Ex Parte Sun et al

Patent Trial and Appeal Board

Apr 29, 2016

11961070 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111961,070 12/20/2007
6147 7590 05/03/2016
GENERAL ELECTRIC COMPANY
GLOBAL RESEARCH
ONE RESEARCH CIRCLE
BLDG. Kl-3A59
NISKAYUNA, NY 12309
FIRST NAMED INVENTOR
Zongqi Sun
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.
225625-1 5588
EXAMINER
LARKIN, DANIEL SEAN
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte ZONGQI SUN, SHRIDHAR CHAMP AKNATH NATH,
ALAN M. WILLIAMS, BASKARAN GANESAN, MOTTITO TOGO,
ROGER NORDBERG, and MATTHEW ALLEN RADEBACH
Appeal2014-000502
Application 11/961,070
Technology Center 2800
Before PETER F. KRATZ, BEYERL YA. FRANKLIN, and N. WHITNEY
WILSON, Administrative Patent Judges.
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t< KAl'\J~H"l, Aamznzsrranve rarem Juage.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 3, 7, 9, 10, and 15. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
1 Appellants identify the Real Party in Interest as General Electric Company
(Br. 3).
Appeal2014-000502
Application 11/961,070
STATEMENT OF THE CASE
Claim 3 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
3. A system for measuring one or more ultrasound
parameters of a suspension, having a temperature,
comprising particles dispersed in a liquid carrier comprising:
one or more devices, comprising:
an ultrasound probe, adapted to transmit and receive
ultrasound waves, and having a surface;
a reflector having two reflective surfaces at staggered
distances from the probe surface positioned to reflect the
ultrasound waves onto the probe surface; and
a housing, that fixes the probe and the reflector at
positions with a space in between the probe surface and the
reflective surfaces, comprising an opening into the housing that
is of a size sufficient to allow the suspension to flow into the
space between the probe surface and the reflective surfaces;
an ultrasound wave generator/receiver device, in
communication with the one or more devices, to transmit and
receive the ultrasound waves to and from the one or more
devices; and
a signal processing device, in communication with the
ultrasound wave generator/receiver device, to receive and
process the ultrasound waves from the ultrasound wave
generator/receiver device based in part on the temperature
of the suspension.
2
Appeal2014-000502
Application 11/961,070
The Examiner relies on the following prior art references as evidence
of unpatentability:
Stuckart US 5,164,094
Koblanski US 5,335,661
Gopinathan et al. US 5,853,994
(hereinafter "Gopinathan")
Kelner et al. US 6,823,716 B2
(hereinafter "Kelner")
Kraus et al. EP 0297874
(hereinafter "Kraus")
THE REJECTIONS
Nov. 17, 1992
Aug. 9, 1994
Dec. 29, 1998
Nov. 30, 2004
Jan.4, 1989
1. Claims 3, 7, 9, 10, and 15 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claims 3, 7, and 15, are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stuckart in view of Kelner.
3. Claims 3, 7, and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kraus in view of Kelner.
4. Claims 3, 7, and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gopinathan in view of Kelner.
5. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gopinathan in view Kelner as applied to claim 7 above,
and further in view ofKoblanski.
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Appeal2014-000502
Application 11/961,070
ANALYSIS
We select claim 3 as representative of all the claims on appeal, based
upon Appellants' presented arguments. 37 C.F.R. § 41.37(c) (1) (iv) (2014).
Rejection 1
It is the Examiner's basic positon that each of claims 3, 7, and 15
recite that the signal processing device receives and processes the ultrasound
waves from the ultrasound wave generator/receiver device based in part on
the temperature of the suspension. The Examiner states that it is unclear
how the system can measure one or more ultrasound parameters of a
suspension based in part on the temperature if there is no structure recited in
the claim to measure temperature of the suspension. Final Act. 2-3.
On page 15 of the Appeal Brief, Appellants argue that specific
structure for measuring the temperature is not necessary because the
preamble of the claim recites that the suspension has a temperature.
We are not persuaded by Appellants' conclusory argument. The
Examiner raises a valid point regarding the indefiniteness surrounding how
the temperature of the suspension is measured/determined and what the
"based in part on the temperature" limitation means in terms of a restriction
on the recited functionality of the signal processing device; that is, the
function "to receive and process the ultrasound waves from the ultrasound
wave generator/receiver device based in part on the temperature of the
suspension" (claim 3; Ans. 11). The preamble provides for antecedent basis
for the thereafter claimed phrase of "temperature of the suspension", but
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Appeal2014-000502
Application 11/961,070
Appellants do not articulate how the preamble resolves the indefiniteness of
the claim with respect to the claim term "based in part on the temperature of
the suspension" as utilized in claim 3 (Ans. 11 ).
Paragraph [0051] of the Specification indicates that there are two
scenarios concerning compensating for temperature. One is to control the
temperature of the chamber, and the other is when it is not suitable or
desired to control the temperature of the suspension whereby temperature
recording and compensation may be used to reduce temperature variation in
suspension measurements. Appellants do not address this disclosure and
explain how either scenario is encompassed by and/or reasonably delimits
the meaning of the signal processing device functionality "based in part on
the temperature" of claim 3.
In view of the above, we affirm Rejection 1.
Rejections 2-5
Because of the indefiniteness of the claimed subject matter as
discussed above, we are unable to resolve the prior art rejections on their
merits. We thus reverse these rejections. However, we emphasize that our
reversal of these rejections is because the claims are indefinite; hence, a
decision has not been made based on the technical merits. See In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862-63
(CCPA 1962).
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Appeal2014-000502
Application 11/961,070
DECISION
Rejection 1 is affirmed.
Rejections 2-5 are reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED
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