Ex Parte Brueckner et al

Board of Patent Appeals and Interferences

Jul 18, 2007

09900251 (B.P.A.I. Jul. 18, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SVEN BRUECKNER, HENRY VAN DYKE PARUNAK, and
JOHN A. SAUTER
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Appeal 2007-1200
Application 09/900,2511
Technology Center 1700
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Decided: July 18, 2007
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Before LINDA E. HORNER, ANTON W. FETTING, and DAVID B. WALKER,
Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

1 The application was filed on July 6, 2001 and claims the benefit of provisional
application number 60/216,805, filed July 7, 2000. The real party in interest is
Environmental Research Institute of Michigan.
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STATEMENT OF THE CASE
Sven Brueckner et al. (“Appellants”) seek our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-40. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
THE INVENTION
Appellants claim a system for coordinating the actions of individual agents
situated in an environment with the environment and with one another, and more
particularly to a system operating with pheromone robotics. (Specification 1:5-7).
Claim 1, reproduced below, is representative of the subject matter on appeal.

1. A system for constraining the movement of a walker
in a digital space with respect to some distinguished
location in said space, comprising:
a pump software component associated with the
distinguished location emitting a digital pheromone to
generate a pheromone gradient, said pheromone having a
rate of evaporation and a rate of propagation and
a walker software component operating in a grid
system within the space and having a pheromone sensing
threshold, said walker moving within the space to satisfy
a preselected constraint with respect to said pump.

THE REJECTION
Claims 1-40 are rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.

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ISSUE
The issue before us is whether Appellants have shown that the Examiner
erred in rejecting claims 1-40 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement. The dispositive issue is whether the
Examiner met the initial burden of setting forth a reasonable explanation as to why
he believes that the scope of protection provided by claims 1-40 is not adequately
enabled by the description of the invention provided in the specification of the
application.
Rather than repeat the arguments of Appellants and the Examiner, we make
reference to the Brief and the Answer for their respective details. Only those
arguments actually made by Appellants have been considered in this decision.
Arguments which Appellants could have made but chose not to make in the Brief
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004). Except as noted in this opinion, Appellants have not
presented any substantive arguments directed separately to the patentability of the
dependent claims or related claims in each group. In the absence of a separate
argument with respect to those claims, they stand or fall with the representative
independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927
F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
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USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).

1. The Specification teaches that “In the preferred embodiment, a
‘pheromone’ is a packet of digital information that includes at a
minimum two pieces of information: a type identifier enabling different
packets of the same type to be associated with one another, and a
strength.” (Specification 2:14-17).
2. The Specification also teaches the factors which drive the pheromone
infrastructure:
The internal operation of the pheromone infrastructure
aggregates and propagates pheromone deposits by the
agents. At the same time, local pheromone concentrations
are reduced in strength automatically by the pheromone
infrastructure's evaporation mechanism. There are three
general parameters specifying a pheromone in the
infrastructure: the pheromone's evaporation factor,
propagation factor, and threshold. The evaporation factor
determines the rate of the decay of the local strength of a
pheromone over time. The propagation factor influences
the strength with which a pheromone deposit event to a
place is propagated to the neighboring places. The
threshold is the strength below which the pheromone is
ignored by the pheromone infrastructure. The
performance of a pheromone-based coordination
mechanism in a specific application depends on these
three parameters.
(Specification 7:1-11).
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3. Pumps deposit pheromones on a hexagonal grid and walkers sense those
pheromones to indirectly determine the locations of the pumps:
The present invention details a pheromone-based
coordination mechanism of agents on a hexagonal grid.
Agents of two species live in places on the grid: pumps
and walkers. Pumps regularly deposit pheromones at
their current place. Potentially, they are able to move
independently over the grid, but in this paper, we
consider static pumps only. The walkers seek to occupy
the same places as the pumps, but do not perceive them
directly or know the purpose of their movements.
Walkers are only permitted to sample pheromone
concentrations at their current place and their immediate
neighbors. They may not even communicate directly
among themselves.
(Specification 7:12-19).
4. “A pheromone system embodies two sets of dynamics: those of the
pheromones themselves, and those of the walkers, which move in
response to the pheromones.” (Specification 7:21-22).
5. The walker chooses its next place to move by first sampling the
concentration of pheromones at its location and adjacent locations. “At a
relocation moment t and located at an arbitrary place p, a walker selects
its next location probabilistically from the set (C(p)) of currently
available options.” (Specification 9:7-9). The Specification discloses the
mathematical relationships of the selection process, which are driven in
part by the concentration of pheromones and the relative attraction of the
respective locations from which the walker can choose (See, e.g.
Specification 9:14-24). Flow charts displaying the logic for a variety of
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relocations strategies are shown in Figures 16-19 and described in greater
detail in the specification (Specification 28:16 - 30:20; Figs. 16-19).
6. Examples of pheromone concentration for a variety of pump
configurations and varying values for pheromone evaporation factor,
propagation factor, and threshold are illustrated in the Figures and
Specification (Specification 10:24 - 17:8; Figs. 1-10).
7. The implementation of an agent runtime environment in software
including the creation and deposition of pheromones is described in the
Specification (Specification 18:18-25:13).
An agent in the inventive agent runtime environment is
an instance of a JAVA object that is derived from the
general “Agent” class. The state of the agent is
represented by the values in the data slots of the agent's
object and the activities are specified in its methods. It
will be readily apparent to one skilled in the art that the
use of JAVA is illustrative rather than definitive of the
invention herein described, and that implementations in
other computer languages or other computational
architectures are also possible and fall within the
invention herein claimed.
(Specification 18:18-24).
8. The software implementation of a pheromone architecture also is
described in the Specification (Specification 25:15-28:14).
PRINCIPLES OF LAW
The PTO bears the initial burden when rejecting claims for lack of
enablement.

