Federal Circuit disposition — 2010-1019

United States Court of Appeals
for the Federal Circuit
__________________________
IN RE EDWARD K. Y. JUNG and LOWELL L.
WOOD, JR.
__________________________
2010-1019
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences in
application Serial No. 10/770,072.
__________________________
Decided: March 28, 2011
__________________________
ROBERT G. STERNE , Sterne, Kessler, Goldstein & Fox,
PLLC, of Washington, DC, argued for appellants. With
him on the brief were JON E. WRIGHT and B YRON L.
PICKARD . Of counsel on the brief were CLARENCE T.
TEGREENE , S. CRAIG ROCHESTER, and R OY P. D IAZ , Intel-
lectual Ventures, Management, LLC, of Bellevue, Wash-
ington.
NATHAN K. K ELLEY, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Arlington,
Virginia, argued for the Director of the United States
Patent and Trademark Office. With him on the brief were

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IN RE JUNG 2
RAYMOND T. CHEN , Solicitor, and ROBERT J. M CMANUS ,
Associate Solicitor.
D ALE C. BARR, Constellation Law Group, PLLC, of
Tracyton, Washington, for amicus curiae Constellation
Law Group, PLLC.
M ARGARET M. ANDERSON , of Austin, Texas, for amicI
Curiae Margaret Anderson and Electronic Inventory
Solutions, Inc.
BRAD D. PEDERSEN , Patterson, Thuente, Skaar &
Christensen, P.A., of Minneapolis, Minnesota, for amicus
Curiae Minnesota Intellectual Property Law Association.
__________________________
Before GAJARSA, LINN , and DYK , Circuit Judges.
LINN , Circuit Judge.
Edward K.Y. Jung and Lowell L. Wood, Jr. (collec-
tively, “Jung”) appeal the decision of the Board of Patent
Appeals and Interferences (“Board”) sustaining the inva-
lidity of all but five claims of U.S. Patent Application No.
10/770,072 (“’072 application”) for anticipation or obvi-
ousness. Ex parte Jung, No. 2008-3711 (B.P.A.I. Nov. 21,
2008) (“Decision”), reconsideration denied, Ex parte Jung,
No. 2008-3711 (B.P.A.I. July 7, 2009) (“Reconsideration”).
Because the examiner properly established a prima facie
case of invalidity, and because the Board did not act
improperly as a “super-examiner,” this court affirms.
BACKGROUND
On January 20, 2004, Jung filed the ’072 application
directed to a photo-detector array system for transforming
light inputs into electrical signals. The relevant claims
are as follows:

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IN RE JUNG 3
1. A system comprising:
a photo-detector array having a
first charge well;
a first charge pump operably cou-
pled with the first charge well; and
a first charge counter operably
coupled with said first charge
pump.
4. The system of Claim 1, further com-
prising:
a first well-charge-level controller
operably coupled with said first
charge pump.
5. The system of Claim 4, wherein said
first well-charge-level controller operably
coupled with said first charge pump fur-
ther comprises:
a processor configured to control
said first charge pump utilizing at
least one of a proportional, inte-
gral, and derivative control.

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IN RE JUNG 4
’072 application at 12. The ’072 application also included
Figure 1, showing a photo-detector array, 100, and its
components:
Id. Fig. 1 (graphic emphasis added). The dispute centers
around the well-charge-level controller, designated 108
and circled in Figure 1 above. The application describes
the functioning of the well-charge-level controller as
follows:
Well-charge-level controller 108 typically
gains knowledge of the detected accumu-
lated charge level of charge well 102 from
an output of well-charge-level detector
114. Well-charge-level detector 114 rela-
tively continuously senses the level of
charge in charge well 102 and generates
the output indicative of that charge in a

