Ex Parte Wernet

Patent Trial and Appeal BoardAug 30, 2017

13127260 (P.T.A.B. Aug. 30, 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. 13/127,260 07/22/2011 Armin Wernet WERN3009/JS/FD 1844 23364 7590 09/01/2017 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER LE, TOAN M ART UNIT PAPER NUMBER 2864 NOTIFICATION DATE DELIVERY MODE 09/01/2017 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): MAIL @B ACONTHOMAS .COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARMIN WERNET Appeal 2016-005962 Application 13/127,260 Technology Center 2800 Before MARK NAGUMO, JEFFREY R. SNAY, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 10-16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 In this Decision, we refer to the Specification filed May 3, 2011, the Final Office Action mailed April 30, 2015 (“Final Act.”), the Appeal Brief filed November 2, 2015 (“Appeal Br.”), the Examiner’s Answer mailed March 22, 2016 (“Ans.”), and the Reply Brief filed May 23, 2016 (“Reply Br.”). 2 Appellant identifies the real party in interest as Endress + Hauser GMBH+Co. KG. Appeal Br. 2. Appeal 2016-005962 Application 13/127,260 The subject matter on appeal relates to an apparatus for determining and/or monitoring a process variable of a medium in a container. Spec. 1. Claims 10 and 11, reproduced below from Appendix I of the Appeal Brief, are illustrative of the claims on appeal. 10. An apparatus for determining and/or monitoring at least a filling level of a medium in a container, comprising: at least one evaluation unit, which monitors and/or signals an exceeding and/or subceeding of a predeterminable limit value of the filling level by the medium; and at least one memory unit, in which limit values of the filling level associated with at least an electrical conductivity of the medium are stored, wherein: said at least one evaluation unit, based on information concerning the electrical conductivity of the medium, applies from said at least one memory unit, for determining and/or monitoring the filling level, a stored limit value associated with the electrical conductivity of the medium. 11. The apparatus as claimed in claim 10, further comprising: at least one measuring unit for determining and/or monitoring the electrical conductivity of the medium. Appeal Br. 14 (Appendix I — Claims). DISCUSSION The Examiner maintains the rejection of claims 10—16 under 35 U.S.C. § 102(b) as anticipated by Getman et al. (WO 2006/034959 A2, published April 6, 2006) (“Getman”).3 Final Act. 2. 3 Although, as Appellant points out, US 2008/0042658 is the U.S. national stage entry of PCT/EP05/54540, which published as WO 2006/034959 A2, 2 Appeal 2016-005962 Application 13/127,260 Appellant only presents separate substantive arguments for independent claims 10 and 11. Therefore, we limit our discussion below to those claims. Claims 12—16, which depend directly or indirectly from claim 10, will stand or fall with claim 10. 37 C.F.R. § 41.37(c)(l)(iv). We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). After considering each of Appellant’s contentions, we are not persuaded that Appellant identifies reversible error. Thus, we sustain the Examiner’s rejection for the reasons expressed in the Final Office Action, the Answer, and below. Claim 10 The Examiner finds that Getman discloses an apparatus for determining and/or monitoring a filling level of a medium in a container comprising all the elements recited in claim 10. Final Act. 2—3 (citing Getman || 9, 14, 15, 18, 33—37, 53, 58, 68; Figs. 1—2 and 6; see also Final Act. 7-9. Appellant argues that Getman does not disclose or suggest “determining a filling level by measurement of a conductivity.” Appeal Br. 10. Appellant further argues that Getman determines a filling level by capacitance, not conductivity. Id. in this Decision we refer to the machine translation of record of Getman as cited by the Examiner. See, e.g., Final Act. 2—3. 3 Appeal 2016-005962 Application 13/127,260 Appellant’s arguments are not persuasive because they are premised on recitations not appearing in claim 10. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[Ajppellanf s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). The preamble of claim 1 recites “[a]n apparatus for determining and/or monitoring at least a filling level of a medium in a container,” but makes no mention of “measurement of a conductivity.” See also Spec. 2,11. 3—5 (“The apparatus can ... be a capacitive or conductive fill level measuring device, or, for example, a measuring device based on vibronics (an oscillatory fork or a single rod, or membrane, oscillator.”)). Moreover, the expression “for determining and/or monitoring at least a filling level of a medium in a container” is merely a statement of intended use and does not qualify or distinguish the structural apparatus recited in claim 10 from Getman’s measuring device. See Ans. 6. Appellants make no other substantive arguments for patentability, including arguments based on secondary considerations such as unexpected results. Thus, we sustain the rejection of claims 10, and 12—16 as anticipated by Getman. Claim 11 Claim 11, which depends from claim 10, requires the apparatus to further include “at least one measuring unit for determining and/or monitoring the electrical conductivity of the medium.” Appellant argues that Getman does not disclose or suggest “at least one measuring unit for determining and/or monitoring an electrical conductivity of the medium.” Appeal Br. 12. In particular, Appellant argues that Getman simply acknowledges a relationship between a conductivity range and capacitance, but never discloses or suggests 4 Appeal 2016-005962 Application 13/127,260 measuring and using a capacitance value to determine a filling level. Id. at 13. Appellant’s arguments are not persuasive of reversible error. In addition to the findings with respect to independent claim 10 discussed above, the Examiner finds that Getman’s measuring device includes probe unit 2 (a measuring unit), which is supplied with an electrical, activating signal by control/e valuation unit 3. Final Act. 3; Getman || 9, 58. The probe unit generates a response or output signal that is used to ascertain a capacitance value. Id. 19, 58. Getman uses the measured capacitance to determine fill level of medium 10 in container 11. Id. | 58 (teaching that by using reference matching between capacitance value and fill-level value, as stored in the memory unit 4, the fill level of the medium 10 in container 11 is obtained). Thus, a preponderance of the evidence supports the Examiner’s finding that Getman teaches an apparatus for determining and/or monitoring at least a filling level of a medium in a container including all the structural limitations of claim 11, including at least one measuring unit. The phrase “for determining and/or monitoring the electrical conductivity of the medium,” is merely a statement of purpose or intended use of the measuring unit and does not structurally distinguish the claimed apparatus from Getman’s measuring device. Ex parte Masham, 2 USPQ2d 1647, 1648 (BPAI 1987) (a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.); see also cf. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1977) (“[WJhere a patentee defines a structurally complete invention in the claim body and uses the 5 Appeal 2016-005962 Application 13/127,260 preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.”). Again, Appellants make no other substantive arguments for patentability, including arguments based on secondary considerations such as unexpected results. Thus, we sustain the rejection of claim 11 as anticipated by Getman. DECISION For the above reasons, the Examiner’s rejection of claims 10—16 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 6