Ex Parte Simon

Patent Trial and Appeal Board

Nov 29, 2012

11130435 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ARNO SIMON
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Appeal 2010-006802
Application 11/130,4351
Technology Center 2800
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Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-14 and 17-23, which are all the claims remaining in the
application. Claims 15 and 16 were cancelled during prosecution. We have
jurisdiction under 35 U.S.C. § 6(b).

1 Application filed on May 16, 2005 claiming priority from German Patent
Application 10 2004 025 448.6 filed May 19, 2004. The Real Party in
Interest is Bruker Optik GmbH.
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Application 11/130,435

2
We affirm.
Invention
Appellant’s invention relates to:
A] method for measuring a spectrum of a sample by means of
an infrared spectrometer, the spectrometer having at least one
component whose operating behavior is influenced by at least
one operating parameter which, in the event of a change,
changes the operating behavior of the at least one component
and thereby influences the measured spectrum.
(Spec. 1:8-14.)2

Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method for measuring a spectrum of a sample by
means of an infrared spectrometer, said spectrometer
comprising at least one component whose operating behavior is
influenced by at least one operating parameter which, in the
event of a change, changes said operating behavior of said at
least one component and thereby influences said spectrum to be
measured, the method comprising:
prior to conducting a measurement of said spectrum,
determining a dependency relationship of said operating
behavior on said at least one operating parameter by
measuring a spectrum of a reference sample having a known
spectrum with the spectrometer while varying said at least one
operating parameter,
storing the determined dependency relationship,

2 We refer to Appellant’s Specification (“Spec.”); Reply Brief (“Reply Br.”)
filed February 1, 2010; and Appeal Brief (“App. Br.”) filed August 20, 2009.
We also refer to the Examiner’s Answer (“Ans.”) mailed December 2, 2009.
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obtaining a detected operating parameter by detecting
said at least one operating parameter at least once during the
measurement of said spectrum,
using the detected operating parameter and the stored
dependency relationship to reckon back said operating
behavior of said at least one component in a manner dependent
on said detected operating parameter to a predetermined
reference value of said at least one operating parameter, and
further conducting at least one of the following steps:
measuring said spectrum on the basis of said
predetermined reference value of said operating parameter,
correcting said spectrum on the basis of said
predetermined reference value of said operating parameter.

Rejections on Appeal
1. The Examiner rejects claims 1-5, 10, 11, 17, and 19-23 under
35 U.S.C. § 103(a) as being unpatentable over Zavracky (U.S. Patent No.
5,909,280, issued June 1, 1999) and Hanna (U.S. Patent No. 6,002,990,
issued Dec. 14, 1999). (Ans. 3-8.)
2. The Examiner rejects claims 6-9 and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Zavracky, Hanna, and Lundstedt (U.S.
Pat. Pub. No. 2003/0154044 A1, published Aug. 14, 2003). (Ans. 9-10.)
3. The Examiner rejects claims 13 and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Zavracky, Hanna, and Huiku (U.S. Pat.
Pub. No. 2003/0176776 A1, published Sep. 18, 2003). (Ans. 11.)
4. The Examiner rejects claim 18 under 35 U.S.C. § 103(a) as
being unpatentable over Zavracky, Hanna, and Effelsberg (U.S. Patent No.
5,900,649, issued May 4, 1999). (Ans. 12.)

Appeal 2010-006802
Application 11/130,435

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Grouping of Claims
Based on Appellant’s arguments in the Briefs, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

ISSUES
1. Under § 103, did the Examiner err in finding that the
combination of Zavracky and Hanna would have taught or suggested:
P]rior to conducting a measurement of said spectrum,
determining a dependency relationship of said operating
behavior on said at least one operating parameter by
measuring a spectrum of a reference sample having a known
spectrum with the spectrometer while varying said at least one
operating parameter,
storing the determined dependency relationship,
obtaining a detected operating parameter by detecting
said at least one operating parameter at least once during the
measurement of said spectrum,
using the detected operating parameter and the stored
dependency relationship to reckon back said operating
behavior of said at least one component in a manner dependent
on said detected operating parameter to a predetermined
reference value of said at least one operating parameter.
(emphasis added), within the meaning of independent claim 1 and the
commensurate limitations recited in independent claim 22?
2. Under § 103, did the Examiner err in combining Zavracky and
Hanna?
3. Under § 103, did the Examiner err in combining Zavracky,
Hanna, and Lundstedt?

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FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the analysis as follows.

ANALYSIS
Claim 1
Appellant contends, inter alia, the following:
For example, claim 1 recites five steps: (1) prior to measuring a
spectrum, determining a dependency relationship of a
component operating behavior on an operating parameter, (2)
storing the determined dependency relationship, (3) detecting
the operating parameter at least once during the measurement of
a spectrum, (4) using the detected operating parameter and the
stored dependency relationship to reckon back the component
operating behavior to a predetermined reference value and (5)
either measuring or correcting the spectrum on the basis of the
predetermined reference value. Of these, only step (3) and part
of step (5) (correcting the spectrum) are arguably disclosed in
the Zavracky reference. Independent claim 22 also includes
parallel wording.
(App. Br. 7.)
As noted above, Appellant concedes that Zavracky teaches or suggests
detecting the operating parameter. The Examiner also found that Zavracky
teaches or suggests “reckoning back” (compensate for non-linearities, step
4). (Ans. 4.) The Examiner relied on Hanna (col. 7, ll. 45-55) to teach or
suggest “prior to measuring a spectrum, determining a dependency
relationship of a component operating behavior on an operating parameter”
(correction data as a function of temperature), and “storing the determined
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dependency relationship” (correction data is stored), i.e., steps 1, 2. (Ans. 4-
5.) We agree with and adopt the Examiner’s findings.
Therefore, we agree with the Examiner that the cited combination of
references, collectively, would have taught or suggested the limitations of
claim 1. We find Appellant’s singular attack of the Zavracky reference
unavailing.3
Based on this record, we conclude that the Examiner did not err in
concluding that the cited combination of references would have taught or
suggested the limitations recited in representative claim 1.
Combinability of Zavracky and Hanna
Appellant also contends that the combination of Zavracky and Hanna
is improper. (Reply Br. 1-2; App. Br. 8.) Appellant argues that the system
disclosed in Hanna cannot simply be substituted into the Zavracky’s “signal
conditioning” circuit because the operation of the Hanna system differs
considerably from the Zavracky system and such substitution would change
the principle of operation of either reference. (App. Br. 8.)
After considering the evidence before us, it is our view that
Appellant’s argument does not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and, is therefore, ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have

3 In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d
413 (CCPA 1981).
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suggested to those of ordinary skill in the art.”) (citations omitted, emphasis
added). This reasoning is applicable in the present case.
We agree with the Examiner that since Zavracky does not specify a
particular compensation; however, it would have been obvious to one skilled
in the art at the time of Appellant’s invention to use the compensation
system described Hanna with predictable results. (Ans. 13-14.) If Appellant
is presenting an argument that Hanna teaches away from the present
invention (Reply Br. 1), we disagree for the reasons discussed supra and
note that since this argument is presented for the first time in the Reply
Brief, it is untimely.4 Based on this record, we conclude that the Examiner
did not err in combining Zavracky and Hanna.
Based on the discussion supra of Issues 1 and 2, we affirm the
Examiner’s obviousness rejection of claims 1-5, 10, 11, 17, and 19-23.
Combinability of Zavracky, Hanna, and Lundstedt
Appellant further contends that it is not clear how the system
disclosed in Lundstedt could be incorporated into the Zavracky and Hanna
systems without substantial modification. (App. Br. 9.) Again, as discussed
supra, Appellant’s arguments are directed to the bodily incorporation of
Lundstedt into the systems of Zavracky and Hanna. We find this argument
unavailing for the reasons previously discussed. Accordingly, we affirm the
Examiner’s obviousness rejection of claims 6-9 and 12.

4 See Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989
(Fed. Cir. 2006) (an issue not raised in an opening brief is waived). See 37
C.F.R. § 41.37(c)(1)(iv). See also In re Watts, 354 F.3d 1362, 1368 (Fed.
Cir. 2004).

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Application 11/130,435

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Claims 13, 14, and 18
As noted above, dependent claims 13, 14, and 18 stand rejected as
unpatentable over two combinations of references. Appellant did not argue
the patentability of claims 13, 14, and 18 with particularity. (App. Br. 10.)
Accordingly, we affirm the Examiner’s rejections of claims 13, 14, and 18
for the same reasons discussed supra.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
1-14 and 17-23 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-14 and 17-23 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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