Ex Parte Hammer et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201712312434 (P.T.A.B. Feb. 23, 2017) Copy Citation 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. 12/312,434 01/13/2010 Manfred Hammer HAMM3003/JS/FD 2879 23364 7590 02/27/2017 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER HOANG, ANN THI ART UNIT PAPER NUMBER PTAB NOTIFICATION DATE DELIVERY MODE 02/27/2017 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): MAIL @B ACONTHOMAS .COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MANFRED HAMMER, HERBERT SCHROTH, and DIETMAR SPANKE Appeal 2016-000647 Application 12/312,434 Technology Center 2800 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and LILAN REN, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 6—10 under 35 U.S.C. § 103(a) as being unpatentable over at least the basic combination of Schreck (US 5,864,241, issued Jan. 26, 1999), Morinaga (US 2005/0046985 Al, published Mar. 3, 2005), and Sendur (US 2005/0157597 Al, published Jul. 21, 2005).2 We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants state that the Real Party in Interest is Smiths Medical ASD, Inc. (App. Br. 3). 2 The Examiner applies additional prior art to dependent claim 8 (Final Action 5). Appeal 2016-000647 Application 12/312,434 Claim 6 is illustrative of the claimed subject matter: 6. A process measuring device for a measuring-and control-technology, which is mounted on a container, comprising: a housing; electronics arranged in an electronics compartment in said housing and having a plurality of electronic and/or electromechanical components; and an apparatus for detecting and/or monitoring wear of said electronic and/or electromechanical components caused by aggressive media penetrating into the electronics compartment and/or high temperatures and/or rapid temperature fluctuations and/or ionizing rays and/or vibration and/or shock, said apparatus includes at least one element, arranged in said electronics compartment in said housing and independent of said electronics, wherein: said at least one element has at least one physical property, which changes irreversibly as a function of wear of said element, and independently of an operating state of the electronics; said apparatus further includes a circuit for measuring said at least one physical property, and an evaluating unit; based on the measured physical property, said evaluating unit detects and/or monitors wear of said element and makes available a wear-dependent output signal, said output signal being fed directly to a display or a control room so that the output signal is accessible outside for an operator, without an opening of the measuring device being needed; and said output signal provides an operator with the opportunity for long-term planning of maintenance intervals, or, 2 Appeal 2016-000647 Application 12/312,434 in given cases, of required replacement of the process measuring device. OPINION We reverse the rejections. The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988); KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We need to address only the independent claim 6. The claim requires “a process measuring device for a measuring and control technology” and an apparatus with “at least one element independent of said electronics”, arranged in the compartment of the process measuring device’s electronics, where the independent element detects and/ or monitors wear caused by specific environmental forces as listed in the claim, with an output signal from said at least one element providing an operator of the need for maintenance or required replacement of “the process measuring device” as recited in claim 6. 3 Appeal 2016-000647 Application 12/312,434 The Examiner relies upon Schreck, which is directed to a wear indicator in a slider of a magnetic transducer in a magnetic storage disc system for on the fly detection of the state of wear of the transducer as it is worn by abrasion against the magnetic disc medium (Schreck Abstract), to exemplify most of these features, relying on Morinaga for sending an output signal to a display, and Sender for a housing (e.g., Final Action 4). Appellants contend that none of the references are directed to the claimed subject matter and that the Examiner is taking an unreasonably broad interpretation of the claimed “process measuring device” (Reply Br. 3 (stating “the Examiner has not, and cannot, explain how or why the skilled person would conceive to modify a computers disk drive’s read head to become an industrial process measuring device”); see also, e.g., App. Br. 15—18). Furthermore, Appellants contend that it is unreasonable to view Schreck’s wear indicator as “independent” of the electronics when the claim is properly construed in light of the Specification (App. Br. 28, 29 (“Applicants submit that the skilled person, in view of the specification, would have understood that the term "independent" as recited in the claim is clearly directed to the at least one element being independent of said electronics so that the at least one element can be used to determine the wear caused by the environmental conditions independent of the wear of the plurality of components”; relying on the Specification and Fig. 2)). Further, Appellants contend that the abrasive wear detected by the wear indicator in Schreck, directed to the wearing down of transducers due to normal use in contact with the magnetic disc, is not wear caused by any of the listed environmental conditions/factors in claim 6 {e.g., App. Br. 25). 4 Appeal 2016-000647 Application 12/312,434 The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim. In general, a preamble is construed as a limitation “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.2002) {quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention. Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[W]hen the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.”). Here, “a process measurement device” used in the preamble provides antecedent basis for “the process measurement device” used in the body of the claim. Appellants’ Specification describes various applications of a process measurement device in measuring and control technology (e.g., Spec. 4). A preponderance of the evidence supports Appellants’ position that the preamble is essential to understand limitations or terms in the claim body, such that the preamble limits claim scope. On this record, the Examiner has not established that it is reasonable to construe the applied prior art as being encompassed by the claimed “process measuring device”. Furthermore, the Examiner has not adequately explained why or how the 5 Appeal 2016-000647 Application 12/312,434 wear indicator of Schreck is “independent” of the electronics, and is capable of determining wear due to the environmental forces listed in the claim, so as to result in the claimed subject matter. The Examiner’s conclusion that the preamble is merely an intended use of the invention, and/or that the “magnetic storage systems, disk drives, and recording devices as disclosed” in the applied prior art “may be used in process measuring devices for a measuring and control technology, and thus are interpreted to constitute a process measuring device” (e.g., Ans. 5) is insufficient, without more, to establish that these devices are indeed “process measurement devices for a measuring-and control-technology” as claimed when interpreted in light of the specification. Thus, we agree with Appellants that the Examiner has taken an unreasonably broad interpretation of the claim language (the preamble and other limitations as discussed above and in Appellants’ briefs), since within the context of the claimed invention, the applied prior art is not directed to a process measuring device having all of the elements as claimed when properly construed (see, e.g., Spec. 1, 4, 5; Figs. 4—6; App. Br.; Reply Br.). “[Djuring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in patent applications is not determined solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art.); Phillips v. AWHCorp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“[T]he 6 Appeal 2016-000647 Application 12/312,434 specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” (Citation omitted)). On the record before us, the Examiner has not shown that each and every limitation of the claim is either described or suggested by the prior art or would have been obvious based on the knowledge or inferences and creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Furthermore, the Examiner has not offered any reasoning based on the skilled artisan’s knowledge or inferences and creativity employed that would support an obviousness conclusion. Accordingly, we reverse the rejections. DECISION/ORDER It is ordered that the Examiner’s decision is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation