Ex Parte Mahler et al

Patent Trial and Appeal Board

Mar 25, 2013

10588183 (P.T.A.B. Mar. 25, 2013)

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.
10/588,183 08/02/2006 Michael Mahler 3745 6721
7590 03/25/2013
Michael J Striker
Striker Striker & Stenby
103 East Neck Road
Huntington, NY 11743
EXAMINER
GALT, CASSI J
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
03/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL MAHLER, ULLI HOFFMANN, REINER KRAPF,
CHRISTOPH WIELAND, and FELIX WEWERS
____________

Appeal 2011-000539
Application 10/588,183
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, BENJAMIN D. M. WOOD, and
ADAM V. FLOYD, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-3 and 5-12. Claim 4 is cancelled. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
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Application 10/588,183

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CLAIMED SUBJECT MATTER
Claims 1 and 9, reproduced below, with emphasis added, are
illustrative of the subject matter on appeal.
1. A method for determining the thickness of material by
penetrating the material, in particular a method for measuring
the thickness of walls, ceilings and floors, with which a
measurement signal (28) in the gigahertz frequency range
emitted using a single high-frequency transmitter (24)
penetrates the material (10) to be investigated at least once and
is detected by a single high-frequency receiver (38),
wherein the thickness (d) of the material (10) is measured
via at least two transit-time measurements of the measurement
signal performed for various positions (20, 22) of the single
high-frequency transmitter (24) and the single high-frequency
receiver (34) operated in a same hand-held device.

9. A device system for carrying out the method as recited in
Claim 1, wherein the device includes at least one high-
frequency measuring device (12) capable of being placed on a
surface (14) of a material (10), with at least one high-frequency
transmitter (24) and a high-frequency receiver (38), and a
transponder (40, 140, 240, 340) capable of being moved
relative to this high-frequency measuring device.

REJECTIONS1
The following Examiner’s rejections are before us for review.
Claims 1, 2, 5-8, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Arndt (US 6,501,414 B2, iss. Dec. 31, 2002).2

1 The Examiner has withdrawn the rejection of claims 3, 9, 10, and 11 as
unpatentable over Arndt and Nix (US 3,815,016, iss. June 4, 1974). Ans. 3.
2 The Claims Appendix provides a version of claim 5 previous to the last set
of claims filed August 10, 2009. This last set of claims prior to filing the
Appeal Brief provides the version of claim 5 on appeal and it recites that
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Application 10/588,183

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Claims 3, 9, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Arndt and either Stump (US 5,904,210, iss. May 18,
1999) or McEwan (US 6,492,933 B1, iss. Dec. 10, 2002).

OPINION
The rejection of claims 1, 2, 5-8, and 12 as unpatentable over Arndt
Arndt’s apparatus includes a swept transmitter 32 that operates in the
gigahertz frequency range and a swept receiver 44. Col. 9, ll. 53-57; col. 10,
ll. 43-45. The swept transmitter 32 operates at a number of positions, such
as position 34. Col. 10, ll. 1-3. When the swept receiver 44 receives data, it
provides the data to a computer and software element 46 where time delay is
measured. Col. 10, ll. 45-53.
The Examiner finds Arndt discloses the following recitation from
claim 1, “wherein the thickness (d) of the material (10) is measured via at
least two transit-time measurements of the measurement signal performed
for various positions (20, 22) of the single high-frequency transmitter (24)
and the single high-frequency receiver (34),” (hereinafter “claimed thickness
measurement”). See Ans. 4, 7-9. The Appellants contend Arndt does not
disclose the claimed thickness measurement because Arndt “provides
measurements at different locations of the material to detect objects enclosed
in the medium.” App. Br. 13. The Appellants’ contention is persuasive.
The claimed thickness measurement calls for “the thickness of the
material is measured via at least two transit-time measurements of the
measurement signal performed for various positions.” Emphasis added.

claim 5 depends from claim 1 rather than cancelled claim 4. For the
purposes of this appeal, we treat claim 5 as being dependent from claim 1.
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Application 10/588,183

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The term “the thickness” refers to a single thickness of the material, and this
single thickness of the material is measured via at least two transit-time
measurements. For example, in Appellants’ Figure 1 the single thickness
“d” of material 10 is determined by a first transit time measurement from
location at 20 (“TL20”) and a second transit-time measurement from location
at 22 (“TL22”). See Spec. 12, ll. 1-6.
Arndt is primarily directed to locating plastic mines, i.e., concealed
objects, but Arndt also describes that “the thickness of a concrete floor can
be determined” by its apparatus and method. Col. 9, ll. 14-21; Ans. 7-8.
The Examiner determines that whether or not Arndt detects a concealed
object Arndt effectively measures the thickness of the medium. Ans. 8. The
Examiner explains, “[i]n the case of measuring the thickness of a concrete
floor, the interface between the concrete and the adjacent material, whatever
it may be, would act as a reflector, rather than a concealed object.” Id.
Further, the Examiner determines that Arndt teaches “performing
measurements at a plurality of different locations” and “the measurement of
a plurality of transit times at each position.” Ans. 8-9 (citing col. 10, ll. 1-
53). The Examiner also determines that “[t]he time delay [(transit times)]
measurements are sufficient to determine thickness of the material, given the
known velocity of the measurement signal.” Ans. 9.
The Examiner, however, does not explain how Arndt discloses at least
two transit-time measurements of the measurement signal performed for
various positions measures a single thickness of the material. Although
Arndt discloses multiple transit-time measurements, each transit-time
measurement would be indicative of different thicknesses of the material,
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and the Examiner does not explain how these multiple thicknesses
determines a single thickness of the material.
Accordingly, the Examiner’s rejection of claim 1, and claims 2 and 5-
8 which depend either directly or indirectly therefrom, as unpatentable over
Arndt is not sustained. Also, the method of claim 12 includes the “claimed
thickness measurement” and for the same reasons as discussed above, the
Examiner’s rejection of claim 12 is not sustained.

The rejection of claims 3, 9, 10, and 11 as unpatentable over Arndt and
either Stump or McEwan
Claims 3 and 11
The method of claim 3 depends indirectly from claim 1 and the
method of claim 11 includes the claimed thickness measurement. The
rejections of claims 3 and 11 based on Arndt in combination with Stump or
McEwan rely on the same erroneous determination discussed above with
regard to claim 1. See Ans. 6-7. As such, we cannot sustain the rejection of
claims 3 and 11 as unpatentable over Arndt and either Stump or McEwan.
Claims 9 and 10
The Examiner provides the same evidence and reasoning for the
device system of claims 9 and 10 as method claims 1 and 11. See Ans.
passim. However, the Examiner’s findings do not adequately evidence how
Arndt’s device corresponds to the device as recited in claim 9, which recites
“[a] device system for carrying out the method as recited in Claim 1.” It is
incumbent upon the Examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d, 1071, 1073 (Fed. Cir.
1988). More specifically, the Examiner’s findings do not adequately
evidence how Arndt’s device is capable of using at least two transit-time
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measurements of the measurement signal performed for various positions to
measure a single thickness of the material. Also, the Examiner’s additional
findings and reasoning as evidenced by either Stump or McEwan does not
remedy the deficiency of the Examiner’s findings as discussed above. As
such, the Examiner’s rejection does not meet the Examiner’s initial burden
of establishing a prima facie case of obviousness. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). Thus, the Examiner’s rejection of claim
9, and its dependent claim 10, as unpatentable over Arndt and either Stump
or McEwan is not sustained.

DECISION
We REVERSE the rejections of claims 1-3 and 5-12.

REVERSED

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