PHILIPS LIGHTING HOLDING B.V.

Patent Trials and Appeals Board

Jun 11, 2020

2019003849 (P.T.A.B. Jun. 11, 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.
14/429,904 03/20/2015 Matthias Wendt 2012P00755WOUS 4608
138325 7590 06/11/2020
Signify Holding B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
KIM, JUNG H
ART UNIT PAPER NUMBER
2842
NOTIFICATION DATE DELIVERY MODE
06/11/2020 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):
Gigi.Miller@signify.com
jo.cangelosi@signify.com
kim.larocca@signify.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS WENDT, ADRIANUS JOHANNES STEPHANUS
MARIA DE VAAN, and HAIMIN TAO
Appeal 2019-003849
Application 14/429,904
Technology Center 2800
Before GEORGE C. BEST, LILAN REN, and JANE E. INGLESE,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5 and 9–15. See Final Act. 4–5, 7.
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. Appellant identifies the real party in interest as “Philips Lighting
Holding B.V.” Appeal Br. 3.
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Application 14/429,904

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CLAIMED SUBJECT MATTER
The claims are directed to a DC power distribution system. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A DC power distribution system comprising:
an electrical conductor for guiding DC power from several
power supply units to an electrical consumer,
the several power supply units for providing DC power to
the electrical consumer, wherein the power supply units are
electrically connected to the electrical conductor,
the electrical consumer being electrically connected to the
electrical conductor for receiving the DC power from the several
power supply units,
a power consumption information providing system
comprising a plurality of distributed power consumption
information providing sub units, each of the plurality of
distributed power consumption information providing sub units
being assigned to a respective one of the several power supply
units wherein each one of the plurality of distributed power
consumption information providing sub units determines the
output power of the respective one of the several power supply
units, wherein the power consumption information providing
system provides power consumption information indicative of
the power consumed by the electrical consumer based on the
determined output power of the respective one of the several
power supply units, wherein each of the plurality of power
consumption information providing sub units determines the
power consumption information for the respective power supply
unit to which it is assigned, and
a power supply control system for controlling the power
supply units depending on the power consumption information
provided by the power consumption information providing
system, the power supply control system comprising a plurality
of power supply control sub units assigned to each of the
respective several power supply units, wherein a power supply
control sub unit assigned to the respective power supply unit is
configured to control the power supplied depending on the power
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consumption information determined by the power consumption
information providing system.
Claims Appendix (Appeal Br. 25).
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Tsuchiya US 2009/0217060 Al Aug. 27, 2009
REJECTIONS
Claims 1–5 and 9–15 are rejected under 35 U.S.C. § 112, first
paragraph, for failure to comply with the written description requirement.
Final Act. 4–5.
Claims 1–5 and 9–15 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 6
Claims 1, 5, and 12–15 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Tsuchiya. Final Act. 7.
OPINION
Written Description2
The Examiner rejects all claims for failing to comply with the written
description requirement. Final Act. 5. The Examiner finds that claim
elements such as “power consumption information providing system,”
“power consumption information providing sub units,” “power supply
control system,” and “power supply control sub unit/units” recited in claim 1

2 Appellant argues for reversal of the written description rejection of claims
1–5, and 9–15 as a group, and they stand or fall together. See Appeal Br. 12–
17; see also 37 C.F.R. § 41.37(c)(1)(vii).
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invoke 35 U.S.C. § 112(f) but the Specification does not disclose the
necessary description of the corresponding structures. Id (finding that claim
14 recites “power consumption information providing system,” “power
consumption information providing sub units,” “power supply control
system,” and “power supply control sub units,” claim 2 recites “electrical
consumer control unit,” and claims 12 and 14 each recite “power supply
control sub unit/units,” all of which invoke § 112(f)).
Compliance with the written description requirement is determined by
whether the disclosure shows the inventor’s possession of the claimed
subject matter to a person of ordinary skill in the art. Union Oil Co. of Cal.
v. Atl. Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000). “To fulfill the
written description requirement, the patent specification must clearly allow
persons of ordinary skill in the art to recognize that [the inventor] invented
what is claimed.” Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473,
1479 (Fed. Cir. 1998)
Here, Appellant tabulates the specific parts of the Specification in
support of the written description of claim 1. Appeal Br. 16. For example,
for the claim element “power consumption information providing system,”
Appellant cites as support Spec at 16:16–203 which states: “the power
consumption information providing system 307 is integrated in the power
supply control system 310, wherein the power consumption information
providing system 307 is adapted to determine the power consumption
information based on the control of the electrical consumers 4 by the power
supply control unit 310.” Id; Spec. 16.

