Ex Parte Verschuren et al

Patent Trial and Appeal BoardNov 17, 2016

13265282 (P.T.A.B. Nov. 17, 2016)

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. 13/265,282 10/19/2011 Coen Adrianus Verschuren 2009P00309WOUS 6888 138325 7590 02/13/2017 PHILIPS LIGHTING HOLDING B.V. 465 Columbus Avenue Suite 330 Valhalla, NY 10595 EXAMINER RAMPERSAUD, PRIYA M ART UNIT PAPER NUMBER 2891 NOTIFICATION DATE DELIVERY MODE 02/13/2017 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): kim.larocca@philips.com j o. c angelosi @ philips. com Gigi.Miller@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte COEN ADRIANUS VERSCHUREN and FERRY ZIJP Appeal 2015-003897 Application 13/265,282 Technology Center 2800 Before TERRY J. OWENS, N. WHITNEY WILSON, and AVELYN M. ROSS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellants argue (Req. 2â€”3) that both the rejection under 35 U.S.C. Â§ 112, first paragraph written description requirement (on the ground that the originally filed Specification lacks written descriptive support for the amendment to sole independent claim 1 requiring deformations at a bottom electrodeâ€™s bottom surface (Final Act. 3â€”4)) and the objection to the drawings (as failing to show that feature (Final Act. 2â€” 3)) are directed toward a feature added to the claim by amendment and that, therefore, the objection is appealable not, as we stated in our Decision, petitionable (Decâ€™n at 2 n.l). As stated in Manual of Patent Examining Procedure Â§ 2163.06(11) (Rev. 9, Aug. 2012): Appeal 2015-003897 Application 13/265,282 A rejection of claims is reviewable by the Board of Patent Appeals and Interferences, whereas an objection and requirement to delete new matter is subject to supervisory review by petition under 37 CFR 1.181. If both the claims and specification contain new matter either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable and should not be decided by petition. The Appellants did not add new matter to the Specification but, rather, added only to the claims a feature which the Examiner considered to lack written descriptive support in the original disclosure. This is not a case in which new matter was added to both the drawings and the claims such that the decision on the rejection of the claims applies to the objection to the drawings. The objection to the drawings, therefore, is petitionable, not appealable. Accordingly, we deny the request for rehearing. DENIED 2