Ex Parte HarveyDownload PDFPatent Trial and Appeal BoardDec 28, 201614469825 (P.T.A.B. Dec. 28, 2016) Copy Citation 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. 14/469,825 08/27/2014 Thomas Danaher Harvey Pinger 1763 123508 7590 Thomas D.Harvey 4001 Montpelier Road Rockville, MD 20853 12/30/2016 EXAMINER HULKA, JAMES R ART UNIT PAPER NUMBER 3645 NOTIFICATION DATE DELIVERY MODE 12/30/2016 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): redredroad@yahoo.com tom@guninsuranceblog.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS DANAHER HARVEY Appeal 2016-007307 Application 14/469,8251 Technology Center 3600 Before THOMAS F. SMEGAL, LISA M. GUIJT, and GORDON D. KINDER, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas Danaher Harvey (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection2 (1) of claims 1—8, 10-18, and 21— 23 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the 1 According to Appellant, the real party in interest is the inventor. Appeal Br. 3. 2 Appeal is taken from the adverse decision of the Examiner as set forth in the Non—Final Action (mailed August 19, 2015, “Non—Final Act.”). A correct copy of the claims on appeal appears on pages 2—8 of the document styled “APPEAL BRIEF CORRECTED” (filed February 29, 2016, “Appeal Br. Cor.”). Appeal 2016-007307 Application 14/469,825 inventor regards as the invention;3 (2) of claims 1—8, 10-18, and 21—23 under 35 U.S.C. § 103 as obvious over Greelish (US 2005/0099892 Al, pub. May 12, 2005) and Guigne (US 2009/0207694 Al, pub. Aug. 20, 2009); and (3) of claims 1—6, 10, 11, 14—18, 22, and 23 under 35 U.S.C. § 103 as obvious over Strat (US 2013/0242704 Al, pub. Sep. 19, 2013) and Greelish.4 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM, designating the affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER Claims 1, 4, and 17 are independent. Claim 1 is reproduced below and illustrates the claimed subject matter. 1. A device configured to be located at an object to aid in the location of the object when the object is lost and submerged comprising: a receiver at a submerged depth substantially below a surface configured to receive an interrogation signal from a search second device near the surface; and a transmitter at a submerged depth substantially below a surface configured to transmit a ping signal to the search second device in response to the interrogation signal from the search second device; wherein a parameter of the ping signal is modified so that the search second device can detect the ping signal at an increased distance between the device and the search second device as a function of at least one of the parameters of the interrogation signal. 3 The Examiner withdrew rejection of claims 1—8, 10—18, and 21—23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 13. 4 Claims 9, 19, and 20 have been canceled. See Amendment filed August 5, 2015; see also Non—Final Act. 2. 2 Appeal 2016-007307 Application 14/469,825 ANALYSIS Indefiniteness rejection A claim fails to comply with 35 U.S.C. § 112, second paragraph, “when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (approving, for pre issuance claims, the standard from MPEP § 2173.05(e)). “It is the applicants' burden to precisely define the invention, not the PTO's. See 35 U.S.C. § 112,12 .... [T]his section puts the burden of precise claim drafting squarely on the applicant.” In re Morris, YU F.3d 1048, 1056 (Fed. Cir. 1997). The Examiner finds that claims 1—8, 10—18, and 21—23 are indefinite because “there appears to be essential steps or [elements] omitted [] in the method and system claims [that would] clearly identify to one having ordinary skill in the art HOW time and location information is used to modify a return signal at an ‘increased distance.’” Non-Final Act. 4. While we agree with the Examiner that the claim term “increased distance” is not sufficiently clear and definite, we sustain this rejection of claims 1—8, 10-18, and 21—23 for different reasons.5 Appellant first refers to paragraph 18 of the Specification as describing examples of modifications to ping signals. Appeal Br. 8. Appellant also refers to paragraph 52 of the Specification in contending that “the ability to predict the arrival time of a return ping can be used to detect a ping in a narrow time window with a reduction of noise and an increase of 5 However, we do not agree with the Examiner that “[t]he term [“ping”] is indefinite because the specification does not clearly redefine the term.” Non-Final Act. 4. See Appeal Br. 24. 3 Appeal 2016-007307 Application 14/469,825 range at a given probability of detection.” Appeal Br. 22. However, we find nothing in these paragraphs or anywhere else in the Specification, that would teach one skilled in the art how to quantify when a distance is considered to be “increased.” Thus, there is no disclosure of what would, or would not, constitute an “increased distance.”6 Furthermore, Appellant does not apprise us that “increased” is a term of art. Thus, we agree with the Examiner that the claim term “increased distance” is indefinite because the claim does not specify any distance against which the increased distance can be determined. Claim 1 also recites, in relevant part, “a device configured to be located at an object. .. when the object is . . . submerged,” the device comprising “a receiver at a submerged depth substantially below a surface” and “a transmitter at a submerged depth substantially below a surface configured to transmit a ping signal.” Appeal Br. Cor. 2 (Claims App.). Independent claims 4 and 17 recite similar language. Appeal Br. Cor., 3,6. Although in claim 1 and 4, the receiver and transmitter are claimed as structural limitations of the device (i.e., “a device . . . comprising a receiver . . . and a transmitter”), there is no submerged depth defined for the device itself, but rather two, separately recited submerged depths substantially below the surface is defined for each of the receiver and the transmitter.7 Therefore, it is unclear as to which depth or other location is determinative 6 If there is further prosecution of this application, the Examiner may wish to consider whether the claims should also be rejected under U.S.C. § 112, first paragraph, as not being enabled, for the same reasons stated by the Examiner in the rejection under 35 U.S.C. § 112, second paragraph. Non—Final Act. 4. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) 7 Claim 17 recites a method of locating a target device including receiving and transmitting,” where each is at a separately defined “submerged depth below a surface.” Appeal Br. Cor. 6, Claims App. 4 Appeal 2016-007307 Application 14/469,825 for the position of device for defining a distance between the device and the search second device. Claim 1 is further indefinite in reciting that “a parameter of the ping signal is modified so that the search second device can detect the ping signal at an increased distance between the device and the search second device as a function of at least one of the parameters of the interrogation signal.” Id. Thus, while claim 1 recites that a “parameter of the ping signal” is modified, detection of the ping signal at an increased distance is than described as being a function of “at least one of the parameters of the interrogation signal” without being limited to the recited modified parameter. The claims are also amenable to two different interpretations. “[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential). Here, as written, the claims may be read as requiring, to detect a signal at an increased distance, that “a parameter of the ping signal is modified ... as a function of at least one of the parameters of the interrogation signal,” or may be read as requiring that “a second search device can detect the ping signal at an increased distance between the device and the search second device as a function of the encoded information.” 8 8 Appellant chooses not to argue claim 17 separately, stating that “regarding claim 17 which differs in having the limitation ‘detection at an increased distance’ [in claim 1] replaced by ‘in order to help the search second device determine the presence of the target device [,’] this is a somewhat broader claim.” See Appeal Br. 18. 5 Appeal 2016-007307 Application 14/469,825 We also find, based on this claim language, that one of ordinary skill in the art at the time of the invention would not understand the scope of the invention recited in claims 1 and 4 because it is unclear whether infringing those claims merely requires a device with a transmitter capable of sending a ping signal either (1) where a parameter of the ping signal has been modified, or (2) where the ping signal is based on at least one of the parameters of the interrogation signal, or whether infringing the claims would only occur when a “search second device” is used as recited for detecting one of the recited ping signals at an “increased distance”. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). (“Because the claims perform the fundamental function of delineating the scope of the invention, the purpose of the definiteness requirement is to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude”). Stated differently, one of ordinary skill in the art could reasonably consider that the detection of “the ping signal at an increased distance,” as recited by independent claims 1 and 4, is directed to user actions, not device capabilities. See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011), quoted in Ultimate Pointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 827 (Fed. Cir. 2016): see also Rembrandt Data Techs., v. AOL, LLC, 641 F. 3d 1331 (Fed. Cir. 2011) (“reciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2”). For the foregoing reasons, we find that claims 1—8, 10—18, and 21—23 fail to comply with 35 U.S.C. § 112, second paragraph, in failing to particularly point out and distinctly claim the subject matter which the 6 Appeal 2016-007307 Application 14/469,825 Appellant regards as the invention. Inasmuch as our findings and rationale differ from that of the Examiner, we designate our affirmance of the rejection of claims 1—8, 10-18, and 21—23 as a NEW GROUND OF REJECTION to provide Appellant with a full and fair opportunity to respond to the rejection. Obviousness of claims 1—8, 10—18, and 21—23 over Greelish and Guigne; and of claims 1—6, 10, 11, 14—18, 22, and 23 over Strat and Greelish We do not reach the merits of the Examiner’s rejections under 35 U.S.C. § 103 at this time. Before a proper review of these rejections can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Since claims 1—8, 10— 18, and 21—23 fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 112, we are constrained to reverse, pro forma, the rejections under 35 U.S.C. § 103. See In re Steele, 305 F.2d 859, 862-63 (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.). It should be understood, however, that our decision in this regard is based solely on the indefmiteness of the claimed subject matter and does not reflect on the adequacy of the prior art evidence applied in support of the Examiner’s rejection. DECISION We AFFIRM the Examiner’s rejection of claims 1—8, 10—18, and 21— 23 under 35 U.S.C. § 112, second paragraph, as being indefinite. 7 Appeal 2016-007307 Application 14/469,825 We REVERSE the Examiner’s obviousness rejections of claims 1—8, 10—18, and 21—23 over Greelish and Guigne; and of claims 1—6, 10, 11, 14— 18, 22, and 23 over Strat and Greelish. Pursuant to 37 C.F.R. § 41.50(b), we designate the decision to affirm the Examiner’s rejection of claims 1—8, 10-18, and 21—23 under 35 U.S.C. § 112, second paragraph to be a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b), because it contains a new rationale for affirmance. Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that 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 . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED: 37 C.F.R $ 41.50(b). 8 Copy with citationCopy as parenthetical citation