BLUE OCEAN NOVA AG

Patent Trials and Appeals BoardJun 9, 2021

2020004856 (P.T.A.B. Jun. 9, 2021)

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. 16/025,520 07/02/2018 Joachim MANNHARDT 1114/0106PUS1 2055 60601 7590 06/09/2021 Muncy, Geissler, Olds & Lowe, P.C. 4000 Legato Road Suite 310 Fairfax, VA 22033 EXAMINER NGUYEN, SANG H ART UNIT PAPER NUMBER 2886 NOTIFICATION DATE DELIVERY MODE 06/09/2021 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): MAILROOM@MG-IP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOACHIM MANNHARDT, ARMIN LAMBRECHT, and GERD SULZ ____________ Appeal 2020-004856 Application 16/025,520 Technology Center 2800 ____________ Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–20.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Endress + Hauser Conducta GmbH + Co. KG as the real party in interest. Appeal Brief filed February 18, 2020 (“Appeal Br.”), 2. 2 Final Office Action entered November July 18, 2018 (“Final Act.”), 1. Appeal 2020-004856 Application 16/025,520 2 CLAIMED SUBJECT MATTER Appellant claims a device for analysis of a product to be analyzed that is located in a product space (independent claims 1 and 19), and a probe (independent claim 20). Appeal Br. 4–6. Claim 1 illustrates the subject matter on appeal, and reads as follows: 1. A device for an analysis of a product to be analyzed that is located in a product space, the device comprising: a probe body with a circumferential wall that is arranged in a probe housing, the probe having a first end and a second end; at least one radiation source; at least one optical receiver; at least one measurement window arranged within the circumferential wall with an entrance region and an exit region for measurement radiation, the at least one measurement window being arranged between and spaced from the first end and the second end of the probe body; and an evaluation unit; wherein, in a measurement position of the probe body, at which at least one part of the probe body in which the measurement window is arranged plunges through an opening of the probe housing into the product space for analysis, and wherein, in a retracted position of the probe body, at which the probe body is at least still partially situated in a region of the opening of the probe housing and covers the opening at the same time, wherein the at least one measurement window is an ATR element, and wherein the ATR element is arranged in at least one subregion of the circumferential wall of the probe body in the beam path. Appeal Br. 14 (Claims Appendix) (emphasis added). Like claim 1, the remaining independent claims on appeal—claims 19 and 20—recite, in part, Appeal 2020-004856 Application 16/025,520 3 a measurement window arranged within a probe body’s circumferential wall between first and second ends of the probe body. Appeal Br. 17–18 (Claims Appendix). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered April 15, 2020 (“Ans.”): I. Claims 19 and 20 under 35 U.S.C. § 102(a)(1) as anticipated by Stevenson;3 II. Claims 1–8, 10, and 16–18 under 35 U.S.C. § 103 as unpatentable over Stevenson in view of Mannhardt;4 III. Claim 9 under 35 U.S.C. § 103 as unpatentable over Stevenson in view of Mannhardt and Chen;5 IV. Claims 11 and 12 under 35 U.S.C. § 103 as unpatentable over Stevenson in view of Mannhardt and Koerner;6 V. Claim 13 under 35 U.S.C. § 103 as unpatentable over Stevenson in view of Mannhardt and Ben-Zion;7 and VI. Claims 14 and 15 under 35 U.S.C. § 103 as unpatentable over Stevenson in view of Mannhardt and Sato.8 3 Stevenson et al. (US 5,585,634 A, issued December 27, 1996). 4 Mannhardt et al. (US 7869028 B2, issued January 11, 2011). 5 Chen et al. (US 2003/0219809 A1, published November 27, 2003). 6 Koerner et al. (US 2016/0076997 A1, published March 17, 2016). 7 Ben-Zion et al. (US 2016/0116407 A1, published April 28, 2016). 