In Re STARRETT

• Court: Court of Appeals for the Federal Circuit
• Decided: June 8, 2023
• Docket: 22-2209
• Status: Unpublished

Opinion

Case: 22-2209 Document: 21 Page: 1 Filed: 06/08/2023

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

IN RE: WILLIAM HENRY STARRETT, JR., Appellant ______________________

2022-2209 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 15/299,124. ______________________

Decided: June 8, 2023 ______________________

WILLIAM STARRETT, JR., Richardson, TX, pro se.

ROBERT MCBRIDE, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for appellee Katherine K. Vidal. Also represented by THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA YASMEEN RASHEED, MICHAEL TYLER. ______________________

Before LOURIE, DYK, and TARANTO, Circuit Judges. PER CURIAM. William Henry Starrett, Jr., appeals from a decision of the United States Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) affirming an Exam- iner’s rejection of the pending claims of U.S. Patent Case: 22-2209 Document: 21 Page: 2 Filed: 06/08/2023

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Application 15/299,124 (“the ’124 application”) as un- patentable based on various grounds. Ex parte William Henry Starrett Jr., No. 2021-002543, 2022 WL 1198959 (P.T.A.B. Apr. 15, 2022) (“Decision”). For the following rea- sons, we affirm. BACKGROUND The twenty-two claims of the ’124 application generally recite methods, systems, media, and machines for main- taining augmented telepathic data for telepathic communi- cation as a gadget-free extension of human senses. The claimed inventions allegedly maintain data structures rep- resenting categories of biological signals in a body such as “Nervous System” and “Sensory System.” Claim 1, reproduced in part below, is representative for purposes of this appeal: 1. A non-transitory computer readable medium containing data representing either of or both data structures and program instructions for generat- ing, analyzing, extending, communicating, inte- grating, storing, converting, editing, encoding, or maintaining said data structures representing: [A.] one or more unit of category Nervous Sys- tem depicting referring expressions relating to nervous system cells, nerves, tissue, electrical or chemical impulses, and trace occurrences re- lated to signaling the communication of infor- mation and its processing in a biological body optionally with [i.] zero, one, or more unit of category Sen- sory System depicting referring expres- sions relating to sensory systems cells, nerves, tissue, electrical or chemical im- pulses, and trace occurrences related to sig- naling the communication of sensory Case: 22-2209 Document: 21 Page: 3 Filed: 06/08/2023

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information for its interpretation or pro- cessing in a biological body and [ii.] zero, one, or more unit of category Brain and Nerve Activity optionally depict- ing referring expressions associating Nerv- ous System category units with Sensory System category units . . . [d.] wherein each Brain and Nerve Ac- tivity, Sensory System, Nervous Sys- tem, Communication, Cognition, Perception, Experience, Imagery, Sound, Symbol, Stimulus, Behavior, and People category unit consisting of [1)] zero, one, or more members with each member describing one or more object, element, asset, act, condition, process, or product rep- resenting zero, one, or more event, status, location, or hierarchical co- ordinate system and having zero, one, or more relationship, refer- ence, property, description, or di- mension of interest wherein [A)] data structures represent- ing one or more unit in one or more category being generated using [i)] one or more referring expression and zero, one, or more hierarchical coordi- nate system by a system in- corporating [a)] at least one trans- mitter, artificial satel- lite, receiver, signal, or Case: 22-2209 Document: 21 Page: 4 Filed: 06/08/2023

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ambient field and zero proximate, wearable, or surgically implanted devices, sensors, probes, or electrodes for analyzing, obtaining, and generating infor- mation about biological bodies; [b)] configuration to re- ceive, relay, transmit, or distribute one or more signal wherein at least one signal com- prising data repre- sentative of information about one or more biological body wherein the processing of biological systems data using at least one machine learning task intelligibly recovering perceived, experienced, remembered, or imag- ined imagery, sounds, or feelings as one or more computational, visual, auditory, tex- tual, numeric, sym- bolic, coordinate, or haptic representation; or [c)] configuration to re- ceive, relay, transmit, or distribute one or more signal wherein at Case: 22-2209 Document: 21 Page: 5 Filed: 06/08/2023

