Ex Parte Bonne et al

Board of Patent Appeals and Interferences

Apr 4, 2011

10671930 (B.P.A.I. Apr. 4, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ULRICH BONNE, TOM REZACHEK, and ROBERT HIGASHI
____________

Appeal 2010-001796
Application 10/671,930
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 1-10 and 22-30.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Final Office Action mailed Oct. 17, 2007 (“Final”).
2 Appeal Brief filed Feb. 18, 2008 (“App. Br.”), as corrected in the Response
to Notification of Non-compliant Appeal Brief, filed Mar. 28, 2008.
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The invention is directed to a sensor for the identification and
quantification of fluids. (Spec.3 1:14-18.) The independent claims (claims 1
and 22) are representative of the invention and are reproduced below from
the Claims Appendix to the Appeal Brief:
1. A fluid sensor comprising:

a concentrator;

a separator connected to the concentrator;

a phased heater array having a first plurality of heating elements
situated in the concentrator and a second plurality of heating elements
situated in the separator, wherein the concentrator heating elements and
separator heating elements are in a pre-arranged pattern;

a ratio control mechanism for changing the ratio of concentrator
heating elements relative to separator heating elements, the ratio control
mechanism connected to the phased heater array; and

at least a first detector connected to either the concentrator or the
separator.

22. A fluid sensor comprising:
a concentrator having a first plurality of heater elements;
a separator having a second plurality of heater elements corresponding
to the number of concentrator heater elements;
a controller connected to the concentrator and separator; and
a detector connected to either the concentrator or separator; and
wherein a ratio of the concentrator heater elements to the separator
heater elements may be changed via the controller.

3 Specification filed Sep. 26, 2003.
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Appellants request review of the following grounds of rejection (App.
Br. 5):
1. Claims 1, 2, 5, 6, 22-24, and 28-30 under 35 U.S.C. § 103(a) as
unpatentable over Bonne (US 6,393,894 B1, issued May 28, 2002)4 (Final 2-
4; Ans.5 3-6); and
2. Claims 3, 4, 7-10, and 25-276 under 35 U.S.C. § 103(a) as
unpatentable over Bonne in view of Kubisiak (US 6,169,965, issued Jan. 2,
2001) (Final 5-6; Ans. 6-7).
Appellants confine their arguments to independent claims 1 and 22.
(See Ans. 5-12.) Accordingly, the appealed dependent claims stand or fall
with these claims. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner concedes Bonne fails to expressly teach the use of
more than one separator heating element as required by claims 1 and 22
(Ans. 4), a pre-arranged pattern of concentrator heating elements and
separator heating elements as recited in claim 1 (cf. Ans. 5), and a plurality
of concentrator heater elements corresponding to a plurality of separator
heater elements as recited in claim 22 (Ans. 5). However, the Examiner
finds “[t]he number of separator heater elements is an art-recognized result-
effective variable.” (Ans. 5, 13.) The Examiner finds, more specifically,
that increasing the means for separating provides the well-known and
expected results of “a more precise separation of selected components in a
mixture” and “optimiz[ation of] the desired level of separation.” (Ans. 5,

4 Bonne is incorporated by reference in the present Application. (Spec.
1:21-2:1.)
5 Examiner’s Answer mailed Jul. 14, 2009.
6 Appellants appear to have inadvertantly failed to include claim 7 as subject
to this ground of rejection. (Cf. App. Br. 3 (stating claims 1-20 and 22-30
are being appealed).)
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13.) The Examiner thus determines “it would have been obvious for one of
ordinary skill in the art to modify Bonne by multiplying the number of
separator heating elements for multiplied effect” (Ans. 8) in order “to gain
the advantages of either separating more selected constituents or to enable a
more precise separation of selected constituents” (Ans. 9). With respect to
the claim 1 requirement of “a pre-arranged pattern,” the Examiner finds “it
would have been obvious to one of ordinary skill in the art to plan how the
concentrator and separator heating elements are to be arranged in the sensor
prior to building it.” (Ans. 5.) With respect to claim 22, the Examiner finds
“Bonne teaches concentrator heating elements and teaches that ‘any number
of downstream [concentrator heating] elements may be heated . . . to
produce an even further increased concentration level at the output of the
concentrator’ (Column 3 lines 13-17).” (Ans. 5-6.) The Examiner
concludes “[i]t would have been obvious to one of ordinary skill in the art to
meet the number of heating elements required in claim 22 by modifying
Bonne and selecting the number of concentrator and separator [elements] in
order to obtain the desired concentration of the desired compound.” (Ans. 5-
6.)
Appellants contend the Examiner reversibly erred in rejecting claims
1 and 22, raising the following issues for our consideration7:
1. Is the Examiner’s proposed motivation for modifying Bonne to
include additional separator heating elements as recited in claims 1 and 22
based on improper hindsight reasoning (see App. Br. 7, ll. 7-10)?

