Ex Parte Ben-Shmuel et alDownload PDFPatent Trials and Appeals BoardJun 26, 201913662067 - (D) (P.T.A.B. Jun. 26, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/662,067 10/26/2012 156823 7590 06/28/2019 Finnegan/Goji 901 New York A venue, NW WASHINGTON, DC 20001-4413 FIRST NAMED INVENTOR Eran Ben-Shmuel 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. l 1254.0032-04000 5486 EXAMINER CALVETTI, FREDERICK F ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 06/28/2019 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): Regional-desk@finnegan.com paralegal@hobart-group.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERAN BEN-SHMUEL, ALEXANDER BILCHINSKY, UDI DAMAR!, OMER EINA V, BENNY ROUSSO, and SHLOMO BEN-HAIM Appeal2017-007231 Application 13/662,067 Technology Center 3700 Before JOHN C. KERINS, STEFAN STAICOVICI, and ARTHUR M. PESLAK, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Eran Ben-Shmuel et al. (Appellants)1 seek our review under 35 U.S.C. § 134 of the final rejection of claims 57-60 and 62-82. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted on June 13, 2019, with Darren M. Jiron, Esq., appearing on behalf of Appellants. We REVERSE and ENTER A NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). 1 Goji Limited is the real party-in-interest in this appeal. Appeal Br. 3. Appeal2017-007231 Application 13/662,067 THE INVENTION Appellants' invention is directed to a method for controlling a radio frequency heating device for heating an object in a cavity. Independent claim 57, reproduced below, is illustrative: 57. A method for controlling a radio frequency (RF) heating device to heat an object in a cavity, the RF heating device comprising a plurality of antennas configured to feed RF energy into the cavity, the method comprising: applying, via the plurality of antennas, RF energy at a plurality of frequencies to the cavity according to a heating profile; receiving, via the plurality of antennas, feedback from the cavity in response to application of the RF energy, wherein the feedback includes at least one of: feedback indicating an RF energy absorption efficiency by the object at each of the plurality of frequencies; feedback indicating power coupled from one of the plurality of antennas to another one of the plurality of antennas; feedback indicating an RF energy return loss at each of the plurality of frequencies; feedback indicating an RF energy transfer coefficient of the cavity; or feedback indicating s-parameters as a function of frequency;and changing the heating profile based on the feedback by changing at least a phase of an input signal provided to at least one of the plurality of antennas. Appeal Br. 31 (Claims Appendix). 2 Appeal2017-007231 Application 13/662,067 THE REJECTION The Examiner rejects claims 57-60 and 62-82 under 35 U.S.C. § 103(a) as being unpatentable over Turner (US 4,589,423, issued May 20, 1986)(hereinafter "Turner '423"), in view of Turner (US 4,798,215, issued Jan. 17, 1989)(hereinafter "Turner '215"), Turner (US 4,672,980, issued June 16, 1987)(hereinafter "Turner '980"), Fagrell (US 2002/0175163 Al, published Nov. 28, 2002), Torngren (US 6,884,979 Bl, issued Apr. 26, 2005), and Lentz (US 4,210,795, issued July 1, 1980). ANALYSIS Claims 57-60 and 62---82--35 U.S.C. § 103(a) Although the Final Action and Answer are somewhat difficult to sift through in determining the Examiner's exact positions, it appears that the Examiner relies on Turner '423 as disclosing the limitation appearing in independent claims 5 7, 64, and 71, that the phase of an input signal provided to at least one of a plurality of antennas is changed based on feedback from a heating cavity resulting from radio frequency (RF) energy being applied to the cavity having an object to be heated therein. See, e.g., Final Act. 5-6, 12; Ans. 15-16, 18-19. In addition, it appears that the Examiner takes the position that the antennas in Turner '423 are capable of receiving feedback (Ans. 14), that Turner '215 discloses using antennas to receive feedback (id. at 14-15), and that it would have been obvious to a person of ordinary skill in the art to modify Turner '423 so that the antennas therein receive feedback from the cavity, and that that feedback would be used to change a 3 Appeal2017-007231 Application 13/662,067 heating profile, including the phase of the input signal, so as to "enhance temperature and uniformity etc." Final Act. 12.2 Appellants maintain that: The three kinds of feedback (vital signs 16, internal temperature distribution 18, external electric-field distributions 20) are used by the Turner 423 system for four purposes: (1) to decrease power if the temperature rises [to] dangerous levels; ( s) to increase power in case heating is insufficient; (3) to allow post- heating analysis of heating sessions; and (4) to display to a user a temperature vs. position plot. See Turner 423, col. 14 lines 21-31. No phase change in response to feedback is disclosed or even suggested. Appeal Br. 16-17. Appellants further note that Turner '423 discloses changing the phase of the input signal to manipulate the location of the desired heating region, and to compensate for phase shifts caused by non- homogeneity in the target material, but in neither case is the phase shift based on any feedback received in the Turner '423 system. Id. at 16. These arguments, at first blush, appear to amount to an attack on the disclosure of Turner '423 individually, whereas the rejection employs five additional references. However, we believe that Appellants have the overall better position that the additional references fail to cure the deficiencies of Turner '423 relative to the claimed subject matter. We agree with Appellants that Turner '423 does not appear to employ the particular feedback obtained in operation of its device to bring about a change in the phase of the input signals. None of the other references appear to be relied on as providing this missing limitation. In particular, Turner '215 and 2 The Fagrell, Torngren, and Lentz references appear to be cited as evidencing that certain of the types of feedback identified in claim 57 were known parameters in heating devices. Final Act. 8-12. 