8 Sato et al. (US 5,569,921 A, issued October 29, 1996). Appeal 2020-004856 Application 16/025,520 4 FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we reverse the Examiner’s rejection of claims 19 and 20 under 35 U.S.C. § 102(a)(1), and rejections of claims 1–18 under 35 U.S.C. § 103, for reasons set forth in the Appeal and Reply Briefs, and below. Rejection I We first address the Examiner’s rejection of claims 19 and 20 under 35 U.S.C. § 102(a)(1) as anticipated by Stevenson. Independent claims 19 and 20 both require the recited probe body to comprise a first end, a second end opposite the first end forming an end cap, and a circumferential wall extending between the first and second ends. Claims 19 and 20 also require a measurement window to be arranged within the probe body’s circumferential wall between the first and second ends of the probe body. Because independent claims 19 and 20 share the limitations at issue in the present appeal, we limit our discussion to claim 19, with the understanding that our analysis of the Examiner’s rejection of claim 19 also applies to claim 20. The Examiner finds that Stevenson discloses a device including probe sensor 30, which the Examiner finds corresponds to a probe body. Final Act. 3 (citing Stevenson Figs. 5 and 5a). The Examiner finds that Figure 5a of Stevenson shows that probe sensor 30 (probe body) includes first and second ends, and the Examiner provides an annotated copy of Figure 5a, which the Examiner indicates shows a circumferential wall extending between the first and second ends of probe sensor 30 (probe body). Final Act. 3. The Examiner finds that Stevenson discloses sensor surface 40, Appeal 2020-004856 Application 16/025,520 5 which the Examiner finds corresponds to a measurement window “arranged within the circumferential wall of the cap (70 @ figure 5a) between the first and second ends.” Final Act. 3 (citing Stevenson Fig. 5a). As Appellant points out, however, the annotations made by the Examiner in Stevenson’s Figure 5a are illegible. Appeal Br. 8. Appellant further argues that Stevenson does not teach or suggest a measurement window arranged within a circumferential wall between first and second ends of a probe body, as required by claim 19. Id. at 7. Appellant argues that sensor surface 40 disclosed in Stevenson is not disposed between first and second ends of sensor 30 (probe body), but, rather, is disposed at, or on, one end of sensor 30 (probe body). Id. at 7–8. In response to Appellant’s arguments, the Examiner clarifies the elements of Stevenson’s device that the Examiner relies on as corresponding to the elements recited in claim 19, finding that Stevenson’s epoxy casing 36 constitutes a circumferential wall. Ans. 7 (citing Stevenson Figs. 4 and 5a). The Examiner finds that elements 38 shown in Stevenson’s Figure 4 constitute first and second ends of sensor 30 (probe body). Ans. 5. The Examiner also finds that elements 43, 44 shown in Stevenson’s Figure 5a also constitute first end 43 and second end 44 of sensor 30 (probe body). Ans. 7. The Examiner finds that epoxy casing 36 (circumferential wall) extends between first end 43 and second end 44 of sensor 30 (probe body), and sensor region 40 having sensor surface 41 shown in Stevenson’s Figures 4 and 5a is arranged within epoxy casing 36 (circumferential wall) between first end 43 and second end 44 of sensor 30 (probe body). Id. On the record before us, however, the Examiner does not provide a sufficient factual basis to establish that Stevenson discloses a measurement Appeal 2020-004856 Application 16/025,520 6 window arranged within a probe body’s circumferential wall between first and second ends of the probe body as required by claim 19, for reasons expressed by Appellant (Appeal Br. 7–8; Reply Br. 3–6), and discussed below. Stevenson discloses sensor 30 including optical fiber 31 having core portion 32 and cladding layer 34. Stevenson col. 4, ll. 4–8; Fig. 4. Stevenson discloses that optical fiber 31 includes two transmission portions 31T and two terminal portions 38 at the end of transmission portions 31T. Stevenson col. 4, ll. 8–10; Fig. 4. Stevenson discloses that optical fiber 31 is formed into a “tight U bend” such that terminal portions 38 of optical fiber 31 are positioned next to one another. Stevenson col. 4, ll. 11–13; Fig. 4. Stevenson discloses that optical fiber 31 is embedded in epoxy optical cement 36. Stevenson col. 4, ll. 8–9; Fig. 4. Stevenson explains that in the U bend region of optical fiber 31, epoxy optical cement 36 “is polished with suitable optical abrasives until the core portion 32 and attached cladding portion 34 are approximately fifty percent removed” to form sensor region 40 having exposed sensor surface 41. Stevenson col. 4, ll. 15–21; Fig. 4. Stevenson’s Figure 5a illustrates sensor 30 shown in Stevenson’s Figure 4 inserted into housing 42 (also referred to a probe support tube 42). Stevenson col. 4, ll. 32–33, 45–46; Fig. 5a. Stevenson discloses that in this embodiment, terminal portions 38 of optical fiber 31 are biased against end surfaces of transmission cables 43, 44, which are secured to housing 42. Stevenson col. 4, ll. 32–35, 45–49; Fig. 5a. As discussed above, the