Simmonds Precision Products, Inc.

Patent Trials and Appeals BoardAug 9, 2021

2020004405 (P.T.A.B. Aug. 9, 2021)

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. 15/603,126 05/23/2017 Tyler Arsenault 97651US01-U100-012873 1853 113529 7590 08/09/2021 Kinney & Lange, P.A. 312 South Third Street Minneapolis, MN 55415 EXAMINER LEE, HWA S ART UNIT PAPER NUMBER 2886 NOTIFICATION DATE DELIVERY MODE 08/09/2021 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): USPatDocket@kinney.com amkoenck@kinney.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TYLER ARSENAULT, PETER J. CARINI, and DAVID H. CROWNE1 ____________ Appeal 2020-004405 Application 15/603,126 Technology Center 2800 ____________ Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to systems and methods for determining wavelengths of light. E.g., Spec. ¶ 4; Claims 1, 13. Claim 1 is reproduced below from page 12 (Claims Appendix) of the Appeal Brief: 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Simmonds Precision Products, Inc. Appeal Br. 2. Appeal 2020-004405 Application 15/603,126 2 1. A system for determining a wavelength of a narrow-band light beam, the system consisting of: an optical filter having complementary transmission and reflection coefficients within a predetermined band of wavelengths inclusive of the wavelength of the narrow-band light beam, each of the transmission and reflection coefficients monotonically varying throughout the predetermined band of wavelengths; a first photodetector configured to detect amplitude of a first portion of the narrowband light beam transmitted through the optical filter, and to generate a first output signal indicative of the detected amplitude of the first portion of the narrow-band light beam transmitted through the optical filter; a second photodetector configured to detect amplitude of a second portion of the narrow-band light beam reflected by the optical filter, and to generate a second output signal indicative of the detected amplitude of the narrow-band light beam reflected by the optical filter; and a processor configured to determine, based on a ratio of the first and second output signals, the wavelength of the narrow-band light beam. REJECTIONS ON APPEAL The claims stand rejected as follows: 1. Claims 1–20 under 35 U.S.C. § 112(b) as indefinite. Final Act. 3. 2. Claims 11 and 12 under 35 U.S.C. § 112(a) as lacking enablement. Final Act. 5. 3. Claims 11 and 12 under 35 U.S.C. § 112(a) for failure to comply with the written description requirement. Final Act. 5. 4. Claims 2–20 under 35 U.S.C. § 112(b) as indefinite. Final Act. 6. Appeal 2020-004405 Application 15/603,126 3 ANALYSIS Rejection 1 The Examiner determines that the following terms are functional rather than structural and, therefore, that they constitute “means-plus- function” terms that invoke 35 U.S.C. § 112(f): “filter” and “processor” in claims 1 and 13, and “optical transmitter” in claim 10. Final Act. 2–3.2 Each claim on appeal includes one or more of those terms. See Appeal Br. 12–16 (Claims Appendix). The Examiner determines that the Specification does not sufficiently identify structure corresponding to the recited functions and, therefore, that the claims are indefinite under 35 U.S.C. § 112(b). Final Act. 3–4. “The standard [for determining whether a claim term invokes § 112(f)] is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). There is a rebuttable presumption that a claim term that lacks the word “means” does not invoke § 112(f). Id. at 1348–49. As to each term identified by the Examiner, the Examiner determines that the term is “highly generic and no evidence has been found that the term[] ha[s] achieved recognition in the art to be the same of a structure for performing the claimed function.” Final Act. 2 (emphasis in original). The Appellant argues that each term has achieved “recognition in the art to be the 2 In the Final Action, the Examiner also identified the terms “sensor” and “transducer” in claim 2 as invoking § 112(f). Final Act. 2. In the Answer, however, the Examiner “agree[d] with the Appellant that th[o]se terms should not be interpreted under 35 U.S.C. § 112(f).” Ans. 6. Appeal 2020-004405 Application 15/603,126 4 names of structures for performing the claimed function.” Appeal Br. 6. We address each term below. Filter. Claim 1 recites: an optical filter having complementary transmission and reflection coefficients within a predetermined band of wavelengths inclusive of the wavelength of the narrow-band light beam, each of the transmission and reflection coefficients monotonically varying throughout the predetermined band of wavelengths. Appeal Br. 12 (Claims Appendix) (emphasis added). The term “filter” does not include the word “means,” and, therefore, there is a presumption that the term does not invoke § 112(f). See Williamson, 792 F.3d at 1348–49. The Examiner’s analysis fails to rebut that presumption. The language following