Ex Parte Naukkarinen et al

Patent Trial and Appeal Board

Oct 19, 2012

10534012 (P.T.A.B. Oct. 19, 2012)

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.
10/534,012 05/05/2005 Santtu Naukkarinen 8845-0056 8466
73552 7590 10/19/2012
Stolowitz Ford Cowger LLP
1140 SW 11th Ave.
Suite 400
Portland, OR 97205
EXAMINER
NGUYEN, TU X
ART UNIT PAPER NUMBER
2647
MAIL DATE DELIVERY MODE
10/19/2012 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 SANTTU NAUKKARINEN, TAPANI RYHANEN,
KARI HJELT, and KAI INHA

________________

Appeal 2010-005789
Application 10/534,012
Technology Center 2600
________________

Before, ALLEN R. MacDONALD, KALYAN K DESHPANDE, and
JOHN G. NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005789
Application 10/534,012

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SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-10 and 14-25 as unpatentable under
35 U.S.C. § 102(e) as being anticipated by Levine et al. (US 2003/0135327
A1, July 17, 2003) (“Levine”). Claims 11-13 are rejected as being as
unpatentable under 35 U.S.C. § 103(a) as being obvious over Levine and
Ellenby et al. (US 2002/0140745 A1, October 3, 2002) (“Ellenby”).
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a NEW GROUND of rejection pursuant to 37
CFR § 41.50(b).

STATEMENT OF THE CASE
Appellants’ invention is directed to a mobile electronic system
comprising a 3D magnetometer performing magnetic measurements in
three dimensions and providing data indicative of the current posture of the
mobile electronic system based on these measurements. Abstract. Because
Appellants argue that the Examiner erred for substantially similar reasons in
rejecting claims 1-25, we select claim 24 as representative of this group.
Claim 24 recites:
24. A mobile electronic system comprising

an output component enabling a presentation of information to
a user of said mobile electronic system;

a 3D magnetometer configured to perform magnetic
measurements in three dimensions and to provide data
indicative of the current posture of said mobile electronic
system based on said measurements; and
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at least one processing component configured to process said
data provided by said 3D magnetometer for enabling a
posture related presentation of information via said
output component, said processing including selecting
one of at least two different modes of presentation
depending on said current posture of said system.

App. Br. 14-15.

ISSUE
Appellants argue that the Examiner erred in finding that claim 24 is
unpatentable under 35 U.S.C. § 102(e) as being anticipated by Levine.
App. Br. 6. Specifically, Appellants argue that the Examiner erred by
finding that Levine discloses an apparatus comprising at least one
processing component configured to process data indicative of the current
posture of said apparatus for enabling a posture related presentation of
information to a user via an output processing including selecting one of at
least two different modes of presentation depending on said current posture
of the apparatus. Id. Appellants argue that Levine does not disclose any
relationship between the current posture of the apparatus and the mode of
presentation of information to a user via an output component and, as such,
does not disclose that processing includes selecting one of at least two
different modes of presentation depending on the current posture of said
apparatus. App. Br. 7. Appellants contend that, although Levine does
disclose that different operational modes can be selected from a keyboard,
and that different databases or maps can be used for presentation, it is clear
that the selection of either operational modes or presentation databases
occurs entirely independent of the posture of the device. Id. The issue
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before us, then, is whether Levine discloses all of the limitations of claim
24.
ANALYSIS
The Examiner responds by finding that Levine discloses an apparatus
comprising at least one processing component which detects a craft’s
heading and attitude, which way the craft is actually pointed, whether the
aircraft is moving slow or not moving, the craft’s position relative to
landmarks, i.e., cities, roads, channels, boating hazards, buoy information,
etc. Ans. 8. The Examiner finds that such movements are indications of
the “current posture,” as disclosed in claim 24, of the apparatus within the
craft. Id. The Examiner finds further that Levine discloses a selected
operation mode is based on input from filter; the filter process is done from
circuitry comparison between multiple navigational sources. Ans. 9. The
Examiner finds that one embodiment of Levine discloses a boat moving in
different bodies of water, and finds that these different bodies of water
represent different presentation modes depending on the current “posture”
of the boat, e.g., channels, boating hazards and obstructions, mooring
details, buoy information, etc. are displayed, or presented depending on the
posture of the boat. Id. (citing Levine, ¶¶ [0071]; [0104]).
The Examiner finds that Levine also discloses a navigation system
for use in aircraft for detecting movement, or lack of movement, of the
aircraft (i.e., its current posture) based on a plurality of inputs other than
user input such as RF transmission from central station. Ans. 9. The
Examiner finds that the aircraft (including instances when the aircraft is not
moving or slow moving) could be shown visually in different colors (e.g.,
red indicating a warning, or a change in a different presentation mode). Id.
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(citing Levine, ¶¶ [0089]; [0111]). The Examiner consequently finds that
Levine discloses all of the limitations of claim 24.
We are not persuaded by the Examiner’s reasoning. As Appellants
admit, Levine teaches that the “operational mode” of the disclosed
apparatus is selected by the user via a keypad. App. Br. 7 (citing Levine
[0102]). Levine also discloses displaying data generated by either a 2-
dimensional or 3-dimensional map database, which we reasonably interpret
as being the “operational modes” disclosed by Levine in [0102] and
which we find also to read upon claim 24’s limitation reciting “modes of
presentation.” App. Br. 8-9 (citing Levine [0104]). However, Levine
does not teach altering between “operational modes” depending upon the
posture of the claimed apparatus. We do not agree with the Examiner’s
finding that mere changes in the data displayed by the apparatus concerning
the craft’s status or surroundings constitute changes in the apparatus’
operational mode. Rather, we are persuaded by Appellants’ argument that
Levine discloses only that changes in operational mode (i.e., mode of
presentation) are entered by the user via a keypad. See Levine, [0102].
We consequently conclude that the Examiner erred in finding that Levine
discloses all of the limitations of claim 24. We further conclude, for
substantially the same reasons, that the Examiner erred in rejecting claims
10, 14-23, and 25 as unpatentable under 35 U.S.C. § 102(e) as being
anticipated by Levine, and in rejecting claims 11-13 as unpatentable under
35 U.S.C §103(a) as being obvious over Levine and Ellenby.

Appeal 2010-005789
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NEW GROUND OF REJECTION
We enter the following new ground of rejection for independent
claim 1 under the provisions of 37 CFR § 41.50(b).
Claim 1 is rejected as unpatentable under 35 U.S.C. § 112(a) for lack
of enablement. Claim 1 recites:
1. An apparatus comprising

at least one processing component configured to process
data indicative of the current posture of said apparatus for
enabling a posture related presentation of information to
a user via an output component, said processing
including selecting one of at least two different modes of
presentation depending on said current posture of said
apparatus

App. Br. 11. We find that claim 1 is therefore a “single means claim,” i.e.,
a claim drafted in “means-plus-function” format, yet reciting only a single
element instead of a combination. See, e.g., In re Hyatt, 708 F.2d 712, 713
(Fed. Cir. 1983).
35 U.S.C § 112(a) states:
The specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor or joint
inventor of carrying out the invention.

35 U.S.C. § 112(a).
As the Federal Circuit noted in Hyatt, “[t]he long-recognized
problem with a single means claim is that it covers every conceivable
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means for achieving the stated result, while the specification discloses at
most only those means known to the inventor.” 708 F.2d at 714.
Moreover, as set forth in Invitrogen Corp.:
Section 112 requires that the patent specification enable “those
skilled in the art to make and use the full scope of the claimed
invention without ‘undue experimentation’” in order to extract
meaningful disclosure of the invention and, by this disclosure,
advance the technical arts. Koito Mfg., 381 F.3d 1142, 1155
(quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361,
1365 (Fed. Cir. 1997) (citation omitted)). Because such a
disclosure simultaneously puts those skilled in the art on notice
of the enforceable boundary of the commercial patent right, the
law further makes the enabling disclosure operational as a
limitation on claim validity. “The scope of [patent] claims
must be less than or equal to the scope of the enablement. The
scope of enablement, in turn, is that which is disclosed in the
specification plus the scope of what would be known to one of
ordinary skill in the art without undue experimentation.” Nat’l
Recovery, 166 F.3d at 1196; see also In re Goodman, 11 F.3d
1046, 1050 (Fed. Cir. 1993) (“[T]he specification must teach
those of skill in the art ‘how to make and how to use the
invention as broadly as it is claimed.”); In re Fisher, 57
C.C.P.A. 1099, 427 F.2d 833, 839 (1970) (“[T]he scope of the
claims must bear a reasonable correlation to the scope of
enablement provided by the specification to persons of
ordinary skill in the art.”). (footnote omitted)
Invitrogen Corp. v. Clontech Labs. Inc, 429 F.3d 1052, 1070-71 (Fed. Cir.
2005).
Consequently, we conclude that claim 1 is unpatentable under 35
U.S.C. § 112(a) for lack of enablement. We have entered the new ground
only for independent claim 1 and leave it to the Examiner to evaluate the
patentability of the other claims depending upon claim 1. We do not
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sustain the Examiner’s 35 U.S.C. § 102(e) rejection of claim 1, nor the
rejections of dependent claims of claims 2-9. Claim 1 is newly rejected.

DECISION
The Examiner’s rejection of claims 1-10, 14-23, and 25 as
unpatentable under 35 U.S.C. §102(e) as being anticipated by Levine is
reversed.
The Examiner’s rejection of claims 11-13 as unpatentable under 35
U.S.C §103(a) as being obvious over Levine and Ellenby is reversed.
We have also entered a new ground of rejection under 37 C.F.R.
§ 41.50(b) for claim 1.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground
of rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the 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
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§ 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

REVERSED
37 C.F.R. § 41.50(b)

ELD