Ex Parte Burchfield et al

Patent Trial and Appeal Board

Mar 11, 2013

11033205 (P.T.A.B. Mar. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID E. BURCHFIELD, H. WILLIAM NIU and
RICHARD A. HEPPNER
____________________

Appeal 2010-006645
Application 11/033,205
Technology Center 2800
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE1
Introduction
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-17 and 20-27. Claims 18 and 19 have been cancelled. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We Affirm.
Appellants’ Disclosed Invention
Appellants disclose a chemical sensing system that employs two ion-
separation technologies, Differential Mobility Spectrometry (DMS) and
Time-of-Flight Ion Mobility Spectrometry (TOF-IMS) in tandem (e.g.,
serial). The DMS extracts a narrow range of trace chemicals from an
environmental sample for subsequent analysis by a TOF-IMS system (Spec.
¶ [0007]; Abs.).
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below, with emphasis added to the
disputed portions of the claims.
1. A chemical sensing system comprising:

a differential mobility spectrometry system operable to isolate a range
of chemicals from an environmental sample;

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.”
filed July 17, 2009), Appellants’ Declaration (“Decl.” filed July 17, 2009),
Reply Brief (“Reply Br.” filed February 5, 2010), and the Examiner’s
Answer (“Ans.,” mailed December 7, 2009). Appellants’ “Declaration
under Rule 1.131” is mistitled (App. Br. 17), and is actually a declaration
under 37 C.F.R. § 1.132 because it is being filed to traverse the 35 U.S.C. §
103(a) rejection over Miller, and not to prove conception of Appellants’
invention prior to the effective date of Miller as provided for by 37 C.F.R. §
1.131.
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a time-of-flight ion-mobility spectrometry system downstream of said
differential mobility spectrometry system operable to analyze said range of
chemicals to produce a time-resolved spectrum of ions; and

a controller having a stored library of differential mobilities and ion
mobilities of predefined target analytes for comparison to said time-resolved
spectrum of ions.

Examiner’s Rejection
Claims 1-17 and 20-27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Miller (US 7,227,134 B2). Ans. 3-6.
Appellants’ Contentions
(1) Miller teaches DMS technology replicated two times on a micro-
machined substrate whereas the claims2 require a tandem DMS - TOF-IMS
chemical sensing system (App. Br. 5-6);
(2) Miller’s arrangement is impotent when placed in an environment
typical of that within which a portable detector must operate (App. Br. 6;
Reply Br. 2);
(3) Miller teaches the reverse of a DMS as an input to TOF-IMS and
there is no motivation to reverse the configuration of Miller as proposed by
the Examiner (App. Br. 7-10);
(4) The serial apparatus of Miller is in-operable since the response
times of the two technologies will not work in Miller (Reply Br. 1); and

2 Appellants argued patentability for claims 1-17 and 20-27 as a group and
not individually. Claims 1, 12, and 20 are independent and each set forth the
subject matter of using a TOF-IMS downstream of a DMS. We consider
claim 1 to be representative of the group of claims rejected under 35 U.S.C.
§ 103(a) over Miller (claims 1-17 and 20-27) pursuant to our authority under
37 C.F.R. § 41.37(c)(1)(iv). Accordingly, our analysis herein will only
address representative claim 1.
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(5) Non-obviousness is demonstrated by the Declaration of one of the
Inventors (David E. Burchfield) of the instant application on appeal
submitted under 37 C.F.R. § 1.132, (a) arguing inoperability of Miller, and
(b) averring the benefits of the DMS – TOF-IMS arrangement disclosed by
Appellants’ invention (App. Br. 5-6 and 9).

ISSUES
Based on Appellants’ arguments, the following issues are presented:
(1) Did the Examiner err in rejecting claims 1-17 and 20-27 under 35
U.S.C. § 103(a) as unpatentable over Miller because Miller fails to teach a
TOF-IMS downstream of a DMS, as recited in representative claim 1?
(2) Is Appellants’ Declaration sufficient to overcome the obviousness
rejection over Miller?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 5-10), Declaration (Decl. 1-3), and
the Reply Brief (Reply Br. 1) that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings by the Examiner in the action from which this appeal is
taken (Ans. 3-6)3 and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 7-14).

