Ex Parte Mehus et al

Board of Patent Appeals and Interferences

Nov 16, 2010

10602384 (B.P.A.I. Nov. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RICHARD J. MEHUS, CHARLES A. HODGE and
QUANG VAN DAO
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Appeal 2009-015071
Application 10/602,384
Technology Center 1700
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Before TERRY J. OWENS, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-7, 18-22 and 24. Claims 14-17, which are all of the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-015071
Application 10/602,384

other pending claims, stand withdrawn from consideration by the Examiner.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a concentration monitor. Claim 1 is illustrative:
1. A concentration monitor comprising:
a resistivity probe that measures resistivity of selected one of a
plurality of use solutions;
a temperature sensor that measures a temperature of the
selected use solution;
a memory that stores a plurality of predetermined algorithms,
each associated with a different one of a plurality of product
classifications; and
a controller that calculates a concentration of a product in the
selected use solution based on the resistivity, the temperature and one
of the plurality of the predetermined algorithms associated with a
product classification of the product in the selected use solution.

The Reference
Nomura 6,706,533 Mar. 16, 2004
The Rejection
Claims 1-7, 18-22 and 24 stand rejected under 35 U.S.C. § 103 over
Nomura.
OPINION
We reverse the rejection.
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Nomura would have rendered prima facie obvious, to one
of ordinary skill in the art, a memory that stores a plurality of predetermined
algorithms, each associated with a different one of a plurality of product
classifications, and a controller that is programmed to calculate a
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Application 10/602,384

concentration of a product based in part upon one of the plurality of
predetermined algorithms?
Findings of Fact
Nomura discloses a concentration detector which, based upon the
measured electrical conductivity and temperature of a solution, calculates
the concentration of an agent in the solution from an equation including
constants determined by measuring the electrical conductivities and
temperatures of a plurality of solutions containing the same agent (col. 3,
l. 65 – col. 4, l. 35).
Analysis
The Appellants argue that Nomura merely determines a set of
constants for each agent to be measured and does not teach or suggest a
memory which stores a plurality of predetermined algorithms associated
with a different one of a plurality of product classifications or a controller
that determines the concentration of an agent based upon one of the plurality
of predetermined algorithms (Br. 6; Reply Br. 4-5).
The Examiner argues (Ans. 5-6):
It is considered predictable that the memory of the disclosed computer
controller could store a plurality of different predetermined algorithms
associated with different product agents. It would have been within
the ambit of a person of ordinary skill in the art to store a plurality of
different algorithms for different product agents within a memory
feature of the disclosed apparatus to facilitate effective product
monitoring for each of the product agents. The simple substitution of
one known element, such as a predetermined algorithm in this
instance, for another is likely to be obvious when predictable results
are achieved. See KSR Int’l v. Teleflex Inc., 127 Sup. Ct. 1727, 1742,
82 USPQ2d 1385, 1397 (2007). Therefore, it would have been
obvious to a person of ordinary skill in the art to incorporate a
memory feature storing a plurality of different predetermined
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Application 10/602,384

algorithms associated with different product agents or classifications
in order to effectively use the disclosed monitoring apparatus in
monitoring different product agents.

The Examiner’s argument that the substitution of the Appellants’
plurality of predetermined algorithms for Nomura’s algorithm is a simple
substitution of one known element for another is not persuasive because the
Examiner has not established that the Appellants’ plurality of predetermined
algorithms, each associated with a different one of a plurality of product
classifications, was known in the art.
The Examiner’s argument that it is predictable that Nomura’s
computer memory could store the Appellants’ plurality of predetermined
algorithms is not well taken because, as stated by the Court of Custom and
Patent Appeals in In re Prater, 415 F.2d 1393, 1403 n.29 (CCPA 1969):
In one sense, a general-purpose digital computer may be regarded as
but a storeroom of parts and/or electrical components. But once a
program has been introduced, the general-purpose digital computer
becomes a special-purpose digital computer (i.e., a specific electrical
circuit with or without electro-mechanical components) which, along
with the process by which it operates, may be patented subject, of
course, to the requirements of novelty, utility, and non-obviousness.

Thus, the question is not whether Nomura’s memory could store the
Appellants’ plurality of predetermined algorithms but, rather, is whether
Nomura would have rendered prima facie obvious to one of ordinary skill in
the art, through no more than ordinary creativity, the Appellants’ memory
which stores the Appellants’ plurality of predetermined algorithms and the
Appellants’ controller which is programmed to calculate the concentration of
a product based in part upon the one of the plurality of predetermined
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Application 10/602,384

algorithms. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In
making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”). The Examiner has not provided evidence or reasoning which
shows that Nomura would have rendered such a memory and controller
prima facie obvious to one of ordinary skill in the art.
Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that Nomura would have rendered prima facie obvious, to one
of ordinary skill in the art, a memory that stores a plurality of predetermined
algorithms, each associated with a different one of a plurality of product
classifications, and a controller that is programmed to calculate a
concentration of a product based in part upon one of the plurality of
predetermined algorithms.
DECISION/ORDER
The rejection of claims 1-7, 18-22 and 24 under 35 U.S.C. § 103 over
Nomura is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

tc
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