Ex Parte Miller et al

Patent Trial and Appeal Board

Sep 21, 2017

13800996 (P.T.A.B. Sep. 21, 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.
13/800,996 03/13/2013 Garold C. Miller 8185-0039 6126
35301 7590 09/25/2017
MCCORMICK, PAULDING & HUBER LLP
CITY PLACE II
185 ASYLUM STREET
HARTFORD, CT 06103
EXAMINER
HERNANDEZ, MANUEL J
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
patentdocket @ ip-lawyers .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAROLD C. MILLER and
NATHAN DANIEL WEINSTEIN
Appeal 2017-000085
Application 13/800,9961
Technology Center 2800
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3—5, 7—9, 15—17, and 24—29. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Halo2Cloud, LLC as the real party in interest. Appeal
Br. 3.
2 In our Opinion, we refer to the Specification filed March 13, 2013
(“Spec.”), the Non-Final Action mailed September 21, 2015 (“Non-Final
Act.”); the Appeal Brief filed March 18, 2016 (“Appeal Br.”); the
Examiner’s Answer mailed July 26, 2016 (“Ans.”); and the Reply Brief filed
September 22, 2016 (“Reply Br.”).
Appeal 2017-000085
Application 13/800,996
The claims are directed to a portable charger unit for recharging an
electronic device. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A portable charger unit for recharging at least one electronic
device having a rechargeable internal battery, said portable
charger unit comprising:
a charger housing internally storing a rechargeable
battery;
a power input port operatively connected to the internal
battery for providing an electrical charge from an external
power source to the charger unit and for recharging the internal
battery when the charger unit is connected to said power source;
at least two power output ports; and
a first switch provided in the charger housing and
operatively connecting each of the at least two power output
ports with the internal battery for providing an electrical charge
from the internal battery to an electronic device when said
electronic device is connected to the charger unit via the output
port, said switch being operable, by repeated shaking of the
portable charger unit, between a first position in which no
power output port is connected with the internal battery, a
second position in which a first of the at least two power output
ports is connected with the internal battery, and at least one
additional position in which another of the power output ports
is connected with the internal battery.
Appeal Br. 11 (Claims App’x).
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Application 13/800,996
REJECTIONS
The Examiner made the following rejections: (1) claims 1, 3—5, 7—9,
15—17, and 24—29 under 35 U.S.C. § 112 (pre-AIA), first paragraph3 as
failing to comply with the written description requirement; and (2) claims 1,
3—5, 7—9, 15—17, and 24—29 under 35 U.S.C. § 112 (pre-AIA), first
paragraph as failing to comply with the enablement requirement. Non-Final
Act. 4, 5.
OPINION
Claim 1 is the sole independent claim. The dependent claims will
stand or fall with claim 1, because Appellants argue the claims together. 37
C.F.R. § 41.37(c)(l)(iv).
Written Description
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to “clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.” Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562—63 (Fed. Cir.
1991) (citation omitted)). “[T]he test for sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Id. (citations omitted). This test “requires an objective
inquiry into the four comers of the specification from the perspective of a
person of ordinary skill in the art.” Id. “Based on that inquiry, the
3 Because this application was filed before the 16 March 2013, effective date
of the America Invents Act, we refer to the pre-AIA version of the statute.
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Application 13/800,996
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Id,
The sufficiency of an application’s written description is a question of
fact. AriadPharms., 598 F.3d at 1351.
The Examiner finds two deficiencies in the original disclosure in light
of the claims: (1) the Specification lacks disclosure of “a first position in
which no power output port is connected with the internal battery;” and (2)
the Specification lacks disclosure of an internal switch with a first, second,
and additional position that is actuated by shaking. Non-Final Act. 4.
As to the first issue, Appellants contend that Figure 3 shows and
paragraph 40 of the Specification describes a switch having a first position
in which no power output port is connected with the internal battery. Appeal
Br. 8.
Figure 3 illustrates internal switch 30 in the “off’ position, i.e., not
connecting any power output port with the internal battery. Drawings Fig. 3.
Paragraph 40 describes internal switch 30.
The Examiner’s finding that the original disclosure lacks description
of “a first position in which no power output port is connected with the
internal battery” is not supported by the evidence. We do not sustain the
Examiner’s rejection of the claims on this basis.
The Examiner also rejects the claims as lacking written description for
an internal switch with a first, second, and additional position that is
actuated by shaking. Non-Final Act. 4. The Examiner finds the disclosure
in original claim 6 of the Specification of “repeated actuating motion of the
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Application 13/800,996
portable charger unit” is not the equivalent of shaking the charger unit to
provide the first, second, and additional position of the switch. Id.
Appellants argue that sufficient disclosure of the limitation is
provided in paragraphs 11 and 39 of the Specification and originally filed
versions of claims 1 and 6. Appeal Br. 8; Reply Br. 3. Paragraph 11
discloses the charger unit can be actuated by a shaking motion and
paragraph 39 discloses the charger unit may include “shake-to-activate”
technology. Spec. Ull, 39. Original claim 1 recites a first switch being
operable between a first position I which the power output port is not
connected to the internal battery and a second position in which the power
output port is connected with the internal battery, the switch being operable
by an actuating motion of the portable charger unit. Spec. 24 (claim 1).
Original claim 6 depends from original claim 1, and further recites “wherein
the first switch is operable, by repeated actuating motion of the portable
charger unit, between the second position in which a first of the power
output ports is connected with the internal battery and at least one additional
position in which another of the power output ports is connected with the
internal battery.” Id. at 25 (claim 6).
In response, the Examiner finds that the paragraphs are silent
regarding a multi-position switch which is actuated by shaking the portable
charger unit, i.e., that paragraphs do not state that the switch is operable to
