KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Apr 6, 2020

14441644 - (D) (P.T.A.B. Apr. 6, 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.
14/441,644 05/08/2015 Matthias Wendt 2012P01030WOUS 3078
138325 7590 04/06/2020
Signify Holding B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
KINKEAD, ARNOLD M
ART UNIT PAPER NUMBER
2849
NOTIFICATION DATE DELIVERY MODE
04/06/2020 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):
Gigi.Miller@signify.com
jo.cangelosi@signify.com
kim.larocca@signify.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS WENDT
and HARALD JOSEF GUNTHER RADERMACHER

Appeal 2020-000938
Application 14/441,644
Technology Center 2800
Before BEVERLY A. FRANKLIN, MONTÉ T. SQUIRE, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2020-000938
Application 14/441,644

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–4 and 6–16.1 See Final Act. 3–12.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to “a track, an electrical device, an electrical
connector and a position determining device for the power distribution track
system.” Spec. 1:7–8. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A power distribution track system for distributing power
via a track, the power distribution track system comprising:
the track, wherein the track comprises position markers at
different longitudinal positions along the track, wherein the
position markers represent positional information being
indicative of the respective longitudinal position,
an electrical device connected to the track at a longitudinal
position, wherein the electrical device comprises a reading unit
for reading out the positional information represented by the
position marker at the longitudinal position at which the
electrical device is connected.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “PHILIPS
LIGHTING HOLDING B.V.” Appeal Br. 5.
2 The record before us shows that the Examiner entered an amendment
rewriting claim 5 in independent form. See Communication November 22,
2019. The record before us does not include a rejection of claim 5. See Final
Act. 3–12. We accordingly does not address claim 5 in this appeal. Cf.
Decision on Petition granted on August 8, 2019 (stating that “claim 5 should
have been labeled objected to as containing allowable subject matter and
would be allowable should it be rewritten in independent form”).
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Appeal Br. 16, Claims App.
REFERENCES
The prior art references relied upon by the Examiner are:

Name Reference Date
Wendt US 2015/0253360 Al Sept. 10, 2015
Perret EP 1 330 074 A1 July 23, 2003

REJECTIONS
Claims 1–4 and 7–16 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Perret. Final Act. 3–7.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Perret. Final Act. 7–9.
Claims 1 and 8–14 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Wendt. Final Act. 9–12.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
Appeal 2020-000938
Application 14/441,644

