Ex Parte Cox et al

Patent Trial and Appeal BoardMay 9, 2013

10948870 (P.T.A.B. May. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark om"" 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. 101948,870 0912412004 James A. Cox FlOO2.l1346US02 3813 97149 7590 Maschoff Brennan 1389 Center Drive, Suite 300 Park City, UT 84098 05113/2013 EXAMINER SAYADIAN,HRAYR ARTD'NIT PAPER NUMBER 2814 0511312013 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): docket@mgiip.com info@mgiip.com PTOL-90A (Rev. (4107) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES A. COX and ROBERT A. MORGAN ____________ Appeal 2011-003526 Application 10/948,870 Technology Center 2800 ____________ Before JOHN A. JEFFERY, BARBARA A. BENOIT, and DAVID C. McKONE, Administrative Patent Judges. McKONE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection of claims 1-21, which constitute all the claims pending in this application. See App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We heard the appeal on May 2, 2013. We reverse. Appeal 2011-003526 Application 10/948,870 2 THE INVENTION Appellants’ invention relates to resonant reflectors for use with optoelectronic devices such as semiconductor photo detectors. See Spec. 3:2-6. Claim 1, which is illustrative of the invention, reads as follows: 1. An optical system, comprising: a first tunable detector; and a second tunable detector, each of the first and second tunable detectors including a guided-mode grating resonant reflector filter (“GMGRF”) configured such that the GMGRF for the first tunable detector is tuned to select a first optical wavelength and/or polarization, and the GMGRF for the second tunable detector is tuned to select a second optical wavelength and/or polarization. THE REJECTIONS Claims 1-21 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Cox I (US 6,055,262, issued Apr. 25, 2000). See Ans. 5. Claims 1-21 stand rejected under 35 U.S.C. § 102(c) as being abandoned. See Ans. 5; Feb. 12, 2009, Office Action at 4-9. Claims 1-21 stand rejected in view of In re Woodling, 210 F.2d 955 (CCPA 1954). See Ans. 6. The February 12, 2009, Office Action (at 9-10) also rejected claims 1- 21 for nonstatutory obviousness-type double patenting over Cox III (US 6,836,501 B2; issued Dec. 28, 2004; filed Apr. 12, 2002). However, Appellants have filed a terminal disclaimer to obviate this rejection. See Terminal Disclaimer filed Jan. 12, 2010; see also App. Br. 19. The Examiner does not repeat the rejection in the Answer. Accordingly, we Appeal 2011-003526 Application 10/948,870 3 presume that the Examiner has withdrawn the rejection in light of the terminal disclaimer. ISSUES The Examiner has rejected claims 1-21 under 35 U.S.C. § 102(b) as anticipated by Cox I. The instant application (Cox IV, filed Sept. 24, 2004) is a continuation of Cox III, which is a continuation-in-part of Cox II (now US 6,782,027 B2; issued Aug. 24, 2004; filed Dec. 29, 2000). Cox I issued before Cox II was filed; however, Cox I issued less than one year prior to the filing of Cox II. Appellants argue that Cox II, filed within § 102(b)’s one- year period, provides written description support for the currently pending claims of Cox IV, and hence the anticipation rejection is erroneous. See App. Br. 8-12; Reply Br. 5-8. As to the anticipation rejection, the issues presented by Appellants are: 1. Whether Cox II incorporates by reference Cox I’s disclosure in its entirety, thus providing written description support under 35 U.S.C. § 112, first paragraph, for first and second tunable detectors/receivers. See App. Br. 8-11. 2. Whether Cox II itself, without incorporation of Cox I, provides written description support under 35 U.S.C. § 112, first paragraph, for first and second tunable detectors/receivers. See App. Br. 11-12. Additionally, even if claims 1-21 have written description support in Cox II, the Examiner concludes that such claims have been abandoned and dedicated to the public. See Ans. 6. Cox II was never co-pending with Cox I. The claims of the instant application were not filed until September 24, Appeal 2011-003526 Application 10/948,870 4 2004, more than four years after Cox I issued. Here Appellants raise the additional issue: 3. Whether the Examiner erred in concluding that claims 1-21 are abandoned and dedicated to the public under 35 U.S.C. § 102(c) and In re Woodling, 210 F.2d 955 (CCPA 1954). See App. Br. 12-18. ANALYSIS REJECTION OF CLAIMS 1-21 UNDER 35 U.S.C. § 102(b) Incorporation by Reference The Examiner finds that none of Cox II, Cox III, and the present Specification discloses first and second tunable detectors, as recited in independent claim 1, or first and second optoelectronic receivers, as recited in independent claim 12. See Ans. 3-5. Appellants contend that Cox I discloses such detectors/receivers, and that Cox I is incorporated by reference, in its entirety, into Cox IV via Cox IV’s incorporation of Cox II. See App. Br. 9-11. Cox II includes the following incorporation by reference: One way to reduce the number of DBR mirror periods that are required is to replace some of the DBR mirror periods with a resonant reflector. Such a configuration is disclosed in U.S. Pat. No. 6,055,262, entitled “Resonant Reflector For Improved Optoelectronic Device Performance And Enhanced Applicability” [Cox I], which is incorporated herein by reference. Cox II, col. 2, ll. 34-40. Appellants argue that because this language does not expressly limit the scope of the incorporation, it is an incorporation of Cox I in its entirety. See App. Br. 9-10. Appellants further argue the “which” clause most naturally refers to the Cox I patent itself rather than the Appeal 2011-003526 Application 10/948,870 5 particular configuration disclosed in Cox I, and thus the grammar of the incorporation suggests that the entirety of Cox I is incorporated into Cox II. See App. Br. 10. The Examiner disagrees, concluding that Cox II does not indicate the subject matter from Cox I to be incorporated with the requisite “detailed particularity.” Ans. 4-5 (quoting Zenon Environmental, Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007)). According to the Examiner, if Appellants intended to incorporate the entirety of Cox I, they would have used language to that effect. See Ans. 8. Moreover, the Examiner concludes, the sentence preceding the incorporation (Cox II, col. 2, ll. 34-36) limits the incorporation to the discussion in Cox I that shows how to reduce the number of DBR mirrors, rather than the entire disclosure of Cox I. See Ans. 7-8. We agree with Appellants. In evaluating the scope of an incorporation by reference, which is a legal question, “the standard is whether one reasonably skilled in the art would understand the application as describing with sufficient particularity the material to be incorporated.” Harari v. Lee, 656 F.3d 1331, 1334 (Fed. Cir. 2011); but see Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (“To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.”). While there is some ambiguity in the language of Cox II’s incorporation, the better reading is that the “which” clause refers to the Cox I patent itself. Therefore, the incorporation is unqualified, and should be read to incorporate the entirety of Cox I. This is consistent with Harari, at 1335, in which the court concluded that the language “[t]he disclosures of the two Appeal 2011-003526 Application 10/948,870 6 applications are hereby incorporate[d] by reference” was “broad an unequivocal” and thus incorporated the disclosures in their entireties. The court distinguished this incorporation from an incorporation of “relevant portions of the disclosures,” which was held to be limited to the specifically referenced portions. Id. at 1335-36. We note also that the Federal Circuit held that the incorporation was in its entirety even though it “occurred during a discussion of” specific implementations in the reference to be incorporated. Id. at 1335. Thus, we do not agree with the Examiner that the placement of Cox II’s incorporation within a discussion of DBR mirrors limits the incorporation to Cox I’s discussion of DBR mirrors. Accordingly, we conclude that Cox I is incorporated in its entirety into Cox II. Because the Examiner based the determination of priority, and the resultant finding of anticipation, on the conclusion that Cox II’s incorporation of Cox I was limited, the § 102(b) anticipation rejection is erroneous. Therefore, we do not sustain the § 102(b) anticipation rejection. We note that we have no opinion as to whether the disclosure in Cox I is sufficient to provide § 112, first paragraph, written description support for first and second detectors/receivers. Written Description Support in Cox II Appellants argue that even if Cox I is not incorporated in its entirety, Cox II itself discloses first and second detectors/receivers. See App. Br. 11- 12. Specifically, Appellants argue that Cox II describes forming “a number of optoelectronic devices” including “one or more light receiving devices 192 and 194.” App. Br. 11 (quoting Cox II, col. 11, ll. 16-20 (emphasis omitted)). Appellants further argue that Cox II discloses a guided-mode Appeal 2011-003526 Application 10/948,870 7 grating resonant reflector filter (“GMGRF”) in the context of lasers, which would be “equally applicable to a photodetector.” App. Br. 11-12 (citing Cox II, col. 7, ll. 59-60; col. 11, ll. 45-64; col. 12, ll. 16-19); Reply Br. 6-8 (citing additional disclosure at Cox II, col. 4, ll. 17-52; col. 7, ll. 24-31). “[T]he test for sufficiency [of written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). To provide § 112, first paragraph, written description support, the Specification “must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed”; however, “a description that merely renders the invention obvious does not satisfy the requirement.” Id. at 1351-52. We agree with the Examiner’s finding that Cox II itself does not adequately describe first and second detectors/receivers as claimed in claims 1 and 12. Instead, Appellants point to disclosure in Cox II that would, at best, render such features obvious. REJECTION OF CLAIMS 1-21 UNDER 35 U.S.C. § 102(c) AND IN RE WOODLING The Examiner finds that even if Cox II provides written description support for the currently pending claims of Cox IV, the Cox IV claims were nevertheless abandoned under § 102(c) and dedicated to the public. See Ans. 5-6. While the Cox II patent was filed within one year of Cox I’s issuance, the claims pending now were first presented on the Cox IV application’s filing date of September 24, 2004, which is more than four Appeal 2011-003526 Application 10/948,870 8 years after Cox I issued. The Examiner finds that the facts here are consistent with those in In re Woodling, 210 F.2d 955 (CCPA 1954). In Woodling, a pending application was filed less than one year after a previous patent to Woodling issued. See id. at 956-57. However, the claims at issue were presented by amendment more than four years after the first Woodling patent issued. See id. at 957. According to the Woodling court, the instant process claims [were] not patentably distinct from the patented process claims; . . . they [were] based upon identical disclosures; and . . . there was no copendency between the patent and the application at bar. In light of those facts, Woodling’s failure to claim the involved subject matter by timely application for re-issue instead of waiting nearly four years to present claims thereto in a separate application, clearly constitute[d] dedication. Id. at 959. Like the applicant in Woodling, Appellants first filed the application to which they claim priority (Cox II) less than a year after their previous patent (Cox I) issued, but did not present the claims at issue until Cox IV was filed more than four years after Cox I’s issue date. See Ans. 6. Applying Woodling, the Examiner concluded that the subject matter of the pending claims was dedicated to the public. See Ans. 6; 9-13. Appellants contend that Woodling does not set forth the standard for abandonment, and in any case it has been overruled. See App. Br. 17-18. Instead, Appellants urge us to follow In re Gibbs, 437 F.2d 486 (CCPA 1971). See App. Br. 13-15. According to Appellants, the Examiner must show that Appellants intended to abandon the subject matter, any inference of intent to abandon is rebutted upon filing an application before a § 102(b) statutory bar arises (per Gibbs), and any continuation application claiming priority under 35 U.S.C. § 120 (along with the claims presented in it) is to be treated as filed before the statutory bar arises. See App. Br. 13-14. Appeal 2011-003526 Application 10/948,870 9 In Gibbs, the CCPA reversed a Board finding of abandonment in a case where applicants filed a patent application just shy of a year after the issuance of a patent to the same applicants. See Gibbs, 437 F.2d at 486. The CCPA explained that in such a case, where a patentee files, within the time period of § 102(b), another application claiming subject matter that could have been claimed in the earlier patent, and no other facts pertinent to abandonment are shown, “it would seem, upon this showing, that a finding in the inventor’s favor would be unavoidable.” Id. at 491. By filing the second application within the one-year time period, “appellants . . . rebutted the inference of dedication . . . .” Id. at 494. The Gibbs court specifically addressed Woodling, concluding that it is best read as a double patenting case and of “no value” on the dedication/abandonment issue; although it discusses dedication, “it is impossible to tell what either [the Woodling court] or the Patent Office considered was dedicated.” Gibbs, 437 F.2d at 493-94. To the extent that Woodling conflicts with the Gibbs court’s reasoning, the Woodling decision “may be taken as overruled.” Gibbs, 437 F.2d at 494. We agree with Appellants that Gibbs is controlling. Appellants’ filing of Cox II within one year from Cox I’s issuance rebuts any presumption that unclaimed material in Cox I was abandoned or dedicated, and the Examiner has not presented any other evidence to suggest abandonment. See Gibbs, 437 F.2d at 491; see also MPEP § 2134. The Examiner would distinguish Gibbs on the ground that the current Cox IV claims were not themselves presented within the one-year period following Cox I. See Ans. 9-10, 12-13. However, to the extent that Cox II provides written description support for the claims at issue here by Appeal 2011-003526 Application 10/948,870 10 incorporating Cox I as noted above, those claims are entitled to the benefit of Cox II’s filing date, which is within the one-year period following Cox I’s issuance. See 35 U.S.C. § 120 (2000): An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, . . . which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. The Examiner does not adequately explain why Appellants’ current claims should not be treated as filed on Cox II’s filing date, within the one-year period following the issuance of Cox I. The Examiner relies primarily on the factual similarity between Woodling and the instant case. See Ans. 6, 13. However, we conclude that, to the extent that Woodling supports a different treatment of later-filed claims claiming the benefit of an earlier-filed application, Gibbs has overruled Woodling. See Gibbs, 437 F.2d at 494. The Examiner asserts that Woodling was not overruled, and that the Gibbs court found nothing in Woodling that would have compelled a different result. See Ans. 11-12 (citing Gibbs, 437 F.2d at 494). However, as explained above, the Gibbs court treated Woodling as a double patenting case, and was otherwise unable to ascertain how dedication or abandonment was being applied. See Gibbs, 437 F.2d at 493-94. If Woodling is treated as a double patenting case, it does not conflict with Gibbs. If it is treated as a dedication/abandonment case, it does, and thus is overruled. Appeal 2011-003526 Application 10/948,870 11 In sum, we conclude that the Examiner erred in finding claims 1-21 abandoned or dedicated to the public. Accordingly, we do not sustain the rejections under § 102(c) and In re Woodling. ORDER The decision of the Examiner to reject claims 1-21 is reversed. REVERSED rwk