Ex Parte Fish et alDownload PDFPatent Trial and Appeal BoardMar 31, 201612097793 (P.T.A.B. Mar. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/097,793 06/17/2008 David Andrew Fish 24737 7590 04/04/2016 PHILIPS INTELLECTUAL PROPERTY & STANDARDS P.O. BOX 3001 BRIARCLIFF MANOR, NY 10510 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. 2005P02458WOUS 3403 EXAMINER JENNISON, BRIAN W ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 04/04/2016 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): debbie.henn@philips.com marianne.fox@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID ANDREW FISH, MARC WILHEMUS PONJEE, and MARK THOMAS JOHNSON Appeal2014-001246 Application 12/097,793 Technology Center 3700 Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-5, 7-16, and 18-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Appellants submit that the real party in interest is Koninklijke Philips Electronics, N.V. Appeal Br. 3. Appeal2014-001246 Application 12/097,793 THE CLAIMED SUBJECT MATTER Independent claims 1 and 9, reproduced below, are illustrative of the claimed subject matter. 1. A method of driving an array of temperature controlled cells arranged in columns and rows, each cell comprising a temperature controller comprising a heating element, a switch element, and a temperature sensor, and the array further comprising a data driver circuit, the method comprising: supplying an address signal for controlling a switch element of one of the cells in order to connect the temperature controller of the cell to the data driver circuit; determining an actual temperature using the temperature sensor; supplying a data signal from the data driver circuit to the temperature controller; supplying energy corresponding to the data signal and supplying a control signal to each cell of a row of cells to control the switch element of the cell in order to connect the temperature controller of the cell to the data driver circuit. 9. An array of temperature controlled cells arranged in columns and rows, each row of cells comprising a set of address signal terminals for supplying an address signal to each cell of the row of cells, and each column of cells comprising a set of data signal terminals for supplying a data signal to a cell in the column of cells, the array comprising a data driver circuit and each cell comprising a the temperature controller, which comprises: a heating element coupled to an energy source; a switch element coupled to an address signal terminal for coupling the temperature controller of the cell to a data signal terminal in response to the address signal, the data signal terminal being connected to the data driver circuit; and a temperature sensor for determining an actual temperature. 2 Appeal2014-001246 Application 12/097,793 REJECTIONS 1) Claims 9-11 and 20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 2, 8, 12, and 16 of Application No. 12/293,6022. Final. Act. 3. 2) Claims 1-5, 7-16, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Deacutis (US 5,261,747, iss. Nov. 16, 1993) in view of Tokhtuev (US 6,494,616 Bl, iss. Dec. 17, 2002). Id. at 4. 3) Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Deacutis in view of Tokhtuev and Shao (US 2002/0048765 Al, pub. Apr. 25, 2002). Id. at 6. DISCUSSION New Ground of Rejection Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION against claims 1-5, 7 and 8 under 35 U.S.C. § 112, second paragraph, as being indefinite for failure to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. "As the statutory language of 'particular[ity]' and 'distinct[ness]' indicates, claims are required to be cast in clear - as opposed to ambiguous, vague, indefinite-terms." In re Packard, 751F.3d1307, 1313 (Fed. Cir. 2014 ). "It is the applicants' burden to precisely define the invention, not the PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). 2 Now US 8,683,877, iss. Apr. 1, 2014. 3 Appeal2014-001246 Application 12/097,793 Claim 1 recites, inter alia, the following limitations: supplying an address signal for controlling a switch element of one of the cells in order to connect the temperature controller of the cell to the data driver circuit; supplying a control signal to each cell of a row of cells to control the switch element of the cell in order to connect the temperature controller of the cell to the data driver circuit. These two limitations render claim 1 indefinite because it is not clear which of the address signal or control signal controls the switch element of the cell. We thus conclude that claim 1 and dependent claims 2-5, 7 and 8 are indefinite under 35 U.S.C. § 112, second paragraph. Claims 1-5, 7 and 8 under 35 U.S.C § 103(a) We do not sustain the rejection of claims 1-5, 7, and 8 under 35 U.S.C. § 103(a) as being unpatentable over Deacutis in view of Tokhtuev because this rejection is necessarily based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962). Our decision regarding this rejection is based solely on the indefiniteness of the claims. We emphasize that our decision does not mean the claims are patentable. Rather, we leave the patentability determination of these claims to the Examiner. See MPEP § 1213.02. Claims 9-16, 18, and 19 under 35 U.S.C § 103(a) The Examiner found that Deacutis disclosed all the limitations of claim 9 other than "supplying the address signal to the temperature controller and data driver circuit." Final Act. 4. The Examiner found that 4 Appeal2014-001246 Application 12/097,793 Tokhtuev "discloses an address being selected from the multiplexor array to access a single sensor and sent to a controller." Id. at 5. The Examiner concluded that "[i]t would have been obvious to adapt Deacutis in view of Tokhtuev to provide the data driver and supplying the address signals for accurately controlling and measuring a distribution of a physical parameter at a specific point in [an] array of sensors." Id. Appellants contend that Deacutis does not disclose "an address signal terminal for coupling the temperature controller of the cell to a data signal terminal in response to the address signal as is specifically recited in claim 9." Appeal Br. 8. Appellants argue that Tokhtuev fails to remedy the deficiencies of Deacutis and, thus, the rejection based on the combination of Deacutis and Tokhtuev is improper. Id; see also Reply Br. 6. For the following reasons, we do not agree with the Examiner's position. Deacutis discloses switch elements S 11-S44 (switch element) of a 4x4 array of thermocouples (temperature controller) and thermocouple monitoring assembly 196 (data driver circuit). 3 See Deacutis, col. 6, 11. 14-- 66 and Fig. 8; see also Final Act. 4--5 and Ans. 5. Deacutis further discloses addressing column and row switches 178, 188 for individual selection of a single thermocouple from the array. See Deacutis, col. 6, 11. 33-35. As such, in Deacutis, upon a signal addressing column and row switches 178, 188, a single thermocouple is selected from the 4x4 array and an output is provided to the thermocouple monitoring assembly 196. Id. Hence, in contrast to claim 9, which requires "a switch element ... for coupling the temperature controller of the cell to a data signal terminal in response to the address signal" (emphasis added), Deacutis discloses a switch element for coupling a 3Parentheticals refer to claim terminology. 5 Appeal2014-001246 Application 12/097,793 temperature controller, i.e., individual thermocouple, to the data driver circuit, i.e., assembly 196. The Examiner fails to make any findings with respect to the claimed data signal terminal for supplying a data signal to a cell. Furthermore, the Examiner's use of Tokhtuev likewise fails to disclose a "data signal terminal," as called for by claim 9. See Final Act. 4--5; see also Ans. 6. As such, because the Examiner has not made any finding as to the claimed "data signal terminal," we find that the Examiner's legal conclusion of obviousness is not supported by facts, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that "[t]he legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand."). Therefore, we do not sustain the Examiner's rejection of claims 9-16, 18, and 19 under 35 U.S.C. § 103(a). Claim 20 under 35 U.S.C § 103(a) With respect to the rejection of dependent claim 20, the Examiner's use of Shao's disclosure of "a microarray in the form of a biochip" fails to remedy the deficiencies of Deacutis and Tokhtuev as described supra. Final Act. 6. We therefore do not sustain the rejection of claim 20 under 35 U.S.C. § 103(a). Provisional Double Patenting Rejection As the scope of the claims has changed during prosecution of Application No. 12/293,602, we do not reach the Examiner's provisional rejection of claims 9-11 and 20 on the ground of non-statutory obviousness- 6 Appeal2014-001246 Application 12/097,793 type double patenting. See Ax parte Mancia, 95 U.S.P.Q. 2d 1884 (BPAI 2010) (precedential). DECISION The Examiner's decision rejecting claims 1-5, 7-16, and 18-20 is REVERSED. We enter a new ground of rejection of claims 1-5, 7, and 8 under 35 U.S.C. § 112, second paragraph. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that, "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) further provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THIS DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). REVERSED; 37 C.F.R. § 41.50(b) 7 Appeal2014-001246 Application 12/097,793 8 Copy with citationCopy as parenthetical citation