3 Even though Examiner states (Ans. 4) that Miller fails to teach a TOF-IMS
system downstream of a DMS system, we understand this statement to apply
to Miller’s arrangement shown in Figure 5 because in the next statement, the
Examiner relies upon Miller’s Figure 22 for teaching a TOF-IMS system
downstream of the DMS system within the rejection of claim 1 (Ans. 4-5)
and in the response to arguments (Ans. 7-9).
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We highlight and amplify certain teachings and suggestions of Miller as
follows.
We agree with the Examiner’s findings (Ans. 4-5) that Miller teaches
a DMS system 10 including a flow section 15 and a processor section 40
(Miller, col. 10, l. 65 – col. 11, l. 16; Fig. 5). Sample S drawn from the
environment enters the flow section 15 wherein particular ion species are
separated from the sample S and are then detected (Miller, Fig. 5 and
corresponding details at col. 11, l. 17 – col. 12, l. 23). The processor
compares the produced A/D digitized signals with a library of ion intensity
curves for known compounds stored in the memory 47 to identify
compounds (Miller, col. 12, ll. 16-23). Miller further shows and describes
an embodiment in Figure 22 of (i) a serial detection system 754 wherein
DMS unit 752 using fragmentation is operated downstream of DMS unit 750
using no fragmentation to improve sample analysis (Miller, Fig. 22; col. 21
ll. 29-32), and proposes that (ii) the DMS unit 752 can be replaced with a
TOF-IMS system (Miller, col. 23, ll. 44-51).
Appellants’ arguments (App. Br. 6; Reply Br. 2) that Miller’s
arrangement is impotent when placed in an environment typical of that
within which a portable detector must operate are unpersuasive since (i) the
Examiner relies (Ans. 4) that upon Miller as disclosing an arrangement for
system 10 that is part of a hand held unit (Miller, Fig. 5; col. 11, ll. 13-15),
and Miller describes a portable, battery powered unit (Miller, col. 14, l. 38).
Appellants argue (App. Br. 7-9) that the claimed invention is non-
obvious over Miller because (i) Miller teaches the reverse of a DMS as an
input to a TOF-IMS (i.e., a TOF-IMS as an input to a DMS), and (ii) there is
no motivation to reverse the configuration of Miller as proposed by the
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Examiner.
However, we agree with the Examiner (Ans. 9-11) that Miller teaches
a DMS as an input to a TOF-IMS (see Miller, col. 21, ll. 29-40; col. 23, ll.
44-51) and not the reverse of a DMS as an input to a TOF-IMS. We further
agree with the Examiner’s reason (Ans. 5) for combining the cited portions
of Miller (Miller, Figs. 5 and 22) to teach or suggest multiple scans of the
sample thereby obtaining more accurate identification of detected
compounds.
“While a reference must enable someone to practice the invention in
order to anticipate under § 102(b), a non-enabling reference may qualify as
prior art for the purpose of determining obviousness under § 103.” Symbol
Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir.1991) (citing
Reading & Bates Constr. Co. v. Baker Energy, 748 F.2d 645, 652 (Fed. Cir.
1984); Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547,
1551 (Fed. Cir. 1989)). “Even if a reference discloses an inoperative device,
it is prior art for all that it teaches.” Beckman Instruments, Inc. v. LKB
Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) (citing 2 D. Chisum,
Patents § 5.03[3] (1989); Minnesota Min. & Mfg. Co. v. Blume, 684 F.2d
1166, 1172 (6th Cir. 1982)). Appellants’ argument (Reply Br. 1) that
Miller’s serial scanning apparatus is inoperable is unpersuasive because
Miller discloses a TOF-IMS downstream of a DMS system (See Miller, Fig.
22; col. 21, ll. 29-40 and col. 23, ll. 44-51 discussed supra); and operability
and/or enablement of Miller’s device do not prevent Miller from being prior
art for all it discloses.
Appellants’ argue (Reply Br. 1) that an expert in the area would have
identified that the serial arrangement of Miller as interpreted by the
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Examiner would have been inoperable. We disagree with this argument
since (i) arguments of counsel cannot take the place of evidence (Estee
Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)), and (ii)
Appellants present no objective evidence to support the assertion of
inoperability; e.g., level of expertise required to identify Miller as being
inoperable, experimental or scientific test data, etc.
Declaration
We have duly considered Appellants’ Declaration in assessing the
obviousness of Appellants’ claimed invention. See Ruiz v. A.B. Chance Co.,
234 F.3d 654, 667 (Fed. Cir. 2000) (evidence of secondary considerations
must be considered in determining obviousness if present); accord Stratoflex
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). The
declarant’s statements and contentions made in the Declaration that it is non-
obvious in view of Miller to use a DMS downstream of a TOF-IMS are not
persuasive for the reasons explained below.
The Declaration does not overcome the obviousness rejection over
Miller inasmuch as the Declaration (i) does not refer to specific claims, (ii)
does not have a nexus with the subject matter of claims 1-17 and 20-27
(further explained below), (iii) merely asserts non-obviousness over Miller
(further explained below) but does not provide objective evidence as to
Miller’s inoperability, and (iv) alleges advantages of Appellants’ disclosure
over direct sampling instruments without providing or citing any objective
evidence. We will address paragraphs two and four through nine of the
Declaration in turn.
Paragraph Two of the Declaration:
The second paragraph of the Declaration states that the declarant
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David E. Burchfield is employed by Hamilton Sundstrand Corporation (Dec.
1, ¶ 2), but fails to provide any details as to the declarant’s (i) length of
employment, (ii) position or job title, (iii) work experience, and/or (iv)
educational experience and types of degrees earned, if any. Without these
details being provided in the Declaration, it is difficult to determine the
probative value of the declarants’ statements and contentions found in
paragraphs three through nine of the Declaration. Although Appellants
allege that the declarant is (i) a person of ordinary skill in the art of chemical
sensing using mobility spectrometry, and (ii) “an expert in the area” (Reply
Br. 1), the Declaration itself provides no objective evidence or facts to
support these allegations other than to state that the declarant is an inventor
in the instant application on appeal (Decl. 1, ¶ 1) and is employed by
Hamilton Sundstrand Corporation (Decl. 1, ¶ 2).
Paragraph Four of the Declaration:
Appellants argue (Ans. 4; Decl. 2, ¶ 4), that Figure 22 of Miller is not
an embodiment of a tandem DMS – TOF-IMS, but is simply the DMS
technology replicated two times. We disagree with Appellants and adopt as
our own the findings of the Examiner (Ans. 3-5; rejection of representative
claim 1) that Miller teaches a TOF-IMS system downstream of a DMS
system.
Given the disclosure of Miller with respect to the implementation of
Figure 22 (Miller, col. 23, ll. 44-51) that the DMS system using
fragmentation can be replaced with a TOF-IMS system, skilled artisans
would have known to employ the requisite downstream TOF-IMS after the
DMS system 10 (Miller, Fig. 5) in order to perform multiple scans and
improve accuracy of the results (e.g., col. 16, ll. 5-20). Miller lists the TOF-
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IMS system as one of seven example systems that can be used instead of a
DMS system using fragmentation (Miller, col. 10, ll. 54-64; col. 11, ll. 16-
20; col. 12, ll. 49-54; col. 16, ll. 6-19; col. 18, ll. 7-13; col. 23, ll. 44-51; and
col. 45, ll. 20-25). We agree with the Examiner (Ans. 7-9) that using one of
the seven alternatives would have been obvious to one skilled in the art at
the time of Appellants’ invention.
Paragraph Five of the Declaration:
The Declaration’s statement (Decl. 2, ¶ 5) that Miller derives the
sample inlet flow, S (Miller, Fig. 5) from a GC, LCMS, FTIR, TOF-IMS,
etc. (Miller, col. 45, ll. 20-25) is not persuasive since the Examiner correctly
finds regarding the rejection of claim 1 (Ans. 4) that the sample S
corresponding to Figure 5 can be drawn from the environment (Miller, col.
11, ll. 17-20) as required by the representative claim 1.
Paragraph Six of the Declaration:
6) Using a TOF-IMS on the input to a DMS cannot work as
suggested by US 7,227,134 B2 as the response times of the two
technologies do not work in the arrangement of US 7,227,134
B2, nor is the water vapor concentration - on which DMS
physics depends - appropriate for what must pass through a dry
IMS.

(Decl. 2, ¶ 6 (italicized emphasis added)).
The Declaration asserts (Decl. 2, ¶ 6) that (a) using a TOF-IMS prior
to the DMS “cannot work” because the “response times” of the two systems
(DMS and TOF-IMS) do not work, and (b) the water vapor concentration on
which DMS depends is not appropriate for what must pass through a dry
IMS.
The Examiner has shown obviousness over Miller (Ans. 3-5) for a
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tandem arrangement using a TOF-IMS after the DMS, as set forth in the
claims on appeal (e.g., representative claim 1). While Miller does not talk
about response times of the systems, we agree with the Examiner (Ans. 11-
12) that the “response times” and the “water vapor concentration” features of
the two systems (DMS and TOF-IMS) are argued in the Declaration but are
not claimed. The terms “response time” and “water vapor concentration,” as
well as the concepts of system response time or water vapor concentration of
a DMS, do not appear in representative claim 1. Thus, Appellants’
Declaration alleging the inoperability of the systems of Miller (App. Br. 8-
10; Decl. 2, ¶ 6) referring to the response times of the systems used in Miller
is conclusory and does not serve as objective evidence to show that using a
TOF-IMS system downstream of a DMS system would not work, be
operable, or be enabled.
Paragraph Seven of the Declaration:
7) While it is appropriate to foresee the DMS used as a detector
in a hyphenated GC-DMS or LC-DMS analyzer as disclosed in
US 7,227,134 B2, an ordinary practitioner of time-of-flight
IMS, even with the benefit of US 7,227,134 B2 would not
suggest a TOF-IMS as an input device to a DMS due to the
inoperability mentioned above.

(Decl. 2, ¶ 7 (italicized emphasis added))
The Declaration asserts (Decl. 2, ¶ 7) that an ordinarily skilled artisan
in the TOF-IMS field looking at Miller would not suggest a TOF-IMS as an
input device to a DMS due to inoperability of such an arrangement.
Notably, paragraph seven of the Declaration contends the opposite
arrangement of representative claim 1 is inoperable (i.e., a TOF-IMS
upstream of a DMS).
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Therefore, the Declaration (Decl. 2, ¶ 7) is not persuasive of non-
obviousness of the inventions of claims 1-17 and 20-27 since the Declaration
does not have a nexus with the claims, namely the feature of representative
claim 1 (and as similarly recited in remaining independent claims 12 and 20)
of using a TOF-IMS downstream of a DMS system (note that representative
claim 1 requires “using a TOF-IMS after the DMS” and not “using a TOF-
IMS prior to the DMS” as suggested by the Declaration).
Paragraph Eight of the Declaration:
8) The rather coarse resolution of a DMS provides benefit in the
reverse configuration of US 7,227,134 B2 and this is the subject
of our claims and our implementation in our above-referenced
application for Letters Patent in the United States: Serial No.:
11/033,205; AttomeyDocketNo.67010-101.

(Decl. 2, ¶ 8 (italicized emphasis added))
The Declaration asserts the benefit of having a DMS prior to TOF-
IMS as recited in the subject matter of the claims, and insists that the
arrangement of Miller is the reverse of that disclosed by Appellants (Decl. 2,
¶ 8).
We agree with the Examiner (Ans. 9-11) that Miller teaches a DMS prior to
TOF-IMS (Miller, col. 21, ll. 29-40; col. 23, ll. 44-51) and not the reverse,
i.e. a DMS as an input to a TOF-IMS. Hence, the assertion in paragraph
eight of the Declaration, that employing a DMS prior to a TOF-IMS would
provide benefits, also applies to Miller (see Miller, col. 12, ll. 49-54
describing improved analyses by taking multiple scans by processing the
sample in series; col. 16, ll. 9-19 describing the benefits of performing
multiple scans as including “improved results,” “more accurate identification
of detected compounds,” and the creation of more accurate ion mobility
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signatures).
Paragraph Nine of the Declaration:
The Declaration contends (Decl. 2 ¶ 9) that the claimed invention of
tandem DMS to TOF-IMS operation with a TOF-IMS analyzing ions in an
orthogonal technique provides higher levels of chemical agent detection than
available in direct sampling instruments. This contention is not persuasive
since no objective measure for the level of detection is recited in the claims
or Declaration, e.g., no experimental or scientific data is cited in the
Declaration (Decl. 2 ¶ 9), and no numerical values for the detection “levels
heretofore unavailable” are provided in the Declaration (id.) or in claims 1-
17 and 20-27 on appeal.
Summary
In view of the foregoing, Appellants have not sufficiently shown that
Miller fails to teach or suggest a TOF-IMS downstream of a DMS, as recited
in representative claim 1. Furthermore, the Declaration is not sufficient to
overcome the Examiner’s obviousness rejection over Miller.
The evidence of obviousness presented by the Examiner far outweighs
Appellants’ limited showing of inoperability of Miller and the advantages of
Appellants’ invention. We agree with the Examiner’s determination (Ans. 5
and 8-9) that it would have been obvious to combine the cited portions of
Miller (Miller, Fig. 5 and Fig. 22) to teach or suggest a serial chemical
sensing system with a TOF-IMS downstream of a DMS to provide multiple
scans of the sample thereby obtaining more accurate identification of
detected compounds, especially in view of Miller’s disclosure that the
sample can be recirculated from the DMS for processing “in series with one
or more additional . . . TOFIMS” (col. 12, ll. 49-55; see also col. 16, ll. 5-19;
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col. 18, ll. 7-13; col. 23, ll. 44-51; and col. 45, ll. 20-25).
Accordingly, we will sustain the rejection of representative claim 1,
and claims 2-17 and 20-27 grouped therewith.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-17 and 20-27 under
35 U.S.C. § 103(a) as unpatentable over Miller because Miller teaches using
a TOF-IMS downstream of a DMS, as recited in representative claim 1.
(2) The Declaration is insufficient to overcome the obviousness rejection
of claims 1-17 and 20-27.

DECISION
The Examiner’s decision to reject claims 1-17 and 20-27 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)(1)(iv).

AFFIRMED

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