Ex Parte Hedges et al

Board of Patent Appeals and Interferences

Feb 16, 2007

10110968 (B.P.A.I. Feb. 16, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NIGEL KEITH HEDGES, JOHN WLLIAM PROCTOR, BRIAN
DOMINIC MACCRAITH and HUGH JOSEPH MASTERSON
____________

Appeal 2006-2974
Application 10/110,968
Technology Center 2800
____________

Decided: February 16, 2007
____________

Before JAMES D. THOMAS, JOSEPH F. RUGGIERO, and MAHSHID D.
SAADAT, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2006-2974
Application 10/110,968

2
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-10 and 12-17. Claim 11 has been
canceled.
We reverse.
INTRODUCTION
Appellants’ invention is directed to a device for measuring color and
turbidity of liquid samples using absorbance of visible light and scattering of
infrared light by the liquid, respectively. According to Appellants, a main
detector placed in a housing provides the measurements for both the
turbidity and the color of the liquid sample in a flow through area of the
housing. An understanding of the invention can be derived from a reading
of exemplary independent claims 1 and 12 which are reproduced as follows:
1. A device for measuring color and turbidity of a liquid
sample, said device comprising:
a housing having a flow through sample area at one end thereof
through which said liquid sample flows;
an infrared light source mounted to said housing in such a
manner as to transmit a beam of infrared light through said sample
area;
a main detector mounted to said housing and arranged to
measure light scattered off particles suspended in said liquid sample
flowing through said sample area, thereby providing a measurement
of turbidity of said liquid sample, and
a visible light source mounted to said housing in such a manner
as to transmit a beam of light through said sample area, said main
detector being further arranged to measure light transmitted from said
visible light source through said liquid sample flowing through said
sample area thereby providing a measure of color of said liquid
sample.

Appeal 2006-2974
Application 10/110,968

3
12. A device for measuring first and second physical properties
of a fluid sample, said device comprising:
a housing having at one end thereof a sample area
accommodating a fluid flow therein;
a first light source mounted to said housing, and positioned to
transmit a first light beam through said fluid flow in said sample area,
along a first propagation axis;
a second light source mounted to said housing, and positioned
to transmit a second light beam through said fluid flow in said
sample area, along a second propagation axis which is substantially
perpendicular to said first axis;
a main detector mounted to said housing and positioned along
said first axis to receive both light transmitted from said first light
source and light scattered from said second light source; and
means for alternately energizing said first and second light
sources.

The Examiner relies on the following references in rejecting the
claims:
Harjunmaa US 4,555,178 Nov. 26, 1985
Taylor US 5,828,458 Oct. 27, 1998
Paoli US 5,872,361 Feb. 16, 1999
Baker GB 2 234 061 A Jan. 23, 1991

Appellants’ Admitted Prior Art (AAPA), Page 8, lines 16-20 of the
Specification.
The rejections as presented by the Examiner are as follows:
1. Claims 1-5, 8, and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Harjunmaa, Paoli, and Baker.
2. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Harjunmaa, Paoli, Baker, and Taylor.
3. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Harjunmaa, Paoli, Baker, and AAPA.
Appeal 2006-2974
Application 10/110,968

4
4. Claims 12-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Harjunmaa and Paoli.
5. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Harjunmaa, Paoli, and Baker.
We make reference to the Briefs and the Answer for the respective
positions of Appellant and the Examiner.
OPINION
With respect to the rejection of claims 1-5, 8, 10, and 17, the focus of
Appellants’ arguments is that Harjunmaa uses a differential technique and
would not measure both color and turbidity because of the need for the
absolute absorbencies to calculate concentrations in a mixture (Br. 17).
Appellants further argue that the claimed main detector for measuring both
the infrared light scattered from the particles suspended in the liquid and the
visible light transmitted through the liquid are not taught or suggested by the
combination of the references (Br. 21-22). Appellants assert that while
Baker measures different absorbencies of light from two different sources,
the optics are mounted based on a common geometry (Br. 22).
The Examiner responds by stating that Harjunmaa measures the
turbidity of a sample relative to a reference sample which leads to
determining the absolute measurement for the first sample (Answer 13-14).
The Examiner further argues that based on the teachings of Baker with
respect to using infrared and visible light sources for measuring both color
and turbidity of the sample, it would have been obvious to provide both
types of light sources in Harjunmaa for measuring the corresponding
properties of the liquid sample (Answer 14).
Appeal 2006-2974
Application 10/110,968

5
As a general proposition, in rejecting claims under 35 U.S.C. § 103,
the examiner bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955,
1956 (Fed. Cir. 1993) and In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). A prima facie case of obviousness is established
when the teachings of the prior art itself would appear to have suggested the
claimed subject matter to one of ordinary skill in the art. See In re Bell, 991
F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993); Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.
1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
293, 227 USPQ 657, 664 (Fed. Cir. 1985). In considering the question of
the obviousness of the claimed invention in view of the prior art relied upon,
the Examiner is expected to make the factual determination set forth in
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and
to provide a reason why one having ordinary skill in the pertinent art would
have been led to modify the prior art or to combine prior art references to
arrive at the claimed invention. See also In re Rouffet, 149 F.3d 1350, 1355,
47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Such evidence is required in order
to establish a prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984).
Contrary to the Examiner’s assertion, Harjunmaa does not obtain
absolute measurements of turbidity and/or color and instead, measures the
differences in the optical properties of two samples (Abstract, ll. 1-5) when
the same type of light is directed from two sources (Harjunmaa, col. 2, ll.
28-31). We also disagree with the Examiner (Answer 14) that Baker would
Appeal 2006-2974
Application 10/110,968

