Ex Parte Chang et alDownload PDFPatent Trial and Appeal BoardSep 13, 201613238281 (P.T.A.B. Sep. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/238,281 09/21/2011 22879 7590 09/15/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Seongsik Chang 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. 82839839 3683 EXAMINER NIXON, OMAR H ART UNIT PAPER NUMBER 2886 NOTIFICATION DATE DELIVERY MODE 09/15/2016 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte SEONGSIKCHANG, HENRYKBIRECKI, and KRZYSZTOF NAUKA Appeal2015-002846 Application 13/238,281 Technology Center 2800 Before: MARK NAGUMO, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134 from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 In our Opinion, we refer to the Final Action mailed January 29, 2014 ("Final Act."), the Appeal Brief filed June 30, 2014 ("App. Br."), the Examiner's Answer mailed October 1, 2014 ("Ans."), and the Reply Brief filed December 1, 2014 ("Reply"). 2 Appellants identify Hewlett-Packard Development Company as the real party in interest. Appeal2015-002846 Application 13/238,281 The claims are directed to an optical sensor system having shields, an image forming apparatus having an optical sensor system having shields, and a method for detecting volatile organic compounds comprising shields. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An optical sensor system, comprising: a source module including a source housing unit having a source window member and a source shielding member, the source module to emit a detection signal through the source window member; the source shielding member surrounding the source window member and extending in an outward direction from the source window member; and a detection module including a detection housing unit having a detection window member and a detection shielding member, the detection module to detect the detection signal emitted from the source module at the detection window member and spaced apart from the source module; the detection shielding member surrounding the detection window member and extending in an outward direction from the detection window member; wherein distal ends of the source shielding member and the detection shielding member are spaced from and opposed to each other. App. Br. 19 (Claims App'x). Kuhnen et al., ("Kuhnell") Furtaw et al., ("Furtaw") Chopra et al., ("Chopra") REFERENCES us 5,790,246 US 2010/0110437 Al US 7,924,412 B2 2 Aug. 4, 1998 May 6, 2010 Apr. 12, 2011 Appeal2015-002846 Application 13/238,281 REJECTIONS Claims 1-10 and 18-20 stand rejected under 35 U.S.C. § 102(b) as anticipated by Furtaw. Claims stand rejected under 35 U.S.C. § 103(a) as follows: claims 11-16 over Furtaw in view ofKuhnell; and claim 17 over Furtaw in view of Kuhnen and further in view of Chopra. OPINION The application contains three independent claims: claims 1, 11, and 18. Claim 1 is drawn to an optical sensor system comprising a source and a detection module, each of which comprises a shielding member "wherein distal ends of the source shielding member and the detection shielding member are spaced from and opposed to each other." App. Br. 19 (Claim App'x). Claim 11 is drawn to an image forming apparatus comprising an optical sensor system including a source and a detection module, each of which comprises a shielding member "wherein the source shielding member and the detection shielding member are separate members with free ends thereof opposed to each other." Id. at 21. Claim 18 is drawn to a method of detecting volatile organic compounds, the method comprising emitting a detection signal by a source module and receiving the detection signal by a detection module spaced apart from the source module, wherein the source module comprises a source shielding member having an open end "spaced apart from and opposed to" a detection module, and a detection module comprises a detection shielding member having an open end "spaced apart from and opposed to" the source module. Thus, claims 1 and 18 and their dependent claims require a source shielding member and a detection shielding member that are "spaced apart 3 Appeal2015-002846 Application 13/238,281 from and opposed to" each other. Claim 11 requires the source shielding member and detection shielding member are separate members with free ends thereof "opposed to" each other. Appellants amended the claims on November 6, 2013 to add these limitations in response to the Examiner's rejection of the claims over Furtaw. An annotated version of Figure 2A of the instant application is reproduced below: 1/ f .,«" ~ 25 »ocm:.e :o;h::!;{;~1J n:en1t:,e:· I 3.A•---J r--_,. 