Cheryl Margaret. Surman et al.

Patent Trials and Appeals Board

Sep 12, 2019

14697086 - (D) (P.T.A.B. Sep. 12, 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.
14/697,086 04/27/2015 Cheryl Margaret SURMAN 10553-013US1 4850
152404 7590 09/12/2019
Suez Water Technologies & Solutions
c/o Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
MERCADO, ALEXANDER A
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
09/12/2019 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@mcciplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHERYL MARGARET SURMAN, JON ALBERT DIERINGER,
and RADISLAV ALEXANDROVICH POTYRAILO

Appeal 2019-000310
Application 14/697,086
Technology Center 2800
____________

Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
DEBRA L. DENNETT, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

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Application 14/697,086

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Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Primary Examiner’s decision to reject claims 1–5, 7–13, and 15–22.1,2 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
BACKGROUND
The subject matter on appeal relates to a sensor having a sampling
cell, a bottom winding disposed around the sampling cell, and a top winding
disposed around the bottom winding (Specification filed April 27, 2015
(“Spec.”), ¶ 12). The sensor further includes a resonant transducer, which is
configured to determine a composition of the sample (e.g., a stationary or
flowing fluid such as oil or water—i.e., an emulsion or other dispersion) (id.
¶¶ 11–12).
An exemplary resonant transducer is illustrated in Figure 22
(annotated), which we reproduce from the Drawings filed April 27, 2015, as
follows:

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The record indicates that the Applicant is “BL Technologies,
Inc.” (Application Data Sheet filed July 2, 2019, 6). The Appeal Brief,
however, identifies the real party in interest as “GENERAL ELECTRIC
COMPANY” (Appeal Brief filed March 8, 2018 (“Appeal Br.”), 4).
2 Appeal Br. 11–22; Reply Brief filed October 15, 2018 (“Reply Br.”), 3–9);
Final Office Action entered June 12, 2017 (Final Act.”), 2–10; Examiner’s
Answer entered August 15, 2018 (“Ans.”), 2–7).
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Figure 22 above depicts a three-dimensional resonant transducer 31
including, inter alia, a sampling cell 39, a bottom winding 35 located around
the sampling cell 39, and a top winding 33 located around the bottom
winding 35 (id. ¶ 59).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A sensor comprising:
a resonant transducer, wherein the resonant transducer
comprises:
a sampling cell;
a bottom winding disposed around the sampling cell; and
a top winding disposed around the bottom winding,
wherein the bottom winding is floating and the bottom winding
is excited by an electro-magnetic field created by a power wave
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flowing through the top winding such that the bottom winding
generates a second electro-magnetic field that is altered by its
interaction with an emulsion or other dispersion in the sampling
cell and the second electro-magnetic field is sensed by the top
winding.
(Appeal Br. 23 (reformatted and emphases added)). Claim 8, the only other
independent claim on appeal, recites the same key limitations highlighted in
claim 1 reproduced above (id. at 23–24).
REJECTIONS ON APPEAL
The claims on appeal stand rejected under AIA 35 U.S.C. § 103,3 as
follows:
A. Claims 1–5, 7–13, and 15–20 as unpatentable over Hammer4
(“Hammer I”), Julius,5 and Eberheim et al.6 (“Eberheim”); and
B. Claims 21 and 22 as unpatentable over Hammer I, Julius,
Eberheim, and Hammer7 (“Hammer II”).
(Ans. 2; Final Act. 5–10).

3 Claim 8 was also provisionally rejected under 35 U.S.C. § 101 as claiming
the same invention as that recited in claim 34 of Application 15/305,664
(“’664 Application”) (Final Act. 2). In addition, claims 1–5, 7–13, and 15–
22 were provisionally rejected under the judicially-created doctrine of
obviousness-type double patenting over certain claims of the ’664
Application in view of certain prior art references (id. at 3, 4). The ’664
Application, however, was abandoned, as indicated in the Notice of
Abandonment entered December 5, 2018 in the record of that application.
Therefore, these double patenting rejections are moot and no longer before
us.
4 US 2013/0285677 A1, published October 31, 2013.
5 US 4,887,798, issued December 19, 1989.
6 US 2010/0295558 A1, published November 25, 2010.
7 US 6,782,736 B1, issued August 31, 2004.
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DISCUSSION
1. The Examiner’s Position
The Examiner finds that Hammer I describes a sensor including most
of the limitations recited in claim 1 (Final Act. 5). The Examiner
acknowledges, however, that Hammer I does not disclose two limitations:
(1) “a top winding disposed around the bottom winding”; and (2) “the
second electro-magnetic field is sensed by the top winding” (id.).
With respect to difference (1), the Examiner finds that Julius discloses
a two-coil arrangement having a top winding disposed around a bottom
winding (id. (citing Julius, Figs. 2 and 4); Ans. 4 (citing Julius, Fig. 4)).
Based on these findings, the Examiner concludes that “[i]t would have been
obvious to one skilled in the art . . . to modify Hammer [I], in view of the
teachings of Julius to have . . . the top winding disposed around the bottom
winding for the benefit of protection against mechanical stresses and altering
electromagnetic fields” (Final Act. 5–6 (citing Julius col. 3, ll. 1–9)).
With respect to difference (2), the Examiner finds that Eberheim
discloses a bottom winding L2 and a top winding L1, wherein the bottom
winding L2 is excited by an electro-magnetic field created by a power wave
flowing through the top winding L1 such that the bottom winding L2
generates a second electro-magnetic field and the second electromagnetic
field is sensed by the top winding L1 (id. at 6 (citing Eberheim, ¶¶ 12, 32, 41
and Fig. 2)). The Examiner concludes that “[i]t would have been obvious to
one skilled in the art . . . to modify Hammer, in view of Julius, such that . . .
the second electro-magnetic field is sensed by the top winding, as taught by
Eberheim, for the benefit of determining a state of the bottom winding . . .
including a wire break” (id. (citing Eberheim ¶ 12, 34)).
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2. The Appellant’s Position
The Appellant contends that Hammer I does not describe using the
same coil (i.e., the top winding) for both excitation and detection, as
required by claim 1, and that Julius does not cure this deficiency (Appeal Br.
12–16; Reply Br. 4 (“[N]one of the references, alone or in combination,
teach that a top winding disposed around a bottom winding is used for
both—excitation and sensing.”)). The Appellant argues that Eberheim, too,
“fails to correct the deficiencies of Hammer I and Julius” (Appeal Br. 17).
While the Appellant acknowledges that Eberheim teaches a sensor with only
two coils, the Appellant points out that Eberheim requires the coils to be
wrapped around two different cores and, thus, Eberheim fails to teach or
suggest “a bottom winding disposed around the sampling cell[] and a top
winding disposed around the bottom winding” as recited in claim 1 (id.).
According to the Appellant, a person having ordinary skill in the art would
not have combined Eberheim with Hammer I and Julius in the manner
recited in claim 1 because “[b]oth Hammer and Julius teach a device having
multiple windings around a single core, while Eberheim teaches a device
that has single windings around two separate cores” (Reply Br. 6).
3. Opinion
We agree with the Appellant that it has not been shown a person
having ordinary skill in the art would have combined Eberheim with
Hammer I and Julius in the manner recited in claim 1. Eberheim does
disclose using only two coils L1 and L2, where sending coil L1
(corresponding to the “top winding” recited in claim 1) appears to (i) excite
receiving coil L2 (corresponding to the “bottom winding” recited in claim 1)
and (ii) measure (i.e., sense) the total inductance including the inductance at
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L2 (Eberheim, ¶¶ 29–31). Eberheim’s coil L1, however, is neither wrapped
around coil L2 nor disposed around a common core as in claim 1 or the
Hammer I/Julius combination (id., Figs. 1–2; Hammer, Fig. 1; and Julius,
Figs. 1–2). Despite the significant structural differences between Eberheim
and the Hammer I/Julius combination, the Examiner does not provide an
adequate explanation how Eberheim’s configuration would have been
redesigned by a person having ordinary skill in the art and then implemented
in the Hammer I/Julius combination. Indeed, it would appear that
substantial reconstruction or redesign would have been necessary. In re
Ratti, 270 F.2d 810, 981 (CCPA 1959) (“[The] suggested combination of
references would require a substantial reconstruction and redesign of the
elements shown in [one of the references] as well as a change in the basic
principles under which [that reference’s] construction was designed to
operate.”).
For these reasons, we do not sustain the rejection.
CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–5, 7–13, 15–20 § 103
Hammer I, Julius,
Eberheim
1–5, 7–13,
15–20
21, 22 § 103
Hammer I, Julius,
Eberheim, Hammer
II
21, 22
Overall Outcome 1–5, 7–13,
15–22

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REVERSED