3 Line numbers are absent in the Specification as filed.
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The Examiner, on the other hand, finds the claim language invokes
§ 112(f) and the disclosure “fails to disclose the corresponding structure,
material or acts for the claimed elements; the specification is entirely silent
as to what the corresponding structure, material or acts correspond to the
claimed elements.” Ans. 6.
[I]f one employs means-plus-function language in a claim, one
must set forth in the specification an adequate disclosure
showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly claim the invention
as required by the second paragraph of section 112.

In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).
Appellant does not clearly disagree with the Examiner’s invocation of
35 U.S.C. § 112(f) but instead argues: “[w]hen invoking 35 U.S.C. § 112(f),
MPEP [§] 2181(1) recites that ‘the standard is whether the words of the
claim are understood by persons of ordinary skill in the art to have a
sufficiently definite meaning as the name for structure.’” Appeal Br. 14.
Appellant thus argues that the elements at issue recited in claim 1 “are
understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure”—although Appellant’s argument
is not supported by factual evidence. Id. (arguing only that “the claim itself
recites at least some of the structural features included in the power supply
control system, i.e., power supply control units” and that the Specification
“recites that the power supply control sub-units are configured to control the
respective power supply unit depending on the power consumption
information determined by the power consumption information system”).
Unsupported by factual evidence, Appellant argues that the invocation of 35
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U.S.C. § 112(f) is inappropriate because the ordinary artisan “would
appreciate the structure associated with the components recited” but does not
specify what these structures might be. Id. at 15.
Construing a means-plus-function claim limitation is a two-step
process. First, the claim must be analyzed to determine whether the claim
language actually invokes the provisions of 35 U.S.C. § 112, sixth paragraph
(pre-AIA applications) or § 112(f) (post-AIA applications). See Envirco
Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000) (“If
a claim element contains the word ‘means’ and recites a function, th[e] court
presumes that element is a means-plus-function element under § 112,
¶ 6. . . . That presumption falls, however, if the claim itself recites sufficient
structure to perform the claimed function.”). The second step is to
“determine what structures have been disclosed in the specification that
correspond to the means for performing that function.” Kemco Sales, Inc. v.
Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000).
In this case, the Examiner finds that the functional elements recited in
claim 1 are “mere blank box[es]” without corresponding “specific, known
structures.” Ans. 7. The Examiner finds that “Appellant does not even point
out what specific structures a person of ordinary skill in the art would
associate with the above-claimed elements.” Id. Appellant’s tabulation of the
Specification as written description support of the claim does not specify any
structural components to refute the Examiner’s findings. See, e.g., Appeal
Br. 14–15, 18.4 For example, the Specification discloses the recited “power
consumption information providing system” based on its functionality—that

4 No Reply Brief was filed.
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it “is integrated in the power supply control system 310, wherein the power
consumption information providing system 307 is adapted to determine the
power consumption information based on the control of the electrical
consumers 4 by the power supply control unit 310.” Spec. 16; Appeal Br. 16
(citing Spec. 16:16–20). Likewise, the Specification discloses no more than
that the recited power consumption information providing sub unit “is
adapted to provide the power consumption information for the respective
power supply unit 3” without any structure. Appeal Br. 16 (citing Spec.
12:13–15); Spec. pg. 12.
The Examiner’s invocation under 35 U.S.C. § 112(f) therefore has not
been shown to be erroneous. See Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1350 (Fed. Cir. June 16, 2015) (“‘Module’ is a well known nonce
word that can operate as a substitute for ‘means’ in the context of § 112,
para. 6. . . . Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and
other nonce words that reflect nothing more than verbal constructs may be
used in a claim in a manner that is tantamount to using the word ‘means’
because they ‘typically do not connote sufficiently definite structure’ and
therefore may invoke § 112, para. 6.”).
Appellant does not identify error in the Examiner’s finding that the
Specification lacks structure for the recited functional elements. See Appeal
Br. 16 (acknowledging that “[t]he specification and claims recite the acts the
claimed features are intended to carry-out/perform). Appellant does not
provide factual evidence to support the assertion that a skilled artisan would
understand the structure corresponding to the functional limitations. See id.
We accordingly sustain the written description rejection.
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Indefiniteness5
Based on the findings that claim elements such as “power
consumption information providing system” invoke 35 U.S.C. § 112(f) and
that the Specification lacks a disclosure of the corresponding structures, the
Examiner rejects all claims for indefiniteness. Final Act. 6 (finding that
elements such as “power consumption information providing system,”
“power consumption information providing sub units,” “power supply
control system,” and “power supply control sub units” recited in claim 1 and
14, “electrical consumer control unit” recited in claim 2, and “power supply
control sub unit/units” recited in claims 1, 12, and 14 invoke § 112(f)).
As with the written description rejection, Appellant does not identify
any structure in the Specification but only argues that the invocation of 35
U.S.C. § 112(f) is inappropriate based on the same assertion that the
ordinary artisan “would appreciate the structure associated with the
components recited.” Appeal Br. 18. Appellant does not support this
statement with evidence, nor does Appellant specify what these structures
might be.
As analyzed supra with regard to the written description rejection, the
Examiner’s invocation under 35 U.S.C. § 112(f) has not been shown to be
erroneous. See Williamson, 792 F.3d at 1350 (“‘Module’ is a well known
nonce word that can operate as a substitute for ‘means’ in the context of
§ 112, para. 6. . . . Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’
and other nonce words that reflect nothing more than verbal constructs may

