Berthold Technologies GmbH & Co. KG

Patent Trials and Appeals Board

Mar 1, 2021

2020002582 (P.T.A.B. Mar. 1, 2021)

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.
15/696,226 09/06/2017 Frank SCHLEIFENBAUM 107780.PA336US 5974
23911 7590 03/01/2021
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
RIDDICK, BLAKE CUTLER
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
03/01/2021 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):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK SCHLEIFENBAUM and BERND HUTTER
Appeal 2020-002582
Application 15/696,226
Technology Center 2800
Before STACEY G. WHITE, CARL L. SILVERMAN, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. See Final Act. 1. We have
jurisdiction 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 the real party in interest as Berthold
Technologies GmbH & Co. KG. Appeal Br. 1.
Appeal 2020-002582
Application 15/696,226

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CLAIMED SUBJECT MATTER
The claims are directed to a method and system for spectroscopically
measuring optical properties of samples. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for the spectrally resolved measurement of optical
properties of samples, the method comprising the acts of:
arranging a sample at a measurement position;
generating light using a light source;
transmitting spectral components of the light as excitation
light in a first optical path to the sample; and
transmitting light that has been emitted or transmitted by
the sample in a second optical path to a detector;
wherein a tunable monochromator is arranged in the first
optical path and/or in the second optical path;
recording a spectrum of the emitted or transmitted light
over an effective spectral range by shifting a spectral passage
range of the tunable monochromator, wherein light in the form
of light pulses with a specifiable pulse frequency is used;
the spectral passage range of the tunable monochromator
is shifted at a shifting speed continuously from an initial
wavelength to an end wavelength for recording a spectrum; and
the pulse frequency of the light is synchronized with the
shifting speed of the spectral passage range by way of a
controller such that a plurality of measurements of the emitted or
transmitted light takes place within the effective spectral range
at a corresponding plurality of spectral support points generated
one after another.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Walker US 3,740,144 June 19, 1973
Freeman US 4,017,403 Apr. 12, 1977
Steinbrenner US 4,245,911 Jan. 20, 1981
Lin US 5,252,834 Oct. 12, 1993
Sandifer US 5,526,121 June 11, 1996
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Application 15/696,226

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Name Reference Date
Harju US 2010/0308234 A1 Dec. 9, 2010
Laitinen US 2011/0049385 A1 Mar. 3, 2011