3B I I I L ___ ., 38 Detedion Module Figure 2A depicts a side view of the optical sensor system of the claims. It has been modified to identify the source shielding member ( 12b) and the detection shielding member (15b ). 4 Appeal2015-002846 Application 13/238,281 In the Final Action and Answer, the Examiner maps elements of the claims to Furtaw's Figure 1, which is reproduced below: 23---.. C!RCULA TION COLUMN PROVIDES AIR PA TH ( BETWEEN SOURCEAflD DETECTOR AND MAINTAINS SEPARATION DISiANCE UPON REASSEMBLY 22-- _.-50 70 CELL AND SENSORS EASILY REMOVED FOR CLEANING 40 I WINDOWS \ @ 20 Figure 1 depicts a gas analyzer including a removable sample flow cell (20) according to one embodiment of Furtaw. The Examiner identifies element 60 of Furtaw as the source module of the claims, element 50 as the detection module, element 70 as the source window member (and an identical element, not shown, on the detection module as the detection window member), and element 20 as both the source shielding member and the detection shielding member. Ans. 2-3. According to the Examiner, "[t]he distal end of the [source] shielding member and the detection shielding [member] are spaced from and opposed to each other by the body of the shielding member." Ans. 11-12. Thus, the Examiner construes "opposed to" to mean "at opposite ends." The 5 Appeal2015-002846 Application 13/238,281 Examiner provides no citation to the Specification in support of this construction; rather, the Examiner only cites Furtaw. See id. Appellants argue that "opposed to" should be construed as "set or placed in opposition to each other." App. Br. 10; Reply 4. This construction is consistent with the Specification and figures of the application. See, e.g., i-fi-f 14--18, Figs. 2A, 2B. Appellants explain that, while the cylindrical portions at the top and bottom of the removable sample cell in Furtaw may be on opposite ends of the removable sample cell, these cylindrical portions are not "opposed to" each other. App. Br. 10. During examination, claims are to be given their broadest reasonable interpretation consistent with the specification, and claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Examiner's construction of "opposed to" as meaning "at opposite ends" appears to be based on Furtaw, not the Specification. The Examiner has not shown that the broadest reasonable interpretation of "opposed to" consistent with the Specification is "at opposite ends." In contrast, Appellants' construction provides the necessary consistency with the Specification. We construe the term "opposed to" in the claims as "set or placed in opposition to each other." Rejection of claims 1-10 and 18-20 as anticipated by Furtaw In light of our claim construction, we find that Furtaw fails to teach all of the limitations of claims 1 and 18. Specifically, Furtaw does not teach "wherein the distal ends of the source shielding member and the detection shielding member are spaced from and opposed to each other" (claim 1 ), or "with an open end of the source (detection) shielding member spaced from 6 Appeal2015-002846 Application 13/238,281 and opposed to the detection (source) module" (claim 18). Therefore, we do not sustain the Examiner's rejection of claims 1 and 18 as anticipated by Furtaw. We likewise do not sustain the Examiner's rejection of (1) claims 2-10 because those claims depend from claim 1, and (2) claims 19 and 20 because those claims depend from claim 18. Rejections of claims 11-16 as obvious over Furtaw in view of Kuhnel! and of claim 17 as obvious over Furtaw in view of Kuhnel! and further in view of Chopra The Examiner relies on Furtaw for the claim element "wherein distal ends of the source shielding member and the detection shielding member are spaced from and opposed to each other." Ans. 8. Because neither Kuhnen nor Chopra teach this claim element, we find that the prior art cited by the Examiner fails to teach all elements of claims 11 and 1 7. For this reason we do not sustain the Examiner's rejection of claim 11 and its dependent claims 12-16 as obvious over Furtaw in view of Kuhnell. We also do not sustain the Examiner's rejection of claim 17 as obvious over Furtaw in view of Kuhnen and further in view of Chopra. DECISION For the above reasons, the Examiner's rejection of claims 1-20 is REVERSED. REVERSED 7 Copy with citationCopy as parenthetical citation