Ex Parte Hillis et al

Board of Patent Appeals and Interferences

Sep 29, 2010

11386227 (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.
11/386,227 03/22/2006 W. Daniel Hillis 0404-021-001C-000000 2033
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 2009-014972
Application 11/386,2271
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 2009-014972
Application 11/386,227

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-29. 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 15 are exemplary of the claims on appeal:
1. A method of controlling electromagnetic energy, comprising:
positioning a first set of self resonant bodies in a first intercept
location, the first set of self resonant bodies having a first response
characteristic relative to an interaction location; positioning a second set of
self resonant bodies in a second intercept location, the second set of self
resonant bodies having a second response characteristic relative to the
interaction location; positioning a third set of self resonant bodies in a third
intercept location, the third set of self resonant bodies having a third
response characteristic relative to the interaction location; and interacting
with the electromagnetic energy at the interaction location.

15. A structure for interacting with electromagnetic energy, comprising:
a first layer including an arrangement of resonators each having, a
first principal resonant frequency, the first layer having a first response to
file electromagnetic energy;
a second layer including an arrangement of resonators each having a
second principal resonant frequency different from the first principal
resonant frequency, the second layer having a second response to the
electromagnetic energy; and
a third layer including an arrangement of resonators each having a
third principal resonant frequency different from the first principal resonant
frequency and the second principal resonant frequency, the third layer
having a third response to the electromagnetic energy;
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Application 11/386,227

wherein the first, second and third layers are relatively positioned to
define a composite response to the electromagnetic energy that is a function
of the first, second and third responses.

Claims 1-29 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 December 9, 2008), the Reply Brief (“Reply Br.,” filed
September 14, 2009) and the Examiner’s Answer (“Ans.,” mailed April 10,
2009) for their respective details.

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. 15), failed to test the claimed subject matter for
enablement (App. Br. 17), 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. 18). For his part, the Examiner maintains
that he has construed the claims and attempted to determine the claimed
subject matter (Ans. 8); 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. 11); and that Appellants’ claims can read on
structures that are not enabled by the Specification (Ans. 11).
Appellants’ contentions, as well as the Examiner’s findings and
conclusions, present us with the following issue:
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Application 11/386,227

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
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).
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Application 11/386,227

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
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’
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Application 11/386,227

Specification, however, 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.
Claim 1
Claim 1 recites “positioning a first set of self resonant bodies in a first
intercept location, the first set of self resonant bodies having a first response
characteristic relative to an interaction location.” Specification ¶ 0079 (Spec.
22), and implicitly Figure 5, are cited for support. Spec. ¶ 0079 provides no
support for the claimed “first intercept location” or “interaction location.”
Similarly, further recitations of a “second intercept location” and “third
intercept location” lack support in ¶ 0079, or elsewhere in Appellants’
Specification.
Claim 15
Appellants lack support for the “first layer,” “second layer,” and
“third layer” recited in claim 15. Figure 5 is disclosed as illustrating an array
of oscillators, including a first subset, second subset, and third subset.
However, neither Figure 5 nor Specification ¶ 0079, relied upon by
Appellants for support, contains any disclosure of layers, or of any relative
positioning of layers to define a composite response. To be sure, Appellants
do disclose that “red, green and blue wavelengths can be combined to
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Application 11/386,227

produce a perceived range of wavelengths that substantially spans the human
visual range” (Spec. 22), but we find that this general disclosure of known
optical properties would not have enabled one of ordinary skill in the art to
practice the claimed invention directed to first, second, and third layers (each
including an arrangement of resonators) relatively positioned to define a
composite response to the electromagnetic energy, without undue
experimentation.
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’ request for an affidavit from the Examiner under 37 CFR
§ 1.104(d)(2) is considered moot in view of the fact that this decision does
not rely on the Examiner’s personal knowledge to support a finding of what
is known in the art (see Reply Br. 5).
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 1-29.

CONCLUSION
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 1-29 is affirmed.
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Application 11/386,227

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).

AFFIRMED

ELD

THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
8