Ex Parte Harrison et al

Patent Trial and Appeal Board

May 31, 2017

12948586 (P.T.A.B. May. 31, 2017)

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.
12/948,586 11/17/2010 Daniel J. Harrison TLX-007-A 4104
61529 7590
Neugeboren O'Dowd PC
1227 Spruce Street
SUITE 200
BOULDER, CO 80302
06/02/2017 EXAMINER
OWENS, DOUGLAS W
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
06/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
craig @ neugeborenlaw .com
sean @ neugeborenlaw. com
rene @ neugeborenlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL J. HARRISON and STEVEN S. DAVIS
Appeal 2016-001797
Application 12/948,586
Technology Center 2800
Before MARKNAGUMO, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner provisionally rejected claims 1—20 of Application
12/948,586 on the basis of double patenting and finally rejected claims 1, 3,
6—15, and 17—21 under 35U.S.C. § 112, || 1 and 2 as not enabled, as failing
to comply with the written description requirement, and/or as indefinite.
Non-Final Act. 18—29 (Oct. 8, 2014). Appellants1 seek reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35U.S.C. §6.
For the reasons set forth below, we AFFIRM-IN-PART.
1 TerraLUX, Inc. is identified as the real party in interest. Appeal Br. 2.
Appeal 2016-001797
Application 12/948,586
BACKGROUND
The ’586 Application relates to powering LED light sources using
different types of power supplies. Spec. 12.
Claim 1 is representative of the ’586 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. An apparatus comprising:
an analyzer for determining a transformer type based at least in
part on a power signal received from a transformer, wherein the
determined transformer type corresponds to a magnetic
transformer or an electronic transformer; and
a generator for generating a control signal, based at least in part
on the determined transformer type, to instruct a regulator IC to
operate in one of a plurality of operating modes in accordance
with the transformer type, wherein the plurality of operating
modes comprise a first mode for accepting a low-frequency
input voltage and a second mode for accepting a high-frequency
input voltage.
Appeal Br. 15 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1—20 [sic: 1, 3, 6—15, and 17—202] are provisionally
rejected on the ground of nonstatutory double patenting over claims 1—17 of
copending Application No. 12/948,5893. Non-Final Action 2 (Oct. 8, 2014)
(citing Non-Final Action (March 15, 2013)).
2 The non-final rejection states that claims 1—20 are rejected, but claims 2, 4,
5, and 16 are withdrawn from consideration.
3 Application No. 12/948,589 is the subject of Appeal 2016-1798, decided
concurrently.
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Application 12/948,586
2. Claims 1, 3, 6—15, and 17—214 are rejected under 35 U.S.C.
§ 112 11, for failure to comply with the enablement requirement. Non-Final
Act. 18-22.
3. Claims 1, 12, 14, 15, 17—19, and 215 are rejected under 35
U.S.C. § 112 11 for failure to comply with the written description
requirement. Id. at 22—28.
4. Claim 1 is rejected under 35 U.S.C. § 112 12 as indefinite. Id.
at 28-29.
DISCUSSION
Appellants’ first argument concerns whether certain limitations should
be construed as means-plus-fimction elements under 35 U.S.C. § 112 | 6.
Appeal Br. 4—6.
In the “Response to Remarks” portion of the rejection at issue, the
Examiner indicates that varous terms “invoke 35 U.S.C. 112, sixth
paragraph.” See, e.g., Non-Final Act. 14. The Examiner further indicates
that applicants may explain or dispute the Examiner’s interpretation of the
structure corresponding to the limitations or may amend the claims so as to
recite sufficient structure. Id. at 18.
4 The non-final rejection states that “[cjlaims 1—20 are rejected” as not
enabled, but the subsequent explanation indicates that claim 21 is also
rejected for lack of enablement. Non-Final Act. 19, 21—22. Claims 2, 4, 5,
and 16 are withdrawn.
5 The non-final rejection states that claims 1, 12, 14, 15, and 17—19 are
rejected for failure to comply with the written description requirement but
the subsequent explanation indicates that claim 21 is also rejected on this
basis. Non-Final Action 22—28.
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Application 12/948,586
A patent applicant, “any of whose claims has been twice rejected, may
appeal from the decision of the primary examiner to the Patent Trial and
Appeal Board.” 35 U.S.C. § 134(a) (underscoring added). The Examiner’s
remarks regarding section 112, paragraph 6 indicate a certain interpretation
of the claims, but do not amount to a current rejection. Accordingly, review
of such remarks is proper only to the extent that the application of § 112^6
to a particular claim element affects a rejection under §§ 101, 102, 103, or
112.
