Ex Parte Gleich et al

Patent Trial and Appeal Board

Feb 11, 2013

10552774 (P.T.A.B. Feb. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BERNHARD GLEICH and JURGEN WEIZENECKER
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Appeal 2011-006710
Application 10/552,774
Technology Center 3700
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Before ERIC GRIMES, JEFFREY N. FREDMAN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a device
for determining mechanical parameters of an examination object. The
Examiner has rejected the claims as anticipated. We have jurisdiction under
35 U.S.C. § 6(b). We vacate the rejection on appeal and enter a new ground
of rejection for indefiniteness.

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STATEMENT OF THE CASE
Claims 1-9, 19 and 20 are on appeal. Claim 1, the only independent
claim on appeal, is representative and reads as follows:
1. A device for determining mechanical, particularly elastic,
parameters of an examination object, comprising
a) at least one arrangement for determining the spatial
distribution of magnetic particles in at least one examination
area of the examination object, comprising
a means for generating a magnetic field with a spatial
profile of the magnetic field strength such that there is produced
in at least one examination area a first part-area having a low
magnetic field strength and a second part-area having a higher
magnetic field strength,
a means for detecting signals which depend on the
magnetization in the examination object, particularly in the
examination area, that is influenced by a spatial change in the
particles, and
a means for evaluating the signals so as to obtain
information about the, in particular temporally changing, spatial
distribution of the magnetic particles in the examination area;
and
b) at least one means for generating mechanical
displacements, in particular oscillations, at least in and/or
adjacent to the examination area of the examination object.

The sole rejection before us for review is the Examiner’s rejection of
claims 1-9, 19 and 20 under 35 U.S.C. § 102(a) over Kraus.1

We vacate this rejection in favor of a rejection of claims 1-9, 19 and
20 under 35 U.S.C. § 112, second paragraph. A prior art rejection of a
claim, which is so indefinite that “considerable speculation as to meaning of

1 Kraus, Jr., et al., US 6,470,220 B1, issued Oct. 22, 2002.
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the terms employed and assumptions as to the scope of such claims” is
needed, is likely imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA
1962) (holding that the examiner and the board were wrong in relying on
what at best were speculative assumptions as to the meaning of the claims
and basing a rejection under 35 U.S.C. § 103 thereon.) We find it imprudent
to speculate as to the scope of the “means for evaluating” element of these
claims in order to reach a decision on this issue under § 102. It should be
understood, however, that our decision to vacate the § 102 rejection is based
on the indefiniteness of the claimed subject matter and does not reflect on
the merits of the underlying rejection.

I.
Based on our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection: Claims 1-9, 19 and 20 are rejected under
35 U.S.C. § 112, second paragraph, because they are indefinite.

Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
FF1. The Specification discloses as follows:
In order to change the spatial position of the two part-areas in
the examination area, for example, a magnetic field that can be
changed locally and/or temporally can be generated. It may also
be provided that the signals induced in at least one coil by the
temporal change in the magnetization in the examination area
are received and evaluated in order to obtain information about
the spatial distribution of the magnetic particles in the
examination area. Signals that are as high as possible can be
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obtained by the spatial position of the two part-areas changing
as rapidly as possible. A coil which is used to generate a
magnetic field in the examination area can be used to detect the
signals. However, at least one special coil is preferably used.

(Specification 5, ll. 19-27.) (Emphasis added.)
FF2. The Specification discloses as follows:
An arrangement having a filter connected downstream of the
coil arrangement is likewise advantageous, said filter
suppressing from the signal induced in the coil arrangement the
signal components in a first frequency band and allowing
through the signal components in a second frequency band
which contains higher frequency components than the first
frequency component. This makes use of the fact that the
magnetization characteristic in the region in which the
magnetization passes from the unsaturated state to the saturated
state is non-linear. This non-linearity means that a magnetic
field which runs for example in a sinusoidal manner over time
with the frequency f in the range of non-linearity, brings about a
temporally changing induction with the frequency f
(fundamental component) and integer multiples of the
frequency f (upper or higher harmonics). The evaluation of the
upper harmonics has the advantage that the fundamental
component of the magnetic field that is active at the same time
for moving the field-free point does not have any influence on
the evaluation.

