Ex Parte Hodge et al

Patent Trial and Appeal Board

Nov 12, 2014

12326317 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREW BERT HODGE, GUY BAR-NAHUM, and
JEAN-PAUL LABROSSE
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Appeal 2012-007140
Application 12/326,317
Technology Center 2600
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Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–16 and 34. Claims 35–42 have
been withdrawn from consideration. (Br. 1.)1 We have jurisdiction under 35
U.S.C. § 6(b).

1 We refer to Appellants’ Specification (“Spec.”) filed December 2, 2008
(claiming benefit of 10/463,700, filed June 16, 2003 (the present application
is a Continuation of 10/463,700)) and Appeal Brief (“Br.”) filed September
30, 2011. We also refer to the Examiner’s Answer (“Ans.”) mailed
December 28, 2011.
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We affirm.
Appellants’ Invention
The invention at issue on appeal concerns computer program
products, media palters, and methods for adjusting disk drive operation in a
portable media player when a determination of substantial acceleration or
vibration has been made based on acceleration/vibration data and an
indication of a user’s expected usage behavior. (Spec. ¶¶ 2, 6–11; Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method for operating a portable media player having a
processor, a user interface, an acceleration monitor and a disk
drive arranged to store media data, said method comprising:
receiving an indication of a user’s expected usage
behavior of the portable media player at the user interface;
determining an acceleration of the portable media player
by the processor; and
automatically adjusting an operation of the disk drive of
the portable media player when the acceleration is determined
to be substantial by the processor, wherein the processor
determines that the acceleration is substantial based in part on
information provided by the acceleration monitor and the
received indication of the user’s expected usage behavior.
Rejections on Appeal
1. The Examiner rejects claims 1–16 and 34 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement
requirement.
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2. The Examiner rejects claims 1–16 and 34 under 35 U.S.C.
§ 102(b) as being anticipated by US Patent App. Pub. No. 2007/0150211
A1, published June 28, 2007 (filed Dec. 6, 2006, claiming benefit of
Japanese Application JP2005-377871, filed December 28, 2005)
(“Miyoshi”).

ISSUE
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in finding that Appellants’ Specification fails
to enable one having ordinary skill in the art to practice the method recited
in Appellants’ claim 1 and/or make the media player and computer program
product recited in commensurate limitations of claims 9 and 34?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed May 3, 2011, as our own, except as to those findings that we
expressly overturn or set aside in the Analysis that follows.

ANALYSIS
Based on Appellants’ arguments (Br. 7–13), we find Appellants direct
their arguments to claims 1–16 and 34 as a group. Accordingly, we select
independent claim 1 as representative of Appellants’ arguments and
groupings with respect to claims 1–16 and 34. 37 C.F.R. § 41.37(c)(1)(vii)
(2004).
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We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Ans. 3–5), and (2)
the reasons set forth by the Examiner in the Examiner’s Answer (Id. at 6–9)
in response to Appellants’ Appeal Brief. We concur with the findings and
conclusions reached by the Examiner, and we provide the following for
emphasis.
The Examiner rejected claims 1–16 and 34 as failing to comply with
the enablement requirement because “receiving an indication of a user’s
expected usage behavior and automatically adjusting an operation of a
portable media player based in part on information provided by an
acceleration monitor and a received indication of the user’s expected usage
behavior” was not adequately described in Appellants’ Specification and
would not have been particularly well known or understood to one of
ordinary skill in the art. (Ans. 4.)
Appellants contend that the Hodge Declaration (Br. 22–23 (Evid.
Appx.)) provides “sufficient evidence . . . that adequate support for
enablement existed in the [S]pecification at the time of filing” (Br. 8)
contrary to the Examiner’s conflicting findings (Ans. 6–7). (Br. 7–9.) We
agree with the Examiner and disagree with Appellants with respect to the
evidentiary value of the Hodge Declaration. The weight and credibility
accorded each item of evidence, including declarations, is an issue of fact
within the discretion of the Board. Velander v. Garner, 348 F.3d 1359, 1371
(Fed. Cir. 2003).
The Hodge Declaration does not explain how the Specification would
have provided adequate support, nor does it clarify how one having ordinary
skill in the art would have been enabled to practice the recited method
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limitations in dispute — “receiving an indication of a user’s expected usage
behavior” and “automatically adjusting an operation of the disk drive . . .
when the acceleration is determined to be substantial by the processor, . . .
based in part on information provided by the acceleration monitor and the
received indication of the user’s expected usage behavior.” Instead, the
Hodge Declaration merely concludes that: “a programmer of ordinary skill
in the art would be readily able to program a processor to adjust
automatically a disk read/write operation based in part on information
provided by an acceleration monitor and a received indication of expected
usage behavior” and “a programmer of ordinary skill in the art would be
readily able to program a processor as described above to achieve the
desired result without undue experimentation.” (Br. 23.) We find that the
Hodge Declaration provides insufficient factual basis for the conclusions
reached (see Ans. 6) — that one of ordinary skill in the art would have been
able to program a processor to adjust a disk operation based a received
indication of expected usage behavior. Conclusory declarations lacking
specificity, such as the Hodge Declaration, are legally insufficient to rebut
the Examiner’s prima facie enablement rejection. See, e.g., Automotive
Tech. Int’l. v. BMW of N. Am., Inc., 501 F.3d 1274, 1284–85 (Fed. Cir.
2007) (Declaration “failed to provide any detail regarding why [undue]
experimentation was [not] necessary.”).
Appellants also contend that:
[A]dequate support exists in the specification as filed for the
claimed limitations at issue regarding receiving an indication of
a user’s expected usage behavior and automatically adjusting an
operation of a portable media player based in part on
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information provided by an acceleration monitor and a received
indication of the user’s expected usage behavior.
(Br. 9.) And, various factors “strongly” favor a finding of enablement. (See
Br. 9–13.) Specifically, Appellants contend:
In this case, describing a basic computing function to be
performed (e.g., using information regarding a user’s expected
usage behavior as a basis to determine that an acceleration is
substantial and to adjust an operation of a disk drive
accordingly) results in any computer programmer of minimal
skill in the art immediately grasping the invention and also
numerous possible and adequate ways of implementing the
invention. Extensive details regarding the implementation of
such readily understandable and easily implemented computing
functions would be unduly burdensome to submit in every
instance, and the submission of such details is ultimately not
necessary for good reason. This point favors Applicants
strongly.
(Br. 13.) We disagree.
The test for determining if Appellants’ Specification complies with
the enablement requirement of 35 U.S.C. §112, first paragraph, is whether
one skilled in the art, having read the specification, could practice the
invention without “undue experimentation.” In re Wands, 858 F.2d 731,
736–37 (Fed. Cir. 1988); see Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d
1362, 1371 (Fed. Cir.1999).2

2 Specifically, our controlling court has stated:
In In re Wands, we set forth a number of factors which a court
may consider in determining whether a disclosure would
require undue experimentation. These factors were set forth as
follows:
(1) the quantity of experimentation necessary, (2)
the amount of direction or guidance presented, (3)
the presence or absence of working examples, (4)
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In particular, we review whether the novel aspects of Appellants’
purported invention are enabled in the Specification. See Auto.Tech. Int’l.,
501 F.3d at 1283 (“Although the knowledge of one skilled in the art is
indeed relevant, the novel aspect of an invention must be enabled in the
patent.”); Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1366 (Fed.
Cir. 1997) (“It is the specification, not the knowledge of one skilled in the
art, that must supply the novel aspects of an invention in order to constitute
adequate enablement.”).
Here, even considering the knowledge of an ordinarily skilled artisan,
the specification fails to enable the scope of the claims. As pointed out by
the Examiner (Ans. 4), and conceded by Appellants (Br. 9), the sole
disclosure in Appellants’ Specification of the “expected usage behavior”
appears in paragraph 55, which simply explains that “[t]he detection of
substantial acceleration and/or the alteration to an operation of a media
player can be dependent on past or expected usage behaviors . . .” (Spec.
¶ 55). Therefore, we find that Appellants’ Specification does not enable the
novel aspect of Appellants’ purported invention — “receiving an indication

