Ex Parte Lin et al

Patent Trial and Appeal Board

Oct 25, 2017

13966856 (P.T.A.B. Oct. 25, 2017)

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.
13/966,856 08/14/2013 Chia-Hong LIN 0941/2927PUS1 5363
60601 7590 10/25/2017
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
KARACSONY, ROBERT
ART UNIT PAPER NUMBER
2845
MAIL DATE DELIVERY MODE
10/25/2017 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 CHIA-HONG LIN, CHANG-HSIU HUANG,
I-SHAN CHEN, GUO-CHENG TSAI, and CHUN-CHIA KUO
Appeal 2017-003381
Application 13/966,856
Technology Center 2800
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and AVELYN
M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 In our Decision below we refer to the Specification filed October 14, 2013
(“Spec.”), the Final Office Action appealed from dated November 6, 2015
(“Final Act.”), the Appeal Brief filed March 29, 2016 (Appeal Br.), the
Examiner’s Answer dated November 2, 2016 (“Ans.”) and the Reply Brief
filed December 14, 2016 (“Reply Br.”).
2 Appellant is the Applicant, Wistron NeWeb Corp., which according to the
Brief, is also the real party in interest. Appeal Br. 2.
Appeal 2017-003381
Application 13/966,856
STATEMENT OF THE CASE
The subject on appeal relates to a smart electric meter. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A smart electric meter, comprising:
a body of the smart electric meter;
an antenna holder, disposed on the body, wherein the
antenna holder is annular;
an antenna stmcture, disposed on the antenna holder,
wherein the antenna structure is moveable along a
circumferential direction of the antenna holder; and
a supporting member, connected to the antenna structure,
wherein the supporting member is moveably disposed on the
antenna holder, and the supporting member moves the antenna
structure along the circumferential direction of the antenna
holder.
Appeal Br. 16 (Claims App’x).
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1—15 stand rejected under 35 U.S.C §112 first
paragraph as failing to comply with the written description
requirement. Final Act. 2.
B. Claims 1, 3, 14, and 15 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Smith.3 Id. at 3.
Appellant requests reversal of Rejections A and B. See generally
Appeal Br.
3 Smith et al., US 2006/0284784 Al, published December 21, 2006
(“Smith”).
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Application 13/966,856
OPINION
Rejection A — Written Description (claims 1—15)
The Examiner rejects claims 1—15 as failing to comply with the
written description requirement of 35 U.S.C. § 112 (a). Final Act. 2.
According to the Examiner, the claims “broadly limit[] the invention to
encompass a wide variety and arrangements of the claimed antenna holder,
antenna structure, and supporting member” but the Specification provides
support for only two embodiments. Id. at 2—3. The Examiner reasons that
because of the “numerous possibilities and arrangements” of these features,
“a person skilled in the art would not understand applicant to have invented,
and been in possession of, the invention as broadly claimed.” Id. at 3.
Appellant argues that the Examiner’s finding that the breadth of the
claims extends beyond the scope of the disclosure is applicable only where
the claims are directed to a genus and only a species is disclosed—and “only
. . . where such a genus of inventions exists.” Appeal Br. 11. Appellant
notes that “there is no fundamental exclusion against claims being broader
than the specific device disclosed in the specification.” Id. Appellant
explains that the structural relationships of the components are enumerated
and clear. Id. at 12. Appellant also contends that the Examiner failed to
make the requisite showing to challenge the adequacy of the written
description and has “disregarded the disclosure of the specification in
making this rejection.” Id.
Appellant’s arguments are persuasive of reversible error by the
Examiner. To comply with the 35 U.S.C. § 112, first paragraph, written
description requirement, the applicant’s specification must “convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
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Application 13/966,856
he or she was in possession of the invention.” Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)).
And, as explained in Bilstad v. Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir.
2004), disclosure of one species may be sufficient in predictable arts, where
the difference between members of the group is such that the person skilled
in the art would readily discern that other members of the genus would
perform similarly. See also LizardTech, Inc. v. Earth Resource Mapping,
Inc., 424 F.3d 1336, 1345—47 (Fed. Cir. 2005)(“A claim will not be
invalidated on section 112 grounds simply because the embodiments of the
specification do not contain examples explicitly covering the full scope of
the claim language. . . . [I]t is unnecessary to spell out every detail of the
invention in the specification; only enough must be included to convince a
person of skill in the art that the inventor possessed the invention.”). The
sufficiency of an application’s written description is a question of fact.
AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). To meet the initial burden of establishing a prima facie case of
unpatentability based on a lack of written description, the examiner “[must]
present[] evidence or reasons why persons skilled in the art would not
recognize in [an appellant’s] disclosure a description of the invention
defined by the claims.” In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
