Ex Parte OTERA

Patent Trials and Appeals Board

Mar 22, 2019

13488125 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/488, 125
151297 7590
Chris Mizumoto
1150 Arbol Way
San Jose, CA 95126
FILING DATE FIRST NAMED INVENTOR
06/04/2012 Fumiaki OTERA
03/26/2019
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.
SMZ-108/7316332001 9433
EXAMINER
DEVITO, ALEX T
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
chris.mizumoto@miztechlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FUMIAKI OTERA
Appeal2018-005554
Application 13/488,125 1
Technology Center 2800
Before JEFFREY T. SMITH, LINDA M. GAUDETTE,
and JANEE. INGLESE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, Shimadzu Corporation is the real party in interest.
(App. Br. 2).
Appeal2018-005554
Application 13/488, 125
BACKGROUND
The claimed invention relates to a moisture measurement device that
uses absorption of laser light for measuring moisture concentration in a gas.
(Spec. ,r 1 ). Independent claims 1, 6, and 7 are representative of the
appealed subject matter. Independent claim 1 is reproduced below:
1. A device for measuring moisture in a gas, said device
compnsmg:
a sample cell where gas to be measured is introduced;
a laser irradiation unit and a light reception unit disposed
outside of said sample cell;
wherein said laser irradiation unit is configured to modulate
light using frequency f and said light reception unit detects light
after passing through the gas to be measured in said sample
cell;
the detected signal by the light reception unit is synchronously
detected using a frequency that is an integer-multiple of
frequency f; and
concentration of moisture that is included in said gas to be
measured is calculated based on the detected signal;
a modulation amplitude setting means for switchably setting the
modulation amplitude between at least two types; and
a moisture calculation means for calculating moisture
concentration in said sample cell based on detection signal that
is obtained when a relatively small modulation amplitude is set
by said modulation amplitude setting means and for calculating
the concentration of interfering moisture present in the optical
path space, excluding said sample cell, from said laser
irradiation unit to said light reception unit based on the
detection signal that is obtained when a relatively large
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Application 13/488, 125
modulation amplitude is set by said modulation amplitude
setting means.
(App. Br. 25, Claims Appendix).
The following rejections are presented for our review:
I. Claims 1 and 2 under 35 U.S.C. § I03(a) as unpatentable
over Komine et al. (JP 2009/192246 A; pub. Aug. 27, 2009,
hereinafter "Komine")2 in view of Hagler (US
2004/0021078 Al; pub. Feb. 5, 2004). 3
II. Claim 3 under 35 U.S.C. § I03(a) as unpatentable over
Komine, Hagler, and Seta (US 4,847,512; iss. July 11,
1989).
III. Claims 4 and 5 under 35 U.S.C. § I03(a) as unpatentable
over Komine and Hagler in view of Trainer (US 6,164,817;
iss. Dec. 26, 2000).
The complete statement of the rejections on appeal appear in
the Final Office Action. (Final Act. 3-10).
OPINI0N4
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the appealed rejections. Our reasons follow:
The Examiner found Komine teaches all the features of independent
claim 1 including a moisture calculation means. (Final Act. 3). The
2 We refer to English machine translation from the JPO, provided by the
Examiner that is present in the official record.
3 The Examiner has withdrawn the rejection of claims 6 and 7. (Ans. 2).
4 We limit our discussion to independent claim 1.
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Appeal2018-005554
Application 13/488, 125
Examiner found Komine differs from the claimed invention by failing to
disclose the moisture calculation means excludes the sample cell from the
interfering moisture. (Final Act. 4). The Examiner found Hagler discloses
using two different spectral regions (SRI and SR2) to distinguish between
interfering gases in the optical path space excluding the sample cell. (Final
Act. 4; Hagler ,r 347). The Examiner concluded it would have been obvious
to modify Komine to include this teaching of Hagler "to further distinguish
between desired moisture in the sample cell and interfering moisture in the
optical path space excluding the sample cell for the benefit of increased
accuracy." (Final Act. 4).
Appellant argues the Examiner has not clearly articulated how the
teachings of the cited references are being utilized. Specifically, Appellant
argues the Examiner has not adequately explained how the two different
spectral regions SRI and SR2 of Hagler would have been utilized to modify
Komine. (App. Br. 16-17). Appellant argues
[A] s far as measuring gases are concerned, the measurement
methodologies of Komine and Hagler are incongruent.
Komine' s disclosure dictates that its measurement be distant
independent but Hagler' s measurement of interference is distant
dependent so that the distance has to be made as small as
possible. Thus, there is no reason or motivation for a person of
ordinary skill in the art to combine Komine with Hagler, and
therefore, a person of ordinary skill in the art for at least this
reason would not have modified Komine in view of Hagler.
(App. Br. 15).
Appellant further argues the combination of Komine and Hagler, if
combined, would not have taught or suggested the moisture calculation
means of independent claim 1. Appellant argues both Komine and Hagler
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Appeal2018-005554
Application 13/488, 125
do not measure/ calculate the interfering gases in the optical path excluding
the sample gas. (App. Br. 19).
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). "Rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)); see
also, Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) ("[T]he analysis that 'should be made explicit'
refers not to the teachings in the prior art of a motivation to combine, but to
the court's analysis.").
The Examiner has failed to adequately explain how a person of
ordinary skill in the art would have arrived to the moisture calculation means
which calculates the concentration of interfering moisture present in the
optical path space, excluding the sample cell required by independent claim
1 from the teachings of Komine and Hagler. Komine discloses a method of
measuring concentrations of two types of gases, gas A in low concentration,
and gas B in high concentration, by using frequency modulated laser light
about a gas concentration measurement apparatus and the gas concentration
measurement method. (Komine ,r,r 16-18, Fig. 1 ). Komine' s measurements
are independent of the optical path. Hagler does not disclose measuring
interfering gases and water vapor within the uncontrolled path excluding the
sample or sample cell. (Hagler ,r,r 346-348). The Examiner has failed to
articulate how the disclosure of Hagler would have suggested modifying the
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Application 13/488, 125
invention of Komine to arrive at the claimed invention. Furthermore, the
Examiner has not identified the teachings in Komine and Hagler that
describe measuring and calculating the interfering gases in the optical path
excluding the sample gas. The Examiner has not adequately explained why
a person of ordinary skill in the art would have looked to the teachings of
Hagler for modifying Komine.
For the foregoing reasons, we determine that the Examiner's
conclusion of obviousness is not supported by facts. "Where the legal
conclusion [of obviousness] is not supported by facts it cannot stand." In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, we reverse the Examiner's rejection of independent
claim 1 for the reasons presented by Appellant and given above. We
likewise reverse the Examiner's decision to reject dependent claims 3-5
since these rejections are premised on the Examiner's unsupported
combination of Komine and Hagler. We need not reach whether the
Examiner's reliance on other references in addition to Komine and Hagler
for the rejection of the dependent claims was supported by the evidence of
record because the base combination of Komine and Hagler cannot stand.
DECISION
The rejections under 35 U.S.C. § 103(a) of claims 1-7 are reversed.
REVERSED
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