Ex Parte Golding et al

Patent Trials and Appeals Board

Apr 1, 2019

10556445 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/556,445 11/10/2005 Benjamin T. Golding
24737 7590 04/03/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2003P00345WOUS 1303
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
04/03/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN T. GOLDING, NEIL C. BIRD,
and BRIAN J. GUTHRIE
Appeal2017-005094
Application 10/556,445
Technology Center 3600
Before ALLEN R, MacDONALD, IRVINE. BRANCH, and
KARA L. SZPONDOWSKI,Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6-11, and 13-16, constituting all claims
currently pending in the application. We have jurisdiction under 3 5 U.S. C.
§ 6(b).
We REVERSE.
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Application 10/556,445
STATEMENT OF THE CASE
Appellants' invention is directed to a method of manufacturing an
electronic device product from reusable electronic hardware modules and
electronic device products obtained by the method. Spec. 1-2. Claims 1
and 9, reproduced below, are illustrative of the claimed subject matter:
1. A method for manufacturing an electronic device product
from a plurality of reusable electronic hardware modules, the
method comprising:
accessing, using a computer, a device product intranet
blueprint describing reusable electronic hardware modules
required to manufacture an electronic device for performing a
function intended by the device product intranet blueprint,
wherein the reusable electronic hardware modules are operable
to transmit and receive wireless messages over a product
intranet, each reusable electronic hardware module including
description data describing capabilities of a corresponding
reusable electronic hardware module, and wherein at least one
reusable electronic hardware module is a primary hardware
module operable to establish and co-ordinate said product
intranet;
selecting, using a pick and place machine controlled by
the computer, reusable electronic hardware modules for the
electronic device product including the primary hardware
module based on the description data of the reusable electronic
hardware modules and the device product intranet blueprint;
arranging, using the pick and place machine
controlled by the computer, the selected reusable
electronic hardware modules including said primary
hardware module in an electronic device product
housing, wherein the device product housing is an
integrated part of the manufactured electronic device
product; and
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establishing, using the primary hardware module,
said product intranet based at least partially on the device
product intranet blueprint, said product intranet
comprising said selected reusable electronic hardware
modules and by which said product intranet at least in
part operates, wherein a communication range of the
product intranet is substantially constrained within the
product housing.
9. An electronic device comprising:
an electronic device housing having a plurality of
reusable electronic hardware modules, each of the reusable
electronic hardware modules having a radio unit for
transmitting and receiving wireless messages over a product
intranet, the product intranet having a communication range
that is substantially constrained within the electronic device
housing, and wherein at least one of the reusable electronic
hardware modules is a primary hardware module having;
a memory for storing a device product intranet blueprint;
and
a microcontroller for establishing said product intranet
according to the device product intranet blueprint.
REJECTIONS
Claims 1--4 and 6-8 stand rejected under 3 5 U.S. C. § 101 because the
claimed invention is directed to ineligible subject matter.
Claims 1--4 and8 standrejectedunder35 U.S.C. § 103(a)as being
unpatentable overthe combination ofRosenberget al. (US 2001/0005815
Al; published June 28, 2001) ("Rosenberg"), Bishop et al. (US 6,611,201
Bl; issued Aug. 26, 2003) ("Bishop"), andHaulin et al. (US 2006/0179128
Al; published Aug. 10, 2006) ("Haulin").
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Claim 2 standsrejectedunder35 U.S.C. § 103(a)as being
unpatentable over the combination of Rosenberg, Bishop, Haulin, and Hunt
et al. (US 6,915,338 Bl; issued July 5, 2005) ("Hunt").
Claim 6 standsrejectedunder35 U.S.C. § 103(a)as being
unpatentable over the combination of Rosenberg, Bishop, Haulin, and
Official Notice.
