Ex parte Bomse et al.

Board of Patent Appeals and Interferences

Dec 22, 2000

08347814 (B.P.A.I. Dec. 22, 2000)

1 The examiner (answer, page 2) states that “claims 115-116, 149-150
are objected to as being dependent upon a rejected base claim, but would be
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims.” We find this statement to be
inconsistent with the examiner’s rejection of these claims under 35 U.S.C.
§ 112, second paragraph (answer, page 3). We presume that the examiner meant
to say that claims 115-116 and 149-150 would be allowed if rewritten in
independent form and to overcome their indefiniteness.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID S. BOMSE, D. CHRISTIAN HOVDE,
and JOEL A. SILVER
____________
Appeal No. 1998-1814
Application No. 08/347,814
____________
HEARD: November 29, 2000
____________
Before HAIRSTON, GROSS, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claims 110-1771, which are all of the claims
pending in this application.
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Application No. 08/347,814
Page 2

BACKGROUND
The appellants’invention relates to a dual modulation
laser line-locking technique for wavelength modulation. An
understanding of the invention can be derived from a reading
of exemplary claims 110, 117, 119, and 121, which are
reproduced as follows:
110. Optical spectroscopy apparatus providing
wavelength stabilization and improved precision and accuracy
of optical absorbance measurements, the apparatus comprising:
light source means for producing a light beam;
modulator means for modulating a wavelength of said light
source means, said modulator means comprising means for
simultaneously modulating said wavelength with a first
frequency and a second frequency, said first frequency being
different than said second frequency; and
detector means positioned to receive said light beam for
producing output signal means comprising signal means
representative of an absorber species quantity and wavelength
stabilization means of said light source means.
117. The invention of claim 110 further comprising
demodulator means for demodulating said output signal means.
119. The invention of claim 117 wherein said
demodulator means comprises first and second demodulator
means.
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2 The Gallagher reference is also referred to by the examiner as the
prior art cited by appellants on page 19, lines 15-20 of the specification.
121. The invention of claim 119 wherein a first
demodulating frequency of said first and said second
demodulator means is greater than a second demodulating
frequency of said first and second demodulator means.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Mantz et al. (Mantz ‘273) 4,410,273 Oct. 18, 1983
Gallagher et al. (Gallagher2) 4,765,736 Aug. 23, 1988
Mantz et al. (Mantz ‘448) 4,937,448 Jun. 26, 1990
Cassidy et al. (Cassidy) "Harmonic Detection with Tunable
Diode Lasers - Two-Tone Modulation", Applied Physics B, vol.
29,
1982 pp. 279-285.
Claims 110-177 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellants regard as the invention.
Claims 110-112, 117-146, and 151-177 stand rejected under
35 U.S.C. § 103 as unpatentable over Mantz (‘448) in view of
either the prior art cited by appellants on page 19, lines 15-
20 of the specification (reference to US Patent 4,765,736 to
Gallagher) or Cassidy.
Claims 110-114, 117-148, and 151-177 stand rejected under
Appeal No. 1998-1814
Application No. 08/347,814
Page 4
35 U.S.C. § 103 as unpatentable over Mantz (‘273) in view of
either the prior art cited by appellants on page 19, lines 15-
20 of the specification (reference to US Patent 4,765,736 to
Gallagher) or Cassidy.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner’s answer (Paper
No. 19, mailed January 12, 1998) for the examiner’s complete
reasoning in support of the rejections, and to the appellants’
brief (Paper No. 18, filed October 9, 1997) for the
appellants’ arguments thereagainst. Only those arguments
actually made by the appellants have been considered in this
decision. Arguments which the appellants could have made but
chose not to make in the briefs have not been considered. See
37 CFR 1.192(a).
OPINION
In reaching our decision in this appeal, we have
carefully considered the subject matter on appeal, the
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Application No. 08/347,814
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rejections advanced by the examiner, and the evidence of
obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the brief and at the Oral Hearing,
along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the
examiner’s answer.
We begin with the rejection of claims 110-177 under
35 U.S.C. § 112, second paragraph. Starting with claim 110, the
claim language at issue is "detector means ... producing ... signal
means representative of ... wavelength stabilization means of said
light source means." The examiner takes the position (answer, page
3) that "[t]he claim language is incorrect in that the detector does
not produce wavelength stabilization means. From the Figures, it
appears that the locking mixers and lockings [sic] somehow produce
wavelength stabilization of the laser, not the detector." In
response, the appellants direct our attention to the following
language in the specification (page 9, lines 17-18) "[t]he detector
may also provide demodulation." The appellants assert (brief, page
7) that "[t]his description of the detector encompasses the specific
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components - mixers and lockin amplifiers - that provide demodulation
and are depicted in the Figures and itemized in the descriptions of
the embodiments and examples."
We first note that the claim language does not indicate that
