Ex Parte Aarts et al

Patent Trial and Appeal Board

Sep 19, 2016

13139822 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/139,822 06/15/2011 Ronaldus Maria Aarts
24737 7590 09/21/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2008P01640WOUS 4125
EXAMINER
COMLEY, ALEXANDER BRYANT
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
marianne.fox@philips.com
debbie.henn@philips.com
patti. demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALDUS MARIA AARTS,
JORIS ADELBERT MARIA NIEUWENDIJK, OKKE OUWELTJES,
and GERBEN KOOIJMAN
Appeal2015-000269
Application 13/139,822 1
Technology Center 3700
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-8 and 10-12 under 35 U.S.C. § 102(b) as
anticipated by Ishikawa (EP 1 762 725 Al, pub. Feb. 2, 2005). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is the assignee
"KONINKLIJKE PHILIPS ELECTRONICS N.V." Br. 3.
Appeal2015-000269
Application 13/139,822
Claimed Subject Matter
Claims 1, 7, 8, and 12 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An output device comprising at least one transducer coupled
to a cavity enclosed within a housing, said output device being
adapted to produce at least first and second different perceptible
output modalities for conveying information to a user in response
to respective drive signals applied to the at least one transducer,
said first output modality comprising a synthetic fluid jet forced
through an opening in communication with the cavity and
rendering fluid flow represented by a first drive signal applied to
the at least one transducer.
ANALYSIS
The Appellants argue that the gas jet of Ishikawa's device is not
perceptible to a user; and as such, Ishikawa does not anticipate the subject
matter of claim 1. See Br. 13, 15. The Appellants' argument is persuasive.
At the outset, we note that the Examiner and the Appellants dispute
the interpretation of the claimed term "user." See Ans. 12-13; Br. 13-15.
The Examiner relies on a dictionary definition of the term "user" meaning "a
person or thing that uses something." Ans. 12-13 (emphasis omitted) (citing
Merriam-Webster's Dictionary (http://www.merriam-webster.com/
dictionary/user)); see also Adv. Act. 4 (mailed April 8, 2014). Relying on
the dictionary definition, the Examiner determines that the claimed term
"user" may refer to either a "person or a thing." See Ans. 12-13. However,
we agree with the Appellants that when a person of ordinary skill in the art
uses the broadest reasonable interpretation of the claim term "user" that is
consistent with the Specification, the term refers to a person and does not
refer to a thing. See Appeal Br. 13-15; see also In re Am. A cad. of Sci.
2
Appeal2015-000269
Application 13/139,822
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In reaching this
interpretation, we find that the Specification does not refer to a "user" as a
thing and consistently refers to a "user" as a person. See, e.g., Spec. 2,
11. 26-27 (stating, with added emphasis, "[a]n effect is that it is relatively
easy to ensure that the airflow is directed to a part of the user's body that is
generally uncovered, in particular the face.").
In response to the Appellants' argument that the gas jet of Ishikawa' s
device is not perceptible to a user, the Examiner finds that:
Many computer housings and/or casings are specifically
designed to allow users (i.e. persons) to perform maintenance
to the internals thereof when needed or desired. Hence, with
the Ishikawa computer cooling device, a user could easily gain
access to the internals of the computer system to check
Ishikawa' s device and ensure proper operation (i.e. ensure that
a synthetic jet and noise are both being output, thereby
indicating proper operation). Hence, during maintenance of the
computer system, Ishikawa's device would be adapted to
convey information to a user (i.e. a person).
Ans. 13 (emphasis added). Because the Examiner's rejection is based on
anticipation, we understand the Examiner's finding to be based on the
principle of inherency.
"Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed.
Cir. 2002) (quoting MEHL/Biophile Int'! Corp. v. Milgraum, 192 F.3d 1362,
1365 (Fed. Cir. 1999)). In other words, "[i]nherency ... may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." In re
Oelrich, 666 F.2d 578, 581(CCPA1981).
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Appeal2015-000269
Application 13/139,822
In this case, the Examiner's finding does not properly rely on the
principle of inherency. Here, the Examiner indicates that "many," rather
than all, "computer housings and/or casings are specifically designed to
allow users (i.e. persons) to perform maintenance to the internals thereof."
Ans. 13. Because the Examiner does not find that all "computer housings
and/or casings computer housings and/or casings are specifically designed to
allow users (i.e. persons) to perform maintenance to the internals thereof,"
the Examiner cannot properly find that the housing of Ishikawa's device
necessarily functions to allow users (i.e., persons) to perform maintenance to
the internals thereof. Moreover, we fail to ascertain from Ishikawa that the
device disclosed therein necessarily includes a housing that functions "to
allow users (i.e. persons) to perform maintenance to the internals thereof."
Thus, we do not sustain the Examiner's rejection of claim 1 and
dependent claims 2---6 as anticipated by Ishikawa. Additionally, independent
claims 7, 8, and 12 are similar to independent claim 1; and, the Examiner's
rejection of claims 7, 8, and 12 relies of the same unsubstantiated finding as
discussed above. As such, we do not sustain the Examiner's rejection of
independent claims 7, 8, and 12, and dependent claims 10 and 11, as
anticipated by Ishikawa.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-8 and IO-
12.
REVERSED
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