Ex Parte LeeDownload PDFPatent Trial and Appeal BoardMay 28, 201311055999 (P.T.A.B. May. 28, 2013) Copy Citation 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 Appeal 2011-001770 Application 11/055,999 2 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. Appeal 2011-001770 Application 11/055,999 3 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. Appeal 2011-001770 Application 11/055,999 4 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. Appeal 2011-001770 Application 11/055,999 5 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 Appeal 2011-001770 Application 11/055,999 6 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). Appeal 2011-001770 Application 11/055,999 7 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 Appeal 2011-001770 Application 11/055,999 8 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.” Appeal 2011-001770 Application 11/055,999 9 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) pgc Copy with citationCopy as parenthetical citation