Ex Parte Hyde et al

Patent Trial and Appeal Board

Mar 9, 2016

12319143 (P.T.A.B. Mar. 9, 2016)

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.
12/319,143 12/31/2008 Roderick A. Hyde GS1-0995-US 1670
80118 7590 03/10/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
03/10/2016 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 RODERICK A. HYDE, ROBERT LANGER,
ERIC C. LEUTHARDT, ROBERT W. LORD,
ELIZABETH A. SWEENEY,
CLARENCE T. TEGREENE, and LOWELL L. WOOD JR.
____________

Appeal 2013-007630
Application 12/319,143
Technology Center 3600
____________

Before KEVIN W. CHERRY, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
This is a decision on rehearing in Appeal No. 2013-007630. We have
jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, or to responses
to a new ground of rejection designated pursuant to § 41.50(b).

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ISSUES ON REHEARING
Appellants request reconsideration of our Decision on Appeal entered
December 30, 2015 (“Decision”) in which we: 1) reversed pro forma the
Examiner’s rejection of claims 73–103 under 35 U.S.C. § 102(b), and
2) entered a new ground of rejection of claims 73–103 under 35 U.S.C.
§ 112, second paragraph.
Specifically, Appellants request withdrawal of the new ground of
rejection. First, Appellants argue that there is no requirement for an
objective definition for the claim term “artificial sensory experience” as used
in “an indication of an artificial sensory experience.” Second, Appellants
argue that the lack of an objective standard by which to determine the scope
of the claim does not require a finding that the claim is indefinite. And third,
Appellants argue that in a prior decision in a related application, the Board
determined that the term “artificial,” as used in the term “artificial sensory
experience” was not indefinite and, therefore, the term “artificial sensory
experience” must also not be indefinite.

ANALYSIS
First, Appellants argue that there is no requirement “to provide an
‘objective definition’” for the claim term “artificial sensory experience” as
used in “an indication of an artificial sensory experience.” (See Req.
Reh’g 10.) We agree. Moreover, our Decision does not require such a
definition. (See Decision 3–4.) However, “[t]he claims, when read in light
of the specification and the prosecution history, must provide objective
boundaries for those of skill in the art.” Interval Licensing LLC v. AOL,
Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). The presence of such a
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definition may well have made clear the meaning of the term “artificial
sensory experience” and specifically the term “an indication of an artificial
sensory experience.” Our Decision simply points out that no such objective
definition was apparent from the Specification and, thus, we turned to the
written description to attempt to discern some objective standard by which
the claim scope could be measured. However, we could not find sufficient
guidance in the written description. See Decision 3–4.
Second, Appellants argue that a claim that requires subjective
judgment may, but need not, render that claim indefinite, and “the PTAB has
adduced no factual findings or rationale showing why the claim must be
indefinite.” (Req. Reh’g 11.)
Our Decision states that “[i]t appears that whether a particular
experience constitutes an ‘artificial sensory experience,’ that is, whether the
experience ‘trigger[s] sight, smell, hearing, touch, and/or taste,’ depends on
the subjective reaction of the individual participant.” (Decision 4.) Thus,
we determined that “a person of ordinary skill in the art, on reviewing the
Specification, would not understand what types of ‘artificial sensory
experiences’ the claims are intended to cover.” (Id.)
The scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual
purportedly practicing the invention. See Application of
Musgrave, 57 C.C.P.A. 1352, 431 F.2d 882, 893 (1970) (noting
that “[a] step requiring the exercise of subjective judgment
without restriction might be objectionable as rendering a claim
indefinite”). Some objective standard must be provided in order
to allow the public to determine the scope of the claimed
invention.

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir.
2005), abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments,
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Inc., 134 S. Ct. 2120 (2014); see also Interval Licensing, 766 F.3d at 1373
(finding claim term indefinite where it was “facially subjective claim
language without an objective boundary”).
Moreover, having
issued a well-grounded rejection that identifies ways in which
language in a claim is ambiguous, vague, incoherent, opaque, or
otherwise unclear in describing and defining the claimed
invention, and thereafter the applicant fails to provide a
satisfactory response, the USPTO can properly reject the claim
as failing to meet the statutory requirements of § 112(b)
[formerly, § 112, second paragraph].

In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). Thus, the Board did
not have the burden of showing why the claim must be indefinite. Instead,
by identifying the clarity problems in the claims and the basis for our
rejection, the burden was on Appellants to come forward with a “satisfactory
response.” See id. As we discuss below, Appellants have not provided a
satisfactory response describing or defining the terms “artificial sensory
experience” or “an indication of an artificial sensory experience.”
Third, Appellants argue that in a prior decision involving Application
12/378,284, which Appellants assert “is a child application of the instant
application” (Req. Reh’g 12), the Board determined that the term “artificial,”
as used in the term “artificial sensory experience” was not indefinite.
Therefore, Appellants further argue, the term “artificial sensory experience”
must also not be indefinite. (Id. 12–13, citing Decision mailed
July 27, 2015, Appeal No. 2012-006841, [hereinafter 6841 Decision].)
The 6841 Decision addressed the rejection of certain claims as
indefinite because the Examiner determined that it was “unclear how the
term ‘artificial’ is to be interpreted.” (6841 Decision 3.) The 6841 Decision
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determined that “the term ‘artificial’ in the claim limitation ‘an indication of
at least one artificial sensory experience’ would be understood by one of
ordinary skill in the art . . . to simply have its plain meaning . . . .” (Id.)
While the 6841 Decision addressed the question of whether it was
clear how to interpret the claim term “artificial,” the 6841 Decision did not
address whether it was clear how to interpret the claim terms “artificial
sensory experience” and “an indication of an artificial sensory experience.”1
(See id.)
Thus, Appellants have not persuaded us that we erred in determining
that
a person of ordinary skill in the art, on reviewing the
Specification, would not understand what types of “artificial
sensory experiences” the claims are intended to cover. Thus, a
person of ordinary skill in the art would not be able to determine
the metes and bounds of claims 73–103 so as to understand how
to avoid infringement.

(Decision 4.)
Therefore, we are not persuaded that we erred in issuing the new
ground of rejection.
Appellants’ other arguments are considered moot in view of our
denial of the Request.

1 We note that we could not have misapprehended or overlooked the
decision in the 6841 Appeal because Appellants failed to identify the 6841
Appeal as a related appeal in their Appeal Brief as required by 37 C.F.R.
§ 41.37(c(1)(ii). (See Appeal Br. 5.)
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CONCLUSION
Nothing in Appellants’ Request has persuaded us that we erred.
Accordingly, we deny the Request.

REHEARING DENIED