Ex Parte Duong

Board of Patent Appeals and Interferences

Feb 28, 2012

10867330 (B.P.A.I. Feb. 28, 2012)

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.
10/867,330 06/15/2004 Henri Duong 3093
7590 02/29/2012
Henri Duong
316 1/2 E Glendon way
Alhambra, CA 91801
EXAMINER
LAMB, CHRISTOPHER RAY
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
02/29/2012 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 THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte HENRI DUONG
________________

Appeal 2011-005466
Application 10/867,330
Technology Center 2600
________________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
JASON V. MORGAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005466
Application 10/867,330

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STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner‟s final
rejection of claims 7 and 9. Claims 1 – 6 are canceled and claim 8 is
withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The invention relates to the recording of printing materials, such as
books, indexes, dictionaries, etc., in recording materials, such as discs, CDs,
cassette tapes, cards, etc. (Abstract). Claim 7 is directed to “[t]he basis/bases
of all kinds of printing materials . . .” while claim 9 is directed to “[t]he basis
of the disclosed invention(s) in these documents . . .” Neither claim 7, which
spans about 13 pages, nor claim 9, which spans about 4 pages, is reproduced
here. The most recent versions of these claims, as entered into the record, are
listed in Appellant‟s Amendment, filed November 5, 2008, pages 19 – 32
and 44 – 48.
Evidence and Rejections
The Examiner rejects claims 7 and 9 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter (Ans. 8 – 9), 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
(Ans. 3 – 5), and 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention (Ans. 5 – 7).
The Examiner further rejects claim 7 under 35 U.S.C. § 102(b) as
being anticipated by Keele (US 5,611,066) (Ans. 9 – 10).
Appeal 2011-005466
Application 10/867,330

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ISSUE
Did the Examiner err in concluding that claims 7 and 9 are
unpatentable under 35 U.S.C. §§ 101, and 112, first and second paragraphs?
ANALYSIS
We agree with the Examiner that claims 7 and 9 are not directed to
patentable subject matter (Ans. 8). Patentable subject matter falls into one of
four independent categories of inventions or discoveries: processes,
machines, manufactures, and compositions of matter. See 35 U.S.C. § 101;
see also Bilski v. Kappos, 561 U.S. ___, ___, 130 S.Ct. 3218, 3221 (2010).
Supreme Court precedents provide three specific exceptions to these broad
categories: laws of nature, physical phenomena, and abstract ideas. See
Bilski, 561 U.S. at ___, 130 S.Ct at 3221.
We cannot determine which category, if any, claim 7‟s “basis/bases of
all kinds of printing materials . . . recorded in all kinds of recording
materials” falls under. Moreover, claim 7 is so manifestly abstract as to
preempt the fundamental concept or idea of recording printing materials in
recording materials, thus foreclosing innovation in this area. See
Dealertrack, Inc. v. Huber, ___ F.3d ___, 2012 WL 164439 at *16, No.
2009-1566, slip op. at *35 (Fed. Cir. 2012). Claim 7, being manifestly
abstract, is therefore not patentable subject matter. See Dealertrack, ___
F.3d at ___, 2012 WL 164439 at *14, No. 2009-1566, slip op. at *30.
We also cannot determine which category, if any, claim 9‟s “basis of
the disclosed invention(s) in these documents” falls under. Claim 9 is also
manifestly abstract and therefore not patentable subject matter. Accordingly,
we sustain the Examiner‟s rejection of claims 7 and 9 under 35 U.S.C.
§ 101.
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Application 10/867,330

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We agree with the Examiner that the written description requirement
has not been met for claims 7 and 9. Appellant does not dispute that new
matter had been introduced into these claims. Instead, Appellant merely
contends that the “new matter is removed from the current claim and appeal”
(App. Br. 40). However, the Examiner correctly notes that “the last entered
copy of the claims still contained the new matter” (Ans. 11). Appellant
sought to remove new matter from claim 7 (Amend. After Final, Feb. 27,
2009), but the change was not entered (Adv. Action, Mar. 13, 2009).
Because the claims still contain new matter, we sustain the Examiner‟s
rejection of claims 7 and 9 under 35 U.S.C. § 112, first paragraph.
We also find that the Examiner‟s rejection of claims 7 and 9 for
indefiniteness is proper. Indefiniteness means that one of ordinary skill in
the art, the hypothetical artisan, cannot understand what is claimed, even
when the claim is read in light of the specification. See Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). The
Examiner asserts, and we agree, that one of ordinary skill in the art would
not understand the claims, because the claims have not been presented in a
format that comports with recognized conventions of patent practice. (Ans. 5
– 7). For example, claim 7 repeatedly references itself (e.g., “the basis of
„using all kinds of print materials‟ referring to claim 7”) while claim 9
includes multiple steps that do not positively recite what is claimed (e.g.,
“the invention comprising the invention being made and carried out in any
ways”).
Similar to the Examiner, we do not understand what Appellant is
attempting to claim. Accordingly, we commend the Examiner for working
with Appellant and attempting to ascribe some meaning to claim 7 in order
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Application 10/867,330

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to apply prior art. However, we agree with the Examiner that claims 7 and 9
are indefinite. Therefore, we sustain the Examiner‟s rejection of claims 7
and 9 under 35 U.S.C. § 112, second paragraph.
Because prior art cannot be applied to a claimed invention that neither
we nor the Examiner can understand, see In re Steele, 305 F.2d 859, 863
(CCPA 1962), we do not reach the prior art rejection of claim 7.

DECISION
We affirm the Examiner‟s decision rejecting claims 7 and 9 under 35
U.S.C. §§ 101 and 112, first and second paragraphs.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD