UNITED STATES PATENT AND TRADEMARK OFFICE

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1 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/002,236 09/13/ RX /23/2015 PANITCH SCHWARZE BELISARIO & NADEL LLP ONE COMMERCE SQUARE 2005 MARKET STREET, SUITE 2200 PHILADELPHIA, PA EXAMINER LEUNG, CHRISTINA Y ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/23/2015 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)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE PATENT TRIAL AND APPEAL BOARD LG ELECTRONICS USA INC. AND LG ELECTRONICS INC., Requester and Appellant, v. INDUSTRIAL TECHNOLOGY RESEARCH INSTITUTE, Patent Owner and Respondent. Appeal Technology Center 3900 Before STEPHEN C. SIU, JEFFERY B. ROBERTSON, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL

3 Third Party Requester LG Electronics Inc. and LG Electronics U.S.A., Inc. ( Requester ) appeals the Examiner s decision not to adopt the proposed rejection of claims 3, 4, 8, and Patent Owner Industrial Technology Research Institute ( Patent Owner ) responds to the Requester s appeal (b)(pre-AIA). We AFFIRM. We have jurisdiction under 35 U.S.C. 134(c) and STATEMENT OF THE CASE United States (hereinafter the 198 patent ), issued to Ming-Tsan Peng, et al. on March 2, 2010, is the subject of the current inter partes reexamination. The 198 patent was the subject of a civil action in the United States District Court for the District of New Jersey, namely Industrial Technology Research Institute v. LG Electronics Inc., et al., Civ. Action No. 2:12-cv-949 (D.N.J.). See TPR App. Br See Requester s Appeal Brief, filed January 7, 2015( TPR App. Br. ), at 1; Examiner s Answer, mailed February 26, 2015, incorporating by reference the Examiner s Right of Appeal Notice, mailed October 9, 2014 ( RAN ). See also Requester s Rebuttal Brief, filed March 26, 2015 ( TPR Reb. Br. ). We understand that, on August 25, 2015, Requester withdrew from participating in this proceeding. See Requester s Letter, dated August 25, See Patent Owner s Respondent Brief, filed February 6, 2015 ( PO Resp. Br. ). 2

4 THE INVENTION The 198 patent generally relates to an actuating device of an optical pickup head. More specifically, the present invention is directed to an electromagnetic actuating device including a yoke that is spaced apart from an objective lens carrier by a distance. The yoke has a protruding part that extends towards the objective lens carrier and is used to attract magnetic flux lines produced by the magnet, making the magnetic flux that passes through the coil be distributed evenly. 198 patent, Abstract. Claim 3, which is illustrative of the appealed subject matter, has been amended and is reproduced below (with underlining showing additions relative to the originally issued claims): 3. (Amended) An optical pickup head, applicable for moving an objective lens assembly, comprising: an objective lens carrier, for carrying the objective lens assembly, wherein a vertical direction, a first horizontal direction, and a second horizontal direction that are vertical to each other are defined on the objective lens carrier; two supporting yokes, arranged along a first horizontal axial direction and spaced apart from each other by the objective lens carrier, such that the objective lens carrier is located between the two supporting yokes; two magnets, respectively fixed on inner surfaces of the supporting yokes that are facing each other, such that the objective lens carrier is located between the two magnets; at least a focusing coil, winding around the objective lens carrier, wherein a normal direction of the focusing coil is parallel to the vertical direction; a plurality of tracking coils, disposed at the objective lens carrier, wherein a normal direction of the tracking coil is vertical to the vertical direction and parallel to a plane formed by the first horizontal direction and the second horizontal direction; and 3

5 two yokes, arranged along the second horizontal axial direction and spaced apart from each other by the objective lens carrier, such that the objective lens carrier is located between the two yokes, wherein a protruding part is protruded from an inner surface of each yoke and extends towards the objective lens carrier, wherein each protruding part includes a front edge opposite the yoke from which the protruding part protrudes and facing the objective lens carrier, and each protruding part protrudes to a predetermined distance in the second horizontal axial direction such that a space is provided in the second horizontal axial direction between the front edge of the protruding part and a nearest one of the plurality of tracking coils on the objective lens carrier, and wherein the protruding part is a long sheet having a length in the first horizontal direction that is greater than a length in the first horizontal direction of the nearest one of the plurality of tracking coils. TPR App. Br., Claims App x. PROPOSED REJECTIONS The Examiner does not adopt the following rejections proposed by Requester: 1. Claims 3, 4, 8, 12, 13, and are not patentable for failure to comply with the enablement requirement of (Pre-AIA) 35 U.S.C. 112, Claims 3, 4, 8, 12, 13, and are not patentable for failure to comply with the written description requirement of (Pre-AIA) 35 U.S.C. 112, 1. 4

6 3. Claims 3, 4, 8, 12, 13, and are not patentable for failure to comply with the definiteness requirement of (Pre-AIA) 35 U.S.C. 112, 2. ISSUES 1. Is Requester s challenge to the enablement of the claimed protruding part within the permissible scope of this inter partes reexamination proceeding? 2. Did the Examiner err by not adopting the proposed written description rejection? Specifically, is there sufficient written description support for the recited space provided in the second horizontal axial direction between the front edge of the protruding part and a nearest one of the plurality of tracking coils on the objective lens carrier? 3. Did the Examiner err by not adopting the proposed indefiniteness rejection? Specifically, is the recited space provided in the second horizontal axial direction between the front edge of the protruding part and a nearest one of the plurality of tracking coils on the objective lens carrier definite? ANALYSIS ENABLEMENT Claims 3, 4, 8, 12, 13, and Requester contends that the recited protruding part, a term recited in the original 198 claims, is not enabled. See, e.g., TPR App. Br (contending that the recited protruding part is not enabled because it requires four critical structural features that are absent from claims 3 and 5

7 17); TPR Reb. Br (presenting similar arguments as the opening brief and adding that the recited protruding part is not enabled because the claims additionally lack a critical functional feature). 3 6 As pointed out by Patent Owner though, it is well established that for originally claimed subject matter, issues under 35 U.S.C. 112 are not within the scope of reexamination and will not be considered. See 37 C.F.R (c). Specifically, 37 C.F.R reads in relevant part as follows: Scope of reexamination in inter partes reexamination proceeding. (a) Claims in an inter partes reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C (c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in an inter partes reexamination proceeding.... Moreover, section 2258(II) of the MPEP 4 explains: Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 3 We note that Requester argues, for the first time in the Rebuttal Brief, that the claims are not enabled for lacking a critical function requirement in addition to the four structural requirements argued in Requester s opening brief. Compare TPR App. Br with TPR Reb. Br In discussing the scope of inter partes reexaminations, section 2658(II) of the MPEP refers to section 2258(II) of the MPEP for a discussion of the examination in a reexamination proceeding based upon 35 U.S.C. 112, which discussion applies to inter partes reexamination in the same way it applies to ex parte reexamination.

8 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim.... If a limitation that appears in an existing patent claim also appears in a claim newly presented in a reexamination proceeding, that limitation cannot be examined as to 35 U.S.C MPEP 2258(II)(emphasis added). As such, because Requester s enablement argument is directed to subject matter included in the original patent claims, we agree with the Patent Owner that Requester s arguments are outside the permissible scope of this proceeding. We find unpersuasive Requester s response that [Patent Owner] should have raised this issue by Petition long ago and shortly after the enablement rejections were proposed in February TPR Reb. Br. 6. Namely, we disagree that Ex Parte TayMac Corp. supports Requester s argument. The Examiner here, unlike Ex Parte TayMac Corp., never adopted the proposed enablement rejection. See Ex Parte TayMac Corp., No , 2011 WL , at *4 (BPAI Nov. 1, 2011) (declining to address whether the 35 U.S.C. 112 rejection was properly within the scope of the reexamination and reversing the Examiner s rejection on other grounds)). 5 Requester s proposed enablement rejection is directed to subject matter of the original patent claims, which is outside the permissible scope 5 We also note that the Patent Owner is entitled to defend the Examiner s decision not to enter the rejection on other grounds. See Rexnord Industries, LLC v. Kappos, 705 F.3d 1347 (Fed. Cir. 2013) ( On judicial review, the correctness of the decision appealed from can be defended by the appellee on any ground that is supported by the record, whether or not the appellant raised the argument. ). 7

9 of inter partes reexaminations. Therefore, we affirm the Examiner s decision not to adopt the proposed enablement rejection. WRITTEN DESCRIPTION 6 Claims 3, 4, 8, 12, 13, and Requester argues that [t]he specification does not demonstrate that the inventors were in possession of an invention wherein a space is provided in the second horizontal direction between the front edge of the protruding part and a nearest one of the plurality of tracking coils on the objective lens carrier, as recited in claims 3 and 17. TPR App. Br. 30. In particular, the 198 patent makes no mention of such space as now recited in claims 3 and 17. Id. Instead, the 198 patent describes a space between the protruding part and the objective lens carrier. Id. Additionally, Requester contends that Figure 6 cannot support the recited space because Figure 6 mislabels supporting yokes 200 as the objective lens holder 100 and because Figure 6 only illustrates an effective tracking coil 430, not tracking coils 420. Id. at 31. As Patent Owner points out though An ipsis verbis ( in the same words ) description is not necessary to demonstrate support for elements of a claim. Rather, it is sufficient if the description is such that a skilled artisan would have understood the inventor to be in possession 6 To the extent Requester asserts that the claimed protruding part is not sufficiently described in the 198 patent, for the reasons discussed we also find these arguments are not within the permissible scope of this inter partes reexamination. It is our understanding, though, that Requester s argument here is instead directed to newly added subject matter, i.e. the recited space [] provided in the second horizontal axial direction.... 8

10 of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991); see also M.P.E.P That is, adequate written description support for the newly recited elements of claims 3 and 17 can still exist even without the precise use of the claimed terms in the specification. PO Resp. Br. 4. Patent Owner further explains that the recited space is adequately described by the 198 patent specification and drawings. In particular, the recited space is expressly visible in Figure 5, reproduced below. Annotated Copy of Figure 5 identifying the space in the horizontal axial direction between the front edges of the protruding parts and the nearest tracking coils PO Resp. Br As shown by Patent Owner s annotations in the form of black arrows, there is a space between the protruding part 610 and the nearest tracking coil 420 in the second horizontal axial direction, i.e. in the direction of the Y-axis. Additionally, we disagree with Requester that the described space between the protruding part and the objective lens carrier is unrelated to the 9

11 space as now recited in claims 3 and 17. See TPR App. Br. 31. Namely, as shown in Figure 4, the tracking coils are placed around the external surface of the objective lens carrier. See Fig. 4; 198 patent, col. 4, ll ; see also 198 patent, claim 3 (reciting that the plurality of tracking coils are disposed at the objective lens carrier). Thus, because the 198 patent identifies the tracking coils are around the external surface of the objective lens carrier and also explains that the space is to achieve the predetermined placement without crashing the protruding part ( 198 patent, col. 5, ll ), a skilled artisan would understand the disclosed space between the protruding part and the objective lens carrier to also be a space between the protruding part and the nearest tracking coil. We likewise find unavailing Requester s argument that because the patent s text and figures preclude the tracking coils 430 from ever being located on the same plane (e.g., XY) as the protruding parts , there is never a space (e.g., measured on the Y axis) between the protruding part s front edge and any tracking coil 430. TPR Reb. Br. 12. We first note that the claims expressly recite that the space is provided in the second horizontal axial direction and, thus, does not require the space only to be on the same XY plane, as suggested by Requester. Moreover, the mere disclosure in the 198 patent of a space in the vertical direction does not render the recited space in the second horizontal axial direction unsupported. Requester s arguments also fail because the space described to achieve the predetermined displacement without crashing is a space in the second horizontal axial direction. In particular, column 4, lines of the 198 patent state that 10

12 the larger the height h at which the protruding part 610 protrudes from the yoke 600, the closer the front edge of the protruding part 610 is to the effective tracking coil 430, which will enhance the evenness of the distribution of the magnetic flux lines. However, a sufficient large space must be preserved between the front edge of the protruding part 610 and the objective lens carrier 100, such that the objective lens carrier 100 achieves the predetermined displacement, without crashing the protruding part 610. Notably, the height h is identified in Figure 6 as in the direction of the Y- axis. This disclosure, then, is consistent with the claims, describing a space in the second horizontal axial direction. As such, we are not persuaded by Requester that a skilled artisan would not have understood the inventor to be in possession of the claimed invention at the time of filing. Accordingly, for the reasons discussed above, we affirm the Examiner s decision not to adopt the rejection of claims 3, 4, 8, 12, 13, and under 35 U.S.C. 112, 1 as failing to satisfy the written description requirement. INDEFINITENESS Claims 3, 4, 8, 12, 13, and Requester next asserts that the scope of the phrase a space is provided in the second horizontal direction between the front edge of the protruding part and a nearest one of the plurality of tracking coils, recited in both claims, does not inform, with reasonable certainty, those skilled in the art about the scope of the claims. TPR App. Br. 32. In particular, Requester contends that because the Specification precludes the front edge of the protruding part from being located in the same XY plane as the 11

13 tracking coil, the claimed space in the second horizontal direction is entirely unclear. Id. at However, as discussed above, the claim expressly recites that the space is in the second horizontal axial direction. This claim language does not become unclear because the 198 patent describes that there may also be a space along the vertical axis. See PO Resp. Br. 7 (noting that it is also clear how a space may be maintained between the front edge of the protruding part 610 and a tracking coil 420, even where neither feature is in the same XY plane. ). Moreover, contrary to Requester s assertions, neither the claim language nor the 198 patent specification suggests that both the protruding part and the tracking coils must be arranged on the same XY plane. Additionally, Requester maintains that the 198 patent distinguishes between the actual tracking coils and the effective tracking coils and, therefore, it is unclear whether the space must be in relation to the actual tracking coils or certain legs of different tracking coils. Id. at We disagree. The disputed limitation expressly recites that the space must be between the protruding part and a nearest one of the plurality of tracking coils on the objective lens carrier. See, e.g., PO Resp. Br. 8. While the 198 patent may describe and depict embodiments with a space between the protruding part and the effective tracking coil, this does not negate the definiteness of the express language of the claim. As such, we are not persuaded by Requester that the recited space is indefinite. Accordingly, for the reasons discussed above, we affirm the Examiner s decision not to adopt the rejection of claims 3, 4, 8, 12, 13, and 12

14 17 23 under 35 U.S.C. 112, 2 as failing to satisfy the definiteness requirement. DECISION The Examiner s decisions not to adopt the proposed rejections are affirmed. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R See 37 C.F.R In the event neither party files a request for rehearing within the time provided in 37 C.F.R , and this decision becomes final and appealable under 37 C.F.R , a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R and AFFIRMED peb 13

15 PATENT OWNER: PANITCH SCHW ARZE BELISARIO & NADEL LLP One Commerce Square 2005 Market Street, Suite 2200 Philadelphia, PA THIRD-PARTY REQUESTER: MORGAN LEWIS & BOCKIUS (WA) 1111 Pennsylvania Avenue, NW Washington, DC