Ex Parte Caneau et al

Patent Trial and Appeal Board

Feb 29, 2016

12570606 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/570,606 0913012009
22928 7590 03/02/2016
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Catherine Genevieve Caneau
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.
SP09-274 1457
EXAMINER
DEVITO, ALEX T
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CATHERINE GENEVIEVE CANEAU,
ANPING LIU, SCOTT CHRISTOPHER POLLARD,
FENG XIE, and CHUNG-EN ZAH
Appeal2014-003654
Application 12/570,606 1
Technology Center 2800
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
TROCK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-21, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Coming Incorporated.
Br. 1.
Appeal2014-003654
Application 12/570,606
STATEMENT OF THE CASE
Invention
The claims are directed to a gas detector including a tuning fork
positioned along a longitudinal length of an acoustic resonator. Abstract.
Exemplary Claim
Exemplary claim 1 is reproduced below, with disputed limitations
emphasized:
1. A photoacoustic gas detector for detecting the concentration of
at least one target gas, the gas detector comprising:
a laser source;
a resonator extending along a longitudinal axis, the
resonator having a first end, a second end, and an inner cavity
between the first end and the second end, the inner cavity
extending along the longitudinal axis and defining a
longitudinal opening between the first end and the second end,
the inner cavity adapted to allo\~1 a laser beam from the laser
source to pass through the longitudinal opening; and
at least one tuning fork positioned along a longitudinal
length of the resonator, said tuning fork comprising a first
prong and a second prong, wherein the longitudinal axis does
not intersect any area between the first prong and the second
prong.
Applied Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
DiFoggio et al.
("DiF oggio")
Braig et al.
("Braig")
US 2002/0178805 Al Dec. 5, 2002
US 2005/0037482 Al Feb. 17, 2005
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Application 12/570,606
Hurvitz et al.
("Hurvitz")
Van Kesteren '751
Willing
Van Kesteren '3 12
US 2008/0088821 Al Apr. 17, 2008
WO 2006/092751 Al Sept. 8, 2006
EP 2019307 Al July 24, 2007
WO 2008/056312 Al May 15, 2008
REJECTIONS
The Examiner made the following rejections:
Claims 1-7, 9, 11-15, and 21 stand rejected under 35 U.S.C § 103(a)
as being unpatentable over Van Kesteren '751 and DiFoggio. Final Act. 2-
6.
Claims 8 and 18 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Van Kesteren '751, DiFoggio, and Braig. Final Act. 6-7.
Claims 10, 16, and 17 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Van Kesteren '751, DiFoggio, and Willing. Final Act. 7.
Claim 19 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Van Kesteren '751, DiFoggio, and Van Kesteren '312.
Final Act. 8.
Claim 20 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Van Kesteren '751, DiFoggio, and Hurvitz. Final Act. 8-
9.
ANALYSIS
We have reviewed the Examiner's rejections and the evidence of
record in light of Appellants' arguments that the Examiner has erred. We
disagree with Appellants' arguments and conclusions. We adopt as our own:
( 1) the findings and reasons set forth by the Examiner in the action from
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Application 12/570,606
which this appeal is taken (Final Act. 2-9 (mailed Mar. 20, 2013)), (2) the
Advisory Action (Adv. Act. 2 (mailed June 5, 2013)), and (3) the findings
and the reasons set forth in the Examiner's Answer (Ans. 2-3 (mailed Nov.
15, 2013)). We concur with the conclusions reached by the Examiner and
further highlight specific findings and argument for emphasis as follows.
Independent Claims 1 and 11
Appellants argue the combination of Van Kesteren '751 and DiFoggio
does not teach or suggest positioning a tuning fork along a resonator such
that the resonator's "longitudinal axis does not intersect any area between
the first prong and the second prong" of the tuning fork, as recited in claims
1 and 11. Br. 4---6. Specifically, Appellants argue that the motivation the
Examiner identifies in DiFoggio "primar[ily] concem[s] liquid flow," but
because Van Kesteren '751 is directed to gases, not liquids, "one of ordinary
skill in the art would not have been motivated ... to combine the teachings
of Van Kesteren ['751] with the teachings ofDiFoggio." Br. 5---6 (citing
DiFoggio if 53).
In identifying a reason that would have prompted a person of ordinary
skill in the relevant field to combine the prior art teachings, the Examiner
must show some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). Here, the Examiner finds Van Kesteren '751
teaches a gas detector having a resonator pipe and a tuning fork. Final Act.
2-3 (citing Van Kesteren '751 Figs. 2, 6, and 8b). The Examiner also finds
DiFoggio teaches placement of a tuning fork along a flow pipe such that the
flow pipe's longitudinal axis does not intersect an area between the tuning
fork's prongs. Final Act. 3 (citing DiFoggio Fig. 9B). The Examiner finds
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Application 12/570,606
the motivation to combine Van Kesteren '751 and DiFoggio from DiFoggio
itself, where DiFoggio teaches placement of a tuning fork to avoid
"undesired effects inside the pipe" such as "abrasion or damage from
turbulence or sand and other debris." Final Act. 3 (citing DiFoggio if 53).
Appellants' argument, that avoidance of turbulence and debris in
liquids would not motivate one of ordinary skill in the art to avoid
turbulence and debris in gases, is not persuasive of examiner error. See Br.
6. The Examiner finds, and we agree, "debris can be carried by a gas, and
gas can be turbulent." Adv. Act. 2. Accordingly, tuning forks in liquids and
gasses both can suffer from the common problem of damage from
turbulence and debris, so avoiding turbulence and debris is reasonable and
desirable for tuning forks in gases as well as tuning forks in liquids.
Furthermore, the Examiner finds, and we agree, that DiFoggio teaches
its improvements are provided to avoid turbulence and debris in fluids, and
both liquids and gasses may act as fluids (Ans. 2 (citing DiFoggio i153)).
Accordingly, DiFoggio's motivation is not limited to liquids, as argued by
Appellants, and would motivate one of ordinary skill in the art to apply its
improvements to gasses as well. Accordingly, we find the Examiner has
articulated sufficient reasoning with a rational underpinning to support the
combination ofDiFoggio and Van Kesteren '751.
Appellants additionally argue the Examiner's combination "would
render [Van Kesteren '751] unsatisfactory for its intended purpose" because
"the compactness of the device as well as the efficient transformation of
acoustic energy into electrical signals would be compromised." Br. 7.
While Appellants provide arguments that the modification would
compromise compactness and efficiency, Appellants have not provided
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evidence that modifying the placement of Van Kesteren '751 's tuning fork
would affect the compactness or efficiency of Van Kesteren '751 's device.
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in
a brief cannot take the place of evidence.").
Accordingly, we are not persuaded the Examiner erred in finding
claims 1 and 11 obvious over the combination of Van Kesteren '751 and
DiFoggio.
Dependent Claims 2-10 and 12-21
Appellants have not presented persuasive arguments with respect to
dependent claims 2-10 and 12-21. See Br. 4--8. For the reasons set forth
above, therefore, we are not persuaded the Examiner erred in rejecting these
claims. See In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011) ("We
conclude that the Board has reasonably interpreted Rule 41.3 7 to require
applicants to articulate more substantive arguments if they wish for
individual claims to be treated separately."). Accordingly, we sustain the
Examiner's rejections of dependent claims 2-10 and 12-21. See 37 C.F.R.
§ 41.37(c)(l)(iv)(2012).
DECISION
We AFFIRM the Examiner's rejections of claims 1-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv)(2009).
AFFIRMED
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