Ex Parte Obermueller

Patent Trial and Appeal Board

Oct 18, 2018

14527796 (P.T.A.B. Oct. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/527,796 10/30/2014
81722 7590 10/22/2018
Viering, Jentschura & Partner mbB - Inf
c/o
444 Brickell A venue
Suite 51270
Miami, FL 33131
FIRST NAMED INVENTOR
Christian Obermueller
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.
P57500US 4115
EXAMINER
AMARA, MOHAMED K
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
10/22/2018 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):
patint@vjp.de
vjp-us@vjp.de
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN OBERMUELLER
Appeal 2018-001339
Application 14/527,796
Technology Center 2800
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge CASHION.
Opinion Concurring filed by Administrative Patent Judge HOUSEL.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 1-26. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Infineon Technologies AG is the Applicant/ Appellant, which is also
identified as the real party in interest. App. Br. 3.
Appeal 2018-001339
Application 14/527,796
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A spectrometer, comprising:
a first mirror unit which is semitransparent for
electromagnetic radiation of at least one wavelength or
wavelength range; and
a second mirror unit comprising a first area and a second
area facing the first mirror unit,
wherein at least a part of the first area and the second
area are spaced apart from the first mirror unit, wherein the first
area is at least partially reflective for the electromagnetic
radiation of at least one wavelength or wavelength range,
wherein the second area comprises at least a part of a
photodetector, and wherein the photodetector is configured to
detect the electromagnetic radiation of at least one wavelength
or wavelength range.
Appellant requests review of the Examiner's rejection of claims 1-26
rejected under AIA 35 U.S.C. 103 as unpatentable over Verghese (US
2005/0134962 Al, published June 23, 2005) and Waters (US 6,763,718,
issued July 20, 2004). 2 App. Br. 8; Final Act. 7.
OPINION
The Prior Art Rejection
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner's prior art rejection of claims 1-26
2 The Final Action includes a rejection under 35 U.S.C. § 112(b). Final Act.
6. The Examiner indicated that this rejection was overcome by entry of the
amendment filed January 30, 2017. Advisory Act. 2. Accordingly, this
rejection is not before us for review on appeal.
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Appeal 2018-001339
Application 14/527,796
under 35 U.S.C. § 103(a) for the reasons presented by Appellant and add the
following.
Independent claims 1, 20, 21, and 25 relate to a spectrometer having
first and second mirror units where the second mirror unit comprises a first
area and a second area with the second area further comprising at least a part
of a photodetector. We limit our discussion to independent claim 1 with the
understanding that the discussion applies equally to all independent claims
as well as dependent claims 2-19, 22-24, and 26.
The Examiner finds Verghese teaches a spectrometer comprising first
and second mirror units where the second mirror unit comprises first and
second areas. Final Act. 8; Verghese Figures 1, 3---6, ,r 30. The Examiner
also finds Verghese' s apparatus necessarily uses a photo detector to detect
the light passing through a Fabry-Perot (FP) device configured to detect the
electromagnetic radiation of at least one wavelength or wavelength range.
Final Act. 8-9; Verghese Figures 1, 3, ,r,r 30, 35. The Examiner finds
Verghese does not teach expressly wherein the second area of the second
mirror unit comprises at least a part of a photodetector. The Examiner finds
Waters teaches a tunable optical FP interferometer, similar to Verghese's,
comprising a photosensor 56 integrated inside the central part of mirror 22
(designated by the Examiner as the second area). Final Act. 9; Waters
Figures 1-5 and 8-19. The Examiner determines it would have been
obvious to one of ordinary skill in the art to modify the second area of
Verghese' s second mirror so that the second area comprises at least a part of
a photodetector because it would enhance the integration of the optical
sensor to form a compact measuring apparatus and reduce the effects of
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Appeal 2018-001339
Application 14/527,796
mechanical vibrations on the detected signals. Final Act. 10; see Waters col.
2, 11. 33--46.
Appellant argues the teachings of Verghese and Waters cannot be
properly combined because the Fabry-Perot devices taught in Verghese and
Waters are mutually exclusive of each other with respect to their function,
structure, and operation. App. Br. 12. According to Appellant, Verghese
relates specifically to Fabry-Perot tunable filters comprising two membranes
