Ex Parte Gijsbers et al

Patent Trial and Appeal Board

Mar 28, 2019

13984313 (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. § 134(a) from the Examiner's
decision rejecting claim 12. 2 We have jurisdiction under 35 U.S.C. § 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. § 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
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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
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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. § 112, first paragraph.
DECISION
The Examiner's decision rejecting claim 12 is reversed.
REVERSED
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