DRÄGER SAFETY AG & CO. KGAA

Patent Trials and Appeals BoardDec 23, 2021

2021003629 (P.T.A.B. Dec. 23, 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. 16/327,058 02/21/2019 Arne TRÖLLSCH 76526 4166 23872 7590 12/23/2021 MCGLEW & TUTTLE, PC P.O. BOX 9227 SCARBOROUGH STATION SCARBOROUGH, NY 10510-9227 EXAMINER TON, TRI T ART UNIT PAPER NUMBER 2877 MAIL DATE DELIVERY MODE 12/23/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte ARNE TRÖLLSCH ________________ Appeal 2021-003629 Application 16/327,058 Technology Center 2800 ________________ Before JEAN R. HOMERE, JASON V. MORGAN, and SHARON FENICK, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1–6, 10–16, and 20–22.1 Claims App. An oral hearing was held October 21, 2021. A transcript was entered into the record on November 9, 2021. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Drager Safety AG & Co. KGaA as the real party in interest. Appeal Br. 1. Appeal 2021-003629 Application 16/327,058 2 SUMMARY OF THE DISCLOSURE Appellant’s claimed subject matter relates to a “measuring device . . . for measuring the absorption of gases.” Abstract. REFERENCES The Examiner relies on the following references (only the first named inventor of each reference is listed): Name Reference Date Yi US 2007/0279633 A1 Dec. 6, 2007 Barritault US 2017/0241904 A1 Aug. 24, 2017 Pape US 2017/0322149 A1 Nov. 9, 2017 REJECTIONS The Examiner rejects claims 1–6, 10–16, and 20–22 as follows: Claims Rejected 35 U.S.C. § Reference(s)/Basis Citation 1–3, 5,2 6, 10–13, 15, 16, 20–22 103 Pape, Yi Final Act. 3–6 4, 14 103 Pape, Yi, Barritault Final Act. 7 ANALYSIS Claims 1–4, 10–14, and 20 Claim 1, which is representative with respect to claims 1–4, 10–14, and 20, is reproduced below (disputed limitations emphasized and bracketing added). 1. A measuring device for measuring the absorption of gases, the measuring device comprising: 2 The Examiner omits claims 5 and 15 from the statement of the rejection (Final Act. 3), but addresses them in the body of the rejection (id. at 6). Appeal 2021-003629 Application 16/327,058 3 a radiation source; a first detector element; a second detector element; and a reflector array, the reflector array defining a first optical path between the radiation source and the first detector element and the reflector array defining a second optical path between the radiation source and the second detector element, [1] wherein the first optical path has at least two points of intersection with itself, the second detector element is arranged outside of a plane that is defined by the radiation source and the at least two points of intersection of the first optical path, [2] the radiation source being configured to emit at least a beam of radiation along the first optical path such the beam of radiation intersects itself at least twice. Appeal Br. 28 (Claims App.). In rejecting claim 1 as obvious, the Examiner finds that Pape’s optical gas sensor teaches most of the recitations of claim 1. Final Act. 3–4 (citing Pape Figs. 1, 4). The Examiner initially found that Pape’s beam path L teaches [1] “wherein the first optical path has at least two points of intersection with itself” (id. (citing Pape Fig. 1)), although the Examiner acknowledged that Pape does not explicitly teach [2] “the radiation source being configured to emit at least a beam of radiation along the first optical path such [that] the beam of radiation intersects itself at least twice” (id. at 4). Thus, the Examiner relied on Yi’s multi-mirrored gas sensor to teach or suggest recitation [2], concluding that it would have been obvious to modify Pape using the teachings and suggestions of Yi “in order to change the length of the optical paths.” Id. (citing Yi ¶¶ 99, 103, 105, Figs. 4, 6a–b, 7a– b, 13). In the Answer, the Examiner alternatively finds that Pape alone Appeal 2021-003629 Application 16/327,058 4 teaches or suggests recitation [2] because “[t]he plurality of light beams from emitter 5 can intersect multiple times more than twice.” Ans. 10.3 In particular, the Examiner proffers a modified version of Pape’s Figure 1 illustrating a beam A that intersects itself more than twice. Ans. 11. The Examiner’s modified figure, which the Examiner labels Figure 1a, is reproduced below. The Examiner’s Figure 1a depicts optical gas sensor 1, having cuvette 3, a plane mirror 6 and a concave mirror 7, as in Pape’s Figure 1. Emitter 5 emits light waves L, with the figure depicting three beams. Two of the depicted beams, one illustrated with a thin black solid line and the other with a thin black dashed line, are from Pape’s Figure 1. Each of these two beams bounces three times—passing through cuvette 3 four times and self- intersecting once—before reaching detector 4. The third beam, which the 3 Herein, we refer to the Examiner’s Answer as filed March 26, 2021. Appeal 2021-003629 Application 16/327,058 5 Examiner added and labeled as beam A, is depicted with a thick gray line. It follows a trajectory from emitter 5 that results in the third beam bouncing five times—passing through cuvette 3 six times and self-intersecting with itself three times—before reaching detector 4. Appellant argues the Examiner erred in relying on Yi to cure the alleged deficiency of Pape because “Yi et al directs a person of ordinary skill in the art toward a mirror arrangement that Pape et al. explicitly discloses should be avoided.” Appeal Br. 10; Reply Br. 3–4. Specifically, Appellant argues that Yi “discloses providing an emitter at a concave surface such that light enters from the concave surface towards a focus on an optical axis and light passes through the focus and then [is reflected] from a concave surface to be parallel to the optical axis.” Appeal Br. 10 (citing Yi Figs. 4, 6a–b, 7a–b, 13). Pape, Appellant argues, “discloses that it is critical that the emitter 5 and the detector 4 be arranged at the plane mirror 6 and not at a concave mirror because a gas sensor that has an arrangement of an emitter and a detector at a concave mirror can only be produced with great effort due to the curved surface of the concave mirror.” Id. at 9–10 (citing Pape ¶¶ 6, 7). Appellant’s argument is not persuasive because Appellant fails to cite any teaching in Pape suggesting that Pape’s optical gas sensor would be unlikely to work using an emitter and a detector at a concave mirror. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citing, e.g., In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998)). “[I]n general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.” Appeal 2021-003629 Application 16/327,058 6 Gurley, 27 F.3d at 553. “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). In particular, “mere disclosure of more than one alternative does not constitute a teaching away from any of the[] alternatives [if] such disclosure does not criticize, discredit, or otherwise discourage the solution.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Pape discloses that a gas sensor with a concave mirror that “comprises a plurality of recesses for accommodating a light bulb and a light wave detector” is a known alternative. Pape ¶ 6. Pape states “[s]uch a gas sensor has especially the drawback that an arrangement of the light bulb and light wave detectors at the concave mirror can only be produced with great effort because of the curved surface of the concave mirror.” Id. But this assertion falls short of a teaching away because it merely suggests that such an arrangement is inferior (i.e., it requires “great effort”), not that such an arrangement is unlikely to work. See Ans. 10 (stating “[w]hile Pape’s reference may teach an arrangement at the concave mirror can only be produced with great effort, this does not teach away because it does not teach that it can’t be done, but rather teaches a different preferred way”). Further, Appellant argues that Pape’s teaching that an arrangement of an emitter and detector at a concave mirror requires “great effort” implies “great manufacturing effort, which obviously increases manufacturing costs.” Reply Br. 4. But contrary to Appellant’s characterization, Pape is silent as to what kind of effort such an arrangement requires. The Appeal 2021-003629 Application 16/327,058 7 requirement for great design effort, for example, might have minimal impact on manufacturing costs. And even if Pape did explicitly disclose that the arrangement alternative would increase manufacturing or other costs (and thus be inferior in terms of cost), such disclosure would not constitute a teaching away from the combination of Pape and Yi. Appellant further argues that the Examiner erred in alternatively finding that Pape alone teaches or suggests recitation [2] because there is no teaching or suggestion in Pape et al. to support the position that Pape et al. discloses that a light beam from the emitter 5 can intersect multiple times more than twice. Pape et al. only discloses that a light beam passes through a cuvette between mirrors many times, such as four times or six times, before it reaches a light sensor. Pape et al. does not provide any mention that at least one of the light beams intersects itself more than twice as alleged in the Examiner’s Answer. . . . Pape et al. only discloses that the emitter 5 is arranged such that the light beam only intersects itself once. Pape et al. does not provide any teaching or suggestion as how the emitter 5 and the optics would be arranged in order to have the light beams intersect themselves more than twice. Reply Br. 4. Appellant’s argument is not persuasive of error because “[a] reference may be read for all that it teaches, including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418–21 (2007)). Here, although Pape’s Figure 1 only illustrates two exemplary light beams that each pass through cuvette 3 four times and self-intersect only once, Pape makes clear that additional light beams would also pass through cuvette 3. Pape ¶ 17. In particular, Pape teaches that a “light beam passes through the cuvette between the mirrors many times, e.g., four times or six times, before it Appeal 2021-003629 Application 16/327,058 8 reaches the light sensor.” Id. (emphasis added). Pape’s omission in Figure 1 of a light beam that passes through cuvette 3 six times—despite the teaching of such light beams in the description of Pape’s device—is evidence that the two light beams illustrated in Pape’s Figure 1 are merely illustrative and that other light beams would also pass through cuvette 3. This is consistent with Pape’s teaching of the use of light emitting diodes (LEDs), which are well- known omnidirectional emitters of light. Id. ¶ 12. Furthermore, Pape’s Figure 1 illustrates that plane mirror 6 and concave mirror 7 extend well beyond the points where the exemplary light beams bounce before passing through cuvette 3. Thus, the Examiner’s finding that Pape would have suggested to an artisan of ordinary skill that light would follow additional optical paths is reasonable and supported by the teachings of Pape. Moreover, Appellant does not show error in the Examiner’s analysis showing that, following basic principles of optics, at least one of these optical paths would intersect itself at least twice. Therefore, we also agree with the Examiner’s alternative finding that Pape also teaches or suggests both recitations [1] and [2]. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of claim 1, and claims 2–4, 10–14, and 20, which Appellant argues are patentable for similar reasons. Appeal Br. 10–12, 15–19, 22–23. Claims 5 and 15 Claim 5, which is representative with respect to claims 5 and 15, is reproduced below (disputed limitations emphasized and bracketing added). 5. A measuring device in accordance with claim 1, [3] wherein the second optical path has no point of intersection with itself. Appeal Br. 29 (Claims App.). Appeal 2021-003629 Application 16/327,058 9 In rejecting claim 5 the Examiner finds that Yi’s multi-mirrored gas sensor teaches recitation [3]. Final Act. 6 (citing Yi Fig. 1). The Examiner alternatively finds that Pape alone teaches recitation [3], arguing that a beam following an optical path with no point of intersection with itself can be seen in the Examiner’s Figure 1b, which is a modified version of Pape’s Figure 1. Ans. 14. The Examiner’s Figure 1b is reproduced below. The Examiner’s Figure 1b depicts optical gas sensor 1, having cuvette 3, a plane mirror 6 and a concave mirror 7. Emitter 5 emits light waves L, with the figure depicting three beams, as in Pape’s Figure 1. Two of the depicted beams, one illustrated with a thin black solid line and the other with a thin black dashed line, are from Pape’s Figure 1. Each of these two beams bounces three times—passing through cuvette 3 four times and self- intersecting once—before reaching detector 4. The third beam, which the Examiner added and labeled as beam B, is depicted with a thicker gray line. It follows a trajectory from emitter 5 that results in the third beam