Claim 7 standsrejectedunder35 U.S.C. § 103(a)as being
unpatentable over the combination of Rosenberg, Bishop, Haulin, Official
Notice, and Lau et al. (US 6,690,657 Bl; issued Feb. 10, 2004) ("Lau").
Claims 9, 13, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hunt and Haulin.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hunt, Haulin, Lau, and Feezor(US
3,793,484; issued Feb. 19, 1974).
ANALYSIS
35 USC§ 101 Rejections
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 3 5 U.S. C. § 101.
However, the Supreme Court has long interpreted35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g.,AliceCorp. v. CLSBankint'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at217-18 (citing Mayo CollaborativeServs. v. Prometheus
Labs., Inc., 566U.S. 66, 75-77 (2012)). Inaccordancewiththat framework,
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we frrst determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593,611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parkerv. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
If the claim is "directed to" an abstract idea, we tum to the second
step oftheAlice andMayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January?, 2019 Memorandum,2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum").
Under that guidance, we frrst look to whether the claim recites:
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( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) ("Prong 1 "); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106. 05( a}-( c ), ( e }-(h)) ("Prong
2").
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 52-57.
Prong 1
Underthe first step in the Alice/Mayo framework, the Examiner
determines the claims are directed to the abstract idea of manufacturing an
electronic device product, which is a fundamental economic/business
practice, a method of organizing human activity, and/ or an idea of itself.
Final Act. 2-3, 24--25; Ans. 2-5.
The Examiner explains
the claim is covering the general idea of making/assembling a
product, and is more of a business model than a concrete
process. Therefore, the claims are considered to be a
fundamental economic practice, because they are directed to
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concepts relating to the economy and commerce, such as
agreements between people in the form of contracts, legal
obligations, and business relations.
The claims, which are directed to manufacturing an
electronic device product, are also considered to be certain
methods of organizing human activity as the claims include
concepts relating to interpersonal and intrapersonal activities,
such as managing relationships or transactions between people,
social activities, and human behavior; satisfying or avoiding a
legal obligation; advertising, marketing, and sales activities or
behaviors; and managing human mental activity ....
. . . The claims are also considered to be an idea "of
itself' which is used to describe an idea standing alone such as
an uninstantiated concept, plan or scheme, as well as a mental
process ( thinking) that "can be performed in the human mind,
or by a human using pen and paper."
Ans. 2--4; see also Final Act. 27 ("The fact that [the] claim is not directed to
any particular end product or any particular reusable modules makes it seem
like the claim is covering the general idea of assembly by this technique,
possibly more of a business model").
Appellants argue the Examiner "does not consider it necessary to
explain why the claimed 'method of manufacturing an electronic device
product' corresponds to a concept the courts have identified as abstract."
App. Br. 10. Moreover, Appellants argue they "are not aware of any court
decision identifying a method of manufacturing an electronic product to be
an abstract idea." App. Br. 10; see also Reply Br. 2-3. Appellants further
argue "the claims recite a concept that is an improvement in computer
related technology" involving the technical problems in recycling used
device components. App. Br. 11-12; see also Reply Br. 3--4. Appellants
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argue the combination of claimed elements provide a solution to this
problem and do not recite a conventional computer, particularly the claimed
"pick and place machine," "primary hardware module," and "product
intranet blueprint." App. Br. 12; see also Reply Br. 4.
We are persuaded by Appellants' arguments. The Memorandum
"extracts and synthesizes key concepts identified by the courts as abstract
ideas," and includes groupings of mathematical concepts, certain methods of
organizing human activity including fundamental economic principles and
practices, and mental processes. See Memorandum, 84 Fed. Reg. at 52.
"Claims that do not recite matter that fall within these enumerated groupings
of abstract ideas should not be treated as reciting abstract ideas" except in
rare circumstances. Memorandum 84 Fed. Reg. at 53. Here, the Examiner
has identified three groupings that the claims fall within, but does not
provide sufficient explanation as to how or why the claims fall within these
groupmgs.
First, we do not see how the claims at issue fall within a "fundamental
economic practice, because they are directed to concepts relating to the
economy and commerce, such as agreements between people in the form of
contracts, legal obligations, and business relations." See Ans. 3.
Specifically, it is not clear why the Examiner considers "manufacturingan
electronic device product" to relate to agreements between people in the
form of contracts, legal obligations, and business relations." Moreover,
although the Examiner cites to several different cases for the general
concepts that courts have found some methods of organizing human
activities to be economic practices or "ideas," and processes of organizing
information to be mentally abstract, (see Ans. 2--4), the Examiner does not
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provide sufficient explanation as to how the claims at issue are comparable
to the claims in those cases.
Second, the Examiner does not explain how "manufacturing an
electronic device product" falls within "concepts relating to advertising,
marketing and sales activities" like using advertising as an exchange or
currency as in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.
2014 ), structuring a sales force or marketing company as in In re Ferguson,
558 F.3d 1359 (Fed. Cir. 2009), using an algorithm for determining the
optimal number of visits by a business representative to a client as in In re
Maucorps, 609 F.2d481 (C.C.P.A. 1979), and allowing players to purchase
additional objects during a game as in GametekLLCv. Zyngainc., 597
Fed.Appx. 644 (Fed. Cir. 2015). 1 We do not see how "manufacturing an
electronic device product" falls within "advertising, marketing, and sales
activities." See Ans. 2--4.
Third, the Examiner's fmdings are likewise deficient with respect to
the mental process grouping. The cases the Examiner relies upon relate to
using categories to organize, store and transmit information, as in Cyberfone
Systems, LLCv. CNN InteractiveGrp, Inc., 558 F. App'x 988 (Fed. Cir.
2014 ), data recognition and storage, as in Content Extraction and
TransmissionLLCv. Wells Fargo Bank, National Ass 'n, 776 F.3d 1343,
(Fed. Cir. 2014), and organizing information through mathematical
correlation, as in Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014). Wedo not see how the claims in
1 The Examiner also cites to "Freddie Mac," without providing further
citation, for "computing a price for the sale of a fixed income asset and
generating a fmancial analysis output." It is not clear what case the
Examiner is referring to.
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those cases are comparable to the claims at issue here, as the claims here do
not simply organize, store, or transmit information. The Examiner also
compares the claims to those in Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1148 (Fed. Cir. 2016) (Ans. 4), where the claims were
directed to "generating a representation of a single specific hardware
component." However, in Synopsys, the inventors "admitted to performing
the steps mentally themselves" and"[ o ]n their face, the claims do not call
for any form of computer implementation of the claimed methods." Id.
That is not the case here, where the claims explicitly recite a computer
implementation. Moreover, the Examiner does not explain how the claimed
step of "establishing, using the primary hardware module, said product
intranet ... " may be performed in the human mind or by a human using pen
and paper.
Accordingly, we fmd the Examiner has not shown claim 1 and its
dependent claims recite a fundamental economic practice, certain methods
of organizing human activity, or a mental process, as described in the
Memorandum. Moreover, we fmd the Examiner's analysis based on the
Examiner's statement of the abstract idea does not support the Examiner's
conclusion of a lack of patent eligible subject matter. As a result, the
invention as recited in independent claim 1 and dependent claims 2-5 and 6-
8 do not recite to a fundamental economic practice, certain methods of
organizing human activity, or a mental process under the Memorandum.
Prong2
Even if we agreed with the Examiner that the claims do recite a
fundamental economic practice, certain methods of organizing human
activity, and/or a mental process, we determine the claims recite additional
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elements that integrate the judicial exception into a practical application, and
therefore, the claims are directed to patent-eligible subject matter.
To determine whether the recited judicial exception is integrated into
a practical application of that exception, we ( 1) identify whether there are
any additional elements recited in the claim beyond the judicial exception( s );
and (2) evaluate those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application. See Memorandum, 84 Fed. Reg. at 54--55. If the recited
judicial exception is integrated into a practical application, the claim is not
directed to the judicial exception.