the detector produces wavelength stabilization means, but, rather,
specifies that the signal produced by the detector represents
wavelength stabilization means. Nonetheless, we agree with the
examiner that claim 110 is indefinite, since the signal produced by
the detector does not represent the wavelength stabilization means,
but, rather, is for the wavelength stabilization means. Only the
signal output from the wavelength stabilization means represents the
wavelength stabilization means. Although we agree with the
appellants that claim 110, taken alone, could be interpreted as
proposed by appellants, an interpretation that the detector includes
the wavelength stabilization means is inconsistent with claims which
depend from claim 110. For example, claim 117 recites "[t]he
invention of claim 110 further comprising demodulator means for
demodulating said output signal means." In other words, claim 117
requires a separate element for demodulation, which is inconsistent
with the claim from which it depends. Therefore, we cannot accept
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appellants’ interpretation. Accordingly, we conclude that claim 110
is indefinite, as asserted by the examiner.
With regard to claim 144, instead of reciting that the detector
output signal is representative of wavelength stabilization means,
the claim recites “producing by a detector
. . . an output signal representative of . . . and providing for
wavelength stabilization. . . .” However, similar to claim 110, it
is not the detector that provides for wavelength stabilization, but
rather the demodulator, since claim 151, for example, requires a
separate demodulator.
The examiner further asserts that claims 143 and 177 are
unclear. Starting with claim 143 (claim 177 has similar
language) the language in question is “wherein said detector
means comprises a single detector means for producing output
signal means representative of known and unknown quantities of
the absorber species.” The examiner takes the position
(answer, page 3) that because the detector means of claim 110
produces signal output means representative of an absorber
species and wavelength stabilization means and therefore
requires two detectors, that the single detector means of
claim 143, contradicts claim 110. From our reading of claims
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110 and 143, we find claim 143 to be definite. Claim 143 does
not recite that the detector means comprises a single
detector. Claim 143 simply states that a single detector
means produces the output signal representative of the
absorber series. Claim 143 does not preclude the detector
means including other detectors which output signals for
wavelength stabilization. Accordingly, we see no
inconsistency between claim 143 and claim 110. As claim 177
contains similar language to claim 143, we also find claim 177
to be definite under 35 U.S.C. § 112, second paragraph.
Nonetheless, as none of the claims dependent upon claims 110
and 144 make up for the indefiniteness of claims 110 and 144,
the rejection of claims 110-177 under 35 U.S.C. § 112, second
paragraph, is affirmed.
We now turn to the rejections of claims 110-114, 117-148,
and 151-177 under 35 U.S.C. § 103. At the outset, we note
that at the Oral Hearing, appellants conceded the obviousness
of all of the claims rejected by the examiner, with the
exception of claims 121 and 155. We therefore affirm the
rejection of the remaining claims rejected by the examiner under 35
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U.S.C. § 103 for the reasons set forth in the examiner’s answer, and
we will limit our determinations to claims 121 and 155.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior
art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Appeal No. 1998-1814
Application No. 08/347,814
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Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole. See id.;
In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed.
Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052,
189 USPQ 143, 147 (CCPA 1976).
Claims 121 and 155 stand rejected under 35 U.S.C. § 103
as unpatentable over either Mantz (‘448) or Mantz (‘273) in
view of either Gallagher or Cassidy. The examiner’s position
(answer, pages 4 and 5) with respect to the claims from which
claims 121 and 155 depend, is that both Cassidy and Gallagher
teach simultaneous modulation. We find that both Cassidy
(page 280, col. 2) and Gallagher (Figure 1) suggest
simultaneous modulation of the wavelength of the light source
with first and second frequencies. With regard to claims 121
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and 155, appellants assert (brief, pages 9 and 10) that
appellants’ invention combines dual wavelength modulation with
sequential demodulation, and that the references do not teach
sequential demodulation. The examiner takes the position
(answer, page 14) that the claims are silent as to sequential
demodulation.
As stated by the court in In re Hiniker Co., 150 F.3d
1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) “[t]he name
of the game is the claim.” Claims will be given their
broadest reasonable interpretation consistent with the
specification, and limitations appearing in the specification
are not to be read into the claims. In re Etter, 756 F.2d
852, 858, 225 USPQ 1, 5 (Fed. cir. 1985).
We agree with the examiner that the claims do not recite
sequential demodulation. The claims require first and second
demodulator means, and that a first demodulating frequency is
greater than a second demodulating frequency. As drafted,
claims 121 and 155 read on the parallel demodulation of Mantz
(‘448). Mantz (‘448) discloses (Figure 2) demodulators 46 and
48. Demodulator 46 mixes the detector signal with the
chopping frequency