15372589 - (D) (P.T.A.B. Oct. 27, 2020)

Imagination Technologies Limited

Patent Trials and Appeals BoardOct 27, 2020

15372589 - (D) (P.T.A.B. Oct. 27, 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. 15/372,589 12/08/2016 Steven Blackmon 2645-0244US02 1013 125968 7590 10/27/2020 Potomac Law Group PLLC (IMGTEC) 8229 Boone Boulevard Suite 430 Vienna, VA 22182 EXAMINER MA, TIZE ART UNIT PAPER NUMBER 2613 NOTIFICATION DATE DELIVERY MODE 10/27/2020 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): Eofficeaction@appcoll.com Patents@potomaclaw.com vdeluca@potomaclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEVEN BLACKMON, LUKE T. PETERSON, CUNEYT OZDAS, and STEVEN J. CLOHSET ____________ Appeal 2019-003738 Application 15/372,589 Technology Center 2600 ____________ Before JAMES R. HUGHES, CATHERINE SHIANG, and JAMES W. DEJMEK, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge CATHERINE SHIANG. Opinion dissenting in part filed by Administrative Patent Judge JAMES W. DEJMEK. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–10 and 13–20, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies Imagination Technologies Limited as the real party in interest. Appeal Br. 1. Appeal 2019-003738 Application 15/372,589 2 We reverse. STATEMENT OF THE CASE Introduction The present invention relates to “foveated rendering.” Title (emphasis omitted). In particular, [i]t may be desired to render images at a high resolution with a high geometric LOD [(level of detail)] in real-time with a high frame rate, but the processing requirements for achieving this might be impractical on some devices (e.g. mobile devices such as smart phones, tablets or head mounted displays) which might have limited processing resources and power supplies. To address this, the idea of foveated rendering may be used . . . . . . . . Gaze tracking (or “eye tracking”) may be used to determine where a user is looking to thereby determine where the foveal region 104 is in relation to the image 102. The foveal region 104 can be rendered at a high resolution and high geometric LOD, whereas the rest of the image 102 can be rendered at a lower resolution and lower geometric LOD. The rendered foveal region 104 can then be blended with the rendering of the rest of the image 102 to form a rendered image. Spec. 2:4–24. Claim 1 is exemplary: 1. A processing system configured to render one or more images of a scene, the processing system comprising: rendering logic configured to process graphics data to generate an initial image comprising pixel values representing an image of the scene; region identification logic configured to identify one or more regions of the initial image; ray tracing logic configured to perform ray tracing to determine ray traced data for the identified one or more regions of the initial image; and update logic configured to update the initial image using the determined ray traced data for the identified one or more Appeal 2019-003738 Application 15/372,589 3 regions of the initial image by adding detail to the identified one or more regions of the initial image, to thereby determine an updated image to be outputted for display; wherein the rendering logic and the ray tracing logic are configured to operate asynchronously; and wherein the ray tracing logic, the region identification logic and the update logic are configured to operate at a first frame rate and the rendering logic is configured to operate at a second frame rate, said first frame rate being faster than said second frame rate. References and Rejections2 Claims Rejected 35 U.S.C. § Reference(s)/Basis 20 112(a) Written Description 20 112(a) Enablement 20 112(b) Indefiniteness 1, 2, 4, 17–20 103 Kim (US 2016/0071311 A1; publ. Mar. 10, 2016), Hempel (US 2008/0211804 A1; publ. Sept. 4, 2008), Guenter (US 2014/0247277 A1; publ. Sept. 4, 2014) 3, 5, 7, 8, 10 103 Kim, Hempel, Guenter, Nilsson (E. Nilsson, Foveated Real-Time Ray Tracing, 1–4 (Feb. 11, 2015) (https://github.com/CaterHatterPillar/fov_rt_et) (last visited May 4, 2017)) 6 103 Kim, Hempel, Nilsson, Guenter, D’Amico (US 9,261,959 B1; iss. Feb. 16, 2016) 9 103 Kim, Hempel, Nilsson, Guenter, Newcombe (US 2012/0194644 A1; publ. Aug. 2, 2012) 13 103 Kim, Hempel, Guenter, Li (US 9,240,069 B1; iss. Jan. 19, 2016) 2 Throughout this Opinion, we refer to (1) Final Office Action dated July 6, 2018 (“Final Act.”); (2) Appeal Brief dated Dec. 10, 2018 (“Appeal Br.”); (3) Examiner’s Answer dated Feb. 8, 2019 (“Ans.”); and (4) Reply Brief dated Apr. 8, 2019 (“Reply Br.”). Appeal 2019-003738 Application 15/372,589 4 Claims Rejected 35 U.S.C. § Reference(s)/Basis 14, 15 103 Kim, Hempel, Guenter, Mejdrich (US 2010/0188396 A1, publ. July 29, 2010) 16 103 Kim, Hempel, D’Amico ANALYSIS Written Description The Examiner asserts claim 20 fails to comply with the written description requirement with respect to the preamble “[a] non-transitory computer readable storage medium having stored thereon a