12026978 (B.P.A.I. Jun. 7, 2012)

Ex Parte Johnson et al

Board of Patent Appeals and InterferencesJun 7, 2012

12026978 (B.P.A.I. Jun. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte SCOTT R. JOHNSON, FRANCIS J. CANOVA JR., ERIC M. LUNSFORD, NICHOLAS TWYMAN and NEAL A. OSBORN, _____________ Appeal 2011-008284 Reissue Application 12/026,978 U.S. Patent 6,571,343 Technology Center 2100 ______________ Before ROBERT E. NAPPI, DENISE M. POTHIER, and JASON V. MORGAN Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008284 Application 12/026,978 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 41 through 61. We affirm-in-part. INVENTION The invention is directed to a method of conserving power used by a handheld computer. See Abstract. Claim 41 is representative of the invention and reproduced below: 41. A method, comprising: providing a first warning when a power level of a battery in a handheld electronic device reaches a first level (V1); providing a second warning at a specified time, independent of battery power level; entering a sleep mode when the power level of the battery reaches a second level (V2); and exiting the sleep mode when both an input signal to power the handheld electronic device on is received and the power level of the battery is at least at a reset level (VR), where VR is greater than V1 and V2. REJECTIONS AT ISSUE The Examiner has rejected claims 41 through 61 as being based upon a defective reissue oath and declaration under 35 U.S.C. § 251. Answer 4-71. The Examiner has rejected claims 44, 53, and 60 under 35 U.S.C. § 112 second paragraph as being indefinite. Answer 8. 1 Throughout this opinion we refer to the Examiner’s Answer mailed on February 23 2011. Appeal 2011-008284 Application 12/026,978 3 ISSUES Rejection under 35 U.S.C. § 251 The issue presented to us is: did the Examiner err in concluding that the reissue oath filed with the broadening reissue application 11/140,526 is inadequate to support the newly broadened claims in the current broadening reissue application? 2 Rejection under 35 U.S.C. § 112 The issue presented to us is: did the Examiner err in finding that the claim term “high-energy consumption functions” is indefinite as it is a term of degree for which there is no subjective standard for measure? ANALYSIS Rejection under 35 U.S.C. § 251 We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We agree with Appellants’ conclusion that the Examiner erred in concluding that the reissue oath filed with the broadening reissue application no. 11/140,526 (hereafter ’526) is inadequate to support newly broadening claims in the current broadening reissue. The ’526 reissue application was filed on May 27, 2005, within two years of the May 27, 2003 issue date of U.S. Patent No. 6,571,343. The 2 We note that the Examiner on page 4 of the Answer identifies that the declaration is not signed by all of the inventors and that the Application is lacking a written consent of all assignees under 37 C.F.R. §1.172(a). These problems and objections are not contested. Accordingly there are no issues for us to decide and we leave it to the Examiner and Appellants to resolve these problems and objections. Also, if contested, such issues are petitionable matters under 37 C.F.R. § 1.181. See MPEP §§ 1002 and 1201. Appeal 2011-008284 Application 12/026,978 4 instant reissue application is a continuation of the ’526 reissue application and was filed on February 6, 2008, more than two years from the issue date of U.S. Patent No. 6,571,343. The Examiner maintains that the claims of the current reissue application are correcting a different error than those identified in the ’526 reissue application. Answer 5. The Examiner cites to In re Doll 419 F. 2d 925 in concluding that this broadening reissue is not permitted as the new broadened aspects in the claims are not related to the original reissue. Answer 5-6. We disagree. Our reviewing court has recently provided guidance, stating “we see no basis for limiting Doll to situations where later broadened claims are related to, or are directed to the same embodiment as in the original application.” In re Staats, 671 F.3d 1350, 1355 (Fed. Cir. 2012). Accordingly, we will not sustain the Examiner’s rejection of claims 41 through 61 as being based upon a defective reissue oath under 35 U.S.C. § 251. Rejection under 35 U.S.C. § 112 We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusion that the Examiner erred in finding that the claim term “high-energy consumption functions” is indefinite as it is a term of degree for which there is no subjective standard for measure. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in Appeal 2011-008284 Application 12/026,978 5 the Examiner’s Answer in response to Appellants’ Appeal Brief3. We concur with the conclusion reached by the Examiner. Appellants’ arguments identify examples of high energy functions in the specification. Appeal Brief 16-17, Reply Brief 6. However as identified by the Examiner, the Specification provides no standard for measuring the degree or scope of the subjective term “high energy.” Nor does the Specification limit “high energy consumption functions” to the examples provided in the disclosure. When a term of degree is used in a claim the Specification must provide some standard for measuring that degree. Datamize v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005) (citing Seattle Box Co. v. Industrial Crating & Packing Inc. 731 F.2d 818, 826 (Fed. Cir. 1984)). Accordingly, we sustain the Examiner’s rejection of claims 44, 53, and 60 under 35 U.S.C. § 112 second paragraph ORDER The decision of the Examiner to reject claims 41 through 61 is affirmed-in-part. AFFIRMED-IN-PART tj 3 Throughout this opinion we refer to the Appeal Brief filed January 25, 2011, and the Reply Brief filed April 25, 2011.