Rejection 1
The Examiner provisionally rejected claims 1,3, 6—15, and 17—20 on
the ground of nonstatutory double patenting over claims 1—17 of copending
Application No. 12/948,589. Non-Final Action 2 (Oct. 8, 2014); Non-Final
Action 2-4 (March 15, 2013). Appellants did not include the double
patenting rejections among the rejections to be reviewed on appeal and did
not argue that the rejections were improper. Appeal Br. 4—13. The
Examiner notes that Appellants stated that a terminal disclaimer was filed to
obviate the double patenting rejection. Non-Final Action 2 (Oct. 8, 2014).
The Examiner finds, however, that “no terminal disclaimer appears of record
for either the present case or the co-pending case.” Id. Nor have Appellants
identified a terminal disclaimer in the record, nor have we located such.
In light of the above, the double patenting rejections remain pending
and Appellants have not argued on appeal that the rejections were improper.
We therefore summarily affirm the double patenting rejection of claims 1,3,
6—15, and 17—20 as unpatentable over claims 1—17 of copending application
number 12/948,589.
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Appeal 2016-001797
Application 12/948,586
Rejection 2
The Examiner rejected claims 1,3, 6—15, and 17—21 for failure to
comply with the enablement requirement. Non-Final Act. 18—22. The
Examiner determines that several claim limitations are not sufficiently
supported by the Specification so as to permit a person of ordinary skill in
the art to make and use the invention of the claims. Id. at 19—22.
The Examiner determined that the Specification does not teach how
the “generator” of claims 1 and 12 could carry out the claimed generating
functions. Id. at 19. The Examiner further determined that the Specification
does not teach any structure corresponding to “regulator IC” of claims 1 and
12 nor any relevant algorithm or processing steps. Id. at 20. The Examiner
further determined that the Specification does not teach any arrangement of
digital logic elements that would permit one to make a structure including
the “digital logic” elements required by claim 12. Id. The Examiner further
determined that the Specification does not teach how to achieve frequency
detection in the time periods required by claims 14 and 15. Id. at 21. The
Examiner further determined that the Specification does not teach how to
achieve the geographical detection required by claim 19. Id. The Examiner
further determined that the Specification does not teach how to achieve a
cooperative structural arrangement of the elements of claim 21. Id. at 21—
22.
“The enablement requirement... is satisfied if, given what they
already know, the specification teaches those in the art enough that they can
make and use the invention without undue experimentation.” Amgen Inc. v.
Hoechst Marion Roussel Inc., 314 F.3d 1313, 1334 (Fed. Cir. 2003) (citation
and quotations omitted). The Examiner has the “burden of giving reasons,
supported by the record as a whole, why the specification is not enabling . . .
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Application 12/948,586
[and] [sjhowing that the disclosure entails undue experimentation is part of
the PTO's initial burden . . . In re Angstadt, 537 F.2d 498, 504 (CCPA
1976); see also In re Marzocchi, 439 F.2d 220, 223 (CCPA 1971).
Determining what a specification does not disclose is merely a first
step in determining whether a claimed invention is enabled because an
applicant need not disclose what is already well known in the art. See In re
Wands, 858 F.2d at 737 (“Whether undue experimentation is needed is not a
single, simple factual determination, but rather is a conclusion reached by
weighing many factual considerations.”). Factors—which are illustrative,
not mandatory, see Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213
(Fed. Cir. 1991)—to be considered in determining whether a disclosure
would require undue experimentation include (1) the quantity of
experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence 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 predictability of the art, and (8) the claims’ breadth. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
In this case, the Examiner has not provided any factual findings to
support the legal conclusion that the rejected claims are not enabled. The
Examiner fails to adequately analyze and explain why one of ordinary skill
in the art would have been unable to implement the described circuitry
without undue experimentation.
As such, a prima facie case of lack of enablement has not been
established and we will not sustain the rejection of claims 1,3, 6—15, and
17—21 for failure to comply with the enablement requirement.
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Application 12/948,586
Rejection 3
The Examiner rejected claims 1, 12, 14, 15, 17—19, and 21 for failure
to comply with the written description requirement. Non-Final Act. 22—28.
“[T]o satisfy the written description requirement, the disclosure as
originally filed does not have to provide in haec verba support for the
claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000). Nonetheless, the disclosure must convey
with reasonable clarity to those skilled in the art that the inventor was in
possession of the invention. Id. (“Put another way, one skilled in the art,
reading the original disclosure, must immediately discern the limitation at
issue in the claims.”).
The burden of showing that the claimed invention is not described in
the specification rests on the Examiner. In re Alton, 76 F.3d 1168, 1175
(Fed. Cir. 1996); In re Wertheim, 541 F.2d 257, 262-265 (CCPA 1976). The
Examiner meets this burden by adducing “evidence or reasons why persons
skilled in the art would not recognize in the disclosure a description of the
invention defined by the claims.” In re Wertheim, 541 F.2d at 263.
In regard to claim 1, the Examiner construes the “first operating
mode” and “second operating mode” as being separate structural limitations
rather than modes of operation of the regulator IC. Non-Final Act. 23. This
is contrary to the language of the claim and the Specification which indicate
that it is the regulator IC that may operate in two modes. See Spec. 143
(“[t]he regulator IC 608 may be capable of operating in a first mode that
accepts a DC input voltage Vm, [or] a second mode that accepts a low-
frequency (< 120 Hz) input voltage Vm”).
The Examiner further finds that the Specification does not teach
circuitry capable of accepting low-frequency input voltage or high-
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Application 12/948,586
frequency input voltage. Non-Final Act. 23—24. The Specification and
figures teach that the input is received by a fuse 602, then conveyed to a
rectifier bridge 604, then to the regulator IC 608 and micro controller 616.
Spec. 33—35; Fig. 6. These are all known components familiar to one of
ordinary skill in the art. Accordingly, the Examiner fails to make a prima
facie case that a person of ordinary skill in the art would not recognize a
description of the invention defined by the claims.
In regard to claims 12, 14, 15, 17, and 19, the Examiner merely lists
claim limitations and states “[a] review of the specification shows no written
description of sufficiently definite corresponding structures, materials or acts
for achieving the functions recited in the claim.” Non-Final Act. 24—27.
This falls short of the “evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the invention defined
by the claims” required by Wertheim.
In regard to claim 18, the Examiner determines that certain limitations
should be construed as means-plus-fimction elements and that there was no
sufficiently definite corresponding structure. Non-Final Act. 17. Asa
consequence, the Examiner determines claim 18 to be unpatentable for
failure to comply with the written description requirement.
The lack of an adequate disclosure of corresponding structure,
however, does not implicate the written description requirement in the
context of section 112, sixth paragraph. In re Dossel, 115 F.2d 942, 946
(Fed. Cir. 1997). Rather “[i]f an applicant fails to set forth an adequate
disclosure, the applicant has in effect failed to particularly point out and
distinctly claim the invention as required by the second paragraph of section
112.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed.Cir. 1994) (enbanc)
(emphasis added).
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Application 12/948,586
Accordingly, the Examiner’s rejection of claims 1, 12, 14, 15, 17—19,
and 21 for failure to comply with the written description requirement is
reversed.
Rejection 4
The Examinder determined claim 1 to be indefinite on two bases.
Non-Final Act. 28—29. The first basis concerns the limitation “an analyzer
for determining a transformer type based ... on a power signal received
from a transformer.” Id. at 28. The Examiner determined that the claim is
indefinite because it is unclear what structure receives the power signal from
a transformer. Id. Appellants argue that it is apparent that “[t]he analyzer
receives the power signal” Appeal Br. 13.
The Specification provides that “[t]he analyzer determines the type of
the power supply based at least in part on a power signal received from the
power supply.” Spec. 115. The Specification further provides that “[t]he
analyzer may include a frequency analyzer for determining a frequency of
the power signal.” Id. 116. In discussing Figure 7, the Specification
indicates that “analyzer 702 receives the signal 618 via an input bus 704.”
Id. 138. Thus, there is an adequate disclosure teaching that the power signal
is received by the analyzer.
The Examiner additionally determined claim 1 to be indefinite in view
of the limitation “a first mode for accepting . . . input voltage.” As noted
above, it is not the “mode” that accepts the input voltage, it is regulator IC
(capable of functioning in different modes) that accepts the input voltage.
See Fig. 6 (indicating that rectifier bridge 604 conveys the signal to the
regulator IC 608 and the micro controller 616 (which includes the
analyzer)).
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Application 12/948,586
Accordingly, claim 1 has not been shown to be indefinite.
CONCLUSION
For the reasons set forth above, we affirm the provisional rejection of
claims 1,3, 6—15, and 17—20 for double patenting. We reverse the rejection
of claims 1,3, 6—15, and 17—21 for failure to comply with the enablement
requirement. We reverse the rejection of claims 1, 12, 14, 15, 17—19, and 21
for failure to comply with the written description requirement. We reverse
the rejection of claim 1 as indefinite.
Thus, the rejection of claims 1,3, 6—15, and 17—20 is affirmed and the
rejection of claim 21 is reversed.
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-IN-PART
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