Ex Parte Hyde et al

Patent Trial and Appeal Board

Jan 17, 2014

12584791 (P.T.A.B. Jan. 17, 2014)

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.
12/584,791 09/11/2009 Roderick A. Hyde 1203-014-009-DV4DV1 8169
44765 7590 01/17/2014
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
ALLEN, STEPHONE B
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
01/17/2014 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 RODERICK A. HYDE,
NATHAN P. MYHRVOLD, and CLARENCE T. TEGREENE
____________

Appeal 2011-007803
Application 12/584,791
Technology Center 2800
____________

Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007803
Application 12/584,791
2
On August 26, 2010, the Examiner finally rejected claims 78-83 of
Application 12/584,791 under 35 U.S.C. § 103(a) as obvious. Appellants1
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
Oral argument in this appeal was held on January 7, 2014.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’791 application relates to elements, methods, or materials for
refraction. Spec. 2. More specifically, the ’791 application’s Specification
describes the theory underlying a device comprised of two materials that
define a boundary. By selecting materials with specific properties, it is
possible to construct the device so that an electromagnetic wave passing
through the boundary is refracted with essentially zero reflection. See
generally Spec. 4, 7-11.
Claim 78 is representative of the ’791 application’s claims and is
reproduced below:
78. An RF interactive apparatus, comprising:
a first layer of a first man-made material, the first layer
having an anisotropic dielectric constant in a first region
adjacent a surface, the first layer including an arrangement of
manmade structures dispersed in a dielectric carrying medium;
and
a second layer of a second man-made material adjoining
the first layer at the surface, the second layer having a dielectric
constant that is a function of the anisotropic dielectric constant

1 Intellectual Ventures LLC is identified as the real party in interest. (App.
Br. 4.)
Appeal 2011-007803
Application 12/584,791
3
in the first region adjacent the surface, the second layer having
a dielectric constant configured to receive energy from the first
layer substantially reflection free at the surface and to produce
refraction adjacent the surface.
(App. Br. 21 (Claims App’x).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 78, 79, and 83 are rejected under 35 U.S.C. § 102(b) as
anticipated by Kubick.2 (Ans. 5.)
2. Claims 80-82 are rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Kubick and Zhang.3 (Ans. 6.)
DISCUSSION
We begin by noting that Appellants have not presented separate
arguments for the reversal of the rejections of dependent claims 79-82.
(App. Br. 20.) Accordingly, we need only address the rejection of
independent claims 78 and 83 as anticipated by Kubick.
Claims 78 and 83 are directed to an RF interactive apparatus having a
first layer of a first man-made material and a second layer of a second man-
made material wherein the materials are selected such that “substantially
reflection free” refraction occurs at the interface between the two layers of
man-made material.4 The Examiner found that Kubick described an

2 U.S. Patent No. 4,822,149, issued April 18, 1989.
3 Yong Zhang et al., Total Negative Refraction in Real Crystals for Ballistic
Electrons and Light, 91 PHYSICAL REV. LETT. 157404-1—157404-4 (2003).
4 We assume that the different hyphenation of the phrases “substantially
reflection free” (claim 78) and “substantially reflection-free” (claim 83) is
(Cont’d)
Appeal 2011-007803
Application 12/584,791
4
apparatus capable of achieving substantially reflection free refraction at the
interface between two layers of material. (Ans. 5-6.) Appellants argue that
this finding is erroneous. (See generally App. Br.)
We begin by interpreting the phrase “substantially reflection free” in
view of the ’791 application’s Specification. See, e.g., In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997) (holding that ignoring the specification in claim
construction is unreasonable). That review does not convince us that a
person of ordinary skill in the art would not ascribe any special meaning to
this phrase. Appellants argue that the ordinary meaning of the phrase is
“‘reasonably close to, nearly, almost, [or] about’ reflection free or
‘reasonably close to, nearly, almost, about’ zero reflection.” (App. Br. 15.)
We do not disagree with Appellants’ proposed construction.5

