Ex Parte Wang et al

Patent Trial and Appeal Board

Jan 23, 2017

13219680 (P.T.A.B. Jan. 23, 2017)

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.
13/219,680 08/28/2011 George Mizhen Wang 1395
7590
George Wang
1284 Bedford St.
Fremont, CA 94539
EXAMINER
SHIN, SEONG-AHA
ART UNIT PAPER NUMBER
2659
MAIL DATE DELIVERY MODE
01/23/2017 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 GEORGE MIZHEN WANG and LILINI WANG
Appeal 2016-000264
Application 13/219,6801
Technology Center 2600
Before JOHN A. EVANS, NATHAN A. ENGELS, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—17, 19, 21, and 22, which constitute all claims
pending in the application. Claims 18 and 20 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The pro se Appeal Brief omits the real party in interest.
Appeal 2016-000264
Application 13/219,680
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to a “phonetic symbol system” using
“letters of [the] English Alphabet.” Abstract. Claims 1, 2, and 19 are
independent. Claim 1 is illustrative of the invention and the subject matter
of the appeal, and reads as follows:
1. A phonetic symbol system comprising:
a plurality of phonetic symbols,
wherein each of said phonetic symbols is defined by one
or more than one letter of English alphabet, the case or the style
of said letter does not affect the sounds of said phonetic symbols,
there are vowel phonetic symbols and consonant phonetic
symbols of said phonetic symbols, each vowel is distinctively
represented by one of said vowel phonetic symbols, and each
consonant is distinctively represented by one of said consonant
phonetic symbols.
Br. 21 (Claims App.).
The Rejections on Appeal
Claims 1—17, 19, 21, and 22 stand rejected under pre-AIA 35
U.S.C. § 112, first paragraph, as failing to enable one of ordinary skill in the
art to make and use the invention. Final Act. 5.
Claims 1—17, 19, 21, and 22 stand rejected under pre-AIA 35
U.S.C. § 112, second paragraph, as indefinite. Final Act. 6.
Claims 1—17, 19, 21, and 22 stand rejected under pre-AIA 35
U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 6—7.
Claims 1—5, 14, and 19 stand rejected under pre-AIA 35
U.S.C. § 102(b) as anticipated by Su (US 7,004,758 B2; Feb. 28, 2006).
Final Act. 7—9.
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Application 13/219,680
Claims 6—13, 15—17, 21, and 22 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Su and Scholastic First Dictionary
(Scholastic Inc., 1998). Final Act. 9-11.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are persuaded the
Examiner erred as to the enablement rejection. We are not persuaded of
error on the remaining rejections, and as to those rejections, we adopt as our
own the findings and reasons set forth in the rejections from which the
appeal is taken and in the Examiner’s Answer. We provide the following for
highlighting and emphasis.
Rejections Under 35 U.S.C. § 112
Appellants argue, Br. 5, the Examiner erred in finding the
Specification’s “enablement is not commensurate in scope with the claims”
and therefore erred in rejecting the claims as not enabled, Final Act. 5.
Appellants contend the Specification demonstrates how the claim elements
“are represented using the [claimed] phonetic symbol system,” that the
Specification “defines all the phonetic symbols,” and that it “also gives
examples.” Br. 5.
The Examiner’s Answer is silent regarding the enablement rejection,
and does not respond to Appellants’ arguments on that issue. Moreover, the
pertinent findings in the Final Office Action appear directed to
indefmiteness, non-statutory subject matter, and anticipation, not
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Application 13/219,680
enablement. Final Act. 5. Accordingly, we do not sustain the rejection
under pre-AIA 35 U.S.C. § 112, first paragraph.
As to the rejection under pre-AIA 35 U.S.C. § 112, second paragraph
(indefiniteness), however, we are not persuaded of error. Appellants argue
the invention is “claimed . . . the same way” as the prior art Su reference (an
issued patent) and is “better,” being “easy for people to learn and use.” Br.
6. None of these arguments, however, are germane to the indefmiteness
rejection. See, e.g., Nautilus, Inc. v. BiosigInstr., Inc., 134 S. Ct. 2120,
2124 (2014) (“[A] patent is invalid for indefmiteness if its claims, read in
light of the specification delineating the patent, and the prosecution history,
fail to inform, with reasonable certainty, those skilled in the art about the