5 Appellant argues for reversal of the indefiniteness rejection of claims 1–5,
and 9–15 as a group, and they stand or fall together. See Appeal Br. 18–19;
see also 37 C.F.R. § 41.37(c)(1)(vii).
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be used in a claim in a manner that is tantamount to using the word ‘means’
because they ‘typically do not connote sufficiently definite structure’ and
therefore may invoke § 112, para. 6.”).
Although paragraph six [of § 112] statutorily provides that one
may use means-plus-function language in a claim, one is still
subject to the requirement that a claim ‘particularly point out
and distinctly claim’ the invention. Therefore, if one employs
means-plus-function language in a claim, one must set forth in
the specification an adequate disclosure showing what is meant
by that language. If an applicant fails to set forth an adequate
disclosure, the applicant has in effect failed to particularly point
out and distinctly claim the invention as required by the second
paragraph of section 112.
Donaldson Co., 16 F.3d at 1195.
In this case, Appellant argues, without evidentiary support, that
“the recited features are understood by persons of ordinary skill in the
art to have a sufficiently definite meaning as the name for structure.”
Appeal Br. 18. We are not persuaded of reversible error by such an
unelaborated and ambiguous statement. See Miles Labs. Inc. v.
Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (“The test for
definiteness is whether one skilled in the art would understand the
bounds of the claim when read in light of the specification.”). We
sustain the Examiner’s indefiniteness rejection.
Anticipation6
Review of the anticipation rejection would require considerable
speculation as to the scope of the claims. Such speculation would not be

6 Appellant argues for reversal of the anticipation rejection of claims 1, 5,
and 12–15 as a group, and they stand or fall together. See Appeal Br. 19–23;
see also 37 C.F.R. § 41.37(c)(1)(vii).
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appropriate given our affirmance of the indefiniteness rejection. See In re
Steele, 305 F.2d 859, 862 (CCPA 1962) (“[W]e do not think a rejection
under 35 U.S.C. § 103 should be based on such speculations and
assumptions.”). We, therefore, decline to reach the merits of the anticipation
rejection based on the indefiniteness rejection.
We, however, alternatively sustain the anticipation rejection even if
the claims are found to comply with the definiteness requirement under
§ 112. From the outset, the Examiner construes, under the broadest
reasonable interpretation, that “the claimed determination by each
distributed power consumption information providing sub unit of the output
power of the respective power supply unit includes determining output
power of the power supply unit based on the expected power use” which is
disclosed by Tsuchiya. Final Act. 8 (citing Tsuchiya ¶ 52). Appellant does
not address the Examiner’s interpretation of the claim limitation at issue. See
Appeal Br. 20–21 (arguing merely that “the Tsuchiya is entirely silent as to
adjusting, in any way, the output power of DC-DC power supply (24)”
which is not commensurate in scope with the claim language). We are
therefore not persuaded that reversible error has been identified.
Furthermore, claim 1 recites a system whose patentability “depends
on the claimed structure, not on the use or purpose of that structure.”
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed.
Cir. 2002). Because Appellant’s argument with regard to the anticipation
rejection does not structurally distinguish the prior art, we sustain the
rejection. See Appeal Br. 23 (arguing instead that the prior art system
“‘calculates’ the power information supplied to management module (5)
based on known component parts of the CPU modules (2)”).
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CONCLUSION
The disposition of the Examiner’s rejections is summarized below.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 9–15 112, first written description 1–5, 9–15
1–5, 9–15 112, second indefiniteness 1–5, 9–15
1, 5, 12–15 102(b) Tsuchiya not
reached (in
the
alternative
1, 5, 12–
15)

Overall
Outcome:
1–5, 9–15

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