Ex Parte Breuer et al

Patent Trial and Appeal Board

Sep 16, 2013

11994056 (P.T.A.B. Sep. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KLAUS BREUER, ANDREW H. KUNG, ANDRAS MIKLOS,
JUDIT ANGSTER, and KLAUS SEDLBAUER
____________________

Appeal 2011-007356
Application 11/994,056
Technology Center 2800
____________________

Before DEBRA K. STEPHENS, ERIC B. CHEN, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 15-23, 27 and 31.
2
We have jurisdiction
under 35 U.S.C. § 6(b). An Oral Hearing was held August 20, 2013, a
transcript of which will be made part of the record.
We AFFIRM.

1
Real Party in Interest is Fraunhofer-Gesellschaft zur Foerderung der
angewandten Forschung e.V. of Muenchen, Germany.
2
Claims 1-14 have been cancelled and are not on appeal. Claims 24-26 and
28-30 have been conditionally allowed if rewritten in independent form
including all limitations of base claim 15 and any intervening claims. See
Advisory Action mailed March 29, 2011.
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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to a photo-acoustic detector, as shown in
FIG. 1 and FIG. 2, in which a sufficient sound pressure is present at an
acoustic sensor. See Appellants’ Spec., p. 5, ll. 12-15.
FIG. 1 and FIG. 2 are reproduced below:

FIGS. 1-2 show Appellants’ disclosed photo-acoustic detector.
As shown in FIGS. 1-2, the photo-acoustic detector is provided with
two optical mirrors 2, two acoustic mirrors 3, 4, and a microphone 5 located
on an axis of symmetry of the acoustic mirrors 3, 4. Id., p. 10, ll. 20-33.
Light beam 1 enters into a measuring area and passes through the measuring
area several times, via optical mirrors 2. The first acoustic mirror 3 is a
square flat mirror with a thickness of 8 mm and a side length of 100 mm.
The second acoustic mirror 4 is concaved in the direction towards the
measuring area. Id., p 11, ll. 1-2. An acoustic sensor 5 (see FIG. 3) is also
arranged to sense the acoustic energy produced by the excitation of light.
Id., original claim 1.
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Claims on Appeal
Claim 15 is the only independent claim on appeal. Claim 15 is
illustrative of Appellants’ invention, and is reproduced below with disputed
limitations emphasized:

15. A photoacoustic detector comprising:
an acoustically open measuring area not completely
surrounded by a housing;
an arrangement to introduce excitation light into the
measuring area so that the excitation light can be absorbed by
absorbent materials located in the measuring area for the
production of acoustic energy;
at least one acoustic sensor;
an arrangement for achieving a local maximum of
sound pressure at at least one position;
the at least one acoustic sensor is arranged in the
vicinity of the at least one position at which the local maximum
of the sound pressure produced is present or can be produced.

Evidence Considered
Zanzottera EP 0464902 A1 Jan. 8, 1992
Naegele WO 2004/008113 A1 Jan. 22, 2004

Examiner’s Rejections
(1) Claims 15, 17-23, and 27 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Zanzottera. Ans. 4-6.
(2) Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zanzottera and Naegele. Ans. 6.
(3) Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zanzottera. Ans. 7.

Appeal 2011-007356
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Issues on Appeal
Based on Appellants’ arguments and the findings of the Examiner, the
dispositive issues on appeal are:
(1) Whether the Examiner erred in rejecting claims 15, 17-23, and
27 under 35 U.S.C. § 102(b) as being anticipated by Zanzottera? In
particular, the issue turns on whether Zanzottera discloses the above
disputed limitations of Appellants’ independent claim 15.
(2) Whether the Examiner erred in rejecting claim 16 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Zanzottera
and Naegele? In particular, the issue turns on whether the Examiner
articulated some “reasoning with some rational underpinning to support the
legal conclusion of obviousness” based on Zanzottera and Naegele. In re
Kahn, 441 F.3d 997, 988 (Fed. Cir. 2006).

ANALYSIS
3

We have thoroughly reviewed each of Appellants’ arguments that the
Examiner has erred.
We disagree with Appellants’ conclusion. We find that the Examiner
has provided a comprehensive response, supported by a preponderance of
evidence, to each of the contentions raised by Appellants. We highlight and
address specific findings and arguments for emphasis as follows.

3
Our decision refers to Appellants’ Appeal Brief filed July 12, 2010 (“App.
Br.”); Reply Brief filed January 3, 2011 (“Reply Br.”); Examiner’s Answer
mailed November 2, 2010 (“Ans.”); and the original Specification filed
December 27, 2007 (“Spec.”).
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§ 102(b) Rejection of Claims 15, 17-23, and 27
The Examiner finds Zanzottera discloses a photoacoustic detector 10,
as shown in FIG. 2 and FIG. 3, including all the elements of Appellants’
independent claim 15.
FIG. 2 and FIG. 3 of Zanzottera are reproduced below:

FIGS. 2-3 of Zanzottera show a sectional view of photoacoustic
detector 10.
As shown in FIGS. 2-3, the photoacoustic detector 10 of Zanzottera is
provided with a body 11 and a cavity 13 formed within the body 11 along
with two holes 18 and 19 which open into the cavity 12 and are connected to
two respective external tubes for the entry and exit of the fluid to be
analyzed. Ans. 4 (citing Zanzottera, col. 3, ll. 20-23; col. 5, ll. 35-40; and
FIG. 2).
In support of the findings of Zanzottera, the Examiner construes the
disputed phrase: “an acoustically open measuring area not completely
surrounded by a housing” as recited in Appellants’ independent claim 15 as
encompassing the cavity 12 and the holes 18 and 19, as disclosed by
Zanzottera. Id.
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Appellants dispute the Examiner’s claim construction and contend
that Zanzottera does not disclose “an acoustically open measuring area not
completely surrounded by a housing,” as recited in Appellants’ independent
claim 15. App. Br. 8-14. Specifically, Appellants acknowledge that fluid of
Zanzottera flows from inlet 18 into cavity 12 for analysis and flows out
through outlet 19, but argue that Appellants’ claimed disputed limitation has
a specific meaning defined by Appellants’ Specification, and, as such,
deserves a narrower claim construction which would distinguish over
Zanzottera. App. Br. 9-14; Reply Br. 2-7. In particular, Appellants argue:
(1) the term “acoustically open,” as recited in
Appellant’s claims, is described in the original disclosure, see
paragraph [0014] of the Substitute Specification. In particular,
Appellant has clearly set for that

[a] photoacoustic detector is provided with an
acoustically open measuring area not completely
surrounded by a housing. In [the] follow[s] . . . a
measuring area is to be understood as an area in which
the sound pressure produced by the absorption can
escape from the inlets and outlets, of relatively large
embodiment for the sample air
(Specification, ¶ [0014] [emphasis added].

Thus … it is not merely the existence of inlets and outlets
connected to a measuring area that is determinative of whether
a measuring area is acoustically open, as generally assumed by
the Examiner, but whether the produced sound pressure can
escape through the inlets and outlets.

(App. Br. 9-10) (emphasis added); and
(2) in order to be an acoustically open measuring area
so that the sound pressure produced by the absorption can
escape from the inlets and outlets, the inlets and outlets must be
specially sized in order for the acoustic wave to escape through
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them. That is, Appellant submits it should be understood that
the frequency of the sound wave generated in a photoacoustic
cell, such as ZANZOTTERA, is equal to the modulation
frequency of the excitation light. As is known from optics, the
rules of geometrical acoustics are only applicable if the
wavelength is much smaller than the geometrical dimensions.
As the wavelength of a sound wave is the acoustic velocity (i.e.,
343 m/sec in air) divided by the frequency of the sound wave
(noted above as equal to the modulation frequency), the holes in
the cavity must be dimensioned to be much greater than the
wavelength of the sound wave if the wave is to escape through
the holes. Of course, as ZANZOTTERA fails to provide any
suggestion of the wave escaping through the openings, and in
fact, teaches against such an arrangement, as noted above, this
document fails to even arguably disclose an acoustically open
measuring area, as recited in at least independent claim 15.

