Ex Parte Moorman et al

Patent Trial and Appeal Board

Aug 25, 2017

14064853 (P.T.A.B. Aug. 25, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/064,853 10/28/2013 J. Randall Moorman 0087407-000165 3549
143284 7590 08/29/2017
University of Virginia Licensing and Ventures
Group
c/o Buchanan Ingersoll & Rooney PC
Post Office Box 1404
Alexandria, VA 22314
EXAMINER
HOLMES, REX R
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
ADIPDOCl@bipc.com
stacy. shaw @ bipc. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. RANDALL MOORMAN and
DOUGLAS E. LAKE
Appeal 2016-001336
Application 14/064,8531
Technology Center 3700
Before RICHARD J. SMITH, DEVON ZASTROW NEWMAN, and
DAVID COTTA Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method of
detecting abnormal cardiac rhythms and clinical status of a subject. The
Examiner entered final rejections for lack of adequate written description,
nonenablement, and anticipation.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter
NEW GROUNDS OF REJECTION pursuant t to 37 C.F.R. § 41.50(b),
1 Appellants identify the Real Party in Interest as University of Virginia
Patent Foundation, of Charlottesville, Virginia. App. Br. 2.
Appeal 2016-001336
Application 14/064,853
STATEMENT OF THE CASE
Background
The Specification discloses:
A problem of enormous and growing concern in health
care in America is hospitalization for worsening congestive heart
failure (CHF). New medical therapies have prolonged the life of
many with CHF, and implantable cardiac devices - implantable
cardioverter-defibrillators (ICDs) and biventricular pacemakers
- have been especially effective in prolonging life and reducing
symptoms. ICDs are small battery-powered electrical impulse
generators that are implanted in at-risk patients and are
programmed to detect cardiac arrhythmia and correct it by
delivering a jolt of electricity to the heart muscle. Most patients
with single lead ICDs have reduced Left Ventricle (LV) function,
and thus either have or are at risk for CHF syndromes. Other
than heart rate and heart rate variability, and in some cases trans­
thoracic impedance, no measures are currently available to gauge
the degree of CHF over time. There is, however, potentially a
great deal of clinical utility in doing so.
Spec. 14.
Embodiments of the present disclosure detect cardiac rhythms and
clinical status of a patient based on a series of RR intervals or other
physiological signals, which arise from a complex combination of both
deterministic and stochastic physiological processes. Id. 126.
The Claims
Claims 1, 3—16, and 18—21 are on appeal. Claims 1 and 13 are
illustrative and read as follows:
1. A method of detecting abnormal cardiac rhythms and
clinical status of a subject comprising:
obtaining, from a sampling device, physiological data
from the subject comprising one or more series of intervals;
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calculating, by a processor, absolute entropy of the one
or more series of intervals to obtain absolute entropy related
interval data; and
generating a diagnostic output based on the absolute
entropy related interval data.
App. Br. (Claims Appendix) 16 (emphasis added).
13. A method of detecting abnormal cardiac rhythms of a
subject comprising:
obtaining, from a sampling device, physiological data
from the subject;
separating the physiological data into intervals;
grouping the intervals into one or more sets of segments
of intervals;
determining, by a processor, numbers of matching
intervals within each segment; and
generating a diagnostic output based on the numbers of
matching intervals.
Id. at 17 (emphasis added).
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The Issues
The following rejections are before us to review:
Claims 1 and 3—12 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§112 (pre-AIA), first paragraph, as failing to comply with the enablement
requirement.
