12706034 (P.T.A.B. Feb. 1, 2017)

Ex Parte LIM et al

Patent Trial and Appeal BoardFeb 1, 2017

12706034 (P.T.A.B. Feb. 1, 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. 12/706,034 02/16/2010 Eun Young LIM 5004-1-241 9890 33942 7590 02/02/2017 Cha & Reiter, LLC 17 Arcadian Avenue Suite 208 Paramus, NJ 07652 EXAMINER HEGARTY, KELLY B ART UNIT PAPER NUMBER 2692 MAIL DATE DELIVERY MODE 02/02/2017 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 EUN YOUNG LIM, MIN KYU PARK, HEE JEONG CHOO, and HYUN KI KIM ____________________ Appeal 2016-003059 Application 12/706,0341 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, SHARON FENICK, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–4, 7, 10, 11, 14–16, 18, and 20–23, which are all of the claims pending in the application. See App. Br. 3; Reply Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b). 1 According to Appellants, the real party in interest is Samsung Industrial Electronics Co., Ltd. App. Br. 3. 2 We treat claims 11 and 23 as appealed. The Appeal Brief lists claims 11 and 23 as cancelled, but the Reply Brief lists those claims as appealed. Appeal 2016-003059 Application 12/706,034 2 Technology The application relates to “controlling the display of a menu list by estimating a user’s input hand shape.” Spec. ¶ 6. Representative Claim Claim 1 is representative and reproduced below with the limitations at issue emphasized: 1. A method of controlling an electronic device having a display unit, comprising: detecting a hand over the display unit; detecting a count of extended fingers of the hand; selecting a plurality of hierarchical layers of a menu list based on the count of the extended fingers, each one of the plurality of hierarchical layers comprising one or more menu list items; and displaying the plurality of hierarchical layers; wherein the plurality of hierarchical layers is selected based on the count of the extended fingers before any of the plurality of hierarchical layers is displayed; and wherein the number of hierarchical layers in the plurality equals the count of the extended fingers. Rejections Claims 1 and 15 stand rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the enablement requirement. Final Act. 3. Claims 1–4, 7, 10, 11, 14–16, 18, and 20–23 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Izadi et al. (US 2008/0122792 A1; May 29, 2008) and Myers et al. (US 2004/0150668 A1; Aug. 5, 2004). Final Act. 6. Appeal 2016-003059 Application 12/706,034 3 ISSUES 1. Did the Examiner err in concluding there was a lack of enablement for selecting layers “before any of the plurality of hierarchical layers is displayed,” as recited in claim 1? 2. Did the Examiner err in concluding claim 1 was obvious? ANALYSIS Enablement Independent claims 1 and 15 recite selecting layers “before any of the plurality of hierarchical layers is displayed.” The Examiner concludes “this limitation is not enabled because it is not described in the disclosure or elsewhere in the original application.” Final Act. 3. However, this concern with what is “described in the disclosure” confuses enablement with written description. “[T]he written description requirement is separate from the enablement requirement.” AbbVie Deutschland GmbH v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014). Written description requires that an application “must describe an invention,” whether in text or drawings, whereas enablement requires that a person of ordinary skill in the art be able to “make and use” that invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1345 (Fed. Cir. 2010). “[A]lthough written description and enablement often rise and fall together,” there are many cases in which one may be satisfied but not the other. Id. at 1352. For example, some claims “do not require undue experimentation to make and use, and thus satisfy enablement,” yet lack written description because those claims are not disclosed in the specification. Id. Conversely, even if a claim appeared verbatim in the disclosure of the original application and thus had adequate written Appeal 2016-003059 Application 12/706,034 4 description, the claim still could lack enablement if a person of ordinary skill in the art at the time would not know how to make or use the device. Here, we agree with Appellants that the Examiner applied the wrong test for enablement. App. Br. 6–8; Reply Br. 3–4; Ans. 6–7. “To be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010) (quotation omitted). “The term ‘undue experimentation’ does not appear in the statute, but it is well established that 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 (Fed. Cir. 1988); MPEP § 2164.01. The Examiner incorrectly ignores that standard in saying “[e]xperimentation in the Applicant’s case is irrelevant.” Ans. 6–7. Accordingly, we do not sustain the Examiner’s rejection of claims 1 and 15 under 35 U.S.C. § 112, first paragraph for lack of enablement. Obviousness The Examiner states “[t]he new limitation of ‘before any of the plurality of hierarchical layers is displayed’ added in claims 1 and 15 has not be[en] supported in the specification. Therefore, this limitation [has] not been addressed in claims 1 and 15 rejection.” Ans. 8; see also Final Act. 5, 7. We agree with Appellants this was improper. App. Br. 14; Reply Br. 4. “All words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). For obviousness, words in a claim must be considered even if they Appeal 2016-003059 Application 12/706,034 5 lack written description or enablement in the Specification. See, e.g., Ex parte Grasselli, 231 USPQ 393, 394 (BPAI 1983), aff’d mem., 738 F.2d 453 (Fed. Cir 1984); MPEP § 2143.03(II). Accordingly, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103 of independent claims 1 and 15, and their dependent claims 2– 4, 7, 10, 11, 14, 16, 18, and 20–23. Written Description Although the Examiner’s rejection under 35 U.S.C. § 112 was characterized as a lack of enablement (Final Act. 3; Ans. 6–7), much of the Examiner’s substantive discussion instead focused on a lack of written description. Ans. 3–6, 7–8; Final Act. 3. Specifically, the Examiner found the phrase “before any of the plurality of hierarchical layers is displayed” is “not described in the disclosure or elsewhere in the original application.” Final Act. 3. We agree with the Examiner in this finding for the reasons discussed below. However, because we agree with Appellants that “there are no outstanding rejections for lack of support in the written description” (Reply Br. 4), we designate our rejection for lack of written description as a new ground using our authority under 37 C.F.R. § 41.50(b). Appellants contend “the specification describes at least two different embodiments,” specifically “one in which a menu list of a first depth is already displayed when the user’s hand is detected (i.e., embodiment discussed with respect to FIG. 2)” and “another one in which ‘all the menu lists from a first depth to the determined depth’ are displayed after the depth is determined (i.e., embodiment discussed with respect to FIG. 1).” App. Br. 9 (emphasis omitted). However, Appellants’ interpretation is not supported by the Specification. Appeal 2016-003059 Application 12/706,034 6 In Figure 1, the system “determine[s] the depth of a menu list being displayed according to the number of a user’s extended fingers” and “display[s] all the menu lists from a first depth to the determined depth.” Spec. ¶ 32. Yet this says nothing about whether the selection of the full menu depth occurs before any part of the menu is displayed. For example, Figure 2 discloses displaying one level of the menu before the user touches the screen. Specifically, the control unit is used “to display the menu list at a first depth” (¶ 34), then the user places their fingers on the screen (¶¶ 35–36), then in step 240 “[t]he control unit 140 determines the depth of a menu list according to the number of the user’s extended fingers” (¶ 37), then the control unit is used “to display menu lists from the first depth (e.g., the highest menu list) to the depth determined in the step 240” (¶ 38). This description of Figure 2 is entirely consistent with Figure 1, because in both figures the full depth of a menu list is determined according to the number of a user’s extended fingers. Nothing in Figure 1 or paragraph 32 precludes displaying one menu layer before the user touches the screen. Appellants’ reliance on Figure 3 is equally misplaced. App. Br. 11– 12. “FIG. 3 shows display screens which display the number of menu lists each time when the user extends fingers one after another, wherein the depths of the menu lists correspond to the user’s extended fingers.” Spec. ¶ 40 (emphasis added). If a user already has one finger touching the screen and the display is showing a menu list of a first depth, then touching the screen with a second finger will further display a menu list of a second depth. Id. ¶ 41. However, claim 1 requires “a plurality of hierarchical layers of a menu list based on the count of the extended fingers.” In Figure Appeal 2016-003059 Application 12/706,034 7 3, fingers and menu levels are added “one after another,” meaning a first menu level is displayed before any plurality of menu levels is selected. Given this record, we see no adequate written description for selecting the plurality of layers “before any of the plurality of hierarchical layers is displayed.” As the Federal Circuit has said, “a description that merely renders the invention obvious does not satisfy the [written description] requirement.” Ariad, 598 F.3d at 1352. Accordingly, in a new ground of rejection under 37 C.F.R. § 41.50(b), we reject independent claims 1 and 15, and their respective dependent claims 2–4, 7, 10, 11, 14, 16, 18, and 20–23, under 35 U.S.C. § 112, first paragraph for lack of written description. DECISION For the reasons above, we reverse the Examiner’s decision rejecting claims 1 and 15 for lack of enablement under 35 U.S.C. § 112, first paragraph, and the rejection of claims 1–4, 7, 10, 11, 14–16, 18, and 20–23 as obvious under 35 U.S.C. § 103. In a new ground of rejection, we reject claims 1–4, 7, 10, 11, 14–16, 18, and 20–23 under 35 U.S.C. § 112, first paragraph for lack of written description. TIME TO RESPOND This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground Appeal 2016-003059 Application 12/706,034 8 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. § 41.50(b)