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IN RE JUNG 5
form appropriate to well-charge-level con-
troller 108.
Id. at 5. Jung noted that “[t]hose having ordinary skill in
the art will appreciate that the specific devices and proc-
esses described herein are intended as merely illustrative
of their more general counterparts.” Id. at 3.
On September 14, 2005, the examiner issued a first
office action, rejecting all claims of the ’072 application for
anticipation or single-reference obviousness over U.S.
Patent No. 6,380,571 (“Kalnitsky”). The examiner’s
rejections as to claims 1, 4, and 5 are set out below:
Regarding Claim 1, Kalnitsky et al. teach
(see Fig. 2, 3, 6) a system comprising a
photo-detector array (array of pixel cells
(200)-see Col. 2, lines 55-61) having a first
charge well (214) (see Col. 5, lines 5-15), a
first charge pump (320) (see Col. 5, lines
28-33, 37-39) operably coupled with the
first charge well, and a first charge
counter (330) (see Col. 6, lines 56-67) op-
erably coupled with said first charge pump
(through controller (340)) (see Col. 5, lines
28-33, 37-39 and Col. 6, lines 38-44, 64-
66). . . .
Regarding Claim 4, Kalnitsky et al. teach
a first well-charge-well [sic] controller
(340) operably coupled with said first
charge pump (see Col. 5, lines 37-39 and
Col. 6, lines 38-44, 64-66).
Regarding Claim 5, Kalnitsky et al. teach
said first well-charge-level controller op-
erably coupled with said first charge pump
further comprises a processor (340) (since
the controller 340 performs “determina-

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IN RE JUNG 6
tion” and/or “look-up”, it is a processor- see
Col. 6, lines 38-40 and Col. 7, lines 8-9)
configured to control said first charge
pump utilizing at least one of a propor-
tional, integral, and derivative control
(charge pump control is proportional to
the read out current- see Col. 6, lines 56-
66).
Office Action of Sept. 14, 2005, at 2-3 (“Initial Office
Action”).
Jung responded on January 17, 2006, amending
claims 1 and 5 to incorporate the first well-charge-level
controller limitation from original claim 4 and cancelling
original claim 4. In his remarks, Jung block-cited Kalnit-
sky and concluded that the “‘well-charge-level control-
ler’ recitations of [amended] Claim 1 are different from
the ‘controller 340’ recitations of [Kalnitsky], and thus
controller 340 of [Kalnitsky] does not match the ‘well-
charge-level controller’ of herein-amended Independ-
ent Claim 1.” Reply to Office Action of Sept. 14, 2005, at
11-13 (“Initial Response”) (emphases in original).
The examiner finally rejected all the pending claims.
The examiner noted Jung’s argument that Kalnitsky does
not teach the first well-charge-level controller, but found
it unpersuasive. The examiner again equated the well-
charge-level controller of Claim 1 with Kalnitsky’s “con-
troller 340.” Office Action of Apr. 18, 2006, at 10-12
(“Final Office Action”).
Jung appealed to the Board. For the first time, he ex-
plained that the well-charge-level controller must “more
or less continuously adjust[] the control signal inputs of
active charge source 104 and/or active charge sink 112,”
as disclosed “in one exemplary embodiment.” He argued
that Kalnitsky disclosed only a reset controller, which did

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IN RE JUNG 7
not “more or less continuously adjust the control signal
inputs,” and therefore did not anticipate.
The Board rejected Jung’s argument, noting that
“[t]here is no dispute that Kalnitsky describes a system
including a reset controller[,] . . . the question is whether
the claim language encompasses those structures.”
Decision at 6. Kalnitsky’s reset controller reads the
amount of light in the charge well by directing the oscilla-
tor “to output a series of positive electrical pulses to lower
the potential on the p-well 214 (charge well), monitor[]
the potential level, and stop[] the pulses when the poten-
tial reaches the level required” for a new charge to build
in the well from the light input. Id. at 8. In other words,
the process by which the amount of charge in the charge
well is read also resets the charge. The Board, consistent
with the examiner, construed the element “well-charge-
level controller” as “any component that controls the
charge level of a well,” and noted that Jung “had the
opportunity to amend the claims to achieve more precise
claim coverage, i.e., to limit the claim to the ‘exemplary
process’ disclosed in the Specification, but did not do so.”
Id. at 9. Because the specification explicitly noted that
the examples were merely exemplary and were made only
to show how the invention “typically” worked, the Board
determined that the claim language could not be limited
to those embodiments. Therefore, the Board concluded
that Kalnitsky’s reset controller met the claim language
and thus anticipated claim 1.
The Board, however, reversed the examiner’s rejection
of claim 5, which included the further limitation that the
well-charge-level controller include “a processor config-
ured to control said first charge pump utilizing at least
one of a proportional, integral, or derivative control,”
because “[t]he examiner has not sufficiently explained
how [Kalnitsky’s disclosure] amounts to proportional
control, as that term is used in the control art.” Id. at 13.

