Ex parte McCoy
| Decision Date | 28 February 2020 |
| Docket Number | 635,Appeal 2019-001177,Application 13/474 |
| Parties | Ex parte CHARLES MCCOY, LEO MARK PEDLOW, LING JUN WONG, and TRUE XIONG Technology Center 2100 |
| Court | Patent Trial and Appeal Board |
Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and SCOTT RAEVSKY Administrative Patent Judges.
DECISION ON APPEAL [1]
Pursuant to 35 U.S.C. § 134(a), Appellant[2] appeals from the Examiner's decision to reject claims 1-4 and 6-27. See Final Act. 1. Claim 5 is canceled; claims 1 and 27 are independent. Appeal Br., Claims Appx. We have jurisdiction under 35 U.S.C § 6(b).
We AFFIRM.
The claims are directed to user customization of menus. Spec., Title. Independent claim 1 is representative of the appealed claims. It is reproduced below with formatting modified for clarity, adopting Appellant's labels as shown in brackets (see Appeal Br. 14), and with emphasis added to the claim language that recites additional limitations beyond an abstract idea:
The prior art relied upon by the Examiner is:
Name
Reference
Date
Freeman
US 6, 828, 992 B1
Dec. 7, 2004
Hayes
US 2007/0223737 Al
Sept. 27, 2007
Logitech, “Harmony Tips and Tricks: Adding Favorite Channels & Icons to Harmony One” available at https://blog.logitech.com/2010/ 07/13/harmony-tips-and-tricksadding- favorite-channelsicons- to-harmony-one/ retrieved Apr. 15, 2014.
Logitech Harmony One Review available at https://www.youtube.com/watc h?v=4yg3gWVG-lQ retrieved Apr. 14, 2014
Logitech® Harmony® 700 Remote User Manual available at https://www.logitech.com/ assets/44637/3/harmony700- user-guide.pdf
Web page: Benedict Schmidt IT Strategy & Architecture • Technology go-to guy “Using the Apple TV 2 with Logitech's Harmony 650 Remote” retrieved Apr. 15, 2014
Claims 1-4 and 6-27 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to provide a written description of the invention. Final Act. 5-6.
Claims 1-4 and 6-27 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception (i.e. abstract idea) without significantly more.. Final Act. 6-9.
Claims 1-4, 6, 7, 22-24, 26, and 27 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Freeman. Final Act. 9-15.
Claims 8-13, 15, 17, 21, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Freeman and Remote. Final Act. 15-25.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Freeman and Hayes. Final Act. 25-26.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Freeman and Techgooch. Final Act. 26-27.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Freeman and Echevers. Final Act. 27-29.
Claims 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Freeman and Schmidt. Final Act. 29-30.
We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 U.S.P.Q.2d 1072, 1075 (BPAI 2010) (precedential).
35 U.S.C. § 112, First Paragraph - Written Description
The Examiner finds inadequate written description support to the "non-standard" menu items recited by the independent claims. Final Act. 5. Appellant responds directing attention to a description of standard predefined device menus items that "can be added to the menus without having to define the menus." Appeal Br. 6 (citing Spec. ¶ 41). Appellant argues:
Since the term "non-standard predefined device menu items" refers to menu items that are not "standard predefined device menu items", the term would mean that when the menu definition indicates that the menu is a non-standard pre-defined menu of the consumer electronics device, the menus must be defined before the menu definitions can be added to the menus.
Id. The Examiner responds, finding "it is unclear from the cited paragraph . . . whether a standard menu includes only standard menu items or it also includes a mixture of non-standard menu items." Ans. 5. The Examiner further finds no mention of the argued "non-standard" menu item or how non-standard menu items differ from the disclosed standard menu items. Id. "Merely mentioning the sound menu is a standard sound menu, does not give definition to what is considered as standard and non-standard menu items." Id. According to the Examiner:
[T]he definition for the term "non-standard predefined device menu items" as argue[d] by the Appellant is not found in the cited paragraph [41] and appears to be merely the Appellant's opinion, because the cited paragraph makes no mention[] of [a] menu definition indicating any menu as non-standard pre-defined menu, and also makes no mention[] of [a] non-standard pre-defined menu [that] must be defined before menu definitions can be added to the menu.
By statute, 35 U.S.C. § 112, first paragraph, requires "[t]he specification shall contain a written description of the invention." Under this statute, a claim should be rejected for lack of written description when it recites elements found to be without support in the original disclosure. See In re Rasmussen, 650 F.2d 1212 (CCPA 1981). The test for written description is summarized in Purdue Pharma, 230 F.3d at 1323:
In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue. See Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). Nonetheless, the disclosure "must . . . convey with reasonable clarity to those skilled in the art that . . . [the inventor] was in possession of the invention." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Put another way, one skilled in the art, reading the original disclosure, must "immediately discern the limitation at issue" in the claims. Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994). That inquiry is a factual one and must be assessed on a case-by-case basis. See Vas-Cath, 935 F.2d at 1561 ("Precisely how close the original description must come to comply with the description requirement of § 112 must be determined on a case-by-case basis.").
Because the sufficiency of the written description is evaluated by one of ordinary skill in the art, details that would be known by the skilled artisan need not be included in a patent specification. See Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). However, when an explicit limitation in a claim is not present in the written description, the burden is on the applicant to show that a person of ordinary skill in the art would have understood that the description necessarily includes that limitation. Cf id. at 1354-55. "One shows that one is 'in possession' of the invention by describing the invention, with all of its claimed limitations, not that which makes it obvious." Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Thus, the written description requirement is not satisfied if the disclosure merely would lead one to speculate as to "modifications that the inventor might have envisioned, but failed to disclose." Id.
The U.S. Patent and Trademark Office (USPTO) bears the initial burden of presenting & prima facie case of unpatentability. In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002). The burden regarding the written description requirement is described in In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (parallel citations omitted):
Insofar as the written description requirement is concerned, that burden is discharged by "presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims." Wertheim, 541 F.2d at 263. Thus, the burden placed on the examiner varies, depending upon what the applicant claims. If the applicant claims embodiments of the invention that are completely outside the scope of the specification, then the examiner or Board need only establish this fact to make out a prima facie case. Id. at 263-64. If, on the other hand, the specification contains a description of the claimed invention, albeit not in ipsis verbis (in the identical words), then the examiner or Board, in order to meet the...
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