Ex Parte Prouse

Board of Patent Appeals and Interferences

Mar 18, 2009

11101025 (B.P.A.I. Mar. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CRAIG PROUSE
____________

Appeal 2008-2417
Application 11/101,025
Technology Center 2100
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Decided:1 March 19, 2009
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Before JAMES D. THOMAS, ALLEN R. MACDONALD,
and JEAN R. HOMERE, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-2417
Application 11/101,025

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 5-11, 15-19, the Examiner having objected to claims 2-
4, and 12-14. We have jurisdiction under 35 U.S.C. § 6(b).
We Reverse.

THE INVENTION
With respect to a given electronic device, a waveform generator
generates LED signal values which are in turn scaled by a particular scaling
value “based upon a percentage of a particular LED brightness.”
(Independent claims 1, 9, and Abstract 19).

ILLUSTRATIVE CLAIMS
Claims 1 and 9 further illustrate the invention, and they are
reproduced below:
1. A system in an electronic device for emitting light
from a light-emitting diode (LED) at a variable brightness, comprising:

a waveform generator for generating an LED signal waveform
comprised of a plurality of LED signal values; and

a processing unit operable to determine a scaling value for one or
more LED signal values in the plurality of LED signal values, wherein the
scaling value scales the one or more LED signal values based upon a
percentage of a particular LED brightness.

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9. A method for varying a brightness of light emitted
from a light-emitting diode (LED) in an electronic device, comprising:

a) generating an LED signal waveform comprised of a plurality of
LED signal values;

b) determining a scaling value for one or more LED signal values in
the plurality of LED signal values, wherein the scaling value is based upon a
percentage of a particular LED brightness; and

c) generating one or more scaled LED signal values by scaling the one
or more LED signal values with the scaling value.

PRIOR ART AND EXAMINER’S REJECTION
The Examiner relies on the following reference as evidence of
anticipation:
Danielson US 6,157,037 Dec. 5, 2000

Claims 1, 5-11, and 15-19 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Danielson.

Claim Groupings
Based upon the arguments in the principal Brief, independent claims 1
and 9 are separately argued but substantially identical arguments are
presented for each of these claims at pages 10-15.

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ISSUE
Has Appellant shown that the Examiner erred in finding that
Danielson teaches the feature of representative independent claim 9 on
appeal of “determining a scaling value for one or more LED signal values of
the plurality of LED signal values, wherein the scaling value is based upon a
percentage of a particular LED brightness?”

FINDINGS OF FACT
1. As revealed in Danielson’s title and in the first sentence of the
abstract, this reference discloses an “apparatus for measuring emission time
delay during irradiation of targeted samples by utilizing digital signal
processing to determine the emission phase shift caused by the sample.”

2. As revealed at Danielson’s column 1, lines 20-27, his invention
“relates to a device and method for measuring exponential time constants,
phase shifts, time delays in parameters derivable therefrom caused by
irradiation of a targeted sample utilizing digital signal processing and
especially luminescence quenching systems, phase shifts through networks,
and time delays of photon migration through media.”

3. These variations of the invention are reflected in disclosed Figures
1-6, each of which presents a different embodiment, as best reflected in the
brief description of these Figures at column 4, lines 31-55.
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4. At least with respect to the disclosed embodiment in Figure 1,
columns 5 and 6 discuss the phase shift feature by illustrating the use of a
digital signal processor 12 within which is a dual output variable phase
frequency generator 14 that eventually feeds in parallel two different signals,
one to LED 22 and another to anti-aliasing filter 44. The light emissions
from LED 22 impact the target sample 32 and which in turn provides sample
emitted energy (fluorescence emission) 34 which impacts upon photo diode
36. Subsequently, the signals from the filter 44 and a corresponding filter 42
fed by the photo diode 36 are combined within the digital signal processor
12 at a digital signal mixer 52/phase demodulator to yield an error signal 58
to correct the frequency generator 14.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
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Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

ANALYSIS
Initially, we reverse the outstanding rejection of independent claim 1
and its dependent claims 5-8 because the subject matter presented in these
claims must be reasonably understood without result to speculation.
Presently, speculation and conjecture must be utilized by us and by the
artisan inasmuch as independent claim 1 on appeal does not adequately
reflect what the disclosed invention is. Note In re Steele, 305 F.2d 859, 862
(CCPA 1962).
In direct contrast to the positive statement of determining in
independent claim 9, a processing unit is merely recited in independent
claim 1 to be “operable to determine a scaling value.” Thus, it is merely
capable of performing the recited or desired function of determining a
scaling value. In other words, there is no present tense, positively recited
determination of a scaling value in claim 1. Thus, since the scaling values
are not actually determined, they cannot be used to scale the LED values as
recited in the claim. This situation clearly renders the entire subject matter
of independent claim 1 and its respective dependent claims 5-8 indefinite
within the second paragraph of 35 U.S.C. § 112. As such, we introduce a
separate rejection on this basis within the provisions of 37 C.F.R. 41.50(b)
for claims 1 and 5-8.
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Separately, we reverse on the merits the rejection of independent
claim 9 and its respective dependent claims 10, 11, and 15-19.2 It appears
that the Examiner’s most persuasive positions concerning the teachings in
Danielson applied to the features of independent claim 9 are presented at
pages 6 and 7 of the Answer. We reverse the rejection of these claims
because we are not in total agreement with the Examiner’s positions here as
they apply to the determining cause of claim 9 on appeal.
Although we agree with the Examiner’s views that the digital signal
processor 12 produces LED signal values that directly feed LED 22 and,
separately, that the error signals produced on line 58 in effect may be
considered scaling values which indirectly scale or otherwise control LED
signal values, we do not agree with the Examiner’s conclusion that these
scaling values are “based upon the percentage of a particular LED
brightness.”
The Examiner’s apparent views are in part based upon the position
that the photodetector/photodiode 34 produces a brightness based upon a
percentage of a particular LED brightness. To the extent that any brightness
is detected in Danielson, it is directly related to the sample 32 and not
directly to the LED 22 itself. The frequency generator 14 in the Figure 1
embodiment of Danielson is not stated, according to findings of fact 1-4, to
affect the brightness of LED 22. In fact, all the embodiments in Figures 1-6

2 Because dependent claim 15 depends from objected to claim 12, it appears
that the Examiner intended for this claim to be objected to as well.
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do not teach a sensing or any adjustment (scaling) of the brightness level of
the respective LED in these embodiments. Therefore, any scaling that may
be construed by the artisan as occurring in Danielson is limited to scaling or
otherwise adjusting or modifying the phases of the actual digital signal 16
with respect to its reference signal 26, both which are emitted by the
frequency generator 14 within the digital signal processor 12 in accordance
with the teachings in findings of fact 1-4 noted earlier in this opinion. These
views are essentially consistent with Appellant’s positions set forth in the
principal and Reply Briefs.

SUMMARY
Because we have found that independent claim 1 is indefinite within
the second paragraph of 35 U.S.C. § 112, we reverse the rejection under
35 U.S.C. § 102 of this claim and its respective dependent claims 5-8. Our
findings of indefiniteness of the subject matter of these claims within
35 U.S.C. § 112, second paragraph, constitute a new ground of rejection of
them. Correspondingly, we have reversed on the merits the outstanding
rejection of independent claim 9 and its respective dependent claims 10, 11,
and 15-19.
In addition to reversing the Examiner’s rejection(s) of one or more
claims, 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
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Application 11/101,025

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rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, 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 § 41.52 by the Board upon the same record. . . .

CONCLUSION OF LAW
Appellant has shown that the Examiner erred in finding that, what the
artisan may construe as scaling values within Danielson, these values are not
“based upon a percentage of a particular LED brightness level.”

DECISION
The Examiner’s rejection of claims 1, 5-11, and 15-19 under
35 U.S.C. § 102(b) as being anticipated by Danielson is reversed. On the
other hand, we have instituted new grounds of rejection of independent
claim 1 and its dependent claims 5-8 under the second paragraph of
35 U.S.C. § 112.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
REVERSED
37 C.F.R. § 41.50(b)

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