Ex Parte Jung et al

Patent Trial and Appeal Board

Feb 27, 2017

11906143 (P.T.A.B. Feb. 27, 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.
11/906,143 09/28/2007 Edward K.Y. Jung SE1-0200-US 5599
80118 7590 03/01/2017
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
MUI, CHRISTINE T
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
admin@constellationlaw.com
T yler @ constellationlaw. com
ISFDocketInbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD K.Y. JUNG, ERIC C. LEUTHARDT,
ROYCE A. LEVIEN, ROBERT W. LORD, MARK A. MALAMUD,
JOHN D. RINALDO, JR., and LOWELL L. WOOD, JR.
Appeal 2016-001017
Application 11/906,143
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision to reject claims 146—151, 153—155, 157—162, and
166. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND of Rejection.
1 The real party in interest is stated to be Searete, LLC, which is wholly
owned by Intellectual Ventures Management LLC. Appeal Br. 3.
Appeal 2016-001017
Application 11/906,143
Claim 146 is illustrative of the appealed subject matter (emphasis
added to highlight key limitations):
146. A portable device comprising:
a microfluidic chip;
a detection unit that detects concentration of an allergen
indicator associated with one or more samples; and
a display unit that indicates concentration of the allergen
indicator detected by the detection unit relative to a scale
that is calibrated with respect to a specific individual
based on sensitivity of the specific individual to an
allergen associated with the allergen indicator.
Appeal Br. 38 (Claims App.).
The following rejections have been maintained by the Examiner:
(a) Claims 146—151, 153—155, 157—162, and 166 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kiel et al. (US 6,303,316 Bl, issued
Oct. 16, 2001) (hereinafter “Kiel”) in view of Pisharody et al. (US 6,824,974
B2, issued Nov. 30, 2004) (hereinafter “Pisharody”); and
(b) Claims 146—151, 153—155, 157—162, and 166 are rejected under
35 U.S.C. § 103(a) as unpatentable over Pourahmadi et al. (WO 99/33559,
published July 8, 1999) in view of Pisharody.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we determine that claims 146—151, 153—155, 157—
162, and 166 fail to particularly point out and distinctly claim the subject
matter which the inventors regard as the invention. We, therefore, enter a
new ground of rejection for indefiniteness under § 112,12 as to these
claims. We also reverse the Examiner’s § 103(a) rejections.
2
Appeal 2016-001017
Application 11/906,143
I. NEW GROUND OF REJECTION
We enter the following NEW GROUND OF REJECTION pursuant to
our authority under 37 C.F.R. § 41.50(b).2 Claims 146—151, 153—155, 157—
162, and 166 are rejected under 35 U.S.C. § 112,12 as indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventor regards as the invention. Cf. Aristocrat Techs. Austl. Pty Ltd. v.
Int’l Game Tech., 521 F.3d 1328, 1331 (Fed. Cir. 2008). This is anew
ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b).
Claim 146 recites “a display unit that indicates concentration of the
allergen indicator detected by the detection unit relative to a scale that is
calibrated with respect to a specific individual based on sensitivity of the
specific individual to an allergen associated with the allergen indicator.” This
limitation does not include the word “means,” thus, a rebuttable presumption
exists that this limitation is not a means-plus-function limitation. Williamson
v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). This
presumption can be overcome, however, if the limitation “fails to recite
sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function.” Id. at 1349 (citation and
internal quotation marks omitted). That is the case here. Although, the
limitation recites a display unit function of “indicat[ing] concentration of the
allergen indicator detected by the detection unit relative to a scale that is
calibrated . . . based on sensitivity of [a] specific individual to an allergen
associated with the allergen indicator,” this function is recited “without
reciting sufficient structure for performing that function.” Id. (citation and
2 We limit our discussion to independent claim 146. Our analysis applies to
each of the appealed claims.
3
Appeal 2016-001017
Application 11/906,143
internal quotation marks omitted). A display per se cannot normally
accomplish the recited function without means for doing so; in fact, the term
“a display unit that” seems little more than a synonym for “a display unit
comprising means for.” See, e.g., id. at 1350 (explaining that “. . . nonce
words that reflect nothing more than verbal constructs may be used in a claim
in a manner that is tantamount to using the word ‘means’ because they
‘typically do not connote sufficiently definite structure’ and therefore may
invoke § 112, | 6.” (citation omitted)). As the claim is devoid of language
that provides the requisite structure, we conclude the “display unit that
indicates concentration” limitation is a means-plus-fimction limitation.
In light of this conclusion, we next consider whether Appellants’
written description contains corresponding structure for the “display unit that
indicates concentration” limitation. Cf. Aristocrat Techs., 521 F.3d at 1331.
In computer-implemented inventions such as the one at issue, see, e.g., Spec.
426—28, the corresponding structure must include an “algorithm that
transforms [a] general purpose microprocessor to a special purpose computer
programmed to perform the disclosed algorithm.” Aristocrat Techs., 521 F.3d
at 1338 (citation and internal quotation marks omitted). No such algorithm is
disclosed here. Appellants’ written description simply states that the
