Wagner, Randall et al.

Patent Trials and Appeals Board

Oct 1, 2019

13277912 - (D) (P.T.A.B. Oct. 1, 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.
13/277,912 10/20/2011 Randall Wagner 055113-0034 1096
20572 7590 10/01/2019
GODFREY & KAHN S.C.
833 East Michigan Street, Suite 1800
Milwaukee, WI 53202-5615
EXAMINER
SMITH, MAURICE C
ART UNIT PAPER NUMBER
2877
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
docketing@gklaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RANDALL WAGNER and KURT P. SCHOECKERT
____________

Appeal 2019-001263
Application 13/277,912
Technology Center 2800
____________

Before GEORGIANNA W. BRADEN, MONTÉ T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 5, 6, and 21–25, which are all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In explaining our Decision, we refer to the Specification filed Oct. 20,
2011 (“Spec.”); Final Office Action dated Oct. 6, 2017 (“Final Act.”);
Appeal Brief filed June 6, 2018 (“Br.”); and Examiner’s Answer dated Sept.
28, 2018 (“Ans.”). There is no reply brief.
2 We use the word “Appellants” to refer to “Applicants” as defined in 37
C.F.R. § 1.42(a). Appellants identify GemEx Systems, Inc. as the real party
in interest. Br. 2.
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Application 13/277,912

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The Claimed Subject Matter
Appellants’ disclosure relates to a gemstone positioning and analysis
system for measuring various characteristics of a gemstone. Spec. ¶ 5;
Abstract. Claim 21 is illustrative of the claimed subject matter on appeal
and is reproduced below from the Claims Appendix to the Appeal Brief:
21. A gemstone analysis system for measuring
characteristics of a gemstone comprising:
a mounting plate including a centermost point, for
supporting the gemstone;
a narrow-band spectrophotometer adapted to
measure the light absorbance of the gemstone at a
predetermined position on the mounting plate;
a fiber optic connector having a first end attached to
the narrow-band spectrophotometer and a second end
attached to a probe positioned near the gemstone;
a movable light source adapted to illuminate the
gemstone from a plurality of angles; and
an imaging wide-band spectrophotometer adapted
to record images of the gemstone without having moved
the gemstone from the predetermined position on the
mounting plate;
the imaging wide-band spectrophotometer and the
narrow-band spectrophotometer further adapted to
provide data about the gemstone which has not been
moved from the predetermined position during the time
between the measuring of the light absorbance by the
narrow-band spectrophotometer and the recording of the
images by the wide-band spectrophotometer, to a
computer system adapted to analyze the data and to output
material characteristics of the gemstone.
Claims Appendix (Br. 17) (key disputed claim language italicized and
bolded).
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The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Yifrach et al. (“Yifrach”) US 5,118,181 June 2, 1992
Valente et al. (“Valente”) US 5,615,005 Mar. 25, 1997
Smith et al. (“Smith”) US 5,883,388 Mar. 16, 1999
Lakowicz et al. (“Lakowicz”) US 2005/0053974 A1 Mar. 10, 2005
Aggarwal US 6,980,283 B1 Dec. 27, 2005
Beesley US 7,557,917 B1 July 7, 2009

The Rejections
On appeal, the Examiner maintains (Ans. 1–2) the following
rejections:
1. Claim 21 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Valente in view of Yifrach, in further view of Smith
(“Rejection 1”). Final Act. 9.
2. Claim 22 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Valente in view of Yifrach, in further view of Smith, in
further view of Lakowicz (“Rejection 2”). Id. at 11.
3. Claim 23 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Valente in view of Yifrach, in further view of Smith, in
further view of Lakowicz, in further view of Beesley (“Rejection 3”). Id.
4. Claims 5 and 24 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Valente in view of Yifrach, in further view of
Smith, in further view of Aggarwal (“Rejection 4”). Id. at 4.
5. Claims 6 and 25 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Valente in view of Yifrach, in further view of
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Smith, in further view of Aggarwal, in further view of Beesley
(“Rejection 5”). Id. at 8.
OPINION
Rejection 1
The Examiner determines that the combination of Valente, Yifrach,
and Smith suggests a gemstone analysis system satisfying all of the
limitations of claim 21 and concludes the combination would have rendered
claim 21 obvious. Final Act. 9–11. In particular, the Examiner concludes
[a]t the time of the invention, it would have been obvious
to one of ordinary skill to combine [] Smith’s narrowband
spectrometer and computer system with Valente’s
wideband spectrometer to determine the authenticity of a
gemstone based upon the detection of a synthetic material.
Id. at 11.
Appellants argue the Examiner’s rejection should be reversed because
the Examiner does not explain adequately why a person of ordinary skill in
the art would have been motivated to combine the cited art in the manner
claimed. Br. 6–8, 12–13. In particular, Appellants argue
no combination of the prior art references cited by the
Examiner presents any teaching, suggestion, or motivation
to combine a narrow-band spectrophotometer and a wide-
band spectrophotometer in the same instrument to conduct
both types of processes.
Id. at 7; see also id. at 8 (arguing “it would not have been obvious to
combine a narrow-band spectrophotometer and a wide-band
spectrophotometer within a single instrument so as to permit the
identification and authentication processes simultaneously without moving
the gemstone between the two processes”).
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Relying on the declaration of Randall Wagner (“Wagner
Declaration”), Appellants contend a wide-band spectrophotometer requires a
substantially different optical setup in comparison to a narrow-band
spectrophotometer, which the Examiner acknowledges and agrees (Ans. 4).
Appellants further contend none of the cited references indicate any reason
to combine these two extremely different types of spectrophotometers. See
Br. 6–7. Appellants also contend it would require a substantial redesign of
one or both of the above systems to combine the narrow-band
spectrophotometer of Smith with the wide-band spectrophotometer of
Valente. Id. at 13.
Appellants’ argument is persuasive because, on the record before us,
the Examiner has not established by a preponderance of the evidence that
one of ordinary skill in the art would have had reason to combine the
teachings of Yifrach, Smith, and Valente to arrive at Appellants’ claimed
invention. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that
the examiner bears the initial burden of establishing a prima facie case of
obviousness).
As Appellants correctly point out (Br. 7–8), the Examiner does not
direct us to persuasive evidence or provide an adequate technical reason
explaining why one of ordinary skill would have modified Valente’s
wide-band spectrophotometer (Valente, Figs. 4–5, 8:10–25, 8:40–65) to
include Smith’s narrow-band spectrophotometer (Smith 2:1–8, 3:23–25,
4:65–5:5) within a single instrument3 in the manner claimed. Although

3 We do not agree with the Examiner’s statement that the claims are not
limited to one instrument containing the wide-band and narrow-band
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Valente describes a wide-band spectrophotometer filter assembly with a
range of 400–700 nm and a light source that “generally outputs a very high
level of infra-red light (above 700 nm)” (Valente 8:15–18, 8:23–24), a
preponderance of the evidence in the present record does not establish that
one of ordinary skill would have had reason to modify Valente’s apparatus
to include a narrow-band spectrophotometer in the same system, as required
by the claim.
Conversely, the Examiner also does not explain adequately why
Smith’s disclosure regarding a narrow-band spectrophotometer with
“radiation of wavelength substantially in the range 7 μm to 25 μm,
preferably 7 μm to 10 μm” (Smith 2:6–8, 3:24–26) would have led one of
ordinary skill to modify Valente’s wide-band spectrophotometer system, as
would be required to arrive at the claimed invention. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring “reasoning with some
rational underpinning to support the legal conclusion of obviousness”); see
also Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
(“[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or

spectrophotometers. Ans. 3. The Examiner has not explained how the
claims can reasonably be construed to encompass a system where “the
wide-band spectrophotometer may be swapped with the narrowband
spectrophotometer” in view of the Specification. See Spec. 6 (discussing
how adding a narrow-band spectrophotometer “allows a user to
simultaneously perform the tests of the current system”); Figs. 1, 6
(depicting wide-band spectrophotometer (34) and narrow-band
spectrophotometer (50) as separate elements within one instrument).
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modifications of prior art to arrive at the claimed invention.”) (emphasis in
original).
The Examiner’s assertions that “one of ordinary skill would have
detected an outputted spectrum from a gemstone via Valente’s wide band
and Smith’s narrowband spectrophotometer to verify whether the gemstone
is authentic or not” (Ans. 4) and “it is well known to direct several different
detectors towards a sample to obtain different spectral information” (id. at 4)
are conclusory and, without more, insufficient to sustain the Examiner’s
rejection. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (holding that
rejections “cannot be sustained by mere conclusory statements”).
The Examiner’s assertion that “one of routine skill in the art would
understand different spectral measurement may be taken within a single lab
for convenience and efficiency saving time and effort” (Ans. 5) is equally
unpersuasive because it, too, is conclusory and the Examiner does not
identify persuasive evidence in the record to support it. Kahn, 441 F.3d
at 988.
Moreover, the Examiner does not provide any findings or discussion
regarding the technical feasibility of modifying Valente’s wide-band
spectrophotometer to include Smith’s narrow-band spectrophotometer
within a single instrument; the impact that would have on the operation of
the system; or why one of ordinary skill in the art would have had a
reasonable expectation of success in making such modification given
substantially different optical setups between the two systems.
We, therefore, cannot sustain the Examiner’s rejection and
determination that it would have been obvious to combine the teachings of
Valente, Yifrach, and Smith to arrive at the claimed subject matter.
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Accordingly, we reverse the Examiner’s rejection of claim 21 under
35 U.S.C. § 103(a) as obvious over the combination of Valente, Yifrach, and
Smith.
Rejections 2, 3, 4, and 5
The foregoing deficiencies in the Examiner’s analysis and conclusion
regarding Rejection 1 and the combination of Valente, Yifrach, and Smith
are not remedied by the Examiner’s findings regarding the additional
references or combination of references cited in support of the second, third,
fourth, and fifth grounds of rejection.
Accordingly, we also reverse Rejections 2, 3, 4, and 5.
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Application 13/277,912

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CONCLUSION
In summary:
Claim(s)
Rejected
Basis Affirmed Reversed
21 § 103(a)
Valente, Yifrach, Smith
21
22 § 103(a)
Valente, Yifrach, Smith,
Lakowicz
22
23 § 103(a)
Valente, Yifrach, Smith,
Lakowicz, Beesley
23
5, 24 § 103(a)
Valente, Yifrach, Smith,
Aggarwal
5, 24
6, 25 § 103(a)
Valente, Yifrach, Smith,
Aggarwal, Beesley
6, 25
Overall
Outcome
5, 6, 21–25

REVERSED