Ex Parte Posamentier

Board of Patent Appeals and Interferences

May 10, 2012

11513967 (B.P.A.I. May. 10, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/513,967 08/31/2006 Joshua Posamentier P24375(4040) 5738
50889 7590 05/11/2012
SCHUBERT LAW GROUP PLLC
c/o CPA Global
P.O. BOX 52050
MINNEAPOLIS, MN 55402
EXAMINER
VALONE, THOMAS F
ART UNIT PAPER NUMBER
2858
MAIL DATE DELIVERY MODE
05/11/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSHUA POSAMENTIER
____________________

Appeal 2010-003121
Application 11/513,967
Technology Center 2800
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and JUSTIN T. ARBES,
Administrative Patent Judges.

ARBES, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-8 and 10-30, the only claims pending in the application on appeal. Claim
9 was cancelled. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).1
We affirm.
The claims are directed to an apparatus, method, system, and
machine-accessible medium for performing biometric identification using
quantum tunneling. Claim 1 is representative:
1. An apparatus for biometric identification comprising:
an array of pads;
a first number of current generators to generate quantum
tunneling currents to flow from a number of pads in the array
through a dielectric medium, wherein the quantum tunneling
currents are to flow to a biometric element; and
at least one voltage measurer to measure voltage
magnitudes of the number of pads.

REJECTIONS
Claims 1-8 and 10-30 stand rejected under 35 U.S.C § 112, first
paragraph, as failing to comply with the enablement requirement. Ans. 5-8.
Claims 1-8 and 10-30 stand rejected under 35 U.S.C § 112, first
paragraph, as failing to comply with the written description requirement.

1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed April 13, 2009) and Reply Brief (“Reply Br.,” filed October 23, 2009),
and the Examiner’s Answer (“Ans.,” mailed August 18, 2009) and Final
Rejection (“Final Rej.,” mailed September 12, 2008).
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Ans. 4.2

ISSUES
Appellant argues on pages 9-26 of the Appeal Brief and page 23 of
the Reply Brief that the Examiner’s 35 U.S.C. § 112 rejections of
independent claims 1, 13, 21, and 28 are in error. These arguments present
us with the following issues: (1) did the Examiner err in determining that the
claims are not enabled, and (2) did the Examiner err in finding that the
claims lack written description in the Specification?

ANALYSIS
I. Enablement
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993); In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991) (the
specification must teach those of ordinary skill “how to make and how to use
the invention as broadly as it is claimed”). Factors to consider include “(1)
the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill

2 While Appellant also argues various rejections under 35 U.S.C. § 103(a),
those rejections were not included in the Final Rejection and are not before
us. See App. Br. 6-9; Ans. 2. We also do not address the Examiner’s
objections to the use of “quantum tunneling” in the Title and Specification,
which relate to petitionable subject matter under 37 C.F.R § 1.181. See
Final Rej. 2-3.
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of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Enablement, like obviousness, is a question of law based upon underlying
facts. Id. at 735. Regarding the burdens of demonstrating or refuting non-
enablement, the Federal Circuit has instructed:
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial burden of
setting forth a reasonable explanation as to why it believes that
the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the
specification of the application; this includes, of course,
providing sufficient reasons for doubting any assertions in the
specification as to the scope of enablement. If the PTO meets
this burden, the burden then shifts to the applicant to provide
suitable proofs indicating that the specification is indeed
enabling.
Wright, 999 F.2d at 1561-62.
We agree with the Examiner that the Specification would not have
enabled a person of ordinary skill in the art to practice the claimed invention
without undue experimentation. Ans. 5-15. The Examiner set forth in the
Answer a reasonable factual basis for why the claims are not enabled, and
Appellant has not presented persuasive arguments, supported by sufficient
facts, indicating otherwise.
First, the Examiner found that if a person of ordinary skill in the art
attempted to build the claimed device according to what is disclosed in the
Specification, the device would not produce quantum tunneling at all, but
rather what is known as “arc discharge” or “coronal discharge.” Ans. 5-6.
The Specification discloses an applied voltage range of approximately 6 to
19 volts, and the Examiner found it well-known that quantum tunneling only
occurs through an insulating barrier that is “nanoscopically thin” (e.g., “20
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nanometers or less”). See Spec. ¶¶ 33, 35; Ans. 5.3 Using these values, and
citing various reference materials as support, the Examiner calculated an
“exceedingly high voltage gradient (or electric field E)” of at least 300
million volts per meter. Ans. 5. According to the Examiner, this would
prevent any quantum tunneling, which requires E < V0 (the barrier
potential). Ans. 5. The Examiner similarly found that the Specification’s
disclosure of “varying the voltages” applied to the pads to generate a
quantum tunneling current would push E above V0 and preclude quantum
tunneling as well. Ans. 6-7.
Appellant does not dispute the Examiner’s calculations or the cited
reference materials, but argues generally that the descriptions in the
Specification are sufficient and that precise measurements are not necessary
for the claims to be enabled. App. Br. 15-17. While Appellant is correct
that exact measurements are not required for a claim to be enabled in every
circumstance, we agree with the Examiner that in this case, given the
extremely high voltages disclosed in the Specification and the importance of
precise insulator thickness to produce quantum tunneling, a more detailed
description was needed for a skilled artisan to make and use the claimed
device without undue experimentation. See Ans. 10. Moreover, the
Specification only describes the various components of the claimed device at

