Simmonds Precision Products, Inc.

Patent Trials and Appeals Board

Aug 9, 2021

2020004405 (P.T.A.B. Aug. 9, 2021)

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.
15/603,126 05/23/2017 Tyler Arsenault 97651US01-U100-012873 1853
113529 7590 08/09/2021
Kinney & Lange, P.A.
312 South Third Street
Minneapolis, MN 55415
EXAMINER
LEE, HWA S
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
08/09/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPatDocket@kinney.com
amkoenck@kinney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TYLER ARSENAULT, PETER J. CARINI, and
DAVID H. CROWNE1
____________

Appeal 2020-004405
Application 15/603,126
Technology Center 2800
____________

Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to systems and methods for
determining wavelengths of light. E.g., Spec. ¶ 4; Claims 1, 13. Claim 1 is
reproduced below from page 12 (Claims Appendix) of the Appeal Brief:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Simmonds Precision Products, Inc. Appeal Br. 2.
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1. A system for determining a wavelength of a narrow-band light
beam, the system consisting of:
an optical filter having complementary transmission and
reflection coefficients within a predetermined band of
wavelengths inclusive of the wavelength of the narrow-band
light beam, each of the transmission and reflection coefficients
monotonically varying throughout the predetermined band of
wavelengths;
a first photodetector configured to detect amplitude of a first
portion of the narrowband light beam transmitted through the
optical filter, and to generate a first output signal indicative of
the detected amplitude of the first portion of the narrow-band
light beam transmitted through the optical filter;
a second photodetector configured to detect amplitude of a
second portion of the narrow-band light beam reflected by the
optical filter, and to generate a second output signal indicative of
the detected amplitude of the narrow-band light beam reflected
by the optical filter; and
a processor configured to determine, based on a ratio of the first
and second output signals, the wavelength of the narrow-band
light beam.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1–20 under 35 U.S.C. § 112(b) as indefinite. Final Act. 3.
2. Claims 11 and 12 under 35 U.S.C. § 112(a) as lacking enablement.
Final Act. 5.
3. Claims 11 and 12 under 35 U.S.C. § 112(a) for failure to comply
with the written description requirement. Final Act. 5.
4. Claims 2–20 under 35 U.S.C. § 112(b) as indefinite. Final Act. 6.
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ANALYSIS
Rejection 1
The Examiner determines that the following terms are functional
rather than structural and, therefore, that they constitute “means-plus-
function” terms that invoke 35 U.S.C. § 112(f): “filter” and “processor” in
claims 1 and 13, and “optical transmitter” in claim 10. Final Act. 2–3.2
Each claim on appeal includes one or more of those terms. See Appeal
Br. 12–16 (Claims Appendix). The Examiner determines that the
Specification does not sufficiently identify structure corresponding to the
recited functions and, therefore, that the claims are indefinite under
35 U.S.C. § 112(b). Final Act. 3–4.
“The standard [for determining whether a claim term invokes
§ 112(f)] is whether the words of the claim are understood by persons of
ordinary skill in the art to have a sufficiently definite meaning as the name
for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed.
Cir. 2015). There is a rebuttable presumption that a claim term that lacks the
word “means” does not invoke § 112(f). Id. at 1348–49.
As to each term identified by the Examiner, the Examiner determines
that the term is “highly generic and no evidence has been found that the
term[] ha[s] achieved recognition in the art to be the same of a structure for
performing the claimed function.” Final Act. 2 (emphasis in original). The
Appellant argues that each term has achieved “recognition in the art to be the

2 In the Final Action, the Examiner also identified the terms “sensor” and
“transducer” in claim 2 as invoking § 112(f). Final Act. 2. In the Answer,
however, the Examiner “agree[d] with the Appellant that th[o]se terms
should not be interpreted under 35 U.S.C. § 112(f).” Ans. 6.
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names of structures for performing the claimed function.” Appeal Br. 6.
We address each term below.
Filter. Claim 1 recites:
an optical filter having complementary transmission and
reflection coefficients within a predetermined band of
wavelengths inclusive of the wavelength of the narrow-band
light beam, each of the transmission and reflection coefficients
monotonically varying throughout the predetermined band of
wavelengths.
Appeal Br. 12 (Claims Appendix) (emphasis added).
The term “filter” does not include the word “means,” and, therefore,
there is a presumption that the term does not invoke § 112(f). See
Williamson, 792 F.3d at 1348–49. The Examiner’s analysis fails to rebut
that presumption. The language following the word “filter” does not appear
to be functional language but, rather, appears to specify structural
characteristics of the recited optical filter. The Examiner provides no
persuasive reason to believe that a person of ordinary skill in the art would
not understand the structure (or class of structures) implied by the term
“optical filter,” particularly in the context of an optical apparatus such as the
system for determining wavelength recited by claim 1, or that a person of
ordinary skill in the art would not understand the structure required by the
characteristics recited after the word “filter.”
The Examiner identifies no authority supporting the Examiner’s
position, and we note that, if anything, relevant authority indicates that the
term “filter” is a term that frequently connotes structure to those skilled in
the art. See, e.g., MPEP § 2181(I)(A) (“If persons of ordinary skill in the art
reading the specification understand the term to have a sufficiently definite
meaning as the name for the structure that performs the function, even when
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the term covers a broad class of structures or identifies the structures by their
function (e.g., ‘filters,’ ‘brakes,’ ‘clamp,’ ‘screwdriver,’ and ‘locks’)
35 U.S.C. § 112(f) will not apply.” (emphasis added) (quoting Personalized
Media Commc’ns, LLC v. ITC, 161 F.3d 696, 703 (Fed. Cir. 1998))).
On this record, the Examiner has not adequately established that the
term “filter” invokes § 112(f). Accordingly, the Examiner has not
established that the term “filter” renders any claim indefinite.
Processor. Claim 1 recites:
a processor configured to determine, based on a ratio of the first
and second output signals, the wavelength of the narrow-band
light beam.
Appeal Br. 12 (Claims Appendix).
The Appellant argues, with little elaboration, that the term “processor”
has “achieved recognition in the art to be the name of structure[] for
performing the claimed function,” and that a person of ordinary skill in the
art would understand a “processor” to be “any state machine capable of
executing coded instructions, which was known in the art at the time of the
filing.” Appeal Br. 6. The Appellant also argues that, even if the term
invokes § 112(f), the Specification discloses adequate structure for the term
because it discloses that the processor may be “a microprocessor, a
controller, a micro-controller,” or a variety of other circuitry. Id. at 7.
Those arguments are not persuasive of reversible error in the
rejection. The term “processor” does not include the word “means,” and,
therefore, there is a presumption that the term does not invoke § 112(f). See
Williamson, 792 F.3d at 1348–49. Prior to Williamson, there was a “strong”
presumption that a term does not invoke § 112(f) if the term does not use the
word “means.” 792 F.3d at 1349. However, even under the pre-Williamson
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“strong presumption” standard, expanded panels of the Board held on
several occasions that the term “processor” followed by recitation of a
specialized function invokes § 112(f). See, e.g., Ex Parte Lakalla, Appeal
2011-001526 (PTAB Mar. 13, 2013) (informative); Ex Parte Erol, Appeal
2011-001143 (PTAB Mar. 13, 2013) (informative); Ex Parte Smith, Appeal
2012-007631 (PTAB Mar. 14, 2013) (informative).
As in those expanded-panel cases, the term “processor” at issue in this
case appears to recite a specialized function to be performed by the
processor, and the Appellant has not asserted otherwise. Cf. In re Katz
Interactive Call Processing Pat. Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011)
(functions such as “processing,” “receiving,” and “storing” that can be
achieved by any general purpose computer without special programming do
not require disclosure of more structure than the general purpose processor
that performs those functions). The Appellant has not identified a
distinction between the term “processor” at issue in those cases and the term
“processor” at issue in this case. Nor has the Appellant identified any other
authority that might support the Appellant’s position concerning the term
“processor.” Given the evident similarity between use of the term
“processor” here and the use of the term “processor” in the expanded-panel
informative Board decisions cited above, we are not persuaded of reversible
error in the Examiner’s determination that the term “processor” in this case