multiple different positions by shaking (Ans. 4). The Examiner also finds
that the recitations in original claims 1 and 6 of a first position, second
position, and additional position do not include shaking the charger unit to
provide different switch positions. Id. at 5. The Examiner therefore finds
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Application 13/800,996
that the application, as filed, lacks written description of shaking the charger
unit to operate the switch into three positions. Id.
As Appellants explain, the Specification discloses “shaking” as an
exemplary actuating motion and actuating the switch to an “on” position by
shaking. Appeal Br. 8 (citing Spec. Ull and 39); Reply Br. (citing Spec.
140).
“The claims as filed are part of the specification, and may provide or
contribute to compliance with § 112.” Hyatt v. Boone, 146 F.3d 1348, 1352
(Fed. Cir. 1998). In the instant case, original claims 1 and 6, in light of the
Specification, provide sufficient disclosure of the disputed limitation.
We find the switch being “operable, by repeated actuating motion” of
the portable charger unit between positions (original claim 6) is of the same
scope as the “switch being operable, by repeated shaking of the portable
charger unit” between different positions (current claim 1). In addition,
original claims 1 and 6 disclose operating a switch between first, second,
and additional positions to connect at least two power output ports to an
internal battery.
The Examiner reversibly errs in finding that the original disclosure
lacks description of an internal switch with a first, second, and additional
position that is actuated by shaking. We do not sustain this rejection.
Enablement
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont DeNemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). The law
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Application 13/800,996
requires that the specification shall inform the skilled artisan how to use, not
how to find out how to use for themselves. In re Gardner, 427 F.2d 786,
789 (CCPA 1970); see also Brenner v. Manson, 86 S.Ct. 1033, 1042—43
(1966) (stating, in the context of a utility requirement, that “a patent is not a
hunting license. It is not a reward for the search, but compensation for its
successful conclusion.”). “[Reasonable detail must be provided in order to
enable members of the public to understand and carry' out the invention.”
Genentech, Inc. v. Novo Nor disk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).
Against this background, the Examiner finds the following claim
limitation lacks enablement:
said switch being operable, by repeated shaking of the portable
charger unit, between a first position in which no power output
port is connected with the internal battery, a second position in
which a first of the at least t wo po wer output ports is connected
with the internal battery, and at least one additional position in
which another of the power output ports is connected with the
internal battery
Non-Final Act. 5. The Examiner finds that neither the structure nor specifics
of the multi-position internal switch claimed is disclosed in the
Specification, thus the switch and its operation lack enablement. Id. The
Examiner considered the nature of the invention and the amount of direction
provided by the inventor, in addition to the state of the prior art as evidenced
by citation of prior art with relevant shake-to-activate features. Ans. 7.
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Appellants contend, inter alia, that the Examiner acknowledges that
not all of the factors Wands factors4 were considered by the Examiner,
making the enablement rejection automatically improper. Reply Br. 4.
The Wands factors are illustrative, not mandatory; it is not necessary
to consider all the Wands factors in a consideration of enablement. Amgen,
Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1213 (Fed. Cir.
1991). The Examiner’s rejection is not improper for failing to explicitly
address each of the Wands factors.
When the original claims were filed, according to Appellants, shake-
to-operate switches were known in the art and were routine to construct.
Appeal Br. 9 (citing McGinley, U.S. Pat. Pub. 2011/0187315 A1 for
disclosure of a motion sensor switch). Appellants further argue that
relatively little experimentation would have been required for one of
ordinary skill in the art at the time of the invention to implement “a (well
known) motion sensor switch in combination with a (well known) counting
circuit, controlling a (well-known) multi-position switch, such that the multi­
position switch could cycle among three or more positions.” Id. at 10.
Finally, Appellants point to paragraph 7 of the Specification as evidence of
the state of the prior art. Paragraph 7 states “[ejven if multiple devices may
be attached to the power charger at the same time, the charger will prioritize
how the devices are recharged—i.e., it will charge one device first and then
the second.”
4 See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), reciting factors to be
considered in determining whether a disclosure would require undue
experimentation and, therefore, lack enablement.
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Application 13/800,996
The issues here are not whether shake-to-operate switches were
known in the art when the application was filed, but rather whether multi­
position switches operable by shaking between first, second, and additional
positions were known in the art and, if not known, whether such switches
would have required only routine experimentation to construct.
The Examiner’s findings advance acceptable reasoning consistent
with lack of enablement of the claims. In re Strahilevitz, 668 F.2d 1229,
1232 (CCPA 1982). The burden of proof thus shifts to Appellants to show
that one of ordinary skill in the art could have practiced the claims without
undue experimentation. Id.
The only evidence offered by Appellants for the existence of the
claimed switch is McGinley, which does not disclose a multi-position shake-
to-operate switch, as the Examiner finds. Ans. 7.
Appellants argue that “[relatively little experimentation” would be
required to implement the claimed switch, but offer no evidence in support.
See Appeal Br. 14. It is well settled that arguments of counsel cannot take
the place of factually supported objective evidence. See, e.g., In re Huang,
100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
On this record, Appellants do not show that the Examiner reversibly
errs in rejecting the claims for lacking enablement.
DECISION
For the above reasons, we reverse the rejection of claims 1, 3—5, 7—9,
15—17, and 24—29 for failing the written description requirement is reversed,
but affirm the rejection for lack of enablement.
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Application 13/800,996
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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