Perkins, David L. et al.

Patent Trials and Appeals Board

Dec 6, 2019

14900107 - (D) (P.T.A.B. Dec. 6, 2019)

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.
14/900,107 12/18/2015 David L. Perkins 2012-061730 U1 US 3251
142050 7590 12/06/2019
HALLIBURTON ENERGY SERVICES, INC.
C/O PARKER JUSTISS, P.C.
14241 DALLAS PARKWAY
SUITE 620
DALLAS, TX 75254
EXAMINER
AMARA, MOHAMED K
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
12/06/2019 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID L. PERKINS, LI GAO, and MICHAEL T. PELLETIER
____________

Appeal 2019-001939
Application 14/900,107
Technology Center 2800
____________

Before BRADLEY R. GARRIS, DONNA M. PRAISS, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1, 2, 4–7, and 12–27.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Haliburton Energy Services, Inc. as the
real party in interest. Appeal Brief filed August 7, 2018 (“Appeal Br.”) at 3.
2 Claims 3 and 8–11 have been withdrawn from consideration. Final Office
Action entered April 9, 2018 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention generally relates to an optical analysis system
and method that use an integrated computational element (ICE) having a set
of laterally distributed spectral filters to analyze a substance of interest.
Spec. ¶ 1. Independent claims 1 and 16 illustrate the subject matter on
appeal and are reproduced below with contested language italicized:
1. A system comprising:
a light source that, during operation of the system,
illuminates a sample with light having a source spectrum over a
wavelength range to obtain light modified by the sample,
wherein the light modified by the sample has a modified
spectrum over the wavelength range, the modified spectrum
corresponding to the sample;
an integrated computational element (ICE) comprising a
set of spectral filters spectrally imprinted over a substrate
surface and arranged at different lateral positions with respect
to and substantially perpendicular to a path of the light
modified by the sample,
wherein the set of spectral filters is spectrally
equivalent to a filter spectrum over the wavelength range,
wherein the filter spectrum corresponds to a set of
spectra of the sample respectively taken for known
values of a property of the sample,
wherein each spectral filter in the set is centered
on an associated wavelength and has an associated area,
such that the associated area is proportional to a value
of the filter spectrum at the associated wavelength,
wherein the ICE (i) is arranged to receive the light
modified by the sample and (ii) outputs processed light that has
a processed spectrum over the wavelength range; and
a photodetector optically coupled with the ICE to receive
the processed light, wherein the photodetector integrates the
processed spectrum over the wavelength range to determine a
current value of the property of the sample.

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16. A measurement tool comprising:
an optical element comprising a substrate and a plurality
of spectral filters supported by the substrate and arranged at
different lateral positions with respect to and substantially
perpendicular to a path of light to be received from a sample
during operation of the measurement tool, each spectral filter
formed to transmit or reflect a different subset of wavelengths
in a wavelength range, and each spectral filter having a
respective area exposed to the light from the sample, the
respective areas being related to a property of the sample.
Appeal Br. 15, 18 (Claims Appendix) (emphasis and spacing added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered November 6, 2018 (“Ans.”):
I. Claims 1, 2, 4–7, and 12–27 under 35 U.S.C. § 103 as
unpatentable over Jones3 in view of Kaushik4; and
II. Claims 16, 17, and 20–22 under 35 U.S.C. § 102(a)(1) as
anticipated by Kaushik.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1, 2, 4–7, and 12–27 under 35 U.S.C. § 103, and rejection of claims
16, 17, and 20–22 under 35 U.S.C. § 102(a)(1), for the reasons set forth in
the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant

3 Jones et al., US 2006/0142955 A1, published June 29, 2006.
4 Kaushik et al., US 5,726,805, issued March 10, 1998.
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identifies. 37 C.F.R. § 41.37(c)(1)(iv); 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) (Explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”)).
Rejection I
We first address the Examiner’s rejection of claims 1, 2, 4–7, and 12–
27 under 35 U.S.C. § 103 as unpatentable over Jones in view of Kaushik.
Appellant presents arguments for independent claims 1, 16, and 27, and for
claims 4, 7, and 15, which each depend from claim 1. Appeal Br. 5–11. We
accordingly address each of claims 1, 4, 7, 15, 16, and 27, and group the
remaining claims with the respective independent claims from which they
depend. 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1
Claim 1 recites a system comprising, in part, a light source that
illuminates a sample with light having a source spectrum over a wavelength
range, and an integrated computational element (ICE) comprising a set of
spectral filters arranged at different lateral positions with respect to and
substantially perpendicular to a path of light modified by the sample. Claim
1 requires the set of spectral filters to be spectrally equivalent over the
wavelength range to a filter spectrum corresponding to a set of spectra of the
sample taken for known values of a property of the sample. Claim 1 further
requires each spectral filter in the set to be centered on an associated
wavelength and have an associated area, and requires the associated area to
be proportional to a value of the filter spectrum at the associated wavelength.
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The Examiner finds that Jones discloses a system for spectral analysis
of targeted chemical substances having all the features recited in claim 1,
except that Jones does not explicitly teach that the disclosed spectral filters
are arranged at different lateral positions with respect to and substantially
perpendicular to a path of light modified by a sample, and each spectral filter
has an associated area, such that the associated area is proportional to a
value of the filter spectrum at the associated wavelength. Final Act. 4–6.
The Examiner finds, however, that Kaushik discloses a system for spectral
analysis of targeted chemical substances that includes spectral filters 18 (a
set of spectral filters) arranged at different lateral positions with respect to
and substantially perpendicular to a path of light modified by a sample.
Final Act. 6 (citing Kaushik col. 4, ll. 14–31; Fig. 1). The Examiner finds
that the areas of spectral filters 18 “are inherently proportional to the light
energy transmitted through them [a value of the filter spectrum], i.e. the
larger the surface the more photons, and the more energy, which is related to
the wavelength E= h.ν, where ν is the frequency of the photon that is related
to its wavelength by: c/λ.” Final Act. 6 (emphasis omitted).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellant’s invention to use a set of
spectral filters arranged at different lateral positions with respect to and
substantially perpendicular to a path of light modified by a sample, in which
each spectral filter has an associated area proportional to a value of the filter
spectrum at the associated wavelength, as disclosed in Kaushik, in Jones’
system, because Kaushik teaches that dedicating different regions of the
filter elements to different transmission wavelengths optimizes spectral
analysis of samples. Final Act. 6–7 (citing Kaushik Abstract).
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Rather than challenging the Examiner’s finding of an inherent
proportionality between the areas of spectral filters 18 and a value of the
filter spectrum, Appellant focuses on Kaushik’s explicit disclosures, and
argues that “Kaushik discloses that a value of its spectral filter (optical
interference element 18) is proportional to a distance (L) between its
mirrors, not an area of its optical interference elements 18.” Appeal Br. 7–8
(citing Kaushik col. 4, l. 65–col. 5, l. 13) (some emphasis omitted).
The Examiner responds to Appellant’s argument in the Answer by
explaining that Appellant’s Specification does not define a “value of the
filter spectrum” as recited in claim 1, or describe with any specificity a
“value of the filter spectrum.” Ans. 6. The Examiner determines that a
“value of the filter spectrum,” therefore, “can be construed [to be] related to
any structure or functionality of the spectral filter.” Id. The Examiner
indicates that, accordingly, under a broadest reasonable interpretation, a
“value of the filter spectrum” corresponds to “the inherent light energy that
passes through the filter at the associated wavelength.” Id. The Examiner
finds that because spectral filters having a larger surface area allow a greater
energy/number of photons to traverse the spectral filters, a “proportionality
between the spectral filter area [of Kaushik’s optical interference elements
18] and a value, here light energy/number of photons, of/in the filter
spectrum” inherently exists. Ans. 6–7.
In the Reply Brief, Appellant argues that “the ‘value of the filter
spectrum’ is a value of one spectral filter (of the set of spectral filters) at an
associated wavelength for that specific one spectral filter. Reply Br. 3.
Appellant argues that, “[a]s such, the claimed ‘value of the filter spectrum at
the associated wavelength’ could not be construed to be ‘related to any
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structure or functionality’ of the specific spectral filter (of the set of spectral
filters) as the Examiner’s Answer alleges.” Id. (emphasis omitted). In so
arguing, however, Appellant merely describes what the plain language of
claim 1 recites (“the associated area is proportional to a value of the filter
spectrum at the associated wavelength”) without explaining why the
Examiner’s interpretation of a “value of the filter spectrum,” as set forth in
the Final Action and Answer, is erroneous. Nor does Appellant identify a
definition, or any limiting description, of a “value of the filter spectrum” in
Appellant’s Specification that is contrary to the Examiner’s interpretation of
this phrase.
Appellant also presents arguments in the Reply Brief based on explicit
disclosures in Kaushik that do not address the Examiner’s finding of
inherency. Reply Br. 3–5 (arguing that the periodicity of Kaushik’s sub-
wavelength periodic structures 16 in Kaushik’s dielectric layer 12 determine
Kaushik’s “predetermined light transmission characteristics”).
Appellant’s argument in the Appeal Brief that Kaushik discloses that a
value of optical interference element 18 (spectral filter) is proportional to a
distance L between Kaushik’s mirrors, and argument in the Reply Brief that
the periodicity of the sub-wavelength periodic structures 16 in Kaushik’s
dielectric layer 12 determines Kaushik’s predetermined light transmission
characteristics, do not directly challenge—and thus do not identify reversible
error in—the Examiner’s finding that a proportionality between the area of
Kaushik’s optical interference elements 18 and the light energy/number of
photons in the filter spectrum (a value of the filter spectrum) inherently
exists in Kaushik’s system. Jung, 637 F.3d at 1365.
We, accordingly, sustain the Examiner’s rejection of claim 1, and
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claims 2, 5, 6, and 12–15, which each depend from claim 1, under 35 U.S.C.
§ 103.
Claims 16 and 27
Although Appellant argues claims 1, 16, and 27 together, and,
therefore, relies on the same arguments for all three claims, we separately
address claims 16 and 27, for reasons that follow. Appeal Br. 6–9.
According to Appellant, claims 16 and 27—like claim 1—both “recite
that each of the set of spectral filters is centered on a specific wavelength of
a wavelength range of the light and each of the set of spectral filters has an
area that is proportional to a value of an equivalent filter spectrum at the
specific wavelength.” Appeal Br. 6. Contrary to Appellant’s arguments,
however, claims 16 and 27 do not recite that “each of the set of spectral
filters is centered on a specific wavelength of a wavelength range of the light
and each of the set of spectral filters has an area that is proportional to a
value of an equivalent filter spectrum at the specific wavelength” as recited
in claim 1. Rather, claims 16 and 27 both recite “each spectral filter having
a respective area exposed to the light from the sample, the respective areas
being related to a property of the sample.” Consequently, Appellant’s
arguments for claims 16 and 27 do not identify reversible error in the
Examiner’s rejection of these claims because the arguments are based on
subject matter that is not actually claimed. In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”).
We, accordingly, sustain the Examiner’s rejection of claims 16 and
27, and claims 17–26, which each depend from claim 16, under 35 U.S.C.
§ 103.
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Claim 4
Claim 4 depends from “any one of claims 1-3” and recites that “the
light modified by the sample is received at the ICE, a spot size encompasses
a lateral spatial extent of the set of spectral filters.”
Appellant argues that Jones does not disclose a set of laterally-
disposed spectral filters, and instead discloses a set of vertically-disposed
spectral filters. Appeal Br. 9–10. Appellant argues that because “Jones does
not disclose a laterally-disposed set of spectral filters, Jones can not disclose
a spot size of modified light that encompasses a lateral extent of a set of
spectral filters.” Appeal Br. 10.
As discussed above, however, the Examiner finds that Kaushik
discloses spectral filters 18 arranged at different lateral positions with
respect to and substantially perpendicular to a path of light modified by a
sample, which Appellant does not dispute. Compare Final Act. 6, with
Appeal Br. 6–9. As also discussed above, the Examiner’s rejection is based
on modifying Jones’ system to include a set of spectral filters arranged as
disclosed in Kaushik. Final Act. 6–7. Appellant’s argument is improperly
based on asserted disclosures in Jones alone, and does not take into
consideration the Examiner’s findings and conclusions as to the relied-upon
disclosures of both Jones and Kaushik. In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(The test for obviousness “is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”).
Appellant’s argument, therefore, does not identify reversible error in
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the Examiner’s rejection of claim 4 under 35 U.S.C. § 103, which we
accordingly sustain.
Claim 7
Claim 7 depends from claim 1 and recites that “the spectral filters of
the set are distributed over the substrate surface of the ICE in increasing or
decreasing order of their respective wavelengths.”
Appellant repeats the argument discussed above that Appellant
presents for claim 4, contending that “Jones does not disclose a laterally-
disposed set of spectral filters” and, therefore, “Jones can not disclose a spot
size of modified light that encompasses a lateral extent of a set of spectral
filters.” Appeal Br. 10. This argument does not identify reversible error in
the Examiner’s rejection of claim 7 for the same reasons (discussed above)
that the argument does not identify reversible error in the Examiner’s
rejection of claim 4.
Appellant also argues that there is no teaching or suggestion in Jones
that the vertically-disposed spectral filters depicted in Fig. 4 are distributed
in an increasing or decreasing order of respective wavelengths. Appeal Br.
10.
The Examiner’s rejection of claim 7, however, is based on modifying
Jones’ system to include a set of spectral filters arranged at different lateral
positions with respect to and substantially perpendicular to a path of light
modified by a sample, as disclosed in Kaushik. Final Act. 6–8.
Kaushik discloses optical filter 10 in the form of a chemical sensor
comprising “a plurality of optical interference filter elements 18 with
regularly-spaced center wavelengths, λc, for measuring an entire spectrum of
wavelengths and sensing any chemical species having spectral features
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therein.” Kaushik col. 9, l. 66–col. 10, l. 4. A spectrum, as one of ordinary
skill would have understood, is “a continuous sequence or range,” and, in the
context of a beam of light, a spectrum is “a continuum of color formed when
a beam of white light is dispersed (as by passage through a prism) so that its
component wavelengths are arranged in order.” See, e.g., Merriam-
Webster.com (accessed November 22, 2019) https://www.merriam-
webster.com/dictionary/spectrum (emphasis added).
A “spectrum of wavelengths” as disclosed in Kaushik thus refers to
continuous sequence of wavelengths, or wavelengths arranged in increasing
or decreasing order. One of ordinary skill in the art would have understood
that in order for the plurality of optical interference filter elements 18
disclosed in Kaushik to measure an entire spectrum of wavelengths—or a
continuous sequence of wavelengths—the regularly-spaced center
wavelengths of optical interference filter elements 18 would need to be
arranged in increasing or decreasing order, as recited in claim 7. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (An obviousness analysis
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for [an examiner] can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”);
see also In re Preda, 401 F. 2d 825, 826 (CCPA 1968) (“[I]t is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”).
We, accordingly, sustain the Examiner’s rejection of claim 7 under 35
U.S.C. § 103.

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Claim 15
Although Appellant separately argues claim 15, Appellant presents
the same argument for claim 15 that Appellant provides for claim 1. Appeal
Br. 11 (arguing that “Kaushik again is defective in not expressly describing a
set of laterally-disposed spectral filters with an area proportional to a value
of the spectral filters”). Because Appellant’s argument for claim 1 does not
identify reversible error in the Examiner’s rejection of this claim for the
reasons discussed above, Appellant’s argument for claim 15 also does not
identify reversible error in the Examiner’s rejection of claim 15 under 35
U.S.C. § 103, which we accordingly sustain.
Rejection II
We next address the Examiner’s rejection of claims 16, 17, and 20–22
under 35 U.S.C. § 102(a)(1) as anticipated by Kaushik.
Appellant argues the claims subject to this rejection together on the
basis of claim 16, to which we accordingly limit our discussion. Appeal Br.
12–13; 37 C.F.R. § 41.37(c)(1)(iv). As set forth above, claim 16 recites a
measurement tool comprising an optical element comprising a plurality of
spectral filters, each of which has a respective area exposed to light from a
sample, and claim 16 requires the respective areas to be related to a property
of the sample.
Appellant argues that “[f]or the same reasons” Appellant provides
when addressing the rejection of claim 16 under § 103, Kaushik “does not
expressly disclose each spectral filter has a respective area related to a
property of a sample. Instead, as established above, Kaushik teaches that a
spacing, L, between its minors is related to a property of a sample.” Appeal
Br. 12.
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As discussed above, however, when addressing the rejection of claim
16 under § 103, Appellant presents arguments directed to subject matter that
is not recited in claim 16. Appeal Br. 6–9. Appellant’s reliance on the same
arguments to address the rejection of claim 16 under § 102(a)(1), therefore,
does not identify reversible error in the Examiner’s rejection because, like
the arguments for the rejection of claim 16 under § 103, the arguments are
based on subject matter that is not actually claimed. Self, 671 F.2d at 1348.
Nonetheless, similar to the Examiner’s rejection of claim 16 under
§ 103, the Examiner’s rejection of claim 16 under § 102(a)(1) is based in
part on the Examiner’s finding that Kaushik inherently discloses that the
areas of spectral filters 18 are related to a property of a sample. Final Act.
11–12. Appellant’s argument directed to explicit disclosures in Kaushik (the
spacing L between mirrors), does not dispute the Examiner’s finding of
inherency. Although Appellant contends without elaboration that “the cited
portions of Kaushik do not inherently describe all of the features of pending
Claim 16,” this conclusory assertion does provide any explanation as to why
the Examiner’s finding of inherency is erroneous. Appeal Br. 12–13
(emphasis omitted).
Consequently, Appellant’s arguments do not identify reversible error
in the Examiner’s rejection of claim 16 under 35 U.S.C. § 102(a)(1). We,
accordingly, sustain the Examiner’s rejection of claims 16, 17, and 20–22
under 35 U.S.C. § 102(a)(1).

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CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–7,
12–27
103 Jones, Kaushik 1, 2, 4–7,
12–27

16, 17,
20–22
102(a)(1) Kaushik 16, 17, 20–
22

Overall
Outcome
1, 2, 4–7,
12–27

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