Ex Parte Nord et al

Patent Trial and Appeal BoardSep 12, 2014

12207265 (P.T.A.B. Sep. 12, 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. 12/207,265 09/09/2008 Janne Nord 8632-92834 (08-024-US) 1426 76260 7590 09/12/2014 FITCH EVEN TABIN & FLANNERY, LLP VARIAN MEDICAL SYSTEMS 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER SONG, HOON K ART UNIT PAPER NUMBER 2882 MAIL DATE DELIVERY MODE 09/12/2014 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) - 1 - UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte JANNE NORD and JARKKO PELTOLA ______________ Appeal 2011-012784 Application 12/207,265 Technology Center 2800 _______________ Before CHARLES F. WARREN, PETER F. KRATZ, and N. WHITNEY WILSON, Administrative Patent Judges. PER CURIAM. DECISION ON REQUEST FOR REHEARING Appellants filed a Request For Rehearing pursuant to 37 C.F.R. § 41.52 on September 2, 2014 (“Req.”), of our Decision entered July 1, 2014 (“Dec.”), wherein we affirmed the Examiner’s grounds of rejection under 35 U.S.C. § 102(e) of appealed claims 1-29 over Kuduvalli, and appealed claims 1, 16, and 20 over Yi. Dec. 1; Req. 2. Appellants contend that we misapprehended their point respecting the definition of “second information” provided in Specification paragraph 0026, “that ‘second information,’ while possibly including something other than ‘user input,’ in fact MUST include at least ‘user input.’” Req. 3-4. Appellants point out that the position in the Appeal Brief was “that ‘second information’ could include other content” and “must, at least and minimally, include input that reflects or incorporates an ‘experienced observer’s corrections . . . or an indication that no Appeal 2011-012784 Application 12/207,265 - 2 - such corrections are required.” Req. 2-3 (citing App. Br. 10 and 11)). We disagree. We decided the issue raised by Appellants: The sole issue raised by the positions of the Examiner and Appellants is whether the term “second information,” when given its broadest reasonable interpretation in light of the Specification, including Specification ¶ 0026 relied on by Appellants, as it would be considered by one of ordinary skill in the art, requires that the term “must, at the least and minimally, include input that reflect or incorporates an ‘experienced observer’s correction . . . or an indication that no such correction are required,’” as Appellants contend. Dec. 2 (citations omitted). In doing so, we carefully considered the disclosure in Appellants’ Specification, and quoted all or parts of Specification paragraphs 0024, 0026, and 0028 which are part of the disclosure at paragraphs 0019 through 0031 describing the embodiment illustrated in Specification Figure 1, as well as parts of preceding paragraphs 0013 and 0015. Dec. 2, 3-4. On this basis, we stated: On this record, we determine that when the “second information regarding the aforementioned first information” is given the broadest reasonable interpretation based on the disclosure in the Specification as a whole as it would be interpreted by one of ordinary skill in the art, the “second information” is simply not limited to “user input.” The fact that paragraph 0026, on which Appellants rely, defines “user input” to “include substantive user input” based on an “experienced observer’s” observations, does not limit the claim language to “user input” as indeed, we find no disclosure, including that of paragraph 0026, which defines the claim language as limited to “user input.” Dec. 4. Thus, we declined to decide the issue based on Appellants’ position. We have again considered the issue in light of Appellants’ Request for Rehearing, and remain of the opinion that the term “second information” is not defined in the Specification as requiring “user input.” In the absence of an express definition, to Appeal 2011-012784 Application 12/207,265 - 3 - the extent that Appellants’ interpretation of the term is considered just as reasonable as our interpretation, we can use our interpretation to determine the patentability of the claims. In re Morris, 127 F.3d 1048, 1055-56 (Fed. Cir. 1997) (“Absent an express definition in their specification, the fact that appellants can point to definitions or usages that conform to their interpretation does not make the PTO’s definition unreasonable when the PTO can point to other sources that support its interpretation.”); see also, e.g., In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.”). We have carefully considered Appellants’ Request for Rehearing but we are unconvinced of error in our Decision based on Appellants’ position. Accordingly, we have granted Appellants’ Request for Rehearing to the extent that we have reconsidered our Decision, but we deny the Request with respect to making any change in our Decision. Appellants’ Request for Rehearing is DENIED. 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) (2011). DENIED cam