In re Edward K.Y. Jung And Lowell L. Wood
| Decision Date | 28 March 2011 |
| Docket Number | No. 2010–1019.,2010–1019. |
| Citation | 637 F.3d 1356 |
| Parties | In re Edward K.Y. JUNG and Lowell L. Wood, Jr. |
| Court | U.S. Court of Appeals — Federal Circuit |
OPINION TEXT STARTS HERE
Robert G. Sterne, Sterne, Kessler, Goldstein & Fox, PLLC, of Washington, DC, argued for appellants. With him on the brief were Jon E. Wright and Byron L. Pickard. Of counsel on the brief were Clarence T. Tegreene, S. Craig Rochester, and Roy P. Diaz, Intellectual Ventures, Management, LLC, of Bellevue, WA.Nathan K. Kelley, Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for the Director of the United States Patent and Trademark Office. With him on the brief were Raymond T. Chen, Solicitor, and Robert J. McManus, Associate Solicitor.Dale C. Barr, Constellation Law Group, PLLC, of Tracyton, WA, for amicus curiae Constellation Law Group, PLLC.Margaret M. Anderson, of Austin, TX, for amici curiae Margaret Anderson and Electronic Inventory Solutions, Inc.Brad D. Pedersen, Patterson, Thuente, Skaar & Christensen, P.A., of Minneapolis, MN, for amicus curiae Minnesota Intellectual Property Law Association.Before GAJARSA, LINN, and DYK, Circuit Judges.LINN, Circuit Judge.
Edward K.Y. Jung and Lowell L. Wood, Jr. (collectively, “Jung”) appeal the decision of the Board of Patent Appeals and Interferences (“Board”) sustaining the invalidity of all but five claims of U.S. Patent Application No. 10/770,072 (“'072 application”) for anticipation or obviousness. Ex parte Jung, No. 2008–3711, 2008 WL 4974150 (B.P.A.I. Nov. 21, 2008) (“ Decision ”), reconsideration denied, Ex parte Jung, No.2008–003711, 2009 WL 1995983 (B.P.A.I. July 7, 2009) (“ Reconsideration ”). Because the examiner properly established a prima facie case of invalidity, and because the Board did not act improperly as a “super-examiner,” this court affirms.
On January 20, 2004, Jung filed the '072 application directed to a photo-detector array system for transforming light inputs into electrical signals. The relevant claims are as follows:
1. A system comprising:
a photo-detector array having a first charge well;
a first charge pump operably coupled with the first charge well; and
a first charge counter operably coupled with said first charge pump.
4. The system of Claim 1, further comprising:
a first well-charge-level controller operably coupled with said first charge pump.
5. The system of Claim 4, wherein said first well-charge-level controller operably coupled with said first charge pump further comprises:
a processor configured to control said first charge pump utilizing at least one of a proportional, integral, and derivative control.
'072 application at 12. The '072 application also included Figure 1, showing a photo-detector array, 100, and its components:
Image 1 (6.9" X 5.26") Available for Offline Print
Id. Fig. 1 (graphic emphasis added). The dispute centers around the well-charge-level controller, designated 108 and circled in Figure 1 above. The application describes the functioning of the well-charge-level controller as follows:
Well-charge-level controller 108 typically gains knowledge of the detected accumulated charge level of charge well 102 from an output of well-charge-level detector 114. Well-charge-level detector 114 relatively continuously senses the level of charge in charge well 102 and generates the output indicative of that charge in a form appropriate to well-charge-level controller 108.Id. at 5. Jung noted that “[t]hose having ordinary skill in the art will appreciate that the specific devices and processes described herein are intended as merely illustrative of their more general counterparts.” Id. at 3.
On September 14, 2005, the examiner issued a first office action, rejecting all claims of the '072 application for anticipation or single-reference obviousness over U.S. Patent No. 6,380,571 (“Kalnitsky”). The examiner's rejections as to claims 1, 4, and 5 are set out below:
Regarding Claim 1, Kalnitsky et al. teach (see Fig. 2, 3, 6) a system comprising a photo-detector array (array of pixel cells (200)-see Col. 2, lines 55–61) having a first charge well (214) (see Col. 5, lines 5–15), a first charge pump (320) (see Col. 5, lines 28–33, 37–39) operably coupled with the first charge well, and a first charge counter (330) (see Col. 6, lines 56–67) operably coupled with said first charge pump (through controller (340)) (see Col. 5, lines 28–33, 37–39 and Col. 6, lines 38–44, 64–66)....
Regarding Claim 4, Kalnitsky et al. teach a first well-charge-well [ sic ] controller (340) operably coupled with said first charge pump (see Col. 5, lines 37–39 and Col. 6, lines 38–44, 64–66).
Regarding Claim 5, Kalnitsky et al. teach said first well-charge-level controller operably coupled with said first charge pump further comprises a processor (340) (since the controller 340 performs “determination” and/or “look-up”, it is a processor—see Col. 6, lines 38–40 and Col. 7, lines 8–9) configured to control said first charge pump utilizing at least one of a proportional, integral, and derivative control (charge pump control is proportional to the read out current—see Col. 6, lines 56–66).
Office Action of Sept. 14, 2005, at 2–3 (“ Initial Office Action ”).
Jung responded on January 17, 2006, amending claims 1 and 5 to incorporate the first well-charge-level controller limitation from original claim 4 and cancelling original claim 4. In his remarks, Jung block-cited Kalnitsky and concluded that the “ ‘well-charge-level controller’ recitations of [amended] Claim 1 are different from the ‘controller 340’ recitations of [Kalnitsky], and thus controller 340 of [Kalnitsky] does not match the ‘well-charge-level controller’ of herein-amended Independent Claim 1.” Reply to Office Action of Sept. 14, 2005, at 11–13 (“ Initial Response ”) (emphases in original).
The examiner finally rejected all the pending claims. The examiner noted Jung's argument that Kalnitsky does not teach the first well-charge-level controller, but found it unpersuasive. The examiner again equated the well-charge-level controller of Claim 1 with Kalnitsky's “controller 340.” Office Action of Apr. 18, 2006, at 10–12 (“ Final Office Action ”).
Jung appealed to the Board. For the first time, he explained that the well-charge-level controller must “more or less continuously adjust[ ] the control signal inputs of active charge source 104 and/or active charge sink 112,” as disclosed “in one exemplary embodiment.” He argued that Kalnitsky disclosed only a reset controller, which did not “more or less continuously adjust the control signal inputs,” and therefore did not anticipate.
The Board rejected Jung's argument, noting that “[t]here is no dispute that Kalnitsky describes a system including a reset controller[,] ... the question is whether the claim language encompasses those structures.” Decision at 6. Kalnitsky's reset controller reads the amount of light in the charge well by directing the oscillator “to output a series of positive electrical pulses to lower the potential on the p-well 214 (charge well), monitor[ ] the potential level, and stop[ ] the pulses when the potential reaches the level required” for a new charge to build in the well from the light input. Id. at 8. In other words, the process by which the amount of charge in the charge well is read also resets the charge. The Board, consistent with the examiner, construed the element “well-charge-level controller” as “any component that controls the charge level of a well,” and noted that Jung “had the opportunity to amend the claims to achieve more precise claim coverage, i.e., to limit the claim to the ‘exemplary process' disclosed in the Specification, but did not do so.” Id. at 9. Because the specification explicitly noted that the examples were merely exemplary and were made only to show how the invention “typically” worked, the Board determined that the claim language could not be limited to those embodiments. Therefore, the Board concluded that Kalnitsky's reset controller met the claim language and thus anticipated claim 1.
The Board, however, reversed the examiner's rejection of claim 5, which included the further limitation that the well-charge-level controller include “a processor configured to control said first charge pump utilizing at least one of a proportional, integral, or derivative control,” because “[t]he examiner has not sufficiently explained how [Kalnitsky's disclosure] amounts to proportional control, as that term is used in the control art.” Id. at 13.
Jung filed a request for rehearing on November 21, 2008, asserting that the Board erred in failing to address whether the examiner had set forth a prima facie rejection.
The Board rejected Jung's argument, noting that the prima facie case requirement is merely a procedural mechanism of allocating the burden at different stages of the prosecution, and that the ultimate disposition on anticipation was properly addressed by the Board's initial decision. Jung timely appealed to this court, which has jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
Because Jung's arguments on appeal are directed only to the “well-charge-level controller” limitation of independent claim 1 (as amended), this court's discussion is limited to that issue.
Jung argues on appeal that (1) the examiner failed to make a prima facie case of anticipation, and (2) the Board acted as a “super-examiner” by performing independent fact-finding and applying an improperly deferential standard of review to the examiner's rejections. For the reasons set forth below, this court rejects both arguments and affirms the Board's decision, holding claims 1–3, 7–11, 13–21, and 24–29 invalid for anticipation. This court does not address the Board's rejection of claim 12 for obviousness because Jung has not presented that issue for appeal.
Jung frames this appeal much as he framed the appeal to the Board, as a challenge...
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