Ex Parte Ben-Shmuel et al

Patent Trial and Appeal Board

Mar 26, 2018

12457156 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/457, 156 0610212009 Eran Ben-Shmuel
22852 7590 03/28/2018
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
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.
11254.0032-02000 2886
EXAMINER
CALVETTI, FREDERICK F
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERAN BEN-SHMUEL, ALEXANDER BILCHINSKY,
UDI DAMAR!, OMER EINA V, BENNY ROUSSO,
and SHLOMO BEN-HAIM
Appeal2016-002601
Application 12/457,156
Technology Center 3700
Before JOHN C. KERINS, KEN B. BARRETT, and
ARTHUR M. PESLAK, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Eran Ben-Shmuel et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-9, 21, 22, and 25-30. We
have jurisdiction under 35 U.S.C. § 6(b ). An oral hearing was conducted on
January 4, 2018, with Darren M. Jiron, Esq., appearing on behalf of
Appellants.
We REVERSE.
Appeal 2016-002601
Application 12/457,156
THE INVENTION
Appellants' invention is directed to a heater for dielectrically heating a
load in a cavity using UHF or microwave energy. Claim 1, reproduced
below, is illustrative:
1. A heater for dielectrically heating a load positioned in a
cavity using UHF or microwave energy, the heater comprising:
an UHF or microwave heating element for feeding UHF or
microwave energy into the cavity;
a memory storing a computer executable program; and
a controller device communicatively connected to the memory,
wherein when the computer executable program is executed by
the controller device, the controller device performs operations
compnsmg:
selecting between first and second heating modes;
identifying at least one absorption peak at a
corresponding peak frequency; and
for each identified absorption peak:
determining a frequency band associated with the
identified absorption peak, the frequency band including
the peak frequency corresponding to the identified
absorption peak, wherein the frequency band is
determined to be broader when the first heating mode is
selected than when the second heating mode is selected;
and
controlling the UHF or microwave heating element to
heat the load by feeding the cavity with UHF or
microwave energy at frequencies of the determined
frequency band.
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Application 12/457,156
The Examiner rejects:
THE REJECTIONS
(i) claims 1-9, 21, 22, and 25-30 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;
(ii) claims 1-9, 21, 22, and 25-30 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement;
(iii) claims 1-9, 21, 22, and 25-30 under 35 U.S.C. § 112, second
paragraph, as being indefinite;
(iv) claims 1-9, 21, 22, and 25-30 under 35 U.S.C. § 101 as not being
directed to patent eligible subject matter; 1
(v) claims 1, 2, 6-9, 21, 22, and 25-28 under 35 U.S.C. § 103(a) as
being unpatentable over Fagrell (US 2002/0175163 Al, published Nov. 28,
2002) in view of Johnson (US 5,521,360, issued May 28, 1996), and any one
of Lagunas-Solar (US 6,638,475 Bl, issued Oct. 28, 2003), Asmussen (US
5,008,506, issued Apr. 16, 1991), or Fathi (US 5,648,038, issued July 15,
1997);
(vi) claims 3-5 under 35 U.S.C. § 103(a) as being unpatentable over
Fagrell in view of Johnson, any of Lagunas-Solar, Asmussen, or Fathi, and
Clothier (US 6,953,919 B2, issued Oct. 11, 2005);
(vii) claims 29 and 30 under 35 U.S.C. § 103(a) as being unpatentable
over Fagrell in view of Johnson, any of Lagunas-Solar, Asmussen, or Fathi,
Bible (US 5,961,871, issued Oct. 5, 1999), and Bible (US 5,321,222, issued
June 14, 1994);
1 This rejection is presented in the Final Action following the rejections
under§§ 102 and 103, but will be addressed out of that order herein.
