Ex Parte Masters

Patent Trial and Appeal BoardJan 13, 2014

10385587 (P.T.A.B. Jan. 13, 2014)

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. 10/385,587 03/11/2003 Martin W. Masters 2003P03227US 5054 7590 01/14/2014 Elsa Keller Siemens Corporation Intellectual Property Department 170 Wood Avenue South Iselin, NJ 08830 EXAMINER SMITH, PHILIP ROBERT ART UNIT PAPER NUMBER 3779 MAIL DATE DELIVERY MODE 01/14/2014 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 THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MARTIN W. MASTERS 1 ________________ Appeal 2012-005411 Application 10/385,587 Technology Center 3700 ________________ Before ERIC B. GRIMES, JOHN G. NEW, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 The Real Party-in-Interest is Siemens Hearing Instruments, Inc., Piscataway, NJ. App. Br. 1. Appeal 2012-005411 Application 10/385,587 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-6, 16, 19, and 20. Specifically, claims 1-6, 16, 19, and 20 stand rejected as unpatentable under 35 U.S.C. § 112 (second paragraph) as being indefinite.2 Claims 1-5 and 16 also stand rejected under 35 U.S.C. § 102(a) as being anticipated by Izatt et al. (US 2003/0004412 Al, January 2, 2003) (“Izatt”). Claim 6 stands rejected under 35 U.S.C. § 103(a) as being obvious over Izatt. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. NATURE OF THE CLAIMED INVENTION Appellant’s claimed invention is drawn to a distance measuring or imaging assembly positioned in a lumen of fixed, known geometry and size that can provide data sufficient to determine the three-dimensional geometry and dimensions of an object such as an ear canal. The lumen’s geometry and dimensions may be predetermined or measured by measuring or imaging an object of known geometry and dimensions. Abstract. 2 The Examiner also rejected claims 1-6, 16, and 20 as unpatentable under 35 U.S.C. § 112 (first paragraph) but has since withdrawn that rejection. Ans. 10. Appeal 2012-005411 Application 10/385,587 3 GROUPING OF CLAIMS Because Appellant makes the same arguments for claims 1-6, 16, 19, and 20, we select independent claim 1 as representative. App. Br. 9, 13-14. Claim 1 recites: 1. An apparatus, comprising: a conduit of optically-clear material, the conduit comprising at least one lumen of predetermined, and known, fixed three-dimensional geometry and dimensions; a distance-measuring or imaging assembly that travels axially within the lumen and performs measuring or imaging operations at two or more points within the lumen; and means for correlating the measuring or imaging operations with the position of the distance-measuring or imaging assembly within the lumen. ISSUES AND ANALYSES A. The Examiner’s Rejection of Claim 1 under 35 U.S.C. § 112 (second paragraph). Issue Appellant argues that the Examiner erred in finding that the means-plus-function limitation of claim 1 reciting “means for correlating the measuring or imaging operations with the position of the distance- measuring or imaging assembly within the lumen” is rendered indefinite when viewed in light of the Specification. App. Br. 9. We therefore address the issue of whether the Examiner so erred. Appeal 2012-005411 Application 10/385,587 4 Analysis Appellant points to the Specification in arguing that the language of claim 1 is not indefinite. App. Br. 11. Specifically, Appellant’s Specification recites: The raw data from the imaging assembly 300 is the distance from the tip 310 to the inner wall 120 measured orthogonally at a number of points along the length of the lumen 220. When the rotational orientation of the imaging assembly 300 is coupled with the previously-known three-dimensional geometry and dimensions of the lumen 220 (and therefore the relative location of the assembly tip 310 at any point within the lumen 220), each distance measurement can be converted to a point in space (i.e., in xyz coordinates or any other suitable coordinate system, the origin perhaps being the apparatus tip 210). The conversion can be performed manually or with the aid of a computer program. The foregoing process is outlined in the flow chart of Figure [5]. App. Br. 11 (citing Spec., p. 4, ll. 9-18) (Last sentence added by amendment, Jan. 15, 2008). Appellant also points to Figure 5 of the Specification, which recites, as step 4, “[c]orrelat[ing] the axial positions of the distance-measuring or imaging assembly in the lumen with the distance- measuring or imaging operations.” App. Br. 11. (citing Spec., Fig. 5). Appellant contends that the step of correlating the two quantities— the axial positions of the distance-measuring or imaging assembly in the lumen and the distance-measuring or imaging operations—is the pairing of one item with the corresponding value of the other item. App. Br. 11. (citing Declaration of Dr. Sergei Azernikov, § 9) (the “Azernikov Declaration”). Dr. Azernikov opines, in relevant part, that: Based upon the [portion of the Specification cited supra], I understand “correlating” … to mean taking the position of the Appeal 2012-005411 Application 10/385,587 5 distance-measuring or imaging assembly and pairing it with the output of the assembly, literally putting the two items together. For arguments’ sake, assume that measurements are taken at increments of one inch along the path of the device. The output of the