Ex Parte Gijsbers et al

Patent Trials and Appeals BoardMar 28, 2019

13984313 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/984,313 03/11/2014 Gerardus Henricus Maria Gijsbers 24737 7590 04/01/2019 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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. 2011P02222WOUS 4808 EXAMINER ALTER MORSCHAUSER, ALYSSA MARGO ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): patti. demichele@Philips.com marianne.fox@philips.com katelyn.mulroy@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERARDUS HENRICUS MARIA GIJSBERS, HENDRIKUS BERNARDUS VAN DEN BRINK, SANDER SLEGT, and NIELS NIJHOF Appeal2018-001715 Application 13/984,313 Technology Center 3700 Before DANIELS. SONG, MICHELLE R. OSINSKI, 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. Â§ 134(a) from the Examiner's decision rejecting claim 12. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Koninklijke Philips N.V. is identified as the real party in interest. Appeal Br. 1. 2 Claims 1-11 and 13-20 are allowed. Final Act. 1. Appeal2018-001715 Application 13/984,313 THE CLAIMED SUBJECT MATTER Claim 12, reproduced below, depends from allowed independent claim 1. 12. The system of claim 1, wherein the plurality of surface electrodes comprises at least one hundred electrodes, and wherein the electrical activity map determination unit is configured to receive the electrical signals from the at least one hundred electrodes. REJECTION Claim 12 is rejected under 35 U.S.C. Â§ 112, first paragraph for failure to comply with the written description requirement. DISCUSSION The Examiner determines that the limitation in claim 12 of "at least one hundred electrodes" fails to comply with the written description requirement. Final Act. 3. The Examiner explains that Appellants' Specification "provid[ es] support for 'several hundreds of surface electrodes ... which is considered to be three (i.e. several) hundred or more." Id. According to the Examiner, "the limitation in claim 12 for 'at least one hundred' introduces the range of one to two hundred electrodes, which was not previously included in the specification" and "does not reasonably provide for support for 'at least one hundred."' Id. Appellants contend that the Specification, as filed, repeatedly discloses a system with a plurality of surface electrodes which, according to Appellants "includes 10, or 100, or 200, or 300, or more surface electrodes." Appeal Br. 5---6 ( citing Spec. passim). Appellants also note that the Specification discloses an embodiment in Figure 2 with nine surface electrodes and also indicates that "preferentially" the system comprises 2 Appeal2018-001715 Application 13/984,313 "several hundreds of the surface electrodes." Id. at 6-7 (citing Spec. 6: 18- 19, Fig. 2). Based on this, Appellants assert that one of ordinary skill in the art would understand that the Specification describes a system having a plurality of surface electrodes ranging from as few as 2 to as many as 300 or more surface electrodes. Id. at 6. For the following reasons, we do not sustain the rejection of claim 12. In order to comply with the written description requirement, the Specification "must describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed." LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). The Federal Circuit has explained that: The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language. . . . The content of the drawings may also be considered in determining compliance with the written description requirement. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted). Claim 1 as originally filed recites "a plurality of surface electrodes." Claim 1 as filed Aug. 8, 2013. Appellants' Specification refers to "a plurality of surface electrodes." See e.g. Spec. 6:5. Appellants' Figure 2 as filed discloses an exemplary embodiment with nine surface electrodes. Id. at Fig. 2. The Specification also discloses that "[t]he vest 8 preferentially comprises several hundreds of the surface electrodes." Id. at 6: 18. One of ordinary skill in the art would understand from this disclosure that the plurality of surface electrodes could range from as few as two surface 3 Appeal2018-001715 Application 13/984,313 electrodes to the preferred "several hundreds of surface electrodes." The fact that the Specification does not literally state the plurality of surface electrodes is "at least one hundred" is of no moment. Rather, one of ordinary skill in the art would understand that Appellants had possession of the claimed subject matter of at least 100 surface electrodes because that range is within the range disclosed in the Specification. Therefore, we do not sustain the rejection of claim 12 for failure to comply with the written description requirement of 35 U.S.C. Â§ 112, first paragraph. DECISION The Examiner's decision rejecting claim 12 is reversed. REVERSED 4