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When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial
burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by
that claim is not adequately enabled by the description of
the invention provided in the specification of the
application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as
to the scope of enablement. If the PTO meets this
burden, the burden then shifts to the applicant to provide
suitable proofs indicating that the specification is indeed
enabling.

In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA
1971)).
It is by now well-established law that the test for compliance with the
enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether the
disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the
art to make and use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). “Enablement
is not precluded by the necessity for some experimentation . . . . However,
experimentation needed to practice the invention must not be undue
experimentation. The key word is ‘undue,’ not ‘experimentation.’” In re Wands,
858 F.2d at 736-737, 8 USPQ2d at 1404.
To evaluate whether a disclosure would require undue experimentation, the
Federal Circuit has adopted the following factors to be considered:
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(1) The quantity of experimentation needed to make or use the invention
based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence of working examples;
(4) The nature of the invention;
(5) The state of the prior art;
(6) The relative skill of those in the art;
(7) The level of predictability in the art; and
(8) The breadth of the claims.
In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404. The examiner’s analysis must
consider all the evidence related to each of these factors, and any conclusion of
nonenablement must be based on the evidence as a whole. Id., 8 USPQ2d at 1404.
When the challenged subject matter is a computer
program that implements a claimed device or method,
enablement is determined from the viewpoint of a skilled
programmer using the knowledge and skill with which
such a person is charged. The amount of disclosure that
will enable practice of an invention that utilizes a
computer program may vary according to the nature of
the invention, the role of the program in carrying it out,
and the complexity of the contemplated programming, all
from the viewpoint of the skilled programmer.
Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941, 15 USPQ2d 1321,
1329 (Fed. Cir. 1990) (citing In re Sherwood, 613 F.2d 809, 817, 204 USPQ 537,
544 (CCPA 1980), cert. denied, 450 U.S. 994, 101 S.Ct. 1694, 68 L.Ed.2d 193
(1981)).
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As the court observed in Sherwood, the writing of a program may require
varying degrees of skill:
In general, writing a computer program may be a task
requiring the most sublime of the inventive faculty or it
may require only the droning use of clerical skill. The
difference between the two extremes lies in the creation
of mathematical methodology to bridge the gap between
the information one starts with ("the input") and the
information that is desired ("the output").
In re Sherwood, 613 F.2d at 816-17, 204 USPQ at 544; but see Fonar Corp. v.
General Electric Co., 107 F.3d 1543 (Fed.Cir.1997) (stating, in the context of a
best mode analysis, "normally, writing code for . . . software is within the skill of
the art, not requiring undue experimentation, once its functions have been
disclosed").
The claimed invention . . . is not in the details of the
program writing, but in the apparatus and method whose
patentability is based on the claimed combination of
components or steps. . . . The possible design of superior
software, or whether each programmer would work out
the details in the identical way, is not relevant in
determining whether the inventor has complied with the
enablement requirement.
Northern Telecom, 908 F.2d at 941, 15 USPQ2d at 1329.