Claims 1 and 3—12 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
Claims 1, 3, 5—7, 10, 12, 13, 15, 16, and 18—20 are rejected under 35
U.S.C. § 102(e) as anticipated by Viertio-Oja.2
Claims 1, 3, 5—7, 9-16, and 18—21 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Igel.3
ENABLEMENT
The Examiner rejects claims 1 and 3—12 as failing to enable
“calculating by a processor, absolute entropy of the one or more series of
intervals to obtain absolute entropy related interval data” and “generating a
diagnostic output based on the absolute entropy related interval data” as
recited in claim 1. Ans. 2. The Examiner finds that “the specification is
silent as to calculating absolute entropy from intervals and/or generating
diagnostic output from absolute entropy.” Id. The Examiner finds that, even
though paragraph 30 of the Specification and claims 16 and 17 recite the
phrase “absolute entropy,” the Specification fails to teach “calculating by a
2 US 2007/0179399, published Aug. 2, 2007 (“Viertio-Oja”).
3 US 6,192,273 Bl, issued Feb. 20, 2001 (“Igel”).
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processor, absolute entropy of the one or more series of intervals to obtain
absolute entropy related interval data” and “generating a diagnostic output
based on the absolute entropy related data.” Id. at 2—3. The Examiner
concludes that the Specification fails to enable the ordinarily skilled artisan
to make or use the claimed invention. Id. at 3.
The issue before us is whether a preponderance of the evidence
supports the Examiner’s conclusion that the Specification fails to enable
“calculating[,] by a processor, absolute entropy of the one or more series of
intervals to obtain absolute entropy related interval data” and “generating a
diagnostic output based on the absolute entropy related data.” We select
claim 1 as representative of the claims subject to this ground of rejection.
Appellants argue “the Examiner has not established that one skilled in
the art would be unable to make and/or use the claimed invention with no
more than routine experimentation.” App. Br. 6. Appellants argue the
Examiner’s rejection lacks “evidence or technical reasoning substantiating”
the Examiner’s finding that the disclosure is not enabling, such as a
“properly reasoned or supported statement explaining any alleged failure to
comply with the enablement requirement of 35 U.S.C. § 112.” Id. at 7. In
particular, Appellants argue the Examiner failed to analyze whether the
experimentation needed to practice the invention, was undue or
unreasonable at the time of the invention pursuant to In re Wands, 858 F.2d
731 (Fed. Cir. 1988). Id. at 8. Appellants further argue “the specification
discloses providing histograms as output with predictable appearance
depending on the entropy of the cardiac rhythm (see paragraph [0041], page
16)” and cite further support in the priority patent, U.S. Pat. No. 8,588,908,
as discussed above. Id. at 9.
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In response, the Examiner reiterates that the disclosure related to
“absolute entropy” does not define it or provide details regarding how to
calculate the value. Ans. 7. The Examiner states that although paragraph 41
cited by Appellants “discloses creating a histogram based on entropy[, the
Specification] fails to describe doing it based on Absolute Entropy [and]
even if the Entropy as described in Paragraph 41 was based on Absolute
Entropy, Paragraph 41 fails to describe how to calculate Absolute Entropy in
order to create the histogram.” Ans. 8.
The Examiner further states that:
There are two well-known types of Entropy,
thermodynamic entropy (measure of number of specific ways a
thermodynamic system may be arranged) and
mathematical/statistical entropy (amount of uncertainty in a
distribution). Absolute Entropy (in a mathematical/statistical
sense) is not a common term in the art and therefore the Appellee
[Examiner] is unclear what is actually considered absolute
entropy. It is noted that the term “Absolute Entropy” is a
common term in thermodynamic entropy (increase in entropy
from Absolute Zero to temperature in question), however the
claims do not make sense if you use the known thermodynamic
definition for absolute entropy. Therefore, one can only assume
that the Appell[a]nt is using a mathematical/statistical definition
of Entropy.
Id. The Examiner concludes that claimed invention was not enabled because
“Absolute Entropy is not defined in the specification, is not defined in the
art, is not defined in common or scientific dictionaries and further returned
zero results (for mathematical/statistical entropy) in a [G]oogle search,” and
the claimed invention could not be practiced without understanding the term.
Id. The Examiner analyzes the Wands factors, and concludes that:
based on the wands factors above, the specification is not
enabling with respect to the claims at issue as there is no
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direction or guidance provided in the disclosure, the prior art
fails to provide defining terms, the methods needed to perform
the claimed invention are unknown and further would require
undue experimentation to one having ordinary skill in the art.
Id. at 9—10.
In reply, Appellants cite U.S. Pub. No. 2010/0056940 Al4 as
evidence of knowledge in the art at the time of the invention and argue the
‘940 application constitutes objective evidence that the concept of Absolute
Entropy in cardiac rhythm intervals and calculation of Absolute Entropy
measurements would have been understood by a skilled artisan at the time of
the invention. Reply Br. 1—2. Appellants also argue the submission of the
‘940 application as “objective evidence” is timely based on the Examiner’s
“new arguments” raised for the first time in the Answer. Id. at 2.
We are not persuaded by Appellants’ arguments. “[T]o be enabling,
the specification of a patent must teach those skilled in the art how to make
and use the lull scope of the claimed invention without ‘undue
experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993).
Further,
[pjatent protection is granted in return for an enabling disclosure
of an invention, not for vague intimations of general ideas that
may or may not be workable. See Brenner v. Manson, 383 U.S.
519, 536 (1966) (stating, in context of the utility requirement,
that “a patent is not a hunting license. It is not a reward for the
search, but compensation for its successful conclusion.”).
Tossing out the mere germ of an idea does not constitute enabling
disclosure. While every aspect of a generic claim certainly need
not have been carried out by an inventor, or exemplified in the
specification, reasonable detail must be provided in order to
4 US2010/0056940 Al, published March 4, 2010 (“‘940 application”).
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enable members of the public to understand and carry out the
invention.
Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).
The instant Specification, the priority application, and the ‘940
application, each co-owned by Appellants, all contain the identical non-
clarifying statement regarding absolute entropy as discussed above (see, e.g.,
‘940 application 1101), and the claims do not clarify what that term means
or how to calculate absolute entropy in light of their respective disclosures.
We agree with the Examiner’s analysis of the Wands factors (Ans. 9-10),
and adopt them as our own. We find the balance of factors supports the
Examiner’s conclusion that the subject matter of claim 1 “was not described
in the specification in such a way as to enable one skilled in the art to which
it pertains, or with which it is most nearly connected, to make and/or use the
invention.” Ans. 3. Accordingly, we affirm the rejection.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
claims fail to comply with the enablement requirement. The rejection of
claim 1 is affirmed. Claims 3—12 have not been argued separately and
therefore fall with claim 1.
WRITTEN DESCRIPTION
The Examiner rejects claims 1 and 3—12 as lacking written descriptive
support. As discussed above with respect to the enablement rejection, the
Examiner finds the Specification lacks disclosure regarding the claim term
“absolute entropy,” including what it is and how the value is calculated.
Ans. 3. The Examiner further finds that “claim[s] 16—17 of the originally
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filed claim[] states calculating absolute entropy but fails to disclose
generating diagnostic intervals based on the data.” Id.
The issue before us is whether a preponderance of the evidence
supports the Examiner’s conclusion that the Specification lacks written
descriptive support for calculating absolute entropy from intervals and/or
generating diagnostic output from absolute entropy. We select claim 1 as
representative of the claims subject to this ground of rejection. 37 C.F.R. §
41.37(c)(l)(iv).
Appellants argue that the rejection should be reversed because the
Specification contains sufficient written description. App. Br. 9. Appellants
argue “claims 16 and 17 as originally filed support the recitation of absolute
entropy” and that the original claims are part of the written description,
citing In re Roller, 613 F.2d 819 (CCPA 1980)). Id. at 10. Appellants also
argue “U.S. Pat. No. 8,588,908, from which the present application claims
priority, and [was] examined by the same Examiner herein, sets forth
calculation of absolute entropy in claims 12 and 13, thus establishing that
Applicant was in possession of the claimed invention at the time of original
filing.” Id.
Neither argument is persuasive. The issue is not whether the words
“absolute entropy” appear in the Specification; that fact is not disputed. At
issue is whether the Specification would have conveyed to a person of
ordinary skill in the art at the time of the invention that Appellants possessed
the claimed subject matter:
A description adequate to satisfy 35 U.S.C. § 112, first
paragraph, “must ‘clearly allow persons of ordinary skill in the
art to recognize that [the inventor] invented what is claimed. ’ In
other words, the test for sufficiency is whether the disclosure of
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the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject
matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation
omitted, alteration in original).
