Ex parte BENEDETTO et al.

Board of Patent Appeals and Interferences

Apr 7, 1998

08067307 (B.P.A.I. Apr. 7, 1998)

Application for patent filed May 26, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ELIZABETH E. BENEDETTO, JOHN W. LYONS and
STEWART P. WOOD
__________
Appeal No. 95-3208
Application 08/067,3071
__________
ON BRIEF
__________
Before HAIRSTON, KRASS and FLEMING, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 18, all of the claims pending in the
application.
The invention relates to an apparatus and method for using
Appeal No. 95-3208
Application 08/067,307
2
light scattering to measure the size of particles suspended in a
fluid medium.
The only independent claims 1 and 8 present in the
application are reproduced as follows:
1. In an apparatus for determining the size of particles
suspended in a medium, said apparatus being of the type
having a means for producing a beam of light;
a means for exposing the particles to the beam of light,
whereby the light which contacts the particles is scattered;
and a means for detecting the light over a given collection
angle after it has passed through the means for exposing the
particles to the beam of light, the improvement comprising:
a spatial filter for reducing the collection angle
to less than about 3E.
8. A method for determining the size of a particle
suspended in a medium comprising:
(a) passing the medium containing the particle
through a beam of light, so that the light which
contacts the particle will be scattered;
(b) detecting the light which was not scattered by
the particle;
(c) deterring the light which was scattered by the
particles from being detected, such that only
light which falls within a collection angle of 3E
or less is detected; and
(d) determining the size of the particle from the
decrease in light detected as the particle passed
through the beam of light.
The references relied on by the Examiner are as follows:
Appeal No. 95-3208
Application 08/067,307
Translation attached.2
3
Fulwyler et al. (Fulwyler) 3,710,933 Jan. 16, 1973
Colombo et al. (Colombo) 4,329,052 May 11, 1982
Kamimoto JP 62-273431 Nov. 27, 19872
(Japanese)
Claims 1, 8 and 13 through 18 stand rejected under 35 U.S.C.
§ 102 as being anticipated by Fulwyler. Claims 2 through 7 and 9
through 12 stand rejected under 35 U.S.C. § 103 as being unpat-
entable over Fulwyler in view of Kamimoto and Colombo.
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the brief and the answer for the
details thereof.
OPINION
After a careful review of the evidence before us, we agree
with the Examiner that claims 1 and 13 through 15 are properly
rejected under 35 U.S.C. § 102 and that claims 3 through 5 and 7
are properly rejected under 35 U.S.C. § 103. Thus, we will
sustain the rejection of these claims but we will reverse the
rejection of remaining claims on appeal for the reasons set forth
infra.
At the outset, we note that Appellants have indicated on
page 3 of the brief that the claims do not stand or fall
together. However, on pages 4 through 6 of the brief, we note
Appeal No. 95-3208
Application 08/067,307
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that Appellants argue claims 1 and 8 separately in regard to the
35 U.S.C. § 102 rejection, and do not argue claims 13 through 18
separately, but as a group. 37 CFR § 1.192(c)(7) (1997) states:
For each ground of rejection which appellant contests
and which applies to a group of two or more claims, the
Board shall select a single claim from the group and
shall decide the appeal as to the ground of rejection
on the basis of that claim alone unless a statement is
included that the claims of the group do not stand or
fall together, and in the argument under paragraph
(c)(8) of this section appellant explains why the
claims of the group are believed to be separately
patentable. Merely pointing out differences in what
the claims cover is not an argument as to why the
claims are separately patentable.
As per 37 CFR § 1.192(c)(5), which was controlling at the time of
Appellants filing the brief, we will, thereby, consider Appel-
lants' claims 1 and 13 through 15 to stand or fall together, with
claim 1 being considered the representative claim and claims 8
and 16 through 18 to stand or fall together, with claim 8 being
considered the representative claim.
Appellants argue on page 5 of the brief that in their
invention, the entire beam of light will strike the detector when
no particle is being analyzed. Appellants argue that this
feature of the invention is claimed in step (b) of claim 8, which
recites, "detecting the light which was not scattered by the
particle" and in claim 1, which recites, "a means for detecting
Appeal No. 95-3208
Application 08/067,307
5
the light over a given collection angle." Appellants argue that
Fulwyler, on the other hand, teaches only detecting the light
that has been deflected by the particle and not detecting the
light which was not scattered by the particle as recited in
Appellants' claims.
It is axiomatic that anticipation of a claim under § 102 can
be found only if the prior art reference discloses every element
of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984). "Anticipation is established only when a
single prior art reference discloses, expressly or under
principles of inherency, each and every element of a claimed
invention." RCA Corp. v. Applied Digital Data Systems, Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed,
468 U.S. 1228 (1984), citing Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772 218 USPQ 781, 789 (Fed. Cir. 1983).
Turning to Figure 5, Fulwyler teaches that the light that is
scattered is collected by a photodiode while the direct beam from
the laser is passed to a beam dump. Thus, Fulwyler does not
Appeal No. 95-3208
Application 08/067,307
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teach "detecting the light which was not scattered by the
particle" as recited in Appellants' claim 8. Therefore, we will
not sustain the Examiner's rejection of claims 8 and 16 through
18.
Turning to Appellants' claim 1, we fail to find that the
claimed language requires that the detected light is the direct
beam of the light. Appellants' claim 1 only requires that the
detector detects the light over a given collection angle.
Appellants' claim 1 does not preclude a reading of the claim
language on a detector that detects the scattered light over a
given collection angle. We note that Fulwyler teaches in column
8, lines 58-64, that the detector detects the scattered light
over a collection angle between 0.5 and 2.0 degrees. Therefore,
we find that Fulwyler teaches all of the limitations recited in
Appellant's claim 1. Therefore, we will sustain the Examiner's
rejection of claims 1 and 13 through 15.
We further note that Appellants did not argue that means of
detecting as recited in Appellants' claim 1 corresponds to
structure found in Appellants' specification under 35 U.S.C.
§ 112, sixth paragraph. We are not required to raise and/or
consider such issues when Appellants have not argued them. As
Appeal No. 95-3208
Application 08/067,307
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stated by our reviewing court in In re Baxter Travenol Labs., 952
F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991), “[i]t is
not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.” 37 CFR 1.192(a) as amended at
58 F.R. 54510 Oct. 22, 1993, which was controlling at the time of
Appellants' filing the brief, states as follows:
The brief ... must set forth the authorities and
arguments on which the appellant will rely to maintain
the appeal. Any arguments or authorities not included
in the brief may be refused consideration by the Board
of Patent Appeals and Interferences.
Also, 37 CFR § 1.192 (c)(8)(iii)(1997) states:
For each rejection under 35 U.S.C. § 102, the argument
shall specify the errors in the rejection and why the
rejected claims are patentable under 35 U.S.C. § 102,
including any specific limitations in the rejected
claims which are not described in the prior art relied
upon in the rejection.
Thus, 37 CFR § 1.192 provides that just as the court is not
under any burden to raise and/or consider such issues, this board
is not under any greater burden.
Turning to the rejection under 35 U.S.C. § 103, it is the
burden of the Examiner to establish why one having ordinary skill
Appeal No. 95-3208
Application 08/067,307
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in the art would have been led to the claimed invention by the
reasonable teachings or suggestions found in the prior art, or by
a reasonable inference to the artisan contained in such teachings
or suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). In addition, the Federal Circuit states that
"[t]he mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996), citing
W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548,
220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). In addition, the Federal Circuit reasons in Para-
Ordnance Mfg., 73 F.3d at 1087-88, 37 USPQ2d at 1239-40, that for
Appeal No. 95-3208
Application 08/067,307
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the determination of obviousness, the court must answer whether
one of ordinary skill in the art who sets out to solve the
problem, and who had before him in his workshop the prior art,
would have been reasonably expected to use the solution that is
claimed by the Appellants.
Appellants argue on page 7 of the brief that neither
Fulwyler, Kamimoto nor Colombo teaches or suggests a spatial
filter which includes a detector extender. We note that
Appellants’ claim 2 recites that the "spatial filter includes a
detector extender located between the means for exposing the
particles to the beam of light and the light detection means,
wherein the detector extender blocks ambient light and is of
sufficient length to deter light which was scattered by the
particles from reaching the detector." Appellants also argue on
pages 7 and 8 of the brief that the references fail to teach or
suggest using a fiber optic cable as a spatial filter as recited
in Appellants' claim 6.
On page 5 of the answer, the Examiner argues the Appellants'
statement on pages 8-10 as evidence that the optical fiber may be
substituted by a pinhole for reducing the collection angle.
Appeal No. 95-3208
Application 08/067,307
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However, we fail to find that the Appellants' statement is an
admission of what is known in the prior art, but instead is a
disclosure of Appellants' invention. "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W. L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551, 1553,
220 USPQ at 311, 312-13.
We are not inclined to dispense with proof by evidence when
the proposition at issue is not supported by a teaching in a
prior art reference or by common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in
order to establish a prima facie case. In re Knapp-Monarch Co.,
296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354
F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966). Therefore, we
will not sustain the Examiner's rejection of claims 2 and 6.
We note that the Appellants have not argued claims 3, 4, 5
and 7. After a careful review of the cited art and the
Examiner's reasoning presented in the answer, we will sustain the
Examiner's rejection of these claims.
Appeal No. 95-3208
Application 08/067,307
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In view of the foregoing, the decision of the Examiner
rejecting claims 1 and 13 through 15 under 35 U.S.C. § 102 and
claims 3 through 5 and 7 under 35 U.S.C. § 103 is affirmed;
however, the decision of the Examiner rejecting claims 8 and 16
through 18 under 35 U.S.C. § 102 and claims 2 and 6 under 35
U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 95-3208
Application 08/067,307
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Appeal No. 95-3208
Application 08/067,307
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Richard G. Waterman
Patent Dept.
P.O. Box 1967
Midland, MI 48641-1967