Ex Parte Lee

Patent Trial and Appeal Board

May 28, 2013

11055999 (P.T.A.B. May. 28, 2013)

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.
11/055,999 02/11/2005 Cheng-Fu Lee 4230
7590 05/28/2013
Cheng-Fu Lee
1552 Chambers Drive
San Jose, CA 95118
EXAMINER
WONG, ALBERT KANG
ART UNIT PAPER NUMBER
2689
MAIL DATE DELIVERY MODE
05/28/2013 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 CHENG-FU LEE
____________
Appeal 2011-001770
Application 11/055,999
Technology Center 2600
____________

Before JAMESON LEE, MICHAEL R. ZECHER, and
DAVID C. McKONE, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 19-22. Br. 3.1 Claims 1-18 were cancelled. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
Appellant’s Invention
Appellant invented a method for coding Chinese characters. Abstract.
The disclosed invention assigns a code to each Chinese character based on
the shape of the character, and groups together characters that share the same
beginning stroke. Id. According to Appellant, the disclosed invention is
useful for searching Chinese characters, sorting the characters, and typing
the characters on a computer or word processor. Id.
Illustrative Claim
Claim 19 is the only independent claim and, therefore, is illustrative:
19. A method of entering Chinese characters into a
computer or word processor, comprising typing a code into a
computer or word processor for each character, wherein the
Chinese character and said code are listed in Annex 1.

Rejection on Appeal
Claims 19-22 were rejected under 35 U.S.C. § 112, second paragraph
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention. Ans. 3.
Examiner’s Findings and Conclusions
The Examiner finds that independent claim 19 is an omnibus claim
and, therefore, is indefinite under 35 U.S.C. § 112, second paragraph. Ans.
3. The Examiner also finds that the “Character-order code,” “Simple-easy

1 All references to the Brief are to the Brief filed on January 6, 2010.
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code,” and “Frequently-used code,” recited in dependent claims 20-22,
respectively, are indefinite because these claim terms do not have
conventional meanings and are not explicitly defined in the Specification.
Id.
Appellant’s Contentions
Appellant contends that because a person of ordinary skill in the art
would have recognized using the Chinese characters and their corresponding
codes in “Annex 1” to type Chinese characters into a computer or word
processer, independent claim 19 is not indefinite under 35 U.S.C. § 112,
second paragraph. Br. 6. Appellant also argues that the Examiner’s position
with respect to independent claim 19 appears to arise from a
misunderstanding of what is an omnibus claim. Id. Appellant refers to a
previous Board decision, Ex parte Fressola, 27 USPQ2d 1608 (Bd. Pat.
App. & Inter. 1993), and asserts that independent claim 19 is unlike the
rejected claim in that decision. Id. at 7. In particular, Appellant alleges that
independent claim 42 in Fressola did not particularly point out and distinctly
define what in the Specification and drawings was being claimed, whereas
independent claim 19 particularly points out and distinctly claims the
Chinese characters and codes in “Annex 1.” Id.
Appellant further contends that the specific code sets recited in
dependent claims 20-22 are not indefinite because each code set is limited to
their disclosure in “Annex 1.” Br. 6. In particular, Appellant argues “Annex
1” labels column A as “Character-order code,” column C as “Simple-easy
code,” and column E as “Frequently-used code.” Id. at 6, 8.

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II. ISSUE
Has the Examiner erred in determining that claims 19-22 are
indefinite under 35 U.S.C. § 112, second paragraph? In particular, the issue
turns on whether:
(a) the Examiner properly characterizes independent claim 19 as an
omnibus claim; and
(b) one with ordinary skill in the art could reasonably ascertain the
scope of the “Character-order code,” “Simple-easy code,” and “Frequently-
used code,” recited in dependent claims 20-22, respectively.

III. ANALYSIS
Claim 19
Based on the record before us, we discern error in the Examiner’s
indefiniteness rejection of independent claim 19, which recites, in relevant
part, “wherein the Chinese character and said code are listed in Annex 1.”
We agree with Appellant that the reference to “Annex 1” in
independent claim 19 does not render the claim indefinite.2 Br. 6-7.
“Incorporation into the claims by express reference to the specification
and/or drawings is not permitted except in very limited circumstances.”
Fressola, 27 USPQ2d at 1609. Such incorporation is permitted, however,
“where there is no practical way to define the invention in words and where
it is more concise to incorporate by reference then duplicating a drawing or
table into the claim.” Id.

