Case 2:12-cv-02767-JPM-tmp Document 32-3 Filed 01/07/13 Page 1 of 10 PageID 209
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`Case 2:12-cv-02767-JPM-tmp Document 32-3 Filed 01/07/13 Page 2 of 10 PageID 210
`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.
`
`11/006,304
`
`FILING DATE
`
`12/06/2004
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Christopher Roussi
`
`UMT-10602/03
`
`7412
`
`04/07/2011
`7590
`25006
`GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
`PO BOX 7021
`TROY, MI 48007-7021
`
`EXAMINER
`
`SIEFKE, SAMUEL P
`
`ART UNIT
`
`1772
`
`MAIL DATE
`
`04/07/2011
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`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)
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-3 Filed 01/07/13 Page 3 of 10 PageID 211
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`________________
`
`Ex parte CHRISTOPHER ROUSSI,
`ROBERT A. SHUCHMAN, and
`GUY A. MEADOWS
`________________
`
`Appeal 2010-003169
`Application 11/006,304
`Technology Center 1700
`________________
`
`
`
`Before BRADLEY R. GARRIS, CHUNG K. PAK, and
`TERRY J. OWENS, Administrative Patent Judges.
`
`GARRIS, Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`
`
`
`
`
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`Case 2:12-cv-02767-JPM-tmp Document 32-3 Filed 01/07/13 Page 4 of 10 PageID 212
`Appeal 2010-003169
`Application 11/006,304
`
`
`Appellants appeal under 35 U.S.C. § 134 from the Examiner's
`decision rejecting claims 1-14 under 35 U.S.C. § 102(b) as anticipated by
`Spiesberger (US 5,691,957 issued Nov. 25, 1997). We have jurisdiction
`under 35 U.S.C. § 6.
`We REVERSE and ENTER NEW GROUNDS of REJECTION.
`
`Appellants claim a water-quality measurement system comprising a
`housing, one or more sensors for measuring water properties, a memory for
`storing information relating to the measured water properties, and "software
`for processing and condensing the multiple measured properties into a single
`number" (claim 1).
`Representative claim 1, the sole independent claim on appeal, reads as
`follows:
`
`1. A water-quality measurement system comprising:
`
`a housing suitable for travel on or in a body of water;
`
`one or more sensors for measuring water properties as the
`housing travels;
`
`the
`to
`information relating
`a memory for storing
`measured water properties; and software for processing and
`condensing the multiple measured properties into a single
`number.
`
`
`The Examiner's § 102 Rejection
`
`For the reasons set forth below, the appealed claims are indefinite
`under 35 U.S.C. § 112, 2nd paragraph, due to the independent claim 1
`recitation "software for processing and condensing the multiple measured
`
`
`
`2
`
`
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`Case 2:12-cv-02767-JPM-tmp Document 32-3 Filed 01/07/13 Page 5 of 10 PageID 213
`Appeal 2010-003169
`Application 11/006,304
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`properties into a single number." As a consequence, any assessment of the
`Examiner’s § 102 rejection necessarily would involve conjecture as to the
`meaning and scope of this claim recitation. Anticipation cannot be
`predicated on conjecture. See W. L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540, 1554 (Fed. Cir. 1983).
`Accordingly, we reverse the § 102 rejection of all appealed claims as
`anticipated by Spiesberger.
`
`The New Grounds of Rejection
`
`The § 112, 2nd paragraph, Rejection
`
`We reject all appealed claims under 35 U.S.C. § 112, 2nd paragraph,
`for failing to particularly point out and distinctly claim the subject matter
`which Appellants regard as their invention.
`Sole independent claim 1 recites "software for processing and
`condensing the multiple measured properties into a single number." The
`claim term "software" is commonly defined as "[t]he totality of programs
`usable on a particular kind of computer" (MCGRAW-HILL DICTIONARY OF
`SCIENTIFIC AND TECHNICAL TERMS, 1859 (5th ed. 1994)). However,
`Appellants expressly state that the above quoted claim 1 recitation defines a
`structural limitation (Reply Br. para. bridging 1-2). Therefore, we interpret
`the claim term "software" as an unspecified structure which performs the
`processing and condensing function recited in claim 1.
`Although claim 1 does not use means plus function language, we
`nevertheless determine that the above claim recitation invokes paragraph 6
`
`
`
`3
`
`
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`Case 2:12-cv-02767-JPM-tmp Document 32-3 Filed 01/07/13 Page 6 of 10 PageID 214
`Appeal 2010-003169
`Application 11/006,304
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`of § 112. This is because the record does not reflect that the claim term
`"software" is understood in the art to denote a particular structure or class of
`structures. As a consequence, we consider this claim term to be a nonce
`word or verbal construct which is simply a substitute for the term "means" of
`§ 112, paragraph 6. See Lightning World, Inc. v. Birchwood Lighting, Inc.,
`382 F.3d 1354, 1360 (Fed. Cir. 2004); see also Ex parte Rodriguez, 92
`USPQ2d 1395, 1404-05 (BPAI 2009).
`Because paragraph 6 of § 112 is invoked by claim 1, this paragraph
`requires that the means (i.e., the claimed "software") plus function language
`of claim 1 be construed to cover the corresponding structure described in the
`Specification and equivalents thereof. In the Summary of Claimed Subject
`Matter of the Appeal Brief, Appellants refer to their Specification at page 6,
`line 27, to page 7, line 3, for a description of the claim 1 recitation "software
`for processing and condensing the multiple measured properties into a single
`number" (App. Br. para. bridging 1-2). This cited portion of the
`Specification presents the following disclosure:
`The software processes the measured parameters into a form
`immediately useful in a GIS, as well as computing a water-
`quality index (WQI), which makes it convenient to interpret all
`the measurements as a single number.
`
`The above Specification disclosure cited by Appellants does not
`describe any particular structure but instead merely recites "software"
`without providing any algorithm by which the "software" is able to perform
`the claim 1 function "processing and condensing the multiple measured
`
`
`
`4
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-3 Filed 01/07/13 Page 7 of 10 PageID 215
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`Application 11/006,304
`
`properties into a single number."1 Simply reciting "software" without
`providing some detail about the means to accomplish the function is not
`enough to satisfy either paragraph 6 or paragraph 2 of § 112. See Finisar
`Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008).
`Under these circumstances, the record supports a determination that
`Appellants have failed to disclose an algorithm, and thus have failed to
`adequately describe sufficient structure, for performing the function required
`by the claim 1 recitation under review. As a result of Appellants' failure, the
`meaning and scope of this recitation cannot be construed in the manner
`required by paragraph 6 of § 112. For this reason, claim 1 as well as the
`remaining dependent claims on appeal are indefinite, thereby violating the
`2nd paragraph of § 112. See In re Katz, 97 USPQ2d 1737, 1746-47 (Fed.
`Cir. 2011); see also Rodriguez, 92 USPQ2d at 1405-06.
`
`The § 112, 1st paragraph, Rejections
`
`As an initial matter, we clarify that the following rejections are
`appropriate regardless of whether or not claim 1 is considered to invoke
`paragraph 6 of § 112.
`We reject all claims on appeal under the 1st paragraph of 35 U.S.C.
`§ 112 for failing to comply with the written description requirement of this
`paragraph.
`As explained above, Appellants' Specification fails to disclose any
`algorithm by which the claim 1 "software" would be able to perform the
`
`1 We find nothing in the remainder of the Specification which embellishes
`upon this mere recitation of "software".
`
`
`
`5
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-3 Filed 01/07/13 Page 8 of 10 PageID 216
`Appeal 2010-003169
`Application 11/006,304
`
`claimed function "processing and condensing the multiple measured
`properties into a single number." For this reason, claim 1 generically
`encompasses all means for performing this function. These circumstances
`violate the written description requirement.
