Ex Parte OTERA

Patent Trials and Appeals BoardMar 22, 2019

13488125 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/488, 125 151297 7590 Chris Mizumoto 1150 Arbol Way San Jose, CA 95126 FILING DATE FIRST NAMED INVENTOR 06/04/2012 Fumiaki OTERA 03/26/2019 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. SMZ-108/7316332001 9433 EXAMINER DEVITO, ALEX T ART UNIT PAPER NUMBER 2855 NOTIFICATION DATE DELIVERY MODE 03/26/2019 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): chris.mizumoto@miztechlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FUMIAKI OTERA Appeal2018-005554 Application 13/488,125 1 Technology Center 2800 Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and JANEE. INGLESE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final rejection of claims 1-7. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to Appellant, Shimadzu Corporation is the real party in interest. (App. Br. 2). Appeal2018-005554 Application 13/488, 125 BACKGROUND The claimed invention relates to a moisture measurement device that uses absorption of laser light for measuring moisture concentration in a gas. (Spec. ,r 1 ). Independent claims 1, 6, and 7 are representative of the appealed subject matter. Independent claim 1 is reproduced below: 1. A device for measuring moisture in a gas, said device compnsmg: a sample cell where gas to be measured is introduced; a laser irradiation unit and a light reception unit disposed outside of said sample cell; wherein said laser irradiation unit is configured to modulate light using frequency f and said light reception unit detects light after passing through the gas to be measured in said sample cell; the detected signal by the light reception unit is synchronously detected using a frequency that is an integer-multiple of frequency f; and concentration of moisture that is included in said gas to be measured is calculated based on the detected signal; a modulation amplitude setting means for switchably setting the modulation amplitude between at least two types; and a moisture calculation means for calculating moisture concentration in said sample cell based on detection signal that is obtained when a relatively small modulation amplitude is set by said modulation amplitude setting means and for calculating the concentration of interfering moisture present in the optical path space, excluding said sample cell, from said laser irradiation unit to said light reception unit based on the detection signal that is obtained when a relatively large 2 Appeal2018-005554 Application 13/488, 125 modulation amplitude is set by said modulation amplitude setting means. (App. Br. 25, Claims Appendix). The following rejections are presented for our review: I. Claims 1 and 2 under 35 U.S.C. Â§ I03(a) as unpatentable over Komine et al. (JP 2009/192246 A; pub. Aug. 27, 2009, hereinafter "Komine")2 in view of Hagler (US 2004/0021078 Al; pub. Feb. 5, 2004). 3 II. Claim 3 under 35 U.S.C. Â§ I03(a) as unpatentable over Komine, Hagler, and Seta (US 4,847,512; iss. July 11, 1989). III. Claims 4 and 5 under 35 U.S.C. Â§ I03(a) as unpatentable over Komine and Hagler in view of Trainer (US 6,164,817; iss. Dec. 26, 2000). The complete statement of the rejections on appeal appear in the Final Office Action. (Final Act. 3-10). OPINI0N4 After review of the respective positions provided by Appellant and the Examiner, we REVERSE the appealed rejections. Our reasons follow: The Examiner found Komine teaches all the features of independent claim 1 including a moisture calculation means. (Final Act. 3). The 2 We refer to English machine translation from the JPO, provided by the Examiner that is present in the official record. 3 The Examiner has withdrawn the rejection of claims 6 and 7. (Ans. 2). 4 We limit our discussion to independent claim 1. 3 Appeal2018-005554 Application 13/488, 125 Examiner found Komine differs from the claimed invention by failing to disclose the moisture calculation means excludes the sample cell from the interfering moisture. (Final Act. 4). The Examiner found Hagler discloses using two different spectral regions (SRI and SR2) to distinguish between interfering gases in the optical path space excluding the sample cell. (Final Act. 4; Hagler ,r 347). The Examiner concluded it would have been obvious to modify Komine to include this teaching of Hagler "to further distinguish between desired moisture in the sample cell and interfering moisture in the optical path space excluding the sample cell for the benefit of increased accuracy." (Final Act. 4). Appellant argues the Examiner has not clearly articulated how the teachings of the cited references are being utilized. Specifically, Appellant argues the Examiner has not adequately explained how the two different spectral regions SRI and SR2 of Hagler would have been utilized to modify Komine. (App. Br. 16-17). Appellant argues [A] s far as measuring gases are concerned, the measurement methodologies of Komine and Hagler are incongruent. Komine' s disclosure dictates that its measurement be distant independent but Hagler' s measurement of interference is distant dependent so that the distance has to be made as small as possible. Thus, there is no reason or motivation for a person of ordinary skill in the art to combine Komine with Hagler, and therefore, a person of ordinary skill in the art for at least this reason would not have modified Komine in view of Hagler. (App. Br. 15). Appellant further argues the combination of Komine and Hagler, if combined, would not have taught or suggested the moisture calculation means of independent claim 1. Appellant argues both Komine and Hagler 4 Appeal2018-005554 Application 13/488, 125 do not measure/ calculate the interfering gases in the optical path excluding the sample gas. (App. Br. 19). During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)); see also, Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) ("[T]he analysis that 'should be made explicit' refers not to the teachings in the prior art of a motivation to combine, but to the court's analysis."). The Examiner has failed to adequately explain how a person of ordinary skill in the art would have arrived to the moisture calculation means which calculates the concentration of interfering moisture present in the optical path space, excluding the sample cell required by independent claim 1 from the teachings of Komine and Hagler. Komine discloses a method of measuring concentrations of two types of gases, gas A in low concentration, and gas B in high concentration, by using frequency modulated laser light about a gas concentration measurement apparatus and the gas concentration measurement method. (Komine ,r,r 16-18, Fig. 1 ). Komine' s measurements are independent of the optical path. Hagler does not disclose measuring interfering gases and water vapor within the uncontrolled path excluding the sample or sample cell. (Hagler ,r,r 346-348). The Examiner has failed to articulate how the disclosure of Hagler would have suggested modifying the 5 Appeal2018-005554 Application 13/488, 125 invention of Komine to arrive at the claimed invention. Furthermore, the Examiner has not identified the teachings in Komine and Hagler that describe measuring and calculating the interfering gases in the optical path excluding the sample gas. The Examiner has not adequately explained why a person of ordinary skill in the art would have looked to the teachings of Hagler for modifying Komine. For the foregoing reasons, we determine that the Examiner's conclusion of obviousness is not supported by facts. "Where the legal conclusion [of obviousness] is not supported by facts it cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, we reverse the Examiner's rejection of independent claim 1 for the reasons presented by Appellant and given above. We likewise reverse the Examiner's decision to reject dependent claims 3-5 since these rejections are premised on the Examiner's unsupported combination of Komine and Hagler. We need not reach whether the Examiner's reliance on other references in addition to Komine and Hagler for the rejection of the dependent claims was supported by the evidence of record because the base combination of Komine and Hagler cannot stand. DECISION The rejections under 35 U.S.C. Â§ 103(a) of claims 1-7 are reversed. REVERSED 6