Ex Parte Gansen et al

Patent Trial and Appeal Board

May 23, 2017

14410757 (P.T.A.B. May. 23, 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.
14/410,757 12/23/2014 Tobias Gansen 2319.1082 1790
21171 7590 05/25/2017
STA AS fr HAT SFY T T P
EXAMINER
SUITE 700 VONCH, JEFFREY A
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005 ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
05/25/2017 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):
ptomail @ s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOBIAS GANSEN, MARCUS NEUDECKER, and
DANIEL PFALLER
Appeal 2017-007693
Application 14/410,7571
Technology Center 1700
Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
9—23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Audi AG as the real party in interest. Appeal Br. 3.
2 In our Opinion, we refer to the Specification filed December 23, 2014
(“Spec.”); the Final Action delivered electronically on June 20, 2016 (“Final
Act.”); the Advisory Action delivered electronically on August 24, 2016
(“Adv. Act.”); the Appeal Brief filed December 29, 2016 (“Appeal Br.”); the
Examiner’s Answer delivered electronically on March 1, 2017 (“Ans.”); and
the Reply Brief filed April 24, 2017 (“Reply Br.”).
Appeal 2017-007693
Application 14/410,757
The claims are directed to composite pane for a motor vehicle and
motor vehicle having such a composite pane. Claim 9, reproduced below
with the disputed language emphasized, is illustrative of the claimed subject
matter:
9. A composite pane for a front pane of a motor vehicle,
comprising:
a first pane;
a second pane;
a first layer disposed between the first and second panes,
the first layer including a film to adhesively bond the first and
second panes to each other;
a second layer disposed between one of the first and
second panes and at least a portion of the first layer, the second
layer including a coating applied to the film to reflect infrared
rays, the coating having a cut-out in a portion thereof such that
the cut-out is circumferentially surrounded by the coating; and
a transponder arranged in the second layer and in the cut­
out in the portion of the coating such that the transponder is
circumferentially surrounded by the coating,
wherein
the cut-out is arranged in only the coating, and the
transponder is arranged in only the cut-out in the portion of
the coating so that a thickness of the transponder is the
same as or less than a thickness of the coating.
Appeal Br. 20 (Claims App’x).
REJECTIONS
The Examiner rejects claims 9-23 under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final Act. 2.
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Application 14/410,757
OPINION
The Examiner finds that “the newly added limitation ‘the transponder
is arranged only in the cut-out portion of the coating so that a thickness of
the transponder is the same as or less than a thickness of the coating’ is not
supported by the specification as filed.” Final Act. 3. More specifically, the
Examiner finds that
[t]he coating layer (Fig. [18]) having the cut-out (Fig. [20])
with the transponder therein (Fig. [22]) is unable to be
differentiated from the film (Fig. [16]), wherein the thickness of
the transponder is not shown in relation to the coating and/or
film (and it is also unclear from the drawing whether or not the
film also has a cut-out or not).
Id. The Examiner further finds that “the Figure is neither detailed enough
nor does it show a scaled cross-sectional prospective [sic] where it is clear
the transponder is within the thickness of the coating.” Adv. Act. 2. The
Examiner finds the thickness of the coating and/or the transponder is neither
explicitly nor implicitly disclosed. Id. at 3.
The sole figure of Appellants’ application is reproduced below:
The figure illustrates a composite pane for a motor vehicle in a
partially transparent exploded illustration. Spec. 115. The composite pane
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Application 14/410,757
10 comprises a first pane 12 and a second pane 14, which are adhesively
bonded to each other by a film 16, and a coating 18 reflecting infrared rays
is applied to the film 16. Id. H 17 and 18. “Provided within the coating 18
reflecting infrared rays is a cut-out 20, within which a transponder 22 is
arranged between the two panes 12, 14.” Id. 119.
For an applicant to comply with the 35 U.S.C. § 112(a) written
description requirement, the applicant’s specification, not only figures, 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.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(addressing the previous version of § 112, 1st paragraph, which
insignificantly differs from current § 112(a) with regard to the written
description requirement). “[T]he test for sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc) (emphasis added). The Examiner’s finding
regarding the failings of the figure of the application, therefore, is
insufficient evidence of lack of written description without consideration of
the Specification.
Appellants argue—and the Examiner does not disagree—that the only
issue before the Board pertains to whether the limitation identified by the
Examiner is supported by the written description, and that the subject matter
of the independent claims has otherwise been found allowable. Appeal Br.
9. With regard to the disputed limitation, Appellants argue that the
Specification makes clear that the coating is separate and apart from the
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Application 14/410,757
film, and both explicitly and implicitly discloses the cut-out is provided only
within the coating, and the transponder is provided only within the cut-out.
Appeal Br. 9 and 12.
Although the disputed limitation requires “the transponder is arranged
in only the cut-out portion of the coating,” the inquiry turns on the
interpretation of within, as this is the language in the Specification that is
argued to be the required written description.
Appellants present several arguments, not all of which are
persuasive.3 Given that we do not sustain the Examiner’s rejection, below
we address only Appellants’ successful arguments.
Appellants argue that the plain and customary meaning of the term
“within” supports the claimed subject matter, identifying the Merriam-
Webster Dictionary website’s definition as evidence. Appeal Br. 12 (citing
http://merriam-webster.com/dictionary/within). This dictionary defines
“within” as “inside something” or “in or into the interior,” which is argued
to support the transponder being insider or in the interior of the cut-out. Id.
The Examiner relies on a different dictionary, the online version of the
Oxford English Dictionary, which defines “within” as a preposition as “l.a.
In the inner part or the interior of, inside of, in (a space, region, receptacle,
etc.)... b. In (an enclosure of enclosing boundary); so as to be included,
contained, surrounded, or confined by.” Ans. 5—6. Appellants contend that
the Oxford English Dictionary’s definition is consistent with the disclosed
3 For example, Appellants argue the relevance of a memorandum from then-
PTO Director Kappos indicating that claims drawn to computer readable
media may be amended to cover only non-transitory tangible media typically
do not raise issues of new matter. Appeal Br. 16; Reply Br. 6.
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Application 14/410,757
transponder being “inside/contained/surrounded by the cut-out which is
within the coating.” Reply Br. 4.
Appellants also contend that the prior art relied on by the Examiner
during prosecution supports a finding that the customary meaning of
“within” denotes that an object is “in only” a particular layer/object/range.
Appeal Br. 13. For example, Mays et al., U.S. Patent 6,275,157 (cited in the
Final Action of June 20, 2016) discloses a vehicle transponder may be
embedded within a single layer of glass; and Faird, U.S. Patent 6,787,005
(cited in the Office Action of September 1, 2015) discloses a target within a
shield. See id. at 13—14.
According to Appellants, one of ordinary skill in the art at the time of
the invention would reasonably conclude that the Specification provided
explicit written description support for a transponder that is arranged in only
the cut-out, which is provided in only the coating (and not the film). Appeal
Br. 11. Although not precedential authority, Appellants persuasively argue
that the written opinion of the International Examiner supports their position.
Id. at 17. The International Examiner stated that Appellants’ transponder
would have a thickness “within the range of the thickness of the reflective
coating.” Id. We view the International Examiner’s statement as evidence
that the ordinarily-skilled artisan would interpret the disputed claim term as
argued by Appellants.
The sufficiency of an application’s written description is a question of
fact. AriadPharms., Inc., 598 F.3d at 1351. Precisely how close the
original description must come to comply with the description requirement
of § 112 must be determined on a case-by-case basis. Vas-Cath Inc. v.
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Application 14/410,757
Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991). “[L]ack of literal support
... is not enough ... to support a rejection under 112.” See In re Wertheim,
541 F.2d 257, 265 (CCPA 1976).
In this case, we find that the Examiner ignores the plain meaning of
“within” as used in the Specification. The Specification discloses:
[T]he proposed composite pane is distinguished by the fact that
a coating reflecting infrared rays is applied to the film, said
coating having at least one cut-out, within which a
transponder is arranged between the two panes.
Spec. 19.
Provided within the coating 18 reflecting infrared rays is a
cut-out 20, within which a transponder 22 is arranged
between the two panes 12, 14.
Id. 119.
Appeal Br. 12 (emphasis added). Appellants argue, and we agree, that the
Examiner errs by (1) selectively interpreting “within” as only supporting an
embodiment in which the transponder is partially in the cut-out and not
supporting an embodiment in which the transponder is in only the cut-out
(see Appeal Brief 9); and (2) improperly limiting the disclosure to the lateral
direction (Reply Brief 2). The cut-out is described in the Specification as
“within the coating.” Spec. 119. In the Answer, the Examiner does not
dispute that the cut-out is only in, or inside, the coating. Ans. 5. However,
the Examiner finds that “within” means something different when it applies
to the transponder, which is stated to be “within the cut-out.” Ans. 10.
Specifically, the Examiner finds that the cut-out has only lateral boundaries.
Id. In contrast, we find nothing to suggest that the coating has less than
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Application 14/410,757
three dimensions, therefore the cut-out therein also has three dimensions.
The Specification supports the transponder being within the three
dimensional space formed in the coating by the cut-out.
Other language in the claim to which the Examiner did not object
requires that the transponder is “circumferentially surrounded by the
coating.” Appeal Br. 20 (Claims App’x). “Circumference” is defined as
“the external boundary or surface of a figure or object.” https://merriam-
webster.com/dicitonary/circumference. This claim term further supports
Appellants’ argument that the transponder is surrounded by—and does not
project in any direction beyond—the cut-out in the coating.
The Examiner apparently previously recognized that the Specification
supported an embodiment in which the transponder is arranged only in the
cut-out in the Office Action of February 25, 2016, when asserting that, if
only the reflective coating (and not the film) contained the recess for the
transponder, the transponder then shared the coating’s thickness.
Appellants thus persuade us that the Specification’s disclosure is
adequate to support the disputed claim language.
The Examiner erred in rejecting claim 9 as lacking written
description. For the same reasons as given about, the Examiner also erred in
rejecting claims 10—23 as lacking written description.
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Application 14/410,757
DECISION
For the above reasons, the Examiner’s rejection of claims 9—23 is
reversed.
REVERSED
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