Ex Parte Jung et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10385464 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KIL-SOO JUNG, JUNG-WAN KO, HYUN-KWON CHUNG,
JUNG-KWON HEO, and SUNG WOOK PARK
____________________

Appeal 2009-0145281
Application 10/385,4642
Technology Center 2100
____________________

Decided: April 27, 2010
____________________

Before JOHN A. JEFFERY, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 An oral hearing was held in this appeal on April 13, 2010.
2 Application filed March 12, 2003. The real party in interest is Samsung
Electronics Co., Ltd. (App. Br. 1.)
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STATEMENT OF THE CASE
The Appellants appeal the Examiner’s rejection of claims 1-12 under
authority of 35 U.S.C. § 134(a). Claims 13-16 have been cancelled. The
Board of Patent Appeals and Interferences (BPAI) has jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

Appellants’ Invention
Appellants invented a method and apparatus for managing navigation
through a multi-layer structure (multi-layer focusing). The method allots
predetermined focusing layer values to elements (content elements) linked to
content (content provided by a content provider). (Spec. ¶¶ [0002], [0017],
[0018], [0026].)3

Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of focusing contents provided in a multi-
layer structure, the method comprising:
allotting predetermined focusing layer values to contents
elements linked to contents to be provided to a user, to form
focusing layers of a markup language document;

3 We refer to Appellants’ Specification (“Spec.”); Supplemental Appeal
Brief (“App. Br.”) filed November 27, 2007; and Reply Brief (“Reply Br.”)
filed April 4, 2008. We also refer to the Examiner’s Answer (“Ans.”)
mailed February 4, 2008.
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providing the contents elements included in a
predetermined focusing layer and focusing on any one contents
element of the contents elements provided to the user;
receiving a predetermined command from the user; and
moving the focusing based on the focusing layer values
when the received command is to move the focusing.

References
The Examiner relies on the following references as evidence of
unpatentability:
Schein US 6,075,575 Jun. 13, 2000

Schein US 6,388,714 B1 May 14, 2002

Rejections on Appeal
The Examiner rejects claims 7-10 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
The Examiner rejects claims 7-10 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner rejects claims 1-12 under 35 U.S.C. § 102(b) as being
anticipated by Schein (US 6,075,575) (hereinafter “Schein ‘575”).
The Examiner also objects to the Appellants’ Specification
amendment under 35 U.S.C. § 132(a) as introducing new matter into the
disclosure.4

4 In accordance with MPEP § 2163.06(II) (2007), we review both the
rejection under 35 U.S.C. § 112, first paragraph, and the objection under
35 U.S.C. § 132(a).
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ISSUES
Based on Appellants’ contentions, as well as the findings and
conclusions of the Examiner, the pivotal issues before us are as follows.
1. Does the Examiner err in finding that Appellants’ limitation
reciting a “recording medium” does not comply with the written description
requirement under 35 U.S.C. § 112, first paragraph?
2. Does the Examiner err in finding that Appellants’ Specification
amendment added new matter under 35 U.S.C. § 132(a)?
3. Does the Examiner err in concluding that Appellants’ limitation
reciting a “recording medium” includes non-statutory subject matter under
35 U.S.C. § 101?
4. Does the Examiner err in finding the Schein reference discloses
allotting focus layer values as recited in Appellants’ claim 1?

FINDINGS OF FACT (FF)
Appellants’ Specification
1. Appellants’ Specification, as originally filed, describes a
recording medium as follows:
Here, the recording medium may be any kind of recording
device in which data are recorded, for example, a magnetic
recording medium such as ROM, a floppy disk, or a hard disk,
an optical medium such as CD-ROM or a DVD, and carrier
waves such as transmission over the Internet.
(Spec. ¶ [0054].)
2. Appellants amended their Specification in an Amendment
(Amendment filed September 6, 2006), which deleted a portion of text
(stricken-through, below) and adding a new sentence (underlined, below) to
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paragraph [0054] of the Specification. The Amendment modified the
Specification as follows:
Here, the recording medium may be any kind of recording
device in which data are recorded, for example, a magnetic
recording medium such as ROM, a floppy disk, or a hard disk,
an optical medium such as CD-ROM or a DVD, and carrier
waves such as transmission over the Internet. The present
invention may also be realized as a data signal embodied in a
carrier wave and comprising a program readable by a computer
and transmittable over the internet.
(Amendment (September 6, 2006), 2.)

