In Re: Mouttet

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: BLAISE LAURENT MOUTTET,
Appellant
______________________
2017-2077
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/007,174.
______________________
Decided: December 8, 2017
______________________
BLAISE LAURENT MOUTTET, Las Vegas, NV, pro se.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Joseph Matal. Also represented by SARAH E.
CRAVEN, THOMAS W. KRAUSE, MEREDITH HOPE
SCHOENFELD.
______________________
Before MOORE, TARANTO, and STOLL, Circuit Judges.
PER CURIAM.
Blaise Laurent Mouttet filed U.S. Patent Application
No. 12/007,174 on January 8, 2008. As relevant here, the
patent examiner rejected claims 35–40 for indefiniteness
and claim 25 for obviousness. The Patent Trial and
2 IN RE: MOUTTET
Appeal Board of the Patent and Trademark Office (PTO)
upheld those rejections. Mr. Mouttet appeals that deci-
sion. We reverse the Board’s decision regarding claims
35–40 and affirm regarding claim 25.
I
Mr. Mouttet’s ’174 application, entitled “Crossbar
Arithmetic and Summation Processor,” is a continuation-
in-part of U.S. Patent Application No. 11/395,232 filed
April 3, 2006. In 2011, the Board of Patent Appeals and
Interferences—predecessor of the Patent Trial and Appeal
Board—addressed the ’232 application and rejected all
claims as invalid for obviousness under 35 U.S.C. § 103(2006). Ex Parte Blaise Laurent Mouttet, No. 2009-
010041, 2011 WL 1131338, at *4 (B.P.A.I. Mar. 28, 2011).
We affirmed that decision in 2012. In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012).
The ’174 application, at issue in this case, discloses a
processor, composed of a crossbar array, a programming
unit, an input unit, and a post-processing unit, that is
designed to perform arithmetic and summation processes
and output a numerical value. J.A. 22, ¶0009. Claim 25,
added during prosecution, is an illustrative apparatus
claim. It recites:
25. A computing device comprising:
at least one crossbar array including a first set
of N conductive parallel wires (N≥2) forming a set
of columns and a second set of M conductive paral-
lel wires (M≥2) forming a set of rows, and formed
so as to intersect the first set of conductive paral-
lel wires, wherein intersections are formed be-
tween the first and second sets of wires forming
MxN crosspoints wherein each of the crosspoints
is programmable so as to be in a relatively high
conductive state representative of a binary value 1
IN RE: MOUTTET 3
or a relatively low conductive state representative
of a binary value 0;
a programming unit configured to program
the crosspoints to have one of the relatively high
conductive state or the relatively low conductive
state so that at least one column of the crossbar
array stores a bit pattern representative of a pro-
grammed numerical value;
an input unit configured to provide a bit pat-
tern representative of an input numerical value to
the columns of the crossbar array; and
a post-processing unit configured to convert
analog signals output from each of the rows of the
crossbar array into digital output bit patterns and
configured to combine the digital output bit pat-
terns so as to form a resultant bit pattern repre-
sentative of an output numerical value,
wherein the output numerical value is math-
ematically dependent on both the programmed
numerical value and the input numerical value.
J.A. 13.
The patent examiner, in a Final Office Action dated
July 13, 2015, rejected claims 1, 8, 9, 20, 25–31, and 35–
40 for obviousness under 35 U.S.C. § 103 (2006) and also
rejected claims 35–40 for indefiniteness under 35 U.S.C.
§ 112, second paragraph (2006). 1 Ex Parte Blaise Laurent
Mouttet, No. 2016-006117, 2017 WL 1423363, at *1–2
(P.T.A.B. Mar. 31, 2017) (Board Decision). The Board
affirmed the examiner’s obviousness rejection for claim
1 The ’174 application is governed by the versions of
§§ 103 and 112 that were in effect before amendment by
the Leahy-Smith America Invents Act, Pub. L. No. 112-
29, § 3(n)(1), 125 Stat. 284, 293 (2011).
4 IN RE: MOUTTET
25, but reversed the obviousness rejections for all other
claims. Id. at *5. And the Board affirmed the examiner’s
rejection of claims 35–40 for indefiniteness, concluding
that those claims mix statutory classes by claiming an
apparatus and method simultaneously. Id.Mr. Mouttet appeals the Board’s decision under 35
U.S.C. § 141(a). We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
II
A
On appeal, the PTO’s Director concedes that the
Board erred in rejecting claims 35–40 as indefinite and is
not defending that rejection. Appellee’s Br. 1. The Direc-
tor agrees with Mr. Mouttet “that claims 35–40 do not
improperly merge statutory classes,” but are method
claims, “drawn only to practicing the claimed method in a
processor possessing the requisite structure.” Id. at 1, 5.
We agree. Claim 35 recites “[a] method of performing a
division process using the processor of claim 1 comprising”
steps of “programming,” “setting a bit number,” “calculat-
ing,” “comparing,” another “comparing,” and “ending the
division process.” J.A. 15. Claims 36–40 further specify
process steps. J.A. 15–16. We therefore reverse the
Board’s rejection of claims 35–40.
B
In rejecting claim 25 of the ’174 application here, the
Board concluded that it “need not readdress the patenta-
bility of claim 25” in light of the earlier rejection of claim
1 of the ’232 application for obviousness over the Falk,
Das, and Terepin references, the same references as are
at issue here. Board Decision, 2014 WL 4923518, at *4.
In 2012, this court affirmed the rejection of claim 1 of the
’232 application. In re Mouttet, 686 F.3d at 1331–33. We
now affirm the rejection of claim 25 of the ’174 applica-
tion. In the circumstances of this case, Mr. Mouttet is not
IN RE: MOUTTET 5
entitled to the reassessment of obviousness of the same
claimed invention that he seeks.
Claim 25 of the ’174 application is identical to claim 1
of the ’232 application. Compare J.A. 13 (claim 25 of the
’174 application), with In re Mouttet, 686 F.3d at 1325
(quoting claim 1 of the ’232 application). We have before
us no new claim construction, or argument for a new
claim construction, that would change the substance of
the claimed invention at issue. Mr. Mouttet points to
nothing in the specification of the ’174 application that
differs from the specification of the ’232 application and is
material to the obviousness question. He has not pre-
sented any new evidence, whether concerning unexpected
results, objective indicia, or anything else. Rather, he has
presented only new argument, about the teachings and
combinability of Falk, Das, and Terpin, which were essen-
tial elements of the earlier determination of obviousness
by the Board and this court. See In re Mouttet, 686 F.3d
at 1327–30 (describing examiner and Board decisions,
finding elements present and combinable), 1331–34
(analyzing combinability and teaching-away challenges).
And there is no basis for finding that Mr. Mouttet lacked
a full and fair opportunity to make his current conten-
tions about obviousness when contesting obviousness of
the identical claim in the earlier case.
In these circumstances, it is proper to give the earlier
determination of obviousness of claim 1 of the ’232 appli-
cation preclusive effect to require rejection of claim 25 of
the ’174 application. See, e.g., In re Freeman, 30 F.3d
1459, 1465 (Fed. Cir. 1994) (“Where an appellate court
has decided a specific question, the doctrine of issue
preclusion should normally prevent relitigation of that
issue.”); In re Katz, 467 F.2d 939, 942 (C.C.P.A. 1970); In
re Lundberg, 280 F.2d 865, 868–72 (C.C.P.A. 1960); see
also In re Arunachalam, No. 2016-1607, 2017 WL
4387224, at *2–4 (Fed. Cir. Oct. 3, 2017).
6 IN RE: MOUTTET
III
For the foregoing reasons, we reverse the Board’s de-
cision regarding claims 35–40 and affirm the Board’s
decision regarding claim 25.
No costs.
REVERSED IN PART AND AFFIRMED IN PART