Ex Parte SEO et alDownload PDFPatent Trials and Appeals BoardMay 17, 201914282551 - (D) (P.T.A.B. May. 17, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/282,551 05/20/2014 68103 7590 05/21/2019 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 FIRST NAMED INVENTOR JaeminSEO 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. 0203-1314 4017 EXAMINER DAWKINS, COLLIN ART UNIT PAPER NUMBER 2845 NOTIFICATION DATE DELIVERY MODE 05/21/2019 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): usdocketing@jeffersonip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAEMIN SEO, SUY ANG PARK, and JAESUNPARK Appeal 2018-006156 Application 14/282,551 Technology Center 2800 Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 11-16, 18, and 19. We have jurisdiction. 35 U.S.C. § 6(b ). We REVERSE. 1 Appellant is the Applicant, Samsung Electronics Co., Ltd., which, according to the Appeal Brief, is also the real party in interest. Appeal Br. 2. Appeal 2018-006156 Application 14/282,551 STATEMENT OF THE CASE2 Appellant describes the invention as relating to an antenna apparatus which improves isolation of antennas arranged adjacent to each other. Spec. ,-J 2. The antennas could be used, for example, in a smart phone. Id. ,-i 24. Claim 11, reproduced below with emphases added to certain key recitations, is the sole independent claim on appeal and is illustrative of the claimed subject matter: 11. An electronic device comprising: a plurality of antennas; a plurality of feeding units formed on a printed circuit board and respectively connected to the plurality of antennas; a ground plane formed on the printed circuit board; and a plurality of floating ground planes that are formed by at least one slot that electrically separates each of the floating ground planes and the ground plane. Appeal Br. 11 (Claims App'x). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Toyao et al. ("Toyao") Kirovski et al. ("Kirovski") US 2012/0032865 Al US 2012/0319919 Al Feb.9,2012 Dec. 20, 2012 2 In this Decision, we refer to the Final Office Action dated September 8, 2017 ("Final Act."), the Appeal Brief filed February 23, 2018 ("Appeal Br."), the Examiner's Answer dated April 19, 2018 ("Ans."), and the Reply Brief filed May 23, 2018 ("Reply Br."). 2 Appeal 2018-006156 Application 14/282,551 REJECTIONS The following rejections are before us on appeal: Rejection 1. Claims 11-16, 18, and 19 under 35 U.S.C. § 112 as failing to comply with the written description requirement. Ans. 2. Rejection 2. Claims 11-16, 18, and 19 under 35 U.S.C. § 112 as indefinite. Id. at 3. Rejection 3. Claims 11-16, 18, and 19 under 35 U.S.C. § 103 as unpatentable over Kirovski in view of Toyao. Id. at 4. ANALYSIS Rejection 1. The Examiner rejects claims 11-16, 18, and 19 under 35 U.S.C. § 112 as failing to comply with the written description requirement. Ans. 2. In particular, claim 11 recites "floating ground planes," and the Examiner finds that "floating" is not set forth in the original disclosure. Id. at 2-3, 11. To determine whether the written description requirement is met, we consider "whether the disclosure of the [earlier] application relied upon reasonable conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of that earlier filing date." Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018) (bracketed material in original quote) ( quotes and citation omitted). Here, Appellant argues that "floating ground planes" are depicted in Figure 2 of the Specification. Appellant argues that a person of ordinary skill in the art would have understood that the ground planes of Figure 2 are floating because they receive electromagnetic signals "by virtue of their proximity to the conductor between the feeding units 11 and 21 and the 3 Appeal 2018-006156 Application 14/282,551 communications modules 110 and 21 O" and therefore do not have a fixed voltage potential. Appeal Br. 5. The Examiner does not address Appellant's position. Ans. 11. Rather, the Examiner states that a person of ordinary skill in the art "would not clearly construe that the plurality of ground units were floating .... " Id. The Examiner's statement is conclusory and does not explain why a person of skill in the art would not understand that the ground units of Figure 2 are floating. The Examiner has not, therefore, adequately established that written description is lacking, and we do not sustain this rejection. Rejection 2. The Examiner rejects claims 11-16, 18, and 19 under 35 U.S.C. § 112 as indefinite. Ans. 3. In particular, the Examiner explains that claim 11 recites "one slot that electrically separates each of the floating ground planes and the ground plane" whereas claim 12 recites "one circuit element that electrically connects the plurality of floating ground planes and the ground plane." Id. (italics removed, bolding original). During prosecution, "' [a] claim is indefinite when it contains words or phrases whose meaning is unclear."' Ex parte McAward, Appeal 2015- 006416, slip op. at 11 (quoting In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014)). Here, Appellant argues that the claims are not unclear because Figure 2 of the Specification depicts ground units 31, 32, and 34 separated by slots 51, 52, and 53. Appeal Br. 3-4; see also Spec. Fig. 2, ,i 34. Figure 2 also depicts lump elements 41, 42, 43, and 44 that electrically connect the ground units. Appeal Br. 3-4; see also Spec. Fig. 2, ,i 35. Given the context provided by Figure 2 and the remainder of the Specification, the Examiner 4 Appeal 2018-006156 Application 14/282,551 has not adequately explained why the claims are unclear. We do not sustain this rejection. Rejection 3. The Examiner rejects claims 11-16, 18, and 19 under 35 U.S.C. § 103 as unpatentable over Kirovski in view of Toyao. Id. at 4. The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability."). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). We focus on the recitations of claim 11 that Appellant argues. The Examiner finds that the primary reference, Kirovski, does not explicitly teach "a ground plane formed on the printed circuit board; and a plurality of floating ground planes that are formed by at least one slot that electrically separates each of the floating ground planes and the ground plane." Ans. 4.3 The Examiner finds, however, that Toyao teaches such a structure. Id. at 4- 5. The Examiner cites Figure 13a and paragraphs 102-104 of Toyao to 3 The Examiner refers to T oyao rather than Kirovski in the penultimate paragraph of page 4 of the Answer, but it is apparent that this was a typographical error. 5 Appeal 2018-006156 Application 14/282,551 support this position. Id. The Examiner provides a rationale as to why a person having skill in the art would have employed the structure of Toyao into Kirovski. Id. at 5. Appellant argues that Kirovski does not teach floating ground planes that, as recited by claim 1, are "formed by at least one slot that electrically separates each of the floating ground planes and the ground plane." Appeal Br. 5-8. In particular, Appellant argues that coaxial connection 33 as illustrated by Toyao Figure 13(a) is connected to the bottom surface of the PCB and that the bottom surface is, therefore, the ground plane. Id. at 6-7. Appellant next argues that, if the bottom surface of the PCB is the ground plane, the ground plane is separated from what the Examiner's identifies as being the floating ground planes by a dielectric. Id. at 8. The ground plane is thus not separated by "at least one slot" as claim 11 recites. Id. Based on the present record, we agree with the Appellant that the Examiner has not adequately explained how Kirovski teaches the claim 11 's "formed by at least one slot that electrically separates each of the floating ground planes and the ground plane" recitation. The preponderance of the evidence supports Appellant's argument that the bottom surface of the PCB is a ground plane and that this ground plane is separated from what the Examiner identifies as floating ground planes by dielectric. The Examiner takes the position that some portion of the electromagnetic bandgap structure (EBG) 31 is a ground plane. Ans. 4, 12. The Examiner does not, however, provide any citations to Kirovski establishing that part of the EBG structure is a ground plane and does not provide any other explanation as to why a ground plane exists where the Examiner indicates. 6 Appeal 2018-006156 Application 14/282,551 The Examiner states that Toyao "discloses in Figure 13(a) ref. 31, a plurality of mushroom-type structures which are characterized as high- impedance ground surfaces." Id. at 12. Because the Examiner's statement is written in the passive voice, it is unclear whether the Examiner maintains that T oyao makes such a characterization or whether the Examiner is making the characterization. In any event, the Examiner does not explain where T oyao makes such a characterization ( and T oyao does not appear to explicitly refer to high-impedance ground surfaces) and does not explain why the Examiner has a basis to make this characterization. Because the Examiner has not adequately explained the factual basis for the rejection of claim 11, we do not sustain this rejection. Because the Examiner's treatment of the dependent claims do not cure this error, we also do not sustain the rejection of those claims. Restriction Requirement. Appellant requests rejoinder of dependent claim 17 and argues that a restriction requirement was improper. The propriety of the restriction is not an appealable matter. In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (holding that a restriction requirement is not the kind of decision Congress intended the board to review); see also 37 C.F.R. § 1.144 (review of restriction requirement is by petition to the Director, not appeal to the Board); MPEP § 1201 ("The Board will not ordinarily hear a question that should be decided by the Director on petition .... "). We therefore do not address Appellant's argument in this regard. 7 Appeal 2018-006156 Application 14/282,551 DECISION For the above reasons, we reverse the Examiner's rejections of claims 11-16, 18, and 19. REVERSED 8 Copy with citationCopy as parenthetical citation