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IN RE JUNG 8
Jung filed a request for rehearing on November 21,
2008, asserting that the Board erred in failing to address
whether the examiner had set forth a prima facie rejec-
tion.
The Board rejected Jung’s argument, noting that the
prima facie case requirement is merely a procedural
mechanism of allocating the burden at different stages of
the prosecution, and that the ultimate disposition on
anticipation was properly addressed by the Board’s initial
decision. Jung timely appealed to this court, which has
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
Because Jung’s arguments on appeal are directed only
to the “well-charge-level controller” limitation of inde-
pendent claim 1 (as amended), this court’s discussion is
limited to that issue.
Jung argues on appeal that (1) the examiner failed to
make a prima facie case of anticipation, and (2) the Board
acted as a “super-examiner” by performing independent
fact-finding and applying an improperly deferential
standard of review to the examiner’s rejections. For the
reasons set forth below, this court rejects both arguments
and affirms the Board’s decision, holding claims 1-3, 7-11,
13-21, and 24-29 invalid for anticipation. This court does
not address the Board’s rejection of claim 12 for obvious-
ness because Jung has not presented that issue for ap-
peal.
I. Examiner’s Prima Facie Case
Jung frames this appeal much as he framed the
appeal to the Board, as a challenge only to the existence
of a prima facie case of invalidity, as distinct from the
ultimate conclusion of invalidity. Jung admitted at oral
argument that if this court finds that the examiner

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IN RE JUNG 9
properly made out a prima facie case, then the decision of
the Board should be affirmed. Oral Arg. at 3:02-3:25,
available at http://oralarguments.cafc.uscourts.gov/Audio
mp3/2010-1019_1142010.MP3. In other words, Jung does
not challenge the substance of the prima facie rejection,
but only the procedure.
As this court has repeatedly noted, “the prima facie
case is merely a procedural device that enables an appro-
priate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The
Patent and Trademark Office (“PTO”) satisfies its initial
burden of production by “adequately explain[ing] the
shortcomings it perceives so that the applicant is properly
notified and able to respond.” Hyatt, 492 F.3d at 1370. In
other words, the PTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies
35 U.S.C. § 132, in “notify[ing] the applicant . . . [by]
stating the reasons for [its] rejection, or objection or
requirement, together with such information and refer-
ences as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” 35 U.S.C.
§ 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recog-
nizing and seeking to counter the grounds for rejection.”
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
Jung appears to argue that the prima facie case re-
quirement is procedurally flawed unless the examiner
provides an
[o]n-the-record showing of a reasonable,
broadest reasonable claim construction
and . . . a record showing that there is evi-
dence bridging the facial differences be-
tween that reasonable claim construction

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IN RE JUNG 10
and the purported anticipatory reference
which here was this Kalnitsky controller.
Oral Arg. at 8:15-8:50.
This court disagrees. Both the initial and final office
actions specifically put Jung on notice that the examiner
considered Jung’s “first well-charge-level controller” to
read on Kalnitsky’s “controller 340,” citing the specific
columns and lines in Kalnitsky that explained the func-
tionality of “controller 340.” See Initial Office Action, at 3
(“Kalnitsky et al. teach said first well-charge-well [sic]
controller (340) operably coupled with said first charge
pump (see Col. 5, lines 37-39 and Col. 6, lines 38-44, 64-
66).”)); Final Office Action, at 10-11 (“Regarding Appli-
cant’s arguments on Claim 1, Applicant argues that
Kalnitsky et al. do not teach the first well-charge-level
controller as recited in the claim language. Examiner
asserts that Kalintsky [sic] et al. teach a well-charge-level
controller 340 as recited in the claim language, as the
controller 340 controls the well-charge-level of the charge
well” (citing relevant parts of Kalnitsky)). The examiner
clearly conveyed his understanding that Jung’s well-
charge-level controller was broad enough to encompass
Kalnitsky’s “controller 340,” and the specific column and
line cites to the prior art reference would have put any
reasonable applicant on notice of the examiner’s rejection.
Indeed, Jung’s understanding of the examiner’s rejec-
tion was manifested by his response to the office actions.
Jung did not respond by asserting that there was no on-
the-record claim construction, or that he did not under-
stand the examiner’s rejection. Instead, Jung first re-
sponded by arguing simply that his “well-charge-level
controller” was “different from the ‘controller 340’ recita-
tions of [Kalnitsky].” Initial Response at 13. Whether
Jung’s claims read on Kalnitsky is precisely the substan-

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IN RE JUNG 11
tive basis upon which the examiner rejected Jung’s
claims.
Moreover, Jung has failed to articulate what gaps, in
fact, exist between his “well-charge-level controller” and
the “controller 340” in Kalnitsky that needed filling by
examiner explanation. It is of course true that every
element of the claim must be present, either explicitly or
inherently, in a single prior art reference for that refer-
ence to anticipate. In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999). But whether there are gaps between the
prior art and the rejected claims is a substantive issue,
and Jung’s assertion that the examiner must “bridg[e] the
facial differences” between the claims and the prior art
begs the substantive question of whether there are facial
differences to be bridged.
Jung contends that establishing a prima facie case re-
quires more than just notice under § 132, and that what-
ever else may be required is part of the examiner’s burden
in rejecting any claim. According to Jung, until that
burden is met by the examiner, the rejection need not be
challenged on the merits by the applicant. This court
disagrees and sees no reason to impose a heightened
burden on examiners beyond the notice requirement of §
132. Jung, without any basis, would have this court
impose additional prima facie procedural requirements
and give applicants the right first to procedurally chal-
lenge and appeal the prima facie procedural showing
before having to substantively respond to the merits of
the rejection. Such a process is both manifestly inefficient
and entirely unnecessary. Indeed, Jung’s arguments as to
why the examiner failed to make out a prima facie rejec-
tion are the same arguments that would be made on the
merits.
There has never been a requirement for an examiner
to make an on-the-record claim construction of every term

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IN RE JUNG 12
in every rejected claim and to explain every possible
difference between the prior art and the claimed invention
in order to make out a prima facie rejection. This court
declines to create such a burdensome and unnecessary
requirement. “[Section 132] does not mandate that in
order to establish prima facie anticipation, the PTO must
explicitly preempt every possible response to a section 102
rejection. Section 132 merely ensures that an applicant
at least be informed of the broad statutory basis for the
rejection of his claims, so that he may determine what the
issues are on which he can or should produce evidence.”
Chester, 906 F.2d at 1578 (internal citation omitted). As
discussed above, all that is required of the office to meet
its prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or refer-
ences relied upon in a sufficiently articulate and informa-
tive manner as to meet the notice requirement of § 132.
As the statute itself instructs, the examiner must “notify
the applicant,” “stating the reasons for such rejection,”
“together with such information and references as may be
useful in judging the propriety of continuing prosecution
of his application.” 35 U.S.C. § 132. Here, the examiner’s
discussion of the theory of invalidity (anticipation), the
prior art basis for the rejection (Kalnitsky), and the
identification of where each limitation of the rejected
claims is shown in the prior art reference by specific
column and line number was more than sufficient to meet
this burden.
II. Board Review of Prima Facie Case
Jung also argues that the Board’s review was im-
proper. After accusing the Board of improperly framing
the issues before it as questions of claim construction and
the reasonableness of the examiner’s decision, Jung
himself frames the issue as whether the “examiner failed
to reasonably construe the claims and failed to adduce
any evidence or syllogistic argument in support of Kalnit-

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IN RE JUNG 13
sky’s alleged teachings, as opposed to Kalnitsky’s bare
disclosure.” Br. of Jung, at 33-34. This court is at a loss
to identify the distinction between these two framings of
the issue. What a reference “teaches” is reflected in its
“disclosure,” and, as discussed above, the extent to which
the examiner fails to provide “syllogistic argument” to fill
the gaps between the prior art and the rejected claims is
dependent upon a substantive showing that such gaps
exist in the first place. Moreover, whether the examiner
“reasonably construe[d] the claims”—which this court
agrees is the true issue in this case—is without doubt a
substantive issue, which the Board properly addressed in
its opinion.
In no way do the Board’s actions here put applicants
in a position in which they are “required to speculate as to
the full nature and scope of the rejection and put on a full
substantive rebuttal even if the full nature and scope of
the rejection remains unformed and unclear.” Br. of Jung,
at 38-39. Such concerns only arise where the examiner
has failed to meet the notice requirement of § 132. Here,
as discussed above, Jung was on notice of the full basis for
the examiner’s rejection.
Jung does not and could not argue that the Board’s
decision constituted a new ground of rejection such that
further prosecution was required. Instead, Jung argues
that the Board assumed the position of “super-examiner”
in making, among all its findings of facts, the following
five findings relevant to the “well-charge-level controller”
limitation. These findings of fact are reproduced verba-
tim below:
4. In describing the “well-charge-level
controller,” the Specification describes ex-
ample processes and implementations and
how the controller “typically” works (see,
e.g., Spec. 5:6-19).

