Ex Parte 7672198 et al

Patent Trial and Appeal Board

Sep 23, 2015

95002236 (P.T.A.B. Sep. 23, 2015)

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.
95/002,236 09/13/2012 7672198 681954-385RX 1030
570 7590 09/23/2015
PANITCH SCHWARZE BELISARIO & NADEL LLP
ONE COMMERCE SQUARE
2005 MARKET STREET, SUITE 2200
PHILADELPHIA, PA 19103
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/23/2015 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE PATENT TRIAL AND APPEAL BOARD
____________

LG ELECTRONICS USA INC. AND LG ELECTRONICS INC.,
Requester and Appellant,

v.

INDUSTRIAL TECHNOLOGY RESEARCH INSTITUTE,
Patent Owner and Respondent.
____________

Appeal 2015-007260
Reexamination Control 95/002,236
Patent 7,672,198 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, JEFFERY B. ROBERTSON, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL

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Third Party Requester LG Electronics Inc. and LG Electronics U.S.A.,
Inc. (“Requester”) appeals the Examiner’s decision not to adopt the
proposed rejection of claims 3, 4, 8, 12–13 and 17–23.1 Patent Owner
Industrial Technology Research Institute (“Patent Owner”) responds to the
Requester’s appeal.2 We have jurisdiction under 35 U.S.C. §§ 134(c) and
315(b)(pre-AIA).
We AFFIRM.

STATEMENT OF THE CASE
United States Patent 7,672,198 B2 (hereinafter the “’198 patent”),
issued to Ming-Tsan Peng, et al. on March 2, 2010, is the subject of the
current inter partes reexamination.
The ’198 patent was the subject of a civil action in the United States
District Court for the District of New Jersey, namely Industrial Technology
Research Institute v. LG Electronics Inc., et al., Civ. Action No. 2:12-cv-949
(D.N.J.). See TPR App. Br. 2.

1 See Requester’s Appeal Brief, filed January 7, 2015(“TPR App. Br.”), at
1; Examiner’s Answer, mailed February 26, 2015, incorporating by
reference the Examiner’s Right of Appeal Notice, mailed October 9, 2014
(“RAN”). See also Requester’s Rebuttal Brief, filed March 26, 2015 (“TPR
Reb. Br.”). We understand that, on August 25, 2015, Requester withdrew
from participating in this proceeding. See Requester’s Letter, dated August
25, 2015.
2 See Patent Owner’s Respondent Brief, filed February 6, 2015 (“PO Resp.
Br.”).
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THE INVENTION
The ’198 patent generally relates to an actuating device of an optical
pickup head. More specifically, the present invention is directed to an
electromagnetic actuating device including a yoke that is spaced apart from
an objective lens carrier by a distance. The yoke has a protruding part that
extends towards the objective lens carrier and is used to attract magnetic flux
lines produced by the magnet, making the magnetic flux that passes through
the coil be distributed evenly. ’198 patent, Abstract.
Claim 3, which is illustrative of the appealed subject matter, has been
amended and is reproduced below (with underlining showing additions
relative to the originally issued claims):
3. (Amended) An optical pickup head, applicable for
moving an objective lens assembly, comprising:
an objective lens carrier, for carrying the objective lens
assembly, wherein a vertical direction, a first horizontal
direction, and a second horizontal direction that are vertical to
each other are defined on the objective lens carrier;
two supporting yokes, arranged along a first horizontal
axial direction and spaced apart from each other by the
objective lens carrier, such that the objective lens carrier is
located between the two supporting yokes;
two magnets, respectively fixed on inner surfaces of the
supporting yokes that are facing each other, such that the
objective lens carrier is located between the two magnets;
at least a focusing coil, winding around the objective lens
carrier, wherein a normal direction of the focusing coil is
parallel to the vertical direction;
a plurality of tracking coils, disposed at the objective lens
carrier, wherein a normal direction of the tracking coil is
vertical to the vertical direction and parallel to a plane formed
by the first horizontal direction and the second horizontal
direction; and
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two yokes, arranged along the second horizontal axial
direction and spaced apart from each other by the objective lens
carrier, such that the objective lens carrier is located between
the two yokes, wherein a protruding part is protruded from an
inner surface of each yoke and extends towards the objective
lens carrier,
wherein each protruding part includes a front edge
opposite the yoke from which the protruding part protrudes and
facing the objective lens carrier, and each protruding part
protrudes to a predetermined distance in the second horizontal
axial direction such that a space is provided in the second
horizontal axial direction between the front edge of the
protruding part and a nearest one of the plurality of tracking
coils on the objective lens carrier, and
wherein the protruding part is a long sheet having a
length in the first horizontal direction that is greater than a
length in the first horizontal direction of the nearest one of the
plurality of tracking coils.
TPR App. Br., Claims App’x.

