Ex Parte Miller et alDownload PDFPatent Trial and Appeal BoardSep 21, 201713800996 (P.T.A.B. Sep. 21, 2017) Copy Citation 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). 2 Appeal 2017-000085 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. 3 Appeal 2017-000085 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 4 Appeal 2017-000085 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 5 Appeal 2017-000085 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 6 Appeal 2017-000085 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. 7 Appeal 2017-000085 Application 13/800,996 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. 8 Appeal 2017-000085 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. 9 Appeal 2017-000085 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 10 Copy with citationCopy as parenthetical citation