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the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Claim 1 (Perret)
Appellant argues that the Examiner reversibly erred because Perret
does not disclose “position markers” that “represent positional information
being indicative of the respective longitudinal position” as recited in claim 1.
Appeal Br. 8. Appellant acknowledges that prior art device 19 “transmits
location information as an electrical signal on a power supply line to a
device” (id; see also Reply Br. 5) but argues that “[a]n electrical signal does
not constitute a mark or a marker, as it is transient in nature and is in no way
affixed to or impressed in a track as claimed.” Appeal Br. 9.
“[T]he patentability of apparatus or composition claims depends on
the claimed structure, not on the use or purpose of that structure.” Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). “[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). In this case, Appellant does not structurally distinguish the
recited “position markers” from prior art device 19. See Appeal Br. 9
(arguing instead that the electrical signal transmitted by prior art device 19 is
transient).
Appellant’s argument that an electrical signal is not a mark which,
according to Appellant is affixed to or impressed in a track, is not persuasive
because it is not based on the apparatus claim which recites “position
markers.” See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
(holding that unclaimed features cannot impart patentability to claims).
Moreover, the Examiner’s finding that prior art device 19 in Perret is
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connected to appliance 13 is supported by the record and not disputed by
Appellant. Compare Ans. 2, with Reply Br. 5–6. No reversible error has
therefore been identified in the Examiner’s findings in support of the
rejection. The rejection of claim 1 over Perret is sustained.
Appellant does not argue separately the rejection of claims 4 and 7–15
over Perret and the rejection of these claims is sustained as well. See Appeal
Br. 10; see also 37 C.F.R. § 41.37(c)(1)(vii).
Claim 3 (Perret)
Claim 3 depends from claim 1 and additionally recites: “wherein the
digital code of a position marker is formed by a sequence of electrically
conductive regions and electrically insulated regions.”
Appellant does not dispute the Examiner’s finding that Perret
discloses device 19 as having an insulator outer shell, conductive prong 22
in sequence with receptacle 12 and plug 25. Compare Appeal Br. 10, with
Final Act. 5. Appellant merely “submits that the outer insulation of what is
effectively an electrical plug does not in any way form a digital code.”
Appeal Br. 11. Appellant does not address the Examiner’s finding that the
“marker itself stores the code and thus forms the digital codes” (compare
Reply Br. 7, with Ans. 3) but only argues that “[t]he outer shell/insulator of
the electrical plug 19 serves to protect against shock to the touch.” Reply Br.
7. Appellant’s argument does not sufficiently explain why the Examiner
reversibly erred in this fact finding, and we accordingly sustain the rejection
of claim 3 over Perret.
Claim 16 (Perret)
Claim 16 depends from claim 1 and additionally recites: “wherein
each of said position markers have a respective permanent, physical
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structure and wherein a configuration of said respective permanent, physical
structure denotes said positional information being indicative of the
respective longitudinal position.”
Appellant’s argument with regard to claim 16 mirror that of claim 1
that “location information in Perret is denoted by an electronic signal.”
Appeal Br. 12. As with claim 1, the language of claim 16 does not preclude
the recited “positional information” to be represented by an electrical signal.
We sustain the rejection of claim 16 over Perret.
Claim 1 (Wendt)
With regard to the rejection of claim 1 over Wendt, Appellant argues:
“[s]imilar to Perret, Wendt effectively determines the position based on a
transient signal.” Appeal Br. 13. Appellant similarly repeats the argument
that “a position marker is an affixed or impressed device, symbol,
inscription, etc., that in and of itself represents positional information.” Id.
As with the rejection of claim 1 over Perret, Appellant does not
address the Examiner’s finding that prior art marker 16 in Wendt is
connected to appliance 13 and “position markers are provided for by way of
element (16) that are location devices and Electrical device (15, electrical
device) allows for the reading unit (measure unit) that determines the
position based on the ratio of voltages, i.e. specifically based on the ratio of
the measured voltage and a constant voltage.” Compare Reply Br. 9, with
Ans. 4 (citing Wendt ¶¶ 10, 49). The rejection of claim 1 over Wendt is
accordingly sustained.
Claims 8–14 (Wendt)
Appellant argues that the rejection of claims 8–14 over Wendt should
be reversed for failure to meet 35 U.S.C. 132. Appeal Br. 14.
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An Examiner meets the procedural burden of establishing a prima
facie case when the rejection satisfies 35 U.S.C. § 132, in “notify[ing] the
applicant [by] stating the reasons for [its] rejection, or objection or
requirement, together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of [the]
application.” In re Jung, 637 F.3d at 1362 (citing 35 U.S.C. § 132). 35
U.S.C. § 132 “is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). 35
U.S.C. § 132, however, does not mandate that in order to establish a prima
facie case, the Examiner must explicitly preempt every possible response to
a rejection. 35 U.S.C. § 132 merely ensures that an applicant at least be
informed of the broad statutory basis for the rejection of the claims, so that
the applicant may determine what the issues are on which he or she can or
should produce evidence. Chester, 906 F.2d at 1578. All that is required of
the Examiner to meet the prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or references relied upon in
a sufficiently articulate and informative manner as to meet the notice
requirement of 35 U.S.C. § 132. In re Jung, 637 F.3d at 1363.
Here, the Examiner’s identification of the theory of unpatentability
(anticipation), the identification of the prior art basis for the rejections
(Wendt), and an analysis of the mapping of the claims. Final Act. 9–12; Ans.
11–16 (for example, mapping “claims 8, 11, 12 and 13” as well as claim 9 to
Wendt paragraph 49 and mapping claim 10 to Wendt paragraph 63). We
decline to reverse the rejection of claims 8–14 over Wendt on the basis of 35
U.S.C. § 132.
Appeal 2020-000938
Application 14/441,644

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CONCLUSION
The Examiner’s rejections are affirmed.
More specifically:
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–16 102(b) Perret 1–4, 7–16
6 103(a) Perret 6
1, 8–14 103(e) Wendt 1, 8–14
Overall
Outcome:
1–4, 6–16

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED