Ex Parte Wagner

Patent Trial and Appeal Board

May 23, 2017

12628424 (P.T.A.B. May. 23, 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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/628,424 12/01/2009 HEINZ WAGNER H60-127 DIV 5912
21706 7590 05/24/2017
NOTARO, MICHALOS & ZACCARIA P.C.
100 DUTCH HILL ROAD
ORANGEBURG, NY 10962
EXAMINER
TURK, NEIL N
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
05/24/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEINZ WAGNER1
Appeal 2016-004871
Application 12/628,424
Technology Center 1700
Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—3, 6—23, 27—29, 31, and 32. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellant identifies the real party in interest as Swan Analytische
Instrumente AG. Appeal Br. 3.
2 In our Decision below we refer to the Specification (as amended) originally
filed December 1, 2009 (“Spec.”), the Final Office Action appealed from
dated May 8, 2015 (“Final Act.”), the Appeal Brief filed September 2, 2015
(“Appeal Br.”), the Examiner’s Answer dated February 11, 2016 (“Ans.”),
and the Reply Brief filed April 8, 2016 (“Reply Br.”).
Appeal 2016-004871
Application 12/628,424
STATEMENT OF THE CASE
The claims are directed to photometric method and apparatus for
measuring a liquid’s turbidity, fluorescence, phosphorescence and/or
absorption coefficient. Spec. 3^4. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
Claim 1: Arrangement for deriving at least one property of a
sample liquid by measuring emitted light emitted from said
sample liquid upon irradiation of said sample liquid with a probe
light beam, said arrangement comprising:
a container containing sample liquid, the container having
a horizontal preselected plane at a level L, wherein the sample
liquid fills at least part of the container up to the level L of the
preselected plane;
wherein the container comprises a main section containing
a portion of the sample liquid which is irradiated for measuring
light emitted upon irradiation, and an inlet section containing a
portion of the sample liquid received from outside the container
which eventually passes into the main section, and wherein the
sample liquid in both the main section and the inlet section is
filled up to the level L of the preselected plane;
wherein the sample liquid in the main section has a top
surface at the level L of the preselected plane which is a main
sample surface; and
wherein the sample liquid in the inlet section has a top
surface at the level L of the preselected plane which is an inlet
sample surface;
wherein the inlet sample surface is in direct contact with
an atmosphere and provides an opening for generally upward
escape of gas into the atmosphere from the sample liquid in the
inlet section before the sample liquid passes into the main section
from the inlet section;
an inlet separating member positioned horizontally
between the inlet sample surface and the main sample surface
through the level L of the preselected plane, the inlet separating
member being in a fixed position relative to other parts of the
container, and being positioned to separate the inlet sample
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Application 12/628,424
surface from the main sample surface to prevent surface waves
on the inlet sample surface from propagating to the main sample
surface;
at least one opening between the inlet section and the main
section providing fluid communication between the sections, the
at least one opening being entirely below the level L of the
preselected plane for passing sample liquid from the inlet section
to the main section below the inlet and main sample surfaces;
wherein the main sample surface has a first part and a
second part which are separated by a main separating member
positioned horizontally between them through the level L of the
preselected plane, wherein the main separating member is in a
fixed position relative to the other parts of the container, and
wherein there is fluid communication within the main section
below the main separating member;
wherein the first part of the main sample surface comprises
a spot at which the path of a probe light beam and said main
sample surface intersect, and the second part of the main sample
surface comprises a spot at which a first detection axis and the
main sample surface intersect;
the arrangement also comprising in a defined position
relative to said container:
a light source for generating said probe light beam from
above said preselected plane in an angle B1 ^ 0° with respect to
a line normal of said preselected plane, along a path at said first
part of the main sample surface in said main section of said
container;
a first light detector for detecting an intensity of said
emitted light emitted out of said sample liquid through said
second part of the main sample surface in said main section
generally along the first detection axis, said first detection axis
forming an angle yl ^ 0° with a line normal of said preselected
plane; and
an optical barrier positioned to block a propagation of light
originating from reflection or scattering of said probe light beam
at said main sample surface towards and into said first detector.
Appeal Br. 29-30 (Claims App’x).
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Appeal 2016-004871
Application 12/628,424
REJECTIONS
The Examiner maintains the following rejections3:
A. Claims 1—3, 6—23, 27—29, 31, and 32 stand rejected under
35 U.S.C. § 112 second paragraph as being indefinite for
failing to particularly point out and distinctly claim the
subject matter which the inventor regards as the invention.
Final Act. 2.
B. Claims 1—3, 6—9, 16, 19, 20, 22, 27, 29, 31, and 32 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ewing4 in view of Gortowski.5 Id. at 5.
C. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ewing in view of Gortowski
and further in view of Itoh.6 Id. at 7.
D. Claims 12—15, 17, 18, and 21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Ewing in
view of Gortowski and further in view of Barber.7 Id. at
8.
E. Claim 23 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ewing in view of Gortowski. Id.
at 9.
Appellant seeks our review of rejections A—E. See generally Appeal
Br. 13—28. We need only address independent claim 1 (and Rejections A
and B) as the basis for our reversal, i.e., the definiteness of “in a fixed
3 The Examiner withdraws the rejection of claims 27—29, 31, and 32 under
35 U.S.C. § 112 second paragraph as being indefinite. Ans. 9.
4 James H. Ewing, US 3,364,812, issued January 23, 1968 (“Ewing”).
5 Edmund P. Gortowski, US 4,943,370, issued July 24, 1990 (“Gortowski”).
6 Itoh et al., US 5,198,369, issued March 30, 1993 (“Itoh”).
7 Barber et al., US 5,940,179, issued August 17, 1999 (“Barber”).
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Application 12/628,424
position” and the lack of an “inlet surface [that] is in direct contact with an
atmosphere” in Ewing, is present in all rejected claims. Moreover, the
Examiner does not rely upon additional references applied to the remaining
claims to remedy the identified deficiency of Ewing.
OPINION
Rejection A— Indefiniteness (Claims 1—3, 6—23, 27—29, 31, and 32)
The Examiner rejects claims 1—3, 6—23, 27—29, 31, and 32 as
indefinite. Final Act. 2. The Examiner explains that “it is unclear how the
recited ‘inlet separating member’ and ‘main separating member’ are in a
fixed position relative to other parts of the container.” Id. Specifically, the
Examiner determines that the claims lack structural elements for fixing the
separating members to other parts of the container. Id. at 2—3.
Appellant argues that a person of ordinary skill in the art would
understand that the separating members of claims 1 and 27 are in a “fixed
position” in relation to other parts of the container, i.e., “they are fastened,
attached, or placed so as to be firm and not readily movable, relative to the
other parts of the container^] i.e., they do not move.” Appeal Br. 26.
Appellant urges that scope of the subject matter is clear and that there is no
requirement that the claims be limited to a specific structure. Id.
We are not persuaded by the Examiner’s explanation that the term
“fixed” is understood, but nevertheless the claims are indefinite because the
claimed apparatus does not provide a structural piece that allows the
separating members to be fixed to the other parts of the container. Ans. 16.
Section 112 12 requires that “claims are . . . to be cast in clear—as opposed
to ambiguous, vague, indefinite—terms. It is the claims that notify the
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Application 12/628,424
public of what is within the protections of the patent, and what is not.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). During prosecution, a claim
is examined for compliance with 35 U.S.C. § 112 12 by determining
whether the claim meets threshold requirements of clarity and precision. In
re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009) (quoting MPEP
§ 2173.02). In determining whether a particular claim is definite, the claim’s
language must be analyzed in light of the content of the particular
application, the prior art’s teaching, and the interpretation that would be
given to the claim’s language by a person of ordinary skill in the art at the
time the invention was made. Id.
As the Examiner acknowledges, there is no dispute over the clarity of
the claims as understood by the skilled artisan. Ans. 16 (“the term ‘fixed’ is
understood”). The Examiner’s concern that the claims fail to identity a
structure to accomplish the “fixed position” (Final Act. 2—3) goes to the
breadth rather than the ambiguity, vagueness, or indefmiteness of the claims.
Accordingly, we do not sustain the Examiner’s rejection under § 112 12.
Rejection B — Obviousness
(Claims 1—3, 6—9, 16, 19, 20, 22, 27, 29, 31, and 32)
The Examiner rejects claim 1 (among others) as obvious over Ewing
in view of Gortowski. Final Act. 5. The Examiner finds that Ewing teaches
most aspects of the claimed invention. Id. at 5—6. The Examiner
acknowledges however, that “Ewing does not specifically disclose at least
one opening for fluid communication between the inlet section and the main
section, and . . . the main section and the outlet section are in fluid
communication below the outlet separating member.” Final Act. 6. The
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Examiner finds that Gortowski “includes openings below the liquid surface
that provide fluid communication between the sections” and that this
alternative configuration is desirable “to reduce agitation and turbulence. Id.
6-7.
Appellant argues, inter alia, that Ewing fails to show an “inlet sample
surface [that] is in direct contact with an atmosphere.” Appeal Br. 14; Reply
Br. 6 and 10. According to Appellant, direct contact with the atmosphere
provides an opening for gas to escape from the inlet sample section and acts
to prevent surface waves at the sample surface in the main sample section.
Reply Br. 4—5.
The preponderance of the evidence favors Appellant’s argument.
Here, the Examiner identifies water inlet 15 and passage 17—shown below
in Figure 1 of Ewing—as the inlet section. Final Act. 6; see also Ans. 9
(“the inlet section is given by the water inlet 15 and passage 17 which
eventually passes to the main section as claimed”).
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Ewing, Fig. 1. Notably however, the Examiner does not demonstrate—
through argument or otherwise—that the inlet section of Ewing is open to
the atmosphere as required by the claims. Rather, the Examiner is
completely silent in this regard.
Therefore, the Examiner has not met the initial burden of showing that
the claimed subject matter would have beenprima facie obvious over the
prior art of record. On this record, we do not sustain the Examiner’s
rejections under § 103.
CONCLUSION
The Examiner reversibly erred in rejecting claims 1—3, 6—23, 27—29,
31, and 32 under 35 U.S.C. § 112 second paragraph as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor regards as the invention.
The Examiner reversibly erred in rejecting claims 1—3, 6—9, 16, 19,
20, 22, 27, 29, 31, and 32 under 35 U.S.C. § 103(a) as being unpatentable
over Ewing in view of Gortowski.
The Examiner reversibly erred in rejecting claims 10 and 11 under
35 U.S.C. § 103(a) as being unpatentable over Ewing in view of Gortowski
and further in view of Itoh.
The Examiner reversibly erred in rejecting claims 12—15, 17, 18, and
21 under 35 U.S.C. § 103(a) as being unpatentable over Ewing in view of
Gortowski and further in view of Barber.
The Examiner reversibly erred in rejecting claim 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Ewing in view of Gortowski.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1—3, 6—23,
27—29, 31, and 32 is reversed.
REVERSED
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