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. at 737, 858 F.2d 731, 8 USPQ2d at 1404. We have also
noted that all of the factors need not be reviewed when
determining whether a disclosure is enabling. See Amgen, Inc.
v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213, 18 USPQ2d
1016, 1027 (Fed.Cir.1991) (noting that the Wands factors “are
illustrative, not mandatory. What is relevant depends on the
facts . . . .”).
Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999).
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of a user’s expected usage behavior” and “automatically adjusting an
operation of the disk drive . . . when the acceleration is determined to be
substantial by the processor . . . based in part on . . . the received indication
of the user’s expected usage behavior.” The Specification does not explain
what “receiving an indication of a user’s expected usage behavior” entails or
represents (how the indication is received, what the indication received and
operated upon by the processor actually signifies, or the structure of the
indication (data)) and does not describe how “the acceleration is determined
to be substantial . . . based in part on . . . the received indication of the user’s
expected usage behavior” (i.e., how the determination may be made (e.g.,
any code or algorithm utilizing the indication along with information
provided by the acceleration monitor)).
Concerning the enablement factors (“Wands” factors) discussed by
Appellants (Br. 9–13), we agree with the Examiner that these factors weigh
against, not for, finding that Appellants’ invention was enabled. We need
not address each of these factors (supra, citing Enzo Biochem). Even so, we
will address several of these factors for clarity and completeness.
A) The Breadth of the Claims:
Contrary to Appellants’ arguments — that the claims are not unduly
broad or indefinite, which was purportedly conceded by the Examiner (Br.
10) — the factor actual involves a comparison of the claim scope with the
disclosure of the specification. Here the scope of claim 1 (and claims 9 and
34) encompasses all possible processor instructions (computer code) for
determining if acceleration is substantial based on a “received indication of
the user’s expected usage behavior.” Yet, Appellant’s Specification does
not disclose code or algorithms to perform this function. Accordingly, claim
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1 is not in compliance with the enablement requirement as the scope of the
claim exceeds the Appellants’ disclosure (we do not address the implications
with respect to indefiniteness under §112, second paragraph). See Fiers v.
Revel, 984 F.2d. 1164, 1171 (Fed. Cir. 1993); see also In re Swinehart, 439
F.2d 210 (CCPA 1971) (discussing claims employing functional language
encompassing any and all embodiments and that such claims should be
rejected under 35 U.S.C. §112, first paragraph if the scope of the claim is
beyond that justified by the disclosure).
F) The Amount of Direction Provided By the Inventor:
As conceded by Appellants, “the amount of direction provided by the
inventor . . . is admittedly low” (Br. 12). We would more accurately
characterize the direction provided as non-existent with respect to
determining if acceleration is substantial based on a “received indication of
the user’s expected usage behavior.” (See e.g., Ans. 8.) It is this exact point
of novelty for which Appellants seek a patent, but provide no guidance. (See
discussion supra.)
G) The Existence of Working Examples:
As pointed out by the Examiner (Ans. 9), and conceded by Appellants
(Br. 12), Appellants have not provided any working examples describing
determining if acceleration is substantial based on a “received indication of
the user’s expected usage behavior.”
H) Quantity of Experimentation Necessary:
We disagree with Appellants that the amount of experimentation is
low (Br. 12–13). To the contrary, we agree with the Examiner that the
quantity (amount) is high (Ans. 9) because Appellants provide no guidance
(supra).
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Further, Appellants failed to file a Reply Brief rebutting the findings,
responsive arguments, and conclusions made by the Examiner in the
Answer. Thus, for all the reasons supra, Appellants do not persuade us of
error in the Examiner’s enablement rejection of representative independent
claim 1. Independent claims 9 and 34 include limitations of commensurate
scope. Dependent claims 2–8 and 10–16 depend on claims 1 and 9,
respectively. Accordingly, we affirm the Examiner’s enablement rejections
of representative claim 1, independent claims 9 and 34, and dependent
claims 2–8 and 10–16 not separately argued with particularity (supra).
Rejection of Claims 1–16 and 34 under 35 U.S.C. § 102(b)
With respect to the anticipation rejection of claims 1–16 and 34 under
35 U.S.C. § 102(b), we decline to reach the merits of this rejection.
Resolution of a single rejection for a claim renders other rejections moot.
See, e.g., 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim . . . .”); KSR Int’l v. Teleflex Inc., 550
U.S. 398, 426 (2007) (not reaching alternate basis of rejection).

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1–16 and 34 under 35 U.S.C. § 112, first paragraph.
We do not reach the merits of the Examiner’s prior art rejection of
claims 1–16 and 34 under 35 U.S.C. § 102(b).

DECISION
We affirm the Examiner’s rejection of claims 1–16 and 34.
Appeal 2012-007140
Application 12/326,317

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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)(iv).

AFFIRMED

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