Ex Parte Kita et al

Patent Trial and Appeal Board

Dec 10, 2018

13806833 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/806,833
151297 7590
Chris Mizumoto
1150 Arbol Way
San Jose, CA 95126
FILING DATE FIRST NAMED INVENTOR
03/14/2013 Junichi Kita
12/12/2018
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.
SMZ-103/7316282001 5345
EXAMINER
QUIGLEY, KYLE ROBERT
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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.mizumoto@miztechlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNICHI KITA, MOTOO KINOSHITA,
HISAMITSU AKAMARU, and MASA YUKI OKADA
Appeal2018-001318
Application 13/806,833
Technology Center 2800
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
JANEE. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1, 2, 5, and 6 under 35 U.S.C. §103(a)
as being unpatentable over Kita et al. (US 2003/0172717 Al, pub. Sept. 18,
2003; hereinafter "Kita"), with Nakamaru et al. (JP 10090207 A, pub. Apr.
10, 1998 (hereinafter; "Nakamaru" (as translated)). We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
1 Appellant is the Applicant, Shimadzu Corporation, which is also stated to
be the real party in interest (Appeal Br. 2).
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Application 13/806,833
We AFFIRM.
Claim 1 is independent and illustrative of the subject matter on appeal
( emphasis added to highlight key limitation in dispute):
1. An odor discriminating apparatus, comprising:
a) a measurement chamber including m pieces of odor
sensors having different responsive characteristics where m is
an integer greater than one;
b) a gas introducer for introducing a sample gas into the
measurement chamber;
c) a concentration adjuster for diluting or condensing the
sample gas before introducing the sample gas into the
measurement chamber;
d) a vector length computation unit for plotting, in a
m-dimensional space formed by axes each corresponding to a
detection signal generated by each of the m pieces of odor
sensors, a measurement point representing a measurement result
of the sample gas and for computing a vector length of an odor
vector starting from an origin of the m-dimensional space and
ending at the measurement point; and
e) a controller for feedback-controlling the concentration
adjuster so that the vector length computed by the vector length
computation unit reaches a predetermined target value.
Appellant focuses the arguments on independent claim 1 (Appeal Br.
5-10; Reply Br. 2-14). Accordingly, we limit our discussion to independent
claim 1.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellant's claims is unpatentable over the applied prior art. We sustain the
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Application 13/806,833
Examiner's § 103 rejection essentially for the reasons set out by the
Examiner in the Answer.
We add the following primarily for emphasis.
Appellant's principal argument is that there is no reason to combine
Nakamaru with Kita ( drawn to an odor measuring apparatus2), because
Nakamaru is not from Appellant's field of endeavor and is not reasonably
pertinent to the particular problem with which the inventor is involved
(Appeal Br. 6 (Kita's invention is "fundamentally different from and
incompatible with Nakamaru's"); Reply Br. 6). Appellant contends that
while the claimed invention is drawn to measuring odor in a gas (as is Kita),
Nakamaru, however, is drawn to measuring methane concentration in an
odorless gas (Appeal Br. 6-8; Reply Br. 6-9). Appellant further argues that
the proposed modification of Kita would impermissibly change the principle
of operation of Kita and render it unsatisfactory for its purpose (Appeal Br.
9, 10; Reply Br. 13).
We are not persuaded by Appellant's arguments. In KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 419-20 (2007) the Supreme Court observed that:
In determining whether the subject matter of a ... claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
... [unpatentable] under§ 103. One of the ways in which a
patent's subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for
which there was an obvious solution encompassed by the
patent's claims.
2 There is no dispute that Kita is analogous art (App. Br., generally).
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See also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010)
("The Supreme Court's decision in KSR . .. directs us to construe the scope
of analogous art broadly," stating that "familiar items may have obvious
uses beyond their primary purposes, and a person of ordinary skill often will
be able to fit the teachings of multiple patents together like pieces of a
puzzle.") ( emphasis omitted).
As the Examiner points out, Kita is drawn to an apparatus for
measuring odors in a gas including adjusting the concentration of sample
gases and a controller for the process ( e.g., Final Act. 5, 6), and Nakamaru
exemplifies a feedback control loop for adjusting high concentrations of
components in a gas in order to more accurately measure the concentration
(Final Act. 7). Appellant has not shown reversible error in the Examiner's
position that, because Kita relates to measuring and adjusting concentrations
