Ex Parte Lips et al

Patent Trial and Appeal Board

Jun 30, 2016

12674089 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/674,089 04/07/2010
84331 7590
MMWVIP,LLC
10 N JEFFERSON ST
SUITE 100
FREDERICK, MD 21701
07/05/2016
FIRST NAMED INVENTOR
Georg Lips
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.
2902162-047000 3922
EXAMINER
FLINDERS, JEREMY C
ART UNIT PAPER NUMBER
1639
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
docketing@mmwvlaw.com
cgmoore@mmwvlaw.com
dwoodward@mmwvlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORG LIPS and ULF FRIEDERICHS
Appeal2013-010376
Application 12/674,089
Technology Center 1600
Before DEMETRA J. MILLS, KIMBERLY McGRAW and TA WEN
CHANG
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF CASE
The following claims are representative.
1. Apparatus for the purification, processing and/or analysis of
biological target molecules with a detection device for detecting at
least one object, which comprises at least one detection area,
wherein the detection device is adapted to detect at
least one height value of the detection area and is adapted to
determine, from the at least one height value, a spatial
position and/ or orientation and/ or a type and/ or a presence
and/or a number and/or a state of the at least one object and
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wherein the detection device is adapted to determine
the difference between the at least one detected height value
of the object and a reference height value and to determine a
number of stacked objects from the difference.
3. Apparatus according to claim 1, wherein the detection device is
adapted to determine the presence of the object from the at least one
detected height value of the object.
4. Apparatus according to claim 1, wherein the detection device is
adapted to detect the at least one height values of the object with a
one-point measurement.
5. Apparatus according to claim 1, wherein the detection device is
adapted to detect at least two height values of at least one detection
area of an object.
6. Apparatus according to claim 1, wherein the detection device 1s
movably arranged in relation to the object.
7. Apparatus according to claim 1, wherein the apparatus is adapted to
detect at least two height profiles of an object, wherein the at least
two height profiles are particularly arranged on opposing sides of
the object, and wherein further the apparatus is particularly adapted
to detect the at least two height profiles in opposing directions
relative to each other.
Cited References
Good et al., US 6,457,642 Bl Oct. 1, 2002
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Ground of Re} ection
Claims 1, 3-13, and 41 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Good.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
3-16.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
While features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. Id. (holding that the
absence of a disclosure in a prior art reference relating to function did not
defeat the Board's finding of anticipation of claimed apparatus because the
limitations at issue were found to be inherent in the prior art reference); see
also In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971); In re Danly, 263
F.2d 844, 847 (CCPA 1959); Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1469 (Fed. Cir. 1990) ("[A]pparatus claims cover what a
device is, not what a device does.").
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Any terminology in the preamble that limits the structure of the
claimed invention must be treated as a claim limitation. See, e.g., Corning
Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir.
1989). However, if "the body of the claim fully and intrinsically sets forth
the complete invention, including all of its limitations, and the preamble
offers no distinct definition of any of the claimed invention's limitations, but
rather merely states, for example, the purpose or intended use of the
invention, then the preamble is of no significance to claim construction
because it cannot be said to constitute or explain a claim limitation." Pitney
Bowes Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
Anticipation by Good
We agree with the Examiner's fact finding, statement of the rejection
and responses to Appellants' arguments as set forth in the Answer, except
with respect to claim 6. We find that the Examiner has provided evidence to
support a prima facie case of anticipation except with respect to claim 6.
We provide the following additional comment to the Examiner's argument
set forth in the Final Rejection and Answer.
Claim 1 essentially encompasses:
1. an apparatus for detecting at least one object, which comprises at
least one detection area,
2. the detection device is adapted to detect at least one height value of
the detection area and is adapted to determine, from the at least one
height value, a spatial position and/or orientation and/or a type
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and/ or a presence and/ or a number and/ or a state of the at least one
object and
3. the detection device is adapted to determine the difference between
the at least one detected height value of the object and a reference
height value and to determine a number of stacked objects from the
difference.
The Examiner finds that Good discloses an apparatus for detecting at least
one object (e.g. Abstract), which comprises at least one detection area (e.g.