PROPOSED REJECTIONS
The Examiner does not adopt the following rejections proposed by
Requester:
1. Claims 3, 4, 8, 12, 13, and 17–23 are not patentable for failure to
comply with the enablement requirement of (Pre-AIA) 35 U.S.C.
§ 112, ¶ 1.
2. Claims 3, 4, 8, 12, 13, and 17–23 are not patentable for failure to
comply with the written description requirement of (Pre-AIA)
35 U.S.C. § 112, ¶ 1.
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3. Claims 3, 4, 8, 12, 13, and 17–23 are not patentable for failure to
comply with the definiteness requirement of (Pre-AIA) 35 U.S.C.
§ 112, ¶ 2.

ISSUES
1. Is Requester’s challenge to the enablement of the claimed
protruding part within the permissible scope of this inter partes
reexamination proceeding?
2. Did the Examiner err by not adopting the proposed written
description rejection? Specifically, is there sufficient written description
support for the recited space “provided in the second horizontal axial
direction between the front edge of the protruding part and a nearest one of
the plurality of tracking coils on the objective lens carrier”?
3. Did the Examiner err by not adopting the proposed indefiniteness
rejection? Specifically, is the recited space “provided in the second
horizontal axial direction between the front edge of the protruding part and a
nearest one of the plurality of tracking coils on the objective lens carrier”
definite?
ANALYSIS
ENABLEMENT
Claims 3, 4, 8, 12, 13, and 17–23
Requester contends that the recited “protruding part,” a term recited in
the original ’198 claims, is not enabled. See, e.g., TPR App. Br. 20–23
(contending that the recited “protruding part” is not enabled because it
requires four critical structural features that are absent from claims 3 and
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17); TPR Reb. Br. 8–10 (presenting similar arguments as the opening brief
and adding that the recited protruding part is not enabled because the claims
additionally lack a critical functional feature).3 As pointed out by Patent
Owner though, it is well established that for originally claimed subject
matter, issues under 35 U.S.C. § 112 are not within the scope of
reexamination and will not be considered. See 37 C.F.R. § 1.906(c).
Specifically, 37 C.F.R. § 1.906 reads in relevant part as follows:
§ 1.906 Scope of reexamination in inter partes reexamination
proceeding.
(a) Claims in an inter partes reexamination proceeding will be
examined on the basis of patents or printed publications and,
with respect to subject matter added or deleted in the
reexamination proceeding, on the basis of the requirements of
35 U.S.C. 112.
. . . .
(c) Issues other than those indicated in paragraphs (a) and (b) of
this section will not be resolved in an inter partes reexamination
proceeding. . . .
Moreover, section 2258(II) of the MPEP4 explains:
Consideration of 35 U.S.C. 112 issues should, however, be
limited to the amendatory (e.g., new language) matter. For
example, a claim which is amended or a new claim which is
presented containing a limitation not found in the original
patent claim should be considered for compliance under 35

3 We note that Requester argues, for the first time in the Rebuttal Brief, that
the claims are not enabled for lacking a critical function requirement in
addition to the four structural requirements argued in Requester’s opening
brief. Compare TPR App. Br. 20–21 with TPR Reb. Br. 8–10.
4 In discussing the scope of inter partes reexaminations, section 2658(II) of
the MPEP refers to section 2258(II) of the MPEP “for a discussion of the
examination in a reexamination proceeding based upon 35 U.S.C. 112,
which discussion applies to inter partes reexamination in the same way it
applies to ex parte reexamination.”
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U.S.C. 112 only with respect to that limitation. To go further
would be inconsistent with the statute to the extent that 35
U.S.C. 112 issues would be raised as to matter in the original
patent claim. . . . If a limitation that appears in an existing
patent claim also appears in a claim newly presented in a
reexamination proceeding, that limitation cannot be examined
as to 35 U.S.C. 112.
MPEP § 2258(II)(emphasis added). As such, because Requester’s
enablement argument is directed to subject matter included in the original
patent claims, we agree with the Patent Owner that Requester’s arguments
are outside the permissible scope of this proceeding.
We find unpersuasive Requester’s response that “[Patent Owner]
should have raised this issue by Petition long ago and shortly after the
enablement rejections were proposed in February 2013.” TPR Reb. Br. 6.
Namely, we disagree that Ex Parte TayMac Corp. supports Requester’s
argument. The Examiner here, unlike Ex Parte TayMac Corp., never
adopted the proposed enablement rejection. See Ex Parte TayMac Corp.,
No. 2011-010682, 2011 WL 5289049, at *4 (BPAI Nov. 1, 2011) (declining
to address whether the 35 U.S.C. § 112 rejection was properly within the
scope of the reexamination and reversing the Examiner’s rejection on other
grounds)).5
Requester’s proposed enablement rejection is directed to subject
matter of the original patent claims, which is outside the permissible scope