In this case, the Examiner has only shown that the embodiments of
illustrated by Figures 1A and 4 are narrower than the claimed subject matter
which may encompass “numerous possibilities and arrangements.” See
Final Act. 3. The Examiner, however, has not explained nor presented
evidence as to why the skilled artisan would not recognize in Appellant’s
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Application 13/966,856
Specification, a description of the claimed subject matter. Alton, 76 F.3d at
1175. Rather, the Examiner (Final Act. 3) suggests that in order to be
allowable, claim 1 must incorporate each of the limitations of dependent
claims 2—7 or 8—13.4 Thus, the Examiner’s position appears to be that to
satisfy the written description requirement the claims must be of equal scope
to the preferred embodiment. This is not the law.
Furthermore, the Examiner’s position (Ans. 3—4) that the skilled
artisan would not have understood the Appellant to be in possession of the
broader genus claimed because “[ajpplicant has not shown to have been in
possession of every specific arrangement of an antenna holder, and
antenna structure and supporting member configured to move an antenna
around the body of a meter which is what Applicant is claiming,” is equally
unavailing. In predictable arts, one species alone may be adequate where the
skilled artisan would understand that other members of the genus would
perform in a similar manner. Bilstad, 386 F.3d at 1125.
Accordingly, for the reasons discussed, Appellant persuades us that a
preponderance of the evidence does not support the Examiner’s findings of a
lack of written description in this case. We, therefore, cannot sustain the
Examiner’s rejection of claim 1, and its dependents, on this ground.
4 We note that claims 2 and 8 are actually independent claims from which
claims 6 and 7 and 9-14 depend respectively. See Appeal Br. 16—18
(Claims App’x.)
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Application 13/966,856
Rejection B—Anticipation (claims 1, 3, 14, and 15)
The Examiner rejects claims 1,3, 14 and 15 as anticipated by Smith.
Final Act. 3. The Examiner finds that Smith teaches all elements required
by the claims as shown in Figures 1—5. Id. at 3^4.
Appellant argues that “Smith fails to teach or suggest the feature of
‘an antenna structure, disposed on the antenna holder, wherein the antenna
structure is movable along a circumferential direction of the antenna holder, ’
as recited in claim[] 1.” Appeal Br. 15. Appellant contends that the
Examiner’s position that the housing 10 “is moveable relative to the cited
mounting surface is also incorrect, since it is clearly mounted.” Id.
Appellant explains that “moveable housing profiles are not in the spirit” of
Smith’s disclosure. Id.
Appellant’s arguments reveal no reversible error by the Examiner. “A
prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it
discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379
(Fed. Cir. 2012) (citing Verizon Servs. Corp. v. CoxFibernet Va., Inc., 602
F.3d 1325, 1336—37 (Fed. Cir. 2010)). In this instance, and as the Examiner
finds (Final Act. 3—4), Smith teaches a smart electric meter having an
antenna structure connected to a supporting member where both the
supporting member and antenna structure are moveable along a
circumferential direction of the antenna holder. Final Act. 4. Smith
similarly teaches an antenna structure 50 held by a supporting structure 10
where the supporting structure and antenna structure are moveable in a
circumferential direction relative to the antenna holder 170. According to
Smith, “[t]he antenna 50 fits within the recess 40 [of housing/support
structure 10] of FIG. 1 and is captured at the comers by tab portions 60.”
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Application 13/966,856
Smith 122. Smith continues to explain that “the housing 10 allows
optimization of the field radiation pattern by allowing the installer to rotate
the housing 10 about the perimeter of the metering device 150 until the
transmitter gain performance or reception of the carrier signal from the base
station is maximized.” Id. 132 (emphasis added). Appellant’s argument
that “when fully assembled, the antenna [of Smith] is fixed to the wall as
shown . . . [and] none of the structures cited by the Examiner are movable,”
is unconvincing. Appeal Br. 14. As the Examiner recognizes (Ans. 5) the
claims are broad enough to encompass the teachings of Smith and are
written using “comprising” language. Furthermore, Smith does not require
permanently fixing the housing 10 by mounting with screws. Rather, “the
housing may be configured to resiliently clamp itself to internal meter
structures, thereby securing the antenna in a fixed orientation.” Smith 19;
see also id. 133.
Therefore, on this record, we sustain the Examiner’s rejection of
claims 1, 3, 14, 15 as obvious in over Smith.
CONCLUSION
Appellant identified reversible error in the Examiner’s rejection of
claims 1—15 under 35 U.S.C §112(a) as failing to comply with the written
description requirement.
Appellant failed to identify reversible error in the Examiner’s
rejection of claims 1,3, 14, and 15 under 35 U.S.C. § 102(b) as anticipated
by Smith.
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Application 13/966,856
DECISION
For the above reasons, the Examiner’s rejection of claims 1,3, 14 and
15 is affirmed and the rejection of claims 2 and 4—13 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
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