(App. Br. 13) (emphasis added).
However, Appellants’ arguments are misplaced. At the outset, we
note that claims are given their broadest reasonable construction consistent
with the specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969);
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004).
Claim terms are generally “given their ordinary and customary meaning.”
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
(internal citations omitted). However, Appellants are entitled to be their
own lexicographer and set forth a definition of the term that is different from
its ordinary and customary meaning(s). See In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994) (inventor may define specific terms used to describe
invention, but must do so “with reasonable clarity, deliberateness, and
precision” and, if done, must “set out his uncommon definition in some
manner within the patent disclosure’ so as to give one of ordinary skill in the
art notice of the change” in meaning) (quoting Intellicall, Inc. v.
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Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)). Where an
explicit definition is provided by Appellants for a term, that definition will
control interpretation of the term as it is used in the claim. Toro Co. v. White
Consolidated Industries Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999)
(meaning of words used in a claim is not construed in a “lexicographic
vacuum, but in the context of the specification and drawings”).
In the context of Appellants’ Specification, and contrary to
Appellants’ contention, the term “acoustically open,” as recited in
Appellants’ independent claim 15 is not defined or described in Appellants’
original disclosure. Instead, Appellants’ original disclosure only defines a
“measuring area” as:
an area in which the sound pressure produced by
the absorption can escape from the inlets and
outlets, of relatively large embodiment, for the
sample air.

Appellants’ Substitute Specification, ¶ [0014] (filed May 2, 2008).
Based on the Examiner’s findings regarding Zanzottera, which are
undisputed, and Appellants’ explanations regarding Zanzottera, we do not
find the Examiner’s claim construction regarding “an acoustically open
measuring area not completely surrounded by a housing” as recited in
Appellants’ independent claim 15, unreasonable, unsupported or inconsistent
with Appellants’ Specification.
Second, Zanzottera describes the exit holes being structured to
“prevent[s] a part of the acoustic wave reflected by said wall or walls which
concentrate the acoustic wave from being absorbed by said holes and
dispersing to cause a reduction in the cell sensitivity.” Col. 4, ll. 53-57
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(emphasis added). Therefore, Zanzottera discloses the remaining part of the
acoustic wave reflected by the wall or walls, will escape.
For the reasons set forth above, we do not find error in the Examiner’s
disputed claim construction. Simply, Appellants have not persuaded us of
error in the Examiner’s anticipation rejection of claims 15, 17-23, and 27.
Accordingly, we will sustain the Examiner’s anticipation rejection of claims
15, 17-23, and 27.

§ 103(a) Rejection of Claim 16
Appellants acknowledge that Naegele, as a secondary reference,
discloses optically reflecting elements arranged so that the excitation light
can pass several times through the measuring area. Ans. 6 (citing Naegele,
p. 21, ll. 11-27; and FIG. 3). However, Appellants contend that:

the Examiner has not identified any articulated reasoning in the
applied art as to why it would have been obvious to one
ordinarily skilled in the art to modify ZANZOTTERA to utilize
multiple reflections of the light beam.

App. Br. 20.
We remain unpersuaded. We find that the combination of Zanzottera
and Naegele involves the simple substitution of reflecting elements to yield
predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). We agree with the Examiner that these teachings, all in the context
of Appellants’ invention, are properly combinable.
Moreover, and contrary to Appellants’ contention, the Examiner has
articulated some “reasoning with rational underpinning to support the legal
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conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
In particular, we agree with the Examiner’s legal conclusion that:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to modify Zanzottera's
detector so as to include optically reflecting elements arranged
so that the excitation light can pass several times through the
measuring area, as taught by Naegele, because this would
provide a high detector response with an improved measuring
accuracy, as suggested by Naegele on page 21, lines 11-27.

Ans. 6.
Appellants have not presented sufficient evidence or argument that
combining Zanzottera and Naegele would have been “uniquely challenging
or difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
For the reasons set forth above, we also sustain the Examiner’s
obviousness rejection of dependent claim 16.

§ 103(a) Rejection of Claim 31
With respect to dependent claim 31, Appellants present no separate
patentability arguments. Instead, Appellants merely repeat the arguments
that are set forth in relation to independent claim 15. For the same reasons
discussed in connection with Appellants’ independent claim 15, we also
sustain the Examiner’s obviousness rejection of claim 31. We further agree
with the Examiner’s conclusion that:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to modulate Zanzottera's light
at a frequency that belongs to the range of 100 and 500 kHz,
since it has been held that where the general conditions of a
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claim are disclosed in the prior art, discovering the optimum or
workable range involves only routine skill in the art. In re Aller,
105 USPQ 233.

Ans. 17.

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting: (1) claims 15, 17-23, and 27 under 35 U.S.C. § 102(b) as being
anticipated by Zanzottera; (2) claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over Zanzottera and Naegele; and (3) claim 31 under 35 U.S.C.
§ 103(a) as being unpatentable over Zanzottera.

DECISION
As such, we AFFIRM the Examiner’s final rejections of claims 15-23,
27, and 31.
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)(iv).

AFFIRMED

ELD