Ex Parte van Diggelen et alDownload PDFPatent Trial and Appeal BoardSep 30, 201612048382 (P.T.A.B. Sep. 30, 2016) 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. 12/048,382 03/14/2008 Frank van Diggelen 3875.2490002 4778 49579 7590 10/03/2016 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER ISSING, GREGORY C ART UNIT PAPER NUMBER 3646 MAIL DATE DELIVERY MODE 10/03/2016 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 FRANK VAN DIGGELEN and CHARLES ABRAHAM ___________ Appeal 2013-010020 Application 12/048,382 Technology Center 3600 ____________ Before JOHN C. KERINS, CHARLES N. GREENHUT, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-010020 Application 12/048,382 2 STATEMENT OF THE CASE1,2 Frank van Diggelen and Charles Abraham (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–22 under 35 U.S.C. § 112, first paragraph, for lack of enablement. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER The claimed subject matter “relate[s] to signal processing for satellite navigation systems.” Spec. para. 2; Figs. 1, 4. Claims 1 and 12 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A method for processing satellite signals, the method comprising: determining a position of a satellite receiver based on a first plurality of satellite signals received from a plurality of satellites for which complete ephemeris data has been received at said satellite receiver; generating temporary ephemeris data from said determined position of said satellite receiver and a second plurality of satellite signals from a satellite for which incomplete ephemeris data has been received at said satellite receiver; and 1 The Examiner states that “[t]he rejection under 35 USC 112, 2nd paragraph is withdrawn in view of the amendment filed November 6, 2012, after the Final Office Action.” Ans. 2 (mailed June 7, 2013); see also Adv. Act. 1 (mailed Nov. 16, 2012). 2 Appellants submitted an Amendment to the claims in the Response After Final Action. See Response After Final Act. 2–7 (filed Nov. 6, 2012). In the Advisory Action, the Examiner indicated that the proposed amendments “[would] be entered” Adv. Act. 1; see also Ans. 2. Accordingly, the claim set before us for review is the one submitted with the Appeal Brief. See Appeal Br. 18–22, Claims App.; see also Reply Br. 2–3. Appeal 2013-010020 Application 12/048,382 3 determining an estimated position of said satellite receiver based on said generated temporary ephemeris and a third plurality of satellite signals, wherein at least one of said third plurality of satellite signals is associated with said satellite with incomplete ephemeris data. ANALYSIS Appellants argue the rejection of claims 1, 2, 4–13, and 15–22 under 35 U.S.C. §112, first paragraph, as a group. Appeal Br. 7–16. We select claim 1 as the representative claim, and claims 2, 4–13, and 15–22 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). There is no dispute that the Specification sets forth embodiments for generating temporary ephemeris data by “measuring a clock corrected pseudorange, using almanac data, and a correction term.” See Appeal Br. 9– 12; see also Final Act. 3; Ans. 4. Even assuming, arguendo, that this limited disclosure both describes and enables something falling within the scope of claim 1, we, like the Examiner, are unable to see any disclosure justifying entitlement to the full scope of the claimed subject matter. See Ans. 3–4; see also Final Act. 3–4. Claim 1 is not limited in scope to the above-listed forms of measurement. The Specification provides no guidance as to which of these aspects or combination of aspects are necessary or critical, and which are not. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (“the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus”). Appellants have described only very specific Appeal 2013-010020 Application 12/048,382 4 ways of generating temporary ephemeris data, yet by claim 1, they seek to reserve for themselves exclusive patent protection for a method that covers any and all ways temporary ephemeris data may be generated. The step of generating temporary ephemeris data could be performed in a variety of very complex ways, both known and unknown. In light of Appellants’ Specification, undue experimentation would clearly be necessary to practice many of the ways falling within the scope of the claim. To extend a patent monopoly to methods covering any and all generation of temporary ephemeris data is to extend it far beyond Appellants’ contribution to the art. This would be inconsistent with quid pro quo of the patent grant as embodied in the requirements of 35 U.S.C. § 112, first paragraph. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d at 1353–54 (Fed. Cir. 2010) (quoting Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)) (the “scope of the right to exclude” must not “overreach the scope of the inventor’s contribution to the field of art as described in the patent specification”) (internal quotations omitted). “[T]he scope of enablement provided to one skilled in the art by the disclosure [must be] commensurate with the scope of protection sought by the claims.” MPEP § 2164.08 (citing AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003); In re Moore, 439 F.2d 1232, 1236 (CCPA 1971)). Because Appellants have not satisfied this requirement, we must agree with the Examiner that due to the absence of supporting disclosure, claim 1 effectively constitutes an improper attempt to “preempt the future before it has arrived.” Ariad Pharms., 598 F.3d at 1358 (internal quotations and citation omitted). The Examiner focuses on the almanac embodiment of claim 3 as one specific example falling within generic claim 1. For the first time in the Appeal 2013-010020 Application 12/048,382 5 Reply Brief, Appellants’ point to other specific examples or embodiments. For procedural reasons, we will not address the discussion in the Reply Brief in which Appellants present new arguments. See Reply Br. 5–8; see also 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). Appellants have not shown good cause for failing to provide these arguments in the Appeal Brief. 3 For the foregoing reasons, we sustain the Examiner’s rejection of claims 1, under 35 U.S.C. § 112, first paragraph, for lack of enablement. We further sustain the Examiner’s rejection of claims 2, 4–13, and 15–22, which fall with claim 1. Claims 3 and 14 We agree with Appellants that “the rejection of claims 3 and 14 is erroneous as evidenced by the acknowledged enablement of the features recited in claims 3 and 14 by the [Examiner].” See Appeal Br. 17; see also Final Act. 5; Adv. Act. 2. For the foregoing reasons, we do not sustain the Examiner’s rejection of claims 3 and 14, under 35 U.S.C. § 112, first paragraph, for lack of enablement. DECISION We AFFIRM the decision of the Examiner to reject claims 1, 2, 4–13, 3 We note that the Examiner discussed the use of “almanac positional data” in the Final Rejection. See Final Act. 3–4. Appeal 2013-010020 Application 12/048,382 6 and 15–22 for lack of enablement. We REVERSE the decision of the Examiner to reject claims 3 and 14 for lack of enablement. 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). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation