Ex Parte Eerd et alDownload PDFBoard of Patent Appeals and InterferencesJul 9, 201211358597 (B.P.A.I. Jul. 9, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MIKE PATRICK VAN EERD and JOHN WILKES ____________ Appeal 2010-000455 Application 11/358,597 Technology Center 2100 ____________ Before ERIC B. CHEN, BRUCE R. WINSOR, and JENNIFER S. BISK, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000455 Application 11/358,597 2 Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-8 and 10-20, which constitute all the claims pending in this application. Claim 9 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention relates to “designing systems where a computer aids in designing the systems.” (Spec. 1:5-6). In response to receiving a relative performance specification for a system to be designed, the invention returns a system design that is expected to meet the relative system performance specification. (Abstract). Claim 1, which is illustrative of the invention, reads as follows: 1. A computer implemented method of providing a design of a system comprising the steps of: receiving a relative performance specification for the system, the relative performance specification specifying desired performance relative to performance of system designs of a class of systems; accessing a database to determine a system design that is expected to perform at about the relative performance specification and wherein the database comprises records, each record comprising system characteristics, a candidate system design, and a relative performance; and returning the system design that is expected to perform at about the relative performance specification. Claims 1-8 and 10-20 stand rejected under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which Appellants regard as their invention. (Ans. 3). Appeal 2010-000455 Application 11/358,597 3 Claims 1-8 and 10-201 stand rejected under 35 U.S.C. § 102(b) as anticipated by Quernemoen (US 6,453,269 B1; Sept. 17, 2002). (Ans. 3-8). The Examiner has withdrawn rejections of clams 1-8 and 10-20 under 35 U.S.C. § 101. (Ans. 2). Rather than repeat the arguments here, we make reference to the Briefs (App. Br.; Reply Br.) and the Answer (Ans.) for the respective positions of Appellants and the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUES Although Appellants state that separate arguments have been presented for various independent and dependent claims (App. Br. 10), with regard to rejections now on appeal all of the arguments are made with reference to claim 1 (see generally App. Br. 10-14; Reply Br. 2-5), with the remaining claims argued as being patentable on the same basis as claim 1 (App. Br. 11, 14; Reply Br. 5). Therefore, we select claim 1 as the representative claim, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii). The pivotal issues raised by Appellants’ contentions are: 1 The Examiner does not list claims 10-19 in the initial statement of the grounds for rejection (Ans. 3), but provides detailed analysis for the rejections of claims 10-19 (Ans. 5-8). We find the omission of claims 10-19 from the initial statement of the grounds for rejection to be a harmless typographical error. (Compare App. Br. 12). Appeal 2010-000455 Application 11/358,597 4 Does the term “about” in “returning the system design that is expected to perform at about the relative performance specification,” as recited in claim 1, render claim 1 indefinite under 35 U.S.C. § 112, second paragraph? Does Quernemoen disclose “receiving [as an input] a relative performance specification for the system [to be designed], the relative performance specification specifying desired performance relative to performance of system designs of a class of systems” (hereinafter the “relative performance limitation”), as recited in claim 1? ANALYSIS Rejection under 35 U.S.C. § 112, second paragraph The Examiner finds that the recitation of “about” renders claim 1 indefinite. (Ans. 3). Appellants contend that “about” is defined in the Specification as “at a level close to, or equal to, or consistent with, that defined by the relative performance specification.” (App. Br. 10 (quoting Spec. 3:13-15)). The Examiner responds that the definition in Appellants’ Specification does not clarify the metes and bounds of the term “about.” (Ans. 8). As stated by Appellants: [T]he mere use of the term “about” does not render a claim indefinite. Rather, the term must be viewed in the context of the claim and the specification, as well as from the perspective of one of ordinary skill in the art. Ortho-McNeil Pharmaceutical, Inc. v. Caraco Pharmaceutical Labs., 476 F.3d 1321, 1326 (Fed. Cir. 2007). With respect to the term “about,” the Federal Circuit has expressly stated that its meaning “must be interpreted in its technological and stylistic context” (id.) and that its “usage can usually be understood in light of the technology embodied in the invention” (Modine Appeal 2010-000455 Application 11/358,597 5 Mfg. Co., v. United States Int’l Trade Comm’n, 75 F.3d 1545, 1554 (Fed. Cir. 1996)[, overruled on other grounds by Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000)]). (App. Br. 10). In W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983), the court found that “[t]he use of ‘stretching . . . at a rate exceeding about 10% per second’ in the claims is not indefinite. Infringement is clearly assessable through use of a stopwatch.” Id. at 1557. However, in Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200 (Fed. Cir. 1991), the court sustained the district court’s holding of indefiniteness, stating: Because “the term ‘about’ 160,000 gives no hint as to which mean value between the Miyake et al. value of 128,620 and the mean specific activity level of 160,000 constitutes infringement,” the court held the “at least about” claims to be invalid for indefiniteness. [Amgen, Inc. v. Chugai Pharm. Co.,] 13 USPQ2d [1737,] 1787-88 [(D. Mass. 1989).] This holding was further supported by the fact that nothing in the specification, prosecution history, or prior art provides any indication as to what range of specific activity is covered by the term “about,” and by the fact that no expert testified as to a definite meaning for the term in the context of the prior art. Id. at 1218. Here, as in Amgen, the record before us, and in particular the Specification, gives no indication as to what range of variance from the “relative performance specification” is covered by “expected to perform at about the relative performance specification.” We agree with the Examiner (Ans. 8) that the definition in the Specification is in similarly relative terms, i.e., “close to, equal to, or consistent with,” providing no further guidance as to what level of closeness to or consistency with the relative performance specification would constitute infringement. Appeal 