "whether Bilstad's disclosure expressly disclaimed" the
contested limitation.43 This observation falls significantly short of creating
an "express disclaimer" requirement. Bilstad's discussion of Tronzo is
instructive in this regard. The Tronzo court rejected the jury finding not
based on an express disclaimer, but rather on the implications from the fact
that Tronzo's "specification specifically distinguishes the prior art as inferior
and touts the advantages of the conical shape".44 Thus, far from imposing a
per se requirement for express disclaimer, both Bilstad (in noting the board's
inadequate fact finding) and Tronzo reaffirm that nothing can replace case-
specific fact finding in a written description determination. As the opinion
specifically found, RCT's disclosure relies on the blue-noise mask to
distinguish the close prior art, while also touting its advantages.45 Thus, if
anything, Bilstad and especially Tronzo reinforce the reasonableness of the
facial determination in this case that RCT's disclosure implies that a blue-
noise mask is required. Neither precedent suggests an error in the opinion.
Procedural difference
RCT argues that the opinion failed to show that the procedural
distinctness of Bilstad vitiates the relevance of the exceptions on which RCT

40 Br. at 17.
41 386 F.3d at 1125-26.
42 Dec. at 10-11.
43 386 F.3d at 1125.
44 Id., citing Tronzo, 156 F.3d at 1159.
45 Dec. at 6-7; accord supra at 7-9.
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relies.46 Since RCT's reliance on these exceptions also failed on the merits,
this point is moot. Nevertheless, RCT misapprehends the significance of the
procedural distinction.
In both an interference and an ex parte examination, the proponent of
unpatentability for lack of written description bears the initial burden of
production and the ultimate burden of proof. The procedural distinction
comes in what constitutes an adequate initial burden of production.
Interference litigants are presumed to have equal access to relevant sources
of evidence, including expert testimony. The examiner, by contrast, rarely
has more than the disclosure itself and thus for pragmatic reasons may shift
the burden of production to the author of the disclosure (effectively the
applicant or patent owner) by specifically pointing out reasonable facial
inadequacies with the disclosure. Thus, the significance of this procedural
distinction is not to distinguish Bilstad's exceptions, but rather to highlight
RCT's failure to substantively respond to the shift in the burden of
production.47
Disclaimer
RCT argues that the board's characterization of RCT's disclaimer is
overly broad.48 The opinion, however, does not find an express disclaimer at
all. Rather the opinion is explicit in finding a facially reasonable narrowing
in RCT's specification to which RCT failed to substantively respond.49

46 Reh'g Req. at 17.
47 Bilstad also involved copied claims, a developing niche of case law that is
profoundly distinct from statutory written description analysis, but which
has not been implicated in this case.
48 Reh'g Req. at 17-18.
49 E.g., Dec. at 11.
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Moreover, RCT misapprehends the scope of this narrowing. The opinion
never even mentions the even narrower five-element blue-noise mask.
Indeed, the cited portion of the opinion contrasts the use of a blue-noise
mask with the prior art blue-noise algorithm.50 RCT characterizes what it
"disclaimed [as] prior art in which the individual dot profiles are 'derived
independently' and in which 'many individual dot profiles…must be
stored.'"51 This acknowledged disclaimer is consistent with a distinction
between a computationally expensive blue-noise algorithm and a relatively
inexpensive blue-noise mask. In short, this disclaimer argument does not
demonstrate an error in the opinion.
HOLDING
RCT has not demonstrated prejudicial error sufficient to warrant
relief. Consequently, relief from the decision affirming final rejection of
RCT's claims is—
Denied

KMF

For the patentee, Michael Greenbaum, BLANK ROME LLP, of Washington,
D.C.

For the requester, John D. Vandenberg, KLARQUIST SPARKMAN LLP, of
Portland, Oregon

50 Reh'g Req. at 17-18, quoting Dec. at 11.
51 Reh'g Req. at 18.