Ex Parte Saaski

Board of Patent Appeals and Interferences

Oct 28, 2008

10923530 (B.P.A.I. Oct. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ELRIC W. SAASKI
____________

Appeal 2008-3989
Application 10/923,530
Technology Center 2800
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Decided: October 28, 2008
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Before SCOTT R. BOALICK, JOHN A. JEFFERY, and MARC S. HOFF,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

Appeal 2008-3989
Application 10/923,530

STATEMENT OF THE CASE
Appellant invented an optical sensor with a sensing waveguide and a
reflective surface. The reflective surface is selected to maximize the amount
of excitation light reflected into the sensing waveguide despite misalignment
between the sensor and the light source.1 Claim 1 is illustrative:
1. An optical sensor operable to receive an excitation light from a light
source,
wherein said sensor comprises an internally reflecting shape and a
sensing waveguide;
wherein said sensing waveguide comprises an input end;
wherein said internally reflecting shape and at least said input end of
said sensing waveguide are arranged with respect to each other to have a
common optical axis; wherein said internally reflecting shape is operable to
receive an input of excitation light rays having a range of input propagation
angles ω with respect to a Y-axis that is at right angles with respect to said
common optical axis;
wherein said internally reflecting shape comprises a variable reflected
propagation angle θ0i reflective surface that is operable to receive at least
some of said input of excitation light rays and to produce an output of
reflected excitation light rays from said variable reflected propagation angle
θ0i reflective surface that are reflected into said input end of said sensing
waveguide over a corresponding range of reflected propagation angles θ0i
relative to said common optical axis; wherein said reflected propagation
angle θ0i changes as a function of said input propagation angle ω;
wherein at least a portion of said variable reflected propagation angle
θ0i reflective surface has a shape, relative to a position of said light source
and relative to said common optical axis, that is described in a polar
coordinate system as:

1 See generally Spec. 6:5-17.
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Application 10/923,530

and wherein said sensing waveguide is operable to produce an output
of signal recovery light in response to said output of reflected excitation
light rays from said variable reflected propagation angle θ0i reflective
surface, when said sensing waveguide is exposed to a sensed target analyte.

THE REJECTION
Claims 1-25 stand rejected under 35 U.S.C. § 112, ¶ 2 as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention (Ans. 3-4).
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer2 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Independent claims 1, 12, 24, and 25 recite, in pertinent part, a
mathematical equation for the shape of at least a portion of a variable
reflected propagation angle θoi reflective surface relative to the light source
position and a common optical axis as follows (hereafter “the claimed
equation”):

2 Throughout this opinion, we refer to (1) the Appeal Brief filed March 26,
2007; (2) the Examiner’s Answer mailed October 30, 2007; and (3) the
Reply Brief filed November 16, 2007.
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Application 10/923,530

As shown above, the recited equation contains variables including:
r(ω), R90°, P, and θ90°. These variables, however, are not defined in the
claims, but rather defined in the Specification (Spec. 24:9-22).
Although the Examiner acknowledges these definitions in the
Specification, the Examiner nonetheless takes the position that since these
variables are undefined in the claims, the variables could be broadly
interpreted as corresponding to different parameters and therefore the claims
are rendered indefinite. According to the Examiner, defining these variables
based on the Specification would impermissibly import limitations from the
Specification into the claims (Ans. 3-8).
Appellant argues that the law is clear that claims must be given their
broadest reasonable construction in light of the Specification as it would be
interpreted by ordinarily skilled artisans. Although Appellant acknowledges
that limitations are not to be imported from the Specification into the claims,
Appellant emphasizes that skilled artisans would nonetheless interpret the
variables in the recited equations in light of the Specification’s clear
definitions of these variables (App. Br. 11-20; Reply Br. 3-14).

ISSUE
At the outset, we note that it is undisputed that the variables of the
claimed equation are clearly and unambiguously defined in the
Specification. The issue before us, then, is whether Appellant has shown
that the Examiner erred in finding the claims indefinite by not defining these
variables in the claims, notwithstanding their clear and unambiguous
definition in the Specification.
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For the following reasons, we find that Appellant has shown such
error.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Independent claims 1, 12, 24 and 25 each include the claimed
equation that mathematically expresses the shape of at least a portion of the
variable reflected propagation angle θoi reflective surface relative to the light
source position and a common optical axis in a polar coordinate system as
follows (i.e., “the claimed equation”):