7 Any remaining arguments in support of reversible error not discussed
herein have been fully addressed by the Examiner and are deemed
unpersuasive for the reasons stated in the Answer.
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2. Is the evidence of record insufficient to support the Examiner’s
determination that Bonne suggests the ratio control limitations recited in
claims 1 and 22 (see App. Br. 8, 10)?
3. Would the Examiner’s proposed modification of Bonne fail to
result in a pre-arranged pattern of concentrator heating elements and
separator heating elements as recited in claim 1 (see App. Br. 6)?
4. Does the prior art teach away from the Examiner’s proposed
modification of Bonne to include a corresponding number of concentrator
and separator heating elements as recited in claim 22 (App. Br. 10)?
We answer each of these questions in the negative for the reasons
explained in the Answer (Ans. 7-15), which we expand upon below.
Issue 1: Is the Examiner’s proposed motivation for modifying Bonne to
include additional separator heating elements as recited in claims 1 and 22
based on improper hindsight reasoning?

Bonne discloses a gas sensor which includes a concentrator having
two or more interactive elements spaced along and exposed to
[a] sample fluid stream. Each of the interactive elements
include[s] an interactive substance that adsorbs and desorbs
selected constituents of the sample fluid stream, depending on
the temperature of the interactive element. Two or more heater
elements are provided, with each heater element in thermal
communication with a corresponding interactive element.
A controller energizes the heater elements in a time
phased sequence . . . such that each of the corresponding
interactive elements become heated and desorb[s] selected
constituents into the sample fluid stream. . . . [A] large number,
N, of interactive elements may be used to achieve the desired
multiplication of concentration of constituent gases in the
concentration pulse by a factor N.

(Col. 1, l. 60-col. 2, l. 11.) The resulting concentration pulse is provided to a
separator which includes a separation heater to separate selected gas
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constituents into individual constituent components. (Col. 2, ll. 18-20; col.
8, ll. 34-37.) The separator heater is energized by the same heater control
block used to energize the heater elements of the concentrator. (Col. 7, ll.
13-14.) A detector is then used to detect the concentration of each
constituent that elutes from the separator. (Col. 2, ll. 20-22.) According to
Bonne, the “multiplication effect” provided by the concentrator heaters “can
significantly increase the concentration of the gas constituents at the
detector, thereby increasing the effective sensitivity of the detector.” (Col.
1, ll. 54-57.)
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
Appellants argue “the prior art does not recognize the number of
heater elements is a result-effective variable, therefore any optimization is
not a result-effective variable and not within the skill of one of ordinary skill
in the art.” (App. Br. 8.) Based on Bonne’s disclosure, we agree with the
Examiner’s determination that the ordinary artisan would reasonably expect
increasing the number of separator heaters (i.e., devices similar to the
concentrator heaters) to provide an improvement in separation similar to the
improvement in concentration achieved by increasing the number of
concentration heaters. Further, based on Bonne’s teaching that a desired
concentration of constituent gases can be readily achieved by adjusting the
number of concentrator heaters, it was reasonable for the Examiner to
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conclude that the optimum number of separator heaters could likewise be
determined through nothing more than routine experimentation.
Issue 2: Is the evidence of record insufficient to support the Examiner’s
determination that Bonne suggests the ratio control limitations recited in
claims 1 and 22?