bouncing Appeal 2021-003629 Application 16/327,058 10 three times—passing through cuvette 3 four times without self- intersecting—before reaching detector 4. Appellant contends the Examiner erred in relying on Pape alone to teach or suggest recitation [3] because there is no teaching and no suggestion in Pape et al. to support the position in the Examiner’s Answer that the emitter 5 of Pape et al. provides an optical path that has no points of intersection with itself as featured in the present invention. Pape et al. only discloses that a light beam passes through a cuvette between mirrors many times, such as four times or six times, before it reaches a light sensor. Pape et al. does not provide any mention of any light beam having no point of intersection with itself as claimed. Reply Br. 8. Appellant’s argument is not persuasive of error because “[a] reference may be read for all that it teaches, including uses beyond its primary purpose.” Mouttet, 686 F.3d at 1331. As discussed above, the two light beams illustrated in Pape’s Figure 1 are merely illustrative and other light beams would also pass through cuvette 3. The Examiner’s finding that Pape would have suggested to an artisan of ordinary skill that light would follow additional optical paths is reasonable and supported by the teachings of Pape. Moreover, Appellant does not show error in the Examiner’s analysis showing that, following basic principles of optics, at least one of these optical paths would not intersect itself. Therefore, we agree with the Examiner’s finding that Pape also suggests recitation [3]. Appellant also contends the Examiner erred in relying on the cited teaching of Yi to teach or suggest recitation [3]. Appeal Br. 12–14; Reply Br. 6–7. In particular, Appellant argues that although Pape “discloses that a compact gas sensor is desired,” even Yi “discloses that the optical path tube Appeal 2021-003629 Application 16/327,058 11 structure shown in Fig. 1 disadvantageously results in a greater physical length of an optical waveguide and should be avoided.” Appeal Br. 14. The teaching of Yi the Examiner cites to with respect to claim 5 differs from the teaching of Yi the Examiner relies on with respect to claim 1, from which claim 5 depends. Compare Final Act. 6 with id. at 4; see also Yi ¶¶ 11, 16 (describing Yi’s Figures 1 and 4, which illustrate separate prior art methods to Yi). But as Pape alone suggests recitation [3], we do not reach Appellant’s arguments with respect to the additional cited teaching of Yi in combination with Pape. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of claim 5, and claim 15, which Appellant argues is patentable for similar reasons. Appeal Br. 19–21. Claims 6 and 16 Claim 6, which is illustrative with respect to claims 6 and 16, is reproduced below (disputed limitations emphasized and bracketing added). 6. A measuring device in accordance with claim 1, wherein: [4] the reflector array has a first mirror element and a second mirror element as well as a first concave mirror element and a second concave mirror element for the first optical path; a focus of the reflector array is located on the radiation source and another focus of the reflector array is located on the first detector element; and [5] the concave mirror elements are parabolic. Appeal Br. 29 (Claims App.). In rejecting claim 6, the Examiner finds that Pape’s concave mirror 7 teaches or suggests recitation [4] and [5]. Final Act. 5–6 (citing Pape Fig. 1); Ans. 14–16. In particular, the Examiner finds that the two halves of Pape’s Appeal 2021-003629 Application 16/327,058 12 concave parabolic mirror 7 represent the two concave parabolic mirror elements of recitations [4] and [5]. Ans. 16. Appellant contends the Examiner erred because “[t]here is only one concave mirror disclosed in Pape.” Appeal Br. 15. Appellant argues, in particular, that each half of the Pape’s mirror 7, when considered separately from the other half, is not parabolic. Reply Br. 9. Appellant argues that “[t]he ordinary meaning of the term ‘parabolic’ is in the shape of a parabola and the ordinary meaning of a parabola is a curve that is mirror symmetrical.” Id. Appellant’s proffered definition of parabolic, in the context of a concave mirror element, is consistent with the Specification, as illustrated by the Specification’s