Nihaal Nath et al.

Patent Trials and Appeals Board

Aug 20, 2020

15437425 - (D) (P.T.A.B. Aug. 20, 2020)

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.
15/437,425 02/20/2017 Nihaal Nath APP_5 1800
127270 7590 08/20/2020
Rattan Nath
1417 Pleasant Valley Way
West Orange, NJ 07052
EXAMINER
HAYES, BRET C
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
08/20/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NIHAAL NATH, RATTAN NATH, and URSULA NATH

Appeal 2020-001048
Application 15/437,425
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 13–20.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Rattan Nath, Nihaal Nath, and Ursula Nath. Appeal Br. 2.
2 Claims 1–12 have been withdrawn. Appeal Br. 2.
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STATEMENT OF THE CASE
Claimed Subject Matter
The Appellant’s invention “is directed to easily detectable
ammunition.” Spec. 7. Claim 13, the sole independent claim on appeal, is
representative of the claimed subject matter and reproduced below.
13. A primer section detectable by a reader, the primer
section comprising:
a tag;
a power storage component to power a signal emitting
circuit in the tag;
a receiver for receiving power or a signal external to the
piece of cartridge; and
one or more controllable flash vents whereby a likelihood
of transmitting a flash to a powder section from the
primer section is reduced when the one or more flash
vents are closed.

Rejections
Claim 13 is rejected under 35 U.S.C. § 112(a) as failing to comply
with the enablement requirement.
Claims 13–20 are rejected under 35 U.S.C. § 112(b) as indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor or a joint inventor regards as the invention.

ANALYSIS
Enablement
The Examiner rejects claim 13 as failing to comply with the
enablement requirement. Final Act. 4. The Examiner determines that “one
or more controllable flash vents” and “a likelihood of transmitting a flash to
a powder section from the primer section is reduced,” as recited in claim 13,
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fails to comply with the enablement requirement because the Specification
does not enable a person having ordinary skill in the art to make the
invention. See id.
When rejecting a claim for lack of enablement, the USPTO bears an
initial burden of setting forth a reasonable explanation as to why the
Examiner believes that the scope of protection provided by the claim is not
adequately enabled. In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993);
see Manual of Patent Examining Procedure (“MPEP”) § 2164.04, Burden on
the Examiner Under the Enablement Requirement (9th ed., rev. 10.2019, last
rev. June 2020). The test for compliance with the enablement requirement is
“whether one reasonably skilled in the art could make or use the invention
from the disclosures in the patent [application] coupled with information
known in the art without undue experimentation.” United States v.
Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). Determining whether
any necessary experimentation is undue involves considering relevant
factors including, but not limited to: (1) the quantity of experimentation
necessary; (2) the amount of direction or guidance presented; (3) the
presence or absence of working examples; (4) the nature of the invention;
(5) the state of the prior art; (6) the relative skill of those in the art; (7) the
predictability or unpredictability of the art; and (8) the breadth of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988); see MPEP § 2164.01(a),
Undue Experimentation Factors. “Whether undue experimentation is needed
is not a single, simple factual determination, but rather is a conclusion
reached by weighing many factual considerations.” Wands, 858 F.2d at 737.
We are not convinced that the Examiner properly weighed all of the
Wands factors. Initially, we note that the Examiner does not explicitly
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reference any of the Wands factors. However, the record suggests that the
Examiner may have considered one of the Wands factors; namely, (2) the
amount of direction or guidance presented. See Ans. 6–8. Although the
Examiner is not required to provide a discussion as to every Wands factor, it
is not apparent from the Final Office Action or the Answer that these factors
were properly weighed.3 Based on the foregoing, we determine that the
Examiner’s rejection under 35 U.S.C. § 112(a) as failing to comply with the
enablement requirement is not sufficiently complete to establish a prima
facie case.
Further, we note that the Appellant’s arguments suggest that if the
Examiner properly weighed all of the Wands factors, including (4) the nature
of the invention, (5) the state of the prior art, (6) the relative skill of those in
the art, and (8) the breadth of the claims, the rejection would weigh against
the Examiner’s determination. See Appeal Br. 4–6; Reply Br. 2–3.4

3 MPEP § 2164.04 “Burden on the Examiner Under the Enablement
Requirement” states:
While the analysis and conclusion of a lack of enablement are
based on the factors discussed in MPEP § 2164.01(a) and the
evidence as a whole, it is not necessary to discuss each factor in
the enablement rejection. However, it is improper to conclude
that a disclosure is not enabling based on an analysis of only
one of the above factors while ignoring one or more of the
others. The examiner’s analysis must consider all the evidence
related to each of these factors, and any conclusion of
nonenablement must be based on the evidence as a whole. In re
Wands, 858 F.2d 731, 737, 740 . . . (Fed. Cir. 1988).
4 The Reply Brief lacks page numbers. We designate page 1 as the page that
includes the heading “REPLY TO EXAMINER’S RESPONSE” and
number the remaining pages in the Reply Brief consecutively therefrom.
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In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 13 as failing to comply with the enablement requirement.

