Ex Parte Fish et al

Patent Trial and Appeal Board

Mar 31, 2016

12097793 (P.T.A.B. Mar. 31, 2016)

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