Shigeyoshi Horiike et al.

Patent Trials and Appeals Board

Aug 30, 2019

14767191 - (D) (P.T.A.B. Aug. 30, 2019)

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.
14/767,191 08/11/2015 Shigeyoshi HORIIKE Q219919 1032
23373 7590 08/30/2019
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
HUANG, DAVID Z
ART UNIT PAPER NUMBER
2861
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
PPROCESSING@SUGHRUE.COM
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHIGEYOSHI HORIIKE and KEI SHINADA
____________

Appeal 2018-008877
Application 14/767,191
Technology Center 2800
____________

Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134, Appellant1 appeals from a Final rejection
of claims 1–4 and 7–9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Shimadzu Corporation is the Applicant/Appellant and is identified as the
real party in interest. App. Br. 2.
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The invention is generally directed to a discharge ionization current
detector used for a gas chromatograph. Spec. ¶ 1. According to the
Specification, temperature drift or noise abruptly grows when the ion
collecting section is heated at above 300 degrees Celsius, and as a result, a
background level increases, and the signal-to-noise (S/N) ratio of the
detection signal deteriorates. Id. ¶ 8. The Specification identifies that the
problem results from the electric resistance of the insulating member
abruptly lowering at a temperature equal to or higher than 300 degrees
Celsius. Id. ¶ 11. The invention addresses this problem by including an
insulating member in the discharge ionization current detector, where the
insulating member has a volume resistivity of equal to or more than 1010
Ωcm in a state where the ion collecting section is heated at 400 degrees
Celsius. App. Br. 7; Spec. ¶ 11. Claim 1 illustrates the invention
(formatting added):
1. A discharge ionization current detector used for a
gas chromatograph, comprising:
a) a plasma generator configured to generate plasma; and
b) an ion collecting section including:
a bias electrode configured to generate an electric
field that guides sample ions, which are ionized by light emitted
by the plasma generated by the plasma generator, to an ion
collecting electrode;
the ion collecting electrode configured to collect
the sample ions; and
an insulating member arranged between the ion
collecting electrode and the bias electrode and made of
aluminum oxide or sapphire having a purity equal to or larger
than 99.5%, and
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c) a heater capable of heating the ion collecting section
up to 400 degrees Celsius,
wherein the insulating member has volume resistivity of
equal to or more than 1010 Ωcm in a state where the ion
collecting section is heated at 400 degrees Celsius, so as to
suppress an electric current which flows from the bias electrode
to the ion collecting electrode.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action:
I. Claims 1–4, 7, and 9 rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Shinada (US 2011/0316551 A1, published December
29, 2011), Hidetaka (JP 2007-315853 A, published December 6, 2007, and
relying on an English machine translation dated July 6, 2017)), and Auerkari
(Mechanical and physical properties of engineering alumina ceramics, Vit
Tiedotteita Research Notes 1792, pp 1–26 (1996)).

II. Claim 8 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Shinada, Hidetaka, Auerkari, and Toribio (US
2009/0090176 A1, published April 9, 2009).

Appellant presents arguments for independent claim 1 and relies on
these arguments to address the rejections of the remaining claims. See
generally App. Br. Accordingly, we select independent claim 1 as
representative of the subject matter claimed. Claims 2–4 and 7–9 stand or
fall together based on the arguments made by Appellant in support of
patentability of claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

OPINION
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we affirm the Examiner’s prior art rejections of claims 1–4 and
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7–9 for the reasons the Examiner presents. We add the following for
emphasis.
Claim 1
The Examiner finds that Shinada teaches a discharge ionization
current detector for a gas chromatograph that differs from the claimed
invention in that Shinada does not teach an insulating member arranged
between the ion collecting electrode and the bias electrode, the insulating
member being made of aluminum oxide having a purity equal to or larger
than 99.5%. Final Act. 3–4. The Examiner turns to Hidetaka for the
missing feature. Id. at 4. The Examiner finds that Hidetaka teaches the use
of an aluminum oxide insulation to ensure electrical insulation between
electrodes where the aluminum oxide insulation can have a purity of 99.7%.
Final Act. 4; Hidetaka ¶ 22. The Examiner further finds Auerkari teaches
that aluminum oxide insulating members having purity equal to or larger
than 99.5% also have a volume resistivity of equal to or more than 1010 ohm-
cm at 400 degrees Celsius. Final Act. 4 (citing Auerkari Figure 5). The
Examiner determines that it would have been obvious to a person having
ordinary skill in the art to use Hidetaka’s aluminum oxide insulation material
in place of Shinada’s insulation material because it is a known alternative to
provide electrical insulation between electrodes. Final Act. 4–5.
Appellant argues that Shinada and Hidetaka are non-analogous art.
App. Br. 9. According to Appellant, Shinada is directed to a discharge
ionization current detector primarily suitable as a detector for a gas
chromatograph while Hidetaka is directed to a mechanical structure of a
strain measuring device. Id. Appellant contends that they are non-
analogous because the former relates to a current detector used for a
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chemical analysis process, whereas the latter relates to a device that
measures mechanical distortion of a physical structure and does not perform
any type of chemical analysis. Id. Thus, Appellant asserts that, absent
impermissible hindsight, a person having ordinary skill in the art would not
have considered Hidetaka as pertinent to the problem addressed because a
strain gauge that is for measuring mechanical distortion is so far removed
conceptually and so different technologically from a current detector used
for gas chromatography. Id. at 10–11.
These arguments do not persuade us of reversible error in the
Examiner’s determination of obviousness for the reasons the Examiner
presents. Ans. 4. The Federal Circuit has explained that
[t]wo separate tests define the scope of analogous
prior art: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed
and, (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still
is reasonably pertinent to the particular problem
with which the inventor is involved.

