Ex Parte Seppa et al

Patent Trial and Appeal Board

Feb 27, 2019

13995527 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/995,527
95002 7590
Seppa Laine Oy
PO Box 339
Helsinki, FI-00181
FINLAND
FILING DATE FIRST NAMED INVENTOR
08/15/2013 Heikki Seppa
03/01/2019
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.
VTT288 US 8206
EXAMINER
N'DURE, AMIE MERCEDES
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
posti@seppolaine.fi
matthew.swanson@seppolaine.fi
toimi.teelahti@seppolaine.fi
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIKKI SEPPA, TEUVO SILLANP AA, and
VILLE VIIKARI
Appeal2018-004810 1
Application 13/995,527
Technology Center 3600
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Heikki Seppa et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-14. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants' Appeal Brief, filed Sept. 1, 2017, Teknologian
tutkimuskeskus VTT Oy is the real party in interest. Appeal Br. 2.
Appeal 2018-004810
Application 13/995,527
CLAIMED SUBJECT MATTER
Appellants' invention relates to a microelectromechanical sensor.
Spec. 1:3. Claims 1, 2, and 8 are independent. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A wireless sensor which comprises;
an electrostatically actuated ultrasound transmitter loaded
with a fluid-filled cavity, and
an antenna or a coupling element matched to the
ultrasound transmitter.
Appeal Br. 17 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cook
Seppa
Viikari
US 2009/0167503 Al
WO 2009/071746 Al
RFID MEMS Sensor Concept
Based on Intermodulation
Distortion (IEEE Sensors
Journal Vol. 9, No. 12)
REJECTIONS
July 2, 2009
June 11, 2009
Dec. 2009
(I) Claims 1-13 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Seppa and Viikari.
(II) Claim 14 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Seppa, Viikari, and Cook.
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OPINION
Re} ection (I)
Claims 1, 2, 5---8, 11, and 13
Appellants make arguments for the patentability of claims 1, 2, 5-8,
11, and 13 as a group. Appeal Br. 11-13. We select claim 1 as the
representative claim, and claims 2, 5-8, 11, and 13 stand or fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Seppa discloses many of the elements recited
in claim 1 including a sensor having a transmitter and an antenna matched to
the transmitter, but does not disclose a wireless sensor. Final Act. 3--4.
Nonetheless, the Examiner finds that Viikari discloses a wireless sensor
having a transmitter and an antenna matched to the transmitter. Final Act. 4.
The Examiner determines that it would have been obvious to one of ordinary
skill in the art at the time of the invention to use a wireless sensor as the
sensor in Seppa "for the purpose of producing an intermodulation frequency
that is emitted to the reader, when illuminated at two harmonic frequencies."
Id. The Examiner also determines that it would have been obvious to one of
ordinary skill in the art at the time of the invention to use a wireless sensor
in Seppa because a "combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Final Act. 5 (citing KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398
(2007).
Appellants argue that the Examiner has not supported the rejection
with sufficient reasoning as to why a person of ordinary skill in the art
would have made the combination. Appeal Br. 12. According to
Appellants, the Examiner's motivation for the combination "appears to be a
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restatement of the final limitations of [present] claims 2 and 8. This
restatement of a claim limitation could not be considered as an articulated
reasoning with a rational underpinning," and "is most certainly an improper
use of hindsight." Id.
The Examiner responds that "the motivation for combining the
references was extracted directly from the prior art of reference V[i]ikari."
Ans. 5 (citing Viikari, p. 1918, col. 2, 11. 15-17).
In reply, Appellants argue that the provided motivation is improper
because "Appellant interprets the stated motivation of the outstanding
rejections to mean that the person of ordinary skill in the art would modify
the primary reference simply to arrive at the claimed invention, i.e. with
hindsight." Reply Br. 2.
Appellants' arguments on this point are not persuasive because the
Examiner's reasoning comes directly from Viikari's disclosure. Viikari
discloses a "wireless sensor, when illuminated at two harmonic frequencies,
produces an intermodulation frequency, which is emitted to the reader."
Viikari, p.1918, col. 2, 11. 15-17; see also Ans. 5. As Viikari explicitly
discloses that this interrogation method of the sensor (illumination at two
harmonic frequencies) "enables a smaller frequency offset between the
transmitted and received signals which eases to fulfill the frequency
regulations and facilitates circuit design" (Viikari, p. 1918, col. 2, 11. 17-24),
the Examiner's reasoning for the proposed modification is supported by
rational underpinnings found in the prior art. Thus, we do not agree that the
Examiner's rejection is based on impermissible hindsight.
Appellants also argue that because "the Examiner has not established
the level of ordinary skill in the art for the record, it is impossible to say
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what would be predictable to such a person." Appeal Br. 12. Appellants
contend that the Examiner has not adequately established that combining the
inventors' own work "would yield only predictable results," because the
rejection "appears to assume that the inventors themselves are merely of
ordinary skill in the art." Id.
The Examiner responds that because Viikari discloses a wireless
sensor with proven performance based on experimental results, Viikari's
"' experimental results validate the feasibility of the concept' and thus
yielding predictable results." Ans. 7.
Appellants reply that because "the present citations are of the
inventors' own works ... it would not have been obvious to a person of
ordinary skill to combine the inventors' work as done within the outstanding
rejections, as the inventors are of extraordinary skill within the art." Reply
Br. 5---6.
Though the Examiner did not make an explicit finding regarding the
level of skill in the art, Appellants do not make any specific proposal
regarding what the level of ordinary skill in the art is, or that it is other than
what the applied art connotes. Although we appreciate that the applied art is
attributed to the inventors, we consider the applied prior art to be reflective
of the level of skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995) ("The person of ordinary skill in the art is a hypothetical
person who is presumed to know the relevant prior art.") ( citing Custom
Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
1986)). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001) ("[T]he absence of specific findings on the level of skill in the art does
not give rise to reversible error 'where the prior art itself reflects an
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appropriate level and a need for testimony is not shown."') (citation
omitted). Given that there is no dispute that the inventors' publications were
publicly available, the prior art reflects the level of ordinary skill in the
MEMS manufacturing art. Further, Appellants do not assert that the
combination proposed by the Examiner would have been beyond the
abilities of one of ordinary skill in the art or would have yielded
unpredictable results. Thus, we are not apprised of Examiner error.
Accordingly, we affirm the Examiner's rejection of claim 1 as
unpatentable over Seppa and Viikari. Claims 2, 5-8, 11, and 13 fall with
claim 1.
Claims 3 and 9
Appellants assert, "Seppa does not appear to disclose a loop antenna.
In fact, Seppa, being directed to a wired sensor, does not appear to disclose
an antenna at all. Nor does Viikari appear to disclose the limitation of a loop
antenna." Appeal Br. 13.
In response, the Examiner takes "official notice that it is patently
known that wireless sensors comprise a loop antenna as suggested in Fig. 1
ofViikari and furthermore in the abstract of Cook." Ans. 8. The Examiner
asserts that the motivation for combining the references comes from Viikari.
Ans. 9.
Appellants reply that because Viikari does not disclose a loop
antenna, the Examiner's reasoned motivation lacks articulated reasoning
with some rational underpinning. Reply Br. 4.
Appellants have the better position here. Although Cook discloses
that loop antennas are known, Cook is not applied against claims 3 and 9.
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Moreover, the Examiner has not sufficiently established that Cook's loop
antenna is used in a MEMS sensor or could be used with a matched antenna.
As to the Examiner's position that Viikari provides a motivation to combine
the references, although Viikari's disclosure of a "wireless sensor, when
illuminated at two harmonic frequencies, produces an intermodulation
frequency, which is emitted to the reader," is sufficient reasoning for using a
wireless sensor, the Examiner has not adequately established that Viikari
discloses a loop antenna, and thus, the Examiner's articulated reasoning
lacks rational underpinning for using a specific antenna in the sensor,
namely, a looped antenna.
Accordingly, we reverse the Examiner's rejection of claims 3 and 9 as
unpatentable over Seppa and Viikari.
Claims 4 and 10
Appellants argue that both Seppa and Viikari fail to disclose a dipole
antenna. Appeal Br. 14.
In response, the Examiner "take official notice that it is patently
known that wireless sensors comprise a dipole antenna suggested in the
abstract of Cook." Ans. 10. The Examiner asserts that the motivation for
combining the references comes from Viikari. Ans. 10-11.
Appellants reply that Cook's disclosure of "any commercially
available antenna is [not] sufficient to form a prima facie conclusion that
the claimed invention is obvious in view of the prior art." Reply Br. 4.
We agree with Appellants on this point. Notwithstanding that Cook is
not applied against claims 4 and 10, Cook's general disclosure of antennas
does not establish a motivation for choosing a specific antenna, namely, a
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dipole antenna. Moreover, the Examiner has not sufficiently established that
Cook's disclosure of "any" antenna pertains to a loop antenna used in a
MEMS sensor or used as a matched antenna. As to the Examiner's position
that Viikari provides a motivation, although Viikari's disclosure of a
"wireless sensor, when illuminated at two harmonic frequencies, produces
an intermodulation frequency, which is emitted to the reader," is sufficient
reasoning for using a wireless sensor, the Examiner has not adequately
established that Viikari discloses a dipole antenna, and thus, the Examiner's
articulated reasoning lacks rational underpinning for choosing a dipole
antenna for the wireless sensor.
Accordingly, we reverse the Examiner's rejection of claims 4 and 10
as unpatentable over Seppa and Viikari.
Claim 12
Appellants argue that the portion of Seppa on which the Examiner
relies discloses that Seppa's sensor, namely, "'the UtraSensor can be used
directly to replace piezo sensors.' This is clearly different from 'forming the
ultrasound transmitter of the sensor by a piezo element,' as in the claimed
invention." Appeal Br. 15. Appellants contend that Seppa teaches away
from a piezo sensor as Seppa discloses using micromechanical transmitter 2
because "[i]t is not possible to create the situation in question using a piezo-
active transmitter." Id.
The Examiner responds that Seppa disclose "multiple embodiments"
that can be used in various applications including the use of piezo sensors.
Ans. 13.
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In reply, Appellants contend that although Seppa discloses a "piezo-
active structure," the Examiner ignores Appellants' argument that "a person
of ordinary skill in the art would ... be dissuaded from using the piezo
element in favor of the UtraSensor," of Seppa. Reply Br. 5.
Appellants' arguments that Seppa teaches away from a piezo sensor
are unavailing because Appellants do not point to any disclosure of Seppa
that criticizes, discredits, or otherwise discourages piezo sensors. 2 See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). "[M]ere disclosure of
alternative designs does not teach away." Fulton, 391 F.3d at 1201.
Although we appreciate that Seppa discloses an embodiment that cannot be
created using a piezo-active transmitter, namely, in a limited situation when
the "internal losses of the ultrasound transmitter 2 are smaller than the losses
created by the cavity 4" (Seppa, 6:7-9), claim 12 is not so limited.
As Seppa discloses a "piezo-ultrasound transmitter" (Seppa, 2: 11, 21) and
Appellants do not provide persuasive arguments that Seppa's "piezo-active
transmitter" is not an ultrasound transmitter, Appellants fail to persuasively
argue that the Examiner erred in finding that Seppa discloses that "the
ultrasound transmitter of the sensor is formed by a piezo element," as recited
in claim 12.
Accordingly, we affirm the Examiner's rejection of claim 12 as
unpatentable over Seppa and Viikari.
Re} ection (II)
2 We note that Appellants' Specification includes similar disclosure ("the
UltraSensor as such can be used to replace the piezo sensors."). Spec. 24:6-
7.
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Appellants do not argue for the separate patentability of claim 14
apart from arguments presented with respect to claim 1, which we have
previously considered. See Appeal Br. 11-16. Consequently, we affirm the
Examiner's rejection of claim 14 over Seppa, Viikari, and Cook.
DECISION
The Examiner's decision to reject claims 1-13 under 35 U.S.C.
§ 103(a) as unpatentable over Seppa and Viikari, is affirmed as to claims 1,
2, 5-8, and 11-13, and is reversed as to claims 3, 4, 9, and 10.
The Examiner's decision to reject claim 14 under 35 U.S.C. § 103(a)
as unpatentable over Seppa, Viikari, and Cook is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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