Ex Parte Hillis et al

Board of Patent Appeals and Interferences

Sep 29, 2010

11386212 (B.P.A.I. Sep. 29, 2010)

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 09/29/2010
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
ANDERSON, GUY G
ART UNIT PAPER NUMBER
2883
MAIL DATE DELIVERY MODE
09/29/2010 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 W. DANIEL HILLIS, RODERICK A. HYDE,
NATHAN P. MYHRVOLD, CLARENCE T. TEGREENE
and LOWELL L. WOOD, JR.
____________________

Appeal 2009-014863
Application 11/386,2121
Technology Center 2800

____________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and THOMAS S.
HAHN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Intellectual Ventures LLC.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-014863
Application 11/386,212

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
According to Appellants, their invention concerns an
electromagnetically responsive element composed of an arrangement of
controllable self-resonant bodies, such as atoms or quantum dots that form
an effective dielectric constant, typically at or near a resonance (Abstract).
Claims 1 and 10 are exemplary of the claims on appeal:
1. A method of controlling propagation of light energy comprising:
intercepting a portion of the light energy with a set of self resonant
bodies responsive to the intercepted portion 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 to produce a second light energy pattern with the
set of self resonant bodies responsive to the intercepted portion of the light
energy.

10. An adjustable apparatus comprising:
an array of self-resonant bodies arranged in a first configuration; and
an adjustment mechanism coupled to selected ones of the self resonant
bodies in the array of self resonant bodies, the adjustment mechanism being
responsive to an input signal to change positions of the selected ones of the
self resonant bodies to produce a second configuration of the array of self
resonant bodies.

Claims 1-27 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed September 9, 2008), the Reply Brief (“Reply Br.,” filed
March 27, 2009) and the Examiner’s Answer (“Ans.,” mailed April 3, 2009)
for their respective details.
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Application 11/386,212

ISSUE
Appellants argue that the Examiner’s rejection for lack of enablement
is erroneous, because the Examiner failed to properly construe the claims for
enablement testing (App. Br. 14), failed to test the claimed subject matter for
enablement (App. Br. 16), and failed to provide evidence why a person
skilled in the art would not recognize in the disclosure a description of the
invention defined by the claims, thus failing to establish the prima facie non-
enablement of the claims (App. Br. 21). For his part, the Examiner maintains
that he has construed the claims and attempted to determine the claimed
subject matter (Ans. 9); that the claims have been tested and the scope of the
claims does not bear a reasonable correlation to the enablement provided by
the Specification (Ans. 10); and that Appellants’ disclosure has not provided
specific details on just what Appellants consider to be their invention (Ans.
11).
Appellants’ contentions present us with the following issue:
1. Does Appellants’ Specification enable the person having ordinary
skill in the art to practice the invention recited in the claims without undue
experimentation?

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
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Application 11/386,212

enablement.” In re Wright, 999 F.2d 1557, 1562 (Fed. Cir. 1993). While the
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. DuPont 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.
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Application 11/386,212

ANALYSIS
We agree with the Examiner’s conclusion that the Specification does
not enable the person having ordinary skill in the art to practice the claimed
invention without undue experimentation.
To establish a lack of enablement, the Examiner must present a
reasonable explanation why “the scope of protection provided by [the] claim
is not adequately enabled by the description of the invention provided in the
specification.” In re Wrignt, supra. We agree with the Examiner’s finding
that Appellants’ disclosure fails to precisely describe what the invention is
claiming. (Ans. 4). We further agree with the Examiner that Appellants’
Specification contains a general description of physical phenomena and
equations such as one might find in a college physics textbook (Ans. 6), and
contains a broad reference to possible intended uses of the invention, such as
an “optical element [that] can be applied to controlling optical energy in the
human visual range. Such elements may form lenses or other elements of
optical trains in cameras, displays, machine vision systems, printers, or other
systems” (Ans. 4, citing Spec. 22). What is absent from Appellants’
Specification is 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.
We find that Appellants fail to provide enabling disclosure of several
limitations in the pending claims. Appellants attempt to “map” the claims to
the Specification in their “Summary of Claimed Subject Matter,” as 37 CFR
§ 41.37 requires. Appellants’ effort illustrates the failure of the Specification
to enable the claimed subject matter. Concrete examples of that failure
follow hereinbelow.
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Application 11/386,212

Claim 1
Appellants state that “intercepting a portion of the light energy with a
set of self resonant bodies responsive to the intercepted portion of the light
energy, producing a first light energy pattern with the set of self resonant
bodies” is supported by Figs. 3 and 6 and ¶¶ 0029-0032 (i.e., Spec. 7-
8)(App. Br. 8). Figures 3 and 6 may be said to generically represent self
resonant bodies and/or oscillators. Paragraphs 0029-0032 contain no
discussion of intercepting a portion of light energy. The cited sections
provide no support for producing a first light energy pattern with the set of
self resonant bodies.
“[A]djusting selected properties of one or more self resonant bodies in
the set of self resonant bodies to produce a second light energy pattern with
the set of self resonant bodies responsive to the intercepted portion of the
light energy” is said to be supported by Figure 4 and ¶¶ 0044-0047 and 0066
(i.e., Spec. 12-13, 20)(App. Br. 8). Paragraph 47 discloses that as “oscillators
absorb energy from the excitation input (or other state energy input), some
of the oscillators move to an upper quantum state. This depletes the lower
state, thereby reducing the material’s polarization and thus the effective
refractive index, thereby lessening optical strength” (Spec. 13). This section
appears to correlate to “adjusting selected properties of one or more self
resonant bodies.” We have reviewed the sections cited by Appellants,
however, and cannot find support for the claimed “second light energy
pattern … responsive to the intercepted portion of the light energy” such that
one of ordinary skill in the art could make and use the invention without
undue experimentation, as Appellants’ Specification simply does not make
any mention of a second light energy pattern.
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Application 11/386,212

Claim 10
Appellants cite ¶¶ 0044-0047 and 0066 (Spec. 12-13, 20), and Figures
4, 5, and 8 as support for “an adjustment mechanism coupled to selected
ones of the self resonant bodies in the array of self resonant bodies, the
adjustment mechanism being responsive to an input signal to change
positions of the selected ones of the self resonant bodies to produce a second
configuration of the array of self resonant bodies” (App. Br. 9). We have
reviewed the cited sections of Appellants’ Specification, and have
considered Appellants’ remarks, but we cannot find description of any
“adjustment mechanism” “coupled to selected ones of the self resonant
bodies,” to say nothing of an enabling description of same. Similarly, we
find no description in the Specification of such an adjustment mechanism
being “responsive to an input signal” to “change positions” of “the selected
ones of the self resonant bodies.” As noted supra with reference to claim 1,
the disclosed change in quantum states arguably provides an enabling
disclosure for producing “a second configuration of the array of self resonant
bodies.”
Claim 22
Appellants cite paragraphs 0018 and 0031-0033 as support for
“oscillators being arranged in a pattern corresponding to a selected spatial
distribution of effective permittivity at the expected frequency of
electromagnetic energy” (App. Br. 9). We find no enabling disclosure at
those paragraphs, or elsewhere in the Specification, for arranging oscillators
according to a selected spatial distribution of effective permittivity.
Similarly, the Specification does not enable “an adjustment mechanism …
responsive to an input signal to adjust the spatial distribution of effective
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Application 11/386,212

permittivity at the expected frequency of electromagnetic energy.” We have
reviewed Specification ¶¶ 0018, 0031-0032, 0044-0047, 0066, 0086-0090,
and 0104 cited by Appellants (App. Br. 10), and find no discussion, let alone
enabling support, for adjusting the spatial distribution of effective
permittivity at an expected frequency of electromagnetic energy.
Although we state supra that the sections cited by Appellants fail to
enable the claimed subject matter discussed, we wish to make it clear that
we have reviewed the entire Specification in an attempt to find enabling
disclosure for the limitations mentioned, without success.
Appellants’ arguments that the exemplary structures cited by the
Examiner as not being enabled by the Specification “are presumably known
in the art and thus are enabled” (Reply Br. 8) are considered moot given our
discussion supra of Appellants’ various non-enabled claim limitations.
Appellants have not established that the Examiner erred in rejecting
the claims as failing to comply with the enablement requirement of § 112,
first paragraph. We therefore sustain the rejection of claims 1-27.

CONCLUSIONS
Appellants’ Specification does not enable the person having ordinary
skill in the art to practice the invention recited in the claims without undue
experimentation.

ORDER
The Examiner’s rejection of claims 1-27 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)(v).
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Appeal 2009-014863
Application 11/386,212

AFFIRMED

ELD

THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
9