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least one signal trans- mitting to one or more biological system in at least one biological body wherein one or more biological system recovering output sup- plying a biological body with at least one intel- ligible image, sound, or feeling . . . . ’124 application, claim 1 (formatting and bracketed mate- rial added by the Board in Decision at *1–3). The Examiner rejected all twenty-two claims for failing to comply with the written description and enablement re- quirements of 35 U.S.C. § 112(a) and for indefiniteness un- der 35 U.S.C. § 112(b). Additionally, the Examiner rejected claims 15–22 for failing to meet the utility require- ment of 35 U.S.C. § 101 and rejected claims 1–14 as obvi- ous under 35 U.S.C. § 103. Starrett appealed to the Board, asserting that each of the Examiner’s rejections was improper and should be overturned. The Board selected claim 1 as representative for its analysis concerning written description and enablement under § 112(a), as well as obviousness under § 103. Deci- sion at *3–4. Similarly, the Board selected claim 15 as rep- resentative for its § 101 utility analysis. Id. at *4. The Board explained that it selected those representative claims because it found that Starrett did not argue each of the application’s claims separately. Id. at *3–4. In reviewing the Examiner’s § 112(a) enablement rejec- tion, the Board treated representative claim 1 as a genus claim after identifying that it contains forty-seven “or” clauses, thereby allowing it to cover over 140 trillion Case: 22-2209 Document: 21 Page: 6 Filed: 06/08/2023

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embodiments. Id. at *7. The Board noted that the Exam- iner analyzed each of the relevant factors for assessing en- ablement identified in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) and found that they weighed against a finding of enablement. Id. at *9. Although Starrett argued, regard- ing each Wands factor, that claim 1 was “fully enabled” by the application’s “laboriously detailed” specification, the Board disagreed with those assertions after finding them conclusory. Id. The Board noted that Starrett’s conten- tions essentially amounted to “argu[ing] that if an appa- ratus is well-known . . . , then any function that [the inventor] claims for that apparatus is also fully enabled.” Id. at *10. The Board held that this argument did not re- spond to the Wands factors analysis and affirmed the Ex- aminer’s rejection of the claims for lacking enablement. Id. The Board also affirmed each of the Examiner’s other rejections, and Starrett filed a request for rehearing, which the Board denied. Starrett appeals from the Board’s decision. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(a). DISCUSSION We review the Board’s legal determinations de novo, In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the Board’s factual findings for substantial evidence, In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported by substantial evidence if a reasonable mind might accept the evidence as adequate to support the find- ing. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). Starrett asserts that the Board procedurally erred by selecting and evaluating representative claims in its deci- sion, rather than comprehensively addressing each claim individually. Additionally, he argues that the Board erred by affirming each of the Examiner’s grounds of rejection. Case: 22-2209 Document: 21 Page: 7 Filed: 06/08/2023

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We first address Starrett’s procedural contentions before considering his substantive arguments. I Starrett contends that the Board erred in finding that he argued the ’124 application’s claims as a group with re- spect to the § 112(a) grounds of rejection, asserting that he comprehensively addressed each claim in his briefs to the Board. Appellant’s Br. at 9–10. We disagree. Regulations governing the Board permit the selection and analysis of representative claims in some circum- stances. Pursuant to 37 C.F.R. § 41.37(c)(1)(iv): When multiple claims subject to the same ground of rejection are argued as a group or subgroup by [an] appellant, the Board may select a single claim from the group or subgroup and may decide the ap- peal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone. That same regulation explains that “the failure of [an] ap- pellant to separately argue claims which [the] appellant has grouped together shall constitute a waiver of any argu- ment that the Board must consider the patentability of any grouped claim separately.” Id. Furthermore, a “statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” Id. Starrett’s appeal brief to the Board includes a section titled “3. 35 U.S.C. § 112(a) Rejections (Claims 1–22).” SAppx 1 134. Although that section contains references to individual claims within the body of its text and subhead- ings that specifically identify subgroups of claims, those

1 “SAppx” refers to the Supplemental Appendix filed by the government. Case: 22-2209 Document: 21 Page: 8 Filed: 06/08/2023

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specific mentions do nothing more than summarize the Ex- aminer’s reasoning in rejecting the claims and identify what each claim or group of claims recites. Those refer- ences do not amount to separate arguments for each claim or subgroup of claims that preclude the selection of repre- sentative claims under 37 C.F.R. § 41.37(c)(1)(iv). Addi- tionally, nothing in Starrett’s reply brief to the Board supports a finding that he addressed any of the claims sep- arately. Accordingly, the Board reasonably grouped all of the application’s claims together with respect to the § 112(a) grounds of rejection. The Board therefore did not err in applying 37 C.F.R. § 41.37(c)(1)(iv) by selecting claim 1 as representative for its § 112(a) analysis and applying its analysis to all of the application’s claims. See In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1162 (Fed. Cir. 2018) (affirming the Board’s selection of a representative claim after holding that “the Board reasonably grouped all of the claims together”); In re Lovin, 652 F.3d 1349, 1356– 57 (Fed. Cir. 2011) (affirming the Board’s selection of rep- resentative claims after holding that “the Board has rea- sonably interpreted [37 C.F.R. §] 41.37 to require applicants to articulate more substantive arguments if they wish for individual claims to be treated separately”). II Starrett argues that each ground of rejection should be overturned. We first address the Board’s § 112(a) enable- ment analysis, which applies to all of the application’s twenty-two claims. “[T]he absence of enablement is a legal conclusion based on underlying factual inquiries.” In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000) (citing Enzo Bi- ochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1369 (Fed. Cir. 1999)). On appeal, Starrett repeats the same contentions that he argued to the Board. Starrett argues that claim 1 is “fully enabled” and that components of the invention are Case: 22-2209 Document: 21 Page: 9 Filed: 06/08/2023

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well known to persons of skill in the art without further argument or evidentiary support. Appellant’s Br. at 16. We disagree. As the Supreme Court recently explained, in affirming a decision of this court: If a patent claims an entire class of processes, ma- chines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. The more one claims, the more one must enable. Amgen Inc. v. Sanofi, 143 S. Ct. 1243, 1254 (2023) (citations omitted). Here, much is claimed, and little is enabled. Although a finding of enablement is not precluded by a skilled arti- san’s needing to engage in some measure of experimenta- tion, the extent of that experimentation must be reasonable. Id. at 1255. The determination as to whether the extent of experimentation is undue or reasonable is in- formed by the eight Wands factors. In re Wands, 858 F.2d at 737. In this case, the Board’s factual findings underpinning its enablement determination are supported by substantial evidence. Nothing in the ’124 application’s specification or claims undermines the Board’s reliance on the Examiner’s Wands factors analysis or the Board’s determination that Starrett’s contentions were merely conclusory. The appli- cation’s disclosure of a broad and abstract organizational structure used to accomplish the maintenance of aug- mented telepathic data amounts to little more than a “re- search assignment” requiring a skilled artisan to undertake undue experimentation to discover what types of devices are encompassed by the claim limitations and how they would function. Amgen, 143 S. Ct. at 1256; see Case: 22-2209 Document: 21 Page: 10 Filed: 06/08/2023

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also Enzo Biochem, 188 F.3d at 1374 (finding a lack of en- ablement after determining that “the specifications provide no more than a ‘plan’ or ‘invitation’ for those of skill in the art to experiment . . . ; they do not provide sufficient guid- ance or specificity as to how to execute that plan” (citations omitted)); Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1359 (Fed. Cir. 2010) (Newman, J., additional views) (“[T]he overriding policy of patent systems requires both written description and enablement, and it is less critical to decide which statutory clause applies in a particular case, than to assure that both requirements are met. . . . [T]he threshold in all cases requires a transition from theory to practice, from basic science to its applica- tion, from research plan to demonstrated utility.”); Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993) (explaining that the written description requirement of § 112 requires dis- closing more than a mere “wish” or “plan”). Claim 1, as with other claims in the ’124 application, is rife with broad, vague concepts, including, but not limited to, “one or more unit of category Nervous System depicting referring expressions relating to nervous system cells, nerves, tissue, electrical or chemical impulses, and trace occurrences related to signaling the communication of in- formation and its processing in a biological body,” “a sys- tem incorporating at least one transmitter, artificial satellite, receiver, signal, or ambient field and zero proxi- mate, wearable, or surgically implanted devices, sensors, probes, or electrodes for analyzing, obtaining, and generat- ing information about biological bodies,” and a “configura- tion to receive, relay, transmit, or distribute one or more signal wherein at least one signal transmitting to one or more biological system in at least one biological body wherein one or more biological system recovering output supplying a biological body with at least one intelligible im- age, sound, or feeling.” ’124 application, claim 1. Hence, like the Board, we find Starrett’s arguments on enablement conclusory and unresponsive. Although a Case: 22-2209 Document: 21 Page: 11 Filed: 06/08/2023

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skilled artisan’s familiarity with the components of a claimed invention is relevant under several Wands factors (e.g., nature of the invention, state of the prior art), it is not dispositive of enablement on its own. Furthermore, the Ex- aminer’s discussion of the Wands factors properly faulted the specification for failing to describe how the claim ele- ments function. SAppx 49, 51–52. As we have explained, “[a]lthough the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent.” Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007). Starrett’s argu- ments on appeal do not address how the ’124 application’s disclosures enable novel functions of allegedly well-known components, other than by facially asserting that claim 1 is “fully enabled.” Moreover, Starrett fails to address any of the other Wands factors. Accordingly, we affirm the Board’s rejection of claims 1–22 as lacking enablement under § 112(a). CONCLUSION As we have affirmed a ground of rejection applicable to all of the claims in this appeal, we need not address Star- rett’s remaining arguments regarding the other grounds of rejection. For the foregoing reasons, we affirm the Board’s rejection of claims 1–22 of the ’124 application. AFFIRMED