3 Appellant agreed with the Examiner and amended the Specification to
remove references to an insulating material of 50-360 micrometers,
acknowledging that “quantum tunneling would not have occurred through
the insulating materials having the prohibitive thicknesses.” See App. Br.
14, 18; Amendment and Response filed September 5, 2007; Spec. ¶¶ 23, 28.
As amended, the Specification gives no example thicknesses for the
insulating material, but states that it may be “large” or “small.” Spec. ¶ 30.
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a very high level, without describing in sufficient detail how a person of
ordinary skill would actually vary and control the applied voltages to
generate quantum tunneling current. See, e.g., Spec. ¶¶ 36, 40-41; Ans. 5-6.
Appellant also relies on an inventor declaration. App. Br. 17-18;
Reply Br. 23; Declaration Under 37 C.F.R. § 1.132 of Joshua Posamentier
¶¶ 6, 8 (“Decl.,” filed Mar. 17, 2008). We note at the outset that the
declaration does not explain how a person of ordinary skill in the art would
actually have built the claimed biometric identification device and used it
with a live biometric component based on what Appellant disclosed in the
Specification, as the Examiner recognized. Ans. 12. Moreover, the
declaration is primarily directed to quantum tunneling with scanning
tunneling microscopes (STMs), which keep the voltage and current constant
while “continuously adjusting the position of the scanning tip.” See Decl. ¶¶
5-6. Appellant, however, claims to have invented something different:
varying the applied voltage. Decl. ¶ 5. The declaration does not explain
how a person of ordinary skill in the art would have applied knowledge of
STM functionality to make and use a biometric identification device that
varies a different parameter.
The declaration also contains speculative assertions (not disclosed in
the Specification and not supported by independent evidence) about what a
person of ordinary skill in the art “may utilize” or “may develop,” further
demonstrating that undue experimentation would be necessary to make and
use the claimed invention. See Decl. ¶¶ 5-8. For example, the declaration
states that “a number of experiments . . . have been performed with much
higher voltages (on the order of 10’s of volts),” but does not cite any
evidence regarding the “experiments” or explain why they would not be
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considered undue. Decl. ¶ 6. And the declaration acknowledges that
detecting quantum tunneling current when higher voltages are used is
“possible although typically not practical” for STMs. Decl. ¶ 6. Having
reviewed the record before us, it is clear that the Examiner considered and
weighed the declaration in his analysis, but found it not persuasive as to
whether a person of ordinary skill in the art would need to perform undue
experimentation to make and use the claimed invention based on the
Specification. See Ans. 12-13. We agree.
Second, the Examiner found that a known “film of dust or dirt” and
dead skin layer on biometric elements like a human finger would add to the
thickness and prevent quantum tunneling current from flowing as claimed.
Ans. 7. Appellant does not specifically challenge this finding, but argues
that “‘quantum tunneling’ as described in the specification is occurring only
through the barrier and not to any significant extent through other elements
such as dead skin.” App. Br. 19 (emphasis removed). According to
Appellant, the quantum tunneling current through the insulating material
affects the voltage potential of the biometric component, which in turn
causes a “resultant current” through that component (which may be equal in
magnitude to the quantum tunneling current). App. Br. 20-21. Appellant
contends that even though quantum tunneling only occurs through the
insulating material, a person of ordinary skill in the art would understand
that claim 1 refers to “the overall circuit currents as ‘quantum tunneling’
currents as a matter of convenience.” App. Br. 21.
We are not persuaded by this view of the claim language, as it is
contradicted by the Specification and the claims themselves. The
Specification does not differentiate between a “quantum tunneling current”
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and “resultant current,” and indicates that it is a “quantum tunneling current”
that flows throughout the circuit path. See, e.g., Spec. ¶¶ 26-28, 37 (“Once
the quantum tunneling currents 320 are established, they may flow through
insulating material 310 and dielectric medium 305 to biometric component
300. Upon reaching biometric component 300, the quantum tunneling
currents 320 may flow in a common current return path 360 back to a
ground element 370.”); Figs. 2B, 3. Further, claim 1 recites generating
“quantum tunneling currents to flow from a number of pads in the array
through a dielectric medium, wherein the quantum tunneling currents are to
flow to a biometric element.” It does not say anything about quantum
tunneling current flowing only through the insulating material (which is
separately recited in dependent claims 3, 4, and 22) and a resultant current
otherwise. Appellant also provides no factual support indicating that one of
ordinary skill would read the term “quantum tunneling current” in claim 1 in
the proposed manner.4
Applying the broadest reasonable interpretation of the claim in light of
the Specification, as we must, see In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007), claim 1 requires “quantum tunneling
currents,” not another type of current, flowing from the pads through the
dielectric medium (e.g., air) and to the biometric element (e.g., finger). And
given the requirements of the claims and the Specification deficiencies
identified by the Examiner, we agree that a person of ordinary skill in the art

