Ex Parte Will et alDownload PDFPatent Trial and Appeal BoardJan 29, 201512784757 (P.T.A.B. Jan. 29, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NORBERT WILL, BERND HIELSCHER, CHRISTOPH BECKER, BERTHOLD ANDRES, and CARSTEN RATHKE __________ Appeal 2013-002276 Application 12/784,757 Technology Center 2800 ____________ Before PETER F. KRATZ, ROMULO H. DELMENDO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1–17. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appellants’ invention is directed to a method and a spectrometer where substitute gases instead of or in addition to actual measurement components (i.e., the actual gases to be measured) are used to calibrate and validate the spectrometer (Spec. ¶¶ 17 and 18). Appeal 2013-002276 Application 12/784,757 2 Claim 1 is illustrative: 1. A method for operating a Fourier transform infrared spectrometer, comprising: performing, in cyclically recurring intervals, a validation/calibration of the spectrometer by recording, with at least two gases, (i) a reference spectrum of the spectrometer using a zero gas as a first one of the at least two gases, and (ii) an absorption spectrum of the spectrometer using a calibration gas as a second one of the at least two gases; and simulating an actual measurement gas component with respect to metrological properties during validation of the spectrometer, using substitute gases as gas components, wherein the substitute gases are gases which are representative of the actual measurement gas by producing an absorption effect approximately in a region of an absorption effect of the actual measurement gas within the spectrometer. Appellants appeal the following rejections: 1. Claims 4, 6, 12, and 17 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. 2. Claims 1–7, 11–13, and 17 are rejected under 35 U.S.C. § 112, second paragraph, as failing to point out and particularly claim the subject matter which the Appellants regard as the invention. 3. Claims 1–6, 8, 9, 11, and 14–16 are rejected under 35 U.S.C. § 102(e) as being unpatentable over Shock et al. (US 7,598,494 B2, issued Oct. 6, 2009). 4. Claims 7, 10, and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shock in view of Fabinski et al. (DE 102004031643 A1, published Feb. 2, 2006; US 2008/0011952 A1, published Jan. 17, 2008). Appeal 2013-002276 Application 12/784,757 3 REJECTION (1): ENABLEMENT ISSUE Did the Examiner reversibly err in concluding that the subject matter of claims 4, 6, 12, and 17 are not enabled? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES The Examiner finds and concludes that claim 4 is not enabled because how to interpolate an entire measurement spectrum of the spectrometer based on the monitored intensities of the reference spectrum has not been adequately disclosed (Ans. 5). Regarding claims 6, 12, and 17 the Examiner finds and concludes that the subject matter of these claims is not enabled “because how to ascertain validation and/or calibration values has not been adequately disclosed” (Ans. 5). Appellants argue that one of ordinary skill in the art would understand how to use interpolation to determine the entire spectrum of the spectrometer based upon the known values which are monitored during the validation/calibration step (App. Br. 7). Regarding claims 6, 12, and 17, Appellants argue that the Specification and drawings provide numerous examples of how to ascertain validation and/or calibration values such as at paragraphs 18 to 23 and 28–32 of the Specification (App. Br. 7). We agree with Appellants. Although the Examiner finds that the Specification does not provide particular disclosure of how to interpolate (claim 4) or ascertain calibration and/or validation values, the Examiner does not provide any evidence that the ordinary artisan would be required to practice undue experimentation in determining how to interpolate or Appeal 2013-002276 Application 12/784,757 4 ascertain calibration and/or validation values. United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988) (“The test of enablement is ‘whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent [application] coupled with information known in the art without undue experimentation.’”). Because the Examiner has not shown that undue experimentation would have been required to make and/or use the claimed invention, we reverse the Examiner’s § 112, first paragraph, rejection of claims 4, 6, 12, and 17. REJECTION (2): INDEFINITENESS The Examiner concludes that claims 1 and 12 are indefinite because the clause beginning with “recording, with at least two gases . . .” is unclear (Ans. 5–6). The Examiner determines that it is unclear if the zero gas includes at least two gases and the calibration gas includes two gases, or if the number of gases within the zero gas plus the number of gases within the calibration gas equals at least two, or if the at least two gases represent gases different than the zero gas and calibration gas, or something else entirely (Ans. 6). Appellants argue that claim 1 plainly recites that the zero gas is the first one of the at least two gases and the calibration gas is the second one of the at least two gases (App. Br. 7–8). We agree with Appellants that the Examiner’s conclusion with regard to the phrase “at least two gases” in claim 1 is not indefinite. Rather, the claim recites that the zero gas is one of the at least two gases and the calibration gas is the second of the at least two gases. In our view, one of ordinary skill in the art would have understood what is claimed based upon Appeal 2013-002276 Application 12/784,757 5 the plain reading of the claim language. We reverse the Examiner’s rejection of claim 1 on the basis of the meaning of “at least two gases.” The Examiner concludes that the claim phrase “to diagnose a maintenance state of the spectrometer” in claim 12 is indefinite because it is unclear if it is limiting the claimed invention (Ans. 6). Appellants argue that the claim is not indefinite because claim 12 plainly “recites that the validation/calibration history is evaluated for the purpose of diagnosing a maintenance state of the spectrometer” (App. Br. 9). We find that the preponderance of the evidence favors the Appellants’ position that the claim phrase to diagnose a maintenance state of the spectrometer is not indefinite. Claim 12 recites the purpose of the calibration/validation process (i.e., to diagnose a maintenance state of the spectrometer) and that does not render the claim indefinite. Rather, the evaluation of the validation/calibration history is used to diagnose a maintenance state of the spectrometer as recited in claim 12. In other words, the diagnosing of the maintenance state of the spectrometer is part of the step of evaluating the validation/calibration history. We reverse the Examiner’s § 112, second paragraph, rejection of claim 12 based on the claim phrase “to diagnose a maintenance state of the spectrometer.” The Examiner concludes that the “zero gas” in claim 1 and the “zero gas is a purified gas” in claim 12 are indefinite because zero gas has not been adequately defined and because it is unclear what constitutes a purified gas (Ans. 6). The Examiner cites several patents that provide differing definitions of zero gas as showing that zero gas does not have an ordinary and customary meaning within the art (Ans. 13). Appeal 2013-002276 Application 12/784,757 6 Appellants argue that the Specification discloses that zero gas may be purified air and is a term of art that one of ordinary skill would have understood (App. Br. 8). Appellants contend that a zero gas is a purified gas used for recording a reference spectrum. Id. Appellants argue that “purified gas” is not unclear because the Specification exemplifies that a purified gas may be purified ambient air (App. Br. 9). The preponderance of the evidence favors the Examiner’s conclusion that “zero gas” and “zero gas is a purified gas” in claims 1 and 12 are indefinite. Contrary to Appellants’ argument that zero gas has an ordinary and customary meaning, the Examiner has shown that multiple patents define zero gas differently. Appellants have not proffered any evidence that shows that zero gas has an accepted meaning in the art. The same may be said of Appellants lack of evidence as to the meaning of “purified gas.” Appellants argue that “purified ambient air” is exemplified, but that does not disclose what is removed from the ambient air to purify it. The Specification does not illuminate a meaning for purified gas or zero gas. We concur with the Examiner that independent claims 1 and 12 and the claims depending therefrom (i.e., claims 2–7, 11, and 13) are indefinite as one of ordinary skill in the art would not be able to determine the meaning of the claims when read in light of the Specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Regarding claim 17, the Examiner determines that the claim invokes 35 U.S.C. § 112, paragraph six, and the Specification fails to disclose the structure that corresponds to the claimed “means for ascertaining,” “means for storing” and “means for evaluating” recited in claim 17 (Ans. 6). Appeal 2013-002276 Application 12/784,757 7 Appellants argue that examples of the structural elements for performing the recited means features in claim 17 are recited in the table in the summary of the claimed subject matter in the Appeal Brief (App. Br. 10). The Examiner finds and we agree that there is no specific mapping of the means-plus-function language of claim 17 in the claim table of the Appeal Brief. Appellants have not explained which structure in the Specification corresponds to the means-plus-function language recited in claim 17 as they are required to do. Appellants have not shown that the Examiner’s rejection is in error. We affirm the Examiner’s rejection of claim 17. In summary, we affirm the Examiner’s 35 U.S.C. § 112, second paragraph, rejections of claims 1–7, 11–13, and 17. REJECTIONS (3) AND (4): §§ 102(e) and 103 ISSUE Is the Examiner’s construction of the claim term “substitute gases” reasonable in light of the Specification? We decide this issue in the negative. FINDINGS OF FACT & ANALYSIS The Examiner finds that the substitute gases in the claims do not need to be completely different gases than the actual measurement gases (Ans. 15). Based upon this claim interpretation, the Examiner finds that Shock teaches simulating an actual measurement gas component with respect to metrological properties during validation of the spectrometer using Appeal 2013-002276 Application 12/784,757 8 substitute gases as the gas components in column 14, lines 54–58 as is required by independent claims 1 and 8. Id. Appellants argue that Shock does not teach using substitute gases that simulate an actual measurement gas (App. Br. 10). Appellants contend that Shock merely measures the actual measurement gases, not a substitute for the actual measurement gases. Id. Appellants contend that the recitation in the claims that substitute gases are used that are representative of the actual measurement gas by producing an absorption effect approximately in a region of an absorption effect of the actual measurement gas within the spectrometer requires that the substitute gases are different than the measurement gases (App. Br. 11). We agree with Appellants that claims 1 and 8 require that the substitute gases be representative of the actual measurement gas and claim 1 further recites that the substitute gases simulate the actual measurement gas component. The Specification describes that the substitute gases may be used “in addition to or instead of actual measurement components” (Spec. ¶ 18). The Specification further discloses that the substitute gas components can be easier to handle gases (e.g., CO2, SO2, N2O or methane) than the actual measurement gases (e.g., NH3, HCl, HF) (Spec. ¶¶ 18, 32). The Specification describes that substitute gases differ from the actual measurement gases, but the substitute gases are selected to represent the actual measurement gases (Spec. ¶ 18, 32). In light of these disclosures, we construe “substitute gases” in the claims as gases that are different than the actual gases to be measured. Our construction is supported by the Specification disclosure that the substitute gases may be used in addition to or instead of the actual measurement gases. Appeal 2013-002276 Application 12/784,757 9 If the substitute gases were the same as the actual measurement gases, then why would the substitute gases be used “in addition to or instead of” the actual measurement gases; the actual measurement gases would simply be used. Moreover, the Specification discloses that the substitute gases serve as a substitute for the actual measurement gases by representing the actual measurement gas with the substitute component that is easier to handle. The Examiner does not dispute Appellants’ argument the Shock discloses using the actual measurement gases as the “standard gases” used in calibrating the Fourier transform Infrared (FTIR) spectrometer. Indeed, Shock discloses using a zero gas and standard gases to calibrate the FTIR spectrometer and then actual measurement gases are sent through the FTIR spectrometer (Shock, col. 14, ll. 9–13). Shock discloses for each component gas a standard gas concentration for the component is required (col. 14, ll. 54–58). In other words, for each gas component to be sensed a standard of that gas component is used to calibrate the spectrometer. Our understanding is supported by Shock’s exemplary disclosure that 10 standard gas cylinders of CO in differing concentrations are used to calibrate the spectrometer before testing the actual target gas cylinder (i.e., the CO cylinder with an unknown concentration). Because Shock fails to teach using “substitute gases” as that term is properly construed, we find that Shock does not anticipate the claimed invention. We further note that the Examiner has not addressed the “means for introducing” limitation of claim 8 which invokes the 6th para of 112 including an articulation of how any structures described by Shock correspond to the invoked structures set forth in Appellants’ Specification and/or their equivalent We reverse the Examiner’s § 102(e) rejection. Appeal 2013-002276 Application 12/784,757 10 Rejection (4) under § 103 relies on the teachings of Shock as the foundation of the rejection. The Examiner does not rely on Fabinski to teach using different gases as the substitute gases. Because Fabinski does not cure the deficiency in Shock, we reverse the Examiner’s § 103 rejection. DECISION The Examiner’s decision is affirmed-in-part. 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). ORDER AFFIRMED-IN-PART cdc Copy with citationCopy as parenthetical citation