Ex Parte Kilfeather et al

Patent Trial and Appeal BoardOct 31, 2012

10754492 (P.T.A.B. Oct. 31, 2012)

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. 10/754,492 01/12/2004 James B. Kilfeather SBTZ.0060003 8281 34611 7590 01/14/2013 LAW OFFICE OF DUANE S. KOBAYASHI P.O. Box 4160 Leesburg, VA 20177 EXAMINER MANCHO, RONNIE M ART UNIT PAPER NUMBER 3664 MAIL DATE DELIVERY MODE 01/14/2013 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 THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JAMES B. KILFEATHER and MARK C. SULLIVAN ____________ Appeal 2010-006666 Application 10/754,492 Technology Center 3600 ____________ Before CHARLES N GREENHUT, MICHAEL L. HOELTER and JAMES P. CALVE, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-006666 Application 10/754,492 2 STATEMENT OF THE CASE Appellants have filed a Request for Rehearing (hereafter “Req. Reh’g.”) dated Dec. 12, 2012, under 37 C.F.R. § 41.52 of the Decision on Appeal (“Decision”) mailed Nov. 1, 2012, regarding the rejection of claims 23 and 25-34. Appellants' representative presented oral argument on October 18, 2012. We do not modify our opinion. THE REQUEST FOR REHEARING Appellants seek rehearing as to whether “claims 23 and 25-34 are unpatentable under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement.” Req. Reh’g. 2. Appellants seek reconsideration based on the seemingly incorrect analysis found in the Decision at page 6 that [i]t is not clear that this disclosure would convey to a skilled artisan that Appellants had possession of a method for determining a location of a mobile terminal from only a single identified point anywhere within the area of interest, rather than only from a single point identified at the center of the area of interest. Req. Reh’g. 8. We address Appellants’ contention below. ANALYSIS A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing. 37 C.F.R. § 41.52(a)(1). Appeal 2010-006666 Application 10/754,492 3 Prior to reaching the crux of the matter before us in the Request, Appellants explain their invention focusing on the relationship of Appellants' claimed “area of interest” and “convergence zone area” and the prior manner of performing iterative least square calculation techniques using multiple points to locate a mobile terminal. Req. Reh’g 3-5. Both independent claims 23 and 29 each describe a method for determining the location of a mobile terminal wherein one step is the identification of a point within an area of interest and another is performing an iterative position calculation that uses “only said identified point” to ascertain the “current location of said mobile terminal.” The Examiner rejected both independent claims (and by extension all the dependent claims) under 35 U.S.C. § 112, first paragraph, for lack of written description. Ans. 3. With respect to claim 23, the Examiner identifies the limitation of “said iterative position calculation that uses only said identified point” and deems this to be “new matter because applicant's original disclosure does not have possession of the limitation.” Ans. 3. A similar finding by the Examiner is made with respect to claim 29. Ans. 4. Appellants identify paragraph [0068] of the Specification as providing the necessary support for the above limitation regarding the use of only a single point. App. Br. 15, see also Transcript of Oral Hearing 7:9-18, 11:14 to 12:4, 27:13-16 and 32:1 to 33:13. Paragraph [0068] reads in its entirety: It should be noted that if the area of interest is small enough (i.e., within the 20 guaranteed convergence zone), such as a very narrow satellite beam, an area or city covered by an aircraft platform, or a cellular tower coverage zone, then the additional range measurement and the screening process are unnecessary, and a unique solution will result from an initial estimate at the center of the area of interest. Appeal 2010-006666 Application 10/754,492 4 See also Req. Reh’g. 6. Upon review of the record presented, the majority opinion in the Decision sustained the Examiner’s written description rejection as expressed in the analysis at page 6 which Appellants now contend is incorrect. Req. Reh’g. 8. The full portion of the Decision objected to by Appellants is as follows: Appellants disclose that additional range measurements from a range or intersection curve "are unnecessary, and a unique solution will result from an initial estimate at the center of the area of interest" but the claims are not so limiting. Spec. para. [0068]. It is not clear that this disclosure would convey to a skilled artisan that Appellants had possession of a method for determining a location of a mobile terminal from only a single identified point anywhere within the area of interest, rather than only from a single point identified at the center of the area of interest. (Italics in original). Req. Reh’g 8. Appellants’ arguments in seeking this Rehearing are to the effect that “any point within the area of interest would then, by definition, converge to the actual location of the mobile terminal.” Req. Reh’g. 7. Paragraph [0068] relied on by Appellants is not so expansive in that paragraph [0068] discusses only the use of the center of the area of interest, not any other point therein. Other locations in Appellants’ Specification do discuss the use of non-center points within the area of interest, but these other discussions also employ the use of multiple points. Spec. paras. [0053], [0057] and [0060]-[0067]. Appellants do not explain how paragraph [0068] discloses the use of a point elsewhere (i.e., not the center point) within the area of interest without also triggering the use of multiple points as previously described. Appeal 2010-006666 Application 10/754,492 5 The Board looks to the law regarding the claiming of a genus (i.e., the use of a point anywhere in the area of interest) when only a species (i.e., the use of only the center of the area of interest) is disclosed. Our reviewing court has provided instruction that “a single species within a claimed genus may not be sufficient to support the patentability of the genus under Section 112, 1st para” and further that “merely drawing a fence around the outer limits of a purported genus is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.” Regents of the Univ. of Cal. v. Eli Lilly & Co, 119 F.3d 1559, 1567-69 (Fed. Cir. 1997). More recently, our reviewing court referenced this case stating that “we held in Eli Lilly that an adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010). Appellants do not persuade us that the disclosure of only a single species would be understood by one skilled in the art as the disclosure of the entire genus. Appellants further contend that “[a]s the area of interest is contained within the convergence zone area, by definition, any point within the area of interest that is used as an initial position point would converge to the actual location of the mobile terminal.” Req. Reh’g. 6. Appellants’ contention is not persuasive because the claims only require the area of interest be “smaller” than the convergence zone area. Further, support in the Specification for the area of interest being within the convergence zone area is only found at paragraph [0068] and one skilled in the art reading paragraph [0068] would understand that the arrangement of the area of interest being within the convergence zone is only a possibility (“if the area Appeal 2010-006666 Application 10/754,492 6 of interest is small enough (i.e., within the 20 guaranteed convergence zone)”). See Req. Reh’g. 6, 7; Decision 6. Even then, Appellants disclose only that “a unique solution will result from an initial estimate at the center of the area of interest.” Spec. 21, para. [0068]. As stated in the Decision at page 5, 35 U.S.C. Section 112, paragraph 1, requires that the “specification shall contain a written description of the invention.” Here, Appellants do not persuade us that one skilled in the art would understand from a reading of the written description, and paragraph [0068] in particular, that only a single point from anywhere within the area of interest may be employed to ascertain the current location of the mobile terminal. Accordingly, we are not persuaded that the Board misapprehended or overlooked matters previously presented by Appellants. Based on the record presented, Appellants’ Request has not persuaded us of error in sustaining the written description rejection of claims 23 and 25-34. ORDER Upon consideration of Appellants’ request for rehearing and for the reasons given, it is ordered that the decision affirming the rejection of claims 23 and 25-34 as failing to comply with the written description requirement shall not be modified. REHEARING DENIED mls