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ANALYSIS
The Examiner walked through each of the In re Wands factors in turn;
however, much of his analysis was cursory and based on conclusory statements
that particular factors supported a conclusion of nonenablement. The Examiner
follows two main lines of reasoning in finding claims 1-40 not to be enabled.
First, the Examiner found that there is a lack of prior art pertaining to the
subject matter of the application (Answer 4). He further found that:
the lack of prior art pertaining to the subject matter of the
application provides evidence for the lack of
predictability in the art. Therefore, since the state of the
prior art refers to the level of skill of a person of ordinary
skill in the art, the specification as filed lacks sufficient
direction or guidance required to meet the enablement
requirement (see MPEP § 2164.05(a)).
(Answer 4). As a result, the Examiner found that the Specification fails to fill the
gap between the knowledge of one of ordinary skill in the art and the applicants’
claimed invention (Answer 4-5). Finally, the Examiner found that
since the applicants specification does not provide
adequate direction and guidance in the practicing of the
claimed invention, and since the art area is relatively
unpredictable and undeveloped, the invention would
require an undue amount of experimentation (see MPEP
§ 2164.06).
(Answer 6).
This first line of reasoning is supported by nothing more than conclusory
statements, without supporting analysis. For example, the base finding that there is
a lack of prior art is presented in a conclusory statement without any analysis or
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comment as to the prior art of record in the case (Answer 4). In fact, the Appellant
filed information disclosure statements dated (1) October 15, 2001 (listing two
patents); (2) December 3, 2001 (listing 22 articles totaling more than 500 pages
that are also included in the prosecution history); and (3) July 9, 2004 (listing 12
articles). The Examiner does not address why this constitutes a lack of prior art.
Since the Examiner’s weighing of the In re Wands factors relies heavily on his
conclusion that there is a lack of prior art—a conclusion which is unsupported by
the record—he has failed to set forth a reasonable explanation as to why he
believes that the scope of protection provided by the disputed claims is not
adequately enabled.
Second, the Examiner found that the nature of the invention is not clear. For
example, he found that “the specification does not adequately disclose a specific
pump software component, distance software agents, pheromone, walker software
component, type of sensor system or control system, which would be correlated
and organized to enable each of the elements to form a complete operative system”
(Answer 4). The Examiner also found that:
it is unclear as to what kind of control system or sensor
system is utilized. The specification provides no
guidance or working example as to what constitutes the
pump software component recited in the claimed system.
How does the distance software component deposit the
pheromone? The specification provide[s] no guidance or
working example as to what constitutes a pheromone as
recited in the claimed system. The specification
provide[s] no guidance or working example as to what
constitutes a walker software component as recited in the
claimed system (see MPEP § 2164.02).
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(Answer 5-6). Contrary to the Examiner’s findings, the Specification actually
provides an enabling description of the claim limitations the Examiner cites as
lacking from the Specification (Findings of Fact 1-8).
The Examiner has not set forth a reasonable explanation as to why he
believes that the scope of protection provided by claims 1-40 is not adequately
enabled by the description of the invention provided in the Specification. He thus
failed to meet his burden of setting forth a reasonable explanation of non-
enablement. Accordingly, we reverse the enablement rejection of claims 1-40.

CONCLUSIONS
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-40 under 35 U.S.C. § 112, first paragraph.

DECISION
The decision of the Examiner to reject claims 1-40 under 35 U.S.C. § 112,
first paragraph is reversed.

REVERSED

vsh

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