Ex parte REINTJES et al.

Board of Patent Appeals and Interferences

Feb 23, 1998

08143370 (B.P.A.I. Feb. 23, 1998)

Application for patent filed October 29, 1993. 1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN F. REINTJES, MICHAEL D. DUNCAN,
RITA MAHON, LAWRENCE L. TANKERSLEY,
PAUL L. HOWARD, MARTIN CHAMBERLAIN
and THOMAS McKENNA
_____________
Appeal No. 97-0673
Application 08/143,3701
______________
ON BRIEF
_______________
Before FLEMING, LEE and CARMICHAEL, Administrative Patent
Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 2, 3, 5-11, 14-38 and 40-41. No
claim has been allowed.
References relied on by the Examiner
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Application 08/143,370
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Stockham et al. 3,641,320 Feb. 8, 1972
(Stockham)
Kolomiets SU 1643995 Apr. 23, 1991
(Russia)
Longobardi et al. 0507746 Oct. 7, 1992
(Longobardi) (Europe)
Kamiwano 5-45274 Feb. 23, 1993
(Japan)
The Rejections on Appeal
Claims 2, 3, 5-10, 17-25 and 33-41 stand finally rejected
under 35 U.S.C. § 103 as being unpatentable over Kamiwano,
Longobardi and Stockham.
Claims 11, 14-16 and 26-32 stand finally rejected under
35 U.S.C. § 103 as being unpatentable over Kamiwano,
Longobardi, Stockham and Kolomiets.
The rejection of claim 39 has not been appealed (Br. at
1).
The appellants have grouped the following dependent
claims together with their respective parent claims for
purposes of this appeal (Br. at 1): claims 5-10, 14-20, 22-23,
25-26, 28-30, 32, 34-36, 38 and 41. These claims depend
ultimately from independent claims 2, 3, 11 and 40.
Appeal No. 97-0673
Application 08/143,370
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The Invention
The invention is directed to a fluid monitoring apparatus
and method for detecting the presence of and determining the
characteristics of particulate matter suspended in fluid. The
invention makes identification of the size and shape of a
particle in fluid by forming an optical image of the fluid and
then analyzing the image.
Claims 2, 3, 11 and 40 are the only independent claims
the rejections of which are on appeal. Representative claims
2 and 40 are reproduced below:
2. An apparatus for the real time monitoring of suspended
particulates in a fluid, said apparatus comprising:
a laser light source;
means for collimating an optical beam from said light
source;
a fluid chamber for passing a fluid to be examined, said
fluid chamber being suitable for illumination by said
collimated beam;
means for forming an optical image of the fluid within
said fluid chamber; and
means for classifying shapes of particulates in said
optical image;
wherein said means for classifying shapes comprises:
Appeal No. 97-0673
Application 08/143,370
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a two dimensional transducer array means for detecting
said optical image and
means for comparing, responsive to said means for
detecting, shapes of the particulates in the fluid with at
least one reference shape.
40. A particulate monitoring system, comprising:

a laser adapted to illuminate a fluid;
optical means for forming an image of said fluid
responsive to said laser;
a two-dimensional opto-electric array disposed effective
to detect said image; and
means, responsive to said array, for identifying in said
image particualtes [sic, particulates] from within said fluid.
Opinion
Our opinion is based solely on the arguments raised by
the appellants in their briefs. We do not address and offer
no opinion on arguments which could have been raised but were
not set forth in the briefs.
The appellants point out (Br. at 7) that each of the
independent claims 2, 3, 11 and 40 recites a two dimensional
imager and argue that because Kamiwano does not disclose the
use of a two dimensional imager, contrary to the examiner’s
position, the examiner has not established prima facie
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Application 08/143,370
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obviousness. We agree with the examiner that Kamiwano does
disclose use of a two dimensional imager as is required by the
claims.
The appellants focus on those embodiments of Kamiwano
which use pairs or sets of linear phototransistor arrays and
fail to appreciate another portion of Kamiwano’s disclosure
which discusses and points out the benefits of using a
planarly arranged matrix of phototransistors as the sensor.
In Kamiwano, before the disclosure starts to discuss an
improved invention making use of sets of linear arrays, there
is a brief discussion of what had previously been thought of
by the inventors there in the general subject matter area of
optical real-time measuring of flowing particles.
Specifically, from the bottom of page 5 to the top of
page 6 in Kamiwano, it is stated:
For a particle measuring method using such a light
transmission method [general optical arrangement as
shown in Figure 1], the inventor has already
proposed a method for calculating the speed of the
particle and particle size based on the principle
shown in Figure 2 in which a number of
phototransistors are arranged in planar form at the
sensor (5). The method itself can carry out
particle measurement in real time and it can be used
with the measuring device of the invention.
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Application 08/143,370
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The foregoing discussion leads up to the subsequent text in
the disclosure which describes the later embodiments using at
least two sets of phototransistors. Note, for instance, the
immediate following paragraph on page 6:
However, in the subsequent investigation, the
inventor used a highly accurate and excellent
measuring method and a device which could realize
the method. That is, in the device of the present
invention, characterized by such properties, at
least two sets of photosensors (A) and (B), such as
the phototransistors shown in Figure 3(a), are
arranged in series and are perpendicular to the
direction of the flight of the particles. (Emphasis
added.)
Thus, the appellants are focusing only on what is
referred to as the subsequent investigation and have ignored
or overlooked the discussion in Kamiwano concerning that which
preceded the subsequent investigation. The examiner correctly
pointed out that Kamiwano’s Figure 2 illustrates a planar
matrix arrangement of phototransistors in a single sensor 5.
It represents what existed prior to Kamiwano’s subsequent
development of the use of a set or a pair of sensors.
Furthermore, Kamiwano on page 6 indicates that the
arrangement of Figure 2 can be used with the measuring device
of the invention. Thus, it would have been obvious to one
with ordinary skill in the art that each of the sensors (A)
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and (B) in the embodiment shown in Figure 3(A) of Kamiwano can
take the form of the planar phototransistor matrix shown in
Figure 2. Note also the grid-like pattern shown at the top of
each sensor (A) and (B) in Figure 3(a), which also reasonably
suggests that there are multiple rows of the linearly arranged
array. Additionally, see also the image illustrated in
Kamiwano’s Figure 3(b), it shows multiple pixels for each row
occupied by the particle image detected by each sensor, which
would have suggested to one with ordinary skill in the art
plural rows of phototransistors together forming a planar two
dimensional image sensor.
The appellants offer no response to explain away or
otherwise rebut the examiner’s reasonable position with regard
to Kamiwano’s Figure 2 and discussion in connection therewith.
The appellants are also incorrect that in Kamiwano an image is
reconstructed rather than detected. The "reconstitute"
language at the top of page 13 of Kamiwano is merely referring
to reproducing an image from stored image data to provide it
to a display device. It does not mean that in Kamiwano the
particle image is not initially detected by a two dimensional
imager. For all of the foregoing reasons, the argument that
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Application 08/143,370
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Kamiwano does not disclose or suggest a two dimensional imager
is rejected.
Each of independent claims 2, 3, 11 and 40 requires that
the light illuminating the chamber be from a coherent light
source. Kamiwano does not disclose the use of an extended
light source which is non-coherent. However, we agree that it
would have been obvious to one with ordinary skill in the art
that a coherent light source, as well as an extended light
source, may be used, especially in light of Longobardi which
discloses an optical imaging system for particle measurement
using a coherent light source. The appellants point to
nothing in Kamiwano which would have indicated to one with
ordinary skill in the art that the invention of Kamiwano
requires or would work only if an extended or non-coherent
light source is used.
We agree with the examiner that one with ordinary skill
in the art possesses sufficient basic skills and common sense
to recognize that the light for use in Kamiwano can come from
a variety of sources, including a coherent light source. One
with ordinary skill in the art is presumed to possess a
Appeal No. 97-0673
Application 08/143,370
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certain level of basic skills and common sense. See, e.g., In
re Sovish,
769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985); In re
Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Where a light is needed, generally it would be recognized that
any light source can be used, especially one which by its own
nature would have a better signal to noise ratio for optical
