Ex Parte Hershey et alDownload PDFPatent Trial and Appeal BoardMay 13, 201612409696 (P.T.A.B. May. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/409,696 0312412009 62204 7590 05/17/2016 GENERAL ELECTRIC COMPANY (LICENSING) ATTN: Brandon, 59W - 105U 1 RIVER ROAD SCHENECTADY, NY 12345 John Erik Hershey 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. 234806-1/YOD (GELC:0024) CONFIRMATION NO. 1879 EXAMINER JENNISON, BRIAN W ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 05/1712016 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): vivian.brandon@ge.com rlt@zpspatents.com docket@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN ERIK HERSHEY, MICHAEL JAMES HARTMAN, KENNETH BRAKELEY WELLES, RICHARD LOUIS ZINSER, and JOHN ANDERSON FERGUS ROSS Appeal2014-003386 Application 12/409,696 Technology Center 3700 Before LINDA E. HORNER, MICHELLE R. OSINSKI, and ERIC C. JESCHKE, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE John Erik Hershey et al. (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1, 3-12, and 31-37. Claims 2 and 13-21 are cancelled, and claims 22-30, 38, and 39 are withdrawn. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is General Electric Company. App. Br. 2. Appeal2014-003386 Application 12/409,696 THE CLAIMED SUBJECT MATTER Claims 1 and 3 5 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter on appeal. 1. A system, comprising: a mode stirrer comprising a scatterer with a radar cross section configured to change when exposed to electromagnetic radiation; wherein the scatterer comprises conductors are coupled to a connector; and wherein the conductors are electrically connected through the connector in a manner to cause changes in the radar cross section when exposed to electromagnetic radiation. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Yu Taylor us 5,877,479 US 2005/0241409 Al REJECTIONS Mar. 2, 1999 Nov. 3, 2005 I. Claims 1, 3-5, 7, 8, and 31-37 stand rejected under 35 U.S.C. § 102(b) as anticipated by Taylor. Final Act. 2-3. II. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Taylor. Id. at 3--4. III. Claims 9-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Taylor and Yu. Id. at 4. 2 Appeal2014-003386 Application 12/409,696 OPINION Rejection I Appellants argue claims 1, 3-5, 7, 8, and 31-37 as a group. App. Br. 4--7. We select claim 1 as the representative claim, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013). The Examiner finds that Taylor discloses structure identical to the claimed structure in independent claim 1. Final Act. 3. In particular, the Examiner finds that Taylor discloses "substantially collinear, insulated, conductor strips 36 comprising a polymer or silicone matrix with metallic grains." Id. (citing Taylor i-fi-1 5---6, 64---65). Taylor discloses sensor element pads consisting of a non-conductive elastomeric matrix filled with electrically conductive particles, as well as upper and lower conductive elements in electrical contact with upper and lower sides of each sensor pad. Taylor i15. Claim 1 recites a "scatterer compris[ing] conductors ... coupled to a connector." App. Br. 13, Claims App. The Examiner determines that the functionality of the claimed conductor/connector structure, i.e., "to cause changes in the radar cross section when exposed to electromagnetic radiation" (App. Br. 13, Claims App.) would be an inherent characteristic of the prior art structure. Final Act. 3. For the reasons provided infra, we determine that a sound basis exists in the prior art for this finding by the Examiner, and determine that Appellants have not met their burden to show that the prior art structure does not possess this functionality as an inherent characteristic. Appellants argue that "Taylor is directed to detecting the applied shear and normal force gradient on the surface of a human body part," and that "Taylor does not disclose that the conductor strips 26 and 30 would be 3 Appeal2014-003386 Application 12/409,696 sensitive to electromagnetic radiation or that its radar cross section would change in response to the electromagnetic radiation." App. Br. 6. We agree with Appellants that Taylor fails to explicitly disclose the ability of its sensor to cause changes in radar cross section when exposed to electromagnetic radiation. The Examiner, however, determines that such functionality is an inherent characteristic of the conductor/connector assembly of Taylor by virtue of its structure. Final Act. 3. "It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. 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) (citations and internal quotation marks omitted). The Federal Circuit has rejected "the contention that inherent anticipation requires recognition in the prior art." Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Appellants' argument about Taylor's failure to explicitly disclose the claimed subject matter is not persuasive as it fails to address the Examiner's rejection, which is based on inherency. Appellants further argue that the Examiner "has not provided any extrinsic evidence or reasoning to support the assertion that Taylor inherently teaches conductors that would change a radar cross section when exposed to electromagnetic radiation." App. Br. 7. Appellants argue that the Examiner's "conclusory statement that 'since an apparatus is claimed and the structures are the same they would both function in the same manner regardless of application"' is insufficient to support a finding of inherency. Id. (quoting Advisory Act. (June 27, 2013), 2). 