Ex Parte GEREN et al

Patent Trial and Appeal Board

Nov 29, 2018

13733930 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/733,930 01/04/2013
120226 7590 12/03/2018
Patterson & Sheridan - The Boeing Company
c/o Patterson & Sheridan, LLP
24 GREENWAY PLAZA, SUITE 1600
Houston, TX 77046
FIRST NAMED INVENTOR
William Preston GEREN
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.
12-0621-US-NP (073443) 7329
EXAMINER
WARD, THOMAS JOHN
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
P AIR_eofficeaction@pattersonsheridan.com
PatentAdmin@boeing.com
PSDocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM PRESTON GEREN, STEPHEN MOORE,
ROBERT J. MILLER, MARK NEGLEY, and SCOTT D. BILLINGS
Appeal2018-003552
Application 13/733,930 1
Technology Center 3700
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
MATTHEWS. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting 1-3, 5-12, 14--18, 27-29, and 31-35. Appeal
Br. 1. Claims 4, 13, 19-26, and 30 have been cancelled. Id., Claims App.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 The real party in interest is The Boeing Company. Appeal Br. 3.
Appeal2018-003552
Application 13/733,930
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 10 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A heating apparatus configured to heat a structure, the heating
apparatus comprising:
a housing member;
a plurality of heating elements disposed within the housing
member;
a plurality of resonant frequency power sources attached
to the housing member and coupled with the plurality of heating
elements; and
at least one controller configured to:
determine, based on received temperature
information associated with the plurality of heating
elements, a plurality of resonant frequencies
corresponding to the plurality of heating elements; and
dynamically control, for each of the plurality of
resonant frequency power sources, a corresponding drive
frequency on and off a respective resonant frequency of
the plurality of resonant frequencies to thereby meet a
desired temperature profile across the structure.
Rejections
I. Claims 1-3, 5-12, 14--18, 27-29, and 31-35 stand rejected
under 35 U.S.C. § 112(a) or (pre-AIA) 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
II. Claims 1, 2, 10, 27-29, 31, 32, and 35 stand rejected under
(pre-AIA) 35 U.S.C. § I03(a) as unpatentable over Larson (US 6,163,907,
issued Dec. 26, 2000) and Kagan (US 2006/0076338 Al, published Apr. 13,
2006).
2
Appeal2018-003552
Application 13/733,930
III. Claims 3, 5-9, 12, and 14--18 stand rejected under (pre-AIA)
35 U.S.C. § I03(a) as unpatentable over Larson, Kagan, and Carr
(US 2004/0069769 Al, published Apr. 15, 2004).
IV. Claim 11 stands rejected under (pre-AIA) 35 U.S.C. § I03(a) as
unpatentable over Larson, Kagan, and Crowley (US 4,271,350, issued
June 2, 1981).
V. Claims 33 and 34 stand rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Larson, Kagan, and Brekkestran et al.
(US 5,105,067, issued Apr. 14, 1992) ("Brekkestran").
ANALYSIS
Rejection I
Independent claim 1 calls for a heating apparatus that includes "at
least one controller configured to ... determine, based on received
temperature information associated with the plurality of heating elements, a
plurality of resonant frequencies corresponding to the plurality of heating
elements." Appeal Br., Claims App. Independent claim 10 includes a
substantially similar limitation. Id.
The Examiner determines that claims 1 and 10 fail to comply with the
enablement requirement because the aforementioned limitation "is not
described in the specification in a way where examiner understands how
temperature information is received from plurality of heating element[s]."
Final Act. 2-3 ( emphasis added); Ans. 11. Also, the Examiner determines
that "[t]he [S]pecification does not describe in detail how temperature
information is received from [a] plurality of heating element[ s] without the
recitation of any structure which detects the temperature information
3
Appeal2018-003552
Application 13/733,930
associated with [the] plurality of [heating] elements." Final Act. 3. The
Examiner rejects dependent claims 3 1 and 3 2 for a similar reason as claim 1 ;
i.e., the claims recite "received temperature information." See id.
The Examiner's rejection fails to explain why the disclosure, as filed,
is not sufficiently complete to enable one of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See US. v.
Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). Notably, 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).
First, we are not convinced the Examiner uses the proper standard for
the rejection because the support for the rejection suggests that the Examiner
- instead of one of ordinary skill in the art - is the relevant measure of
making and using the claimed invention without undue experimentation.
See Appeal Br. 13; Reply Br. 4.
Second, the Examiner addresses, albeit briefly, only a few of the
relevant factors concerning undue experimentation: ( 4) the nature of the
invention, (5) the state of the prior art, and (8) the breadth of the claims.
Ans. 11-12. For factor (5) the Examiner states, "[t]he state of the prior art is
that an element such as a temperature sensor would be used to obtain
temperature information." Id. at 12. This statement contradicts other
statements made in the Answer concerning factors (4) and (8). See Reply
4
Appeal2018-003552
Application 13/733,930
Br. 4--5. Put simply, if one of ordinary skill in the art understands that the
claimed determination could be performed by a controller with the aid of
information from a temperature sensor, then one of ordinary skill in the art
would have been able to make and use the claimed invention without undue
experimentation. See also Spec. ,r,r 19-- 20. The other statements
concerning factors (4) and (8) mentioned by the Examiner suggest that the
determination of non-enablement was based on the lack of explicit recitation
of an element that senses or detects temperature. See Ans. 11-12. In this
case, however, the lack of an element explicitly recited in the claims does
not outweigh the knowledge of one of ordinary skill in the art.
Third, the remaining factors have not been addressed directly by the
Examiner; i.e., (1) the quantity of experimentation necessary; (2) the amount
of direction or guidance presented; (3) the presence or absence of working
examples; ( 6) the relative skill of those in the art; and (7) the predictability
or unpredictability of the art.
Thus, we do not sustain the Examiner's rejection of claims 1-3, 5-12,
14--18, 27-29, and 31-35 as failing to comply with the enablement
requirement.
Rejections 11-V
Independent claim 1 calls for a heating apparatus that includes "at
least one controller configured to ... dynamically control, for each of the
plurality of resonant frequency power sources, a corresponding drive
frequency on and off a respective resonant frequency of the plurality of
resonant frequencies to thereby meet a desired temperature profile across the
5
Appeal2018-003552
Application 13/733,930
structure." Appeal Br., Claims App. Independent claim 10 includes a
substantially similar limitation. Id.
For the rejection of claims 1 and 10, the Examiner does not rely on
Larson to teach the claimed controller; instead, the Examiner relies on
Kagan. Final Act. 5. More specifically, the Examiner finds "Kagan teaches
a power supply 10 with a monitoring and control circuit 15 (controller,
Fig. 1) which provides resonant frequency power to a load by determining
the resonant resistance (paragraph 0069) and dynamically control heating
(paragraph 0011, lines 1-2) which would be associated a certain
temperature."' Id.
The Appellants argue "Kagan plainly does not disclose 'dynamically
control[ling the] drive frequency on and off a respective resonant
frequency . .. to thereby meet a desired temperature profile .... " Appeal
Br. 19 ( alteration in original). The Appellants' argument is persuasive. In
this case, we fail to understand how the Examiner adequately supports the
finding that Kagan discloses a controller configured to dynamically control a
drive frequency on and off a respective resonant frequency to thereby meet a
desired temperature profile as required by claims 1 and 10. See Reply Br. 5.
Also, we fail to understand how the Examiner's Answer includes a
meaningful response to the Appellants' argument. See Ans. 12-13.
Thus, we do not sustain the Examiner's rejection of claims 1, 2, 10,
27-29, 31, 32, and 35 as unpatentable over Larson and Kagan.
The remaining rejections based on Larson and Kagan in combination
with Carr, Crowley, or Brekkestran rely on the same inadequately supported
finding discussed above. The inadequately supported finding is not cured by
6
Appeal2018-003552
Application 13/733,930
the additional findings and/or reasoning of the remaining rejections. Thus,
we do not sustain the rejections of claims 3, 5-9, 11, 12, 14--18, 33, and 34.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-3, 5-12,
14--18, 27-29, and 31-35.
REVERSED
7