not intended to result in these phrases having different interpretations.
Accordingly, our discussion of the proper interpretation of the phrase
“substantially reflection free” should be understood as applying to both
forms of the phrase.
5 We note that the word “substantially” is a term of approximation or degree.
As the Federal Circuit has observed:
Definiteness problems often arise when words of degree are
used in a claim. That some claim language may not be precise,
however, does not automatically render a claim invalid. When
a word of degree is used . . . the patent’s specification [must]
provide[] some standard for measuring that degree.
Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed.
Cir. 1984).
Because we affirm the Examiner’s anticipation rejection, we need not
consider whether Appellants’ claims satisfy 35 U.S.C. § 112, ¶ 2.
Appeal 2011-007803
Application 12/584,791
5
The Examiner found that Kubick described an apparatus that
produced substantially reflection free refraction, at least under some
conditions:
Appellant argues Kubick is not substantially reflection
free. . . . The purpose of Kubick is to steer incident light
(abstract). Kubick accomplishes this by having two mediums
(7 and 8) connected at a slanted interface (slanted boundary) as
shown in Fig. 2. Fig. 2 also shows the mediums are connected
to a voltage controller. The voltage controller applies an
electrical field to the medium to control the refractive index
difference therebetween. Kubick teaches the electric field may
be zero, in which case no refraction[] and[,] therefore[,]
inherently no reflection occurs (col. 3 lines 22-25). As the
electric field increases the refractive index [difference] between
the two mediums also increases[,] resulting in refraction or
bending of the light (col. 3 lines 33-36). Kubick can therefore
be viewed as teaching a range of refractive index differences,
the range extending from zero to a high value. The claim
language can also be viewed as requiring a range. The claim
language “substantially reflection free” means a small value of
reflection, while “to produce refraction” means simply greater
than zero, or at least minimal bending of light. Kubick teaches
the ability to provide a very small electric field to the two
mediums. In which case, Kubick produces a small amount of
refraction and a minute amount of reflection will result from the
refractive index difference. This situation satisfies the claim
language because a value greater than zero for refraction occurs
and a small amount of reflection exists.
(Ans. 8-9.)
We have reviewed the arguments in the Appeal and Reply Briefs, but
we are not convinced that the Examiner’s findings reproduced above are
erroneous.
As we understand Appellants’ arguments, Appellants believe that
Kubick does not anticipate claims 78 and 83 because Kubick does not
describe an apparatus constructed so that theory would predict that RF
Appeal 2011-007803
Application 12/584,791
6
energy incident on a surface between two man-made materials would be
refracted with zero reflection.
Appellants’ claims, however, are not so limited.6 Appellants’ briefs
do not point to any limitation in either claim 78 or claim 83 that requires that
claimed apparatus be designed so that theory predicts that it would produce
reflectionless refraction. Nor can we find language that so limits these
claims. As currently written, when given their broadest reasonable
interpretation in view of the Specification, claims 78 and 83 encompass and,
therefore, are anticipated by Kubick’s device. We affirm the Examiner’s
rejection of claims 78 and 83 of the ’791 application.
As discussed above, Appellants do not present separate arguments for
the patentability of dependent claims 79-82. (App. Br. 20.) Because we
have affirmed the rejection of claim 78, the independent claim from which

6 At the hearing in this appeal, Appellants’ counsel explained that claims 78
and 83 are written to encompass non-zero amounts of reflection due to the
difficulty in constructing physical devices that behave in a theoretically ideal
manner. Because the manufacturing processes for the claimed apparatus
necessarily result in some degree of imprecision and imperfection, it is
inevitable that the actual apparatus will deviate slightly from ideal behavior.
Thus, counsel explained, the phrase “substantially reflection free” is used in
the claims to encompass such deviations from theoretically perfect behavior.
Neither Appellants’ briefs nor counsel, however, direct us to any support for
this interpretation in the Specification. In the absence of such support, we
refuse to construe the phrase “substantially reflection free” in such a narrow
manner.
We also note that the Examiner refused to enter proposed amendments
to Appellants’ claims after the final rejection. (App. Br. 7.) We express no
opinion regarding either the interpretation or patentability of those claims.
Appeal 2011-007803
Application 12/584,791
7
claims 79-82 depend, we also affirm the Examiner’s rejections of these
claims as either anticipated or obvious.
CONCLUSION
For the reasons set forth above, we conclude that the Examiner
correctly found that claims 78 and 83 are anticipated by Kubick. Because
Appellants did not present separate arguments for the patentability of the
dependent claims, we affirm the rejection of claims 78, 79, and 83 as
anticipated by Kubick and of claims 80-82 as obvious over the combination
of Kubick and Zhang.

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

cdc