invokes § 112(f). See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”)
We next consider whether the Specification discloses an algorithm
that transforms a general purpose processor into a special purpose processor
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that performs the recited functions. See Aristocrat Techs. Australia Pty Ltd.
v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); cf. Katz, 639
F.3d at 1316. The Examiner finds that the Specification does not disclose
algorithms sufficient to provide structure to the recited “processor.” E.g.,
Ans. 6; see also Advisory Action dated Feb. 27, 2019. In the Appeal Brief,
the Appellant does not assert that the Specification discloses the necessary
algorithms, and the Appellant did not file a Reply Brief. Thus, the Appellant
has provided no basis to reject the Examiner’s finding that the Specification
does not disclose algorithms sufficient to provide structure to the recited
“processor.” See Jung, 637 F.3d at 1365.
Accordingly, we are not persuaded of reversible error in the
Examiner’s determination that the term “processor” renders claim 1
indefinite. Because the Appellant presents no separate arguments as to
claims 2–20, which are subject to the same rejection, we likewise are not
persuaded of reversible error in the Examiner’s determination that those
claims are indefinite. See 37 C.F.R. § 41.37(c)(1)(iv).
Optical transmitter. Claim 10 recites:
an optical transmitter configured to transmit light having less
than ten percent of its energy from light of wavelengths outside
of the predetermined band of wavelengths.
Appeal Br. 12 (Claims Appendix).
The term “optical transmitter” does not include the word “means,”
and, therefore, there is a presumption that the term does not invoke § 112(f).
See Williamson, 792 F.3d at 1348–49. The Examiner’s analysis fails to
persuasively establish that the term “optical transmitter” does not connote
adequate structure to a person of ordinary skill in the art. The language
following the word “transmitter” might be described as functional, but it
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implies a structural characteristic of the transmitter because it specifies
wavelengths transmitted by the transmitter. The Examiner provides no
persuasive reason to believe that a person of ordinary skill in the art would
not understand the structure (or class of structures) implied by the term
“optical transmitter,” particularly in the context of an optical apparatus such
as the system for determining wavelength recited by claim 10.
The Examiner seems to acknowledge that the term “optical
transmitter” is recognized in the art as a structure that “convert[s] an
electrical signal into an optical form.” Ans. 7. The Examiner, however,
determines that the optical transmitter of claim 10 actually “performs the
function of . . . an optical passband filter” because claim 10 specifies that
only certain wavelengths are transmitted. Id. However, the Examiner
provides no persuasive reason to believe that, for a structure to qualify as an
“optical transmitter,” it cannot be limited in the wavelengths that it
transmits. See Appeal Br. 6 (arguing that “a person of ordinary skill in the
art would understand that the recited limitation of ‘optical transmitter’ refers
to the entire gamut of devices capable of generating an optical signal within
the narrow band of frequencies in which the optical filter is operative”).
As with the term “filter,” discussed above, the Examiner identifies no
specific authority supporting the Examiner’s position. On this record, the
Examiner has not overcome the presumption that the disputed term does not
invoke § 112(f) because it lacks the word “means.” Accordingly, the
Examiner has not established that the term “optical transmitter” renders any
claim indefinite.
In summary, the Appellant has not identified reversible error in the
Examiner’s determination that the term “processor” invokes § 112(f) and
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renders claims 1–20 indefinite under § 112(b). Accordingly, we sustain the
§ 112(b) rejection of claims 1–20 on that basis. However, as set forth above,
we do not sustain the Examiner’s § 112(b) rejections on the basis of the
terms “filter” or “optical transmitter.”
Rejections 2 and 3
The Appellant argues Rejections 2 and 3 as a group. See Appeal
Br. 9–10. Claims 11 and 12 depend from claim 1 and recite “fast
photodiodes”3 that have specific sampling rates of “at least 100 ksps” (claim
11) and “at least 1 Msps” (claim 12).
As to Rejection 2, the Examiner finds that the Specification is not
enabling of photodiodes having sampling rates of “the entire range claimed
(i.e. fast photodiodes that did not exist) such as in high 100’s GSPS and
higher.” Final Act. 5. The Examiner explains that the claim language
literally “covers speeds much higher include that approaching infinity,” but
does not enable photodiodes with such high sampling rates. Id.
As to Rejection 3, the Examiner finds that, because the Specification
does not enable the disputed subject matter, “the specification also does not
show [that] the inventor possessed” the disputed subject matter. Id. at 6.
The Appellant argues that, because claims 11 and 12 are necessarily
narrower than claim 1 from which they depend, and because “claim 1 recites
no upper (or lower) bound to the operating speed of the recited
‘photodetector,’” it is inconsistent and inappropriate for the Examiner to

3 In the event of further examination of the application on appeal, the
Appellant and the Examiner may wish to consider whether the term “first
and second photodiodes” has antecedent basis. Claims 11 and 12 depend
from claim 1, and the term “photodiode” does not appear in claim 1.
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reject claims 11 and 12 as violating § 112(a) absent a corresponding
rejection for claim 1. Appeal Br. 9–10.
In the Answer, the Examiner responds that “claims 11 and 12 are not
narrower in scope than claim 1.” Ans. 8.
The Examiner has not persuasively established that claims 11 and 12
lack enablement or written description support. “Because a patent
specification must enable the full scope of a claimed invention, an
enablement inquiry typically begins with a construction of the claims.” AK
Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1241 (Fed. Cir. 2003).
Claim 1, from which claims 11 and 12 depend, provides no express
limitation as to the sampling rate of its photodetectors (which, we
understand, correspond to the “photodiodes” of claims 11 and 12). See
Appeal Br. 12; see also supra footnote 3. The Examiner does not reject
claim 1 for lack of enablement, suggesting that the Examiner believes that a
person of ordinary skill in the art would not have understood the term
“photodetector” in claim 1 to encompass photodetectors with impossibly
high sampling rates. The Examiner, however, interprets claims 11 and 12 to
encompass photodetectors with impossibly high sampling rates due to use of
the words “at least.” Final Act. 5–6.
On this record, the Examiner’s interpretation of claims 11 and 12 is
unreasonably broad. “[D]ependent claims are presumed to be of narrower
scope than the independent claims from which they depend.” AK Steel, 344
F.3d at 1242; see also 35 U.S.C. § 112(d) (“A claim in dependent form shall
be construed to incorporate by reference all the limitations of the claim to
which it refers.”). If claim 1 does not encompass impossibly high sampling
rates, then the words “at least” in claims 11 and 12 should not be interpreted
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as expanding the scope of claims 11 and 12 beyond that of claim 1; rather,
the words “at least” should merely be interpreted as setting a floor (i.e., a
minimum sampling rate necessary to fall within the scope of the claim). The
Examiner provides no persuasive basis to believe that claims 11 and 12
should be interpreted as covering, impossibly high sampling rates.
We acknowledge that there is some legal support for the Examiner’s
position. In MagSil Corp. v. Hitachi Glob. Storage Techs., Inc., the Federal
Circuit affirmed a district court’s determination that a claim reciting a
change in resistance of “at least 10%” lacked enablement because the claim
had no upper boundary and the “specification only discloses enough
information to achieve” a maximum change of 11.8%. 687 F.3d 1377,
1381–83 (Fed. Cir. 2012). In that case, however, the claim at issue was an
independent claim and, therefore, did not carry with it a presumption of
being narrower than an independent claim. Here, we agree with the
Examiner that it is not reasonable to interpret independent claim 1 as
encompassing photodetectors with nonenabled, impossibly high sampling
rates, and we agree with the Appellant that it is likewise not reasonable to
interpret claims 11 and 12—which depend from claim 1—as encompassing
photodetectors with nonenabled, impossibly high sampling rates.
On this record, we are not persuaded that the Examiner has adequately
established that claims 11 and 12 lack enablement or fail to comply with the
written description requirement.
Rejection 4
Claims 2–20 depend from claim 1, and the Examiner finds that,
because the preamble of claim 1 is “consisting of,” the recitation of
“additional elements and/or steps” in claims 2–20 renders those claims
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indefinite4 because they purport to add limitations to a claim that is “closed.”
Final Act. 6.
The Appellant does not dispute the substance of the Examiner’s
rejection and instead states only that the Appellant may cancel certain claims
in the event of further prosecution. Appeal Br. 10.
Because the Appellant asserts no substantive error in Rejection 4, we
summarily affirm Rejection 4.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
1–20 112(b) Indefiniteness 1–20
11, 12 112(a) Enablement 11, 12
11, 12 112(a) Written Description 11, 12
2–20 112(b) Indefiniteness 2–20
Overall
Outcome 1–20
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

4 In the event of further examination of the application on appeal, the
Examiner and the Appellant may wish to consider whether the dependent
claims in this case also implicate 35 U.S.C. § 112(d) due to non-overlapping
subject matter. See Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291
(Fed. Cir. 2006) (“In other words, claim 6 does not narrow the scope of
claim 2; instead, the two claims deal with non-overlapping subject matter.”).