Appellants lose on 112 P2 in GAUSELMANN; examiner affirmed
As to written description
The test for sufficiency of the written description of a patent application “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991)). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). A negative claim limitation, such as the “without requiring the use of player tracking cards or other data about the players to identify players involved in the tournament and without requiring player intervention” limitation at issue here, is adequately supported “when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc.,
694 F.3d 1344, 1351 (Fed. Cir. 2012). It is important to note, however, that “[s]uch written description support need not rise to the level of
disclaimer. . . . [and that] it is possible for the patentee to support both the inclusion and exclusion of the same material.” Id.
The entirety of the Specification’s discussion of player identification is contained in the two portions quoted above. Those portions clearly preface each mention of player tracking cards with the term “if.” “If,” in the context of the Specification, clearly conveys to one of ordinary skill in the art an optional feature. Further, we are unable to ascertain any portion of the Specification that requires, implicitly or explicitly, the identification of the players to either set up or carry out the tournament. Accordingly, we find that the phrase “without requiring the use of player tracking cards or other data about the players to identify players involved in the tournament and without requiring player intervention” as recited in independent claims 1 and 19, and by dependency claims 2, 3, 5-18, and 20-24, is adequately supported by such description as to reasonably convey to those skilled in the art that Appellants had possession of the claimed subject matter as of the filing date.
Accordingly, we do not sustain Rejection I.
As to the rejection for Indefiniteness under 35 USC 112 P2:
Appellants appear to raise two arguments in response to this rejection. First, Appellants contend that this rejection is overcome “if the objection to the specification under 35 [U.S.C. §] 112, first paragraph, was overcome.”
App. Br. 9. Second, Appellants assert that the phrase is not indefinite because it “conveys that the tournament is set up without any information whatsoever about the players.” Id. at 10. Appellants contend that the Specification makes clear that “the player does not supply any data whatsoever in order to set up or carry out the tournament.” Reply Br. 5.
In response to Appellants’ arguments, the Examiner explains that simply because the Specification discloses setting up the tournament without any information about the players, that does not clearly disclose what is encompassed by the phrase “other data.” Ans. 19.
Because there are potentially numerous reasonable interpretations of what might constitute “other data about the players to identify players,” many of which depend upon the subjective concept of recognition and other factors as discussed above, and because one interpretation does not necessarily encompass the other, this is not merely a question of choosing the broader of the two possible interpretations. Rather, we are confronted with an ambiguity that renders the scope of the claimed subject matter unclear. As such, we are “justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under
35 U.S.C. § 112, second paragraph, as indefinite.” See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008).
Accordingly, we sustain Rejection II.
Because the claims are indefinite, Rejections III and IV must fall, pro
forma, as they are necessarily based on speculative assumptions as to the scope of the claims. See In re Steele, 305 F.3d 859, 862-63 (CCPA 1962).
Bottom line: AFFIRMED