Endress+Hauser Conducta GmbH+Co, KG

Patent Trials and Appeals Board

Aug 24, 2021

2020006720 (P.T.A.B. Aug. 24, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/704,146 09/14/2017 Bo Ottersten CD0716-US 1001
140216 7590 08/24/2021
Endress+Hauser, Inc.
PatServe US
2350 Endress Place
Greenwood, IN 46143
EXAMINER
MORELLO, JEAN F
ART UNIT PAPER NUMBER
2861
NOTIFICATION DATE DELIVERY MODE
08/24/2021 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.powers@endress.com
lisa.harden@endress.com
patserve.ush@endress.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte BO OTTERSTEN, MARTIN FREUDENBERGER,
and KAZUHIKO YAMAMOTO
____________
Appeal 2020-006720
Application 15/704,146
Technology Center 2800
____________
Before JAMES C. HOUSEL, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 7, 8, 10, 14–16, 19, and 20 of

11 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/704,146 filed Apr. Sept. 14, 2017 and amended Jan. 31, 2019; the Final
Office Action dated Oct. 24, 2019 (“Final Act.”); the Appeal Brief filed
Mar. 11, 2020 (“Appeal Br.”); and the Examiner’s Answer dated Apr. 27,
2020 (“Ans.”). Appellant did not file a Reply Brief.
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Endress+Hauser Conducta GmbH+Co. KG as the real party in
interest. Appeal Br. 2.
Appeal 2020-006720
Application 15/704,146
2
Application 15/704,146, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
The subject matter of the invention relates to monitoring the function
of a sensor arrangement comprising at least one sensor. Spec. ¶ 2.
Electrochemical sensors are said to show aging and wear, causing their
properties to change slowly. Id. ¶ 4. According to the Specification, the
invention determines the service life or remaining lifespan of a sensor under
fluctuating process conditions. Id. ¶ 7.
Claim 7, reproduced below from the Claims Appendix of the Appeal
Brief, represents the claimed subject matter:
7. A sensor control system for monitoring the function of at
least one sensor used in at least two different measuring
stations, comprising:
wherein the sensor control system includes an
electrochemical sensor and a temperature sensor connected with
a central computing unit having a storage, wherein the storage
comprises a temporal load matrix and a maximum total load
value;
wherein, during a first measurement duration, the
electrochemical sensor is configured to measure a first medium
in a first measuring station for obtaining a first measurement
value of a first measurand and the temperature sensor is
configured to measure a first temperature value;
wherein, during a second measurement duration, the
electrochemical sensor is configured to measure a second
medium in a second measuring station for obtaining a second
measurement value of the first measurand and the temperature
sensor is configured to measure a second temperature;
wherein the electrochemical sensor is adapted to send the
first measurement value, the first temperature value, the first
measurement duration, and the second measurement value, the
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Application 15/704,146
3
second temperature value and the second measurement duration
to the central computing unit;
wherein the central computing unit is configured to
calculate a remaining lifespan of the electrochemical sensor for
a usage of the electrochemical sensor at the first measuring
station or at the second measuring station by:
looking up a first temporal load value in the
temporal load matrix using the first measurement value
of the first measurand and the first temperature value;
looking up a second temporal load value in the
temporal load matrix using the second measurement
value of the first measurand and the second temperature
value;
determining a total load value for the
electrochemical sensor based on the first temporal load
value, the first measurement duration, the second
temporal load value and the second measurement
duration;
determining a first remaining lifespan for the
electrochemical sensor for usage at the first measuring
station based on the total load value, the maximum total
load value of the electrochemical sensor and the first
temporal load value; and
determining a second remaining lifespan for the
electrochemical sensor for usage at the second measuring
station based on the total load value, the maximum total
load value of the electrochemical sensor and the second
temporal load value.
Appeal Br. 12–13 (Claims App.).
REJECTIONS
The Examiner maintains the rejection of claims 7, 8, 14–16, 19, and
20 under 35 U.S.C. § 112(a) as lacking written description. Final Act. 4;
Ans. 3–4. The Examiner maintains the rejection of claims 7, 8, 10, 14–16,
Appeal 2020-006720
Application 15/704,146
4
19, and 20 under 35 U.S.C. § 112(a) as failing to comply with the
enablement requirement. Final Act. 4–5; Ans. 3.
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
persuaded that Appellant identifies reversible error in the rejection based on
lack of written description, but are not persuaded that Appellant identifies
reversible error in the rejection based on lack of enablement. Thus, we
reverse the written description rejection for the reasons set forth in the
Appeal Brief, but affirm the Examiner’s enablement rejection for the reasons
expressed in the Final Office Action and the Answer. We add the following
primarily for emphasis.
Written Description Rejection
Appellant argues for patentability of the claims as a group. Appeal
Br. 5–8. We select claim 7 as representative of the group. Claims 8, 14–16,
19, and 20 stand or fall with claim 7.3 37 C.F.R. § 41.37(c)(1)(iv).

3 In the Answer the Examiner withdrew the rejection of claim 10 for failing
to comply with the written description requirement specifically for failing to
provide support for any and every electrochemical sensor. Ans. 3.
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The Examiner finds that claim 7 encompasses all types of
electrochemical sensors, but the ’146 Application fails to “provide support
for any and every electrochemical sensor known to those of ordinary skill in
the art (the specific materials used, size, sensitivity, measurement
medium/target, etc.).” Final Act. 4; Ans. 4. The Examiner finds that the
invention is disclosed with regard to a pH sensor with no indication that any
other sensor was contemplated. Ans. 4.
Appellant argues that electrochemical sensors are well known, and in
technology and process automation are used to measure pH, dissolved
oxygen, or specific conductivity. Appeal Br. 6. Appellant contends that
there is no requirement that the ’146 Application describes how to make and
use every possible variant of the claimed invention, including every possible
variant of an electrochemical sensor. Id. at 7.
The sufficiency of an application’s written description is a question of
fact. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). To satisfy the written description requirement, the
applicant merely must convey with reasonable clarity to one skilled in the art
that, as of the filing date sought, they were in possession of the invention
and the invention, in that context, is whatever is now claimed. See Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). “[T]he
PTO has the initial burden of presenting evidence or reasons why persons
skilled in the art would not recognize in the disclosure a description of the
invention defined by the claims.” In re Wertheim, 541 F.2d 257, 263 (CCPA
1976).
The Specification discloses “[i]n process measuring technology and
process automation, electrochemical sensors are used worldwide for
example, to measure the pH value, dissolved oxygen, or the specific
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Application 15/704,146
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conductivity.” Spec. ¶ 3. Contrary to the Examiner’s finding, this
disclosure is more than merely the disclosure of a pH sensor. The Examiner
does not establish that the Specification’s disclosures fail to show possession
of an electrochemical sensor with the claimed functionality. Therefore, we
do not sustain the rejection of claim 7—or of claims 8, 14–16, 19, and 20—
for lacking written description.
Enablement Rejection
Appellant argues for patentability of the claims as a group. Appeal
Br. 8–10. We select claim 7 as representative of the group. Claims 8, 10,
14–16, 19, and 20 stand or fall with claim 7. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that claim 7 lacks enablement. Final Act. 4. The
Examiner finds that the ’146 Application fails to describe how one of
ordinary skill in the art could have determined a temporal load matrix, a
temporal load, or a maximum total load for an electrochemical sensor. Id.
The Examiner finds that although the Specification provides a table of
temporal load values and an example of a maximum total load (10,000 stress
points), these are untied to any sensor even though the Specification states
that temporal load values may vary depending upon the type of sensor. Id.
at 5. The Examiner finds that the temporal load values and associated
matrix, total load values, and maximum total load values are arbitrary
values. Id. The Examiner finds that the ’146 Application provides no
particular reasoning, rationale, or scale to the values and no consistent way
for one of ordinary skill in the art to determine a temporal load applied to a
sensor, a total load value, a maximum total load, and ultimately a lifespan of
a sensor. Id. The Examiner finds that undue experimentation would have
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been required for one of ordinary skill in the art to make and use the
invention. Id.
With respect to enablement of “temporal load,” Appellant argues that
electrochemical sensors transmit load values and software captures the total
load and the average load for each measuring station. Appeal Br. 8–9.
Appellant contends that the average load for each measuring station “may
represent the ‘temporal load.’” Id. at 9. According to Appellant, “the
parameters of pH and temperature prevailing at a particular measuring
station reflect a temporal load on the electrochemical sensor.” Id.
In addition, Appellant relies on machine translations of two German
patent applications—DE 10 2004 012 420 B4 by Wohlrab, published Sept.
29, 2005 and DE 101 41 408 A1 by Feucht et al., published Mar. 13, 2003—
as discussing “temporal loads that correspond to an environment of the
electrochemical sensor.” Id. at 9–10.
Appellant’s arguments are not persuasive.
The Specification as amended describes part of a method for
monitoring the function of a sensor arrangement as “determining a temporal
load value (B/t) for each measuring station from the at least one process
variable that was determined at this measuring station.” Spec. ¶ 8. Thus, B/t
is the temporal load value, but “B” is not defined or described further
anywhere in the Specification, and no method for determining B/t is
disclosed. In the Appeal Brief, Appellant indicates that the average load for
each measuring station may represent the temporal load, and parameters of
pH and temperature may reflect a temporal load (see Appeal Br. 9); these
possibilities, however, do not provide a meaning for the term or a method for
determining a meaning. In addition, neither of the translations of the
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German patent applications contain the term, and thus contribute nothing to
its meaning.
Appellant argues that Table 1 of the Specification lists examples of
temporal load values, and the temporal load matrix of the claims
corresponds to these examples. Appeal Br. 10. However, the temporal load
values provided in Table 1 are not tied to any identified sensor, and the
Specification contains no disclosure of how the values were determined, or
how temporal load values could be determined for electrochemical sensors
in the claims.
Appellant argues that maximum total load is a maximum load value of
the electrochemical sensor that should not be exceeded. Id. The
Specification states that GBmax is the maximum total load of a sensor, from
which the sensor is no longer considered to be functional. Spec. ¶ 18. The
Specification “assume[s] that a sensor has a maximum total load value
GMmax of, for example, 10,000 stress points.” Id. ¶ 20. The Specification
provides no description of how to determine the maximum total load other
than to make the assumption, and no information on the basis for the
assumption. In addition, the Specification does not define “stress point.”
A specification complies with the 35 U.S.C. § 112(a) enablement
requirement if it allows those of ordinary skill in the art to make and use the
claimed invention without undue experimentation. See In re Wright, 999
F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De
Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). We agree with the
Examiner that the amount of direction provided by the Specification is
severely lacking. See Ans. 5. One of ordinary skill in the art would not have
been able to select an electrochemical sensor and use the information
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provided in the Specification to anticipate the electrochemical sensor
longevity. Id.
For the reasons above, we affirm the Examiner’s rejection of claim 7
as lacking enablement. For the same reasons, we affirm the rejection of
claims 8, 10, 14–16, 19, and 20.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
7, 8, 14–
16, 19, 20 112(a)
Written Description 7, 8, 14–16, 19, 20
7, 8, 10,
14–16, 19,
20
112(a)
Enablement 7, 8, 10, 14–
16, 19, 20
Overall
Outcome:
7, 8, 10, 14–
16, 19, 20
TIME PERIOD FOR RESPONSE
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