Appellants concede Bonne discloses a “time phased operation of the
concentration heaters while the separation heater remains constantly on.”
(Rep. Br.8 3-4.) The Examiner finds this time-phased operation controls the
ratio of concentrator heating elements relative to separator heating elements,
because Bonne “chang[es] a ratio of active concentrator heater elements to
active separator heating elements from 1:1 to 0:1.” (Ans. 10.)
Appellants argue Bonne fails to disclose the claimed ratio control
limitations because Bonne only discloses a single separation heater and one
of ordinary skill in the art would have understood “the ratio control
mechanism claimed varies the ratio of multiple concentrator heaters to
multiple separation heaters.” (Rep. Br. 4.) This argument is unpersuasive
because it fails to address the Examiner’s reasoned determination (see
discussion of Issue 1 supra) that one of ordinary skill in the art would have
found it obvious to have modified Bonne’s sensor to include a plurality of
separation heating elements.
Appellants argue “[t]he Examiner's interpretation of ‘ratio control
mechanism’ is not consistent with the specification or with the interpretation
of one of ordinary skill in the art upon reading the specification.” (Rep. Br.
4.)

8 Reply Brief filed Sep. 14, 2009.
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The Specification description of the ratio control is limited to the
following: “The ratio of concentrator to separator heater elements may be
set or changed by a ratio control mechanism 490 connected to controller
130.” (Spec. 20:9-11; see also, Fig. 2.)
Appellants have not explained, nor is it apparent to us, how the
Examiner’s interpretation of the claim 1 and claim 22 ratio control
limitations as encompassing Bonne’s time-phased operation of concentrator
heating elements relative to separator heating elements, is inconsistent with
the description of ratio control in the Specification.
Issue 3: Would the Examiner’s proposed modification of Bonne fail to result
in a pre-arranged pattern of concentrator heating elements and separator
heating elements as recited in claim 1?

Appellants contend that Bonne’s sensor, even if modified to include
additional separator heating elements “would still lack the [claimed] pre-
arranged pattern of concentrator to separator heating elements.” (App. Br.
6.)
Interpreting the claim phrase “pre-arranged pattern” in light of the
claims and Specification, we see no basis for limiting the concentrator and
separator heating elements to a specific, defined pattern.9 Appellants have
not explained why the ordinary artisan would not have found it obvious to

9 We note the phrase “pre-arranged pattern” appears only in the following
passage from the Specification: “The micro gas analyzer may have heater
elements 40, 42, . . . , 44, 46 and 140, 142, . . . , 144, 146 fabricated via
repeated, sequentially spin-coated (or other deposition means) steps, so that
a pre-arranged pattern of concentrator and separator elements are coated
with different adsorber materials A, B, C, . . . (known in GC literature as
stationary phases).” (Spec. 19:18-23.)

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have pre-arranged Bonne’s concentrator and separator heaters in some type
of a pattern as determined by the Examiner (see Ans. 10).
Issue 4: Does the prior art teach away from the Examiner’s proposed
modification of Bonne to include a corresponding number of concentrator
and separator heating elements as recited in claim 22?

Appellants maintain Bonne “already teach[es] a structure that
provides a means of achieving improved concentration of the sample
constituents, resulting in improved detection,” which structure requires only
“a single separator heating element in order to achieve the desired
detection.” (App. Br. 10.) Appellants thus argue “there is no support for the
Examiner's assertion that one would have modified Bonne to have a
corresponding number of concentrator and separator heating elements to
achieve the desired concentration. Bonne appears to teach away from such a
modification.” (Id.)
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).
Appellants have not identified, nor do we find, disclosure in Bonne
which may reasonably be viewed as discouraging the ordinary artisan from
adding additional separator heaters. Moreover, as discussed above in
connection with Issue 1, Appellants have not persuaded us that the Examiner
erred in concluding the optimum number of separator heaters, e.g., a number
corresponding to the number of concentrator heaters, could readily be
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determined through nothing more than routine experimentation. (See Ans.
12-15.)
In sum, for the reasons discussed above and in the Answer, Appellants
have failed to persuade us of reversible error in the Examiner’s obviousness
determination. Accordingly, we sustain both grounds of rejection.
The Examiner’s decision to reject claims 1-10 and 22-30 is affirmed.

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

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