Examiner finds that elements 38 shown in Stevenson’s Figure 4 constitute first and second ends of sensor 30 (probe body), while elements 43, 44 shown in Stevenson’s Figure 5a also constitute Appeal 2020-004856 Application 16/025,520 7 first end 43 and second end 44 of sensor 30 (probe body). Ans. 5, 7. As also discussed above, the Examiner finds that epoxy casing 36 constitutes a circumferential wall, and finds that sensor surface 41 constitutes a measurement window arranged within epoxy casing 36 (circumferential wall) between first end 43 and second end 44 of sensor 30 (probe body). Ans. 7. Claim 19, however, requires the recited probe body to comprise a first end, a second end opposite the first end, and a circumferential wall extending between the first end and the second end, and claim 19 further requires a measurement window to be arranged within the probe body’s circumferential wall between the first and second ends of the probe body. As discussed above, Stevenson discloses that exposed sensor surface 41 (measurement window) is formed by polishing epoxy optical cement 36 with optical abrasives to remove core portion 32 and attached cladding portion 34 of optical fiber 31. Stevenson col. 4, ll. 15–21; Fig. 4. As shown in Stevenson’s Figure 4, exposed sensor surface 41 (measurement window) constitutes one end of sensor 30 (probe body). As also shown in Figure 4 and explicitly disclosed in Stevenson, terminal portions 38 refer to the ends of optical fiber 31, rather than ends of sensor 30 (probe body). Stevenson col. 4, ll. 8–10; Fig. 4. Contrary to the Examiner’s findings, Stevenson, therefore, does not disclose that exposed sensor surface 41 (measurement window) is arranged within first and second ends of sensor 30 (probe body), as required by claim 19. Furthermore, even if terminal portions 38 of Stevenson’s optical fiber 31, which are attached to transmission cables 43, 44 in the embodiment illustrated in Stevenson’s Figure 5a, constitute first and second ends of Appeal 2020-004856 Application 16/025,520 8 Stevenson’s sensor 30 (probe body) as the Examiner finds, and even if epoxy casing 36 constitutes a circumferential wall as the Examiner also finds, Stevenson’s exposed sensor surface 41 (measurement window) is not arranged between terminal portions 38 (asserted first and second ends) as required by claim 19. Rather, due to the “tight U bend” in optical fiber 31, terminal portions 38 of optical fiber 31 are positioned next to one another, while exposed sensor surface 41 (measurement window) is disposed at the opposite end of sensor 30 (probe body). Consequently, on the record before us, the Examiner does not provide a sufficient factual basis to establish that Stevenson discloses a measurement window arranged within a probe body’s circumferential wall between first and second ends of the probe body, as required by claim 19. We, therefore, do not sustain the Examiner’s rejection of claims 19 and 20 as anticipated by Stevenson. Rejections II–VI We turn now to the Examiner’s rejections of claims 1–18 under 35 U.S.C. § 103 as unpatentable over Stevenson in view of numerous additional prior art references. Similar to claim 19 discussed above, claim 1 requires the recited device to comprise a probe body having a circumferential wall and first and second ends, and a measurement window arranged within the circumferential wall between and spaced from the first and second ends of the probe body. Like the Examiner’s rejection of claim 19, the Examiner finds that Stevenson discloses a probe body and measurement window as recited in claim 1. Final Act. 4–5. We, however, do not sustain the Examiner’s rejection of claim 1, and rejections of claims 2–18, which each depend from Appeal 2020-004856 Application 16/025,520 9 claim 1, because the Examiner’s rejections of these claims suffer from at least the same reversible error as the Examiner’s rejection of claims 19 and 20 under 35 U.S.C. § 102(a)(1) as anticipated by Stevenson, discussed above, and the Examiner does not rely on any disclosure in the additional prior art references applied in these rejections that cures the deficiencies in the Examiner’s reliance on Stevenson. Final Act. 4–10. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 19, 20 102(a)(1) Stevenson 19, 20 1–8, 10, 16–18 103 Stevenson, Mannhardt 1–8, 10, 16–18 9 103 Stevenson, Mannhardt, Chen 9 11, 12 103 Stevenson, Mannhardt, Koerner 11, 12 13 103 Stevenson, Mannhardt, Ben- Zion 13 14, 15 103 Stevenson, Mannhardt, Sato 14, 15 Overall Outcome 1–20 REVERSED