Ex Parte Braun

Board of Patent Appeals and Interferences

Jun 12, 2012

10670902 (B.P.A.I. Jun. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAREN M. BRAUN
____________

Appeal 2010-001822
Application 10/670,902
Technology Center 2600
____________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-3 and 5-17. The Appellant
appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).

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INVENTION
The following claim illustrates the invention on appeal:
1. A method for improving printer characterization to more
accurately reproduce desired colors on a destination printing
device given the ambient illumination at the location where the
printer's output is intended to be viewed, comprising:
a) producing a target consisting of pairs of metamers,
where each pair matches for one illuminant and mismatches for
others;
b) viewing said target under the illumination for which
characterization is desired;
c) selecting a best metameric pair match from said
metameric pairs, which estimates said viewing illumination;
d) entering an indicator of said estimated viewing
illumination; and
e) adjusting the characterization data to correspond to
said estimated viewing illumination.

REJECTIONS
Claims 1-3, 5, and 7-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent Application Pub. No. US 2003/0020727
Al ("Newman") and U.S. Patent Application Pub. No. US 2002/0158933 Al
("Yamamoto").
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newman, Yamamoto, and the Examiner’s official notice.

NEW INDEFINITENESS REJECTION
The issue before us is whether claim 1's recitation of "the
characterization data" makes claims 1-3 and 5-17 indefinite.
"The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d
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1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharma. Co.,
927 F.2d 1200, 1217 (Fed. Cir.1991)). For example, a claim is indefinite
"where the language 'said lever' appears in a dependent claim where no such
'lever' has been previously recited in a parent claim to that dependent claim."
Ex parte Moelands, 3 USPQ2d 1474, 1476 (BPAI 1987).
Here, claim 1 recites "the characterization data." We find that no such
"characterization data," however, has been previously recited in the
independent claim.
Therefore, we conclude that claim 1 and claims 2, 3 and 5-17, which
depend therefrom, are indefinite. Consequently, we reject claims 1-3 and 5-
17 under 35 U.S.C. § 112, ¶ 2, as indefinite for failing to particularly point
out and distinctly claim the Appellant's invention.

EXISTING OBVIOUSNESS REJECTIONS
The issue before us is whether the indefiniteness of claims 1-3 and 5-
17 prevents us from reaching the issue of obviousness.
A rejection should not be based on "speculations and assumptions."
In re Steele, 305 F.2d 859, 862 (CCPA 1962). "All words in a claim must be
considered in judging the patentability of that claim against the prior art. If
no reasonably definite meaning can be ascribed to certain terms in the claim,
the subject matter does not become obvious—the claim becomes indefinite."
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Here, for the reasons explained in addressing the indefiniteness of
claims 1-3 and 5-17 "our analysis of the claims leaves us in a quandary as to
what in fact is covered by them." Steele, 305 F.2d at 862. Speculations and
assumptions would be required to decide the meaning of the terms employed
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in the claims and the scope of the claims. Therefore, we conclude that the
indefiniteness of claims 1-3 and 5-17 prevents us from reaching the issue of
obviousness.
Consequently, we reverse pro forma the obviousness rejections of
claims 1-3 and 5-17. We emphasize that out reversal is based on procedure
rather than on the merits of the obviousness rejections. The reversal does
not mean that we consider the claims to be patentable as presently drawn.

DECISION
We reject claims 1-3 and 5-17 under § 112, ¶ 2. We reverse the
rejections of claims 1-3 and 5-17 under § 103(a).
37 C.F.R. § 41.50(b) provides that "[a] new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that, within two months from the date of the
decision, the Appellant must exercise one of the following options to avoid
termination of proceedings of the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .
(2) Request that the proceeding be reheard under 37 C.F.R. §
41.52 by the Board upon the same record. . . .
No time for taking any action connected 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).

REVERSED
37 C.F.R. § 41.50(b)
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