4 Appeal2017-007231 Application 13/662,067 Turner '980 disclose essentially the same subject matter as does Turner '423 in this respect; Torngren and Lantz appear to be silent as to changing a phase of an input signal, and Fagrell includes mention of "phase change" in the sense of the material being heated changing its physical phase. See, e.g., Fagrell, para. 178 ("The starting material can be any chemical substance in any phase, solid phase, liquid phase or gas phase.") We additionally agree with Appellants that the Examiner's stated reason to modify Turner '423, that is, to enhance temperature control and uniformity, is conclusory in nature, and is not supported by rational underpinnings. The Examiner has not detailed, in any manner, how any proposed modifications would enhance temperature control or uniformity in any particular manner. Accordingly, we do not sustain the rejection of claims 57-60 and 62- 82 as being unpatentable over Turner '423 in view of Turner '215, Turner '980, Fagrell, Torngren, and Lentz. Claims 57-60 and 62-82--New Ground of Rejection--35 U.S. C. §112, first paragraph Independent claims 57, 64, and 71, and all claims depending therefrom, are rejected under 35 U.S.C. § 112, first paragraph, as failing to meet the written description requirement set forth therein. The written description requirement of 35 U.S.C. § 112, first paragraph, is satisfied when the disclosure of the application reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms. v. Eli Lilly, 598 F.3d 1336, 1351 (Fed. Cir. 2010). The application as filed fails to evidence that Appellants had possession of a method in which feedback from a cavity 5 Appeal2017-007231 Application 13/662,067 is received "via the plurality of antennas" ( claims 57 and 71 ); or "by the antenna array" ( claim 64). Appeal Br., Claims Appendix. The limitations requiring the feedback to be received via the plurality of antennas, in claim 57, and by the antenna array, in claim 64, were added to those claims in an Amendment dated December 12, 2013. In the "Remarks" section of that Amendment, Appellants averred that written descriptive support for the limitations could be found, for example, at page 13, line 26, to page 14, line 2 of the Specification, as well as at page 58, lines 21-22, and Figure 14. Independent claim 71 on appeal, containing the same pertinent limitation as in claim 57, was added in an Amendment dated February 9, 2015. Written descriptive support for new claim 71 and other new and amended claims was asserted to be present at page 34, line 27, to page 35, line 3; at page 12, lines 15-21; at page 44, lines 4-10, and at page 4, lines 12-20. In the "Summary of Claimed Subject Matter" section of the Appeal Brief, Appellants cite to page 4, lines 12-24, of the Specification as providing disclosure of the plurality of antennas receiving feedback from the cavity. Appeal Br. 6 (claim 57), 7 (claim 64). For claim 71, page 3, lines 14-27 are additionally cited. Id. at 7. We have carefully reviewed the entirety of Appellants' Specification and accompanying drawings as originally filed, and particularly the portions identified by Appellants as providing written descriptive support, and find no disclosure that feedback from the cavity is to be received via or by the antennas that are employed to apply RF energy to the cavity to heat an object therein, as required by the claims. The cited sections disclose using groups or arrays of antennas to deliver RF energy to a cavity, and disclose various types of feedback that may be used in determining whether to 6 Appeal2017-007231 Application 13/662,067 change a heating profile, and particularly whether to change the phase of the input signals. Those sections, however, are silent with respect to how such feedback is obtained. Although we have based our decision as to the § 103 unpatentability rejection on other aspects of the claims and applied references, Appellants arguments traversing the rejection include the argument, made twice, that Turner '423 does not disclose receiving feedback via or by the applicators (antennas) 36 disclosed therein. Appeal Br. 12-13; Reply Br. 2-4. Compliance with the written description requirement is a question of fact. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). In order to comply with the written description requirement, the applicant's disclosure 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 [ claimed] invention." Vas-Cath, Inc. at 1563-64. An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). That a person skilled in the art might realize from reading the disclosure that such a feature is possible is not a sufficient indication that the feature is a part of the invention. In re Barker and Pehl, 559 F.2d 588 (CCPA 1977). Precisely how close the original description must come to comply with the description requirement of section 112 must be determined on a case by case basis. See, e.g., In re Smith, 458 F.2d 1389, 1395 (CCPA 1972); Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320 (Fed. Cir. 2000). 7 Appeal2017-007231 Application 13/662,067 An applicant need not "describe exactly the subject matter claimed," but "the description must clearly allow persons of ordinary skill in the art to recognize that [the applicant] invented what is claimed." Id. (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). As noted above, Appellants' Specification is utterly silent as to a method, or a device performing the method, in which feedback is received from a heating cavity via or by the same plurality or array of antennas that are used to deliver RF energy to the heating cavity. Accordingly, the application as filed fails to evidence that Appellants were in possession of an invention including those limitations. DECISION The Examiner's rejection of claims 57-60 and 62-82 under 35 U.S.C. § 103(a) is reversed. Claims 57-60 and 62-82 are rejected under 35 U.S.C. § 112, first paragraph, as failing to meet the written description requirement set forth therein. This is a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: 8 Appeal2017-007231 Application 13/662,067 ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a). REVERSED; § 41.50(b) 9 Copy with citationCopy as parenthetical citation