Figure IE and claim 1). Ans. 3. According to the Examiner, Good further
discloses an apparatus,
wherein the detection device is adapted to detect at least one
height value of the detection area (e.g. Figure 19D and col 4
line 66 to col 5 line 12) and is adapted to determine, from the at
least one height value, a presence of at least one object (e.g. col
4 line 66 to col 5 line 12), wherein the detection device is
adapted to determine the difference bet\'l/een the at least one
detected height value of the object and a reference height value
(e.g. the conveyor belt and/or top of tunnel) and to determine
the number of stacked objects from the difference (e.g. Figures
18 and 190).
Ans. 3--4.
The Examiner finds that:
In the instant case, the limitation in the preamble has been fully
considered, but merely states the intended use of the apparatus
(i.e. "for the purification, processing and/or analysis of
biological target molecules") and does not impart any prima
facie structural limitation to the apparatus of the claim that
would distinguish it from the apparatus taught by Good et al.
Id. at 4.
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For their part, Appellants argue that the Examiner improperly ignored
the preamble of the claim and that "Good does not disclose an apparatus 'for
the purification, processing, and/or analysis of biological target molecules'
as recited in the present claims." App. Br. 8. Appellants further contend
that Good fails to disclose or suggest claim 1 's limitation "wherein the
detection device is adapted to determine the difference between the at least
one detected height value of the object and a reference height value and to
determine a number of stacked objects from the difference." Id. at 5.
In particular, Appellants contend that,
in the device of the present claims, the absolute difference
between the object height and reference height is used to
determine the number of stacked items.
This is not the same as what Good teaches. Good teaches
a system of tracking packages on the basis of, inter alia: (1) a
bar code on the package; (2) the geometry of the package; and
(3) the position of the bar code reader. Good, supra, at Abstract.
ii .. conveyor belt moves the package through the system, \vhich
scans the bar codes, measures the velocity and length of the
packages, detects the presence of the packages, measures the
height and width of the packages, and correlates the geometry
of the package to the bar code. Id. A continuous array of
height measurements relative to the conveyer belt is obtained as
the packages are transported through the system. Id. at col. 48,
line 46 - col. 49, line 24. Rapid changes in the height
measurements are then used to indicate the presence of a
stacked configuration. Id. The number of stacked packages is
then determined by analyzing the detected changes in height
data for a number of sampling times. Id. Thus, Good does not
detect correlate absolute difference between the reference
height and the object height to calculate the number of stacked
objects. Instead, Good uses the frequency in changes of height
relative to the reference height to determine whether packages
are in a stacked configuration.
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App. Br. 7-8.
We are not persuaded by Appellants' arguments. With respect to the
preamble of claim 1, it is well settled that "[i]f the preamble adds no
limitations to those in the body of the claim, the preamble is not itself a
claim limitation and is irrelevant to proper construction of the claim." IMS
Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir.
2000). For example, preamble language reciting "a method for treating a
cancer patient to effect regression of a taxol-sensitive tumor, said method
being associated with reduced hematologic toxicity" was "only a statement
of purpose and intended result. The expression does not result in a
manipulative difference in the steps of the claim." Bristol-Myers Squibb Co.
v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376, (Fed. Cir. 2001). Here, the
preamble states the purpose or intended use of the invention, rather than any
distinct definition of the any of the claimed invention's limitations.
As noted above, while features of an apparatus may be recited either
structurally or functionally, claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function.
Schreiber, 128 F.3d at 1477-78; Hewlett-Packard Co., 909 F.2d at 1469
(Fed. Cir. 1990) ("[A]pparatus claims cover what a device is, not what a
device does."). In the present case, Good meets the structural limitations of
the claims and the intended use recited in the preamble has no bearing on the
patentability of the claimed apparatus. Appellants have not shown, with
persuasive evidence, that the preamble breathes life and meaning into the
claim.
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Appellants also contend Good does not teach the features of Claim 1,
"wherein the detection device is adapted to determine the difference between
the at least one detected height value of the object and a reference height
value and to determine a number of stacked objects from the difference."
App. Br. 5.
We are not persuaded. According to the Specification, in a preferred
embodiment, "[t]he detection device can, e.g., detect the height value of the
object or the objects for this purpose, can determine a difference with respect
to a reference height value, and can compute a number of stacked objects
from the difference, respectively can assign the difference to a number of
stacked objects." Spec. i-f 17. Thus, according to the Specification, if there
is a difference with respect to a reference height value, the apparatus
computes a number of stacked objects from the difference.
According to Good, in "the case of stacked boxes, the measurement of
the package height will change while packages are passing through the light
curtain." Col. 48, 11. 41-43. Good discloses that
The digital filter system of FIG. 19A differentiates the sudden
changes in values of H(n) from noise (e.g. measurement errors and
slight irregularities in the box shape). As illustrated at Block 5F in
FIG. 19B, the decision rules for the simultaneous detection method
operating on sampled height data, are:
(1) determine that the boxes are "stacked" ...
and
(2) otherwise, determine that the boxes are singulated.
Col. 49, 11. 2-11. Ans. 3-4. Good discloses that, "Simulations show
that the above decision rules work well with regard to noise, and always
correctly locate abrupt changes in height data, which is necessary to
determine that boxes are arranged in a stacked configuration. Col. 49, 11. 14-
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18. Thus, Good would reasonably appear to determine a number of stacked
objects in a similar manner as disclosed in the Specification. In other
words, Good teaches determining if there are one or more than one stacked
objects (a number of stacked objects), or alternatively, that Good teaches
determining there is one object in the stack, which is also sufficient to satisfy
the claim. 1
Good further teaches an:
object of the present invention is to provide such a system,
wherein the package detection and dimensioning subsystem
provided on the input side of the laser scanning tunnel
subsystem further comprises a height data processor for
processing arrays of height profile data collected from the first
pair of light transmitting and receiving structures in order to
detect stacked arrangements of packages transported through
the package detection and dimensioning subsystem, and width
data processor for processing arrays of width profile data
collected from the second pair of light transmitting and
receiving structures in order to detect side-by-side arrangements
of packages transported through the package detection and
dimensioning subsystem, and upon detecting either a stacked
configuration of packages or a side-by-side configuration of
packages, automatically generating a unique data element
indicative of such multiple package arrangements along the
conveyor belt ....
Col. 7, 11. 49---63; see also, col. 1, 11. 12-27 and col. 8, 11. 11-18.
1 To the extent Appellants' contention is premised on the argument that a
single object cannot be a stack, we note that the Specification teaches a
preferred embodiment in which the type and the number of the stacked
objects is determined by the formula hT = ( n-1) x hso + d, where "n ( n>= 1) is
the number of stacked objects." Spec. i-f 58. Thus, the Specification
contemplates a stack in which the number of stacked object(s) is one.
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[T]he automated package identification and measurement
system of ... [Good], show[ s] the location of the package
height/width profiling subsystem (and package-in-tunnel
signaling subsystem) in relation thereto and the global
coordinate reference system Rglobat symbolically embedded
within the structure.
Col.19,11.15-23.
Furthermore, Good also determines if there is a difference with
respect to a reference height value, the apparatus computes a number
(multiple versus singulated) stacked objects from the difference. Good is
capable of "simultaneously detecting "stacked" configurations of packages
along a conveyor belt using the FIR digital filter of FIG. 19A to detect
sudden changes in the height data streams produced by the package
height/width profiling subsystem." Col. 20, 11. 13-18; see also col. 49, 11. 5-
11 (stating that process can determine that the boxes are singulated). As
such, Good teaches determining the difference between the at least one
detected height value of the object and a reference height value and to
determine if there is a single stacked object from the difference in the height
value. Therefore, Good teaches determining a number of stacked objects
(e.g., a single object stack) based on the difference between the height value
of the object and a reference height value.
Appellants have come forth with no persuasive evidence that the
height measurements made in Good with reference to a global reference
coordinate system do not measure the number of stacked objects, consistent
with the Appellants' disclosure in the Specification.
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Claim 3
Appellants contend that "Good is silent regarding determining
the presence of an object." App. Br. 10. For the reasons discussed herein
with respect to claim 1, and as set forth in the Answer, page 11, Good is
capable of determining the presence of an object. The rejection of claim 3 is
affirmed.
Claim 4
Claim 4 requires the detection device of claim 1 is adapted to detect
the at least on height values of the object with a one-point measurement.
According to the Specification, a one-point measurement means
that a height measurement is carried out at a discrete point of the
object (as the case may be, several times at the same, respectively a
similar place, i.e. deviations, which result from, e.g. process
precisions, respectively positioning these positions of the systems, are
also subsumed therein), and this height measurement taken for itself is
consulted for determining the number, the presence, the spatial
position, the state and/or the type of the object. Particularly
preferably, this height measurement is used for the common
determination of several of these parameters.
Spec. i-f 19. Appellants argue that Good does not disclose a one-point
measurement as required by claim 4 and that the Examiner's interpretation
of the term "comprising" in the claim as opening the claim up to additional
measurements "would open the claim so broadly as to make the term "one
point measurement" meaningless." App. Br. 11.
The Examiner finds that, "in the instant case, the presence of multiple
one-point measurements in Good et al., if any, would still fall within the
scope of the claim and thereby anticipate it. Furthermore, claim 5 recites
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that the detection device is adapted to detect at least two height values of an
at least one detection area of an object, which can reasonably be interpreted
to be two one-point measurements." Ans. 12.
We are not persuaded by Appellants' arguments. According to
Appellants' definition, a "one-point measurement" is "a height measurement
[which] is carried out at a discrete point of the object." Spec. i-f 19.
Appellants' definition does not exclude a second one-point measurement of
a different object and thus we do not agree with Appellants that the
limitation "one-point measurement" has been interpreted to render the term
meaningless. Moreover, FIG. 19A of Good processes detects sudden
changes in height data at one or more positions above the height of the
conveyor belt. Col. 48, 11. 60-63. Thus Good discloses that height detection
may occur at one position, as claimed. The rejection of claim 4 is affirmed.
Claim 5
Appellants argue that Good does not teach "the detection device is
adapted to detect at least two height values of at least one detection area of
an object" as required by claim 5. As indicated with respect to claim 4, the
Good process detects sudden changes in height data at one or more positions
above the height of the conveyor belt to detect the presence of an object.
Col. 48, 11. 60-63. The rejection of claim 5 is affirmed.
Claim 6
Claim 6 requires that the detection device is movably arranged in
relation to the object. Appellant argues Good teaches the packages being
moved rather than the scanning system and therefore does not teach the
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limitations of claim 6. App. Br. 12. We agree. The Examiner finds "Figure
18, show[s] the detection device and object moving relative to one another."
Final Act. 10. However, the Examiner has not shown where Good teaches a
detection device that is movably arranged in relation to the object. In
particular, we note that the Specification states:
Preferably, the detection device is arranged moveable relatively to the
object. It is also possible to spatially fix the detection device and to
move the area to be measured in particular along the line to be
measured.
Spec. i-f 20. Thus, the Specification appears to distinguish a situation in
which the device is movably arranged in relation to the object and a situation
in which the device is spatially fixed. The rejection of claim 6 is reversed.
Claim 7
Appellants contend that
Claim 7 requires the apparatus to detect the tv,ro height profiles in
opposing directions relative to each other. Height profiles may be
obtained by measuring in opposite directions so that the positioning of
the objects can be more precisely recognized (paragraph [0077]).
Thus, Good fails to anticipate the detection device of claim 7 because
the device of Good only measures the dimension in only one
direction.
App. Br. 13.
The Examiner responds arguing,
the claim does not require light receivers and light transmitters both
be on opposing sides of the object. Rather, the claim simply requires
two opposing height profiles be measured, without specifying how
this need be accomplished. As noted on pp. 17-18 of the Final Office
Action of 09/21/2012, as the boxes or objects move through the light
curtain of Good et al., the apparatus does measure two height profiles
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in opposing directions relative to each other, namely, measuring the
width of the object via measuring two opposite sides of the object
with the "light curtain" as per col 47, lines 33-43, or alternatively, the
height profiles of the front and back of the box (e.g. col 45 lines 18-
22). Alternatively, as noted on p. 11 of the same Final Office Action,
the apparatus of Good et al. is able to generate three dimensional
images of the objects measured, and therefore must be able to measure
height profiles on opposite sides of an object. Specifically, Good et
al. teaches the use of 3 D laser scanners for imaging so as to produce a
bidirectional scanning pattern along the principal axes of a three-
dimensional laser scanning volume (e.g. as per col. 2 lines 63-67).
Therefore, the apparatus of Good et al. reads on the claim.
We find the Examiner has the better argument which has not been
rebutted by Appellants, and the rejection of claim 7 is affirmed.
CONCLUSION OF LAW
The cited references support the Examiner's anticipation rejection,
which is affirmed for the reasons of record. All pending claims except for
claim 6 fall.
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-IN-PART
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