Ex Parte Kingdon et al

Board of Patent Appeals and Interferences

Jan 30, 2003

09064290 (B.P.A.I. Jan. 30, 2003)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JASON KINGDON, TONY JAMES WICKS, ANNOOP SINGH MANGAT,
KONRAD SIMEON FELDMAN, and JOHN CHRISTOPHER TAYLOR
____________
Appeal No. 2002-0098
Application No. 09/064,290
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HEARD: January 16, 2003
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Before BARRETT, DIXON, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final
rejection of claims 1-23, which are all the claims in the application.
We reverse.
Appeal No. 2002-0098
Application No. 09/064,290
1 Appellants filed an earlier brief (Paper No. 15) that the examiner held to lack compliance with 37
CFR § 1.192(c)(7).
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BACKGROUND
The invention is directed to a system and method for auditing and accounting
electronic value payment. Claim 1 is reproduced below.
1. A system for monitoring the flow of value through a population of users to
detect fraud, comprising
means for assigning blocks of electronic value to users, the blocks each
having a predetermined identity tag and being divisible into sub-blocks, each
sub-block having the same predetermined identity tag; and
means for monitoring identity tags used in transactions and for detecting
fraudulent transactions by associating said identity tags used in transactions with
said predetermined identity tags.
Claims 1-23 stand rejected under 35 U.S.C. § 112, first paragraph, as the
disclosure is held to not enable one skilled in the art to make and/or use the invention.
We refer to the Final Rejection (Paper No. 10) and the Examiner’s Answer
(Paper No. 18) for a statement of the examiner's position and to the Brief1 (Paper No.
17) for appellants’ position with respect to the claims which stand rejected.
OPINION
Before turning to the merits of the instant rejection of claims 1-23 under 35
U.S.C. § 112, first paragraph, we briefly review the requirements of the statute with
respect to providing an enabling disclosure.
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The first paragraph of 35 U.S.C. § 112 requires, inter alia, that the
specification of a patent enable any person skilled in the art to which it
pertains to make and use the claimed invention. Although the statute
does not say so, enablement requires that the specification teach those in
the art to make and use the invention without ‘undue experimentation.’ In
re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
That some experimentation may be required is not fatal; the issue is
whether the amount of experimentation required is ‘undue.’ Id. at 736-37,
8 USPQ2d at 1404.
In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
The question is whether the disclosure is sufficient to enable those skilled in the
art to practice the claimed invention; the specification need not disclose what is well
known in the art. Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co.,
730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984) (citing In re Myers, 410
F.2d 420, 161 USPQ 668 (CCPA 1969)). “A patent need not teach, and preferably
omits, what is well known in the art.” Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d
1524, 1534, 3 USPQ2d 1737, 1743 (Fed. Cir. 1987). “Not every last detail is to be
described, else patent specifications would turn into production specifications, which
they were never intended to be.” In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316
(CCPA 1962).
The examiner bears the initial burden of setting forth a reasonable explanation
as to why the scope of protection provided by the claims is thought to be not adequately
enabled by the description of the invention provided in the specification. If that burden
is met, the burden then shifts to the applicant to provide proof that the specification is
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indeed enabling. In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed.
Cir. 1993).
In the instant case, the examiner alleges that the disclosure fails to adequately
define how the “blocks” and “sub-blocks” of electronic value are actually transferred
between a “source” and one or more “users,” or between a “payer” and a “payee,” so as
to achieve the “asserted advantages of the invention....” (Answer at 3.) The examiner
finds it unclear how the claimed elements provide at least the “asserted advantages”
listed at page 4 of the Answer. The “advantages,” however, are identified in the written
description and Abstract of the disclosure, rather than in the claims before us.
Appellants respond to the rejection by, inter alia, countering that the examiner
has failed to meet the initial burden in setting out a case for lack of enablement. (Brief
at 7-8.) Appellants submit that a focus on “asserted advantages,” rather than on the
claimed subject matter, is improper in a determination as to whether a disclosure is
enabling under 35 U.S.C. § 112, first paragraph. (Brief at 8.)
While “asserted advantages” of an invention may be highly relevant in, for
example, an obviousness inquiry under 35 U.S.C. § 103, we know of no legal principle
which requires that unclaimed features or unclaimed “advantages” be enabled by a
disclosure. Rather, the enablement inquiry under 35 U.S.C. § 112, first paragraph is to
ascertain whether the disclosure enables one skilled in the art to make and use “the
invention” -- i.e., the subject matter set forth by the claims -- without undue
experimentation.
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Moreover, the examiner cites no authority for the position with regard to
enablement of unclaimed “advantages.” The examiner appears to retreat somewhat in
the Answer’s arguments responsive to the Brief, by focusing on an asserted lack of
concrete teachings in the specification or drawings for carrying out the claimed
invention. (Answer at 9-12.)
“Whether undue experimentation is needed is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
considerations.” In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988). The factors 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 or unpredictability of the art,
and (8) the breadth of the claims.
Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
The alleged absence of specific embodiments illustrating the invention is thus
but one of the factors to be considered in whether undue experimentation may be
required. In regard to another relevant consideration, we note that the level of
predictability in the mechanical and electrical arts is recognized as being relatively high.
See, e.g., In re Hogan, 559 F.2d 595, 606, 194 USPQ 527, 537-38 (CCPA 1977)
(taking notice of the high level of predictability in mechanical or electrical environments
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and the lower level of predictability expected in chemical reactions and physiological
activity).
We have carefully considered the examiner’s concerns as set forth in the
Answer. However, we conclude that appellants’ arguments set out at pages 13 through
21 of the Brief convincingly demonstrate that the examiner has not met the initial
burden in showing that undue experimentation would be required.
We find at least two “specific embodiments” described by the disclosure. The
drawings and the written description at pages 15 to 20 describe one embodiment that
manipulates binary bits on an electronic payment device (EPD), which may be in the
form of a telephone payment card (further in view of the background of the invention
described at pages 3 through 5 of the specification). A second embodiment using a
“tag map sort specifier” is described at page 20, line 6 et seq. of the written description.
See In re Gay at 774, 135 USPQ at 316 (observing that “specific” is a somewhat
indefinite term of degree and it is not necessary that an applicant be more specific than
is required by the written description and enablement portions of section 112).
A description of the details of implementing the invention is not required if the
artisan would know how to do so, using equipment and techniques within the level of
skill in the art. Cf. Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941, 15
USPQ2d 1321, 1329 (Fed. Cir 1990) (“The claimed invention...is not in the details of the
program writing, but in the apparatus and method whose patentability is based on the
claimed combination of components or steps.”) Although the precise means and
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method for implementing the invention may not be described in the disclosure, there
has been no showing that the artisan would not be able to fill in the gaps using
knowledge common in the art. For example, it is not necessary that any particular
wireless link or electrical connection be described (cf. Answer at 3) if the artisan is led
to infer that wireless links or electrical connections in existence at the time of invention
may be utilized.
To the extent the rejection of claims 1-14 and 16 may be based on an alleged
lack of disclosed structures corresponding to the “means plus function” elements of the
claims, we note that the issue of lack of corresponding structure is a consideration
under 35 U.S.C. § 112, second paragraph, rather than the first paragraph of the statute.
See, e.g., Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 53
USPQ2d 1225 (Fed. Cir. 1999); In re Dossel, 115 F.3d 942, 42 USPQ2d 1881 (Fed.
Cir. 1997). A rejection based on alleged lack of disclosed structures corresponding to
“means plus function” claim elements, drafted as permitted by 35 U.S.C. § 112, sixth
paragraph, is thus not before us.
In any event, corresponding structure may be inferred from functions set out in
the claims. See Dossel at 946-47, 42 USPQ2d at 1885 (determining that a unit which
receives digital data, performs complex mathematical computations and outputs the
results to a display must be implemented by or on a general or special purpose
computer). The instant disclosure describes how electronic value may be stored in
memory devices contained in an EPD (e.g., spec. at 5, ll. 16-27). Further, the
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specification in the “Background” section describes computers, both special purpose
(e.g., point-of-sale devices) and general purpose (e.g., computers for financial auditing)
that would lead the artisan to infer that the claimed “means for assigning,” “means for
monitoring,” and “means for detecting” refer to computers programmed to perform the
claimed functions.
Since we agree with appellants that a prima facie case for lack of enablement
has not been set forth on this record, we find consideration of the declaration attached
to the Brief unnecessary. We do not sustain the rejection of claims 1-23 under 35
U.S.C. § 112, first paragraph.
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CONCLUSION
The rejection of claims 1-23 is under 35 U.S.C. § 112, first paragraph is
reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2002-0098
Application No. 09/064,290
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