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NOTE: This disposition is nonprecedential.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
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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
2 IN RE: STARRETT
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
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IN RE: STARRETT 3
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
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4 IN RE: STARRETT
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
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IN RE: STARRETT 5
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
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6 IN RE: STARRETT
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.
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IN RE: STARRETT 7
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.
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8 IN RE: STARRETT
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
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IN RE: STARRETT 9
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
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10 IN RE: STARRETT
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
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IN RE: STARRETT 11
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
