Ex Parte Hillis et al

Patent Trial and Appeal Board

Apr 28, 2017

11386212 (P.T.A.B. Apr. 28, 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.
11/386,212 03/22/2006 W. Daniel Hillis 0404-021-001B-000000 2030
44765 7590 05/02/2017
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150- 139th Ave SE
Bldg. 4
Bellevue, WA 98005
EXAMINER
ANDERSON, GUY G
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
ISFDocketInbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte W. DANIEL HILLIS, RODERICK A. HYDE,
NATHAN P. MYHRVOLD, CLARENCE T. TEGREENE,
and LOWELL L. WOOD JR.
Appeal 2015-000902
Application 11/386,212
Technology Center 2800
Before MAHSHID D. SAADAT, CHARLES J. BOUDREAU, and
ADAM J. PYONIN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—28, which are all the claims in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 An oral hearing was held for this appeal on August 8, 2016.
2 According to Appellants, the real party in interest is Searete LLC, which is
an affiliate of The Invention Science Fund I, LLC (App. Br. 3).
Appeal 2015-000902
Application 11/386,212
STATEMENT OF THE CASE
Invention
According to Appellants, the invention relates to “electromagnetically
responsive elements” (Abstract).
Claim 1 is exemplary:
1. A method of controlling propagation of light energy
comprising:
intercepting the light energy with a set of self resonant
bodies that is responsive to intercepted portions of the light
energy, producing a first light energy pattern with the set of self
resonant bodies; and
adjusting selected properties of one or more self resonant
bodies in the set of self resonant bodies that is responsive to
intercepted portions of the light energy to produce a second
light energy pattern.
The Examiner’s Rejections
Claims 1—28 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement (see Final Act. 12—15).
Claims 1—28 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the Appellants regard as the invention (see Final
Act. 15).
PRINCIPLES OF LAW
When making an enablement rejection, the Examiner must present a
reasonable explanation why “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.” In re Wright, 999 F.2d 1557, 1562 (Fed. Cir. 1993).
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Although a patent specification must enable the skilled artisan to practice the
full scope of the claimed subject matter, “[i]t is well settled that patent
applicants are not required to disclose every species encompassed by their
claims, even in an unpredictable art.” In re Vaeck, 947 F.2d 488, 496 (Fed.
Cir. 1991). Moreover, a claim does not lack enablement merely because it
encompasses inoperative embodiments. Atlas Powder Co. v. E.I. du Pont de
Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984).
Enablement is not precluded by the necessity for some
experimentation such as routine screening.
However, experimentation needed to practice the invention
must not be undue experimentation. . . . The test is not merely
quantitative, since a considerable amount of experimentation is
permissible, if it is merely routine, or if the specification in
question provides a reasonable amount of guidance with respect
to the direction in which the experimentation should proceed.
In re Wands, 858 F.2d at 736—37 (citations omitted). Factors to be
considered in determining whether a disclosure would require undue
experimentation 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 of those in the art,
(7) the predictability or unpredictability of the art, and (8) the
breadth of the claims.
Id.
ANALYSIS
Rejection under 35 U.S.C. § 112, First Paragraph
The Examiner determines that the Specification describes “classical
and quantum oscillators, Maxwell’s equations, coherent radiation, narrow
band near monochromatic response of oscillators, CW and short pulse
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Application 11/386,212
operation of oscillators, negative refraction, various forms of dynamic
control and non-linear optics,” but fails to provide an enabling disclosure for
the limitations recited in claim 1 (Final Act. 13). The Examiner explains
that a description of these general concepts would not enable a person of
ordinary skill in the art to make the invention without undue experimentation
(id.). In particular, the Examiner asserts the Specification neither identifies
the type of resonator, the adjustment mechanism, or the manner by which
the “second configuration” is produced, nor specifies the type of
nanoparticles, the substrate, or the energy source that would be required
(Final Act. 14).
Kundtz Declaration
Appellants contend the rejection is improper because the Examiner
“has not given due consideration to the evidence,” i.e., a Declaration under
37 C.F.R. § 1.132 by Dr. Nathan Kundtz (hereinafter Kundtz Declaration)
(App. Br. 5). The Declaration states that Dr. Kundtz believes the
Specification describes the claimed method of controlling the propagation of
light energy with such detail and specificity that Dr. Kundtz would be able
to use the claimed method with no more than routine experimentation (id. at
6). Relying on the decision in In re Buchner, 929 F.2d 660 (Fed. Cir. 1991),
Appellants assert the Kundtz declaration includes “more than a conclusory
statement” by arriving at “‘the ultimate legal conclusion’ of enablement by
specific technical reasoning” (id. at 7). Appellants further refer to the
Kundtz declaration for stating that “self-resonant bodies such as
nanoparticles are commercially available” and argue that the Examiner has
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not presented “factual evidence countervailing the specific technical
reasoning of Dr. Kundtz” (id. at 7).
The Examiner responds that the statements made in the Kundtz
declaration are “general in nature and provide [] no specificity or direct
evidence supporting a conclusion that the disclosure is enabling” (Ans. 3
(citing paragraphs 6, 7, and 8—16 of the Kundtz declaration)). The Examiner
further refers to the Board’s previous decision (Decision of Sept. 29, 2010),
which highlighted the lack of “a connection between the discussed physics
theory and the structure recited in the pending claims that would enable the
person having ordinary skill in the art to practice the invention” (Ans. 3—4).
The Examiner finds the Kundtz declaration provides no additional
information to connect the underlying physics theory with the claimed