scope of the invention.”) (emphasis added). As the Examiner finds, Final
Act. 6, Appellants’ claims are “narrative in form and replete with indefinite
language” that fails to apprise the scope of the claims. See Ex parte
Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008) (precedential);
Halliburton Energy Servs., Inc. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir.
2008) (“it is highly desirable that patent examiners demand that applicants”
resolve any “ambiguity in the patent claims . . . during prosecution”).
Accordingly, we sustain the rejection of claims 1—17, 19, 21, and 22
under pre-AIA 35 U.S.C. § 112, second paragraph, as indefinite.
Rejection Under 35 U.S.C. §101
Appellants argue the Examiner erred in finding the claims are directed
to non-statutory subject matter, contending the claimed phonetic symbol
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Application 13/219,680
system is “functional” and “tangible through things such as voice, writing,
and other forms.” Br. 7.2 These arguments are not persuasive of error.
As the Examiner finds, the “phonetic symbol system” recited in claim
1 is not a “process, machine, manufacture or composition of matter,” i.e., is
not within one of the categories of patentable subject matter set forth in
section 101. Ans. 4. Moreover, we discern no error in the Examiner’s
finding that the claimed “system” is directed to the abstract idea of
“defining” phonetic symbols in language, using strings of English letters.
Id. at 5. It is well established that such “abstract ideas are not patentable.”
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
For the foregoing reasons, we sustain the rejection of claims 1—17, 19,
21, and 22 under pre-AIA 35 U.S.C. § 101.
Rejection Under 35 U.S.C. § 102(b)
Appellants argue the Examiner erred in finding Su anticipates claim 1
because “[Appellants’] invention use[s] letters of [the] English alphabet
while Su’s phonetic symbols use[s] letters of [the] English alphabet and
other characters.” Br. 7 (emphasis added). We are not persuaded of error.
As the Examiner finds, claim 1 does not require that all phonetic
symbols in claim 1 use only English letters. Ans. 6. Claim 1 only recites “a
plurality” of phonetic symbols, each defined by one or more English letters.
Id.', see also In re Am. Acad, of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (claim terms are given their “their broadest reasonable
interpretation consistent with the specification”). As the Examiner finds, Su
2 Appellants argue the claims as a group, and we choose claim 1 as
representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/219,680
discloses this plurality of phonetic symbols. Ans. 6; Su col. 2,11. 12-41, col.
3 (tables), col. 5 (tables).
For the same reasons explained above regarding claim 1, we also
discern no error regarding the remaining claims. Appellants argue
repeatedly that the claimed “invention is fundamentally different from Su’s
phonetic symbol system [because] Su uses non-alphabetic characters.” Br.
8—11. Appellants, however, base their arguments on a general
characterization of the Specification rather than limitations recited in the
claims. See, e.g., E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369
(Fed. Cir. 2003) (although claims are interpreted “in view of the
specification,” we do not “import[] limitations from the specification into the
claims”).
Accordingly, we sustain the rejections of claims 1—5, 14, and 19 under
pre-AIA 35 U.S.C. § 102(b) as anticipated by Su.
Rejection Under 35 U.S.C. § 103(a)
Appellants repeat the same arguments for obviousness as for
anticipation. See Br. 11—19. Specifically, Appellants contend the claimed
invention is “fundamentally different” from the prior art because Su uses
“non-alphabetic characters” in addition to English letters, and that the
claimed invention has many advantages. Id. at 11. For the reasons
discussed above and set forth in the Examiner’s Answer, Ans. 13—28, we are
not persuaded of error.
Accordingly, we sustain the rejection of claims 6—13, 15—17, 21, and
22 under pre-AIA 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejections of claims 1—17, 19, 21, and 22.
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Appeal 2016-000264
Application 13/219,680
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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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