Ex Parte CHANG

Patent Trial and Appeal Board

Dec 20, 2018

14631295 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/631,295 02/25/2015
65358 7590 12/21/2018
WPAT, PC
INTELLECTUAL PROPERTY ATTORNEYS
8230 BOONE BL VD. SUITE 405
VIENNA, VA 22182
FIRST NAMED INVENTOR
CHIN-FU CHANG
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.
67607-083CIP 9731
EXAMINER
ELAHI, TOWFIQ
ART UNIT PAPER NUMBER
2625
MAIL DATE DELIVERY MODE
12/21/2018 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 CHIN-FU CHANG 1
Appeal2018-004790
Application 14/631,295 2
Technology Center 2600
Before ELENI MANTIS MERCADER, JAMES R. HUGHES, and
JENNIFER S. BISK, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-20, which constitute all the claims
1 Appellant identifies eGalax_eMPIA Technology Inc. as the real party in
interest. See Appeal Br. 3.
2 The application on appeal has an effective filing date of Feb. 27, 2014.
Therefore, the Leahy-Smith America Invents Act (AIA) amendments to the
U.S. Code(§§ 102, 103) are applicable. See Manual of Patent Examining
Procedure (MPEP) § 2159.02 (The amended sections "apply to any patent
application that contains or contained at any time a claim to a claimed
invention that has an effective filing date that is on or after March 16,
2013.").
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Application 14/631,295
pending in this application. Final Act. 1; Appeal Br. 5. 3 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant's Invention
The invention at issue on appeal relates generally "to [a] transmitter,
and more particularly, to ... [a] transmitting method ... [for] transmit[ting]
an electric signal precisely representing a pressure on the transmitter without
measuring the pressure" (Spec. ,r 2). The transmitter includes a tip section
that generates a first signal corresponding to a pressure level applied to the
tip section and transmits an analog signal including the generated first
signal. Spec. ,r,r 10-12, 422, 424; Abstract.
Illustrative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A transmitter, comprising a tip section, wherein the
transmitter is configured for generating a first signal according
to a pressure level applying to the tip section and for transmitting
an electric signal including the first signal via the tip section,
wherein a property of the electric signal reflects the pressure
level, wherein the first signal is analog.
Appeal Br. 16 (Claim Appendix).
3 We refer to Appellant's Specification ("Spec.") filed Feb. 25, 2015
(claiming benefit of multiple applications: US 14/537,082 filed Nov. 10,
2014; US 62/055,995 filed Sept. 26, 2014; US 61/992,340 filed May 13,
2014; and US 61/945,397 filed Feb. 27, 2014); and Appeal Brief ("Appeal
Br.") filed Dec. 29, 2017. We also refer to the Final Office Action ("Final
Act.") mailed Aug. 31, 2017; and Examiner's Answer ("Ans.") mailed Feb.
2, 2018.
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Application 14/631,295
Rejections on Appeal4
1. The Examiner rejects claims 1 and 12 on the ground of
nonstatutory obviousness-type double patenting over claims 1 and 18 of co-
pending US Application No. 14/537,082 ("'082 Application"). See Final
Act. 2-5.
2. The Examiner rejects claims 1, 2, 12, 13, and 20 under 35
U.S.C. § 103 as being unpatentable over Mercea et al. (US 2014/0160088
Al, published June 12, 2014 (filed Dec. 10, 2012)) ("Mercea") and Verrier
et al. (US 5,475,401, issued Dec. 12, 1995) ("Verrier"). See Final Act. 5-7.
3. The Examiner rejects claims 3-5, 8-10, and 14--19 under 35
U.S.C. § 103 as being unpatentable over Mercea, Verrier, and Ahn et al. (US
2013/0249823 Al, published Sept. 26, 2013) ("Ahn"). See Final Act. 7-13.
4. The Examiner rejects claims 6, 7, and 11 under 35 U.S.C. § 103
as being unpatentable over Mercea, Verrier, Ahn, and Kremin et al. (US
2012/0105362 Al, published May 3, 2012) ("Kremin"). See Final Act. 13-
15.
ISSUES
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusions, the issues before us follow:
1. Did the Examiner err in determining that claims 1 and 18 of the
'082 Application would have taught the disputed limitations of independent
claims 1 and 12?
4 The Examiner rejects claims 1 and 12 on the ground of nonstatutory
obviousness-type double patenting over claims 1 and 18 of the '082
Application. The '082 Application has now issued as US Patent No.
9,851,816 B2.
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Application 14/631,295
2. Did the Examiner err in determining the combination of Mercea
and Verrier would have taught or suggested a tip section "generating a first
signal according to a pressure level applying to the tip section" and
"transmitting an electric signal including the first signal ... the electric
signal ... is analog" as within the meaning of Appellant's claim 1 and the
commensurate limitations of Appellant's claims 12 and 20?
ANALYSIS
The Double Patenting Rejection of Claims 1 and 12
The Examiner rejects independent claim 1 (as well as independent
claim 12) on the ground of nonstatutory obviousness-type double patenting
over claims 1 and 18 of the '082 Application. See Final Act. 2-5; Ans. 5.
Appellant contends that the '082 Application does not teach all the
limitations of claims 1 and 12. See Appeal Br. 14. Specifically, Appellant
contends claims 1 and 18 of the '082 Application do not describe "wherein
the first signal is analog" (Appeal Br. 14 (emphasis omitted)).
We agree with Appellant that the Examiner-cited claims ( claims 1 and
18) of the '082 Application (see Final Act. 2-5; Ans. 5) do not recite or
describe an analog pressure signal. See Appeal Br. 14. As shown in the
Examiner's rejection, the claims of the instant application and the claims of
the '082 Application have different and distinct scopes. See Final Act. 4.
Claim 1 of the '082 Application recites "a tip section ... output[ting] an
electric signal" that corresponds to pressure applied to the elements. Final
Act. 4. Claim 1 of the instant application recites "[a] transmitter, comprising
a tip section, ... for generating a first signal according to a pressure level
appl[ied] to the tip section and for transmitting an electric signal including
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the first signal via the tip section" where the "first signal is analog." Claim 1
of the '082 Application recites outputting a signal, but does not recite
transmitting a signal including an analog pressure signal. Similarly, claim
18 of the '082 Application recites "[a] method for controlling a transmitter, .
. . compris[ing] ... a tip section ... and transmitting an electric signal via
the tip section" that corresponds to pressure applied to the elements. Final
Act. 4. Claim 18 of the '082 Application does not recite transmitting a
signal including an analog pressure signal. Consequently, we find that
claims 1 and 18 of the '082 Application do not render obvious Appellant's
claims 1 and 12.
The Obviousness Rejection of Claims 1, 2, 12, 13, and 20
The Examiner rejects independent claim 1 (as well as independent
claims 12 and 20) as being obvious in view of Mercea and Verrier. See
Final Act. 5-7; Ans. 3--4. Appellant contends that the combination of
Mercea and Verrier does not teach the disputed limitations of claim 1. See
Appeal Br. 10-13. Specifically, Appellant contends that the "the claimed
invention transmits an electric signal via its tip, and this tip-transmitted
electric signal must include the analog first signal that corresponds to the
pressure on the tip" (Appeal Br. 10). Appellant further contends that the
Examiner cited portions of Mercea and Verrier do not describe the recited
tip-transmitted electric signal including the first signal that is analog. See
Appeal Br. 10-13. Appellant explains that "Mercea does not disclose
transmitting the analog signal via its tip" (Appeal Br. 10), rather "Mercea
only transmits a digital signal via its tip" (Appeal Br. 11 ). Appellant further
explains that "Verrier does not create or carry an electrical signal via its tip;"
instead, "Verrier' s electrical signal [originates] from [Verrier' s] pressure
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transducer" and "Verrier' s antenna[, which is] ... downstream from
[Verrier's] analog-to-digital converters ... carries a digital signal." Appeal
Br. 12.
We agree with Appellant that the Examiner-cited portions of Mercea
and Verrier (see Final Act. 5-7; Ans. 3--4 (citing Verrier, col. 6, 11. 43-53;
Figs. IA, 2C, 3)) do not describe a tip-transmitted electric signal including a
first signal that is analog. See Appeal Br. 10-13. As explained by Appellant
(supra), the signal created and transmitted in both Mercea and Verrier is
digital. The Examiner does not sufficiently explain how the cited portions of
Mercea and Verrier teach the disputed feature of Appellant's claim 1 or how
Verrier may be combined with Mercea to teach or suggest this feature.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combination of Mercea and Verrier
renders obvious Appellant's claim 1. Independent claims 12 and 20 include
limitations of commensurate scope. Claims 2 and 13 depend on, and stand
with, claims 1 and 12, respectively.
The Obviousness Rejection of Claims 3-11 and 14-19
The Examiner rejects dependent claims 3-11 and 14--19 as obvious in
view of Mercea and Verrier in combination with Ahn and/or Kremin. See
Final Act. 7-15. The Examiner does not suggest, and we do not find, that
the additional references (Ahn or Kremin) cure the deficiencies of Verrier in
combination with Mercea (supra). Therefore, we reverse the Examiner's
obviousness rejections of dependent claims 3-11 and 14--19, for the same
reasons set forth with respect to claim 1 (supra).
CONCLUSION
The Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 103.
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DECISION
We reverse the Examiner's rejection of claims 1-20.
REVERSED
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