REJECTIONS
Claims 1, 2, and 13–16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Harju in view of Lin. Final Act. 3.
Claims 3 and 4 are rejected under 35 U.S.C. § 103 as being
unpatentable over Harju in view of Lin and Walker. Final Act. 8.
Claims 5–11 are rejected under 35 U.S.C. § 103 as being unpatentable
over Harju in view of Lin, Steinbrenner, and Freeman. Final Act. 9.
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over
Harju in view of Lin and Sandifer. Final Act. 12.
Claims 17–19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Harju in view of Lin and Laitinen. Final Act. 13.
OPINION
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding the pending claims.
Instead, we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 3–13), and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellant’s arguments (Ans. 3–5). We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted.
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Appellant argues that the Examiner erred in finding that either Harju
or Lin teaches “the pulse frequency of the light is synchronized with the
shifting speed of the spectral passage range” as recited in claim 1. Appeal
Br. 4–6; accord id. at 6 (“Since neither Harju nor Lin teaches or suggests
‘the pulse frequency of the light is synchronized with the shifting speed of
the spectral passage range,’ as required by claim 1 of the present application,
claim 1 is patentable over the combination of Harju and Lin.”). Specifically,
Appellant argues (1) that “the Examiner concedes that Harju does not
disclose the aforementioned feature of the claim” and (2) that Lin does not
teach “synchronization between the specifiable pulse frequency of the light
pulses generated by the light source and the shifting speed of the spectral
passage range of the tunable monochromator.” Id. at 4. According to
Appellant, “instead of disclosing synchronization between the spectral
position of the passage range of the monochromator and the pulse frequency
as described in claim 1, Lin repeatedly discloses synchronization that takes
place between the excitation pulses and the gating of the spectrograph
detector 28.” Id. at 5 (emphasis omitted).
Appellant further argues that “the gating of the spectrograph detector
28 in Lin does not correspond to the synchronization described in
Appellant’s claims.” Appeal Br. 5. According to Appellant, “[i]n contrast
to the synchronization described in Appellant’s claims, the gating of the
spectrograph detector 28 in Lin refers to the activating of the detector 28
such that the gating determines a length of time that the detector 28 is
detecting the fluorescence from the irradiated sample.” Id. at 5–6 (emphasis
omitted) (citing Lin 10:1–6).
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Appellant also argues it is illogical to argue that the combination of
Harju and Lin teaches the disputes limitation when neither of the references
individually teaches it: “Essentially, the [Answer] states that neither of the
cited references discloses element A, but since Harju discloses element B
and Lin discloses element C, the combination of B and C is A. This is
illogical.” Reply Br. 2.
Additionally, Appellant argues that “neither of the cited references
teaches or suggests anything about the shifting speed of the spectral passage
range.” Reply Br. 3. Specifically, Appellant argues “Harju merely discloses
performing multiple measurements at different wavelengths” and “Lin
merely discloses synchronization that takes place between the excitation
pulses and the gating of the spectrograph detector.” Id.
The Examiner finds Harju teaches all of the limitations recited in
claim 1 except for “a specifiable pulse frequency, wherein the pulse
frequency of the light is synchronized with the shifting speed of the spectral
passage range by way of the controller.” See Final Act. 4. Specifically, the
Examiner finds Harju teaches that “the spectral passage range of the tunable
monochromator is shifted at a shifting speed continuously from an initial
wavelength (low wavelength) to an end wavelength (higher wavelength) for
recording a spectrum.” Id. at 4 (citing Harju ¶¶ 13–15, 69, 88, Fig. 3a);
accord Adv. Act. 2 (“In this case, Harju discloses using light in the form of
light pulses, shifting the spectral passage range of the tunable
monochromator, and making a plurality of measurements within the spectral
range one after another.”).
The Examiner further finds that Lin teaches “a specifiable pulse
frequency (frequency of excitation pulse from dye laser 10), wherein the
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pulse frequency of light is synchronized with gating of a spectrograph
detector 28 shifting speed of a spectral passage range by way of a controller
1” and that “[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was filed to have modified the invention of Harju
with the teachings of Lin.” Final Act. 4–5; Adv. Act. 2 (“Together, even
though neither reference alone discloses all of the claimed limitations, the
combined teachings of the references would have suggested to those of
ordinary skill in the art using light in the form of light pulses, shifting the
spectral passage range of the tunable monochromator, making a plurality of
measurements within the spectral range one after another, and using a
specifiable pulse frequency synchronized with the tunable monochromator
by way of a controller.”).
The Examiner also finds that a person having ordinary skill in the art
would have made the combination/modification to “obtain[] a more precise
spectral structure fluorescent emissions.” Final Act. at 5; see also Ans. 4
(“The improved gating using synchronization with pulse frequency of Lin
would have similarly improved the gating of Harju, with the motivation for
the combination of references being obtaining a more precise spectral
structure of fluorescent emissions, as disclosed by Lin.” (citing Lin, 10:32–
55)).
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
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of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
Instead of addressing the combination of teachings, Appellant focuses
on each reference individually. Although neither reference individually
teaches the entirety of the disputed limitation, the Examiner finds that a
person having ordinary skill of the art would have modified Harju’s
teachings—including the teaching of the shifting speed of the spectral
passage range—with Lin’s teaching of synchronization to achieve the
disputed limitation. See Final Act. 4–5; Adv. Act 2. Because Appellant
does not address on the Examiner’s finding that a person having ordinary
skill in the art would have modified Harju in light of Lin’s teaching of
synchronization, we are not persuaded by Appellant’s arguments that the
Examiner erred.
Further, we are not persuaded by Appellant’s that the combination of
references cannot teach a limitation that neither reference teaches. See
Reply Br. 2. “The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference.” Keller, 642 F.2d at 425. Instead, the relevant issue is
“what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” Id. “Combining the teachings of
references does not involve an ability to combine their specific structures.”
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Accordingly, although
neither reference teaches the entirety of a limitation, the references may
still—as they do in this case—suggest that a person having ordinary skill in
the art combine the references in such a fashion that would result in the
claimed limitation. See Game & Tech Co. v. Wargaming Grp. Ltd., 942
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F.3d 1343, 1352 (Fed. Cir. 2019) (“The question in an obviousness inquiry
is whether it would have been obvious to a person of ordinary skill in the art
to combine the relevant disclosures of the two references, not whether each
individual reference discloses all of the necessary elements.” (citing
Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir.
2008))).
Additionally, Appellant’s argument regarding the “shifting speed”
limitation was raised for the first time in the Reply Brief. Compare Appeal
Br. with Reply Br. 3. Because Appellant did not raise that argument in the
opening brief and good cause has not been shown why it should be
considered, the argument is forfeited and we will not consider it. See 37
C.F.R. § 41.41(b)(2) (2019); Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (Informative) (“[T]he reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner’s rejections, but were not.”).
Accordingly, we sustain the rejection of independent claim 1 along
with claims 2–19, which are not argued separately. 37 C.F.R. § 41.37(c)(iv).
CONCLUSION
The Examiner’s rejections are affirmed.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 13–16 103 Harju, Lin 1, 2, 13–16
3, 4 103 Harju, Lin, Walker 3, 4
5–11 103 Harju, Lin,
Steinbrenner,
Freeman
5–11
12 103 Harju, Lin, Sifer 12
17–19 103 Harju, Lin,
Laitinen
17–19
Overall
Outcome
1–19

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED