Ex parte Iritani

June 22, 2011 – Blog Post

            MPEP § 2131 states that “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”  Publications do not always provide an explicit teaching regarding all features discussed therein.  With respect to U.S. patents and patent publications, for example, MPEP §2164.05(a) states “[t]he specification need not disclose what is well-known to those skilled in the art and preferably omits that which is well-known to those skilled and already available to the public.”   When an Examiner relies upon information that is not explicitly disclosed in a prior art publication, the Examiner must support their factual findings with evidence and/or sound technical reasoning. 

            In Ex parte Iritani (Appeal 2009-015330, in application serial no. 10/468,800, decision issued June 20, 2011) the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner’s anticipation rejection for not providing a “ meaningful explanation” regarding information believed to be implicit in the prior art publication.  The invention in Ex parte Irtani relates to a device, equipment, and a method for measuring distances to various objects by using standing waves.  Claim 1, for example, requires detecting amplitude of standing wave, outputting an amplitude signal corresponding to the detected amplitude, and forming a frequency-amplitude function representing the relation between the frequency and the amplitude.  The prior art cited by the Examiner discloses a technique for calculating a distance based on measuring a two-point resonance frequency.  The cited prior art did not explicitly describe that the amplitude of a wave is detected or plays any part in the distance calculation.  According to the Examiner, however, the determination of “resonance” accounts for the use of a detected amplitude signal as part of the claimed “frequency-amplitude function.”  The Examiner stated:

It is well known that resonance, which is what [the prior art] is determining, is a function of frequency and amplitude due to its very nature.  Resonance is an amplitude that occurs due to a fundamental frequency of a medium.  Therfor [sic] the only factors on resonance are frequency and amplitude rendering resonance a frequency-amplitude function.  

The Examiner provided no further explanation to support this position.  The BPAI stated:

[w]e are not persuaded by the Examiner’s position that the resonance described in [in the prior art] is intrinsically a function of frequency and amplitude.  The Examiner does not adequately support his statement with meaningful explanation. (emphasis in original). 

The BPAI noted in their decision that none of the formulas in the cited prior art appeared to rely upon, or account for, the wave’s amplitude. 

The BPAI does not explicitly state how much explanation is needed before the Examiner provides a “meaningful explanation.”  However, broad conclusions from the Examiner do not appear to be sufficient .