2 However, we conclude that the particular reference to “Annex 1” in
independent claim 19 is insolubly ambiguous, as detailed below in our new
ground of rejection.
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The circumstances of this case fall within the exception outlined in
Fressola. Rather than define independent claim 19 by express reference to
the Specification or attachments, e.g., “a method as disclosed in the
specification and the attachments associated therewith,” independent claim
19 specifically points out what is included or excluded from the claim
language—namely the Chinese characters and codes listed in the claimed
“Annex 1.” According to Appellant, “Annex 1 contains a ‘Chinese
Characters List’ (second page to end of Annex 1), which is a list of various
Chinese characters and their corresponding codes.” Br. 6; see also Amended
Brief filed March 19, 2010. Therefore, Appellant characterizes the claimed
“Annex 1” as a list of Chinese characters and codes that spans 220 pages and
includes roughly 13,185 rows in a table, each of which contains multiple
Chinese characters and codes. Given this large volume of Chinese
characters and codes, there is no practical way to define each character and
code in independent claim 19. It would be more concise for Appellant to
incorporate these characters and codes by reference than to duplicate each
character and code in independent claim 19.
Because the claimed “Annex 1,” as characterized by Appellant, falls
within an exception to an omnibus claim as outlined in Fressola, we will not
sustain the Examiner’s rejection of independent claim 19 as being indefinite
under 35 U.S.C. § 112, second paragraph.
Claims 20-22
We also agree with Appellant that the specific code sets recited in
dependent claims 20-22 are not indefinite. Br. 6. A claim is indefinite if,
“when read in light of the specification, it does not reasonably apprise those
skilled in the art of the scope of the invention.” See Amgen Inc. v. Hoechst
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Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). Upon
reviewing the Specification for context, specifically the description of
Attachment 2 at page 33, line 21 through page 34, line 7, one with ordinary
skill in the art would have been apprised of the scope of the claimed
“Character-order code,” “Simple-easy code,” and “Frequently-used code.”
That is, one with ordinary skill in the art would have recognized that
Attachment 2 labels column A as the claimed “Character-order code,”
column C as the claimed “Simple-easy code,” and column E as the claimed
“Frequently-used code.” Consequently, we will not sustain the Examiner’s
rejection of dependent claims 19-22 as being indefinite under 35 U.S.C.
§ 112, second paragraph.

IV. NEW GROUND OF REJECTION
Because the analysis set forth below does not track the thrust of the
Examiner’s indefiniteness rejection of claims 19-22, we exercise our
discretion to designate this indefiniteness rejection as a new ground of
rejection in order to provide the Appellant with a full and fair opportunity to
respond. See 37 C.F.R. § 41.50(b).
35 U.S.C. § 112, Second Paragraph Rejection
Claims 19-22
While we recognize that the claimed “Annex” may be used in a
manner that indicates it is synonymous with an attachment,3 it is unclear
what the claimed “Annex 1” means when there is two attachments—namely

3 Annex (defn.)—“To join or add, especially to something larger; attach.”
The Collins English Dictionary, © HarperCollins Publishers (2000)
(retrieved from http://www.credoreference.com/entry/hcengdict/annex) (last
visited May 23, 2013).
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Attachment 1 and Attachment 2. While the number designation of the
claimed “Annex” refers to Attachment 1, it is Attachment 2 that contains the
Chinese characters and corresponding codes. The numeral “1” designation
of the claimed “Annex” should have meaning, but it has no clear association
with either attachment or even the two attachments together.
Moreover, our reviewing court has held that a claim as a whole must
be considered to determine whether the claim apprises one of ordinary skill
in the art of its scope and, therefore, serves the notice function required by
35 U.S.C. § 112, second paragraph, by providing clear warning to others as
to what constitutes the infringement of the patent. Solomon v. Kimberly-
Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir 2000). If the language of the
claim is such that a person of ordinary skill in the art could not interpret the
metes and bounds of the claim so as to understand how to avoid
infringement, a rejection of the claim under 35 U.S.C. § 112, second
paragraph, is deemed appropriate. Morton Int’l, Inc. v. Cardinal Chem. Co.,
5 F.3d 1464, 1470 (Fed. Cir. 1993). On this record, one with ordinary skill
in the art reasonably could not have recognized what constitutes the claimed
“Annex 1.”
Even if we assume that Attachment 2 equates to the claimed “Annex
1,” it is unclear whether all the Chinese Characters in that attachment must
be associated with their corresponding codes in the table contained therein
for entry into a computer or word processor in order to meet independent
claim 19. It is also unclear whether each Chinese Character in Attachment 2
must be associated with all of the corresponding codes listed in the same row
of the table contained therein for entry into a computer or word processor in
order to meet independent claim 19. As such, one with ordinary skill in the
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art would not be able to interpret the meets and bounds of independent claim
19 so as to understand how to avoid infringement.
We likewise determine that dependent claims 20-22 are indefinite
because none of the code sets recited in these dependent claims reasonably
resolves the ambiguities present in independent claim 19.

V. CONCLUSION
The Examiner has erred in rejecting claims 19-22 as being indefinite
under 35 U.S.C. § 112, second paragraph. However, based on the ambiguity
surrounding the claimed “Annex 1,” and the uncertainty regarding which
Chinese Characters and codes listed in the claimed “Annex 1” are required
to be entered into a computer or word processor, we enter a new ground of
rejection against claims 19-22 as being indefinite under 35 U.S.C. § 112,
second paragraph.

VI. DECISION
We reverse the Examiner’s decision to reject claims 19-22 as being
indefinite under 35 U.S.C. § 112, second paragraph. However, we newly
reject claims 19-22 as being indefinite under 35 U.S.C. § 112, second
paragraph because: (1) the claimed “Annex 1” is insolubly ambiguous; and
(2) one with ordinary skill in the art would not be able to interpret the meets
and bounds of independent claim 19 so as to understand how to avoid
infringement.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
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37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) 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
37 C.F.R. § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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