Ex Parte JinDownload PDFPatent Trial and Appeal BoardJul 28, 201613024022 (P.T.A.B. Jul. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/024,022 02/09/2011 14941 7590 08/01/2016 HONEYWELL/CONLEY ROSE Honeywell International Inc 115 Tabor Road PO Box 377 MORRIS PLAINS, NJ 07950 FIRST NAMED INVENTOR Peng Jin 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 ATTORNEY DOCKET NO. CONFIRMATION NO. H0028676_ 4341-34100 9835 EXAMINER XU,XIAOYUN ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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): patentservices-us@honeywell.com dallaspatents@dfw.conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PENG JIN Appeal2014-008804 Application 13/024,022 Technology Center 1700 Before CATHERINE Q. TIMM, MICHELLE N. ANKENBRAND, and BRIAND. RANGE, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's rejection, for at least the second time, of claims 1-3 and 6-13. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. Background The subject matter on appeal relates to an apparatus for analyzing a treated tape using an adjustable color source and wavelength spectrum analysis. Spec. i-f 1 and Abstract. Claim 1, the sole independent claim, is 1 Appellant identifies Honeywell International, Inc. as the real party in interest. App. Br. 2. Appeal2014-008804 Application 13/024,022 representative of the claims on appeal, and is reproduced below from the Claims Appendix to the Appeal Brief: 1. An apparatus to analyze a treated tape comprising: an adjustable color source emitting a first radiation toward the treated tape, the source operating under control of a processor to output radiation at each of a plurality of different target wavelengths in a spectrum by sequentially scanning along the different wavelengths of the spectrum; a color sensor receiving radiation emitted by the adjustable color source; a photodiode measuring second radiation reflected from the treated tape; and the processor analyzing measurements from the photodiode to determine a peak wavelength from the plurality of target wavelengths, and based on the peak wavelength, determining a color and darkness of a color stain on the treated tape; wherein, before measuring the second radiation, the processor compares a wavelength of the radiation received by the color sensor with the target wavelength of the source, and, if not the same, the processor adjusts the source. App. Br. 10 (Claims App'x). Diab McBrady Hehenberger The References us 5,758,644 US 2009/0246883 Al WO 01/10473 Al June 2, 1998 Oct. 1, 2009 Feb. 15,2001 Fisher, Image Transforms - Fourier Transforms, available at http://homepages.inf.ed.ac.uk/rbf/HIPR2/fourier.htm (2003) ("Fisher"). DOD Technologies, Inc., ChemLogic Single Point Detector (CLl) Manual (2008) ("DOD"). 2 Appeal2014-008804 Application 13/024,022 The Rejections The Examiner maintains the following rejections on appeal: 1. Claims 1-3 and 6-9 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of DOD, Diab, and Hehenberger; 2. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of DOD, Diab, Hehenberger, and Fisher; and 3. Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of DOD, Diab, Hehenberger, and McBrady. OPINION After having considered the evidence presented in this Appeal and each of Appellant's contentions, we are not persuaded that Appellant identifies reversible error, and we affirm the Examiner's§ 103 rejections for the reasons expressed in the Non-Final Action and the Answer. 2 \Ve add the following primarily for emphasis. Rejection 1 Appellant argues the claims as a group, relying on the limitations of independent claim 1 and does not present arguments for the separate patentability of the dependent claims. App. Br. 4--8. We, therefore, limit our discussion to representative claim 1. As is relevant to the issues on appeal, the Examiner finds that DOD discloses a treated tape, and adjustable color source (i.e., a Red-Green-Blue 2 We refer to the Non-Final Action mailed May 30, 2014, the Appeal Brief filed June 23, 2014, the Answer mailed July 17, 2014, and the Reply Brief filed August 5, 2014. 3 Appeal2014-008804 Application 13/024,022 Light Emitting Diode ("RGB LED")), a color sensor (i.e., LED reference diode), a photodiode, and a processor. Non-Final Act. 2. The Examiner concludes that it would have been obvious to use the processor to determine peak wavelength and, based on the peak wavelength and intensity, determine a color and darkness of a color stain on the treated tape. Id. The Examiner acknowledges DOD does not disclose that the processor compares a wavelength of the radiation received by the color sensor with the target wavelength of the source, and, if not the same, the processor adjusts the source. Id. at 3. The Examiner relies on Diab for that teaching and concludes that it would have been obvious to incorporate Diab' s adjustment into DOD's apparatus in order to maintain measurement accuracy. Id. The Examiner determines that the phrase "by sequentially scanning along the different wavelengths of the spectrum" "describes an intended result of the adjustable color source without further limiting the structure" of the source. Id. The Examiner, relying on Hehenberger as evidence, further finds that DOD's RGB LED is capable of sequentially scanning along the different wavelengths of the spectrum. Id. (citing Hehenberger 27:12-13, 20-21, and Fig. 18). The Examiner concludes that it would have been obvious to sequentially scan along the different wavelengths of the spectrum, per Hehenberger's disclosure, "in order to take ... advantage of the adjustable color source in DOD." Id. Appellant argues that the applied prior art references do not disclose every limitation of claim 1. App. Br. 6. More specifically, Appellant argues that Hehenberger fails to disclose adjusting the wavelengths of the source. Id. at 5. Appellant makes a similar argument regarding DOD's disclosure, and also argues that DOD fails to close additional limitations of claim 1. Id. 4 Appeal2014-008804 Application 13/024,022 at 4. As to Diab, Appellant contends that Diab "operates in a fundamentally different way than ... the claimed invention" and points to a specific embodiment of Diab in which "it is not necessary to know precise wavelengths of LEDs." Id. at 4 (citing Diab, Abstract); Reply Br. 2. Appellant's arguments, however, are not germane to the fundamental basis of the Examiner's rejection. For example, the Examiner does not find that Hehenberger discloses adjusting the wavelengths of the source, but, rather, relies on Diab for that teaching. See Non-Final Act. 3. Likewise, the Examiner does not rely on the embodiment of Diab on which Appellant's arguments are based; the Examiner relies on an embodiment of Diab that teaches measuring the wavelength of the LED and, if the LED is not operating at a preselected or target wavelength, adjusting the source to operate at the preselected wavelength. Id.; see Ans. 5-6; Diab 4:11-17. Appellant's arguments regarding DOD are unconvincing for the same reason. Further, one cannot show nonobviousness by attacking the references individually where a rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). Here, Appellant attacks each of DOD, Diab, and Hehenberger individually instead of focusing on the disclosure of the prior art as a whole. Appellant argues that the claimed invention "has a different functionality" than DOD, Diab, and Hehenberger. App. Br. 5. We are not persuaded because apparatus claims, such as claim 1, must be distinguished from the prior art in terms of structure rather than function. See In re 5 Appeal2014-008804 Application 13/024,022 Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Danly, 263 F.2d 844, 848 (CCPA 1959); In re Gardiner, 171F.2d313, 315-16 (CCPA 1948). Choosing to define an element functionally, i.e., by what it does, carries with it a risk: where there is reason to conclude that the structure of the prior art is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See Schreiber, 128 F.3d at 1478; In re Hallman, 655 F.2d 212, 215 (CCPA 1981). Here, as the Examiner finds, and Appellant does not dispute, DOD's adjustable color source, an RGB LED, is capable of sequentially scanning along the different wavelengths of the spectrum. Ans. 6. The Examiner's finding in this regard is based on sound technical reasoning, and Appellant points to no distinction in structure between the prior art apparatus and the recited apparatus. See Hehenberger, 27:12-13, 20-21 (disclosing an RGB LED as an adjustable color source that can scan along the different wavelengths of a spectrum); Spec. i-f 2 (exemplifying an RGB LED as "an adjustable color source in accordance with the present invention"). Appellant argues that the Examiner's rejections "are improper ... because none of the cited references are directed to the problem solved by the claimed invention." App. Br. 8. Contrary to Appellant's argument, "[ o ]ne of ordinary skill need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings." Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005); see KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007) ("In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee 6 Appeal2014-008804 Application 13/024,022 controls. . . . The first error of the Court of Appeals in this case was ... holding that courts and patent examiners should look only to the problem the patentee was trying to solve."). Accordingly, we affirm the rejections of claims 1-3 and 6-9 under 35 U.S.C. § 103(a). Rejections 2 and 3 The Examiner applies additional references to address the added limitations of claims 10-13. See Non-Final Act. 4--5 (applying DOD, Diab, Hehenberger, and Fisher to claims 10 and 11, and applying DOD, Diab, Hehenberger, and McBrady to claims 12 and 13). Appellant, however, does not direct us to any error in the Examiner's findings or conclusions as to those additional references. Accordingly, we also affirm the rejections of claims 10-13 under 35 U.S.C. § 103(a). DECISION/ORDER The Examiner's rejections of claims 1-3 and 6-13 under 35 U.S.C. § 103(a) are 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 7 Copy with citationCopy as parenthetical citation