Ex Parte Enright

Patent Trial and Appeal Board

Sep 19, 2016

13793361 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131793,361 03/11/2013
7590
Kerry John Enright
458 Scrub Oaks Dr.
Hampstead, NC 28443
09/20/2016
FIRST NAMED INVENTOR
Kerry John Enright
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5670
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
MAILDATE DELIVERY MODE
09/20/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte KERRY JOHN ENRIGHT
Appeal2016-005700
Application 13/793,361 1
Technology Center 3600
Before NINA L. MEDLOCK, MATTHEWS. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is Kerry John Enright.
Appeal Br. 1.
Appeal2016-005700
Application 13/793,361
ILLUSTRATIVE CLAIM
1. A method of systematically performing hierarchical
process control, the method comprising:
performing a process element control operation,
wherein the process element control operation comprises
the addition of elements to the initiate, execute and
complete sub-processes;
performing a process order operation, wherein the
process order operation comprises controlling the
execution order of processes and sub-processes;
performing a sub-process operation, wherein the
sub-process operation comprises the initiation, execution
and completion of sub-processes;
performing an identification operation, wherein the
identification operation comprises the identification of
process step, elements, hierarchies and interactions; and
performing a process control operation, wherein
the process control operation comprises monitoring,
evaluating and controlling processes across hierarchies;
[sic]
CITED REFERENCES
The Examiner relies upon the following references:
Knittel et al. US 2003/0217129 Al Nov. 20, 2003
(hereinafter "Knittel")
Mamou et al. US 2005/0240354 Al Oct. 27, 2005
(hereinafter "Mamou")
REJECTIONS
I. Claims 1-9 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
II. Claims 1-9 are rejected under 35 U.S.C. § l 12(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
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Application 13/793,361
matter that the Appellant regards as the invention.2
III. Claims 1---6 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Knittel.
IV. Claims 7-9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Knittel and Mamou.
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Office Action at pages 4 and 9 and the Answer at pages 10-12. Additional
findings of fact may appear in the Analysis below.
ANALYSIS
Indefiniteness Rejection
35u.s.c.§112(b)
A patent "specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the
inventor ... regards as the invention." 35 U.S.C. § 112(b ). A claim fails to
satisfy this statutory requirement and is thus indefinite if its language, when
read in light of the specification and the prosecution history, "fail[ s] to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2124 (2014).
In the instant Appeal, the Final Office Action states that "the metes
and bounds of the claims are unknown." Final Action 4. More particularly,
"[i]t is unclear how [the steps of claim 1] are performed and what they
2 The Examiner rejected claims 1-9 under either 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph. Final Action 9. Because the
Appellant's application was filed after September 16, 2012 (see Appeal
Br. 1 ), the AIA version of 35 U.S.C. § 112 is applied herein.
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Application 13/793,361
comprise" and "[n]o apparent structure is evident from these recited steps,"
thus rendering the claims indefinite. Id. at 9. Similarly, dependent
claims 2-9 "inherit the deficiency" of claim 1 "and include similar
deficiencies." Id.
The Examiner further explains that the "element control" recited in
claim 1 is not discussed or defined in the Specification and is not described
in detail that would permit a person of ordinary skill in the art to discern its
meaning. Answer 10. The Examiner points out similar interpretational
problems regarding the terms "initiate," "execute," and "complete" (which
the Examiner states are "recited by their names only, without any details on
how they are performed"), as well as the features of the "prepare" step
(claim 2). Id.
In response, the Appellant refers to examples of using the claimed
embodiments that do not appear in the Specification or claims ("process
transition between take-off and combat flight for the F35 program,"
"numerical process control equipment," and "semiconductor process
equipment") (Reply Br. 34, 40), quotes portions of the Specification without
providing significant additional explanation (id. at 34--35, 38-39), quotes
portions of an allegedly related application that are not part of the
Specification of the application involved in this Appeal (id. at 35-36), and
offers personal opinions (Appeal Br. 34, 56; Reply Br. 35--40). In addition,
the Appellant cites or quotes legal authorities not directed to the issue of
claim indefiniteness. See Reply Br. 37--40.
In view of the foregoing, the Appellant's arguments are not persuasive
of error in the rejection of the claims for indefiniteness. Accordingly, the
rejection of claims 1-9 under 35 U.S.C. § 112(b) is sustained.
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Application 13/793,361
Patentable Subject Matter, Anticipation, and Obviousness Rejections
35 U.S.C §§ 101, 102(b), and 103(a)
We do not reach the merits of the rejections of claims 1-9 under
35 U.S.C. §§ 101, 102(b), or 103(a) at this time. Before a proper review of
the rejections under§§ 101, 102(b), and 103(a) can be made, the subject
matter encompassed by the claims on appeal must be reasonably understood
without resort to speculation. Because claims 1-9 fail to satisfy the
requirements under 35 U.S.C. § 112, second paragraph, as explained above,
we are constrained to reverse, proforma, the Examiner's rejections under
35 U.S.C. §§ 101, 102(b), and 103(a). See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (a prior art rejection cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of claim language). The reasoning of
In re Steele applies likewise to rejections under 35 U.S.C. § 101, when, as
here, the scope of the claims must be understood in order to determine
whether they encompass ineligible subject matter.
It should be understood that the decision to reverse the rejections of
claims 1-9 under 35 U.S.C. §§ 101, 102(b), and 103(a) is based solely on the
indefiniteness of the claims, and does not reflect on the merits of the
underlying rejections.
DECISION
We REVERSE, proforma, the Examiner's decision rejecting
claims 1-9 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
We AFFIRM the Examiner's decision rejecting claims 1-9 under
35 U.S.C. § 112(b ).
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Application 13/793,361
We REVERSE, proforma, the Examiner's decision rejecting
claims 1-9 under 35 U.S.C. § 102(b).
We REVERSE, proforma, the Examiner's decision rejecting
claims 1-9 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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