invention (Ans. 4).
Smith Declaration
Appellants contend the Examiner’s consideration of a Declaration
under 37 C.F.R. § 1.132 by Dr. David R. Smith (hereinafter Smith
Declaration) suffers from similar deficiencies as the Examiner’s treatment of
the Kundtz declaration (App. Br. 7—8). Additionally, Appellants state that
paragraphs 13 and 14 of the Smith Declaration clarify that Appellants use
the terms “self-resonant bodies” and “oscillators” synonymously, that those
terms are understood to also include “quantum dots,” and that novel
arrangements of such bodies or oscillators provide “desired collective
electromagnetic responses to incident electromagnetic waves” (id. at 8).
Appellants specifically argue paragraphs 13—15 of the Smith Declaration
state “how the specification, combined with that which would be known to
those of skill in the art, provides all that is needed for a skilled artisan to
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practice the invention” (id. at 9).
The Examiner finds the Smith Declaration merely provides
conclusory statements without explaining what the claimed invention is or
how it connects to the underlying physics theory (Ans. 5). The Examiner
relies on the holding in ALZA Corp. v. Andrx Pharmaceuticals, LLC, 603
F.3d 935, 940 (Fed. Cir. 2010) and finds the Smith Declaration is
insufficient to satisfy the enablement requirement because it “cannot simply
rely on the knowledge of a person of ordinary skill to serve as a substitute
for the missing information in the specification” (Ans. 6).
Enablement Analysis
Based on the relevant Wands factors, we agree with the Examiner that
Appellants’ Specification lacks sufficient disclosure to enable those having
ordinary skill in the art to make and/or use the claimed invention without
undue experimentation. Namely, the Examiner explains, the court in ALZA
held:
[“]To satisfy the plain language of § 112,11, ALZA was
required to provide an adequate enabling disclosure in the
specification; it cannot simply rely on the knowledge of a
person of ordinary skill to serve as a substitute for the missing
information in the specification.”
Ans. 6 (quoting ALZA, 603 F.3d at 941). The Examiner further finds:
The declaration submitted by Dr. Smith, like that of the
statement proffered by Dr. Kundtz does not contain more than a
conclusory statement that Appellants’ disclosures is enabled for
purposes of 35 U.S.C 112.
Further, Dr. Smith’s assertion that the “corpus of existing
knowledge” can substitute for an enabling disclosure is deemed
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to be unpersuasive in light of the reasoning set forth in ALZA.
Ans. 6—7.
As to the state of the knowledge of a person of ordinary skill, we find
that, although the Kundtz and Smith declarations allege “self-resonant
bodies” and “oscillators” are understood to include “quantum dots,”
Appellants’ disclosure does not provide sufficient direction for
implementing a set of quantum dots that produce a first light energy pattern
and adjusting selected properties of those quantum dots to produce a second
light energy pattern, as recited in claim 1. Notably, the description in the
Specification cited by Appellants is essentially lacking “a connection
between the discussed physics theory and the structure recited in the pending
claims” (Ans. 4; see Spec., p. 7). Further, the Specification does not
sufficiently demonstrate the existence of working examples of a device that
controls propagation of light energy by intercepting the light energy with a
set of self-resonant bodies to produce a first light energy pattern and
adjusting selected properties of those bodies to produce a second light
energy pattern as claimed.
Based on our consideration of the record before us, we agree with the
Examiner that Appellants’ Specification, considering the level of ordinary
skill in the art as of the date of the application, would not have enabled a
person of such skill to make and use the claimed invention without undue
experimentation. Accordingly, we sustain the rejection of claims 1—28
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
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Rejection under 35 U.S.C. § 112, Second Paragraph
The Examiner rejects claims 1—28 under 35 U.S.C. § 112, Second
Paragraph, as “being indefinite” (Final Act. 15). In particular, as to
independent claims 1,10, and 22, the Examiner finds that the claims recite
“limitations pertaining to self-resonant bodies without describing in detail
what type of self resonant bodies applicant considers to be the invention”
and “limitations pertaining to adjusting selected properties of said self
resonant bodies without specifically pointing out which properties or which
methods to be sued [sic] in said adjustment procedures” (id.). Similarly, the
Examiner finds “claims 1,10, and 22 fail to adequately describe the metes
and bounds of the invention that applicant is attempting to claim” (id.).
However, we disagree with the Examiner’s finding that the claims are
unclear. The test for definiteness under 35 U.S.C. § 112 is whether “those
skilled in the art would understand what is claimed.” Orthokinetics, Inc., v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). In particular, breadth is not indefmiteness provided the skilled
artisan is reasonably apprised of the meaning of the claim. Metabolite Labs.,
Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir. 2004).
We agree with Appellants that adjusting the properties of
self-resonant bodies or oscillators includes adjustment mechanisms such as
application of a strain or acoustic wave in order to adjust the positions of
those bodies (App. Br. 11—12). As further stated by Appellants, breadth
alone does not render a claim indefinite (id. at 12). Therefore, we are
persuaded the Examiner erred in rejecting claims 1—28 under 35 U.S.C.
§ 112, Second Paragraph.
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DECISION
We affirm the rejection of claims 1—28 under 35 U.S.C. § 112, First
Paragraph. We reverse the Examiner’s rejections of claims 1—28 under
35 U.S.C. § 112, Second Paragraph.
Because we have affirm at least one ground of rejection with respect
to each claim on appeal, we affirm the Examiner’s decision to reject claims
1-28. See 37 C.F.R. § 41.50(a)(1).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f).
AFFIRMED
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