Figure 1b, which is reproduced below. The Specification’s Figure 1b illustrates a schematic top view of the claimed measuring device. Spec. ¶ 30. Multiple mirror elements are illustrated, including concave mirror elements 13 and 14, which individually appear parabolic with mirror symmetry and which are separated by another mirror element 15. See id. ¶ 36 (describing element 13 as “first concave Appeal 2021-003629 Application 16/327,058 13 mirror element” and element 14 as “second concave mirror element”), ¶ 19 (“the first concave mirror element and the second concave mirror element are preferably parabolic”). The Examiner’s interpretation of the first and second concave parabolic mirror elements as encompassing two halves of a single parabolic mirror, neither of which has mirror symmetry, is inconsistent with the Specification’s disclosed multiple parabolic mirrors. Therefore, we agree with Appellant that the Examiner’s findings do not show that Pape teaches or suggests recitations [4] and [5] given their broadest reasonable interpretation in light of the Specification. Furthermore, although the Examiner relies on Yi with respect to claim 1, from which claim 6 depends, the Examiner does not rely on Yi with respect to recitations [4] and [5]. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103 rejection of claim 6, and claim 16, which has similar recitations. Claims 21 and 22 Claim 21, which is illustrative with respect to claims 21 and 22, is reproduced below (disputed limitations emphasized and bracketing added). 21. A measuring device in accordance with claim 1, wherein the reflector array has a first mirror element, a second mirror element, a first concave mirror element and a second concave mirror element, the first mirror element, the second mirror element, the first concave mirror element and the second concave mirror element defining at least a portion of the first optical path, [6] the first mirror element having a first mirror element portion located adjacent to the first concave mirror element, the second mirror element having a second mirror element portion located adjacent to the second concave mirror element. Appeal Br. 32 (Claims App.). Appeal 2021-003629 Application 16/327,058 14 In rejecting claim 21, the Examiner, relying on the combined teachings of Pape and Yi, concludes with respect to recitation [6] that “it would have been obvious to one having ordinary skill in the art at the time of the invention was made to modify Pape by having first concave mirror element and a second concave mirror element in order to reflect light beam with different light paths.” Final Act. 6 (citing Yi Figs. 2, 4). The Examiner finds, in particular, that Yi illustrates mirrors that are adjacent to each other. Ans. 18 (citing Yi Figs. 2, 4). Appellant contends the Examiner erred because Yi’s Figure 2 “only shows concave mirrors 2, 3, [and] 4,” while Yi’s Figure 4 merely “discloses concave mirrors 12A, 13A.” Appeal Br. 23– 24. We find Appellant’s argument persuasive of error. Recitation [6] recites four mirror elements: (1) a first mirror element having a first mirror element portion located adjacent to (2) a first concave mirror element and (3) a second mirror element having a second mirror element portion located adjacent to (4) a second concave mirror element. Yi’s Figures 2 and 4 each disclose at most three mirror elements. The Examiner does not show that it would have been obvious to combine the teachings of both Yi Figure 2 and Figure 3 to teach or suggest at least four mirror elements. Moreover, the Examiner does not rely on Pape with respect to recitation [6]. Final Act. 6. Therefore, the Examiner’s findings do not show that the four claimed mirror elements, arranged in the manner of recitation [6], would have been obvious in light of the combined teachings of Pape and Yi. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103 rejection of claim 21, and claim 22, which has similar recitations. Appeal 2021-003629 Application 16/327,058 15 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5, 6, 10–13, 15, 16, 20–22 103 Pape Yi 1–3, 5, 10–13, 15, 20 6, 16, 21, 22 4, 14 103 Pape, Yi, Barritault 4, 14 Overall Outcome 1–5, 10–15, 20 6, 16, 21, 22 TIME PERIOD FOR RESPONSE No time period for taking subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART