Ex Parte Werner

Board of Patent Appeals and Interferences

Aug 20, 2009

10046404 (B.P.A.I. Aug. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte BERNARD M. WERNER
________________

Appeal 2009-003277
Application 10/046,404
Technology Center 2600
________________

Decided: August 20, 2009
________________

Before KENNETH W. HAIRSTON, JOHN C. MARTIN, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003277
Application 10/046,404

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1-8 and 11-28 as being anticipated by U.S. Patent
3,930,561, issued to Klayman on January 6, 1976. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
We reverse the rejections of record. We enter new grounds of
rejection as to pending claims 1-8 and 11-28 pursuant to our authority under
37 C.F.R. § 41.50(b).

A. Appellant’s invention
Appellant’s invention relates to loudspeaker horns having a small end
(or “throat”), a larger end (or “mouth”) that radiates sound, and a portion
between the mouth and throat through which sound travels. “The portion
between the throat and mouth includes an inner surface, referred to as an
‘acoustic waveguide.’” App. Br. 5 (filed July 26, 2007). The shape of the
acoustic waveguide’s surface “constrain[s] and control[s] the radiation of
acoustic energy” towards the mouth. Spec. 1.
An acoustic waveguide’s surface includes “control curves”: two-
dimensional curves along the waveguide’s surface that extend from the
horn’s throat to mouth, identified by axially bisecting the waveguide with an
imaginary plane. That is, vertically bisecting the waveguide from throat to
mouth identifies top and bottom control curves of the waveguide surface.
Likewise, horizontally bisecting the waveguide identifies right and left
control curves. Spec. 4-11; figs. 1-5.
The term “energy-surface” relates to the degree of curvature
possessed by the waveguide surface. Spec 7. For example, dents,
Appeal 2009-003277
Application 10/046,404

3
protrusions, and edges in the waveguide increase the waveguide’s surface
energy. Spec. 7. Mathematical discontinuities in the control curves (local
discontinuities in the curves’ rate of curvature) also increase the surface
energy. Spec. 7. As such, the surface energy affects the radiation of
acoustic energy through the waveguide. Spec. 1.
Appellant’s invention, then, relates to a waveguide surface that
extends from a circular throat to a non-elliptical mouth,1 the waveguide
having a “least-energy-surface.” Restated, the inventive waveguide has
specially shaped top, bottom, left, and right control surfaces, and further has
an inner surface passing through the control curves in a configuration that
minimizes the waveguide’s total surface energy. Spec. 4-5; Abstract.

B. The claims
Illustrative claim 1 is reproduced below, with the language at issue in
italics:
1. An acoustic waveguide, comprising:
a first control curve;
a second control curve;
a third control curve;
a fourth control curve; and
a continuous three-dimensional least-energy-surface coincident with
the first control curve, the second control curve, the third control curve and
the fourth control curve that intersect a circular throat end and a non-
elliptical closed control surface that defines a mouth.
(emphasis added).

1 The Specification defines a circle to be a species of an ellipse. Spec. 4. As
such, the non-elliptical mouth may not be circular in shape either.
Appeal 2009-003277
Application 10/046,404

4
ISSUE
The issue before us is whether one of ordinary skill could reasonably
determine the metes and bounds of the claims, which include the claim
language “least-energy-surface.”

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
Appellant’s Specification
1. A least-energy-surface may be a surface that passes
through the specified controlling geometry in a manner that
provides the minimum change in curvature when the rate of
change of local curvature change is integrated in the
mathematical sense (summed) over the entire surface.
Alternately, the least-energy-surface may be mathematically
one of the simplest equations representing the surface.
Typically, this may be represented by the lowest order
polynomial, or the factored expression with the least number of
poles and zeros that causes a surface to go through the curves.
The least-energy-surface in acoustic waveguide 100 is defined
by the upper vertical, lower vertical, left horizontal, and right
horizontal control curves 106, 108, 110 and 112 in addition to
the circular throat 102 and the closed control curve of the
mouth 104.
Spec. 7.
2. “The control curves rest in the horizontal and vertical planes and may
also be free of any discontinuities, i.e. they may be continuous curves.”
Spec. 6.
3. “Optimally, the minimization of mathematical discontinuities that
may appear as discontinuous edges, protrusions or steps located on the inner
surface of the acoustic waveguide 100 is sought.” Spec. 7.
Appeal 2009-003277
Application 10/046,404

5
4. “The acoustic waveguide surface may be made of a single continuous
piece of material or from multiple peaces of materials [sic: pieces of
material] that function as a continuous surface with minimal discontinuities
after assembly.” Spec. 9.

PRINCIPLES OF LAW
35 U.S.C. § 112, ¶ 2 requires that the specification of a
patent “conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the
applicant regards as his invention.” Because claims delineate
the patentee’s right to exclude, the patent statute requires that
the scope of the claims be sufficiently definite to inform the
public of the bounds of the protected invention, i.e., what
subject matter is covered by the exclusive rights of the patent.
Otherwise, competitors cannot avoid infringement, defeating
the public notice function of patent claims. (“[T]he primary
purpose of the requirement is ‘to guard against unreasonable
advantages to the patentee and disadvantages to others arising
from uncertainty as to their [respective] rights.’”) The Supreme
Court has stated that “[t]he statutory requirement of
particularity and distinctness in claims is met only when [the
claims] clearly distinguish what is claimed from what went
before in the art and clearly circumscribe what is foreclosed
from future enterprise.”
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir.
2008) (internal citations omitted).
[T]he patent drafter is in the best position to resolve the
ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in
litigation.
Id. at 1255.
Appeal 2009-003277
Application 10/046,404

6
“[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008).

ANALYSIS
“Before considering the rejections . . . , we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974). We must therefore initially determine the meaning of the claim term
“least-energy-surface,” which is present in each of independent claims 1, 7,
and 12-14. We conclude that the meaning of the term “least-energy-surface”
is not sufficiently clear to enable a person of ordinary skill in the art to
determine the metes and bounds of the appealed claims.
Appellant’s Specification states that “[t]he least-energy-surface in
acoustic waveguide 100 is defined by the upper vertical, lower vertical, left
horizontal, and right horizontal control curves 106, 108, 110 and 112 in
addition to the circular throat 102 and the closed control curve of the mouth
104.” FF 1. The Specification does not provide any express definition for
what constitutes a least-energy-surface, though. Rather, it merely recites
examples of what may constitute a least-energy-surface:
[(1)] A least-energy-surface may be a surface that passes
through the specified controlling geometry in a manner that
provides the minimum change in curvature when the rate of
change of local curvature change is integrated in the
mathematical sense (summed) over the entire surface. [(2)]
Alternately, the least-energy-surface may be mathematically
one of the simplest equations representing the surface.
Appeal 2009-003277
Application 10/046,404

7
Typically, this may be represented by the lowest order
polynomial, or the factored expression with the least number of
poles and zeros that causes a surface to go through the curves.
FF 1 (emphasis added).
The first example explains that a least-energy-surface may be a
surface passing through the control curves in a configuration such that the
truly minimal change in curvature is achieved. However, the second
example indicates that other surfaces, not possessing the truly minimal
energy, may also be deemed to be a least-energy-surface so long as they
merely satisfy any of the variously recited mathematical approximations of a
true least-energy-surface.
The presence of conflicting examples is problematic. It is completely
foreseeable that a candidate waveguide surface configuration does not
possess the truly minimal energy achievable, but does satisfy one of the
least-energy-surface criteria for one or more of the stated mathematical
approximations. In such a case, it would not be reasonably clear whether the
particular waveguide configuration would constitute a “least-energy-
surface” waveguide within the meaning of the claim. That is, it would not
be reasonably clear whether such a waveguide would infringe upon the
present claims.
Even more problematic is the fact that the Specification does not even
provide any objective standard for reasonably determining which
representative mathematical equations would constitute an approximation of
a least-energy-surface that is within the meaning of the claim. Rather, by
stating that “[t]ypically, this [approximation] may be represented by the
lowest order polynomial, or the factored expression with the least number of
poles and zeros that causes a surface to go through the curves” (FF 1
Appeal 2009-003277
Application 10/046,404

8
(emphasis added)), the Specification indicates that other mathematical
approximations, which are not disclosed by the Specification, may be used.
As such, even if one were to interpret the claim language broadly as
covering both (1) truly minimal least-energy-surfaces and also (2) mere
approximations of a least-energy-surface, one would still not be put on
reasonable notice of which approximations are intended to be included
within, or alternatively excluded from, the scope of the claims.
Various claims on appeal also raise an additional question regarding
the intended meaning of the claim term “least-energy-surface.” For
example, independent claims 1 and 12-14 more specifically recite “a
continuous three-dimensional least-energy-surface” (emphasis added). This
claim language is in contrast with that of independent claim 7, which merely
recites, “generating a least-energy-surface”—not a continuous least-energy-
surface. In contrast, claim 2 recites, “wherein the continuous three-
dimensional least-energy-surface [of claim 1] is free of discontinuities.”
Moreover, claim 8 recites, “where generating [the least-energy-surface of
claim 7] further comprises forming the least-energy-surface as a continuous
surface minimizing2 the formation of any discontinuities” (emphasis added).
The differences in the present claims’ language beg the question:
What is the difference between “a least-energy-surface” (claim 7); a “least-
energy-surface [formed] as a continuous surface minimizing the formation
of any discontinuities” (claim 8); “a continuous . . . least-energy-surface”
(claim 1); and a “continuous . . . least-energy-surface . . . free of

2 By employing the relative term “minimizing,” dependent claim 8 does not
necessarily require that the waveguide surface be completely free of
discontinuities.
Appeal 2009-003277
Application 10/046,404

9
discontinuities (claim 2)? Restated, what additional subject matter is
covered by a claim that merely recites “a least-energy-surface” without
further limiting that surface to also being “continuous” and/or “minimizing .
. . discontinuities”?
The Specification does state that “[t]he control curves rest in the
horizontal and vertical planes and may also be free of any discontinuities,
i.e. they may be continuous curves.” FF 2. As such, the term “continuous”
might mean “free of any discontinuities.” However, this definition is used
specifically for the two-dimensional control curves, not for the entire three-
dimensional waveguide surface. Also, the Specification further states,
“[o]ptimally, the minimization of mathematical discontinuities that may
appear as discontinuous edges, protrusion or steps located on the inner
surface of the acoustic waveguide 100 is sought [by the present invention].”
FF 3 (emphasis added). As such, a continuous waveguide surface might be
one in which the discontinuities are merely “minimized,” but not necessarily
eliminated.
But the Specification also states, “[t]he acoustic waveguide surface
may be made of a single continuous piece of material or from multiple
peaces of materials [sic: pieces of material] that function as a continuous
surface with minimal discontinuities after assembly.” FF 4. Reading the
Specification as a whole, then, it might be the case that a “least-energy-
surface” is a waveguide surface that generally has “minimal” discontinuities;
a “continuous . . . least-energy-surface” is one that has no discontinuities in
the control curves, but may have “minimal” discontinuities in other portions
(e.g., the boundaries between the top, sides, and bottom) of the waveguide
surface; and a “continuous . . . least-energy-surface . . . free of
Appeal 2009-003277
Application 10/046,404

10
discontinuities” might be one that has no discontinuities either in the regions
of the control curves or in the corners. Alternatively though, a “continuous .
. . least-energy-surface . . . free of discontinuities” may be a surface that has
“minimal” discontinuities at the multiple materials’ boundaries. Suffice it to
say, though, any interpretation applied to the noted terms would be purely
speculative at best.
To summarize, independent claims 1 and 12-14 each recite an
acoustic waveguide comprising, inter alia, a “least-energy-surface.”
Independent claim 7 similarly recites a method for creation of an acoustic
waveguide, comprising, inter alia, a “least-energy-surface.” Based upon
Appellant’s Specification and claims, one of ordinary skill in the art would
not be reasonably apprised of whether the subject matter covered by the
claims is limited to waveguides having no discontinuities, or alternatively
whether the claimed subject matter also covers waveguides having
“minimal” discontinuities. Also, assuming for the sake of argument that the
broader subject matter is also included within the claims’ scope, such an
artisan would also not be reasonably apprised of just how many
discontinuities constitute “minimal” discontinuities. Furthermore, and
irrespective of whether a least-energy-surface may include any
discontinuities, the claims also do not reasonably apprise such an artisan
whether the term “least-energy-surface” narrowly covers only those
waveguide configurations that possess the least energy possibly achievable,
or alternatively whether the claim term additionally covers configurations
that merely approximate a least-energy-surface. Assuming again for the
sake of argument that the term “least-energy-surface” also covers the
broader subject matter (configurations that merely approximate a least-
Appeal 2009-003277
Application 10/046,404

11
energy-surface), the artisan would likewise not know which approximations
are within the scope of the claim language.
For these reasons, the scope of claims 1, 7, and 12-14 is not
sufficiently definite to inform the public of the bounds of the protected
invention, i.e., what subject matter is covered by the exclusive rights of the
patent. Accordingly, we find that the ambiguities render claims 1, 7, and 12-
14 indefinite under 35 U.S.C. § 112, ¶ 2. We likewise find dependent claims
2-6, 8, 11, and 15-28 to be indefinite as well.

PRIOR ART REJECTION OF CLAIMS 1-8 AND 11-28
For the reasons expressed in this opinion, claims 1-8 and 11-28 are
indefinite. Therefore, the prior art rejections must fall, pro forma, because
they necessarily are based on speculative assumption as to the meaning of
the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should
be understood, however, that our decision to reverse the Examiner’s prior art
rejections of claims 1-8 and 11-28 is based solely on the indefiniteness of the
claimed subject matter and does not reflect on the adequacy of the prior art
evidence applied in support of the rejection of these claims.

CONCLUSION OF LAW
One of ordinary skill in the art could not reasonably determine the
metes and bounds of the appealed claims due to the claim language “least-
energy-surface.” Accordingly, the language of independent claims 1, 7, and
12-14, “least-energy-surface,” renders claims 1-8 and 11-28 indefinite under
35 U.S.C. § 112 ¶ 2.

Appeal 2009-003277
Application 10/046,404

12
DECISION
(1) We do not sustain the Examiner’s rejection with respect to all pending
claims on appeal. Therefore, the Examiner’s decision rejecting claims 1-8
and 11-28 is reversed.
(2) We reject claims 1-8 and 11-28 under 35 U.S.C. § 112 ¶ 2 as being
indefinite.
(3) Since we have entered a new ground of rejection, our decision is not a
final agency action.

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This regulation states “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
Furthermore 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 grounds 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.
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).

Appeal 2009-003277
Application 10/046,404

13
REVERSED
37 C.F.R. § 41.50(b)

babc

THE ECLIPSE GROUP LLP
10605 BALBOA BLVD., SUITE 300
GRANADA HILLS, CA 91344