5 We also note that the Patent Owner is entitled to defend the Examiner’s
decision not to enter the rejection on other grounds. See Rexnord Industries,
LLC v. Kappos, 705 F.3d 1347 (Fed. Cir. 2013) (“On judicial review, the
correctness of the decision appealed from can be defended by the appellee
on any ground that is supported by the record, whether or not the appellant
raised the argument.”).
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of inter partes reexaminations. Therefore, we affirm the Examiner’s
decision not to adopt the proposed enablement rejection.

WRITTEN DESCRIPTION6
Claims 3, 4, 8, 12, 13, and 17–23
Requester argues that “[t]he specification does not demonstrate that
the inventors were in possession of an invention wherein ‘a space is
provided in the second horizontal direction between the front edge of the
protruding part and a nearest one of the plurality of tracking coils on the
objective lens carrier,’ as recited in claims 3 and 17.” TPR App. Br. 30. In
particular, the ’198 patent “makes no mention of such ‘space’ as now recited
in claims 3 and 17.” Id. Instead, the ’198 patent describes a space between
the protruding part and the objective lens carrier. Id. Additionally,
Requester contends that Figure 6 cannot support the recited space because
Figure 6 mislabels supporting yokes 200 as the objective lens holder 100 and
because Figure 6 only illustrates an effective tracking coil 430, not tracking
coils 420. Id. at 31.
As Patent Owner points out though
An ipsis verbis (“in the same words”) description is not
necessary to demonstrate support for elements of a claim.
Rather, it is sufficient if the description is such that “a skilled
artisan would have understood the inventor to be in possession

6 To the extent Requester asserts that the claimed protruding part is not
sufficiently described in the ’198 patent, for the reasons discussed we also
find these arguments are not within the permissible scope of this inter partes
reexamination. It is our understanding, though, that Requester’s argument
here is instead directed to newly added subject matter, i.e. the recited “space
[] provided in the second horizontal axial direction. . .”.
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of the claimed invention at the time of filing, even if every
nuance of the claims is not explicitly described in the
specification.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563 (Fed. Cir. 1991); see also M.P.E.P. § 2163. That is,
adequate written description support for the newly recited
elements of claims 3 and 17 can still exist even without the
precise use of the claimed terms in the specification.
PO Resp. Br. 4. Patent Owner further explains that the recited space is
adequately described by the ’198 patent specification and drawings. In
particular, the recited space is expressly visible in Figure 5, reproduced
below.

Annotated Copy of Figure 5 identifying the space in the horizontal axial
direction between the front edges of the protruding parts and the
nearest tracking coils
PO Resp. Br. 5–6. As shown by Patent Owner’s annotations in the form of
black arrows, there is a space between the protruding part 610 and the
nearest tracking coil 420 in the second horizontal axial direction, i.e. in the
direction of the Y-axis.
Additionally, we disagree with Requester that the described space
between the protruding part and the objective lens carrier is “unrelated to the
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‘space’ as now recited in claims 3 and 17.” See TPR App. Br. 31. Namely,
as shown in Figure 4, the tracking coils are placed around the external
surface of the objective lens carrier. See Fig. 4; ’198 patent, col. 4, ll. 37–
40; see also ’198 patent, claim 3 (reciting that the plurality of tracking coils
are disposed at the objective lens carrier). Thus, because the ’198 patent
identifies the tracking coils are around the external surface of the objective
lens carrier and also explains that the space is to achieve the predetermined
placement without crashing the protruding part (’198 patent, col. 5, ll. 40–
48), a skilled artisan would understand the disclosed space between the
protruding part and the objective lens carrier to also be a space between the
protruding part and the nearest tracking coil.
We likewise find unavailing Requester’s argument that “because the
patent’s text and figures preclude the tracking coils 430 from ever being
located on the same plane (e.g., XY) as the protruding parts 610. . . , there is
never a space (e.g., measured on the Y axis) between the protruding part’s
front edge and any tracking coil 430.” TPR Reb. Br. 12. We first note that
the claims expressly recite that the space is provided in the second horizontal
axial direction and, thus, does not require the space only to be on the same
XY plane, as suggested by Requester. Moreover, the mere disclosure in the
’198 patent of a space in the vertical direction does not render the recited
space in the second horizontal axial direction unsupported.
Requester’s arguments also fail because the space described to
achieve the predetermined displacement without crashing is a space in the
second horizontal axial direction. In particular, column 4, lines 40–48 of the
’198 patent state that
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the larger the height h at which the protruding part 610
protrudes from the yoke 600, the closer the front edge of the
protruding part 610 is to the effective tracking coil 430, which
will enhance the evenness of the distribution of the magnetic
flux lines. However, a sufficient large space must be preserved
between the front edge of the protruding part 610 and the
objective lens carrier 100, such that the objective lens carrier
100 achieves the predetermined displacement, without crashing
the protruding part 610.
Notably, the height h is identified in Figure 6 as in the direction of the Y-
axis. This disclosure, then, is consistent with the claims, describing a space
in the second horizontal axial direction. As such, we are not persuaded by
Requester that a skilled artisan would not have understood the inventor to be
in possession of the claimed invention at the time of filing.
Accordingly, for the reasons discussed above, we affirm the
Examiner’s decision not to adopt the rejection of claims 3, 4, 8, 12, 13, and
17–23 under 35 U.S.C. § 112, ¶ 1 as failing to satisfy the written description
requirement.

INDEFINITENESS
Claims 3, 4, 8, 12, 13, and 17–23
Requester next asserts that “the scope of the phrase ‘a space is
provided in the second horizontal direction between the front edge of the
protruding part and a nearest one of the plurality of tracking coils,’ recited in
both claims, does not inform, with reasonable certainty, those skilled in the
art about the scope of the claims.” TPR App. Br. 32. In particular,
Requester contends that because the Specification precludes the front edge
of the protruding part from being located in the same XY plane as the
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tracking coil, the claimed space in the second horizontal direction is
“entirely unclear.” Id. at 33–34.
However, as discussed above, the claim expressly recites that the
space is in the second horizontal axial direction. This claim language does
not become unclear because the ’198 patent describes that there may also be
a space along the vertical axis. See PO Resp. Br. 7 (noting that “it is also
clear how a space may be maintained between the front edge of the
protruding part 610 and a tracking coil 420, even where neither feature is in
the same ‘XY’ plane.”). Moreover, contrary to Requester’s assertions,
neither the claim language nor the ’198 patent specification suggests that
both the protruding part and the tracking coils must be arranged on the same
XY plane.
Additionally, Requester maintains that the ’198 patent distinguishes
between the actual tracking coils and the effective tracking coils and,
therefore, it is unclear whether the space must be in relation to the actual
tracking coils or certain legs of different tracking coils. Id. at 34–35. We
disagree. The disputed limitation expressly recites that the space must be
between the protruding part and a nearest one of the plurality of tracking
coils on the objective lens carrier. See, e.g., PO Resp. Br. 8. While the ’198
patent may describe and depict embodiments with a space between the
protruding part and the effective tracking coil, this does not negate the
definiteness of the express language of the claim. As such, we are not
persuaded by Requester that the recited space is indefinite.
Accordingly, for the reasons discussed above, we affirm the
Examiner’s decision not to adopt the rejection of claims 3, 4, 8, 12, 13, and
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17–23 under 35 U.S.C. § 112, ¶ 2 as failing to satisfy the definiteness
requirement.

DECISION
The Examiner’s decisions not to adopt the proposed rejections are
affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

peb
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PATENT OWNER:

PANITCH SCHW ARZE BELISARIO & NADEL LLP
One Commerce Square
2005 Market Street, Suite 2200
Philadelphia, PA 19103

THIRD-PARTY REQUESTER:
MORGAN LEWIS & BOCKIUS (WA)
1111 Pennsylvania Avenue, NW
Washington, DC 20004