`The test for compliance with this requirement is whether the
`application disclosure reasonably conveys to those skilled in the art that the
`inventor had possession of the claimed subject matter as of the application
`filing date. See Ariad Pharms, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351
`(Fed. Cir. 2010). The problem of written description compliance is
`especially acute with genus claims that use functional language to define the
`boundaries of a claimed genus, even when such claims are original claims
`and thus part of the original specification. Id. at 1349. Compliance with the
`written description requirement ensures that when an inventor claims a
`genus by its function, the specification recites sufficient materials to
`accomplish that function. Id. at 1352-53.
`Here, independent claim 1 (and concomitantly the dependent claims)
`encompasses all means for performing the function under consideration
`whereas the Specification describes no algorithm by which to accomplish
`that function. These circumstances compel a determination that the
`Specification disclosure would not reasonably convey to those skilled in the
`art that Appellants possessed on their application filing date the full scope of
`the invention defined by independent claim 1 and the dependent claims. See
`ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1378 (Fed. Cir.
`2009); see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336,
`1345 (Fed. Cir. 2005). This determination is appropriate regardless of
`
`
`
`6
`
`
`
`Case 2:12-cv-02767-JPM-tmp Document 32-3 Filed 01/07/13 Page 9 of 10 PageID 217
`Appeal 2010-003169
`Application 11/006,304
`
`whether claim 1 is an original claim and therefore part of the original
`disclosure. See id., 424 F.3d at 1346-47.
`
`We also reject all appealed claims under the 1st paragraph of 35
`U.S.C. § 112 for failing to comply with the enablement requirement of this
`paragraph.
`The enablement requirement is violated by independent claim 1 (as
`well as the dependent claims) for reasons analogous to those discussed
`above with respect to violation of the written description requirement. See
`LizardTech, 424 F.3d at 1345 ("Whether the flaw in the specification is
`regarded as a failure to demonstrate that the [inventor] possessed the full
`scope of the invention recited in claim 21 or a failure to enable the full
`breadth of that claim, the specification provides inadequate support for the
`claim under section 112, paragraph one."). Specifically, claim 1 fails to
`comply with the enablement requirement because it is generic to all means
`for performing the claimed function while the Specification fails to describe
`any algorithm which would enable performance of that function.
`It is well settled that "the specification must teach those of skill in the
`art 'how to make and how to use the invention as broadly as it is claimed.'"
`In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993).
`This legal principle leads to a determination that the appealed claims
`do not comply with the enablement requirement because the functional
`language of claim 1 (and correspondingly the dependent claims) is not
`enabled to its entire scope. See Rodriguez, 92 USPQ2d at 1410-11.
`
`7
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`
`
`
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`
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`Case 2:12-cv-02767-JPM-tmp Document 32-3 Filed 01/07/13 Page 10 of 10 PageID 218
`Appeal 2010-003169
`Application 11/006,304
`
`
`Notice Regarding the New Grounds of Rejection
`
`This decision contains new grounds of rejection pursuant to 37 C.F.R.
`§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
`pursuant to this paragraph shall not be considered final for judicial review.”
`37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
`MONTHS FROM THE DATE OF THE DECISION, must exercise one of
`the following two options with respect to the new grounds of rejection to
`avoid termination of the appeal as to the rejected claims:
`(1) Reopen prosecution. Submit an appropriate amendment of
`the claims so rejected or new evidence relating to the claims so
`rejected, or both, and have the matter reconsidered by the
`Examiner, in which event the proceeding will be remanded to
`the Examiner. . . .
`(2) Request rehearing. Request that the proceeding be reheard
`under § 41.52 by the Board upon the same record. . . .
`
`Conclusion
`
`In summary, we have reversed the Examiner's § 102 rejection and
`have entered new grounds of rejection.
`The decision of the Examiner is reversed.
`The above new grounds of rejection are entered.
`
`
`bar
`
`
`
`REVERSED; § 41.50(b)
`
`8
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