Ex Parte Vook

Board of Patent Appeals and Interferences

Sep 20, 2010

10903830 (B.P.A.I. Sep. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DIETRICH W. VOOK
____________________

Appeal 2009-006992
Application 10/903,8301
Technology Center 2600
____________________

Before MARC S. HOFF, CARLA M. KRIVAK,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is AVAGO Technologies ECBU IP (Singapore)
PTE. LTD.
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 for 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 2009-006992
Application 10/903,830

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention relates to an optical computer mouse having an
optical element within a motion sensor of the mouse. The surface of the
optical element is charged by trapping charged particles within the optical
element for the purpose of reducing dust contamination of the optical mouse.
Exposure to an alpha source or use of ion implantation techniques may be
used to create the charged surface (Spec. 2:8-13; 3:21-4:2).
Claim 1 is exemplary:
1. An improved motion sensor in an optical mouse, the motion sensor
comprising an optical element, the optical element having a surface charge
from trapped charged particles in the optical element, each of the trapped
charged particles including an atomic nucleus.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
LeBleu US 5,845,504 Dec. 8, 1998
Smith US 2004/0031928 A1 Feb. 19, 2004
Sun US 2004/0095321 A1 May 20, 2004
Mori JP 60008815 Jan. 17, 1985

Claims 1 - 9 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1 - 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sun in view of Mori, LeBleu, and Smith.
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Rather than repeat the Examiner’s positions or Appellant’s arguments,
we make reference to the Appeal Brief (filed July 22, 2008), the Reply Brief
(filed Nov. 3, 2008), and the Examiner’s Answer (mailed Sep. 3, 2008) for
their respective details.

ISSUES
Appellant contends that the definition of an alpha particle as disclosed
in the Specification complies with the written description requirement of 35
U.S.C. § 112, first paragraph, in that a helium nucleus is an atomic nucleus
(App. Br. 4). Appellant asserts that the cited references of Mori and LeBleu
teach creating a charge in completely different elements, wherein Mori
discloses charging a dustproof cover to prevent dust and LeBleu discloses
electrostatically charged generators that emit charged particles imparting a
charge to aerosol particulate contaminants, which makes them easier to filter
(App. Br. 6). Appellant argues further that LeBleu discloses charged
particles that attract particulate contaminants as opposed to preventing dust
from sticking to the modified dustproof lid (App. Br. 6). Accordingly,
Appellant contends that this attraction of contaminants is the exact opposite
of what is desired for the modified dustproof lid and, thus, one of ordinary
skill in the art would not have been motivated to combine the references to
modify the electrostatically charged dustproof lid of Sun and Mori (App. Br.
6-7).
Appellant’s contentions present us with the following two issues:
1. Was the subgenus, “an atomic nucleus,” disclosed with sufficient
specificity in the originally filed Specification that one of ordinary skill in
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the art would understand from reading the Specification that Appellant had
possession of this subgenus?
2. Would a person having ordinary skill in the art have been motivated
to modify Sun in view of the teachings of Mori, LeBleu, and Smith to arrive
at the claimed invention?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. A surface charge is produced on the optical element by
irradiating the optical element with a source 200. The source may be an
alpha particle source or an ion source. Ion implant technology may include
ion implanting, ion plasma sources, or reactive ion etching technology.
(Spec. 3:21-4:20)
2. An ion is defined as
1. an atom or group of atoms when combined in a radical or
molecule that carries a positive or negative electric charge as a
result of having lost or gained one or more electrons and that
may exist in solution usu. in combination with molecules of the
solvent or out of solution, that may be formed during
electrolysis and migrate to the electrode of opposite charge, or
that may be formed in a gas and be capable of carrying an
electric current through the gas ... 2. a free electron or other
charged subatomic particle.
Webster's Third New International Dictionary Unabridged (1961) 1192.
“An Alpha particle consists of two protons and two neutrons bound
together in a particle which is identical to a helium nucleus” (Spec. 4:9-11).
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Sun
3. Sun discloses an optical mouse having a transparent dustproof
lid (Fig. 2; ¶¶ [0009], [0015], and [0017]).
Mori
4. Mori discloses a dustproof cover for a parabolic reflecting
mirror, wherein the cover is convex and becomes negatively charged when
the wind blows upon the surface of the lid to prevent dust from sticking to
the convex surface (Fig. 1; Mori 4:20 – 5:6, 5:18 - 6:4).
LeBleu
5. LeBleu discloses a portable water recovery and dispensing
apparatus having an air ionization pre-treatment that includes electrostatic
charged-particle generators for emitting charged particles that impart a
charge to aerosol particulate contaminants for the purpose of making them
easier to filter. Alternative sources of charged particles for the air ionization
pre-treatment include alpha particles, beta particles, and charged ions (col.
16, l. 65-17, l. 15).