of odorous components in a gas (Kita, generally), one skilled in the art
would have been motivated to use Nakamaru's feedback control loop (as
recited in claim 1) in Kita' s concentration adjustment in order to have more
accurate measurements at high concentrations (e.g., Final Act. 7; Ans. 4),
because Kita, Nakamaru and the present invention are all concerned with
machines for, and problems with, measuring the concentration of
components in a gas (Ans. 4, 6). See In re Bigio, 381 F.3d 1320, 1326 (Fed.
Cir. 2004) (the scope of the field of endeavor is a factual determination
based on the scope of the application's written description and claims); see
also In re Clay, 966 F .2d 656, 659 (Fed. Cir. 1992) (if a reference is not
within the relevant field of endeavor, it may still be properly considered if it
is reasonably pertinent to the problem; that is, if it would have logically
commended itself to an inventor's attention).
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Appellant has not shown error in the Examiner's finding that the
relevant field of endeavor relates to measuring the concentration of
components in a gas (Ans. 4) instead of the more narrow definition of
measuring only odorous components of a gas as Appellant proposes (Appeal
Br. 13). Furthermore, even assuming arguendo that Appellant's proposed
more limited field of endeavor was adopted, N akamaru is still pertinent to
problems with measuring high concentrations of components in a gas. One
of ordinary skill in the art would have readily inferred that this problem is
independent of whether the components are odorous or not. A
preponderance of the evidence supports the Examiner's findings that Kita
and Nakamaru are in the same field of endeavor and/or reasonably pertinent
to the problem of measuring concentrations of components in a gas, and thus
are analogous art. The Examiner has articulated sufficient reasons why one
of ordinary skill in the art would have looked to Nakamaru when
considering the machine of Kita (Ans., generally).
Appellant also argues that the Examiner has impermissibly looked at
Appellant's Specification for the problem of non-linearity of the odor
sensing output at both high and low concentrations of the odor (Reply Br.
11, 12) and that the proposed combination would not have worked for Kita's
purpose (Appeal Br. 10; Reply Br. 13). This is not persuasive of error in the
Examiner's rejection, since, as pointed out by the Examiner, one of ordinary
skill would have readily inferred that the problem identified in Nakamaru of
measurement inaccuracy at high concentration levels would have been
applicable to measuring concentrations of, e.g., odor components in a gas as
in Kita (Ans. 6). See In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)
( obviousness only requires a reasonable expectation of success). See also In
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re Keller, 642 F.2d 413,425 (CCPA 1981) ("The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference .... Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art."); In re Nievelt, 482 F.2d 965,968 (CCPA 1973)
("Combining the teachings of references does not involve an ability to
combine their specific structures.") ( emphasis omitted).
Appellant's argument that the Examiner "missed the point" of
Appellant's argument (Reply Br. 13) is not persuasive. Rather, as the
Examiner points out, it appears that Appellant is attempting to impermissibly
narrowly construe the meaning of "a predetermined target value" in the
claim (Ans. 10). Appellant has not directed our attention to any persuasive
reasoning or credible evidence to establish that the Examiner's interpretation
that the claim encompasses the Kita/Nakamaru combination is unreasonable.
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (it
is well established that "the PTO must give claims their broadest reasonable
construction consistent with the specification" and if the Specification does
not provide a definition for claim terms, the PTO applies a broad
interpretation). Cf, Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.").
Consequently, after consideration of Appellant's arguments, we are
unpersuaded of error in the Examiner's determination of obviousness. A
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process engineer would have been aware of the benefits of a feedback
control loop for concentration adjustment as exemplified in Nakamaru. See
KSR Int'! Co., 550 U.S. at 416 (2007) (the combination of familiar elements
or steps according to known methods is likely to be obvious when it does no
more than yield predictable results); Ball Aerosol and Specialty Container,
Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the "inferences and creative steps," as well as routine steps, that an
ordinary artisan would employ) (emphasis omitted).
Accordingly, we affirm the Examiner's prior art rejection of claims 1,
2, 5, and 6 under 35 U.S.C. § 103(a) for the reasons given above and
presented by the Examiner.
DECISION
The Examiner's prior art rejection is affirmed.
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)(l).
AFFIRMED
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