In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (internal citation omitted).
The scope of analogous art is to be construed broadly. Wyers v. Master Lock
Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court's decision
in KSR International Co. v. Teleflex, Inc. . . . directs us to construe the scope
of analogous art broadly.”).
Appellant contends that the claimed invention addresses the problem
of the abrupt deterioration of the signal-to-noise (S/N) ratio of the detection
signal resulting from a background level when the ion collecting section is
exposed to temperatures above 300 degrees Celsius. App. Br. 7 (citing
Spec. ¶ 8). Appellant further explains that this occurs because, when the ion
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collecting section is heated, the electric resistance of the insulating member
abruptly lowers at a temperature equal to or higher than 300 degrees Celsius.
Id. (citing to Spec. ¶ 11). Based on this, the particular problem Appellant
addresses is the detrimental condition resulting from inadequate insulation
provided between the electrode in the ion collecting section when the device
is subjected to temperatures equal to or higher than 300 degrees Celsius.
Here, the Examiner finds that Shinada’s invention differs from the
claimed invention in that Shinada does not teach the specifically claimed
insulating member arranged between the ion collecting electrode and the
bias electrode. Final Act. 3–4. Shinada, however, does teach the use of
insulators made of alumina between electrodes (i.e., aluminum oxide).
Shinada ¶ 30. Of note, Shinada also recognizes that the S/N ratio is
impacted by electromagnetic noise entering an electrode as well as a drift of
a signal due to a fluctuation in the ambient temperature around the detection
cell (ion collecting section) when heated up to approximately 400 degrees
Celsius for the detection of high-boiling components. Shinada Abst. ¶ 5.
The Examiner further finds that Hidetaka teaches the conventional use
of alumina having a purity of 99.7% or more (meeting the claimed
requirement for a purity of equal to or larger than 99.5%) as an insulating
member. Final Act. 4; Hidetaka ¶ 22. Hidetaka also discloses that
insulating members of that purity ensure electrical insulation between the
electrodes even under high temperatures in the vicinity of a temperature of
600 ° C. Hidetaka ¶ 22.
Therefore, like Appellant, both Shinada and Hidetaka recognize that
high temperatures can detrimentally impact the operation of devices
comprising electrodes. Thus, Appellant has not adequately established that
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the cited art is not reasonably pertinent to the particular problem with which
the inventor is involved.
Appellant then argues that Shinada, while recognizing a drift issue,
neither describes nor suggests that the primary cause of deterioration of the
signal-to-noise ratio of the detection signal is the abrupt lowering of the
electric resistance of the insulating member when the temperature rises
above 300 °C. App. Br. 7. Thus, Appellant contends that a person having
ordinary skill in the art would not have been motivated to modify Shinada by
combining the teaching of Hidetaka without a recognition of this technical
concept. Id. Appellant contends that each of Shinada and Hidetaka fails to
suggest or disclose the characteristic configuration of claim 1 because
neither Shinada nor Hidetaka recognize the problem addressed by Appellant.
Id.
This argument is also unavailing. As discussed above, the cited art is
reasonably pertinent to the particular problem with which the inventor is
involved. Further, the Examiner established a reasonable basis for a person
of ordinary skill in the art to have reasonably expected that Hidetaka’s
alumina insulation material would be suitable as an insulating member to
separate the electrodes in Shinada’s discharge ionization current detector.
See Final Act. 3–5; In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988)
(“For obviousness under § 103, all that is required is a reasonable
expectation of success.”). Given that both Shinada and Hidetaka recognize
that high temperatures can detrimentally impact the operation of devices
comprising electrodes, Appellant has not explained adequately why one
skilled in the art, using no more than ordinary creativity, would not have
been capable of using Hidetaka’s alumina insulation material in Shinada’s
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invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985)
(presuming skill on the part of one of ordinary skill in the art).
Additionally, Appellant does not direct us to evidence showing any
criticality from the use of an alumina insulation member having a purity
equal to or greater than 99.5%, as claimed.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1–4 and 7–9 for the reasons the Examiner presents and we give above.
ORDER
The Examiner’s prior art rejections of claims 1–4 and 7–9 under
35 U.S.C. § 103(a) is affirmed.
TIME PERIOD
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).

AFFIRMED