Indefiniteness
Independent Claim 13 and Dependent Claims 14–20
Claim 13 recites, in relevant part, “a receiver for receiving power or a
signal external to the piece of cartridge.” Appeal Br., Claims App.
The Examiner rejects claim 13 under 35 U.S.C. § 112(b) as indefinite
because “[i]t is unclear whether both power and signal are required to be
external.” Final Act. 4. The Examiner rejects claims 14–20 because these
claims depend from claim 13, i.e., a rejected base claim. See id. at 4, 5.
Additionally, as discussed below, the Examiner further rejects claims 16 and
18–20 for separate reasons.
We agree with the Examiner that is unclear how the above-recited
limitation of claim 13 should be understood. The limitation provides two
alternatives. The first alternative may be understood in two ways: (a) as
requiring a receiver for receiving power; or (b) requiring a receiver for
receiving power external to the piece of cartridge. The second alternative is
clear. Namely, it requires a receiver for receiving a signal external to the
piece of cartridge.
In the Appeal Brief, the Appellant contends that “it would have been
plain that the limitation in claim 13 ‘a receiver for receiving power or a
signal external to a piece of cartridge’ refers to either or both because the
specification discloses both powering of the tag and signaling by way to
detecting change in imped[a]nce.” Appeal Br. 4 (emphasis added) (citing In
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re Smith Int’l, Inc., 871 F.3d 1375 (Fed. Cir. 2017)). The Appellant’s
contention is not persuasive.
Initially, we note that the Appellant’s contention itself is not entirely
clear. Although it is clear the Appellant is attempting to suggest that two
alternatives are being claimed, the Appellant does not appear to address the
metes and bounds of the first alternative. More specifically, the Appellant’s
response is directed to “powering of the tag,” rather than how the claimed
“receiver” receives “power.” Further, we note that the Specification
discloses using a battery and/or passive energy to power the tag. See, e.g.,
Spec. 9 (“In some embodiments the tag may be powered by a battery but be
designed to continue functioning as a passive tag if the battery runs out.”),
12 (“In another preferred embodiment, to make detectable ammunition, it is
possible to provide a source of power, such as a battery, but the ID tags used
should still be capable of functioning as passive ID tags if the source of
power fails or runs out.”); see also id. at 20–21, 31, 38. Although it is
conceivable that the use of the word “receiver” requires a power source that
is not a battery, the record is not clear on that point. Additionally, that point
is not advanced by the Appellant. Therefore, the Appellant’s contention
does not clarify whether the first alternative requires: (a) a receiver for
receiving power; or (b) a receiver for receiving power external to the piece
of cartridge.
The Appellant also contends:
As to claim 13, Examiner claims that that one having ordinary
skill in the art would be unclear whether the limitation ‘a
receiver for receiving power or a signal external to a piece of
cartridge’ means both power and the signal or just one of
power/signal from an external source.
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The context of the specification makes it clear that it is both but
not necessarily at the same time because power or signal could
be stored. This would be clear to one adopting a reasonable
interpretation from the perspective of one having ordinary skill
in the art.
Reply Br. 4 (emphasis omitted). This contention is not persuasive. Similar
to our discussion above, we note that the Appellant’s contention is not
entirely clear. As with the first contention, the Appellant is attempting to
suggest that two alternatives are being claimed, but does not appear to
address the metes and bounds of the first alternative, i.e., whether the first
alternative requires: (a) a receiver for receiving power; or (b) a receiver for
receiving power external to the piece of cartridge.
Thus, we sustain the Examiner’s rejection of independent claim 13.
We likewise sustain the rejection of dependent claims14– 20 due to its
dependency on claim 13.

Dependent Claims 16 and 18–20
The Examiner further rejects each of claims 16, 18, and 19 under
35 U.S.C. § 112(b) as indefinite for reasons distinct than the reasons
discussed above for the rejection of claim 13. Final Act. 5. The Examiner
does not reject claim 20 for a separate reason. Although the Examiner
states, “[c]laim 20 similarly recites ‘one or more,’ which is better recited as
--at least one--” (id.), the statement does not provide a reason why claim 20
is indefinite, i.e., unclear. Ex parte McAward, Appeal No. 2015-006416,
2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (explaining
that the USPTO considers a claim indefinite when it “contains words or
phrases whose meaning is unclear”); see MPEP § 2173.02, Determining
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Whether Claim Language is Definite. Claim 20, depends from claim 19, and
therefore, is rejected for being based on a rejected claim.
The Appellant does not argue that the Examiner erred in rejecting
claims 16, 18, or 19 in the Appeal Brief. For the first time on appeal, the
Appellant argued against the reasons for the rejections of claims 16 and 19
in the Reply Brief at page 5. The arguments presented are not responsive to
an argument raised in the Examiner’s Answer. See also Ans. 8 (stating,
“There were no arguments with respect to the rejections under 35 U.S.C.
112(b).”). The Appellant fails to show good cause for not presenting this
argument in the opening brief, i.e., the Appeal Brief. Therefore, we will not
consider this argument. See 37 C.F.R. § 41.41(b)(2) (2018) (“Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner’s answer, including any
designated new ground of rejection, will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.”); id. at
§ 41.37(c)(1)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.”).
Therefore, we summarily sustain the Examiner’s rejection of claims
16, 18, and 19 as indefinite. We likewise sustain the rejection of dependent
claim 20 due to its dependency on claim 19.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
13 112(a) Enablement

13
13–20 112(b) Indefiniteness 13–20
Overall
Outcome
13–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED