Ex Parte Lenhard et al

Patent Trial and Appeal Board

Oct 11, 2017

13825553 (P.T.A.B. Oct. 11, 2017)

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.
13/825,553 05/02/2013 Markus Lenhard TS/HAH 1301 US-PAT 9814
97053 7590
Hach Company
Attention Legal - Patent and Trademark Department
5600 Lindbergh Drive PO Box 389
Loveland, CO 80539
EXAMINER
BERKELEY, EMILY R
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
10/13/2017 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):
uspto@hach.com
taschulz@hach.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS LENHARD, MANFRED BATTEFELD,
BERND GASSNER, BAAS DE HEIJ, and
CLEMENS HANSCHKE
Appeal 2016-008366
Application 13/825,5531
Technology Center 1700
Before DONNA M. PRAISS, JULIA HEANEY, and
AVELYN M. ROSS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 9—17. Final Act. 3—15; App. Br. 5—6. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.
1 The real party in interest is identified as Hach Lange GmbH. App. Br. 2.
2 This opinion makes reference to the Specification (filed Mar. 22, 2013)
(“Spec.”), the Final Office Action (dated Sept. 9, 2015) (“Final Act.”), the
Appeal Brief (filed Feb. 5, 2016) (“App. Br.”), the Examiner’s Answer
(dated July 12, 2016) (“Ans.”), and the Reply Brief (filed Sept. 9, 2016)
(“Reply Br.”).
Appeal 2016-008366
Application 13/825,553
The subject matter of this appeal relates to a method for the automated
determination of an analyte in a liquid sample in a circular cuvette suitable
for photometry. Spec. 1,2. The cuvette contains a reagent that reacts
with the analyte in a color-changing manner and also has a one or two-
dimensional barcode and a separate two-dimensional icon on the cuvette
outer side. Id. 1 6. A liquid analysis device in which the cuvette is inserted
includes a photometer as well as a rotation device and camera for reading the
barcode and icon. Id. 17. The liquid analysis device further comprises an
electronic calibration data memory for storing the calibration data as well as
an input device for the manual entry of reagent calibration data. Id. ]flf 7, 8.
Claim 9, the sole independent claim, is illustrative and reproduced from the
Claims Appendix (disputed matter italicized):
9. A method for automatically determining an analyte of
a liquid sample in a cuvette in a liquid analysis device, the
method comprising:
providing a cuvette which is configured to be cylindrical;
providing a reagent which is configured to react with the
analyte in a color-changing manner;
applying a barcode configured either as a one-dimensional
barcode or as a two-dimensional
barcode to the cuvette;
applying an icon with two dimensions to the cuvette;
providing a liquid analysis device comprising:
a photometer,
a cuvette rotator which rotates a cuvette inserted in
the liquid analysis device,
a camera which is configured to read the barcode
and the icon,
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a calibration data memory which stores first
calibration data associated with the reagent, and
an input device which manually inputs second
calibration data associated with the reagent;
inserting the cuvette into the liquid analysis device;
rotating the cuvette so as to align the icon with the camera;
reading the icon with the camera;
comparing the icon read with an icon model stored in the
liquid analysis device;
determining whether the icon read corresponds to the icon
model;
if the icon read is determined to correspond to the icon
model, subjecting the liquid sample to photometry on the basis
of the first calibration data stored in the calibration data memory,
or, if the icon read is determined to not correspond to the icon
model, activating the input apparatus for manually inputting the
second calibration data; and
subjecting the liquid sample to photometry on the basis of
the second calibration data which has been manually input,
wherein, the calibration data is used to convert the
measuring signals acquired by the photometer into
corresponding quantity measuring values so as to obtain an
accurate quantitative determination of the analyte.
App. Br. 23—24 (Claims Appendix).
The Examiner maintains, and Appellants appeal, the following
rejections:
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Application 13/825,553
I. Claim 9 under 35 U.S.C. § 112, sixth paragraph, for using a generic
placeholder “device” coupled with functional language “inputs” without
reciting sufficient structure to achieve the function;3
II. Claims 9—17 under 35 U.S.C. § 112, second paragraph, as
indefinite for reciting “an input device which manually inputs” because it is
unclear how an input device/machine can do something manually;
III. Claims 9, 10, and 13 under 35 U.S.C. § 103(a) as unpatentable
over Berssen et al.,4 in view of Rudloff5 and Wolpert et al.;6
IV. Claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Berssen, Rudloff, and Wolpert in further view of McAleer et al.;7
V. Claims 14, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable
over Berssen, Rudloff, and Wolpert in further view of Chen et al.;8 and
VI. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Berssen,
Rudloff, and Wolpert in further view of Tangezaka et al.9
Ans. 2—13; App. Br. 5—6. In accordance with 37 C.F.R. § 41.37(c)(l)(iv),
we address each claim separately argued by Appellants.
3 Although Appellants do not separately list this rejection on pages 5—6 of
the Appeal Brief, Appellants argue the rejection on pages 6—8 of the Appeal
Brief.
4 US 5,386,287, issued Jan. 31, 1995; hereinafter “Berssen”.
5 US 7,303,139 Bl, issued Dec. 4, 2007.
6 US 2008/0021436 Al, published Jan. 24, 2008; hereinafter “Wolpert”.
7 US 5,989,917, issued Nov.23, 1999; hereinafter “McAleer”.
8 US 5,581,071, issued Dec. 3, 1996; hereinafter “Chen”.
9 US 2006/0038016 Al, published Feb. 23, 2006; hereinafter “Tangezaka”.
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OPINION
The dispositive issues for this appeal are whether the Examiner erred
in finding that 1) the recited “input device” lacks sufficient structure to
achieve the function, 2) a person having ordinary skill in the art at the time
of the invention would not have understood “an input device which
manually inputs” because it is unclear how an input device/machine can do
something manually, and 3) it would have been obvious to a person having
ordinary skill in the art at the time of the invention to incorporate the
memory storage, camera, and icon comparison and determination system of
Rudloff into the sample analysis system of Berssen to visually clarify the
identity of the samples as well as provide more analysis information and
tools available for achieving accurate analysis.
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the rejections of claims 9—17.
Rejection I: 35 U.S.C. § 112, sixth paragraph
The Examiner determines that the recitation of “input device” does
not provide any structural elements and therefore is interpreted to cover the
corresponding structure described in the Specification that achieves the
claimed function, and equivalents thereof, under 35 U.S.C. § 112, sixth
paragraph. Final Act. 3. Specifically, the Examiner identifies the structures
disclosed in paragraph 8 of the Specification. Id. (“a keyboard, a key, a
knob, a touch screen or another manual input device”).
In the Appeal Brief, Appellants argue that the Examiner erred in
interpreting claim 9 under 35 U.S.C. § 112, sixth paragraph, because the
claim does not use the terms “means” or “step” and the asserted generic
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placeholder would be understood by a person skilled in the art to be the
name for the structure that performs the function. App. Br. 6—8 (citing cases
where the sixth paragraph was not invoked). Appellants concede that if
§112, sixth paragraph, is invoked, the recited structure in paragraph 12 of
the Specification is sufficient to overcome the rejection. Reply Br. 6.
Based on the record cited in this appeal, we agree with the Examiner
that the phrase “input device” as used in the context of claim 9 does not
convey adequate structure, thereby invoking the sixth paragraph of § 112.
Appellants do not adequately support their argument that one of ordinary
skill in the art would understand the structure described by “input device”
nor do Appellants adequately explain how the cited case law is relevant to
their “input device” to merit the same result. Both the Examiner and
Appellants agree that under 35 U.S.C. § 112, sixth paragraph, “input device”
should be construed to mean a keyboard, a key, a knob, a touch screen or
another manual input device that achieves the claimed function of inputting,
and equivalents thereof. Final Act. 3; Reply Br. 6. Accordingly, we affirm
the Examiner’s interpretation of “input device” under 35 U.S.C. § 112, sixth
paragraph.
Rejection II: 35 U.S.C. § 112, second paragraph
The Examiner finds that claim 9 and its dependents are indefinite
under 35 U.S.C. § 112, second paragraph, for reciting “an input device
which manually inputs ...” because it is unclear how an input device can do
something manually. Final Act. 4.
Appellants assert that this rejection is closely related to the rejection
under 35 U.S.C. § 112, sixth paragraph, and argue that a person having
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ordinary skill in the art would “clearly understand what structure is required
when the term ‘an input device which manually inputs memory’ and would
implement a system according to the state of the art.” App. Br. 8.
We are not persuaded by Appellants’ argument. As recently reiterated
in Ex parte McAward, 2017 WL 3669566, *5 (PTAB 2017) (precedential),
we assess indefmiteness under the approach approved by the Federal Circuit
in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014), i.e., “[a] claim is
indefinite when it contains words or phrases whose meaning is unclear.”
This approach is consistent with the broadest reasonable interpretation
standard used by the PTO when interpreting proposed patent claims to
ensure that they are “clear, unambiguous, and drafted as precisely as the art
allows.” Id. at *3. When a broadest reasonable interpretation reveals
ambiguity in the claim language “the applicant may ‘amend his claims to
obtain protection commensurate with his actual contribution to the art.’” Id.
(quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)). The
Federal Circuit acknowledged the desirability of resolving questions of
compliance with § 112 during prosecution in Halliburton Energy Servs., Inc.
v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (cited with approval in
Nautilus, Inc. v. Biosig Instrument, Inc., 134 S. Ct. 2120, 2129 (2014)):
We note that the patent drafter is in the best position to resolve
the ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in
litigation.
Even if Appellants’ understanding of the claim language “an input
device which manually inputs ...” is correct, in the context of the claim, the
input device rather than a user is doing something manually. Appellants do
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not rebut the Examiner’s finding that ambiguity exists because it is not clear
how the input device itself is doing something manually. Nor do Appellants
provide any support for the argument that a skilled artisan would understand
from the recited limitation the structure necessary to implement a system
that manually inputs memory. Appellants direct us to no evidence in this
record that explains whether a user is required or not for the manual input
function that is ascribed to the input device. In this circumstance, where the
Office plays an important role in ensuring that proposed patent claims are
clear, unambiguous, and drafted as precisely as the art allows, we do not find
the indefmiteness rejection unreasonable in seeking more precision. Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a
claim is amenable to two or more plausible claim constructions, the USPTO
is justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite.”). Accordingly, we affirm the
Examiner’s decision to reject claims 9—17 under 35 U.S.C. § 112, second
paragraph, as indefinite.
Rejection III: 35 U.S.C. § 103 (a)
The Examiner finds that claims 9, 10, and 13 would have been
obvious over the combination of Berssen, Rudloff, and Wolpert for the
reasons set forth on pages 6—11 of the Final Action and pages 4—9 of the
Answer. For purposes of examination, the Examiner interprets the input
device limitation as “an input device for which a user can manually input
second calibration data.” Final Act. 4; Ans. 3.
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Appellants contend that the Examiner erred in rejecting claim 9
because “none of Berssen, Rudloff and Wolpert teach or suggest at least the
feature of ‘first calibration data associated with the reagent’ or ‘second
calibration data associated with the reagent.App. Br. 11. Appellants
emphasize the significance of this limitation is due to “consumers sometimes
use cuvettes and reagents from a second source supplier for various reasons”
and implementing an icon on the cuvette means that if the cuvette is not read
and does not correspond to the icon model, the liquid analysis device will
conclude the cuvette is from a second source supplier and the user will need
to manually enter the second calibration data. Id. at 12. Appellants further
argue that Berssen does not teach or suggest the claimed input device or data
which has been manually input as required by the claim. Id. at 13.
Appellants assert that Rudloff s system “is the exact opposite of the method
of the present invention” because it can only be used after an item has been
authenticated and therefore blocks unauthorized accessories. Id. at 13—15
(emphasis omitted); Reply Br. 9. Appellants further argue that Wolpert’s
calibration data is not associated with a reagent, but, rather an analyte
because it is directed to in vivo monitoring of an analyte and injecting a
reagent into a patient is not taught or suggested by Wolpert. App. Br. 16;
Reply Br. 9—10.
Appellants’ arguments are unpersuasive because the rejection is over
the combination of the cited references and the Examiner relies upon
Berssen’s disclosure of a method for determining an analyte of a liquid
sample using a liquid analysis device comprising a photometer, cuvette
rotator, a reading device to read the barcode attached to the cuvette, a
computer to adjust a measuring device based on the barcode input. Final
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Act. 6—7. The Examiner does not rely upon Berssen for the teaching of an
icon and associated claim elements. Id. at 7. Therefore, Appellants’
argument distinguishing the Berssen reference individually is not persuasive
of error, especially because Appellants do not identify error in the
Examiner’s factual findings as to Berssen. See In re Keller, 642 F.2d 413,
426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Similarly, Appellants distinguish Rudloff on the basis that Rudloff
does not teach manually inputting calibration data, even though the
Examiner relies on Wolpert, not Rudloff, for this teaching. App. Br. 13—15;
Final Act. 9—10. Appellants also contend that Rudloff s system is used after
the item has been authenticated which “is the exact opposite” of the instant
invention. Id. at 13—14. The Examiner relies on Rudloff s teachings of (1)
an icon and camera to clarify the identity of the samples and (2) an icon
comparison and determination system for achieving accurate analysis. Final
Act. 8—9. As the Examiner points out, Rudloff s further step of blocking the
system if there is no match using the information from the icon in
conjunction with the stored data when performing subsequent analysis has
no bearing on the previous steps taught by Rudloff. Therefore, Rudloff
cannot be said to teach away from the claimed method because it does not
teach away from the use of an icon comparison and determination system.
See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference.”). Appellants’ argument is also unpersuasive because “[t]he test
for obviousness is not whether the features of a secondary reference may be
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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 Keller, 642 F.2d at 425.
Finally, Appellants’ argument that Wolpert is not analogous art
because it relates to an analyte rather than a reagent (App. Br. 16—17) is not
persuasive because Wolpert’s method of obtaining calibration data through
stored data or input data to provide more useful data and more calibration
options (Final Act. 10) is reasonably pertinent to the problem with which the
inventors were concerned because an analyte also reacts within the system
(Ans. 15-16). See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) (“A
reference is reasonably pertinent if, even though it may be in a different field
from that of the inventor’s endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor’s
attention in considering his problem.”).
For the foregoing reasons, and for the reasons stated in the Final
Action and Answer, we affirm the Examiner’s rejection of claims 9, 10, and
13 under 35 U.S.C. § 103(a).
Rejections IV VI: 35 U.S.C. § 103(a)
The Examiner finds that claims 11, 12, and 14—17 would have been
obvious over the combination of Berssen, Rudloff, and Wolpert together
with additional secondary references for the reasons set forth on pages 11—
15 of the Final Action and pages 9—12 of the Answer.
Appellants argue that the additional secondary references do not cure
the deficiencies of Berssen, Rudloff, and Wolpert that Appellants previously
argued. App. Br. 18—20. Appellants further contend that the Examiner’s
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rejection combining the references with McAleer is in error because
McAleer is in a “wholly different technical field” of test meters for glucose
monitoring. Id. at 18. Appellants acknowledge that McAleer describes
calibration values that can be applied to a container in the form of a machine
readable barcode, a magnetic stripe, a memory chip, or as a resonant wire
loop to automate calibration values and reduce the risk of wrong calibration
information. Id. Similarly, Appellants contend that the secondary reference
“Chen at best describes a barcode scanner where the light intensity can be
controlled” and does not mention calibration data at all. Id. at 19. The
secondary reference Tangezaka is also argued to “at best teach[] that a light
source must often be calibrated with manual adjustments because of
variances”. Id. at 20.
Appellants’ arguments are not persuasive of error by the Examiner
because Appellants do not dispute the Examiner’s factual findings as to the
additional secondary references which disclose the features recited in the
dependent claims. Moreover, the additional secondary references are
reasonably pertinent to the claimed methods because they logically would
have commended themselves to an inventor’s attention in considering his
problem related to the function of barcodes. The Appellants’ arguments also
are not persuasive because we do not find reversible error in the Examiner’s
combination of Berssen, Rudloff, and Wolpert as discussed above in
connection with the rejection of claims 9, 10, and 13.
For the foregoing reasons, and for the reasons stated in the Final
Action and Answer, we affirm the Examiner’s rejections of claims 11, 12,
and 14—17 under 35 U.S.C. § 103(a).
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DECISION
We affirm all of the stated rejections of claims 9—17.
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)(v).
ORDER
AFFIRMED
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