PRINCIPLES OF LAW
Under the written description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to one of
ordinary skill in the art that, as of the filing date of the application, the
inventor had possession of the later-claimed subject matter. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). “[T]he invention claimed
does not have to be described in ipsis verbis in order to satisfy the
description requirement of § 112.” In re Lukach, 442 F.2d 967, 969 (CCPA
1971). However, “it cannot be said that [a claimed] subgenus is necessarily
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always implicitly described by a genus encompassing it and a species upon
which it reads.” In re Smith, 458 F.2d 1389 (CCPA 1972). Rather, the
Specification “must do more than merely disclose that which would render
the claimed invention obvious . . . [the] provisions of § 112 ¶ 1 ‘requires that
the written description actually or inherently disclose the claim element.’”
ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1377
(Fed. Cir. 2009).
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007).

ANALYSIS
REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
Appellant’s arguments do not persuade us that the claims satisfy the
written description requirement of 35 U.S.C. § 112, ¶ 1. Independent claim
1 presently recites inter alia “the optical element having a surface charge
from trapped charged particles in the optical element, each of the trapped
charged particles including an atomic nucleus” (emphasis added).
Independent method claim 5 recites similar language. The prosecution
history shows that neither claim 1 nor claim 5, as originally filed, included
this final claim limitation, “each of the trapped charged particles including
an atomic nucleus.”
This language does not appear in Appellant’s originally filed
Specification either. Rather, the Specification solely discloses that the
trapped charged particle may be an ion, generally, or, specifically, an alpha
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particle (FF 1). The present claim language, “charged particles including an
atomic nucleus,” was subsequently added to the independent claims by an
amendment filed January 7, 2008. Claims 8 and 6 respectively narrow
independent claims 1 and 5 to further specify that the trapped charged
particles include alpha particles.
To summarize, the originally filed Specification only discloses a
genus (ion) and a single species (alpha particle). Both independent claims
were subsequently narrowed by amendment to now recite a previously
undisclosed subgenus (charged particles including an atomic nucleus). We
must therefore determine whether the originally filed Specification actually
or inherently describes the entire scope of the claim language, “charged
particles including an atomic nucleus.” See ICU Medical, Inc. v. Alaris
Medical Systems, Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009).
The term “charged particles including an atomic nucleus” reads on
two types of ions: (1) atomic nuclei possessing a shortage of electrons and
therefore a net positive charge; and (2) atomic nuclei possessing an excess of
electrons and therefore a net negative charge. The generic term “ion” further
includes fundamental particles (an electron and a proton). (FF 2).
As noted above, Appellant’s Specification only discloses one species
of ions: alpha particles. Since alpha particles are positively charged helium
nuclei (FF 2), Appellant has only disclosed one species of “charged particles
including an atomic nucleus.” In fact, Appellant has only disclosed one such
species: atomic nuclei that possess a positive charge. Appellant has not
disclosed the invention could be alternatively practiced with either protons,
any other positively charged atomic nuclei, electrons, or any species of
negatively charged atomic nuclei. Because there is no evidence that
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Appellant envisioned the use of negatively charged atomic nuclei to repel
dust, one of ordinary skill in the art would not understand Appellant’s
invention to be commensurate in scope with the present claim language. It
is not enough that it might have been obvious to a person of ordinary skill
that a negatively charged atomic nuclei may be employed. See ICU
Medical, 558 F.3d 1368, 1379 (noting that “‘an applicant complies with the
written description requirement by describing the invention, with all its
claimed limitations, not that which makes it obvious’”).
We therefore conclude that the limited disclosure of ions, generally, and
more specifically, alpha particles, is not a legally sufficient disclosure of the
subsequently added claim language, “charged particles including an atomic
nucleus.” That is, Appellant has not demonstrated error in the rejection of
claims 1-9 under § 112, ¶ 1, so we will therefore sustain the rejection.
REJECTION UNDER 35 U.S.C. § 103 OF CLAIMS 1-93
Independent claim 1 recites “the optical element having a surface
charge from trapped charged particles in the optical element, each of the
trapped charged particles including an atomic nucleus.” Independent claim
5 recites similar claim limitations.
We consider Appellant’s arguments to be persuasive to show
Examiner error. Specifically, we do not agree with the Examiner’s finding
that it would have been obvious to one having ordinary skill in the art at the