imaging and is already used in a similar optical imaging
device as in Longobardi. The examiner is correct that both
Kamiwano and Longobardi are from the same field of optical
measurement (answer p. 8, lines 7-11).
There is nothing unique about using an extended or non-
coherent light source in Kamiwano. The teachings of a
reference is not limited to its disclosed or preferred
embodiments, In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67,
70 (CCPA 1979); In re Bode, 550 F.2d 656, 661, 193 USPQ 12, 17
(CCPA 1977), and must be considered for everything it teaches
by way of technology. EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907, 225 USPQ 20, 25 (Fed. Cir.), cert. denied,
474 U.S. 843 (1985).
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For the foregoing reasons, the rejection of independent
claim 40 and dependent claim 41 will be sustained.
Independent claims 2 and 3 further recite the comparing
of the detected shape of the particulates with stored
reference shapes. Kamiwano does disclose the detection of
particle shape (page 8, lines 9-17). However, the examiner
correctly recognizes that Kamiwano does not disclose comparing
or matching the detected shape with a stored reference shape
(answer at page 3, lines 19-20). Nonetheless, the examiner
relies (answer at 4, lines 2-3) on Longobardi and states that
Longobardi discloses comparing the detected image data with
stored reference data to determine particle size. The
examiner has not provided any specific citation to the
portions of Longobardi. The closest disclosure we can find is
this (column 3, lines 49-55):
. . . , and the corresponding image is acquired by
the system 7 and transmitted to the computer 9 for
the calculation of the particle sizes. This
calculation is performed with image analysis
software which is known per se (for example, a
software package known commercially under the name
GIPS, produced by Gate Data of Denmark, may be
used).
That disclosure does not reveal that a comparison is performed
between detected data and stored data, much less between the
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Application 08/143,370
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detected size and a stored reference size of particles. In
any event, the subject at hand concerns not a comparison of
sizes but a comparison of the detected image shape with stored
reference shapes. The appellants are correct that Longobardi
does not even mention image shape detection. It cannot be
said that Longobardi reasonably would have suggested to one
with ordinary skill in the art comparing the detected image
shape of Kamiwano with a stored reference shape.
It may be true that known means exists which can be
employed to compare a detected image shape with a stored
reference shape, as is suggested by the examiner (answer at
page 3, lines 21-23). But that does not alone provide the
motivation to make the comparison. The mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification. In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992). Here, the examiner relied on Longobardi for that
motivation, but as discussed above, Longobardi is insufficient
in that regard.
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Application 08/143,370
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For the foregoing reasons, we do not sustain the
rejection of claims 2 and 3, and the claims which depend
directly or indirectly from claims 2 and 3, i.e., claims 5-10,
20-25, 17-19 and 33-38. Stockham was relied on by the examiner
to show collimating the optical beam and Kolomiets was relied
on by the examiner to show a mirror positioned on the side of
the fluid chamber opposite the light source. Neither Stockham
nor Kolomiets makes up for the above-noted deficiencies of
Kamiwano and Longobardi.
Claim 11 requires a "means for optical phase conjugation
of said collimated beam on the side of said fluid chamber
opposite to that which said light enters said chamber." The
examiner has interpreted that as requiring some component
which "precisely changes the direction of propagation of the
incident beam in such a way that the return beam retraces the
same path as the incident beam" (answer at page 9, lines 4-
12), an interpretation not disputed by the appellants. The
examiner then regards lens 5 and mirror 6 in Kolomiets as an
optical phase conjugator because, according to the examiner,
they appear to reflect light such that it retraces the exact
path of the incident beam (answer at page 9, lines 10-12).
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Application 08/143,370
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The appellants argue that the position of the examiner is mere
"wishful reading" and that there is nothing in Kolomiets to
support the examiner’s position.
The examiner’s view with respect to Kolomiets’ lens 5 and
mirror 6 is misplaced. They evidently do not provide a return
beam which precisely retraces the path of the incident beam.
In Kolomiets, it is stated on page 2, lines 18-22, that the
reflected beam is shifted in the direction of the particle’s
movement by a certain magnitude. On page 4, lines 1-2,
Kolomiets further states that the incident beam a and the
return beam b are spread by a magnitude equal to 2F. We agree
with the appellants that the examiner has not a sufficient
basis to shift the burden of proof to the appellants with
regard to whether the lens 5 and mirror 6 together constitute
an optical phase conjugator.
Accordingly, the rejection of claim 11, and claims which
depend either directly or indirectly from claim 11, i.e.,
claims 14-16 and 26-32, will not be sustained.
Conclusion
Appeal No. 97-0673
Application 08/143,370
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The rejection of claims 2, 3, 5-10, 17-25 and 33-38 under
35 U.S.C. § 103 as being unpatentable over Kamiwano,
Longobardi and Stockham is reversed.
The rejection of claims 11, 14-16 and 26-32 under 35
U.S.C. § 103 as being unpatentable over Kamiwano, Longobardi,
Stockham, and Kolomiets is reversed.
The rejection of claim 40 and 41 under 35 U.S.C. § 103 as
being unpatentable over Kamiwano, Longobardi and Stockham
is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED-IN-PART
MICHAEL R. FLEMING )
Appeal No. 97-0673
Application 08/143,370
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Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMESON LEE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 97-0673
Application 08/143,370
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Associate Counsel (Patents), Code 3008.2
Naval Research Laboratory
Washington, DC 20375-5000