4 Appeal2014-003386 Application 12/409,696 A patent applicant is free to recite features of an apparatus either structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) ("[T]here is nothing intrinsically wrong with [defining something by what it does rather than what it is] in drafting patent claims."). "Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As stated in Swinehart, 439 F.2d at 213: where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Nevertheless, before an applicant can be put to this burdensome task, the Examiner must provide sufficient evidence or scientific reasoning to establish that there is a sound basis for the Examiner's belief that the :thnctional limitation is an inherent characteristic of the prior art. See Irz re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The Specification describes the structure that is capable of varying its radar cross section when exposed to electromagnetic radiation as comprising conductors 60, 62 coupled to connector 64. Spec. i-f 15 (citing Fig. 3). The Specification describes an embodiment in which conductors 60, 62 are "made of a conductive material such as copper or aluminum" and "thin as compared to [their] length." Id. i-f 21. The Specification further describes connector 64 as being "composed of a matrix material, such as a polymer or silicone matrix [that] may have a high thermal coefficient of expansion and may include small metallic grains that are conductive within the matrix. The metallic conductive grains may be composed of copper or zinc." Id. Other 5 Appeal2014-003386 Application 12/409,696 than describing an alternative embodiment in which connector 64 may include an insulating material located between a pair of conductor plates (id. i-f 22), the Specification provides no further details as to the structure or coupling between the conductors and connector that is necessary to achieve variation in radar cross section when exposed to electromagnetic radiation. As such, the Examiner reasonably bases his finding of inherency on the fact that Taylor describes sensors that are similar to Appellants' scatterer in that both comprise conductors connected to a connector made up of a polymeric, silicone matrix. We find that the Examiner's inherency determination has a sound basis in the art. See Spada, 911 F.2d at 708 n.3. Once a prima facie case of anticipation has been established, the burden shifts to Appellants to prove that the prior art product does not necessarily or inherently possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product."). See also Spada, 911 F.2d at 708---09. Appellants have failed to show that the sensor of Taylor is not inherently capable of changing the radar cross section when exposed to electromagnetic radiation, as called for in the claims. In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (finding it insufficient for an appellant to merely assert that the prior art does not inherently possess the characteristic relied on and then challenge the PTO to prove the contrary by experiment or otherwise) ("The PTO is not equipped to perform such tasks."). Moreover, 6 Appeal2014-003386 Application 12/409,696 Appellants do not provide any technical explanation or evidence showing error in the Examiner's finding. For the foregoing reasons, we sustain, under 35 U.S.C. § 102(b), the Examiner's rejection of independent claim 1, and claims 3-5, 7, 8, and 31- 37, which fall therewith. Rejection II The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as unpatentable over Taylor. Final Act. 3--4. Claim 6 depends from independent claim 1. Appellants rely on the same arguments and reasoning that we found unpersuasive for independent claim 1 as described supra. See App. Br. 9. For the foregoing reasons, we sustain the rejection, under 35 U.S.C. § 103(a), of claim 6 as unpatentable over Taylor. Rejection III Claim 9 recites that the "mode stirrer is disposed within [a] microwave oven." App. Br. 14, Claims App. The Examiner rejects claims 9-12 under 35 U.S.C. § 103(a) as unpatentable over Taylor and Yu. Final Act. 4.2 The Examiner acknowledges that Taylor fails to disclose the mode stirrer disposed within a microwave. Id. The Examiner finds that Yu discloses "mode stirrers 500 disposed within a microwave oven" and concludes that "[i]t would have been obvious to adapt Taylor in view of Yu to use the mode stirrer in a microwave oven for evenly heating food." Id. 2 Claims 10, 11, and 12 depend from claim 1 and recite the mode stirrer "is disposed on or in [a piece of] cookware" (claim 10), "is disposed on or in [a] tray" (claim 11 ), and "comprises a plurality of scatters" (claim 12). App. Br. 14, Claims App. The Examiner's rejection of these claims is based on the same problematic combination of Taylor and Yu (Final Act. 4) on which we base the reversal of claim 9, discussed infra. 7 Appeal2014-003386 Application 12/409,696 Appellants argue that "there is no suggestion in Taylor or Yu that a force sensor would disrupt or stir the electromagnetic waves, and neither reference suggests their combination will cause a change in radar cross section in response to electromagnetic radiation, as recited in the present claims." App. Br. 11. The Examiner's reasoning in support of the conclusion of obviousness relies on the inherent capability of Taylor's sensor to change the radar cross section when exposed to electromagnetic radiation so as to disrupt electromagnetic wave patterns, and thereby be useful as a mode stirrer. In other words, only if one of ordinary skill in the art recognizes the applicability of Taylor's sensor as a mode stirrer, would one of ordinary skill in the art have been led to then use Taylor's sensor in a microwave oven as a mode stirrer for evenly heating food. The Examiner's conclusion of obviousness is predicated on one of ordinary skill in the art recognizing the usefulness of Taylor's structure as being a mode stirrer, with Yu providing a reason to specifically place Taylor's mode stirrer in a microwave oven. Even though Taylor's force sensor inherently disrupts or stirs electromagnetic waves, the Examiner has failed to articulate adequately a reason with a rational underpinning to explain why one having ordinary skill in the art would have been led to place Taylor's force sensor in a microwave. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds [require] some articulated reason with some rational underpinning to support the legal conclusion of obviousness") (cited with approval inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). For the foregoing reasons, we do not sustain the rejection, under 35 U.S.C. § 103(a), of claims 9-12 as unpatentable over Taylor and Yu. 8 Appeal2014-003386 Application 12/409,696 DECISION The Examiner's decision to reject claims 1, 3-8, and 31-37 is AFFIRMED. The Examiner's decision to reject claims 9-12 is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation