In Re Jung
637 F.3d 1356
| Fed. Cir. | 2011Background
- Jung and Wood appeal the Board's decision sustaining invalidity of most claims of the '072 application for anticipation/obviousness.
- The '072 application concerns a photo-detector array system with a well, a first charge pump, and a first charge counter.
- Independent Claim 1, as amended, recites a well-charge-level controller coupled to the pump and a processor; dependent Claim 5 adds a processor with PI/PD control.
- Kalnitsky et al. is cited by the examiner as disclosing a system with a controller overlapping the claimed well-charge-level controller (controller 340).
- The examiner rejected claims 1, 4, and 5 on anticipation/obviousness; Jung amended to import the well-charge-level controller from claim 4 and argued Kalnitsky does not disclose a continuously adjusting controller.
- The Board sustained anticipation for claims 1-3, 7-11, 13-21, and 24-29, but did not uphold claim 12 for obviousness; Jung challenged the prima facie case and Board conduct.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Prima facie case validity | Jung contends examiner failed to make a proper prima facie case. | Jung argues the rejection lacks proper claim-construction on-the-record. | Prima facie case properly established; rejection sufficiently informative. |
| Board as super-examiner | Jung claims the Board conducted independent fact-finding beyond the examiner's scope. | Board appropriately clarified facts and applied law; not acting as super-examiner. | Board did not act as super-examiner; findings were consistent with notice and law. |
| Scope of well-charge-level controller | Well-charge-level controller must be limited to the exemplar in the specification; Kalnitsky does not disclose it. | Kalnitsky's controller 340 meets the claim language for well-charge-level controller. | Kalnitsky's controller 340 reads on the claimed controller; anticipation affirmed for the asserted claims. |
Key Cases Cited
- Chester v. Miller, 906 F.2d 1574 (Fed. Cir. 1990) (§132 notice requirement suffices if rejection is informative)
- Hyatt v. Dudas, 492 F.3d 1365 (Fed. Cir. 2007) (prima facie burden is procedural; PTO must explain shortcomings)
- In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992) (burden shifting in prosecution procedures)
- In re Piasecki, 745 F.2d 1468 (Fed. Cir. 1984) (burden shifting and notice in PTO rejections)
- In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) (every element must be in a single prior art reference for anticipation)
- In re Kronig, 539 F.2d 1300 (CCPA 1976) (board may affirm examiner's rejection with fair opportunity to respond)