(mirrors) while Waters relates to Fabry-Perot accelerometers comprising a
single membrane (mirror) that perform completely different functions. Id. at
12-14.
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)).
We agree with Appellant that the Examiner has not met the burden in
this case. The Examiner's proposed modification of Verghese is premised
on integrating a photodetector with an area of Verghese' s second mirror to
make a compact device. However, the Examiner has not adequately
explained how one skilled in the art would undertake such a modification to
arrive at the claimed invention. Given that the Examiner acknowledges that
the FP devices of Verghese and Waters operate differently (Final Act. 9;
Ans. 7) and have different structures (Ans. 8-9), the Examiner has not
adequately explained why one skilled in the art would combine (relate) the
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Application 14/527,796
different structures and their operation to arrive at the subject matter of
independent claim 1 (id.). The Examiner has not provided an adequate
technical explanation of how one skilled in the art would have adapted
Waters' photodetector used in an PP single membrane accelerometer into
Verghese's PP two-membrane tunable filter and reasonably expect for the
modified PP device to be suitable for Verghese' s purposes.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See Oetiker, 977 P.2d at 1445; KSR, 550 U.S. at 418.
Accordingly, we reverse the Examiner's prior art rejection under
35 U.S.C. § 103(a) of claims 1-26 for the reasons presented by Appellant
and given above.
DECISION
The Examiner's prior art rejection of claims 1-26 under 35 U.S.C.
§ 103 (a) is reversed.
REVERSED
5
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN OBERMUELLER
Appeal 2018-001339
Application 14/527,796
Technology Center 2800
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, Administrative Patent Judge, concurring
I concur in the reversal of the appealed rejection of claims 1-26 under
35 U.S.C. § 103 as unpatentable over Verghese in view of Waters for the
reasons given above.
However, I write separately to express my view that claim 1 should be
rejected under 35 U.S.C. § 102(a)(l) as anticipated by Waters. Waters (Fig.
9) teaches a micro-electro-mechanical system ("MEMS") using a Fabry-
Perot cavity comprising a first mirror unit (upper mirror in Fig. 9) which is
semitransparent for electromagnetic radiation of at least one wavelength or
wavelength range, and a second mirror unit comprising a first area (lower
mirror in Fig. 9) and a second area (P+ region in Fig. 9) facing and spaced
apart from the first mirror unit, wherein the first area is at least partially
reflective for the electromagnetic radiation of at least one wavelength or
wavelength range and the second area comprises at least part of a
Appeal 2018-001339
Application 14/527,796
photodetector configured to detect the electromagnetic radiation of at least
one wavelength or wavelength range. This structure is identical to the
structure recited in the body of claim 1.
However, the preamble of claim 1 recites that the device is a
spectrometer, whereas Waters describes the device as an accelerometer. In
general, a preamble is simply a statement of intended use, not a separate
claim limitation. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) ("[A] preamble simply
stating the intended use or purpose of the invention will usually not limit the
scope of the claim, unless the preamble provides antecedents for ensuing
claim terms and limits the claim accordingly."). Here, because Waters's
device includes all the structural recitations set forth in the body of claim 1
and measures the electromagnetic radiation received by the second area of
the second mirror unit, Waters's device is necessarily a "spectrometer."
Outdry Technologies Corp. v. Geox SP.A., 859 F.3d 1364, 1368 (Fed. Cir.
2017) ( cert. denied). Also, although neither Appellant nor the Examiner
define "spectrometer," I find that a "spectrometer" is "an instrument used for
measuring wavelengths of light spectra. " 3 Waters's device measures
wavelengths of light spectra, as Appellant acknowledges (App. Br. 12,
"Waters requires detection/measurement of a wavelength of light"). Thus,
Waters's device is a spectrometer, even though Waters uses the device as an
accelerometer.
Therefore, on the present record, it is my view that claim 1 is
anticipated by Waters, Figure 9, and is properly rejectable under 35 U.S.C. §
3 https://www.merriam-webster.com/dictionary/spectrometer, last visited on
October 17, 2018.
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Appeal 2018-001339
Application 14/527,796
I02(a)(l). I leave for the Examiner's determination whether Waters further
anticipates one or more of the remaining pending claims 2-27.
3