distance-measuring or imaging assembly includes the rotational orientation of the imaging assembly and the measurement itself. Azernikov Decl., ¶¶ 9, 10 (paragraph numbers omitted). Appellant argues that because the application discloses a structure for performing the correlating step recited in the fourth block of Fig. 5 (specifically, a computer performing the recited step), the application and the claims satisfy the requirements of the second paragraph of 35 U.S.C. § 112. App. Br. 13. The Examiner responds that the language of Appellant’s claim recited above refers only to a “conversion” which can be “performed manually or with the aid of a computer program.” Ans. 11 (citing Spec. Page 4, ll. 9-18). The Examiner finds that manual performance requires no structure, and “with the aid of a computer program” merely implies that a computer may be used, although the computer is not disclosed. Ans. 11. The Examiner finds that even if a computer is inherently or implicitly disclosed by the Specification, a computer, in and of itself, is not sufficient to perform the recited function. Id. The Examiner specifically finds that Appellant’s Specification states that the function is accomplished “with the aid of a computer program.” According to the Examiner, whatever structure is being aided by the computer program might be able to perform the recited function, and thus support the recited limitation, however no such structure is disclosed in the Specification. Ans. 11-12. Appeal 2012-005411 Application 10/385,587 6 The Examiner also finds that, if the use of a computer as a “structure” is inherent or implicit in the language of Appellant’s Specification, claim 1 remains indefinite because the Specification fails to provide a specific algorithm. Ans. 12. The Examiner finds that the first sentence of the Specification excerpt cited supra refers to the measurement operation itself and the second sentence refers to the “coupling” of (i) the imaging assembly’s rotational orientation and (ii) the dimensions of the lumen. Ans. 12 (citing Spec., p. 4, ll. 9-18). However, finds the Examiner, the Specification makes no reference to the measurement operation, or a correlation thereto. Ans. 12. The Examiner finds that the second sentence also refers to the “conversion” of the distance measurement to a point in space. Id. The Examiner finds that, although it may be clear to an artisan of ordinary skill how a distance measurement from a known point in a known direction could be converted to an xyz coordinate, the specific algorithm is nevertheless not disclosed. Id. Appellant replies that the second paragraph of § 112 is satisfied if “the corresponding structure(s) of a means-plus-function limitation [is] disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation.” Reply Br. 1 (quoting Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999)). Appellant argues that the Azernikov Declaration establishes that a person of ordinary skill in this art would understand that the originally-filed application provides that the step of correlating is performed by a computer programmed to carry out that step. Reply Br. 1 (citing Azernikov Decl., ¶¶ 12, 13). Appeal 2012-005411 Application 10/385,587 7 We are persuaded by Appellant’s argument that the Specification discloses sufficient structure to fulfill the requirements of 35 U.S.C. § 112 (sixth paragraph). “It is axiomatic that claims must ‘particularly point[ ] out and distinctly claim[ ] the subject matter which the applicant regards as his invention.’” Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1317 (Fed. Cir. 2013) (quoting 35 U.S.C. § 112 (second paragraph)). The sixth paragraph of section 112 allows “a claim [to] state the function of the element or step, and the ‘means’ covers the ‘structure, material, or acts' set forth in the specification and equivalents thereof.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1383 (Fed. Cir. 2011). The trade-off for allowing such claiming is that “the specification must contain sufficient descriptive text by which a person of skill in the field of the invention would ‘know and understand what structure corresponds to the means limitation.’” Id. at 1383–84 (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). Appellant’s Specification states that the “correlation” recited in claim 1 “may be performed manually or with the aid of a computer program.” Spec., p. 4, ll. 17-18. As an initial matter, the use of a computer is inherent in the Specification’s disclosure of a “computer program” to perform the correlation of the data required in claim 1. The use of a computer is inherent in the disclosure, because a person of ordinary skill in the art would realize that it is necessary to employ a computer to run the disclosed computer program—software is useless without hardware. See Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (“The very essence of inherency is that one of ordinary skill in the art Appeal 2012-005411 Application 10/385,587 8 would recognize that a reference unavoidably teaches the property in question”). We also find that the flow chart disclosed in Figure 5 of Appellant’s Specification discloses an algorithm that is sufficiently detailed so as to provide an artisan of ordinary skill sufficient definiteness and clarity to perform the correlation described in claim 1. Figure 5 discloses “correlate[ing] the axial positions of the distance-measuring or imaging assembly in the lumen with the distance-measuring or imaging operations” and “determining the position of the distance-measuring or imaging assembly in free space by correlating the distance-measuring or imaging operations and the respective axial positions of the distance-measuring or imaging assembly with the known, fixed geometry and dimensions of the lumen.” Spec., Fig. 5. The Federal Circuit has allowed applicants considerable latitude in how an algorithm may be presented in means-plus- function claims. See Finisar Corp., 523 F.3d at 1340 (The specification can express the algorithm “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure” (internal citation omitted)). The Azernikov Declaration supports our finding that the description of the process would provide sufficient information to allow a person of ordinary skill in the art to perform the disclosed algorithmic function. Azernikov Decl. ¶¶ 9, 10. We therefore do not sustain the Examiner’s rejection of claims 1-6, 16, 19, and 20 under 35 U.S.C. § 112. Appeal 2012-005411 Application 10/385,587 9 B. The Examiner’s Rejection of Claim 1 under 35 U.S.C. § 102(a). Issue Appellant argues that the Examiner erred in finding that Izatt discloses the limitation of claim 1 reciting a lumen of “of predetermined, and known, fixed three-dimensional geometry and dimensions.” App. Br. 14. We therefore address the question of whether the Examiner so erred. Analysis Appellant argues that the tip cap 403 disclosed by Izatt does not meet the limitation of the claimed lumen, as it will not permit “a distance- measuring or imaging assembly [to travel] axially within the lumen” as required by claim 1. App. Br. 14 (citing Izatt, ¶ [0189]; Fig. 9C). According to Appellant, Izatt discloses that the prism 54 and lens frame 55 rotate within the tip cap 403, and there is no indication that the prism 54 and lens frame 55 move axially. Id. Furthermore, argues Appellant, the tip cap 403 is attached to a non-transparent resin tube 404, which would prevent imaging operations. App. Br. 14-15. Therefore, contends Appellant, the tip cap 403 cannot satisfy the claimed lumen. App. Br. 15. Appellant argues further that the optical sheath 38 does not have the claimed “predetermined, and known, fixed three-dimensional geometry and dimensions” required by claim 1, because it must follow the path of the patient's body cavity. App. Br. 15 (citing Izatt, ¶ [0202], Fig. 12). Appellant argues that because Izatt’s optical sheath 38 follows an irregular, and initially unknown track, the three-dimensional geometry of its devices are neither known nor fixed and the location of the lens 52 in free space Appeal 2012-005411 Application 10/385,587 10 cannot be determined from its location within sheath alone. App. Br. 15. By contrast, maintains Appellant, the geometry and dimensions of the Appellant’s device is known and fixed, and the location of the imaging device in three-dimensional space can be determined from its position within the conduit. Id. The Examiner responds that the optical sheath 38 disclosed in Izatt permits axial travel and, moreover, explicitly discloses “scan[ning] the tissue in longitudinal directions.” Ans. 12 (citing Izatt, [0207], Figure 12). The Examiner finds that the tip cap 403 disclosed by Izatt is presented as an alternative embodiment of the optical sheath 38, which is made of glass or rigid plastic. Ans. 12. The Examiner finds that it is presented in the rejection as an alternative embodiment because it is rigid and, being rigid, has a “fixed” geometry, whereas the optical sheath 38 is made of resin, which is available in a range of rigidities. Ans. 12-13. We are persuaded by Appellant’s arguments. We cannot agree with the Examiner’s reasoning that tip cap 403, which is composed of glass or rigid plastic, discloses the “conduit of optically clear material” because the tip cap is joined to a non-transparent resin tube. Izatt, ¶ [0188]. Moreover, the resin-based optical sheath 38 disclosed by Izatt is not disclosed to be sufficiently rigid to have a “known, fixed three-dimensional geometry and dimensions” as required by claim 1. The Examiner asserts that optical sheath 38 is “made of resin, which is known to be, at the very least, semi- rigid, in the broadest reasonable interpretation of the term” but provides no evidence that resins are necessarily rigid or semi-flexible enough to meet this requirement. Ans. 13. We do not find any disclosure in Izatt supporting the Examiner’s further assertion that Figure 12 indicates that the Appeal 2012-005411 Application 10/385,587 11 optical sheath 38 is at least rigid enough to hold its shape, nor do we consider the term “shape” alone sufficient to meet the requirement of a “known fixed three-dimensional geometry and dimensions.” We therefore do not affirm the Examiner’s rejection. The rejection of claim 6 under 35 U.S.C. § 103(a) relies on the same reasoning (Ans. 10) and is therefore reversed for the same reason. DECISION The Examiner’s rejection of claims 1-6, 16, 19, and 20 under 35 U.S.C. § 112(second paragraph) is reversed. The Examiner’s rejection of claims 1-5 and 16 under 35 U.S.C. § 102(a) is reversed. The Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) is reversed. REVERSED ELD