2010-000455 Application 11/358,597 6 Appellants have failed to persuade us that the Examiner erred in finding claims 1-8 and 10-20 indefinite and we will sustain the rejection under 35 U.S.C. § 112, second paragraph. Rejection under 35 U.S.C. § 102(b) The Examiner finds that Quernemoen discloses the relative performance limitation at column 6, lines 26-44. (Ans. 3). In particular, the Examiner finds that Quernemoen’s disclosure of “comparative performances of each system” (id.; see Quernemoen col. 6, ll. 28-30) discloses relative performance specifications. The Examiner further explains as follows: Examiner notes that the specifications inputted by the system planner (column 6 lines 45-50) are relative performance specifications. This is evidenced by column 6 lines 50-61, which discloses that based on these inputted specifications, an identifier accesses a performance database and identifies various hardware systems which have performance data for system specifications that meet the inquiry. The performances of the initially selected baseline system and the selected target are then compared, and their performances relative to one another are calculated (column 7 lines 65-column 8 lines 5). Examiner notes that column 2 lines 62-67 of the reference states that (emphasis added) “It is desirable, therefore, to provide a convenient environmental for rapid consideration of benchmark performance across systems in order to estimate the relative performance and value of various computer systems that a system planner may be considering.” (Ans. 8-9 (emphasis in original)). Appellants contend that “Guernemon [sic] does not disclose ‘receiving a relative performance specification for the system, the relative performance specification specifying desired performance relative to performance of system designs of a class of systems’ as recited in independent Claim[] 1 . . . .” (Reply Br. 3). We agree with this contention Appeal 2010-000455 Application 11/358,597 7 for the reasons set forth by Appellants (see generally App. Br. 12-14; Reply Br. 2-5). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “The identical invention must be shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). “These elements must be arranged as in the claim under review . . . .” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). During prosecution, a claim is to be given its broadest reasonable interpretation as it would have been understood by one of ordinary skill in the art in light of the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), without importing limitations from the Specification into the claim, SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). However, “the [S]pecification may reveal a special definition given to a claim term by [Appellants] that differs from the meaning it would otherwise possess. In such cases, [Appellants’] lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). We conclude that Appellants’ Specification defines “relative performance” and “relative performance specification” with specificity: The term “relative performance” as used herein refers to performance of a class of systems class relative to other systems according to a performance metric. The term “percentile relative performance” refers to a percentile measure of a system design relative to the system designs of a class. For example, a fiftieth percentile relative performance for a system design refers to a system design that has a performance that has Appeal 2010-000455 Application 11/358,597 8 as many other systems with lower performance as have higher performance; a “mean relative performance” refers to one that is equal to the average (mean) performance of the systems being compared against; and a “mid-point relative performance” refers to one that is half way between a worst-in- class system and a best-in-class system. The relative performance specification specifies a performance metric in relative terms, rather than in, say, absolute ones. (Spec. 2:30–3:6). We construe the relative performance limitation in accordance with these definitions. See Phillips, 415 F.3d at 1316. We agree with Appellants that the passages of Quernemoen (col. 2, ll. 62-67; col. 6, ll. 30-61; col. 7, l. 65–col. 8, l. 5) relied on by the Examiner do not disclose a design method that receives, as an input specification, a “relative performance specification.” In particular, we agree with Appellants that “Guernemon [sic] discloses that an inquiry of system planner 207 that includes system parameters for investigation, which return systems that are applicable to the inquiry. . . . Guernemon [sic] is silent to the system parameters including the ‘relative performance specification’ as claimed.” (Reply Br. 4). We further agree with Appellants that the “performance database 206 containing data regarding the comparative performance of various computer systems that have various specifications and operating capacities” (Quernemoen col. 6, ll. 27-30) merely describes a database containing data that can be compared. (Reply Br. 4). The passage does not disclose that “comparative performance” is “relative performance” data as claimed and defined in the Specification. (Id.). Finally, we agree with Appellants that the reference to “estimat[ing] the relative performance and value of various computer systems that a system planner may be considering" (Quernemoen col. 2, ll. 62-67) refers to Appeal 2010-000455 Application 11/358,597 9 desired output of the system and not an input received by the system (Reply Br. 4-5). The Examiner has not established that Quernemoen discloses all of the elements of claim 1, Verdegaal, 814 F.2d at 631, in as complete detail as recited in claim 1, Richardson, 868 F.2d at 1236, arranged as in claim 1, Bond, 910 F.2d at 832. Therefore, we will not sustain the rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Quernemoen. Independent claims 19 and 20 recite limitations substantially the same as the relative performance limitation and claims 2-8 and 10-18 depend from claim 1. Accordingly, we will not sustain the rejection of claims 2-8 and 10-20 under 35 U.S.C. § 102(b) as anticipated by Quernemoen. ORDER The decision of the Examiner to reject claims 1-8 and 10-20 under 35 U.S.C. § 112, second paragraph, as indefinite, is affirmed. The decision of the Examiner to reject claims 1-8 and 10-20 under 35 U.S.C. § 102(b) as anticipated by Quernemoen is reversed. As the rejection of each of the appealed claims is affirmed on at least one of the grounds specified in the rejection appealed from, the decision of the Examiner to reject claims 1-8 and 10-20 is affirmed. See 37 C.F.R. § 41.50(a)(1). 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. § 1.136(a)(1)(iv) (2010). AFFIRMED Appeal 2010-000455 Application 11/358,597 10 babc Copy with citationCopy as parenthetical citation