Ex Parte AndoDownload PDFPatent Trial and Appeal BoardOct 31, 201612665899 (P.T.A.B. Oct. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/665,899 12/21/2009 22511 7590 11/02/2016 OSHA LIANG LLP, TWO HOUSTON CENTER 909 FANNIN, SUITE 3500 HOUSTON, TX 77010 FIRST NAMED INVENTOR Masahiko Ando UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 05426/021001 4864 EXAMINER BUGG, GEORGE A ART UNIT PAPER NUMBER 2682 NOTIFICATION DATE DELIVERY MODE 11/02/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docketing@oshaliang.com hathaway@oshaliang.com escobedo@oshaliang.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAHIKO ANDO Appeal2016-000013 Application 12/665,899 Technology Center 2600 Before ELENI MANTIS MERCADER, JOHN P. PINKERTON, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 21-34. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 According to Appellant, the real party in interest is The Nippon Signal Co., Ltd. Br. 4. Appeal2016-000013 Application 12/665,899 INVENTION Appellant's invention relates to a reader/writer and article sorting system. Abstract. Claim 21 is illustrative and reads as follows, with disputed limitations italicized: 21. A system which reads and writes information from and onto a non-contact information recording medium using an electric wave, the system comprising: a reader/writer comprising: an antenna configured to radiate the electric wave and receive a reflected wave modulated by said non-contact information recording medium; a transmitter configured to transmit the electric wave to the non-contact information recording medium via the antenna; a demodulator configured to demodulate the reflected wave obtained by said non-contact information recording medium modulating a part of the electric wave; a calculator configured to calculate a difference in phases between the electric wave and the reflected wave from the non-contact information recording medium; and a measuring unit configured to determine that the non- contact information recording medium passes a position closest to the antenna, on the basis of the difference in phases between the electric wave radiated from the antenna and the reflected wave from the non-contact information recording medium calculated by the calculator. REJECTION Claims 21-34 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2 Appeal2016-000013 Application 12/665,899 ANALYSIS In rejecting claims 21-34, the Examiner found that the recited "calculator" and "measuring unit" limitations, shown in italics above, are not described in Appellant's specification in such a way as to reasonably convey to an artisan of ordinary skill that the inventor, at the time the application was filed, had possession of the claimed invention. Final Act. 27. With regard to claim 21, Appellant contends the Examiner erred because at least paragraphs 12, 16, 19, 24, and 25 of the originally-filed Specification provide sufficient support for the disputed subject matter. Br. 12-14. Appellant explains that one of ordinary skill in the art would have appreciated the relationship between phase and time with respect to electromagnetic waves because an electromagnetic wave phase is mathematically related to time. Id. at 13-14. Appellant has persuaded us of Examiner error. The Examiner has not provided sufficient explanation or reasoning why the cited portions of the Specification fail to support the disputed subject matter. See Ans. 2-5. In particular, the Examiner has not sufficiently rebutted Appellant's contention that the description of "obtaining a difference in the delay time from 8r," where 8r is a phase obtained by calculator 15, is not sufficient to reasonably convey to an artisan of ordinary skill at the time of the invention, that the inventor did not have possession of the claimed invention. See id.; Spec. 15:16-16:4. For these reasons, on the record before us, we are persuaded that the Examiner erred, and we reverse the rejection under 35 U.S.C. § 112, first paragraph, of independent claim 21, and claims 22-3 3, dependent thereon. 3 Appeal2016-000013 Application 12/665,899 We also reverse the rejection of independent claim 34, which recites substantially similar limitations as independent claim 21. DECISION We reverse the decision of the Examiner rejecting claims 21-34. REVERSED 4 Copy with citationCopy as parenthetical citation