12222754 (P.T.A.B. Jul. 28, 2014)

Ex Parte Wagener et al

Patent Trial and Appeal BoardJul 28, 2014

12222754 (P.T.A.B. Jul. 28, 2014)

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. 12/222,754 08/15/2008 Michael Wagener 8011 5841 47988 7590 07/29/2014 WALTER OTTESEN PO BOX 4026 GAITHERSBURG, MD 20885-4026 EXAMINER CHAPEL, DEREK S ART UNIT PAPER NUMBER 2872 MAIL DATE DELIVERY MODE 07/29/2014 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 MICHAEL WAGENER and THOMAS BELKNER ____________ Appeal 2012-011461 Application 12/222,754 Technology Center 2800 ____________ Before CHUNG K. PAK, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-011461 Application 12/222,754 2 Claim 1 is illustrative of the claimed subject matter (emphasis added): 1. An operator-controlled device for an optical imaging system, the operator-controlled device comprising: a plurality of modular components for inputting settings for imaging an object with said optical imaging system; means for transmitting signals indicative of said settings, between the operator-controlled device and said optical imaging system; said operator-controlled device further including: at least one of said modular components being provided to input desired set values; a base component adapted to receive said modular component thereon; and, interface means for manually and mechanically connecting said modular component directly to said base component and for manually separating said modular component from said base component. The other independent claim 17 recites an operator-controlled device similar to claim 1 and containing corresponding “means for” clauses (Claims App’x). The Examiner maintains, and Appellants appeal, the following rejections: a) Claims 1-8, 11-14, 16-18 and 20 under 35 U.S.C. § 102(b) as being anticipated by Eijsackers (US 2003/0021017 A1, pub. Jan. 30, 2003 ); b) Claims 15 and 19 under 35 U.S.C. 103(a) as being unpatentable over Eijsackers; and c) Claims 9 and 10 under 35 U.S.C. 103(a) as being unpatentable over the combined prior art of Eijsackers and Mecham (US 2002/0015223 A1, pub. Feb. 7, 2002). Appeal 2012-011461 Application 12/222,754 3 PRINCIPLES OF LAW [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). See also, In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in patent applications is not determined 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.); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” (internal citation omitted)). Our reviewing court has held that the broadest reasonable interpretation that an Examiner may give means-plus-function language is that statutorily mandated in paragraph six of 35 U.S.C. § 112. As stated in In re Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994): The plain and unambiguous meaning of paragraph six is that one construing means-plus-function language in a claim must look to the specification and interpret that language in light of Appeal 2012-011461 Application 12/222,754 4 the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure. This is the “broadest reasonable interpretation” of “means-plus- function” language. Id. at 1194-95. ANALYSIS Appellants argue that the Examiner has not shown how Eijsackers identically discloses the claimed subject matter of independent claims 1 and 17. A preponderance of the evidence supports Appellants’ position. Appellants argue that the Examiner has improperly relied upon the same element in Eijsackers (that is, elements 25a and 25b) for corresponding to two separate claim recitations in claim 1 (as well as claim 17) (e.g., Ans. 5; Reply Br. 3). These two limitations, “means for transmitting signals” and the “interface means for manually and mechanically connecting said modular components directly to said base components”, are in means-plus- function format, and thus their interpretation is governed by 35 U.S.C. 112, sixth paragraph. As discussed in the Specification, these two limitations correspond to two different and distinct structures (e.g., Spec. 9:4-13; Spec. 10:3-15). These two claim elements cannot reasonably be construed as the same element of Eijsackers as proposed by the Examiner. Appellants also provide arguments that one of ordinary skill in the art would not consider elements 25a and 25b of Eijsackers to be an “interface means” as claimed, because these elements do not mechanically connect the modular components “directly to said base component” as recited in claims Appeal 2012-011461 Application 12/222,754 5 1 and 17 (App. Br. 14-16)1. A preponderance of the evidence supports Appellants’ position for the reasons discussed in the Briefs. We conclude that the Examiner erred in finding that the two disputed distinct claim elements encompass elements 25a and 25b of Eijsackers. Therefore, we agree with Appellants that the Examiner has taken an unreasonably broad interpretation of the aforementioned claim limitations when considered in light of the Specification for the reasons explained in the Briefs. As such, we cannot sustain the anticipation rejection based on Eijsackers, nor the obviousness rejections which also rely upon this flawed claim interpretation. Accordingly, the Examiner’s §102 and 103 rejections are reversed. ORDER The Examiner’s rejections are reversed. REVERSED tc 1 Appellants also explain that one of ordinary skill in the art would not consider the base component of Eijsackers as identified by the Examiner to be adapted to receive the modular components “thereon” as recited in each of claims 1 and 17 (App. Br. 14, 15).