Federal Circuit disposition — 2011-1401

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Serial No. 11/386,211)
IN RE W. DANIEL HILLIS, RODERICK A. HYDE,
NATHAN P. MYHRVOLD, CLARENCE T.
TEGREENE, and LOWELL L. WOOD, JR.
__________________________
2011-1401
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
__________________________
(Serial No. 11/386,227)
IN RE W. DANIEL HILLIS, RODERICK A. HYDE,
NATHAN P. MYHRVOLD, CLARENCE T.
TEGREENE, and LOWELL L. WOOD, JR.
__________________________
2011-1402
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
___________________________
Decided: May 21, 2012
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IN RE HILLIS 2
M ANU J. TEJWANI, Intellectual Ventures, LLC, of
Bellevue, Washington, for appellants. Of counsel was
ROY P. D IAZ .
RAYMOND T. CHEN , Solicitor, United States Patent &
Trademark Office, of Alexandria, Virginia, for appellee.
With him on the brief were NATHAN K. K ELLEY and L YNNE
E. PETTIGREW , Associate Solicitors.
__________________________
Before NEWMAN , M AYER, and DYK , Circuit Judges.
PER C URIAM.
Appellants W. Daniel Hillis, Roderick A. Hyde, Na-
than P. Myhrvold, Clarence T. Tegreene, and Lowell L.
Wood, Jr. (collectively “Hillis”) appeal a decision of the
Board of Patent Appeals and Interferences (“Board”),
rejecting all pending claims in U.S. Patent Application
No. 11/386,211 (“the ’211 application”) for lack of enable-
ment under 35 U.S.C. § 112. Ex parte Hillis (“’211 Board
Decision”), No. 2010-000974, 2010 WL 3827101 (B.P.A.I.
Sept. 29, 2010). Hillis also appeals a Board decision
rejecting all pending claims in U.S. Patent Application
No. 11/386,227 (“the ’227 application”) on the same
grounds. Ex parte Hillis (“’227 Board Decision”), No.
2009-014972, 2010 WL 3827097 (B.P.A.I. Sept. 29, 2010).
This opinion resolves both appeals. We affirm as to both.
BACKGROUND
The ’211 application and the ’227 application are re-
lated applications and share substantially similar specifi-
cations. The respective specifications include formulas
that explain physical and optical characteristics of oscilla-
tors, otherwise described in the specification as self-
resonant bodies. The specifications explain that when
self-resonant bodies are grouped together, each self-

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IN RE HILLIS 3
resonant body receives the energy it would receive if
standing alone, for example from ambient light, as well as
energy emitted from other nearby self-resonant bodies.
The specifications further explain that the frequency
response of each individual body, i.e., the light it produces
in response to the light it receives, can change as a func-
tion of the spacing between it and other self-resonant
bodies. The specification suggests that groups of self-
resonant bodies (or oscillators) can be arranged in various
ways so that the group as a whole takes on a particular
optical characteristic, for example, that of a lens.
Claim 1 of the ’211 application is the only pending in-
dependent claim in the ’211 application. Claim 1 broadly
covers optical components having an array of self-
resonant bodies with a selected optical response:
1. An optical component having a selected optical
response to excitation energy at a selected fre-
quency, comprising:
an array of self resonant bodies, each of
the self resonant bodies having a fre-
quency line center substantially at the se-
lected frequency, the self resonant bodies
being arranged in a pattern corresponding
to the selected optical response.
2011-1401 J.A. 58 (’211 application, claim 1).
The ’227 application includes claims covering a
method of controlling electromagnetic energy, and struc-
tures for interacting with electromagnetic energy. Claims
1 and 15 are representative:
1. A method of controlling electromagnetic en-
ergy, comprising:
positioning a first set of self resonant bod-
ies in a first intercept location, the first set

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IN RE HILLIS 4
of self resonant bodies having a first re-
sponse characteristic relative to an inter-
action location;
positioning a second set of self resonant
bodies in a second intercept location, the
second set of self resonant bodies having a
second response characteristic relative to
the interaction location;
positioning a third set of self resonant bod-
ies in a third intercept location, the third
set of self resonant bodies having a third
response characteristic relative to the in-
teraction location; and
interacting with the electromagnetic en-
ergy at the interaction location.
15. A structure for interacting with electromag-
netic energy, comprising:
a first layer including an arrangement of
resonators each having a first principal
resonant frequency, the first layer having
a first response to the electromagnetic en-
ergy;
a second layer including an arrangement
of resonators each having a second princi-
pal resonant frequency different from the
first principal resonant frequency, the sec-
ond layer having a second response to the
electromagnetic energy; and
a third layer including an arrangement of
resonators each having a third principal
resonant frequency different from the first
principal resonant frequency and the sec-
ond principal resonant frequency, the

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IN RE HILLIS 5
third layer having a third response to the
electromagnetic energy;
wherein the first, second and third layers
are relatively positioned to define a com-
posite response to the electromagnetic en-
ergy that is a function of the first, second
and third responses.
2011-1402 J.A. 59, 61 (’227 application, claims 1 and 15).
The examiner rejected claim 1 of the ’211 application
as anticipated by both U.S. Patent Application Publica-
tion SN 2006/0222288 (“Spoonhower”) and U.S. Patent
No. 6,734,465 (“Tasker”), and rejected all pending claims
of both applications for lack of enablement. In its decision
on the ’211 application, the Board did not sustain the
examiner’s anticipation rejections under 35 U.S.C. § 102.
The Board, however, affirmed the examiner’s rejection of
all pending claims for lack of enablement under section
112. Like the examiner, the Board found that the ’211
specification “contains a ‘well-written summary of college
level optical physics courses and includes many of the
basic equations and physical parameters taught in any
electrical or optical engineering curriculum,’” but ulti-
mately failed to make “a connection between the dis-
cussed theory and the structure recited in the pending
claims that would enable the person having ordinary skill
in the art to practice the invention.” ’211 Board Decision,
2010 WL 3827101, at *3. The Board affirmed the exam-
iner’s enablement rejection of all claims in the ’227 appli-
cation on the same grounds. See ’227 Board Decision,
2011 WL 3827097, at *3. Hillis subsequently requested
that the Board rehear both decisions and filed new evi-
dence with both requests. The Board denied the respec-
tive requests after refusing in each case to consider newly
submitted evidence that was not previously cited in

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IN RE HILLIS 6
Hillis’s respective appeal briefs or reply briefs to the
Board. See Ex parte Hillis, No. 2010-000974, 2011 WL
585809 (B.P.A.I. Feb. 16, 2011) (citing 37 C.F.R. § 41.52);
Ex parte Hillis, No. 2009-014972, 2011 WL 585797
(B.P.A.I. Feb. 17, 2011) (same). Hillis timely appealed
both decisions. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
D ISCUSSION
Enablement is a question of law, which we review de
novo. In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000). In
appeals from the Board, questions of fact underlying the
ultimate question of enablement are reviewed for sub-
stantial evidence. Id.
The enablement test determines “whether one rea-
sonably skilled in the art could make or use the invention
from the disclosures in the patent [application] coupled
with information known in the art without undue experi-
mentation.” United States v. Telectronics, Inc., 857 F.2d
778, 785 (Fed. Cir. 1988). The ’211 and ’227 applications,
however, merely describe the well-known science of
optical physics and suggest potential applications. The
disclosure is not enough to enable the alleged inventions
that are claimed in the respective applications. Such a
disclosure does not describe how to create the optical
component of the ’211 application, create the structure of
the ’227 application, or perform the method of the ’227
application.
Hillis argues that, under In re Marzocchi, 439 F.2d
220, 223 (CCPA 1971), the specifications presumptively
comply with section 112’s enablement requirement, and
that the examiner and the Board did not accept the truth
or accuracy of the respective disclosures without stating
sufficient reasons for doing so. Hillis’s reliance on Mar-
zocchi, however, is misplaced. Marzocchi states that a

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IN RE HILLIS 7
“disclosure which contains a teaching of the manner and
process of making and using the invention in terms which
correspond in scope to those used in describing and defin-
ing the subject matter sought to be patented must be
taken as in compliance with the enabling requirement of
the first paragraph of § 112 unless there is reason to
doubt the objective truth of the statements contained
therein.” Id. (emphasis omitted); see also Manual of
Patent Examination Procedure (“MPEP”) § 2164.04 (8th
ed., rev. 6, Sept. 2007). Here, the enablement rejections
are based upon the lack of information “teaching . . . the
manner and process of making and using the invention,”
not a determination on the truthfulness of information
that was disclosed. The rule of Marzocchi is simply
irrelevant to the examiner’s and the Board’s enablement
rejections.
With respect to the ’211 application, Hillis argues that
Spoonhower and Tasker teach “self resonant bodies being
arranged in a pattern corresponding to the selected opti-
cal response” as recited in claim 1. Thus, Hillis argues,
when combined with the teachings of the prior art, the
’211 application enables the entirety of claim 1. “Al-
though 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). In other
words, “[i]t is the specification, not the knowledge of one
skilled in the art, that must supply the novel aspects of an
invention in order to constitute adequate enablement.”
Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361,
1366 (Fed. Cir. 1997). Here, even considering the knowl-
edge of a skilled artisan, the specification does not enable.
Hillis further contends that the examiner and the
Board erred in failing to evaluate the Wands factors. See
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (listing

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IN RE HILLIS 8
factors for determining whether a disclosure satisfies the
enablement requirement); see also MPEP § 2164.01(a).
We disagree. As the MPEP states, “it is not necessary to
discuss each [Wands] factor in the . . . enablement rejec-
tion.” MPEP § 2164.04. Rather, the rejection “should
focus on those factors, reasons, and evidence that lead [to]
the [conclusion] that the specification fails to teach how to
make and use the claimed invention without undue
experimentation.” Id. (emphasis omitted). Although the
examiner did not specifically cite the Wands factors, and
the Board did not expressly identify the factors upon
which it relied, it is evident that both the examiner’s
analysis and the Board’s analysis were based on the
factors most relevant to this case, that is, the lack of
“direction or guidance presented” by the inventor, and the
“absence of working examples” sufficient to connect the
discussed theory to the recited claims. Wands, 858 F.2d
at 737.
Hillis also argues that examiner failed to make a
prima facie case for a lack of enablement. We have re-
cently explained that the PTO meets its initial burden of
setting forth a prima facie case by “adequately ex-
plain[ing] the shortcomings it perceives so that the appli-
cant is properly notified and able to respond.” In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in origi-
nal) (internal quotation marks omitted). For an enable-
ment rejection, the PTO must “set[] forth a reasonable
explanation as to why it believes that the scope of protec-
tion provided by that claim is not adequately enabled by
the description of the invention.” In re Wright, 999 F.2d
1557, 1561-62 (Fed. Cir. 1993); see also MPEP § 2164.04.
Here, the examiner’s rejections plainly indicated that
more information on how to implement the invention was
needed in order to close the gap between the “summary of
college level optical physics” and the “broad reference to

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IN RE HILLIS 9
some possible intended uses.” 2011-1401 J.A. 196-97;
2011-1402 J.A. 107-08. We find that the examiner rea-
sonably explained the shortcomings of the ’211 and ’227
applications in a manner that was sufficient to allow
Hillis to respond.
Finally, Hillis argues that the Board erred in not con-
sidering Hillis’s additional evidence submitted for the
first time in Hillis’s respective requests for reconsidera-
tion. Unless a Board decision includes a new ground of
rejection, an appellant may not provide additional evi-
dence in a request for rehearing. 37 C.F.R. § 41.52(a)(1).
Hillis’s claims that the Board’s decisions presented new
grounds of rejections are without merit. Accordingly, we
find no error in the Board’s refusal to consider Hillis’s
evidence presented for the first time in Hillis’s requests
for reconsideration.
Hillis’s remaining arguments are similarly without
merit.

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