6
have suggested to one of ordinary skill in the art measuring two different
properties using the single detector of Harjunmaa. The reason Harjunmaa
uses one detector is the differential nature of the measurement for one
property at a time using one type of light without allowing for different
properties to be measured by the main detector simultaneously.
An obviousness analysis commences with a review and consideration
of all the pertinent evidence and arguments. In reviewing the Examiner’s
decision on appeal, the Board must necessarily weigh all of the evidence and
argument. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). In this case, as discussed by Appellants (Br. 13-17, 34-35),
using a main detector for measuring both infrared and visible light responses
is neither taught by Harjunmaa, nor suggested by Baker’s use of a specific
geometry using separate detectors (Br. 22). In fact, in terms of using a
single detector, since Baker provides for visible and infrared light to
measure turbidity and color respective, there remains no need for modifying
the differential method of measurement of Harjunmaa using two samples
and one type of light source.
In view of our analysis above, we find that the Examiner has failed to
set forth a prima facie case of obviousness because the necessary teachings
and suggestions related to the claimed infrared and visible light
measurements by the main detector, as recited in independent claim 1, are
not shown. Accordingly, based on the weight of the evidence and the
arguments presented by the Examiner and Appellants, we do not sustain the
35 U.S.C. § 103 rejection of claims 1-5, 8, and 10 over the combination of
Harjunmaa, Paoli, and Baker.
Appeal 2006-2974
Application 10/110,968

7
With respect to the rejection of claims 6, 7, and 9, we note that the
Examiner further relies on Taylor and AAPA for the additional features
recited in the these dependent claims. However, the Examiner has not
pointed to any additional teachings or convincing rationale in modifying the
combination of Harjunmaa, Paoli, and Baker with the teachings of these
references that would have overcome the deficiencies of the applied prior art
as discussed above with respect to claim 1. Accordingly, we do not sustain
the 35 U.S.C. § 103 rejection of claims 6 and 7 over Harjunmaa, Paoli, and
Baker in combination with Taylor, nor of claim 9 over Harjunmaa, Paoli,
and Baker in combination with AAPA.
Turning now to the 35 U.S.C. § 103 rejection of claims 12-16, we
observe that the claims require a second light source transmitting light
through the fluid sample along an axis which is substantially perpendicular
to the axis of a first light beam through the sample for measuring first and
second physical properties of the fluid sample. Apparently, the Examiner
takes the position that the light beam paths depicted in Figure 2 of
Harjunmaa disclose the claimed light beams having a mutually
perpendicular axis (Answer 11). We disagree. The multiple light beams
illuminating the samples in Harjunmaa, not only are from the same type of
light source, but also illuminate two samples or two areas of the same
samples for a differential measurement (Col. 2, ll. 23-25) such that LED
light beams 3 and 4 are incident in a perpendicular axis with respect to the
sample and the other two, 5 and 6, form an oblique axis (Col. 2, ll. 26-31).
However, Harjunmaa energizes LED’s 3 and 6 in parallel and LED’s 4 and 5
in parallel, which by no means form a perpendicular axis in their energized
Appeal 2006-2974
Application 10/110,968

8
pairs. We also disagree with the Examiner (Answer 22) that the way the
light beam incident on the detector forms a right angle with the main light
beam incident on the samples teaches the claimed perpendicular axis of the
first and the second light beams. In Figure 2, Harjunmaa uses a mirror to
deflect both light beams incident on both samples to the detector which,
contrary to the Examiner’s position (id.), results in the first and the second
beams having the same axis before and after they are deflected by the
mirror. Paoli, as discussed above with respect to claim 1, includes no
teaching or suggestion for modifying the differential measurement of
Harjunmaa to measure first and second properties using perpendicular light
beams from first and second light sources. Therefore, the Examiner has
failed to set forth a prima facie case of obviousness and the 35 U.S.C. § 103
rejection of claims 12-16 over Harjunmaa and Paoli cannot be sustained.
Turning finally to the rejection of claim 17, we note that Baker adds
nothing to cure the deficiencies of the combination of Harjunmaa and Paoli,
as discussed above with respect to claim 1. Accordingly, we do not sustain
the 35 U.S.C. § 103 rejection of claim 17 over Harjunmaa, Paoli, and Baker.
CONCLUSION
In view of the foregoing, the decision of the Examiner rejecting
claims 1-17 under 35 U.S.C. § 103 is reversed.

Appeal 2006-2974
Application 10/110,968

9
REVERSED

ED/GW

CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300