Ex Parte Farina et al

Patent Trial and Appeal BoardNov 25, 2014

95001578 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,578 04/19/2011 Dino J Farina 3028-0039 5314 32361 7590 11/26/2014 GREENBERG TRAURIG (NY) MET LIFE BUILDING 200 PARK AVENUE NEW YORK, NY 10166 EXAMINER DEB, ANJAN K ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 11/26/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ INNOVASYSTEMS, INC. Third Party Requester and Respondent v. PROVERIS SCIENTIFIC CORPORATION Patent Owner and Appellant ____________ Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 Technology Center 3900 ____________ Before KEVIN F. TURNER, STEPHEN C. SIU, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON REHEARING In the Decision on Appeal dated January 31, 2014 (“Decision”), we affirmed rejections of claims 3–15. Patent Owner requests rehearing of this decision under 37 C.F.R. § 41.79. Request for Rehearing (“Request”) dated February 28, 2014.1 1 Requestor responds to the Request. See Respondent’s Response to Request for Rehearing (“TPR Rehear. Resp.”) dated March 28, 2014. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 2 Patent Owner contends the Board misapprehended or overlooked the preamble of claim 3, particularly in view of the Federal Circuit decision, Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367 (Fed. Cir. 2014). As such, Patent Owner requests reconsideration of our construction of the claimed “an illuminator for providing an illumination of the spray plume along at least one geometric plane that intersects the spray plume” in view of the preamble of claim 3. Request 1. Although the Decision did not discuss the preamble expressly, it was considered and we find Patent Owner’s arguments unpersuasive as further explained below. Patent Owner asserts that the failure to consider the preamble of claim 3 resulted in an inconsistent construction for the claimed illuminator. Request 1. Namely, according to Patent Owner, construing that the illumination along at least one geometric plane means illumination along one or more geometric plane is inconsistent with the preamble’s phrase along a geometric plane, i.e. only one geometric plane. See Request 5 (“the preamble phrase ‘each of the images being representative of a density characteristic of the spray plume (1) along a geometric plane that intersects the spray plume’ refers to only one ‘geometric plane.’”). We disagree. Patent Owner here essentially presents the already rejected argument that “a” should be construed as only one. See Decision 15–16 (rejecting the Patent Owner’s argument that the recited an interaction is limited to only one interaction); see also TPR Rehear. Resp. 5–6. While the Patent Owner additionally notes that “a geometric plane” in the preamble precedes the open-ended, transitional phrase comprising, we are not Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 3 persuaded, in this instance, that “a geometric plane” should be limited to only one geometric plane. Namely, we find Patent Owner’s reliance on Norian Corp. v. Stryker Corp., 432 F.3d 1356 (2005) is misplaced. See Request 5–7. As Requestor points one, the Federal Circuit, in particular considers use of the transitional phrase “consisting of” preceding the use of the article “a”. Norian, 432 F.3d at 1359; see also TPR Rehear. Req. 6. The Federal Circuit also notes that both the Specification and prosecution history support the narrow interpretation. See e.g., Norian, 432 F.3d at 1359 (“each of the solutions described in the specification uses only a single solute, and the specification makes no reference to using a mixture of multiple solutes in a single solution” and noting that “Norian amended the critical claim language by replacing the words ‘a sodium phosphate solution’ with the words ‘a solution consisting of water and a sodium phosphate.’). In contrast here, the Specification supports simultaneously illuminating two geometric planes and acquiring image data for those illuminated portions. See Decision, FF7; see also ’400 Patent, col. 4, ll. 39-45. Patent Owner further attempts to support its contention by emphasizing that there is [a]n exception to the general rule that “a” or “an” means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule .... Request 5 (quoting and underlining, in part, Baldwin. Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342-1343 (Fed. Cir. 2008)). Notably though, Patent Owner fails to persuasively explain how the specification or Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 4 prosecution history here warrants application of this exception. See Request 5–7. Patent Owner also appears to urge that the language “each image” supports limiting a geometric plane to only one geometric plane. Request 5. This argument lacks merit. As the Requestor points out, each image refers to each image of the recited at least one sequential set of images. TPR Rehear. Resp. 6–7. Nothing in the claim language precludes that each particular image must be limited to only one geometric plane. Moreover, the body of the claim suggests otherwise. Namely, reciting “at least one geometric plane” expressly suggests illumination, and image data of the interaction, with one or more geometric planes. We find Patent Owner’s remaining arguments unavailing. For example, we disagree that the preamble limits claim 3 to a specific embodiment. As discussed in the Decision, the Specification may only depict in the Figures illuminating one geometric plane at a time, but the Specification describes simultaneously or sequentially illuminating the spray axis and traverse to the spray axis.2 This is consistent with the claim language of illuminating at least one, i.e. one or more geometric planes. Finally, Patent Owner asserts that the following statement is inconsistent and should be reconsidered: 2 Patent Owner takes issue with the characterization that the Specification identifies simultaneously illuminating “at least two geometric planes.” See Request 4. According to the Patent Owner, the Specification describes, illuminating, at most, two geometric planes. Request 4. We recognize that the Specification describes simultaneously illuminating two geometric planes, but note that nothing in the Specification suggests the simultaneous illumination is limited to only two geometric planes. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 5 Claim 3 requires at least one, i.e. one or more, sequential set of images of a spray plume where the illumination was along at least one, i.e. one or more, geometric plane. This language expressly permits the claim to include more than one sequential set of images where illumination is along more than one geometric plane, regardless of timing. Therefore, we are not persuaded that “along at least one geometric plane” means one geometric plane at a time. Request 8.3 For the reasons discussed above and in the Decision, we are not persuaded that we erred in rejecting Patent Owner’s construction that “along at least one geometric plane” means one geometric plane at a time. The subject Request has been granted to the extent that the Decision has been reconsidered, but is denied with respect to making any changes therein. 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). Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. DENIED 3 We note that this statement was in response to Patent Owner’s argument that claim 5, which recites a first and second time-sequential set of images corresponding to a first and second geometric plane, respectively, warrants limiting the “at least one geometric plane” recited in claim 3 to illuminating one geometric plane at a time. Specifically, the Decision was pointing out that claim 3, being broader than claim 5, does not include the first or second time-sequential limitations. Appeal 2013-007392 Reexamination Control 95/001,578 Patent 6,785,400 B1 6 PATENT OWNER: GREENBERG TRAURIG MET LIFE BUILDING 200 PARK AVENUE NEW YORK, NY 10166 THIRD-PARTY REQUESTER: KENEALY VAIDYA LLP 515 EAST BRADDOCK RD. ALEXANDRIA, VA 22314