4 We also note that Appellant appears to take two contradictory positions by
arguing that no insulating material is necessary for the independent claims
(App. Br. 14-15), while also arguing that quantum tunneling “only” occurs
through very thin insulating material (App. Br. 21).
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would not have been able to make and use a biometric identification
apparatus that generates such quantum tunneling currents without undue
experimentation.
We conclude that the Examiner set forth a reasonable explanation as
to why the scope of protection provided by the claims is not adequately
enabled. Appellant has not produced sufficient evidence in rebuttal to call
the conclusion of non-enablement into question. Accordingly, we sustain
the rejection of claims 1-8 and 10-30 for lack of enablement.

II. Written Description
To satisfy the written description requirement, “the disclosure of the
application relied upon [must] reasonably convey[] to those skilled in the art
that the inventor had possession of the claimed subject matter as of the filing
date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010). While written description and enablement are separate requirements,
they “usually rise and fall together. That is, a recitation of how to make and
use the invention across the full breadth of the claim is ordinarily sufficient
to demonstrate that the inventor possesses the full scope of the invention,
and vice versa.” LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d
1336, 1345 (Fed. Cir. 2005). Whether a specification complies with the
written description requirement is a question of fact. Ariad, 598 F.3d at
1351. Again, the Examiner has the initial burden of presenting evidence or
reasons why persons skilled in the art would not recognize in an applicant’s
disclosure a description of the invention defined by the claims. In re
Wertheim, 541 F.2d 257, 265 (CCPA 1976).
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As with the enablement analysis discussed above, the Examiner set
forth a reasonable explanation as to why the Specification would not have
conveyed to a person of ordinary skill in the art that Appellant was in
possession of the claimed subject matter. Ans. 4, 8-10. Therefore, the
burden shifted to Appellant to show, with sufficient facts, possession of the
invention. Appellant did not meet that burden.
The Examiner found insufficient description in the Specification for
reasons similar to those regarding enablement. Ans. 8-10. For instance, the
voltages disclosed in the Specification and their variation to generate a
quantum tunneling current violate the well-known quantum tunneling
requirement of E < V0 according to the Examiner. Ans. 8-9. The Examiner
also found that the amendments Appellant made to the Specification indicate
that Appellant did not have possession of “the broader, more generic
invention.” Ans. 4. Specifically, Appellant deleted the portions of the
Specification referring to an insulating material of 50-360 micrometers,
acknowledging that quantum tunneling only occurs at much smaller
thicknesses. See supra pg. 5 and note 3. Therefore, “any size of insulating
material is now claimed even though the same applied voltages have been
retained in the specification.” Ans. 4.
Appellant argues that the originally disclosed thicknesses were
obvious errors that a person of ordinary skill in the art would have “easily
recognized.” App. Br. 12-14, 26. But even assuming that this is the case,
the high exemplary voltages and the Specification’s remaining disclosure
that the insulating material can have a “large” thickness raise the question of
whether the current through Appellant’s disclosed insulating material is
quantum tunneling current or something else entirely, such as “arc
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discharge” as the Examiner found. See Spec. ¶¶ 30, 33, 35. Appellant has
not rebutted the Examiner’s findings on these points, for the reasons
explained above.
Appellant also contends that amending the Specification did not
change the scope of the claims because none of the independent claims
recite an insulating material. App. Br. 13-14. Therefore, according to
Appellant, any written description regarding the thickness of an insulating
material is irrelevant to the analysis of the independent claims. As the
Examiner recognized, however, the incorrect measurements are relevant
because any material, including the “dielectric medium” recited in the
claims, would have to be of a sufficiently small thickness (e.g., 20
nanometers or less) for quantum tunneling to occur through it. Ans. 10.
Appellant did not describe this feature in the Specification to a sufficient
degree to be deemed in possession of the invention.
Accordingly, we sustain the rejection of claims 1-8 and 10-30 for lack
of written description.5

5 We have decided the appeal before us. However, should there be further
prosecution of claims 28-30 directed to a “machine-accessible medium
containing instructions, which when executed by an apparatus, cause the
apparatus to perform operations,” the Examiner’s attention is directed to
U.S. Patent & Trademark Office, Interim Guidance for Determining Subject
Matter Eligibility for Process Claims in View of Bilski v. Kappos, 75 Fed.
Reg. 43,922 (July 27, 2010); David J. Kappos, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010);
and U.S. Patent & Trademark Office, Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009,
available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf.
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CONCLUSION
Appellant has not persuaded us of error in the Examiner’s rejections
of claims 1-8 and 10-30.

DECISION
For the above reasons, the Examiner’s decision to reject claims 1-8
and 10-30 is affirmed.
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)(iv).

AFFIRMED

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