As the Examiner noted, the Specification does not define absolute
entropy or provide information in the Specification from which one could
ascertain the meaning.
We are similarly unpersuaded by Appellants’ argument that U.S. Pat.
No. 8,588,908 (“the ‘908 patent”) supports the written description in this
case. The Specification of the ‘908 patent provides the same single
statement regarding absolute entropy that is present in the application at
issue:
With fixed values, there is always the possibility of encountering
data that results in highly inaccurate entropy estimates, so
included in this embodiment is the continued development of
absolute entropy measures independent of m and r that are
statistically reliable and allow for comparison between a wide
range of HR data sets.
‘908 Patent 5:28—34. This sole mention of “absolute entropy” fails to clarify
what it is or how it is calculated.
Claims 12 and 13 of the ‘908 patent contain the second and third
recitations of “absolute entropy”:
12. The method of claim 1, further comprising
calculating an absolute entropy measurement.
13. The method of claim 12, wherein the absolute
entropy measurement is a coefficient of sample entropy
(COSEn).
Id. at 14:33—36. Claims 12 and 13 do not clarify what “absolute entropy” is,
other than to clarify that in one embodiment, it is a “coefficient of sample
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entropy (COSEn).” Id. Yet, the specification of the ‘908 patent also
describes that the claimed method is “related to, but distinct from,. . . the
coefficient of sample entropy (COSEn) that we have previously developed.”
Id. 2:65—3:3. We find that the ‘908 Patent does not convey to the skilled
artisan that the inventor possessed the ability to perform the method of claim
1, and therefore find the ‘908 Patent does not provide written descriptive
support for the instant claims.
Appellants additionally argue that the Examiner’s written description
rejection is legally insufficient because the Examiner “has not established by
a preponderance of evidence why a person skilled in the art would not
recognize in an applicant’s disclosure a description of the invention defined
by the claims.” App. Br. 10—11.
The Examiner responds that “‘Absolute Entropy’ is not a known term
[of art] and therefore requires defining in the specification.” Ans. 10.
Because the Specification does not provide such a definition or a means of
calculation, the Examiner explains, “nobody can make or use the claimed
invention. Therefore, since the term is unknown and the calculation is
unknown, one can only conclude that the inventor did not have possession of
the claimed invention at the time of filing.” Id.
We find the Examiner has the better position.
In the context of the written description requirement, an adequate
prima facie case must . . . sufficiently explain to the applicant
what, in the examiner’s view, is missing from the written
description. . . . When no such description can be found in the
specification, the only thing the PTO can reasonably be expected
to do is to point out its nonexistence.
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Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). The Examiner’s
rejection correctly pointed to the nonexistence of written descriptive support
in the Specification. We affirm the rejection.
Conclusion of Law
A preponderance of the evidence supports the Examiner’s conclusion
that the Specification lacks written descriptive support for calculating
absolute entropy from intervals and/or generating diagnostic output from
absolute entropy. The rejection of claim 1 is affirmed. Claims 3—12 have
not been argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
ANTICIPATION
Anticipation by Viertio-Oja
The Examiner finds “[a]s far as the Appellee [Examiner] can interpret
the claims in light of the 35 U.S.C. 112 rejections set forth above, claims [1,
3], 5—7, 9—16, and 18—21” are anticipated by Viertio-Oja. Ans. 4—6.
The issue before us is whether a preponderance of the evidence
supports the Examiner’s conclusion that Viertio-Oja teaches the claimed
subject matter.
Appellants argue, among other points, that the rejection should be
reversed because the Examiner withdrew the rejection in the Advisory
Action dated August 11, 2014. App. Br. 13.
Appellants persuade us that this rejection was withdrawn by the
Examiner and has not been reissued. See Advisory Action 2 (Continuation
Sheet, stating “Similarly the Applicant argues that Viertio-Oja fails to read
on the claims in the same way. In this case the Examiner agrees. The
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rejections under Viertio-Oja are withdrawn.”). Accordingly, we dismiss the
rejection as moot.
Conclusion of Law
The rejection is dismissed as mooted by the Examiner’s withdrawal of
the rejection.
Anticipation by Igel
The Examiner finds “[a]s far as the Appellee [Examiner] can interpret
the claims in light of the 35 U.S.C. 112 rejections set forth above, claims[l,
3], 5—7, 9—16[,] and 18—21” are anticipated by Igel. Ans. 4.
Claims 1, 3, 5—7, 9—12, and 16
As discussed above, the Specification does not define the term
“absolute entropy” or give examples to illustrate how it would be calculated.
Accordingly, because we cannot construe the absolute entropy limitation, we
do not sustain the anticipation rejection of claims 1, 3, 5—7, 9-12, and 16. In
re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Claims 13—15 and 18—21
The Examiner finds:
Igel discloses a method that obtains physiological data in one or
more series of intervals (e.g. 17), calculates entropy based on the
series of interval (e.g. 61) and generates a diagnostic output
based on the entropy data (e.g. 80).... Igel further discloses
determining entropy based on a series of matching intervals and
outputting using a regression model (e.g. Col. 5, line 32 to Col.
6, line 49).
Ans. 5.
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The issue before us is whether a preponderance of the evidence
supports the Examiner’s conclusion that Igel discloses the claimed subject
matter. We select claim 13 as representative of the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants argue, with regard to claim 13, that Igel:
teaches estimation of regularity from the approximate entropy
equation (2). Ci m and Ci m+1 terms are summed and input into
equation (2) to determine the ApEn value, in order to estimate
regularity. Igel does not disclose generating a diagnostic output
based on the numbers of matching intervals........
The Office action cites the same passage of Igel as
determining entropy based on a series of matching intervals and
outputting using a regression model. . . . However, the Office
action does not explain how this passage of Igel is interpreted to
meet the claim language.
App. Br. 12.
In response, the Examiner restates the rejection as:
Igel discloses a method that obtains physiological data in one or
more series of intervals (e.g. 17 “groups”), calculates entropy
based on the series of intervals (e.g. 61 “matches”) and generates
a diagnostic output based on the entropy data (e.g. 80). Igel
further discloses determining entropy based on a series of
matching intervals and outputting using a regression model (e.g.
Col. 5, line 32 to Col. 6, line 49 “number of matches”).
Ans. 11.
In reply, Appellants reiterate that the Examiner “does not provide any
correlation of this characterization of Igel with the claim limitations or any
explanation of how the cited passages are interpreted to meet the claimed
invention as a whole.” Reply Brief 3^4.
We are not persuaded that the Examiner’s findings are in error. Igel
discloses, as cited by the Examiner, in Col. 5, line 32 to Col. 6, line 49, a
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method for “Feature Extraction of Regularity Estimated from Approximate
Entropy”:
In equation 2, N represents the total number of discrete data
points of the cardiac electrical signal 52 for a set interval of
time. The variable m represents the number of points in a given
pattern or vector sequence of the cardiac electrical signal 52.
The variable r represents the closeness or tolerance as
determined by the scalar distance between points in a given
pattern and points in the ith pattern of comparison. The variable
Ci"‘ represents the total number of m point patterns over the
interval of the cardiac electrical signal 52 that are close to, or
within a tolerance r of, the ith pattern. Cim+1 represents the total
number of m+1 point patterns over the cardiac electrical signal
interval which are close to, or within a tolerance r of, the ith m+
1 pattern.
Y toCT1 - V lnC7 ®
ApEniN* ms r) - —■ .......................■;...................... .........................
N m + I
Thus equation (2) was applied by recording N data points of
Signal Three 52 for a given interval of time such as 5 seconds,
and then dividing the points into a series of m point patterns.
Starting with the first pattern, the total number of other patterns
that are close or within a tolerance r of the first pattern were
counted, and thus were represented by the variable c\m. Next,
the above step for i=2 to n-m+1 was repeated for every i. The
total number of patterns that were close or within a tolerance r
of the ith pattern were counted, and were represented by Cim.
Then, all of the Cim terms were summed. Then the Cim+1 term
was determined by dividing the number of data points into m+1
point patterns, and then for each m+1 point pattern, Cim+1, the
number of patterns that were close to or within tolerance of the
m+1 pattern were counted. This step was then repeated to
determine the remaining Cim+1 for every i. Then, all the Cim+1
terms were summed. Once all of the above variables were
determined, they were input into equation 2 to determine the
ApEn value in order to estimate regularity.
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Igel 6:9-47.
Like the Examiner, we understand this disclosure to teach a method of
obtaining cardiac physiologic data by sampling data from a subject,
separating the data into intervals (i), grouping the intervals into one or more
sets of segments of intervals (m, m+1), and determining the numbers of
matching intervals (Cim, Cim+1). Once this data is obtained, equation 2 is used
to “determine the ApEn value in order to estimate regularity.” Id. We find
that the skilled artisan would have understood the “regularity” of cardiac
rhythms to be “diagnostic output” that the skilled artisan could have used to
detect abnormal cardiac rhythms, as claimed. Accordingly, we are not
persuaded by Appellants’ argument that Igel does not disclose generating a
diagnostic output based on the numbers of matching intervals. App. Br. 12.
Appellants have not separately argued the remaining claims. We affirm the
rejection of claims 13—15 and 18—21 for anticipation.
Conclusion of Law
We reverse, pro forma, the rejection of claims 1, 3, 5—7, 9-12, and 16
for anticipation. We affirm the rejection of claims 13—15 and 18—21 for
anticipation.
New Grounds of Rejection
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new grounds of rejection.
Claims 1, 3—12, and 16 are rejected under 35U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which applicants regard as the invention.
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“[A]s an initial matter, the PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997).
As Zletz notes “during patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Here, for the reasons set forth by the Examiner and the reasons discussed
above in connection with enablement, we are unable to discern the meaning
of the claim term “absolute entropy.” Accordingly, claims 1, 3—12, and 16,
all of which recite “absolute entropy,” are indefinite.
Claim 16 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the enablement
requirement. For the reasons set forth by the Examiner and the reasons
discussed above with respect to claims 1 and 3—12, claim 16, which also
recites “calculating an absolute entropy measurement” is likewise rejected.
Claim 16 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the written description
requirement. For the reasons set forth by the Examiner and the reasons
discussed above with respect to claims 1 and 3—12, claim 16, which also
recites “calculating an absolute entropy measurement” is likewise rejected.
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SUMMARY
We affirm the rejection of claims 1 and 3—12 under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply
with the enablement requirement.
We affirm the rejection of claims 1 and 3—12 under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply
with the written description requirement.
We dismiss as moot the rejection of claims 1, 3, 5—7, 10, 12, 13, 15,
16, and 18—20 under 35 U.S.C. § 102(e) as anticipated by Viertio-Oja.
We reverse pro forma the rejection claims 1, 3, 5—7, 9—12, and 16
under 35 U.S.C. § 102(b) as anticipated by Igel.
We affirm the rejection of claims 13—15 and 18—21 under 35 U.S.C.
§ 102(b) as anticipated by Igel.
We enter a NEW GROUND OF REJECTION, rejecting claims 1, 3—
12, and 16 under 35 U.S.C. § 112, second paragraph, as indefinite.
We enter a NEW GROUND OF REJECTION, rejecting claim 16
under 35 U.S.C. § 112(a)or35U.S.C. § 112 (pre-AIA), first paragraph, as
failing to comply with the enablement requirement.
We enter a NEW GROUND OF REJECTION, rejecting claim 16
under 35 U.S.C. § 112(a)or35U.S.C. § 112 (pre-AIA), first paragraph, as
failing to comply with the written description requirement.
This decision contains new grounds of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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Application 14/064,853
within two months from the date of the 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 prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellants may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01 (9th
Ed., Rev. 07.2015, Nov. 2015).
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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