3 Since the written description requirement may be potentially overcome by
Appellant, in the interest of judicial economy we proceed to decide the
merits of the art based rejection. Were we to merely affirm the 35 U.S.C.
§112 rejection without further comment (finding it dispositive, the Appellant
may enter an amendment obviating the 35 U.S.C. §112 rejection, and the
Examiner would presumably maintain the rejection under 35 U.S.C. §103,
which would be appealable to the Board.
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time the invention was made to modify the dust proof lid of Sun to be
electrostatically charged as taught by Mori, the charged particles including
alpha particles, ions, or nucleus as taught by LeBleu and Smith, for
effectively reducing dust on the optical element (Ans. 4).
Sun discloses an optical mouse having a transparent dustproof lid (FF
3). Mori teaches a dustproof cover for a parabolic mirror, which becomes
negatively charged when the wind blows upon the surface of the lid (FF 4).
Mori, however, does not disclose trapped charged particles (FF 4). Thus,
modifying the dustproof lid of Sun with the teaching of Mori would have
provided only a dustproof lid having a convex surface which becomes
negatively charged when the wind blows against the surface. Since the
dustproof lid of Sun covers the orifice of the optical mouse on the bottom
surface adjacent to a mouse pad which supports the mouse, we do not find
that the combination of Sun and Mori provides adequate disclosure for an
electrostatically charged dustproof lid unless air or wind is piped under the
optical mouse.
Further, we agree with Appellant that the disclosure of LeBleu teaches
that charged particles such as alpha particles attract aerosol particulate
contaminants, which differs from the purpose of the charged particles of the
present invention, i.e., to repel dust (App. Br. 6; FF 5). Therefore, the
combination would not have yielded a predictable result since LeBleu only
discloses that alpha particles attract dust. Because Mori’s objective is to
repel dust by creating a charge on the dust proof lid, we find that LeBleu,
which teaches imparting a charge on aerosol particulate contaminants,
functions in opposition to Mori. Accordingly, we do not find that one
skilled in the art would have been motivated to modify the surface of the
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transparent dustproof lid of Sun by creating a charge as taught by Mori, with
the charged particles including those disclosed in LeBleu, to produce a
dustproof lid irradiated with trapped charged particles such as alpha
particles, as claimed.
We have reviewed Smith (the additional reference applied by the
Examiner to reject these claims), and we find that it does not teach the
limitation deemed to be absent from the combination of Sun, Mori, and
LeBleu.
Therefore, we find that the combined teachings of Sun, Mori, LeBleu,
and Smith do not disclose all the limitations of independent claims 1 and 5.
Thus, we will not sustain the Examiner’s rejection of claims 1 and 5, nor that
of dependent claims 2-4 and 6-9, under 35 U.S.C. § 103 (a) as being
unpatentable over Sun in view of Mori, LeBleu and Smith.

CONCLUSIONS
1. The subgenus, “an atomic nucleus,” was not disclosed with
sufficient specificity in the originally filed Specification that one of ordinary
skill in the art would understand from reading the Specification that
Appellant had possession of this subgenus.
2. A person having ordinary skill in the art would not have been
motivated to modify Sun in view of the teachings of Mori, LeBleu, and
Smith to arrive at the instant invention.

ORDER
The Examiner’s rejection of claims 1-9 under § 112 is affirmed. The
Examiner’s rejection of claims 1-9 under § 103 is reversed.
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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

ELD

AVAGO Technologies, LTD.
P.O. BOX 1920
Denver, CO 80201-1920

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