Claim 1 recites (1) accessing a device product intranet blueprint
describing reusable electronic hardware modules required to manufacture an
electronic device for performing a function intended by the device product
intranet blueprint; (2) selecting reusable electronic hardware modules for the
electronic device product including the primary hardware module based on
the description data of the reusable electronic hardware modules and the
device product intranet blueprint; (3) arranging the selected reusable
electronic hardware modules including said primary hardware module in an
electronic device product housing; and ( 4) establishing a product intranet
based at least partially on the device product intranet blueprint.
Claim 1 also recites additional elements of:
(a) "a computer,"
(b) "wherein the reusable electronic hardware modules are
operable to transmit and receive wireless messages over a
product intranet, each reusable electronic hardware module
including description data describing capabilities of a
corresponding reusable electronic hardware module, and
wherein at least one reusable electronic hardware module is a
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primary hardware module operable to establish and co-ordinate
said product intranet,"
( c) "a pick and place machine controlled by the computer,"
( d) "wherein the device product housing is an integrated part of the
manufactured electronic device product," and
( e) "said product intranet comprising said selected reusable electronic
hardware modules and by which said product intranet at least in part
operates, wherein a communication range of the product intranet is
substantially constrained within the product housing."
Considering the claim as a whole, including the limitations described
above, interaction of all the steps using the computer, pick and place
machine, primary hardware module, and establishment of a product intranet
applies or uses the abstract idea in a meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception. Appellants' invention is also directed
to an improved product assembly and disassembly process (App. Br. 3-5),
based on the use of a particular product structure during manufacturing.
Thus, the abstract idea is integrated into a practical application.
As a result, we do not sustain the Examiner's 35 U.S.C. § 101
rejection of independent claim 1 and dependent claims 2--4 and 6-8.
35 U.S. C. § 103 Rejections
Claim 1
Dispositive Issue: Did the Examiner err in fmding Bishop teaches or
suggests "establishing, using the primary hardware module, said product
intranet based at least partially on the device product intranet blueprint," as
recited in independent claim 1?
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The Examiner fmds Bishop teaches or suggests the disputed
limitation. Final Act. 7-9. The Examiner identifies Bishop's
"programming" as teaching or suggesting the claimed "device product
intranet blueprint," because "'blueprint' may merely be considered to be a
design plan, or instructions to implement a design plan." Final Act. 30-31,
8; Ans. 19. The Examiner fmds "a modem vehicle is an electronic device
product" and"[ w ]hen the components within the vehicle are connected to
communicate, they are forming an intranet." Ans. 19. The Examiner
concludes
[i]t would have been obvious for a person of ordinary
skill in the art (PHO SIT A) at the time of invention to modify
the system disclosed in Rosenberg to incorporate a product
intranet as taught by Bishop because this would provide a
secure and reliable system through which a single main receiver
can control a plurality of features of the product, or vehicle
(Bishop col. 5, lines 7-24), thus aiding the client by controlling
the features of the product as desired.
Final Act. 9.
Appellants argue Bishop does not teach or suggest "establishing,
using the primary hardware module, said product intranet based at least
partially on a device product intranet blueprint." App. Br. 14. Appellants
argue "Bishop simply does not discuss the use of a 'device product intranet
blueprint' to establish the intranet" and "[i]n fact, Bishop does not teach the
establishment of an 'intranet. "' App. Br. 14 ( emphasis omitted); see also
Reply Br. 6-8. Appellants argue "communicating wirelessly with certain
components inside a vehicle is not analogous to, for example, forming an
'intranet' of reusable electronic hardware modules." App. Br. 15.
We are persuaded by Appellants' arguments. Rosenberg is generally
directed to checking and verifying the position of components on an object,
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such as a circuit board, using a probe apparatus. Rosenberg Abstract.
Rosenberg teaches or suggests that desired positions of components on a
circuit board are determined from a master schematic or similar reference
layout that can be stored on a computer database. Rosenberg if 32. Bishop
is generally directed to a system installed in a vehicle that allows for
accessing, monitoring, and controlling specified functions, features, and
accessories in the vehicle. Bishop Abstract. For example, Bishop describes
a master unit, including a microprocessor, in wireless communication with a
set of slave units installed in the vehicle. Bishop Abstract, 4:32--46, 5:8-23.
Bishop teaches that the main relay platform may also incorporate an optional
wiring harness 301, including male or female socket 303. Bishop 11 :28-32.
Bishop describes that the microprocessor in the master unit "may also be
programmed to expect specific inputs and outputs on the wiring lines of the
socket303." Bishop 11:38--40.
Claim 1 does not merely recite a "blueprint," but, rather, a "device
product intranet blueprint." Appellants' Specification describes a "product
intranet blueprint" and depicts a product intranet blueprint in Figure 5. For
example, Appellants state the "blueprint [] describes a module (by way of
class, type and attribute) required (REQ) for the product." Spec. 8 :8-13; see
also Spec. 3:9-12 ("[a] product blueprint describes the modules required for
the product in a manner consistent with a data description stored by the
module, the description describing the capabilities of the module such as
class, type and other attributes"); see Spec. Fig. 5.
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Although Rosenberg's master schematic or similar reference layout
arguably teaches the device product intranet blueprint, 2 the Examiner
identifies the "programming" in Bishop's microprocessor as teaching the
device product intranet blueprint in the disputed limitation. Final Act. 30-
31, 8; Ans. 19. Bishop's disclosure provides little informationaboutthe
"programming," only that specific inputs and outputs may be expected. The
Examiner has not sufficiently explained how this "programming" teaches or
suggests the recited "device product intranet blueprint," as used to establish
the product intranet.
Moreover, although Bishop teaches communications between the
various slave units and the master unit, as well as specific inputs and outputs
to a master unit on the wiring lines of the socket, we agree with Appellants
that the Examiner has not sufficiently shown that Bishop teaches or suggests
"establishing, using the primary hardware module, said product intranet
based at least partially on the device product intranet blueprint." Appellants
describe in the Specification what it means to "establish an intranet," for
example, "[ o ]nee assembled in the housing, the primary module establishes
an intranet with the other modules by registering the modules with itself and
supplying a periodic reference or beacon signal." Spec. 3:16-18; see also
Spec. 9:23-24 ("the modules are registered with the primary module thereby
establishing the product intranet").
2 The Examiner appears to rely on Rosenberg to teach the device product
intranet blueprint in the frrst limitation, which recites "accessing, using a
computer, a device product intranet blueprint describing reusable electronic
hardware modules required to manufacture an electronic device for
performing a function intended by the device product intranet blueprint."
Final Act. 5---6.
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Finally, even assuming we were to rely on Rosenberg's master
schematic or other reference layout as teaching the device product intranet
blueprint, as modified with Bishop's communication between the master
unit and various slave units, the Examiner has not sufficiently explained why
Rosenberg would be modified to incorporate such functionality. The
Examiner's reasoning is that it "would provide a secure and reliable system
through which a single main receiver can control a plurality of features of
the product ... thus aiding the client by controlling the features of the
product as desired." Final Act. 9. However, Rosenberg is directed to
verifying the position of a component on an object, such as a circuit board.
Rosenberg Abstract, ,r 5. In Rosenberg, a probe is used to receive the
position information of a component, access reference information for a
desired component layout, and provide a comparison between the reference
data and the physical position of the component in order to verify the
position of the component. See Rosenberg claim 1, ,r,r 6-7. The Examiner
has not sufficiently explained for what reason the various components in
Rosenberg would be modified to include a product intranet; it is not
sufficiently clear why a main receiver would want or need to control the
Rosenberg components.
Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments.
Accordingly, on this record, we are persuaded the Examiner erred in
rejectingindependentclaim 1 under35U.S.C. § 103(a)andwe, therefore,
do not sustain the rejection. For the same reasons, we do not sustain the
Examiner's 35 U.S.C. § 103(a) rejection of dependent claims 2--4 and 6-8.
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Claim 9
Dispositive Issue: Did the Examiner err in fmding the combination of
Hunt and Haulin teaches or suggests "an electronic device housing having a
plurality of reusable electronic hardware modules," as recited in independent
claim 9.
The Examiner relies on Hunt to teach or suggest the disputed
limitation. Final Act. 15. Specifically, the Examiner fmds the Hunt's
Internet data centers ("IDCs"), teach the claimed electronic device. Final
Act. 32. The Examiner fmds "[a] product may be as large or as small as is
appropriate" and"[ t ]he disclosed examples of products cited by applicant in
the specification are not limiting." Final Act. 31; see also Ans. 21. The
Examiner fmds the building teaches the claimed electronic device housing:
"the building is acting as housing to the computers." FinalAct. 32.
Appellants argue "one of ordinary skill in the art would understand
that a server farm that houses many computers for hosting Internet-based
services is not analogous to 'an electronic device housing having a plurality
of reusable electronic hardware modules."' App. Br. 17 ( emphasis omitted).
According to Appellants, the Examiner's interpretation of"an electronic
device" and "electronic device housing" is unreasonably broad in light of the
Specification. App. Br. 18; see also Reply Br. 11.
We agree with Appellants. We give claims their broadest reasonable
interpretation consistent with the Specification. See In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, a construction
that is unreasonably broad and does not reasonably reflect the plain language
and disclosure in the specification will not pass muster. Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Even under the
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broadest reasonable interpretation, the Board's construction "cannot be
divorced from the specification and the record evidence," In re NTP, Inc.,
654 F.3d 1279, 1288 (Fed. Cir. 2011), and "must be consistent with the one
that those skilled in the art would reach," In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999).
Although the Examiner is correct that Appellants' Specification does
not explicitly limit the size of the claimed electronic device or the electronic
device housing, the Specification states "[ t ]he present invention has
particular, but not exclusive, application to producing and recycling
electronic products such as desktop calculators, alarm clocks, personal music
players, radios and other such common electronic products." Spec. 1 :9-12.
Indeed, all of the discussion and examples provided in the Specification
address these types of common electronic products. See, e.g., Spec. 1 :24--32
(calculators, personal stereos, mobile telephones); Spec. 3:7-9, 4:30-5:5,
Figs. 2-3 (primary embodiment of desktop calculator); Spec. 11 :20-23, Fig.
9 ( digital clock). The Specification also discusses the assembly of such
products on a manufacturing line in a factory. See, e.g. , Spec. 3 :3-5, 3: 14--
15, 3:24--26, 8:18-10:16, 11:23-27, Figs. 6a, 6b, 7. In light of the foregoing
disclosure, we agree with Appellants that the Examiner's construction of an
"electronic device" and "electronic device housing" as an IDC and a
building, respectively, is unreasonably broad.
Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments.
Accordingly, on this record, we are persuaded the Examiner erred in
rejecting independent claim 9 under 35 U.S.C. § 103(a) and we, therefore,
do not sustain the rejection. For the same reasons, we do not sustain the
18
Appeal2017-005094
Application 10/556,445
Examiner's 35 U.S.C. § 103(a) rejection of independent claim 13, dependent
claims 10, 11, and 14--16, which were not separately argued.
DECISION
WereversetheExaminer's35U.S.C. § 101 rejectionofclaims 1--4
and 6-8.
We reverse the Examiner's 35 U.S.C. § 103(a)rejection of claims 1-
4, 6-11, and 13-16.
REVERSED
19