disclosed detection unit may be calibrated to detect concentrations of allergen
indicators that produce an allergic response within an individual; the written
description does not set forth an algorithm for doing so. See, e.g., Spec. 69.
Accordingly, this limitation lacks corresponding structure and is therefore,
indefinite under 35 U.S.C. § 112,12.
As claims 147—151, 153—155, 157—162, and 166 depend from claim
146 and are not supported by corresponding structure for the display unit
4
Appeal 2016-001017
Application 11/906,143
function of “indicating] concentration of the allergen indicator . . . these
claims are also indefinite under 35 U.S.C. § 112,12. We, therefore, enter a
new ground of rejection for these claims under 35 U.S.C. § 112,12.
Accordingly, on this record, we conclude that claims 146—151, 153—
155, 157—162, and 166 are indefinite.
II. REJECTIONS UNDER § 103(a)
Our analysis of the claims above indicates that considerable
speculation is required for determining the corresponding structure required
for the display unit’s function of indicating concentration of the allergen
indicator. However, it is possible to make a reasonable, conditional
interpretation of claims adequate for the purpose of resolving patentability
issues to avoid piecemeal appellate review. In the interest of administrative
and judicial economy, this course is appropriate wherever reasonably
possible. See Ex parte Saceman, 27 USPQ 2d 1472, 1474 (BPAI 1993); Ex
parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984).
With respect to claim 146, Appellants argue that neither of the
Examiner’s applied primary references, Kiel or Pourahmadi, teach or
suggest a display unit that indicates a concentration of the allergen indicator
detected by the detection unit relative to a scale that is calibrated based on
sensitivity of a specific individual to an allergen associated with the allergen
indicator. Appeal Br. 8, 9. A preponderance of the evidence supports
Appellants’ position.
The Examiner argues that the portion of the claimed invention, which
Appellants assert that neither of the primary references teaches, is directed
towards functional language. Ans. 25, 27. The Examiner determined that
5
Appeal 2016-001017
Application 11/906,143
this functional language “is sufficiently broad and can mean anything in
regards to what the display unit is programmed to display.” Id. at 26.
On the record before us, the Examiner has not shown that each and
every limitation of claim 146 is either described or suggested by the prior art
or would have been obvious based on the knowledge of the ordinary artisan.
The Examiner states that “the information that is displayed on the display
unit and how it is process and shown is process language of the circuitry and
programming of the display unit.” Ans. 26—27.
It is well established that the “PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). Since Applicants may amend claims
to narrow their scope, “a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id.
Accordingly, we turn to Appellants’ Specification to determine the
meaning of the term “detects concentration of an allergen indicator . . .” as
recited in claim 146. The Specification explains that the “system includes
. . . circuitry for detecting the one or more allergen indicators; and circuitry
for comparing one or more detected concentration levels of the one or more
allergen indicators to one or more concentration levels of the one or more
allergen indicators that results in one or more allergic responses.” Spec.
Abstract (emphasis added). Therefore, we conclude that, when claim 146 is
read in light of the Specification, the claim encompasses: (1) circuitry to
detect allergen indicators and (2) circuitry for comparing detected
6
Appeal 2016-001017
Application 11/906,143
concentration levels of the allergen indicators to concentration levels of the
allergen indicators that results in allergic responses.
While one of ordinary skill in the art would have reasonably inferred
that the portable devices from the applied prior art may be used “to detect
allergens,” Kiel 4:58, or “separate[e] a desired analyte from a fluid sample,”
Pourahmadi p.4,1. 2, the Examiner has not directed us to adequate evidence
on this record suggesting that these portable devices contain circuitry
capable of “indicat [ing] concentration of the allergen indicator detected by
the detection unit relative to a scale that is calibrated . . . based on sensitivity
of [a] specific individual to an allergen” as recited in claim 146. For
example, the Examiner’s finding that Kiel’s detector 120 is “calibrated to a
reference or control sample,” fails to identify any teaching or suggestion that
detector 120 includes circuitry capable of detecting allergens relative to a
calibrated scale, which is based on a specific individual’s sensitivity to the
allergen detected. Ans. 26 (citing Fig. 1). Likewise, Pourahmadi’s relied on
disclosures are similarly deficient.
Therefore, we agree with Appellants that the combination of either
Kiel or Pourahmadi with Pishorody does not teach a display unit that
indicates concentration of the allergen indicator as claimed. As such, we
cannot sustain the obviousness rejections of claim 146.
Accordingly, the Examiner’s 35 U.S.C. § 103 rejections of claims
146—151, 153—155, 157—162, and 166 are reversed. 37 C.F.R.
§ 41.37(c)(l)(iv).
7
Appeal 2016-001017
Application 11/906,143
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, 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. 37
C.F.R. § 41.50(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
ORDER
REVERSED
NEW GROUND OF REJECTION (37 C.F.R, $ 41,50(b))
8