10515306 (B.P.A.I. May. 2, 2012)

Ex Parte Steuerwald et al

Board of Patent Appeals and InterferencesMay 2, 2012

10515306 (B.P.A.I. May. 2, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RALF STEUERWALD, CAMIEL HEFFELS, and DIRK STEINMUELLER ____________ Appeal 2010-011477 Application 10/515,306 Technology Center 1700 ____________ Before CHUNG K. PAK, LINDA M. GAUDETTE, and MARK NAGUMO, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. Appeal 2010-011477 Application 10/515,306 2 DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1 finally rejecting claims 13-21, 23, and 25-27, the only claims pending in the Application.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 25 is representative of the invention and is reproduced below from the Claims Appendix to the Appeal Brief: 25. An on-line analyzer for analyzing a test sample comprising: a measuring device comprising at least one measuring cell and at least one optoelectronic component; a control/evaluation unit, which evaluates signals delivered by said measuring device at least one light wave conductor, via which said measuring cell and said optoelectronic component are connected; a pump unit via which a test sample and/or a reagent are/is supplied into said measuring cell; a housing, which is separated by a dividing wall into an electronics part and a wet part, which are separated and completely decoupled from one another, wherein said control/evaluation unit and said at least one optoelectronic component are located in said electronics components part and wherein said measuring cell and said pump unit are arranged in said wet part. Appellants request review of the following grounds of rejection (Br. 5): 1. Claims 13-15, 17, 18, 20, 23, & 25-27 under 35 U.S.C. §103(a) as unpatentable over Joyce (US 5,537,336, issued Jul. 16, 1996) in view of Garrett (US 6,542,231 B1, issued Apr. 1, 2003) (Ans.3 4-8); 1 Final Office Action mailed Oct. 9, 2009. 2 Appeal Brief filed Apr. 12, 2010 (“Br.”). 3 Examiner’s Answer mailed May 13, 2010. Appeal 2010-011477 Application 10/515,306 3 2. Claims 16 and 21 under 35 U.S.C. §103(a) as unpatentable over Joyce in view of Garret and in further view of Tell (US 5,173,749, issued Dec. 22, 1992) (Ans. 8-9); and 3. Claim 19 under 35 U.S.C. §103(a) as unpatentable over Joyce in view of Garret and in further view of Boisde (US 4,820,045, issued Apr. 11, 1989) (Ans. 9-10). Appellants’ arguments are based on limitations common to the independent claims, claims 13 and 25. (See Br. 5-6.) We decide the following issue in favor of Appellants and, therefore, identify it as dispositive of the appeal: Did the Examiner identify a teaching or suggestion of (1) an electronics part containing a control/evaluation unit and an optoelectronic component, (2) a wet part containing a measuring cell and pump unit, and (3) a dividing wall which separates and completely decouples the wet part from the electronics part as required by the claims? The Examiner has identified components in Joyce which correspond to a control/evaluation unit, an optoelectronic component, a measuring cell and a pump unit. (See Ans. 4-5 and 11-12.) The Examiner has also identified various structures in Joyce’s test assembly as corresponding to Appellants’ claimed dividing wall. (Id.) However, Appellants argue (Br. 5-6), and we agree, that the Examiner has not clearly identified within a housing (test assembly 10, or, more accurately, housing 14) an electronics part containing an optoelectronic component (e.g., detector 22 or photocell 30) and a control /evaluation unit (controller 50) that is separated by a wall [or walls] from a wet part containing a measuring cell (e.g., flow cell 21 or electrode assembly 26 and 28) and a pump (pump 40). (See Ans. 4-5 and 11-12.) The Examiner’s reliance on Garrett’s teachings of fiber-optic Appeal 2010-011477 Application 10/515,306 4 wave conductors to connect the optical signal emitted in the measuring cell to the detector does not cure the deficiencies of the device described by Joyce. Appellants have persuasively argued the Examiner’s findings are insufficient to support a prima facie case of obviousness. Accordingly, we reverse the rejections of claims 13-21, 23, and 25-27. REVERSED tc 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. 10/515,306 08/02/2005 Ralf Steuerwald HEFF3001FJD 2152 23364 7590 05/03/2012 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER RAMDHANIE, BOBBY ART UNIT PAPER NUMBER 1774 MAIL DATE DELIVERY MODE 05/03/2012 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)