Ex Parte Finley

Patent Trial and Appeal Board

Sep 21, 2018

14069617 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/069,617 11/01/2013
63893 7590
DOUGLAS J. VISNIUS
18024 Falcon Green Court
ORLANDO, FL 32820-2712
09/25/2018
FIRST NAMED INVENTOR
Michael Cain Finley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MCF3US2 3399
EXAMINER
SUGARMAN, SCOTT J
ART UNIT PAPER NUMBER
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
apexmasterworks@gmail.com
sfnlhafnap@yahoo.com
dvisnius@bellsouth.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL CAIN FINLEY
Appeal2017-008796
Application 14/069,617 1
Technology Center 2800
Before JEFFREY T. SMITH, DONNA M. PRAISS
and DEBRA L. DENNETT, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
1 Michael Cain Finley is the applicant and real party in interest. See App.
Br. 1.
Appeal2017-008796
Application 14/069,617
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5 and 7-12. We have jurisdiction under 35 U.S.C. § 6(b ).
Appellant's invention is directed to the field of light control systems,
and particularly to the areas of light control through lens design. (Spec. ,r 2).
Claims 1 and 10 are illustrative of the subject matter on appeal and are
reproduced below:
1. A light control system comprising:
a lens;
a first portion carried by the lens to filter a first polarized
light;
a first central region within the first portion;
a second portion carried by the lens to filter a second
polarized light that is not orthogonal or parallel to the first
polarized light; and
a second central region within the second portion;
the first portion not substantially in series with the second
portion, the first central region not substantially in series with the
second central region, and the first portion and the second portion
are positioned on the lens based upon improving a user's non-
foveal retinal portion activity.
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Application 14/069,617
10. A method for light control comprising:
positioning a first portion of a lens to not be substantially
in series with a second portion;
filtering a first polarized light with the first portion; and
filtering a second polarized light with the second portion
that is not orthogonal or parallel to the first polarized light; and
positionably mounting the first portion with respect to the
second portion ..
The following rejections are presented for our review.
I. Claims 1, 3, 4, 10, and 11 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. Claims 1, 3, and 11 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. 2
III. Claims 10-12 are rejected under 35 U.S.C. § I02(b) as anticipated by
Biver et al. (US 2008/0252846 Al, published Oct. 16, 2008).
IV. Claims 1-3, 5, 8, and 9 are rejected under 35 U.S.C. § I03(a) as
obvious over Biver.
V. Claims 1-5 and 7-9 are rejected under 35 U.S.C. § I03(a) as obvious
over Giraudet (US 2007/0146574 Al, published June 28, 2007).
2 The Examiner in the final rejection indicated that claim 7 was rejected as
indefinite because it depended on canceled claim 6. However, Appellant
filed an amendment prior to the final action correcting this deficiency. The
rejection was not repeated in the Answer.
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Application 14/069,617
OPINION
Rejections under 35 USC§ 112,first paragraph
(written description)
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph, is whether the disclosure of
the application as originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject matter. In re
Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The Examiner bears the
initial burden of establishing that the original application disclosure as a
whole would not have reasonably conveyed to those skilled in the art that the
inventors had possession of the claimed subject matter at the time the instant
application was filed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane); In re Alton, 76 F.3d 1168, 1172, 1175-76
(Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262-64 (CCPA
1976)); In re Wright, 866 F.2d 422,425 (Fed. Cir. 1989).
Claims 1 and 11
The Examiner determines the original application disclosure as filed
does not reasonably conveyed to those skilled in the art that the inventors
had possession of improving a user's non-foveal retinal portion activity and
positioning the first portion and the second portion on the lens based upon
improving a user's non-foveal retinal. The Examiner specifically states:
Claims 1 and 11 recite, respectively, " ... and the first
portion and the second portion are positioned on the lens based
upon improving a user's non-foveal retinal portion activity ... "
and" ... positioning the first portion and the second portion on
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Application 14/069,617
the lens based upon improving a user's non-foveal retinal
portion activity ... ", [ emphasis added]. Although in paragraph
[0047] there is language that states that" ... these non-foveal
portions of the retina escalate activity to the brain ... ", there is
nothing in the specification as filed that states that the non-
foveal retinal portion activity is improved as required by the
claim.
(Final Act. 2-3) (original emphasis omitted).
Appellant argues Specification, paragraph 48, provides written
descriptive support of the claimed invention. (App. Br. 5---6). Appellant
specifically argues:
[O]ne skilled in the art would understand that if
peripheral glare is reduced or eliminated, [then] non-foveal
retinal portion activity will be improved because the
"hypothetical 'person having ordinary skill in the art' to which
the claimed subject matter pertains would, of necessity have the
capability of understanding the scientific and engineering
principles applicable to the pertinent art." Ex parte Hiyamizu,
10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988).
(App. Br. 6).
Appellant also argues "[t]here are no reasons provided in the rejection
as to why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims and therefore the prima
facie case fails and claims 1 and 11 are patentable." (App. Br. 6). Appellant
substantially repeats the above arguments in the Reply Brief. (Reply Br. 5-
6).
Appellant's arguments and evidence lack persuasive merit. We agree
with the Examiner that the present record does not adequately indicate what
Appellant considered to be the "improvement". Specification, paragraph 48,
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merely discloses the system "allows the brain to get attention signals from
regions that would previously be saturated by glare." We agree with the
Examiner that the claim language "improving in a user's non-foveal renal
portion activities" is broader than what is provided for in the original
Specification. (Answer 2-3).
Claim 3
The Examiner also finds that claim 3 is not adequately described by
the original Specification. The Examiner specifically determinesthe
Specification does not provide support for "the first portion comprises a
plurality of first portions and the second portion comprises a plurality of
second portions." (Final Act. 3).
Appellant argues Specification, paragraphs 55-61, describes the
claimed invention in sufficient detail to establish the inventor had possession
of the claimed invention that one skilled in the art. (App. Br. 7-8).
Appellant's arguments are not persuasive of reversible error. The
Examiner properly points out that the problem with Appellant's
interpretation is that there is no clear delineation of where one portion begins
and another ends amongst the plurality of portions. Therefore, the
continuous variations of polarization does not show possession of a plurality
of first portions and a plurality of second portions as recited in claim 3.
(Ans. 3).
Claims 1, 4, 10, and 11
The Examiner also finds that claims 1, 4, 10, and 11 are not
adequately described by the original Specification because the term
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"rotatably mounted" is described in the Specification however this
description does not provide support for the broader terms positioned,
positioning, positionable, and positionably. The Examiner reasons that
something can be positioned without being rotated. (Final Act. 3).
It is well-settled that "the 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, 598 F.3d at 1351. To show
possession, "the specification must describe an invention understandable to
[the] skilled artisan and show that the inventor actually invented the
invention claimed." Id. at 13 51. Nevertheless, "the description requirement
does not demand any particular form of disclosure ... or that the
specification recite the claimed invention in haec verba .... " Id. at 1352
(internal citations omitted).
Applying this test, we agree with Appellant that the Examiner's
rejection is not well-founded. Appellant points out and the Examiner has not
disputed that rotating is a type of positioning. (App. Br. 9).
We agree with Appellant that the Specification provides descriptive
support for the terms positioned, positioning, positionable, and positionably.
In sum the rejection of claims 1, 3, and 11 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
affirmed and the rejection of claims 4 and 10 under 35 U.S.C. § 112, first
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paragraph, as failing to comply with the written description requirement is
reversed.
Rejections under 35 US.C. § 112, second paragraph
We AFFIRM.
The second paragraph of 35 U.S.C. § 112 requires the specification
"conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention."
35 U.S.C. § 112 ,r 2 (2011). "As the statutory language of 'particular[ity]'
and 'distinct[ ness]' indicates, claims are required to be cast in clear-as
opposed to ambiguous, vague, indefinite-terms." In re Packard, 751 F.3d
1307, 1313 (Fed. Cir. 2014). Exact precision is not required. The test for
determining the question of indefiniteness may be formulated as whether the
claims "set out and circumscribe a particular area with a reasonable degree
of precision and particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA
1971 ). With regard to the reasonableness standard, one must consider the
language in the context of the circumstances. Packard, 751 F.3d at 1313.
Language is an imprecise method of drawing boundaries delineating patent
rights, thus unreasonable precision cannot be demanded. Id. On the other
hand, the claims must notify the public of what they are excluded from
making and using. Id. For this reason, an applicant is required to use
language as precise as the subject matter reasonably permits. Id.
Claims 1 and 11
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The Examiner finds it is not clear where the portions are situated with
respect to the retina to provide this escalated activity as required by claims 1
and 11. According to the Examiner, Figures 10, 11, 12, and 14 exhibit a
variety of polarizing portions both central and peripheral. (Final Act. 4).
Appellant argues the claims are not indefinite because:
[T]he claims recite the problem/solution of [specification]
paragraph [0048] as "the first portion and the second portion are
positioned on the lens based upon improving a user's non-
foveal retinal portion activity," so the specification describes
the claimed invention in sufficient detail that one skilled in the
art would understand what is claimed when the claim is read in
light of the specification where the "hypothetical 'person
having ordinary skill in the art' to which the claimed subject
matter pertains would, of necessity have the capability of
understanding the scientific and engineering principles
applicable to the pertinent art;" Ex parte Hiyamizu, 10 USPQ2d
1393, 1394 (Bd. Pat. App. & Inter. 1988). In other words, one
skilled in the art would know where the retina was and where
the portions are situated with respect to the retina based upon
the specification in order to improve a user's non-foveal retinal
portion activity. Additionally, for example, Figs. 7-9 and
paragraphs [0041 ]-[0048] further defines the physical
embodiment as part of the problem/solution of paragraph
[0048], which are recited as the elements of Claim 1.
(App. Br. 12-13).
We agree with the Examiner that the claimed subject matter is
indefinite. As restated above, Appellant argues the claimed subject matter
recites the problem/solution of specification paragraph [0048]. Claim 1
specifies "the first portion and the second portion are positioned on the lens
based upon improving a user's non-foveal retinal portion activity," and
claim 11 specifies "positioning the first portion and the second portion on
the lens based upon improving a user's non-foveal retinal portion activity."
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Claims 1 and 11 attempt to claim the position of the first and second
portions on the lens in relation to an individual user. Specification
paragraph 52 specifically states:
For instance, depending on the position of the light source, the
angle at which incident glare in the central region of view is
polarized will be altered, relative to the viewer. In this case,
independent optimization by rotating the polarized material
within the glasses frame until an optimal amount of glare is
absorbed in the direction of observation can be achieved. By
allowing each lens to be independently optimized, or coupling
them together ( mechanically or otherwise), the wearer's
specific preference for improved absorption or simplicity of
adjustment can be implemented.
The claimed invention relies upon the individual user's retina/fovea location
to determine the areas having "non-foveal retinal portion activity." The
present claims are indefinite because they not only rely on the position of the
light source, but also rely on retina/fovea location to determine the "non-
foveal retinal portion activity" which can vary based on the particular user.
See, e.g., Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) (precedential)
and Ex parte Brummer, 12 USPQ2d 1653 (BPAI 1989).
Claim 3
The Examiner finds claim 3 is indefinite because it is not clear what
the distinctions are between "the (first or second) portion" and "the plurality
of portions" used in the same claim ( claim 3).
Appellant argues claim 3 is not indefinite because Specification
paragraphs 54, 55, and 57 specifically address plurality of portions. (App.
Br. 12-13).
Appellant has not adequately addressed the Examiner's rejection. A
review of the portions of the Specification identified by Appellant does not
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reveal the distinctions are between "the ( first or second) portion" and "the
plurality of portions." Specification paragraphs 54, 55 and 57 provide a
discussion of varying the polarization patterns based on the specific use,
such as driving, snow activities, or water activities. This discussion does not
provide guidance as to what constitutes the distinctions between the first and
second portions.
Rejection under 35 USC§ 102
We AFFIRM.
Appellant argues the claimed invention is not anticipated because
Biver has a fixed configuration with no possibility of the positioning
changing over time as shown in Fig. 6. (App. Br. 15-16).
Appellant's arguments are not persuasive of reversible error. We
agree with the Examiner that Biver meets the claimed invention. (Ans. 5-6).
Biver describes Figure 6 as follows:
FIG. 6 represents a polarizing ophthalmic lens
comprising two peripheral zones (2a) associated with polarizing
filters that are oriented vertically relative to the usage position
of the lens and that are positioned adjacent a third zone (2b)
associated with a polarizing filter that is oriented horizontally
and located in the upper central part of the lens, and a fourth
zone that has an oblique polarizing filter (2c) located in the
lower part of the lens.
(Biver ,r 53). Biver Figure 6 depicts polarized lens portions 2a are not
substantially in series with polarized lens portions 2b and 2c. The
arrangement depicted in Figure 6 indicates the lens portion 2a are positioned
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to be mounted with respect to polarized lens portions 2b and 2c. We do not
agree with Appellant that the claims require the positioning changing over
time.
Rejections under 35 USC§ 103
We REVERSE.
We reverse the outstanding rejections under 35 U.S.C. § 103 because
the subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. Presently, speculation and
conjecture must be utilized by us and by the artisan inasmuch as the claims
on appeal do not adequately reflect what the disclosed invention is. Note In
re Steele, 305 F.2d 859, 862 (CCPA 1962). Note also In re Wilson, 424
F.2d 1382, 1385 (CCP A 1970). This constitutes a formal reversal of the art
rejections because above we determine the metes and bounds of independent
claim 1 are undiscemible under the second paragraph of 35 U.S.C. § 112.
This constitutes a formal reversal only in that with properly presented claims
that meet the requirements of the second paragraph of 35 U.S.C. § 112, the
rejections of record may still be pertinent.
ORDER
The rejection of claims 1, 3 and 11 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
affirmed.
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The rejection of claims 4 and 10 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The rejection of claims 1, 3, and 11 under 35 U.S.C. § 112, second
paragraph, as indefinite is affirmed.
The rejection of claims 10-12 under 35 U.S.C. § 102(b) as anticipated
by over Biver is affirmed.
The rejection of claims 1-3, 5, 8, and 9 under 35 U.S.C. § 103(a) as
obvious over Biver is reversed.
The rejection of claims 1-5 and 7-9 under 35 U.S.C. § 103(a) as
obvious over Giraudet is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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