Ex Parte Ando

Patent Trial and Appeal Board

Oct 31, 2016

12665899 (P.T.A.B. Oct. 31, 2016)

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.
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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.
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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