Ex Parte Kamba et alDownload PDFPatent Trial and Appeal BoardDec 21, 201714601284 (P.T.A.B. Dec. 21, 2017) Copy Citation 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. 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. 2 Appeal 2017-001489 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. 3 Appeal 2017-001489 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). 4 Appeal 2017-001489 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; 5 Appeal 2017-001489 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))). 6 Appeal 2017-001489 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 7 Appeal 2017-001489 Application 14/601,284 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 8 Copy with citationCopy as parenthetical citation