Ex Parte Eerd et al

Board of Patent Appeals and Interferences

Jul 9, 2012

11358597 (B.P.A.I. Jul. 9, 2012)

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

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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).
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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The Examiner has withdrawn rejections of clams 1-8 and 10-20 under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).
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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
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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.
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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
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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
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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
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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
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