computer readable dataset description of an integrated circuit that, when processed in an integrated circuit manufacturing system, causes the integrated circuit manufacturing system to manufacture a processing system comprising . . . .” See Final Act. 8–9 (emphasis added). In particular, the Examiner determines “[t]he specification and the claim have not provided sufficient detail information to show the possession of the claimed ‘integrated circuit manufacturing system’ by the inventors.” Final Act. 9. We disagree. To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed” and the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. Id. (alteration in original) (internal quotations and citations omitted). Appeal 2019-003738 Application 15/372,589 5 The Federal Circuit has recognized that, in some instances, the “more telling question is whether the specification shows possession by the inventor of how [the recited claimed functionality] is achieved. Vasudevan Software v. MicroStrategy, Inc., 782 F.3d 671, 683 (Fed. Cir. 2015). It is insufficient for the specification to simply describe a result, because “[t]he written description requirement is not met if the specification merely describes a ‘desired result.’” Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349). In this case, we agree with Appellant that the Specification reasonably conveys to skilled artisans that, as of the filing date, Appellant possessed the claimed invention with respect to the preamble of claim 20. See Ariad Pharms., 598 F.3d at 1351; Appeal Br. 8–9. In particular, the original claim 20, which is a part of the Specification, includes a substantively similar preamble. See original claim 20. And the Federal Circuit has explained “a claim is part of the disclosure,” that point is of significance principally in the situation where a patent application as filed contains a claim which specifically discloses something not disclosed in the descriptive part of the specification (claims being technically part of the “specification,” 35 [U.S.C. §] 112, 2d par.), in which case the applicant may amend the specification without being charged with adding “new matter,” within the meaning of § 132. In re Benno, 768 F.2d 1340, 1346 (Fed. Cir. 1985). Further, as pointed out by Appellant (Appeal Br. 9), the Specification describes an integrated circuit manufacturing system. See, e.g., Spec. 43:16–18 (“Figure 11 shows an example of an integrated circuit (IC) manufacturing system 1102 which comprises a layout processing system 1104 and an integrated circuit generation system 1106.”); see also Spec. 43–45. Appellant’s Specification does more than merely set forth a desired result. Rather, the Specification Appeal 2019-003738 Application 15/372,589 6 describes, generally, a system for manufacturing an integrated circuit using well-known techniques such as generating a representation of an integrated circuit to be manufactured using a hardware description language, generating a circuit layout based on the representation, forming a mask based on the circuit layout, and fabricating the integrated circuit using the mask. See Spec. 42:18–45:20. Claim 20’s “dataset description of an integrated circuit” can be processed using the above-referenced techniques to produce (manufacture) an integrated circuit (the “processing system”) to perform the functions recited in claim 20. Therefore, the original claim 20 and the cited excerpts of the Specification describe the invention with respect to the preamble of claim 20. As a result, the “specification . . . describe[s] an invention understandable to th[e] skilled artisan and show[s] that the inventor actually invented the invention claimed” with respect to “[a] non-transitory computer readable storage medium having stored thereon a computer readable dataset description of an integrated circuit that, when processed in an integrated circuit manufacturing system, causes the integrated circuit manufacturing system to manufacture a processing system comprising . . . .”3 Ariad Pharms., 598 F.3d at 1351. Accordingly, we reverse the Examiner’s written description rejection of claim 20 under 35 U.S.C. § 112(a). 3 If prosecution reopens, we leave it to the Examiner to determine whether claim 20 complies with 35 U.S.C. § 101 (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”) (emphasis added). Appeal 2019-003738 Application 15/372,589 7 Enablement The Examiner asserts claim 20 fails to comply with the enablement requirement with respect to “causes the integrated circuit manufacturing system to manufacture a processing system” in the preamble (emphases added). See Final Act. 9. In particular, the Examiner determines “[t]here is no sufficient description of the integrated circuit manufacturing system and how to manufacture such a processing system in the specification to enable a user to perform the invention without undue experimentation.” Final Act. 9. We disagree. The test of enablement is