Ex Parte Wang

Board of Patent Appeals and Interferences

Jul 26, 2012

10967075 (B.P.A.I. Jul. 26, 2012)

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.
10/967,075 10/15/2004 Xiaomei Wang 0005.1125US1 5811
25263 7590 07/26/2012
HOUSTON ELISEEVA LLP
420 BEDFORD ST
STE 155
LEXINGTON, MA 02420
EXAMINER
HANSEN, JONATHAN M
ART UNIT PAPER NUMBER
2886
MAIL DATE DELIVERY MODE
07/26/2012 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte XIAOMEI WANG
____________________

Appeal 2009-014896
Application 10/967,075
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, ERIC S. FRAHM and
JASON V. MORGAN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014896
Application 10/967,075

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STATEMENT OF CASE
Introduction
Appellant appeals 1 under 35 U.S.C. § 134(a) from a rejection of
claims 1-20 and 22-51. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claims on Appeal
Claims 1 and 13 on appeal read as follows (emphasis added):
1. A spectroscopy engine, comprising:
a semiconductor source for illuminating a sample;
a tunable filter that optically filters a signal from the sample;
a wavelength dispersive element for spectrally dispersing the
sample signal that has been filtered by the tunable filter; and
a detector for detecting the dispersed signal from the
wavelength dispersive element;
wherein the tunable filter is a multi-order tunable filter in which
two or more passbands of the tunable filter are simultaneously
detected on different regions of the detector.

13. A spectroscopy engine as claimed in claim 1, wherein the
detector comprises a single detector element.

1 The Appeal Brief states “The rejection of claim 48 is not being appealed.”
This contradicts the Notice of Appeal which stated “Applicant hereby
appeals to the Board of Patent Appeals and Interferences from the last
decision of the examiner.” We find claim 48 to be before this Board and not
argued. Therefore, we affirm pro forma the Examiner’s rejection thereof.

Appeal 2009-014896
Application 10/967,075

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Rejections on Appeal
The Examiner rejected claims 1, 3, 6, 7, 9-13, 18, 20, 22-25, 28, 29,
32, 35-39, 44, 46, and 49-51 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Schnell (US 4,620,284) and Cooper (US
5,856,869).2
The Examiner rejected claims 26, 27, 30, 31, and 47 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Schnell, Cooper, and
Ozaki (US 5,754,289). 3
The Examiner rejected claims 2, 4, 5, 8, 14-17, 19, 33, 34, 40-43, and
45 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Schnell and Cooper in combination with various other references. 4

Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because “[n]either [the cited] portion of Schnell
nor any other portion discloses the claimed operation: multiple passbands
that are simultaneously detected on different regions of the detector.” (App.
Br. 5).

2 Separate patentability is not argued for claims 3, 6, 7, 9-13, 18, 20, 22-25,
28, 29, 32, 35-39, 44, 46, and 49-51. Except for our ultimate decision, these
claims are not discussed further herein.
3 Separate patentability is not argued for claims 27, 30, 31, and 47. Except
for our ultimate decision, these claims are not discussed further herein.
4 Separate patentability is not argued for these claims. Therefore, they stand
or fall with the claims from which they depend. Except for our ultimate
decision, these claims are not discussed further herein.
Appeal 2009-014896
Application 10/967,075

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2. Appellant contends that the Examiner erred in rejecting claim 47
under 35 U.S.C. § 103(a) because claim 47 requires “a semiconductor laser
excitation source operating at about 980 nanometers” and “there is no
suggestion [in Ozaki] to operate around the narrow range of 980
nanometers.” (App. Br. 6).

Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious because
the references fail to teach or suggest the claim limitation at issue?
Did the Examiner err in rejecting claim 47 as being obvious because
the Ozaki fails to teach or suggest the “about 980 nanometers” claim
limitations at issue?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
We disagree with Appellant’s conclusions. We agree with (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief. We concur
with the conclusions reached by the Examiner.
As to above contention 1, we disagree with Appellant’s argument that
the Examiner erred because the Examiner correctly points out that this
limitation is taught in Schnell at the paragraph bridging columns 23-24
(Ans. 14).
Appeal 2009-014896
Application 10/967,075

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As to above contention 2, we agree with the Examiner’s analysis
(Ans. 15) in response to Appellant’s argument. Separately, we point out to
both Appellant and Examiner that Ozaki explicitly teaches “1000 nm” at
column 7, line 57 (and elsewhere). We conclude that an artisan would
understand “1000 nm” to be “about 980 nanometers.”

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-20 and 22-51 as
being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-20 and 22-51 are not patentable.

DECISION 5
The Examiner’s rejections of claims 1-20 and 22-51 are 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)(1)(iv).

AFFIRMED

5 We have decided the appeal before us. Should there be further prosecution
of these claims, we draw attention to claims 13 and 39. Although these
claims were consistent with original claims 1 and 29, they appear to be
inconsistent with Appellant’s amendments to said claims 1 and 29.
We find no disclosure of a single detector element in which two or more
passbands of the tunable filter are simultaneously detected on different
regions of the detector, as is now required by the amendments.

Appeal 2009-014896
Application 10/967,075

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ELD