Ex Parte Kamba et al

Patent Trial and Appeal Board

Dec 21, 2017

14601284 (P.T.A.B. Dec. 21, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/601,284 01/21/2015 Seiji Kamba 036433.03422 8492
38485 7590
ARENT FOX LLP
1675 BROADWAY
NEW YORK, NY 10019
12/26/2017 EXAMINER
FEIN, ABRA S
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
12/26/2017 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):
patentdocket @ arentfox. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEIJI KAMBA, TAKASHI KONDO, NOBUAKI SHIRAI,
TOSHIKI OKADA, and MAKOTO HASEGAWA
Appeal 2017-001489
Application 14/601,284
Technology Center 2800
Before ROMULO H. DELMENDO, MICHELLE N. ANKENBRAND, and
JANE E. INGLESE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1—14.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 The Appellant is the Applicant, Murata Manufacturing Co., Ltd., which,
according to the Brief, is the real party in interest (Application Data Sheet
filed January 21, 2015; Appeal Brief filed February 26, 2016, hereinafter
“Appeal Br.,” 2).
2 Appeal Br. 3—6; Reply Brief filed November 3, 2016, hereinafter “Reply
Br.,” 1—5; Final Office Action entered September 18, 2015, hereinafter
“Final Act.,” 2—12; Examiner’s Answer entered September 16, 2016,
hereinafter “Ans.,” 2—5.
Appeal 2017-001489
Application 14/601,284
I. BACKGROUND
The subject matter on appeal relates to a method for measuring the
presence or absence of an object or the quantity thereof (Specification filed
January 21, 2015, hereinafter “Spec.,” 12). According to the inventors,
“since [a] void-arranged structural body functions as both an extraction filter
and a measurement device, the object to be measured contained in the
specimen can be measured with a high accuracy by a simple step” {id. 115).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief (Appeal Br. 8), with key limitations emphasized, as follows:
1. A method for measuring, the method comprising:
filtrating an object to be measured from a specimen using
a void-arranged structural body having a plurality of void
portions penetrating in a direction perpendicular to a primary
surface of the void-arranged structural body so as to hold the
object to be measured by the void-arranged structural body, a
pore size of the plurality of void portions being 0.9 to 9pm;
irradiating an electromagnetic wave having a
wavelength of one tenth to 10 times the pore size on the void-
arranged structural body holding the object to be measured; and
detecting characteristics of an electromagnetic wave
scattered by the void-arranged structural body so as to measure
presence or absence of the object to be measured.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains multiple rejections under
35 U.S.C. § 103(a), as follows:
A. Claims 1,3, and 4 as unpatentable over Junta et al.3 (hereinafter
“Junta”) in view of Ezura et al.4 (hereinafter “Ezura”);
3 JP 2005-283556 A, published October 13, 2005 (translation of record).
4 US 2011/0063592 Al, published March 17, 2011.
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Application 14/601,284
B. Claims 1,2, and 4 as unpatentable over Koichi et al.5
(hereinafter “Koichi”) in view of Ezura and Junta;
C. Claim 5 as unpatentable over Koichi, Junta, and Ezura, and
further in view of Reikichi et al.6 (hereinafter “Reikichi”) and
Yoichiro et al.7 (hereinafter “Yoichiro”);
D. Claim 5 as unpatentable over Junta and Ezura, and further in
view of Reikichi and Yoichiro;
E. Claims 6, 7, 9, 10, and 12 as unpatentable over Koichi, Junta,
and Ezura, and further in view of Kamba et al.8 (hereinafter
“Kamba”);
F. Claims 8, 11, 13, and 14 as unpatentable over Koichi and
Ezura, and further in view of Morrell et al.9 (hereinafter
“Morrell”); and
G. Claims 8, 11, 13, and 14 as unpatentable over Junta and Ezura,
and further in view of Morrell.
(Final Act. 3—12; Ans. 2—5.)
III. DISCUSSION
The Appellant focuses its arguments against the rejections by
attacking the Examiner’s reliance on three key references—namely, Junta,
Ezura, and Koichi (Appeal Br. 3—6)—and adding that the remaining
references do not “remedy any of the deficiencies” in these three key
5 JP 2002-277358 A, published September 25, 2002 (translation of record).
6 JP 2001-296240 A, published October 26, 2001 (translation of record).
7 JP 2009-085724 A, published April 23, 2009 (translation of record).
8 US 2012/0153159 Al, published June 21, 2012.
9 US 2010/0108910 Al, published May 6, 2010.
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Application 14/601,284
references (id. at 6). Additionally, the Appellant does not argue for the
separate patentability of any particular claim (id. ). Therefore, we review the
Examiner’s rejections based on the issues the Appellant identifies,10 but
otherwise limit our discussion to claim 1, which we select as representative
pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds Junta describes every limitation recited in claim 1
except that the irradiated electromagnetic wave is not disclosed as “having a
wavelength of one tenth to 10 times the pore size on the void-arranged
structural body holding the object to be measured” (Final Act. 3). The
Examiner also finds that Koichi teaches a similar measurement method in
which detection is performed by scattering electromagnetic waves irradiated
on a void-arranged structural body holding an object to be measured, but the
reference does not disclose the specified wavelength to pore size relationship
(id. at 4). The Examiner determines, however, that a person having ordinary
skill in the art would have used electromagnetic waves having the
wavelength to pore size relationship specified in the claim in either Junta, or
Koichi in view of Junta, because “where the general conditions of a claim
are disclosed in the prior art, discovering the optimum or working ranges
involves only routine skill in the art” (id. at 3—4) (citing In re Aller, 220 F.2d
454, 456 (CCPA 1955)). According to the Examiner, “Ezura merely is
provided to show a literal teaching that scattering occurs when pores and
wavelength have similar dimensions” (Ans. 4).
The Appellant does not dispute the Examiner’s finding that the sole
difference between Junta’s scope and content and claim 1 ’s subject matter
resides in the specified wavelength to pore size relationship (Appeal Br. 4—
10 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
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Application 14/601,284
5). Indeed, the Appellant contends that “[wjhile Junta . . . does disclose a
pore size of lnm to 10pm in |[0038] thereof, Junta . . . does not disclose or
suggest that there is any relation to the pore size and an electromagnetic
wave having a wavelength of one tenth to 10 times the pore size to an effect
on detection of a scattered wave” {id. at 5). Regarding Koichi, the Appellant
argues that “[wjhile Koichi does disclose pore sizes of 30pm in |[0019] and
20pm in |[0020] thereof, there is no disclosure of a smaller pore size of 0.9
to 9pm” {id.). The Appellant further argues that “Koichi does not disclose
or suggest that there is any relation to the pore size and an electromagnetic
wave having a wavelength of one tenth to 10 times the pore size having
effect on detection of a scattered wave” (id. ). The Appellant urges that the
Examiner’s reliance on Ezura is misplaced because it “teaches away from
any such combination, and does not even recognize that the pore size and
wavelength of the electromagnetic wave are ‘result effective variables’
capable of optimization” {id.). The Appellant also raises secondary
considerations of nonobviousness, arguing that the specified pore size to
wavelength relationship recited in the claim “is not merely discovering
optimum or working ranges but rather is the discovery of unexpected results
due to the interaction of two parameters which were heretofore not known as
having a beneficial relationship” {id. at 4).
The Appellant’s arguments fail to identity any reversible error in the
Examiner’s rejection. Jung, 637 F.3d at 1365.
Junta describes an optical detection device for detecting a target
substance that is bound to fine particles containing a metal element located
on the inner surfaces of a porous microstructure, wherein the detection is
performed by analyzing a change in light scattering spectra (Junta, Fig. 1;
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Application 14/601,284
20-33). As the Appellant acknowledges (Appeal Br. 5), Junta describes
preferred void diameters or pore sizes in the micro structure of 1 nm to 10
pm (Junta, 138)—a range that encompasses the range (0.9—9 pm) recited in
claim 1. Although Junta does not disclose specific wavelengths for the
irradiated light used in the measurement device (see, e.g., Junta, 116), a
person having ordinary skill in the art would have drawn a reasonable
inference that wavelength affects scattering, which permits detection of the
target substance (id. H 16, 26 (“I can detect the target substance because its
refractive index change appears to absorption and scattering spectra, etc.”),
33 (“the target substance or bound, absorption and / or scattering spectrum is
changed, by detecting the change in the absorption and / or scattering
spectrum, it is possible to measure”), 74 (“a concentration based on the
spectral change can be determined the concentration of the unknown
target”)).
Thus, because a person having ordinary skill in the art would have
understood from Junta’s disclosure that the wavelength of the irradiated light
affects scattering, which permits detection of the unknown target substance,
that person would have discovered an optimum or workable range of
wavelengths, including the wavelengths recited in claim 1, through no more
than routine experimentation. In re Applied Materials, Inc., 692 F.3d 1289,
1297 (Fed. Cir. 2012) (“A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective.”);
id. at 1295 (‘“[WJhere the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.’” (quotingIn reAller, 220 F.2d 1545, 456 (CCPA
1955))).
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Application 14/601,284
We reach the same conclusion with respect to the Examiner’s
alternative rejections based primarily on Koichi and Junta. Koichi describes
an impurity analysis method in which impurities captured by a filtration
membrane are analyzed using microscopic infrared spectroscopy and
thermal decomposition gas chromatograph mass spectrometry (Koichi, 19).
Although Koichi discloses examples in which the mesh filter pore sizes are
outside the inventors’ specified range (id. H 19-20), it does not place any
limitations on the filter pore sizes that may be selected nor the impurities
that may be captured by the filter and subsequently analyzed (id. H 1, 9-10).
Given Junta’s disclosure that the wavelength affects scattering when light
waves are incident on pores in a microstructure, a person having ordinary
skill in the art would have arrived at optimum or workable wavelengths for a
given filter pore size, including filters designed to remove impurities having
a size of, e.g., several microns.
We do not find the Appellant’s argument that Ezura teaches away
from the specified wavelengths sufficient to identify reversible error. Ezura
teaches a fluorescent film including a UV-permeable fluoride base material
that converts UV light to visible light (Ezura, Abst.; 110). Ezura teaches
avoiding diffusion of UV light by scattering, which Ezura attributes to the
pores and wavelengths having the same sizes (id. 110). But, as explained in
the Answer (Ans. 4), the Examiner is not proposing bodily incorporating the
features disclosed for Ezura’s fluorescent film into the devices disclosed in
Junta or Koichi. Rather, Ezura is merely cited to show that scattering occurs
when the pores and wavelengths have the same or similar sizes (id.).
Therefore, when a person skilled in the art determined an optimum or
workable range of wavelengths in accordance with Junta’s teachings, that
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person would have arrived at wavelengths that have the same or similar sizes
as the pore sizes.
Finally, we discern no merit in the Appellant’s argument that
unexpected results are achieved, as it is not supported by any factual
evidence (e.g., comparative test data provided in a Declaration). See, e.g., In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is well settled that
unexpected results must be established by factual evidence. ‘Mere argument
or conclusory statements in the specification does not suffice.’” (quoting In
re De Blauwe, 736 F.2d 699, 705 (Fed.Cir. 1994))).
For these reasons, we sustain the Examiner’s rejections.
IV. SUMMARY
Rejections A through G are sustained. Therefore, the Examiner’s
final decision to reject claims 1—14 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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