2. The claimed equation includes the variables r(ω), R90°, P, and θ90°.
3. No claim on appeal expressly defines these variables.
4. The claimed equation is reproduced in the Specification on page
24, line 12.
5. The Specification defines the variable r(ω) as “the distance from
the origin O to the curve 227A, 227B, 227C” (Spec. 24:13-14; Fig. 18).
6. The Specification defines the input propagation angle ω as “the
angle that a ray of the input excitation light 30 makes with respect to the
vertical axis Y” (Spec. 24:14-15; Fig. 18).
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7. The Specification defines the variable R90° as “the distance from
the origin O to the curve 227C when the input propagation angle ω is equal
to 90°” (Spec. 24:17-18; Fig. 18).
8. The Specification defines the variable θ90° as “the reflected
propagation angle θoi when the input propagation angle ω is equal to 90°”
(Spec. 24:18-19; Fig. 18).
9. The Specification defines the variable P in terms of the following
expression: P = 1/(1-B) “where B is the rate of change in the reflected
propagation angle θoi as a function of the input propagation angle ω” (Spec.
24:20-22; Fig. 18).

PRINCIPLES OF LAW
Claims must “particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2.
However, “[o]nly claims not amenable to construction or insolubly
ambiguous are indefinite….A claim term is not indefinite just because it
poses a difficult issue of claim construction.” Star Scientific, Inc. v. R.J.
Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (internal
citations and quotation marks omitted). “Thus, the definiteness of claim
terms depends on whether those terms can be given any reasonable
meaning.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005).
During patent examination, claims are given their broadest reasonable
interpretation in light of the specification as it would be interpreted by
skilled artisans. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005) (en banc) (citations omitted).
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Claims do not stand alone, but rather “must be read in view of the
specification, of which they are a part.” Id. at 1315 (internal citations and
quotation marks omitted). Not only is the specification always highly
relevant to claim interpretation, it is usually dispositive: “it is the single best
guide to the meaning of a disputed term.” Id. Although claims are given
their broadest reasonable interpretation during patent examination, this
interpretation must nevertheless be made in light of the specification as it
would be interpreted by skilled artisans. Id. at 1316.

ANALYSIS
This is not a case where the Specification is ambiguous or silent
regarding the meaning of the disputed terms in the claims. Rather, this is a
case where the Specification unambiguously defines the very terms in
dispute (i.e., the variables of the recited equations) (FF 5-9). The
Specification could not be clearer in this respect.
To ignore these clear definitions and assert that the recited variables
can somehow be construed to mean something else as the Examiner
proposes runs counter to established claim construction principles articulated
in Phillips and simply strains reasonable limits. As the court in Phillips
noted, “the specification is the single best guide to the meaning of a disputed
term, and…acts as a dictionary when it expressly defines terms in the claims
or when it defines them by implication.” Id. at 1321 (internal quotation
marks and citations omitted).
That is the case here. The Specification’s clear and unambiguous
definition of the equation’s variables (FF 5-9) effectively acts as a dictionary
for interpreting these terms. To construe these variables as meaning
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something else as the Examiner proposes (e.g., power, pressure, etc. for the
variable “P”) (Ans. 6) is not supported—or even contemplated—by the
Specification. Such an arbitrary selection of disparate parameters for these
variables as a basis for asserting the claims are indefinite simply runs
counter to fundamental claim interpretation principles and is unreasonable
on the record before us.
The Examiner’s reliance on the Shatterproof Glass case (Ans. 4) only
bolsters our conclusion as that case, like Phillips, emphasized that claims are
to be read in light of the specification. See Shatterproof Glass Corp. v.
Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985). When this
fundamental principle is applied in this case, skilled artisans would
reasonably interpret the claimed variables in light of their clear and
unambiguous definitions in the Specification. As our reviewing court
emphasized, “[t]he construction that stays true to the claim language and
most naturally aligns with the patent’s description of the invention will be, in
the end, the correct construction.” Phillips, 415 F.3d at 1316. Consistent
with this mandate, construing the meaning of the recited variables in the
claims on appeal in light of their definitions in the Specification, in our view,
most naturally aligns with the description of the invention. That
construction is therefore the correct construction.
As such, ordinarily skilled artisans would have no trouble discerning
the meaning of the recited variables in light of their clear and unambiguous
definition in the Specification. The terms are therefore amply amenable to
construction and not insolubly ambiguous. Accordingly, the claims are
definite under § 112.
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For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s rejection of claims 1-25. Therefore, we will not sustain the
Examiner’s rejection of those claims.

CONCLUSION OF LAW
Appellant has shown that the Examiner erred in finding the claims
indefinite under § 112, second paragraph by not defining the variables of the
claimed equation in the claims, notwithstanding their clear and unambiguous
definition in the Specification.

DECISION
The Examiner’s decision rejecting claims 1-25 is reversed.

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REVERSED

eld

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