the word “filter” does not appear to be functional language but, rather, appears to specify structural characteristics of the recited optical filter. The Examiner provides no persuasive reason to believe that a person of ordinary skill in the art would not understand the structure (or class of structures) implied by the term “optical filter,” particularly in the context of an optical apparatus such as the system for determining wavelength recited by claim 1, or that a person of ordinary skill in the art would not understand the structure required by the characteristics recited after the word “filter.” The Examiner identifies no authority supporting the Examiner’s position, and we note that, if anything, relevant authority indicates that the term “filter” is a term that frequently connotes structure to those skilled in the art. See, e.g., MPEP § 2181(I)(A) (“If persons of ordinary skill in the art reading the specification understand the term to have a sufficiently definite meaning as the name for the structure that performs the function, even when Appeal 2020-004405 Application 15/603,126 5 the term covers a broad class of structures or identifies the structures by their function (e.g., ‘filters,’ ‘brakes,’ ‘clamp,’ ‘screwdriver,’ and ‘locks’) 35 U.S.C. § 112(f) will not apply.” (emphasis added) (quoting Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696, 703 (Fed. Cir. 1998))). On this record, the Examiner has not adequately established that the term “filter” invokes § 112(f). Accordingly, the Examiner has not established that the term “filter” renders any claim indefinite. Processor. Claim 1 recites: a processor configured to determine, based on a ratio of the first and second output signals, the wavelength of the narrow-band light beam. Appeal Br. 12 (Claims Appendix). The Appellant argues, with little elaboration, that the term “processor” has “achieved recognition in the art to be the name of structure[] for performing the claimed function,” and that a person of ordinary skill in the art would understand a “processor” to be “any state machine capable of executing coded instructions, which was known in the art at the time of the filing.” Appeal Br. 6. The Appellant also argues that, even if the term invokes § 112(f), the Specification discloses adequate structure for the term because it discloses that the processor may be “a microprocessor, a controller, a micro-controller,” or a variety of other circuitry. Id. at 7. Those arguments are not persuasive of reversible error in the rejection. The term “processor” does not include the word “means,” and, therefore, there is a presumption that the term does not invoke § 112(f). See Williamson, 792 F.3d at 1348–49. Prior to Williamson, there was a “strong” presumption that a term does not invoke § 112(f) if the term does not use the word “means.” 792 F.3d at 1349. However, even under the pre-Williamson Appeal 2020-004405 Application 15/603,126 6 “strong presumption” standard, expanded panels of the Board held on several occasions that the term “processor” followed by recitation of a specialized function invokes § 112(f). See, e.g., Ex Parte Lakalla, Appeal 2011-001526 (PTAB Mar. 13, 2013) (informative); Ex Parte Erol, Appeal 2011-001143 (PTAB Mar. 13, 2013) (informative); Ex Parte Smith, Appeal 2012-007631 (PTAB Mar. 14, 2013) (informative). As in those expanded-panel cases, the term “processor” at issue in this case appears to recite a specialized function to be performed by the processor, and the Appellant has not asserted otherwise. Cf. In re Katz Interactive Call Processing Pat. Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (functions such as “processing,” “receiving,” and “storing” that can be achieved by any general purpose computer without special programming do not require disclosure of more structure than the general purpose processor that performs those functions). The Appellant has not identified a distinction between the term “processor” at issue in those cases and the term “processor” at issue in this case. Nor has the Appellant identified any other authority that might support the Appellant’s position concerning the term “processor.” Given the evident similarity between use of the term “processor” here and the use of the term “processor” in the expanded-panel informative Board decisions cited above, we are not persuaded of reversible error in the Examiner’s determination that the term “processor” in this case invokes § 112(f). See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”) We next consider whether the Specification discloses an algorithm that transforms a general purpose processor into a special purpose processor Appeal 2020-004405 Application 15/603,126 7 that performs the recited functions. See Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); cf. Katz, 639 F.3d at 1316. The Examiner finds that the Specification does not disclose algorithms sufficient to provide structure to the recited “processor.” E.g., Ans. 6; see also Advisory Action dated Feb. 27, 2019. In the Appeal Brief, the Appellant does not assert that the Specification discloses the necessary algorithms, and the Appellant did not file a Reply Brief. Thus, the Appellant has provided no basis to reject the Examiner’s finding that the Specification does not disclose algorithms sufficient to provide structure to the recited “processor.” See Jung, 637 F.3d at 1365. Accordingly, we are not persuaded of reversible error in the Examiner’s determination that the term “processor” renders claim 1 indefinite. Because the Appellant presents no separate arguments as to claims 2–20, which are subject to the same rejection, we likewise are not persuaded of reversible error in the Examiner’s determination that those claims are indefinite. See 37 C.F.R. § 41.37(c)(1)(iv). Optical transmitter. Claim 10 recites: an optical transmitter configured to transmit light having less than ten percent of its energy from light of wavelengths outside of the predetermined band of wavelengths. Appeal Br. 12 (Claims Appendix). The term “optical transmitter” does not include the word “means,” and, therefore, there is a presumption that the term does not invoke § 112(f). See Williamson, 792 F.3d at 1348–49. The Examiner’s analysis fails to persuasively establish that the term “optical transmitter” does not connote adequate structure to a person of ordinary skill in the art. The language following the word “transmitter” might be described as functional, but it Appeal 2020-004405 Application 15/603,126 8 implies a structural characteristic of the transmitter because it specifies wavelengths transmitted by the transmitter. The Examiner provides no persuasive reason to believe that a person of ordinary skill in the art would not understand the structure (or class of structures) implied by the term “optical transmitter,” particularly in the context of an optical apparatus such as the system for determining wavelength recited by claim 10. The Examiner seems to acknowledge that the term “optical transmitter” is recognized in the art as a structure that “convert[s] an electrical signal into an optical form.” Ans. 7. The Examiner, however, determines that the optical transmitter of claim 10 actually “performs the function of . . . an optical passband filter” because claim 10 specifies that only certain wavelengths are transmitted. Id. However, the Examiner provides no persuasive reason to believe that, for a structure to qualify as an “optical transmitter,” it cannot be limited in the wavelengths that it transmits. See Appeal Br. 6 (arguing that “a person of ordinary skill in the art would understand that the recited limitation of ‘optical transmitter’ refers to the entire gamut of devices capable of generating an optical signal within the narrow band of frequencies in which the optical filter is operative”). As with the term “filter,” discussed above, the Examiner identifies no specific authority supporting the Examiner’s position. On this record, the Examiner has not overcome the presumption that the disputed term does not invoke § 112(f) because it lacks the word “means.” Accordingly, the Examiner has not established that the term “optical transmitter” renders any claim indefinite. In summary, the Appellant has not identified reversible error in the Examiner’s determination that the term “processor” invokes § 112(f) and Appeal 2020-004405 Application 15/603,126 9 renders claims 1–20 indefinite under § 112(b). Accordingly, we sustain the § 112(b) rejection of claims 1–20 on that basis. However, as set forth above, we do not sustain the Examiner’s § 112(b) rejections on the basis of the terms “filter” or “optical transmitter.” Rejections 2 and 3 The Appellant argues Rejections 2 and 3 as a group. See Appeal Br. 9–10. Claims 11 and 12 depend from claim 1 and recite “fast photodiodes”3 that have specific sampling rates of “at least 100 ksps” (claim 11) and “at least 1 Msps” (claim 12). As to Rejection 2, the Examiner finds that the Specification is not enabling of photodiodes having sampling rates of “the entire range claimed (i.e. fast photodiodes that did not exist) such as in high 100’s GSPS and higher.” Final Act. 5. The Examiner explains that the claim language literally “covers speeds much higher include that approaching infinity,” but does not enable photodiodes with such high sampling rates. Id. As to Rejection 3, the Examiner finds that, because the Specification does not enable the disputed subject matter, “the specification also does not show [that] the inventor possessed” the disputed subject matter. Id. at 6. The Appellant argues that, because claims 11 and 12 are necessarily narrower than claim 1 from which they depend, and because “claim 1 recites no upper (or lower) bound to the operating speed of the recited ‘photodetector,’” it is inconsistent and inappropriate for the Examiner to 3 In the event of further examination of the application on appeal, the Appellant and the Examiner may wish to consider whether the term “first and second photodiodes” has antecedent basis. Claims 11 and 12 depend from claim 1, and the term “photodiode” does not appear in claim 1. Appeal 2020-004405 Application 15/603,126 10 reject claims 11 and 12 as violating § 112(a) absent a corresponding rejection for claim 1. Appeal Br. 9–10. In the Answer, the Examiner responds that “claims 11 and 12 are not narrower in scope than claim 1.” Ans. 8. The Examiner has not persuasively established that claims 11 and 12 lack enablement or written description support. “Because a patent specification must enable the full scope of a claimed invention, an enablement inquiry typically begins with a construction of the claims.” AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1241 (Fed. Cir. 2003). Claim 1, from which claims 11 and 12 depend, provides no express limitation as to the sampling rate of its photodetectors (which, we understand, correspond to the “photodiodes” of claims 11 and 12). See Appeal Br. 12; see also supra footnote 3. The Examiner does not reject claim 1 for lack of enablement, suggesting that the Examiner believes that a person of ordinary skill in the art would not have understood the term “photodetector” in claim 1 to encompass photodetectors with impossibly high sampling rates. The Examiner, however, interprets claims 11 and 12 to encompass photodetectors with impossibly high sampling rates due to use of the words “at least.” Final Act. 5–6. On this record, the Examiner’s interpretation of claims 11 and 12 is unreasonably broad. “[D]ependent claims are presumed to be of narrower scope than the independent claims from which they depend.” AK Steel, 344 F.3d at 1242; see also 35 U.S.C. § 112(d) (“A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”). If claim 1 does not encompass impossibly high sampling rates, then the words “at least” in claims 11 and 12 should not be interpreted Appeal 2020-004405 Application 15/603,126 11 as expanding the scope of claims 11 and 12 beyond that of claim 1; rather, the words “at least” should merely be interpreted as setting a floor (i.e., a minimum sampling rate necessary to fall within the scope of the claim). The Examiner provides no persuasive basis to believe that claims 11 and 12 should be interpreted as covering, impossibly high sampling rates. We acknowledge that there is some legal support for the Examiner’s position. In MagSil Corp. v. Hitachi Glob. Storage Techs., Inc., the Federal Circuit affirmed a district court’s determination that a claim reciting a change in resistance of “at least 10%” lacked enablement because the claim had no upper boundary and the “specification only discloses enough information to achieve” a maximum change of 11.8%. 687 F.3d 1377, 1381–83 (Fed. Cir. 2012). In that case, however, the claim at issue was an independent claim and, therefore, did not carry with it a presumption of being narrower than an independent claim. Here, we agree with the Examiner that it is not reasonable to interpret independent claim 1 as encompassing photodetectors with nonenabled, impossibly high sampling rates, and we agree with the Appellant that it is likewise not reasonable to interpret claims 11 and 12—which depend from claim 1—as encompassing photodetectors with nonenabled, impossibly high sampling rates. On this record, we are not persuaded that the Examiner has adequately established that claims 11 and 12 lack enablement or fail to comply with the written description requirement. Rejection 4 Claims 2–20 depend from claim 1, and the Examiner finds that, because the preamble of claim 1 is “consisting of,” the recitation of “additional elements and/or steps” in claims 2–20 renders those claims Appeal 2020-004405 Application 15/603,126 12 indefinite4 because they purport to add limitations to a claim that is “closed.” Final Act. 6. The Appellant does not dispute the substance of the Examiner’s rejection and instead states only that the Appellant may cancel certain claims in the event of further prosecution. Appeal Br. 10. Because the Appellant asserts no substantive error in Rejection 4, we summarily affirm Rejection 4. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–20 112(b) Indefiniteness 1–20 11, 12 112(a) Enablement 11, 12 11, 12 112(a) Written Description 11, 12 2–20 112(b) Indefiniteness 2–20 Overall Outcome 1–20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 4 In the event of further examination of the application on appeal, the Examiner and the Appellant may wish to consider whether the dependent claims in this case also implicate 35 U.S.C. § 112(d) due to non-overlapping subject matter. See Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291 (Fed. Cir. 2006) (“In other words, claim 6 does not narrow the scope of claim 2; instead, the two claims deal with non-overlapping subject matter.”).