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IN RE JUNG 14
5. The Specification does not precisely or
deliberately define or limit the identity of
a “well-charge-level controller.” (Spec. in
its entirety.)
6. The controller of Kalnitsky controls the
level of charge within a well during a two
step process including an image integra-
tion step (where light energy is collected
and converted to an electrical charge) and
a read out/reset step (where the electrical
charge is read from the cell and the cell is
simultaneously reset for the next integra-
tion cycle (Kalnitsky, col. 4, ll. 40-45).
7. During the read out/reset step, the con-
troller 340 directs oscillator 320 to output
a series of positive electrical pulses to
lower the potential on the p-well 213
(charge well), monitors the potential level,
and stops the pulses when the potential
reaches the level required for the integra-
tion step (Kalnitsky, col. 5, ll.22-39; col. 6,
ll. 38-40; col. 6, ll. 64-66).
8. By directing the output of charge
pulses, monitoring potential level, and
stopping the pulses at a predetermined
point, Kalnitsky’s controller 340 controls
the charge level within a charge well (p-
well 214) (Kalnitsky, col. 5, ll. 22-39; col. 6,
ll. 38-40; col. 6, ll.64-66).
Decision at 8-9. Two things are immediately apparent
from an examination of these findings of fact. First, they
are simple factual assertions drawn from either the
Kalnitsky reference or the application itself. Second,
those assertions sourced from Kalnitsky are substantially

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IN RE JUNG 15
the same, down to the line and column number, as the
examiner’s objections. The Board merely made explicit in
its “findings of fact” the bases for a rejection that would
have been apparent to one with even a cursory command
of prosecution practice from the examiner’s office actions.
To assert that the Board’s thoroughness in responding to
his explanation put it in the position of a “super-
examiner” would limit the Board to verbatim repetition of
the examiner’s office actions, which would ill-serve the
Board’s purpose as a reviewing body.
It is well-established that the Board is free to affirm
an examiner’s rejection so long as “appellants have had a
fair opportunity to react to the thrust of the rejection.” In
re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). See also
In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (“In
calculating the overlapping values, the Board found facts
not found by the examiner regarding the differences
between the prior art and the claimed invention, which in
fairness required an opportunity for response.”). Before
the examiner, Jung merely argued that the claims dif-
fered from Kalnitsky, and chose not to proffer a serious
explanation of this difference. The examiner disagreed,
and rejected the claims, equating Kalnitsky’s controller
and the well-charge-level controller in the claims. It was
not until he arrived at the Board that Jung explained the
difference more thoroughly, implying that his claims
should be read as limited to a preferred embodiment
wherein the controller “more or less continuously adjust[s]
the control signal inputs,” in contradistinction to Kalnit-
sky’s reset controller. In response to this argument, the
Board further explained the examiner’s rejection, noting
that nothing in the claims limited the controller to this
embodiment. The Board’s thoroughness in responding to
Jung’s delayed explanation did not change the rejection,
and Jung had the fair opportunity to respond.

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IN RE JUNG 16
Finally, Jung argues that the Board gave improper
deference to the examiner’s rejection by requiring Jung to
“identif[y] a reversible error” by the examiner, which
improperly shifted the burden of proving patentability
onto Jung. Decision at 11. This is a hollow argument,
because, as discussed above, the examiner established a
prima facie case of anticipation and the burden was
properly shifted to Jung to rebut it. Moreover, even
assuming that the examiner had failed to make a prima
facie case, the Board would not have erred in framing the
issue as one of “reversible error.” As recently acknowl-
edged by the Board, it has long been the Board’s practice
to require an applicant to identify the alleged error in the
examiner’s rejections, and the Board’s actions in this case
were entirely consistent with that long-standing practice.
See Ex Parte Frye, Appeal no. 2009-006013, at 9-10
(B.P.A.I. Feb. 26, 2010) (precedential), available at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd0900
6013.pdf (“The panel then reviews the obviousness rejec-
tion for error based upon the issues identified by appel-
lant, and in light of the arguments and evidence produced
thereon.”). See also Oral Arg. at 22:23-24:23, available at
http://oralarguments.cafc.uscourts.gov/Audiomp3/2010-
1019_1142010.MP3 (acknowledging that “reversible
error” means that the applicant must identify to the
Board what the examiner did wrong, but that the Board
reviews the examiner de novo, and the examiner retains
the burden to show invalidity).
CONCLUSION
For the reasons discussed above, this court affirms
the decision of the Board.
AFFIRMED.

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