The Examiner’s Objection to the Amendment
3. The Examiner objected to Appellants’ amendment to the
Specification in the Advisory Action mailed February 16, 2007. The
Examiner objected to the amendment as including new matter under
35 U.S.C. § 132(a). (Advisory Action (February 16, 2007) at page 2; see
also Ans. 13-16.) The objection states that:
Furthermore, the amendment to the specification filed 9/6/2006
is objected to under 35 U.S.C. 132(a) because it introduces new
matter into the disclosure. 35 U.S.C. 132(a) states that no
amendment shall introduce new matter into the disclosure of the
invention. The added material which is not supported by the
original disclosure is as follows: paragraph [0054], deletion of
“, and carrier waves [...]” and addition of “The present
invention [...]”.
Applicant is required to cancel the new matter in the reply to
this Office Action.
(Advisory Action (February 16, 2007), 2.)

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The Schein ‘575 Reference
4. Schein describes navigating among “screen areas” in “a
schedule information area 106 having a program matrix 108 of cells or items
that depict the shows.” (Col. 8, ll. 62-67.)

PRINCIPLES OF LAW
Burden on Appeal
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for any rejection in
order to provide an applicant with notice of the reasons why the applicant is
not entitled to a patent on the claim scope sought. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984); Ex parte Frye, No. 2009-006013, 2010 WL 889747, at *3 (BPAI
2010) (precedential). An appellant has the opportunity on appeal to the
Board to demonstrate error in the Examiner’s position. See In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant
can overcome a rejection by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998), overruled in part on other grounds, KSR, 550 U.S. at 422);
Frye, 2010 WL 889747 at *4.

Statutory Subject Matter
Our reviewing court has held that transitory, propagating signals, such
as carrier waves, are not within any of the four statutory categories (process,
machine, manufacture or composition of matter). Therefore, a claim
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directed to computer instructions embodied in a signal is not statutory under
35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).

Written Description
“Compliance with the written description requirement is a question of
fact.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1376 (Fed.
Cir. 2009). The written description requirement requires us to determine
“whether the disclosure of the application as originally filed reasonably
conveys to the artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or absence of literal
support in the specification for the claim language.” In re Kaslow, 707 F.2d
1366, 1375 (Fed. Cir. 1983) (citations omitted). Thus, “the description must
‘clearly allow persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed.’” Ariad Pharmaceuticals v. Eli Lilly
and Co., --- F.3d ----, 2010 WL 1007369, at *12 (Fed. Cir. 2010) (en banc)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)).
In other words, the test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.
Ariad, --- F.3d ----, 2010 WL 1007369 at *12 (citing Vas-Cath, 935 F.2d at
1563.)

New Matter
“The question whether new matter has been added to an application is
a question of fact.” Commonwealth Scientific and Industrial Research
Organisation v. Buffalo Technology, Inc., 542 F.3d 1363, 1380 (Fed. Cir.
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2008). “Section 132 of the Patent Act provides: no amendment shall
introduce new matter into the disclosure of the invention.” “The
fundamental inquiry is whether the material added by amendment was
inherently contained in the original application.” “To make this judgment,
this court has explained that the new matter prohibition is closely related to
the adequate disclosure requirements of 35 U.S.C. § 112.” Schering Corp. v.
Amgen Inc., 222 F.3d 1347, 1352 (Fed. Cir. 2000) (citations omitted). In
other words, “[w]hen the applicant adds a claim or otherwise amends his
specification after the original filing date . . . the new claims or other added
material must find support in the original specification.” TurboCare Div. of
Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111,
1118 (Fed. Cir. 2001). See Moba, B.V. v. Diamond Automation, Inc., 325
F.3d 1306, 1319 (Fed. Cir. 2003) (“a rejection of an amended claim under
§ 132 is equivalent to a rejection under § 112, first paragraph”) (quoting In
re Rasmussen, 650 F.2d 1212, 1214 (CCPA 1981)); see also Chiron Corp. v.
Genentech, Inc., 363 F.3d 1247, 1255 (Fed. Cir. 2004) (“The written
description requirement prevents applicants from . . . . add[ing] new matter
to their disclosures . . . defeating an accurate accounting of the priority of
invention. See 35 U.S.C. 132.”)

Anticipation
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). Under 35 U.S.C. § 102, “[a] claim is anticipated only
if each and every element as set forth in the claim is found, either expressly
or inherently described, in a single prior art reference.” Verdegaal Bros.,
Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (citations
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omitted); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375
(Fed. Cir. 2005) (citation omitted).

ANALYSIS
Issues 1& 2: Rejection of Claims 7-10 under 35 U.S.C. § 112,
First Paragraph and New Matter Objection under 35 U.S.C. § 132
The Examiner rejects Appellants’ claims 7-10 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement, and objects to Appellants’ amended Specification as including
new matter under 35 U.S.C. § 132(a) because Appellants amended their
Specification to materially change the disclosure related to their “recording
medium” embodiment (FF 3). The Examiner finds that the Specification
amendment added new matter to Appellants’ Specification, and changed the
meaning of a “recording medium” such that Appellants’ claims contain
subject matter “which was not described in the specification in such a way as
to reasonably convey to one skilled in the relevant art that the inventor(s), at
the time the application was filed, has possession of the claimed
invention” (Ans. 3). (Ans. 3, 12-16; see also Nov. 8, 2006 Office Action, at
2 (Final Office Action) and Feb. 16, 2007 Advisory Action, at 2 (Advisory
Action).) Appellants contend that, inter alia, neither claim 7 (App. Br. 8),
nor the Specification amendment (App. Br. 9) contains new matter, and the
Examiner’s § 132 objection was improper (App. Br. 8-9). (App. Br. 8-10;
Reply Br. 6-9.) Accordingly, we decide the question of whether the claimed
subject matter complies with the written description requirement and
whether the Specification amendment contains new matter.
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We note that the Examiner first presented the § 132 objection in the
Advisory Action. (FF 3.) The Examiner made the objection after
prosecution was closed (see Appellants’ arguments (App. Br. 8-9)).
Nevertheless, we address the Examiner’s § 132 objection and Appellants’
corresponding arguments in accordance with our mandate under MPEP
§ 2163.06(II) (2007) because: (1) the Examiner’s § 112, first paragraph,
rejection was properly presented before Appellants; (2) Appellants did not
file a petition for withdrawal of the § 132 objection; and (3) instead
Appellants present arguments relating to the § 132 objection for our
consideration in the present appeal.
After reviewing the record on appeal, we agree with the Examiner and
we find Appellants’ Specification amendment contains new matter, and thus,
Appellants’ claimed subject matter (of claims 7-10) does not comply with
the written description requirement. Appellants’ Specification, as originally
filed, describes a recording medium as including a carrier wave. (FF 1.)
This description of the recording medium fully supports claims directed to
the recording medium embodiment (i.e., claims 7-10). Appellants, however,
amended their Specification, changing the description of a recording
medium, and adding a new, separate embodiment directed to a data signal
embodied in a carrier wave. (FF 2.)
We find such an alteration of Appellants’ Specification to be a
material change to Appellants’ disclosure (of the recording medium
embodiment), which is new matter that lacks support in the original
specification. See TurboCare, 264 F.3d at 1118. Here Appellants
broadened their disclosure with respect to the recording medium
embodiment, and thus, rendering the claims directed to that embodiment
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invalid for lack of support in Appellants’ disclosure as originally filed – “a
description can be broadened by removing limitations,” which is “classical
new matter,” and which renders the claims directed thereto “‘invalid for lack
of support in the initial disclosure.’” Anascape, Ltd. v. Nintendo of America,
Inc., No. 2008-1500, -- F.3d --, 2010 WL 1441772, at *5 (Fed. Cir. April 13,
2010) (quoting Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d
1338, 1344 (Fed. Cir. 2008)).
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s written description rejection of claims 7-10, or the
Examiner’s new matter objection to the Specification amendment under
35 U.S.C. § 132(a). Accordingly, we affirm the Examiner’s written
description rejection of these claims and the Examiner’s new matter
objection to the Specification amendment.

Issue 3: The Rejection of Claims 7-10 under 35 U.S.C. § 101
The Examiner finds that Appellants’ independent claim 7 and
dependent claims 8-10 recite a recording medium, defined in paragraph
[0054] of Appellants’ Specification as originally filed, which includes
“carrier waves” and constitutes non-statutory subject matter. (Ans. 3.)
Appellants contend that their recording medium is “patentable subject
matter.” (App. Br. 5-8; Reply Br. 2-6.) Accordingly, we decide the question
of whether the claimed subject matter is statutory.
Appellants’ claim 7 recites a “recording medium.” We agree with the
Examiner that Appellants’ recording medium may include non-statutory
subject matter – i.e., signals. Appellants’ Specification, as originally filed,
describes such recording media as including “carrier waves.” (FF 1.) We
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note that we review Appellants’ Specification as originally filed, not as
amended (as urged by Appellants, see Reply Br. 3-6). Were we to review
the Specification as amended, and as objected to by the Examiner, then we
must ignore our decisions with respect to §§ 112 and 132 (discussed supra).
Accordingly, we find Appellants’ claimed recording medium
implicates a carrier wave or a transitory signal. Therefore, claims 7-10
encompass the use of a computer data signal embodied in a carrier wave to
store, transfer, or manipulate information. A computer data signal embodied
in a carrier wave is a transitory, propagating signal not within any of the four
statutory categories and, therefore, non-statutory. See In re Nuijten, 500
F.3d at 1357; Subject Matter Eligibility of Computer Readable Media, 1351
Off. Gaz. Pat. Office 212 (Feb. 23, 2010). It follows that claims 7-10 are
directed to non-statutory subject matter.

Issue 4: Rejection of Claims 1-12 under 35 U.S.C. § 102(b)
Appellants contend that the Schein reference “does not disclose the
actual allotting of the predetermined focusing layer values, as claimed” in
Appellants’ claim 1. (App. Br. 10.) The Examiner finds that Schein
discloses each feature of Appellants’ claim 1, and maintains that the claim is
properly rejected. (Ans. 3-4, 16-19; FF 4.) Specifically, the Examiner finds
that Schein discloses navigating “a cursor within a designated screen area or
window on the display screen and navigating among different windows on
the display screen.” (Ans. 19, FF 4.) The Examiner finds Schein (Schein
‘575) inherently discloses that:
In order for a computer to know, based on user input, where to
move a cursor next, it first needs to know its current location.
If the cursor’s current location is within a designated screen
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area or window, there would necessarily have to be a value
indicating that the current location of the cursor is within said
designated screen area or window. Likewise, if the cursor’s is
navigating among different windows on the display screen, this
is not the same as moving a cursor within a designated screen
area or window, and instead the cursor is one level above in the
window hierarchy. Again, there would necessarily have to be a
value indicating that the cursor is currently navigating among
different windows on the display screen. It is this value
associated with the current position of the cursor, which in turn
is associated with the windows on the display that is read as
“allotting focusing layer values to form focusing layers.”
(Ans. 19.) Accordingly, we decide the question of whether the Examiner
erred in finding the Schein reference discloses “allotting predetermined
focusing layer values to contents elements,” as recited in Appellants’ claim
1.
After reviewing the record on appeal, we agree with Appellants that
the Schein reference does not disclose the disputed feature of Appellants’
claim 1. Schein ‘575 discloses navigating among “screen areas” in “a
schedule information area 106 having a program matrix 108 of cells or items
that depict the shows” (Schein ‘575, col. 8, ll. 62-67) – i.e., navigating “a
cursor within a designated screen area or window on the display screen and
navigating among different windows on the display screen” (Ans. 19, FF 4).
Although Schein discloses navigating among displayed screen areas
including content elements, Schein does not explain how this function is
accomplished. Schein simply does not provide any explicit disclosure of
assigning (allotting) values to its content elements. The Examiner asserts
that the computer must know where the cursor is (i.e., in what window or
layer the cursor resides (what window is currently selected), and the position
of the cursor on the screen), and therefore the position value is associated or
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assigned to the window areas (elements). But, as explained by Appellants,
the function described by the Examiner could be accomplished in a number
of ways, not necessarily requiring assigning values to content elements.
(Reply Br. 10-11.)
The fact that a certain result or characteristic may possibly occur or be
present in the prior art is insufficient to establish the inherency of that result
or characteristic. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993).
To establish inherency, the extrinsic evidence “must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill.” “Inherency, however,
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). “In
relying upon the theory of inherency, the examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990) (emphasis added).
Here, the Examiner has failed to provide a sufficient basis to show
that Schein’s disclosed navigating system necessarily assigns values to its
content elements. Accordingly, we are constrained by the record before us
to find that the Schein reference (Schein ‘575) does not inherently disclose
allotting focusing layer values to content elements. Therefore, we reverse
the Examiner’s anticipation rejection of independent claim 1 and its
dependent claims 2-4.
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Although we find that Appellants’ independent claim 7 and dependent
claims 8-10 failed to comply with the written description requirement, and
conclude that these claims contain non-statutory subject matter (supra),
these claims do not require speculation as to their scope. See In re Steele,
305 F.2d 859, 862 (CCPA 1962). Therefore, in the interest of judicial
efficiency, we address the prior art rejection of these claims. Appellants’
claim 7 and dependent claims 8-10 include the same disputed limitation as
recited in Appellants’ claim 1. Thus, for the reasons previously stated, we
find that the Schein reference does not disclose allotting focusing layer
values to content elements, and we reverse the Examiner’s anticipation
rejection of independent claim 7 and its dependent claims 8-10.
Appellants’ independent claim 11, while different in scope, also
includes a limitation directed to contents elements having assigned focusing
layer values. For the reasons set forth previously with respect to claim 1, we
find that Schein also does not disclose this limitation. Accordingly, we
reverse the Examiner’s anticipation rejection of independent claim 11 and its
dependent claim 12.
Appellants’ independent claim 5 is an apparatus claim comprising
multiple units performing various functions. Its scope is different from the
previously discussed method claims. In particular, we note that the claim
includes a focusing layer information management unit (performing the
function) that allots focusing layer values to the contents elements.
We further note that a statement of intended use in an apparatus claim
cannot be used to distinguish the claim over the prior art apparatus. See In
re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Sinex, 309 F.2d
488, 492 (CCPA 1962). It is well established that the manner or method in
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which a “machine is to be utilized is not germane to the issue of patentability
of the machine itself.” In re Casey, 370 F.2d 576, 580 (CCPA 1967). See
e.g., Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320
F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended use or purpose usually will
not limit the scope of the claim because such statements usually do no more
than define a context in which the invention operates.”); Catalina Marketing
International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809-10 (Fed. Cir.
2002). A claimed apparatus must be described by its structure, and not its
intended use. The mere recitation of an intended use in a claim will not be
given any patentable weight. In re Dense, 156 F.2d 76, 77 (CCPA 1946).
Notwithstanding the proscription against giving patentable weight to
statements of intended use, we broadly but reasonably construe Appellants’
focusing layer information management unit to mean a (hardware, software
or combination) device that manages focusing layer information (e.g., a
device that allots focusing layer values). As we previously explained with
respect to claim 1 (supra), Schein does not explicitly disclose allotting
focusing layer values. We also find that the Schein reference (Schein ‘575)
does not disclose a device that manages focusing layer information.
Accordingly, we reverse the Examiner’s anticipation rejection of
independent claim 5 and its dependent claim 6.

CONCLUSIONS OF LAW
On the record before us, we find the Examiner did not err in
concluding that Appellants’ recited “recording medium” includes non-
statutory subject matter under 35 U.S.C. § 101. We also find the Examiner
did not err in finding that Appellants’ recited “recording medium” does not
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comply with the written description requirement under 35 U.S.C. § 112, first
paragraph. We further find that the Examiner did not err in finding that
Appellants’ Specification amendment added new matter under 35 U.S.C.
§ 132(a). We, however, find that the Examiner did err in finding the Schein
reference discloses allotting focus layer values as recited in Appellants’
claim 1.

DECISION
We affirm the Examiner’s rejection of claims 7-10 under
35 U.S.C. §§ 101 and 112, first paragraph, and the Examiner’s objection to
the Specification amendment under 35 U.S.C. § 132(a).
We reverse the Examiner’s rejection of claims 1-12 under 35 U.S.C.
§ 102(b).
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-IN-PART

rwk

North Star Intellectual Property Law, PC
P.O. Box 34688
Washington, DC 20043