(Specification 7, ll. 20-32.) (Emphasis added.)
FF3. The Specification discloses as follows:
Also suitable is a device according to the invention which
has a means for generating a temporally changing magnetic
field that is superposed on the magnetic gradient field, for the
purpose of moving the two part-areas in the examination area.
A suitable device according to the invention is
characterized by a coil arrangement for receiving signals
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induced by the temporal change in the magnetization in the
examination area.

(Specification 4, ll. 26-28.) (Emphasis added.)
FF4. The Specification discloses as follows:
An arrangement may be provided with means for
generating a temporally changing magnetic field that is
superposed on the magnetic gradient field for the purpose of
moving the two part-areas in the examination area. The area
generated by the gradient coil arrangement is in this case moved
around the field zero point, i.e. the first part-area, within the
examination area by the temporally changing magnetic field.
Given a suitable temporal profile and orientation of this
magnetic field it is possible in this way for the field zero point
to pass through the entire examination area.

(Specification 6, ll. 22-28.)
Principles of Law
A patentee cannot avoid providing specificity as to structure
simply because someone of ordinary skill in the art would be
able to devise a means to perform the claimed function. To
allow that form of claiming under section 112, paragraph 6,
would allow the patentee to claim all possible means of
achieving a function.

Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir.
2009). See also, Aristocrat Technologies Australia Pty Ltd. v. International
Game Technology, 521 F.3d 1328, 1331 (Fed. Cir. 2008).
Analysis
Our rules require that for claims including “means for” language, the
Appeal Brief contain:
For each rejected independent claim, and for each dependent
claim argued separately under the provisions of paragraph
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(c)(1)(vii) of this section, if the claim contains a means plus
function or step plus function recitation as permitted by 35
U.S.C. 112, sixth paragraph, then the concise explanation must
identify the structure, material, or acts described in the
specification in the Record as corresponding to each claimed
function with reference to the specification in the Record by
page and line number or by paragraph number, and to the
drawing, if any, by reference characters.

37 C.F.R. § 41.37(c)(1)(v). The first element of claim 1 includes “a means
for evaluating the signals so as to obtain information about the, in particular
temporally changing, spatial distribution of the magnetic particles in the
examination area.” (App. Br., Claims Appendix.) For support of this
limitation (and all of the other limitations of claim 1), Appellants point to
page 2, line 32 through page 4, line 4 and page 5, line 5 through page 7, line
32 of the Specification (App. Br. 3). However, after reviewing the cited
passages of the Specification, we are unable to identify any passage
sufficiently disclosing a structure for performing the evaluation function for
the means-plus-function element of claim 1 (see, e.g., FF1 – FF4).
Appellants’ Summary of the Claimed Subject Matter in the Brief does
not point to any disclosure of any specific algorithm or structure for
implementing an assessment related to the temporally changing, spatial
distribution of the magnetic particles in the examination area as claimed.
Where the Specification does describe evaluating this distribution, it does so
generally and provides only a recitation of the evaluation function as
opposed to providing an adequate disclosure of an algorithm for
implementing the evaluation function (see, e.g., FF1 – FF4). See Harris
Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) (“A computer-
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implemented means-plus-function term is limited to the corresponding
structure disclosed in the specification and equivalents thereof, and the
corresponding structure is the algorithm.”). Accordingly, claim 1 and
dependent claims 2-9, 19 and 20 are unpatentable under 35 U.S.C. § 112,
second paragraph, as indefinite.

SUMMARY
Claims 1-9, 19 and 20 are indefinite when read in light of the
Specification because the scope of the “means for evaluating” element is
unclear. We therefore vacate the rejections on appeal and enter a new
ground of rejection for indefiniteness.

TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b), which provides that “[a] new ground of rejection . . . shall not be
considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
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(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

VACATED, 37 C.F.R § 41.50(b)

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