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Application 12/457,156
(viii) claims 1-9, 21, 22, and 25-30 under 35 U.S.C. § 102(b) as being
anticipated by Johnson; and
(ix) claims 1-9, 21, 22, and 25-30 (provisionally) on the nonstatutory
ground of obviousness-type double patenting over: claims 1-19 of
Application No. 13/729,678; claims 47-88 of Application No. 13/645,625;
claims 1-16 of Application No. 13/464,754; claims 27-37 and 39-50 of
Application No. 12/907,663; claims 67-82 of Application No. 12/906,604;
and claims 23-50 of Application No. 12/563, 182. 2
ANALYSIS
Claims 1-9, 21, 22, and 25-30--Written Description
Claim 1 is the only independent claim presented on appeal. The
Examiner finds that the claims, including claim 1, involve "pure functional
claiming of any and every controller having a computer executable program
having instructions to implement an idea." Final Act. 4. The Examiner
specifically identifies portions of the Specification that provide "support for
the amended claim language," yet maintains that "[t]hese citations do not
obviate absence of description." Id. at 4--5. The Examiner finds problematic
that "[t]here is no particular structure for the controller or even specific
software for its use," and opines that "[t]here is no written description in the
specification to support [the] broad scope" of the claims. Id. at 5.
Appellants maintain that controlling an electrical device of the type
disclosed and claimed would have been within the skill set of those of
ordinary skill in the art, and that it would not have been necessary to include
2 This ground of rejection is presented last here, whereas it was presented
first in the Final Action.
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Application 12/457,156
a description of the detailed structure of the controller device in order to
demonstrate that the inventors had possession of the claimed invention at the
time the application was filed. Appeal Br. 11. Appellants also argue that
functional recitations do not preclude the Specification from satisfying the
written description requirement, in that "[t]he test for sufficiency is whether
'the specification recites sufficient materials to accomplish that function."'
Id. at 12 (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1352 (Fed. Cir. 2010)). Appellants point to disclosures of system block
diagrams, flow charts, heating cavities, and antennae as providing disclosure
evidencing possession of the claimed subject matter. Id.
Appellants have the better position. We do not view claim 1 as
encompassing any and every controller having a computer executable
program, but rather a controller having such a program that performs the
claimed operations or functions. Appellants' Specification evidences that
they were in possession of such a device. The rejection is not sustained.
Claims 1-9, 21, 22, and 25-30--Enablement
The Examiner relies on the same analysis as presented for the written
description rejection, stating that the Specification does not teach how to use
any and every controller and operation, and that the claims are "not enabled
... for such broad scope." Final Act. 5. As noted above, we disagree with
the Examiner as to the scope of claim 1. Further, the Examiner presents no
findings that could lead to a conclusion that an undue amount of
experimentation would be required in order to make and use the invention as
defined in claim 1. In re Strahilevitz, 668 F.2d 1229 (CCPA 1982); see also
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In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (setting forth factors for
determining whether or not undue experimentation is necessary).
The rejection is not sustained.
Claims 1-9, 21, 22, and 25-30-Indefiniteness
The Examiner relies on the same analysis as presented for the written
description rejection, discussed above, and maintains that the alleged pure
functional claiming of a controller renders unclear the scope of the claims.
Final Act. 6. The Examiner questions whether the claims are directed to an
apparatus or method. Id.
Claim 1 is drawn to an apparatus or system configured to operate in a
particular manner set forth in the claim. We fail to see the lack of clarity
asserted by the Examiner. The rejection is not sustained.
Claims 1-9, 21, 22, and 25-30--Patent Eligible Subject Matter
The Examiner maintains that the claims are directed to an abstract
idea. Final Act. 17. The Examiner describes the abstract idea as "relat[ing]
to a computer device performing operations comprising selecting ... ,
identifying ... , determining ... , and controlling." Id. The Examiner
additionally appears to base the rejection on the claims being directed to a
phenomenon or law of nature "relat[ing] to frequency/absorption/energy."
Id. The Examiner further maintains that "[t]he generic computer disclosed
in the specification and recited in the claims adds nothing of substance to the
idea." Id.
The Examiner's rejection fails to address the fact that the claims recite
a heater having a heating element, together with a controller specifically
configured to perform the several recited steps or functions for controlling
the heater. These constitute physical structure to which the claims are
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Application 12/457,156
directed, and the Examiner has not adequately established how, given this
structure, the claims can legitimately be said to be "directed to" a non-
statutory class of invention such as an abstract idea or naturally occurring
phenomenon or law of nature.
The rejection is not sustained.
Claims 1, 2, 6-9, 21, 22, and 25-28--0bviousness--Fagrell/Johnson/
Lagunas-Solar/ Asmussen
Appellants appropriately criticize the rejection as "point[ing]
generally to a multitude of passages and figures in Fagrell," and
"provid[ing] no explanation of how any of these cited portions of Fagrell"
correspond to the limitations found in claim 1. Appeal Br. 17. Appellants
continue by pointing out how and why the numerous paragraphs cited to by
the Examiner do not disclose or suggest various claim limitations. Id. at 17-
21.
We find here that the rejection "'is so uninformative that it prevents
[Appellants] from recognizing and seeking to counter the grounds for
rejection."' In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). In particular, in
addressing the claim limitation requiring the controller to carry out
determining frequency bands for first and second heating modes, with the
frequency band being broader for the first heating mode than for the second
heating mode, the Examiner identifies more than 50 paragraphs scattered
throughout the Fagrell reference as evidencing that this limitation is
disclosed in Fagrell. Final Act. 8. The Examiner provides no explanation or
elaboration as to what specifically within those fifty-some paragraphs is
regarded as a disclosure of the claim limitation at issue, and our review of
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the cited paragraphs does not lead to any readily apparent correspondence
between what is discussed therein and the claim language.
The rejection of claims 1, 2, 6-9, 21, 22, and 25-28 is therefore not
sustained.
Claims 3-5--0bviousness--Fagrell/Johnson/Lagunas-Solar/
Asmussen/Clothier
Claims 29 and 30--0bviousness--Fagrell/Johnson/Lagunas-Solar
Asmussen/Bible/Bible
These rejections suffer from the same deficiency as does the rejection
discussed in the preceding section. The rejections are not sustained for the
same reasons presented above.
Claims 1-9, 21, 22, and 25-30--Anticipation-Johnson
The Examiner finds that Johnson discloses all limitations set forth in
claim 1, and cites to column 13, line 20, through column 15, line 67, as
disclosing the recited operations that the claimed controller must perform.
Final Act. 16. The Examiner invites particular attention to column 13, line
50, to column 14, line 5, as being especially pertinent. Id.
As argued by Appellants, Johnson does not appear to disclose
selecting between two heating modes and having frequency bands of
different breadths for the two heating modes, as required by claim 1. Appeal
Br. 35-36. In further explaining the basis for the rejection, the Examiner
appears to not give those limitations any patentable weight. Ans. 28. This
position is not tenable.
The anticipation rejection of claim 1 and its dependent claims is
therefore not sustained.
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Appeal 2016-002601
Application 12/457,156
Claims 1-9, 21, 22, and 25-30--0bviousness-type Double Patenting
Appellants request that the provisional rejections based on
obviousness-type double patenting over various identified claims in
Application Nos. 13/729,678, 13/645,625, 13/464,754, 12/907,663;
12/906,604, and 12/563, 182, be held in abeyance until allowable subject
matter is identified in the claims on appeal. Appeal Br. 9. A search of
USPTO records has revealed that Application No. 13/729,678 was
abandoned, effective July 7, 2017, and that the remaining five applications
have had patents issue therefrom. The Examiner may wish to determine at
this stage whether any claims as issued in these patents present obviousness-
type double patenting issues with the claims on appeal. At least because one
application underlying the provision rejection has been abandoned, we do
not reach the merits of this rejection.
DECISION
The Examiner's rejections of claims 1-9, 21, 22, and 25-30 are
reversed.
REVERSED
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