whether without undue experimentation, one skilled in the art could make or use the invention from the disclosures coupled with information known in the art. See In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012); U.S. v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). As discussed above, the Specification describes an integrated circuit manufacturing system. Further, Appellant has provided evidence that “computer readable dataset description of an integrated circuit” and “an integrated circuit manufacturing system” were well known in the art. See Appeal Br. 6–9; see also Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“a patent need not teach, and preferably omits, what is well known in the art”). The Examiner does not persuasively address Appellant’s evidence. As a result, we agree with Appellant that one skilled in the art would know how to make the invention “causes the integrated circuit manufacturing system to manufacture a processing system” without undue experiment. See Appeal Br. 8–9. Accordingly, we reverse the Examiner’s enablement rejection of claim 20 under 35 U.S.C. § 112(a). Appeal 2019-003738 Application 15/372,589 8 Indefiniteness The Examiner rejects claim 20 under 35 U.S.C. § 112(b) as being indefinite with respect to the preamble “[a] non-transitory computer readable storage medium having stored thereon a computer readable dataset description of an integrated circuit that, when processed in an integrated circuit manufacturing system, causes the integrated circuit manufacturing system to manufacture a processing system comprising . . . .” See Final Act. 9–10. In particular, the Examiner determines “[i]t is unclear how a computer readable dataset description of an integrated circuit causes the integrated circuit manufacturing system to manufacture a processing system. Therefore the scope of the claim may not be determined.” Final Act. 10. We disagree. “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” 35 U.S.C. § 112(b). We apply the indefiniteness test approved by In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) (per curiam): “[a] claim is indefinite when it contains words or phrases whose meaning is unclear,” and “claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms.” See Packard, 751 F.3d at 1310, 1313; Ex parte McAward, Appeal No. 2015- 006416, 2017 WL 3669566, at *8–11 (PTAB Aug. 25, 2017) (precedential) (explaining because of different approaches to indefiniteness before the PTAB and the courts, the PTAB continues to follow Packard after the Supreme Court’s Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) decision). Appeal 2019-003738 Application 15/372,589 9 [W]hen the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). Packard, 751 F.3d at 1311. The preamble of claim 20 recites: A non-transitory computer readable storage medium having stored thereon a computer readable dataset description of an integrated circuit that, when processed in an integrated circuit manufacturing system, causes the integrated circuit manufacturing system to manufacture a processing system comprising . . . . Claim 20. The Specification describes an integrated circuit manufacturing system. See, e.g., Spec. 43:16–18 (“Figure 11 shows an example of an integrated circuit (IC) manufacturing system 1102 which comprises a layout processing system 1104 and an integrated circuit generation system 1106.”); see also Spec. 43–45. As discussed above, “computer readable dataset description of an integrated circuit” and “an integrated circuit manufacturing system” were well known in the art. Therefore, one skilled in the art would understand the meaning of “a computer readable dataset description of an integrated circuit that, when processed in an integrated circuit manufacturing system, causes the integrated circuit manufacturing system to manufacture a processing system.” In short, the Examiner has not shown the meaning of the preamble is unclear to one skilled in the art. See Packard, 751 F.3d at 1310. Appeal 2019-003738 Application 15/372,589 10 Accordingly, we reverse the Examiner’s indefiniteness rejection of claim 20 under 35 U.S.C. § 112(b). Obviousness4 We have reviewed the Examiner’s rejections in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contentions that the Examiner erred in determining the cited portions of Kim and Hempel collectively teach “rendering logic configured to process graphics data to generate an initial image comprising pixel values representing an image of the scene,” as recited in independent claim 1. See Appeal Br. 11–12; Reply Br. 4–5. In particular, we concur with Appellant’s contentions that one skilled in the art would not have been motivated to modify Kim with the teachings of Hempel, as proffered by the Examiner. See Appeal Br. 11–12; Reply Br. 4–5. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see also Metalcraft of Mayville, Inc., v. The Toro Co., 848 F.3d 1358, 1367 (2017) (Fed. Cir. 2017) (“Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against. . . . [W]e cannot 4 Appellant raises additional arguments regarding the prior art rejections. Because the identified issue is dispositive of the appeal with respect to the prior art rejections, we do not address the additional arguments. Appeal 2019-003738 Application 15/372,589 11 allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). Further, the USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made” and that articulation requirement “appl[ies] with equal force to the . . . motivation to combine analysis.” In re Nuvasive, Inc., 842 F.3d 1376, 1382–83 (Fed. Cir. 2016). When “motivation to combine . . . is disputed,” USPTO “must articulate a reason why a PHOSITA would combine the prior art references.” Id. The Examiner cites the combined teachings of Kim and Hempel for teaching the rendering limitation. See Final Act. 11–12. In particular, the Examiner finds “Kim et al[.] does not explicitly teach an initial image comprising pixel values representing an image of the scene” (Final Act. 12), and modifies Kim’s rendering map generator with Hempel’s feature. See Final Act. 12. The Examiner determines: it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the systems as shown in Kim et al[.] and Hempel et al[.] by using an initial image comprising pixel values representing an image of the scene . . . . Final Act. 13. We agree with Appellant that the Examiner has not provided the requisite rationale for combining the teachings of Kim and Hempel. See Appeal Br. 11–12; Reply Br. 4–5. In particular, we agree with Appellant that the Examiner’s proposed combination would “not make technological sense”: the assertion does not make technological sense. Kim would not use a rasterized image of a scene instead of the rendering Appeal 2019-003738 Application 15/372,589 12 map, because the rendering map in Kim is used to identify a ray density to be used when rendering different regions of the image. By contrast a rasterized image of the scene would not identify ray densities, and as such would be useless for performing the function of the rendering map in the system of Kim. Appeal Br. 11. The Examiner’s response that “[r]eplacing the map/image in Kim et al by the image in Hempel et al is a simple substitution” (Ans. 8) does not persuasively address Appellant’s above arguments. As a result, the Examiner has not provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” as required by KSR. See KSR, 550 U.S. at 418. Because the Examiner fails to provide sufficient support for the legal conclusion of obviousness, we are constrained by the record to reverse the Examiner’s rejection of independent claim 1, and independent claims 17 and 20 for similar reasons. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (we will not resort to speculation or assumptions to cure deficiencies in the Examiner’s fact finding or reasoning). We also reverse the Examiner’s rejections of corresponding dependent claims 2–10, 13–16, 18, and 19. Although the Examiner cites additional references for rejecting some dependent claims, the Examiner has not shown the additional references overcome the deficiency discussed above in the rejection of claim 1. Appeal 2019-003738 Application 15/372,589 13 CONCLUSION We reverse the Examiner’s decision rejecting claim 20 under 35 U.S.C. §§ 112(a), (b) (written description, enablement, and indefiniteness). We reverse the Examiner’s decision rejecting claims 1–10 and 13–20 under 35 U.S.C. § 103. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 20 112(a) Written Description 20 20 112(a) Enablement 20 20 112(b) Indefiniteness 20 1, 2, 4, 17– 20 103 Kim, Hempel, Guenter 1, 2, 4, 17– 20 3, 5, 7, 8, 10 103 Kim, Hempel, Guenter, Nilsson 3, 5, 7, 8, 10 6 103 Kim, Hempel, Guenter, Nilsson, D’Amico 6 9 103 Kim, Hempel, Guenter, Nilsson, Newcombe 9 13 103 Kim, Hempel, Guenter, Li 13 14, 15 103 Kim, Hempel, Guenter, Mejdrich 14, 15 16 103 Kim, Hempel, Guenter, D’Amico 16 Overall Outcome 1–10, 13–20 REVERSED Appeal 2019-003738 Application 15/372,589 14 DEJMEK, Administrative Patent Judge, dissenting in part. I respectfully dissent from the Majority’s Decision reversing the rejection of claim 20 under 35 U.S.C. § 112(a) for lack of written description support. Claim 20 recites, in relevant part, “[a] non-transitory computer readable storage medium having stored thereon a computer readable dataset description of an integrated circuit that, when processed in an integrated circuit manufacturing system, causes the integrated circuit manufacturing system to manufacture a processing system . . . .” As an initial matter, I understand claim 20 to merely recite a non- transitory computer readable storage medium containing a computer readable dataset description of an integrated circuit. I would consider the computer readable dataset description of an integrated circuit to be merely printed matter. Moreover, claim 20 does not require that the