Ex Parte Will et al

Patent Trial and Appeal Board

Jan 29, 2015

12784757 (P.T.A.B. Jan. 29, 2015)

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).

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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).

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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
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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
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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).
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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).
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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
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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.
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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.
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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

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