Ex Parte Ferraro et al

Patent Trial and Appeal Board

May 31, 2018

14364105 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/364,105 06/10/2014 Franco Ferraro
23364 7590 06/04/2018
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
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.
FERR3008/JS-FD 3647
EXAMINER
SINHA, TARUN
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCO FERRARO and PHILIPP WALSER
Appeal2017-009539
Application 14/364,105
Technology Center 2800
Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 11-20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 In explaining our Decision, we refer to the Specification filed June 10,
2014 ("Spec."); Final Office Action docketed July 29, 2016 ("Final Act.");
Appeal Brief filed December 27, 2016 ("Appeal Br."); Examiner's Answer
docketed April 28, 2017 ("Ans."); and Reply Brief filed June 28, 2017
("Reply Br.").
2 Appellant is the Applicant, "Endress + Hauser GmbH +Co.KG," which is
identified as the real party in interest. Appeal Br. 2.
Appeal2017-009539
Application 14/364,105
The Claimed Invention
Appellant's disclosure relates to an apparatus for determining and/or
monitoring at least one process variable, wherein the apparatus has a
primary side and a secondary side, which are galvanically isolated from one
another. Spec. 1, Abstract. According to the Specification, the process
variable being determined and/or monitored may include, for example, the
fill level of a liquid or a bulk good in a container, the density, the viscosity,
the electrical conductivity, the flow, or the pH-value of a liquid. Spec. 1.
Claim 11, the sole independent claim, is illustrative of the claimed
subject matter on appeal and is reproduced below from the Claims Appendix
of the Appeal Brief (Appeal Br. 14) (key disputed claim language italicized
and bolded):
11. An apparatus for determining and/ or monitoring at
least one process variable of a medium in a pipeline or a
container, comprising:
a primary side and a secondary side, which are
galvanically isolated from one another, said secondary
side has a sensor element sensitive for the process variable
and an electronics unit of said secondary side, and
provides a measurement signal representing the process
variable; and
the primary side has an electronics unit of the primary
side for evaluating the measurement signal and for
producing an output signal, wherein:
said electronics unit of said secondary side includes a
modulation unit, which produces a modulated
measurement signal by at least at times modulating at
least one other piece of information onto the
measurement signal representing the process variable;
and
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Application 14/364,105
said electronics unit of the secondary side transmits
the modulated measurement signal via a galvanically
isolated interface to the primary side.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Nicolai
Jung et al.,
(hereinafter "Jung")
Wemet et al.,
(hereinafter "W emet")
US 4,353,245 Oct. 12, 1982
US 2003/0011768 Al Jan. 16, 2003
US 2010/0132454 Al June 3, 2010
The Rejections
On appeal, the Examiner maintains (Ans. 2) the following rejections:
1. Claims 11-13 and 16-20 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Wemet ("Rejection 1"). Final Act. 3.
2. Claim 14 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Wemet in view of Jung ("Rejection 2"). Final Act. 7.
3. Claim 15 is rejected underpre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Wemet in view of Nicolai ("Rejection 3"). Final Act. 7.
OPINION
Reiection 1
The Examiner determines that W emet teaches a system satisfying all
of the limitations of claim 11 and thus, concludes that the reference would
have rendered claim 11 obvious. Final Act. 3--4 ( citing Wemet, Abstract,
,r,r 5, 8, 15, 19, 20, Fig. 1). Regarding "a modulation unit, which produces a
modulated measurement signal by at least at times modulating at least one
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Application 14/364,105
other piece of information onto the measurement signal representing the
process variable," the Examiner relies principally on paragraph 8 of Wemet
for teaching or suggesting this limitation. Id. at 4.
In particular, the Examiner relies on paragraph 8 of Wemet, which
discloses:
An embodiment includes, that the transferring unit
is embodied in such a manner, that it transmits data from
the second electronics unit to the first electronics unit
transmits by modulating, in accordance with the data, the
electrical current, which the second electronics unit gets
from the first electronics unit. In this embodiment, the
information transfer is from the secondary- to the
primary-side. This transmission is done in such a manner
that, on the secondary-side, the electrical current
requirement is modulated as a function of the information
to be transmitted, i.e. the primary-side notices, that, on
the secondary-side, in each case, another electrical
current requirement exists. Corresponding to an agreed
protocol, thus, information is transmitted to the primary-
side.
Appellant argues that the Examiner's rejection of claim 11 should be
reversed because W emet does not teach or suggest "a modulation unit,
which produces a modulated measurement signal by at least at times
modulating at least one other piece of information onto the measurement
signal representing the process variable," as recited in the claim. Appeal Br.
10-11; see also Reply Br. 2-3.
In particular, Appellant argues that "Wernet does not disclose or
suggest producing a measurement signal representing the process variable,
and modulating onto that measurement signal another piece of
information." Appeal Br. 10. Appellant contends that, as opposed to
teaching modulating information onto a measurement signal representing a
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Application 14/364,105
process variable as required by claim 11, Wemet teaches "modulating an
energy signal that, prior to such modulation, lacks any representation of a
process variable." Id. at 11. Appellant argues that "[t]here is never any
modulation of at least one other piece of information onto a measurement
signal representing a process variable," as recited in the claim. Id. at 11.
Appellant's argument is persuasive because the Examiner has not
established by a preponderance of the evidence that W emet teaches or
suggests "a modulation unit, which produces a modulated measurement
signal by at least at times modulating at least one other piece of information
onto the measurement signal representing the process variable," as required
by claim 11. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding
that the examiner bears the initial burden of establishing a prima facie case
of obviousness.).
As Appellant maintains (Appeal Br. 10-11), claim 11 requires both
producing "a measurement signal representing the process variable" and
"modulating at least one other piece of information onto the measurement
signal representing the process variable." Appellant's Specification also
makes clear that by modulating the measurement signal, the primary side
"acquires more information than in the case of transmission of just the
measurement signal" (Spec. 2-3 ( emphasis added)), indicating that the
transmission of the measurement does not itself provide "at least one other
piece of information ... representing the process variable."
The Examiner does not provide an adequate technical explanation or
direct us to sufficient evidence in the record that the cited art teaches or
suggests the limitation requiring "modulating at least one other piece of
information onto the measurement signal." None of the portions of Wemet
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Application 14/364,105
upon which the Examiner relies teach or suggest modulating at least one
other piece of information onto the measurement signal representing the
process variable, as required by the claim. See Wemet ,r 5 ( disclosing that
the "transferring unit transmits data from the first electronics unit to the
second electronics unit"), ,r 8 ( disclosing embodiment wherein the
transferring unit transmits data from the second electronics unit to the first
electronics unit "by modulating, in accordance with the data, the electrical
current"), ,r 15 ( disclosing schematic drawing of Fig. 1 ), ,r 19 ( disclosing that
the "input/output of measured data ... or measurement parameters" is
implemented in the "first electronics unit 1 "), ,r 20 ( disclosing that a
"galvanic isolation ... exist[s] between the two electronic units 1, 2" and
that "information/data [may] be transferred between the two units 1, 2").
As Appellant explains (Appeal Br. 10-11), although Wemet discusses
that "electrical energy is transmitted through a transformer 10" and "the
transmission of the data, or information, is superimposed on the transmission
of the energy" (Wemet ,r,r 22-23), there is no teaching or suggestion of
producing a measurement signal representing the process variable and
modulating onto that measurement signal another piece of information, as
claimed.
We do not find the Examiner's discussion regarding transmission of
the carrier signal/carrier wave at pages 2--4 of the Answer persuasive for the
reasons provided by Appellant at pages 10-11 of the Appeal Brief and pages
2-3 of the Reply Brief. In particular, we concur with Appellant that the
Examiner does not adequately explain or provide sufficient evidence to
support a finding that a person of ordinary skill in the art would have
understood the carrier signal/carrier wave and the electrical current
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Application 14/364,105
(modulated signal) itself as corresponding to the "modulating at least one
other piece of information onto a measurement signal representing a process
variable" recitation of claim 11, particularly in light of the Specification
indicating that the transmission of the measurement itself does not itself
provide the required limitation. See Spec. 2-3
The Examiner also does not identify an adequate reason or motivation
for one of ordinary skill in the art to modify W emet' s electronics units in the
manner claimed. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007) (requiring "reasoning with some rational underpinning to support the
legal conclusion of obviousness") ( quoting In re Kahn, 441 F .3d 977, 988
(Fed. Cir. 2006)).
The Examiner's assertions that "[i]t is well known in the art that a
modulated signal consists of a carrier signal and a signal that is being
modulated onto or in accordance with the carrier signal" (Ans. 2) and the
"electrical current can be considered to be 'at least one other piece of
information' since an electrical current is a quantifiable value" (id. at 4) are
not persuasive because they are conclusory and, without more, do not
sufficiently address Appellant's principal argument that Wemet does not
teach or suggest "modulating at least one other piece of information onto the
measurement signal representing the process variable," as claimed. Kahn,
441 F.3d at 988 (holding "rejections on obviousness grounds cannot be
sustained by mere conclusory statements").
We, therefore, cannot sustain the Examiner's rejection because the
Examiner has failed to establish that Wemet teaches or renders obvious all
of the limitations of claim 11. Because claims 12-20 each depends from
claim 11, we also cannot sustain the Examiner's rejection of these claims.
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Accordingly, we reverse the Examiner's rejection of claims 11-20
under 35 U.S.C. § 103(a) as obvious over Wemet.
Rei ections 2. 3. and 4
The foregoing deficiencies in the Examiner's findings and conclusions
regarding the Wemet reference (Rejection 1, stated above) are not remedied
by the Examiner's findings regarding the additional references or
combination of references cited in support of the second and third grounds
of rejection.
Accordingly, we also reverse the Examiner's Rejections 2 and 3.
DECISION
The Examiner's rejections of claims 11-20 are reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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