dataset description be processed. As such, I would find that the computer readable dataset description of an integrated circuit (i.e., the printed matter) does not have a functional relationship to the substrate (i.e., the non-transitory computer readable storage medium). Absent a functional relationship between the printed matter and its substrate, printed matter falls outside the scope of statutory subject matter under 35 U.S.C. § 101. AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064 (Fed. Cir. 2010) cf. In re Miller, 418 F.2d 1392, 1396 (CCPA 1969). Thus, consistent with Decision 6 n.3, in the event of further prosecution, I would encourage the Examiner to consider whether claim 20 recites statutory subject matter under 35 U.S.C. § 101. Although the Board Appeal 2019-003738 Application 15/372,589 15 is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th ed. Rev. 08.2017, Jan. 2018). Regarding the written description rejection of claim 20, I would agree with the Examiner that the Specification lacks written description support. Under 35 U.S.C. § 112(a), to satisfy the written description requirement, “the disclosure of the application relied upon [must] reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“ [T]he applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.”). “[T]he written description requirement is satisfied by the patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.”’ Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). It is not enough to satisfy the written description requirement that the claimed subject matter would have been obvious to a person of ordinary skill in view of the written description. See ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009); see also Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566–67 (Fed. Cir. 1997) (explaining that “an applicant complies with the written description Appeal 2019-003738 Application 15/372,589 16 requirement by describing the invention, with all its claimed limitations, not that which makes it obvious” (internal quotation marks omitted)). In response to the Examiner’s rejection, Appellant states “[a] person skilled in the art, having read the present application, would know how to implement the invention defined in claim 20 without any undue burden or inventive skill.” Appeal Br. 8. Further, Appellant states “as it is undisputed that a person skilled in the art would be able to make and use the processing system itself as recited in claim 1, a person skilled in the art would be able to use a well-known and understood hardware description language (e.g. RTL), to write a computer readable description of the processing system recited in claim 1, to make and use the computer readable medium of claim 20 (which is what is recited by claim 20). I understand Appellant’s arguments to suggest that it would have been obvious to an ordinarily skilled artisan how to create a dataset description of an integrated circuit that (when processed and created) performs the functions recited in claim 20. As discussed above, the written description requirements are not satisfied merely because it would have been obvious to a skilled artisan to perform that which is claimed. See e.g., ICU Medical, 558 F.3d at 1377. Turning to the Specification as identified by Appellant (see Appeal Br. 8), I again do not find adequate written description support. Rather, the identified portion of the Specification merely describes at a high level a generic IC generation system, but fails to describe the creation of a dataset description to perform the recited functions. The Majority’s decision appears to find adequate written description support in the original claims. See Decision 5–6. Appeal 2019-003738 Application 15/372,589 17 As set forth in the MPEP (see MPEP § 2163), “it is now well accepted that a satisfactory description may be found in originally-filed claims or any other portion of the originally-filed specification. See In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980); In re Gardner, 475 F.2d 1389, 177 USPQ 396 (CCPA 1973); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). However, that does not mean that all originally-filed claims have adequate written support. The specification must still be examined to assess whether an originally-filed claim has adequate support in the written disclosure and/or the drawings.” Additionally, “issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention at the time of filing.” I would not find that similar language in an original claim provides adequate written description support as a per se rule. Instead, the Specification must still provide support for the originally filed claims. As discussed above, I do not find the Specification provides the requisite support. For the foregoing reasons, I respectfully dissent from the Majority’s decision reversing the Examiner’s rejection of claim 20 under 35 U.S.C. § 112(a) for lack of adequate written description.