Ex Parte Brooks

Board of Patent Appeals and Interferences

Jan 7, 2010

11617506 (B.P.A.I. Jan. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES E. BROOKS
____________________

Appeal 2009-006347
Application 11/617,506
Technology Center 3600
____________________

Decided: January 7, 2010
____________________

Before JENNIFER D. BAHR, LINDA E. HORNER and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James E. Brooks (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-5. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is directed to an apparatus for
determining the depth of a cavity in a wellbore (Spec. 7:17-18).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. An apparatus for measuring depth of a
cavity in a wellbore, comprising:
a first transponder to selectively emit an
acoustic signal at a frequency that is varied and at
a predetermined intensity, the first transponder
being arranged on one side of the cavity; and
a second transponder operatively connected
to the first transponder, the second transponder
being able to detect a substantial attenuation in the
acoustic signal emitted by the first transponder as
the frequency is varied, the second transponder
being arranged on the other side of the cavity
opposite the first transponder.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Katahara US 5,218,573 Jun. 8, 1993

The following rejection by the Examiner is before us for review:
Claims 1-5 are rejected under 35 U.S.C. § 102(b) as being anticipated
by Katahara.

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ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that Katahara describes a first transponder selectively emitting an acoustic
signal at a frequency that is varied and a second transponder operatively
connected to the first transponder to be able to detect a substantial
attenuation in the acoustic signal as the frequency is varied, as called for in
claim 1 (App. Br. 4); (2) whether the Examiner erred in finding that
Katahara describes first and second transponders comprising piezoelectric
transducers, as called for in claims 2 and 3 (App. Br. 7): and (3) whether the
Examiner erred in finding that Katahara describes “a programmable logic
controller operatively connected to the first transponder or second
transponder,” as called for in claim 4 (App. Br. 7).

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
Appellant’s Invention
1. Appellant’s Specification does not provide a definition of “a
programmable logic controller (PLC).” (Spec. 12:10-Spec. 13:3).
The Examiner’s Findings
2. The Examiner finds that Katahara describes an apparatus for
measuring a depth of a cavity 20, 22, 24 in a wellbore, the
apparatus comprises a first transponder 40 to selectively emit a
signal at a frequency that is varied and at a predetermined
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intensity, the first transponder 40 being arranged on one side of the
cavity, a second transponder 42 operatively connected to the first
transponder 40, the second transponder 42 being able to detect a
substantial attenuation in the signal emitted by the first transponder
40 as the frequency is varied, the second transponder being
arranged on the other side of the cavity opposite the first
transponder 40, as called for in claim 1 (Ans. 4).
3. The Examiner finds that (a) Katahara describes that the transmitter
40 generates a broad frequency band by sweeping or spike pulsing
type signal generation, (b) sweeping frequencies to generate a
broad frequency band varies the frequencies as the transmitter
sweeps through the frequency range, and (c) because the signals
have to have certain intensity, the intensity generated has a
predetermined intensity. (Ans. 6).
4. The Examiner finds that Katahara’s second transponder 42 detects
the amplitude or energy of the received signals, and therefore is
able to detect a severe attenuation (Ans. 7).
5. The Examiner finds that Katahara states that the transponders 40,
42 can be of the type described in U.S. Patent 4,949,316, that is, a
piezoelectric transducer (Ans. 4, 5, 7).
6. The Examiner finds in Katahara that control apparatus 36,
frequency spectrum analyzer 38, and the computer (CPU) of figure
1 are considered to be a programmable logic controller (Ans. 5, 8).
The Board’s Findings
7. Katahara describes that the signal transmitter 40 is operable to
generate acoustic signals of a relatively broad frequency band (col.
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3, ll. 7-10), acoustic energy is generated at a selected frequency
range by the transmitter 40 while the receiver 42 is operable to
receive reflected signals from the perforations (col. 3, ll. 17-20),
and the frequencies of interest range from a few hundred hertz up
to a few kilohertz (col. 4, ll. 58-60).
8. Katahara describes that “[t]he receiver 42 will detect the ‘ringing’
of any resonant frequencies excited in a perforation such as the
perforations 20, 22 and 24. The amplitude of the ‘ringing’ will
reach a maximum when the perforations such as, for example, the
perforation 22 are disposed at a midpoint . . . between the
transmitter 40 and the receiver 42.” (col. 3, ll. 20-26).
9. Katahara describes (a) a control apparatus 36 for controlling the
generation and the receipt of acoustic signals, (b) the control
apparatus 36 may also be operably connected to a frequency
spectrum analyzer 38, and (c) the frequency spectrum analyzer 38
provides for generating and storing data indicating the frequency
characteristics of signals as a function of signal intensity or power
(col. 2, ll. 58-67); and (d) a CPU connected to the spectrum
analyzer in (fig. 1).
10. Katahara does not specifically describe that the transmitter 40 and
the receiver 42 are piezoelectric transducers. Katahara describes
that “[t]he transmitter 40 and receiver 42 may be similar to the type
described in my U.S. Pat. No. 4,949,316 issued . . .” (col. 3, ll. 4-
7).
11. Appellant has not challenged the Examiner’s finding that U.S.
Patent 4,949,316 discloses piezoelectric transducers (see Fact 5).
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12. The ordinary meaning of the word “programmable logic controller
(PLC)” includes “a digital computer used for automation of
electromechanical processes.” WIKIPEDIA, THE FREE
ENCYCLOPEDIA
(http://en.wikipedia.org/wiki/programmable_logic_controller) (as
viewed, November 11, 2009).
13. The ordinary meaning of the word “attenuate” includes “to reduce
(the amplitude of an electrical signal) with little or no distortion.”
THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH
LANGUAGE (4th ed. 2000).
14. Additional findings as necessary appear in the Analysis portion of
this opinion.

PRINCIPLES OF LAW
Appellant’s Burden
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). See also Ex parte Yamaguchi, 88 USPQ2d 1606, 1614 (BPAI 2008)
[burden on appeal] (on appeal, applicant must show examiner erred); Ex
parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509,
1519 (BPAI 2007).
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Incorporation By Reference and Anticipation
“Material not explicitly contained in the single, prior art document
may still be considered for purposes of anticipation if that material is
incorporated by reference into the document.” See Advanced Display
Systems, Inc., v. Kent State University, 212 F.3d 1272, 1282 (Fed. Cir.
2000).
To incorporate by reference, the host document must cite the material
“in a manner that makes clear that it is effectively part of the host document
as if it were explicitly contained therein. . . . [T]he host document must
identify with detailed particularity what specific material it incorporates and
clearly indicate where that material is found in the various documents.”
Id.
“Whether and to what extent material has been incorporated by
reference into a host document is a question of law.” Id. at 1283.
“Moreover, no necessary contradiction exists given that incorporation
by reference is a question of law while anticipation is a question of fact.
Anticipation, put simply, requires that every element of the claimed
invention was previously ‘described in a single reference.’” Id.

Claim Construction
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). See also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
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ANALYSIS
Claim 1
Appellant contends that Katahara does not describe a first transponder
selectively emitting an acoustic signal at a frequency that is varied and a
second transponder operatively connected to the first transponder to detect a
substantial attenuation in the acoustic signal as the frequency is varied, as
called for in claim 1 (App. Br. 4).
The Examiner found that Katahara describes a first transponder 40 to
selectively emit a signal at a frequency that is varied and at a predetermined
intensity, the first transponder 40 being arranged on one side of the cavity, a
second transponder 42 operatively connected to the first transponder 40, the
second transponder 42 being able to detect a substantial attenuation in the
signal emitted by the first transponder 40 as the frequency is varied, as
called for in claim 1 (Fact 2). The Examiner further found that (a) Katahara
describes that the transmitter 40 generates a broad frequency band by
sweeping or spike pulsing type signal generation, (b) sweeping frequencies
to generate a broad frequency band varies the frequencies as the transmitter
sweeps through the frequency range, and (c) because the signals have to
have certain intensity, the intensity generated has a predetermined intensity.
(Fact 3). The Examiner still further found that Katahara’s second
transponder 42 detects the amplitude or energy of the received signals, and
therefore is able to detect a severe attenuation (Fact 4).
Katahara’s transmitter 40 is operable to generate acoustic signals of a
relatively broad frequency band, wherein the acoustic energy is generated at
a selected frequency range (Fact 7). Thus, the frequencies emitted are not
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constant frequencies, but frequencies that span a band, that is, frequencies
that vary across a band.
Therefore, we find that Katahara’s transmitter 40 emits an acoustic
signal at a frequency that is varied, as called for in claim 1.
Katahara further describes that “[t]he receiver 42 will detect the
‘ringing’ of any resonant frequencies excited in a perforation such as
perforations 20, 22 and 24. The amplitude of the ‘ringing’ will reach a
maximum when the perforations such as, for example, the perforation 22 are
disposed at a midpoint . . . between the transmitter 40 and the receiver 42.”
(Fact 8). Since the receiver 42 detects any frequency excited in the
perforations 20, 22, 24 and since transmitter 40 generates frequencies that
are varied, we find that the receiver 42 detects frequencies that are varied.
We interpret the phrase “[t]he amplitude of the ‘ringing’ will reach a
maximum” to mean that the amplitude varies from one amplitude up to a
maximum amplitude.
Claim 1 calls for, inter alia, “the second transponder being able to
detect a substantial attenuation in the acoustic signal emitted by the first
transponder as the frequency is varied.” (emphasis added).
Therefore, the second transponder does not have to detect a
substantial attenuation in the emitted acoustic signal; it just has to be able to
detect a substantial attenuation in the emitted acoustic signal.
Since the transmitter 42 detects varied frequencies having varied
amplitude, the transmitter 42 should be able to detect varied frequencies that
are attenuated, that is, have reduced amplitude (Fact 13).
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Therefore, we find that in Katahara, receiver 42 is operatively
connected to transmitter 40 to be able to detect a substantial attenuation in
the acoustic signal as the frequency is varied, as called for in claim 1.
Accordingly, we conclude that Appellant has not demonstrated that
the Examiner erred in rejecting claim 1 as being anticipated by Katahara.

Claims 2 and 3
Claim 2 calls for “the first transponder comprises a piezoelectric
transducer operating in a transmit mode.”
Claim 3 calls for “the second transponder comprises a piezoelectric
transducer operating in a receive mode.”
The Examiner found that while Katahara does not specifically
describe that the transmitter 40 and the receiver 42 are piezoelectric
transducers, Katahara describes that the transmitter 40 and receiver 42 can
be of the type described in the U.S. Patent 4,949,316 (hereinafter '316
patent), that is, a piezoelectric transducer (Fact 5, see also Fact 10).
Appellant has not challenged the Examiner’s finding that the '316
patent discloses piezoelectric transducers (Fact 11). Appellant, however,
contends that the claim rejection is not based on the '316 patent (App. Br. 7).
Appellant further contends that Katahara does not describe the first and
second transponders comprising piezoelectric transducers, as called for in
claims 2 and 3 (App. Br. 7).
At the outset, we must decide whether the '316 patent’s description of
a piezoelectric transmitter and receiver has been incorporated by reference
into Katahara. Claims 1-5 have been rejected under 35 U.S.C. § 102(b) as
being anticipated by Katahara. Therefore, incorporation by reference comes
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into play in the anticipation rejection. Accordingly, we must ascertain what
material in addition to Katahara (host document) effectively constitutes part
of Katahara.
“Material not explicitly contained in the single, prior art document
may still be considered for purposes of anticipation if that material is
incorporated by reference into the document.” See Advanced Display
Systems, Inc., v. Kent State University, 212 F.3d 1272, 1282 (Fed. Cir.
2000).
To incorporate by reference, the host document must cite the material
“in a manner that makes clear that it is effectively part of the host document
as if it were explicitly contained therein. . . . [T]he host document must
identify with detailed particularity what specific material it incorporates and
clearly indicate where that material is found in the various documents.”
Id.
We find that the wording “[t]he transmitter 40 and receiver 42 may be
similar to the type described in my U.S. Pat. No. 4,949,316 issued . . .” set
forth in column 3, lines 4-7 of Katahara (see Fact 10) incorporates by
reference the type of transmitter and receiver described in the '316 patent. A
person having ordinary skill in the art would find that the wording “the
transmitter 40 and receiver 42 may be similar to the type” to be a clear,
detailed citation of what is being incorporated and where it can be found,
that is, the type of transmitter and receiver described in the described in '316
patent. We find that the wording also makes it clear that it is effectively part
of Katahara as if it were explicitly contained therein.
Therefore, Katahara describes a first and a second transponder
comprising a piezoelectric transducer, as called for in claims 2 and 3.
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Accordingly, we conclude that Appellant has not demonstrated that
the Examiner erred in rejecting claims 2 and 3 as being anticipated by
Katahara.

Claims 4 and 5
Appellant does not present any separate arguments for the
patentability of dependent claim 5 apart from claim 4 from which it depends.
Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2007), dependent
claim 5 stands or falls with claim 4.
Claim 4 calls for, inter alia, “a programmable logic controller
operatively connected to the first transponder or second transponder.”
Appellant contends that Katahara does not describe “a programmable
logic controller operatively connected to the first transponder or second
transponder,” as called for in claim 4 (App. Br. 7). Appellant further
contends that simply stating that combining a computer and a controller
would somehow provide a PLC (programmable logic controller) is
insufficient to support s rejection of claims 4-5 (Reply Br. 6).
Appellant’s Specification does not provide a definition of “a
programmable logic controller (PLC).” (Fact 1). Therefore, we must give
the term “programmable logic controller its broadest reasonable
construction.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) (“[T]he PTO must give claims their broadest reasonable
construction consistent with the specification . . . Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.”)
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The ordinary meaning of the word “programmable logic controller
(PLC)” includes “a digital computer used for automation of
electromechanical processes.” (Fact 12).
The Examiner found in Katahara that control apparatus 36, frequency
spectrum analyzer 38 and the computer (CPU) of figure 1 are considered to
be a programmable logic controller (Fact 6).
Katahara describes (a) a control apparatus 36 for controlling the
generation and the receipt of acoustic signals, (b) the control apparatus 36
may also be operably connected to a frequency spectrum analyzer 38, and
(c) the frequency spectrum analyzer 38 provides for generating and storing
data indicating the frequency characteristics of signals as a function of signal
intensity or power (col. 2, ll. 58-68); and (d) a CPU connected to the
spectrum analyzer in (fig. 1) (Fact 9).
We find that in Katahara, the controller 36, the spectrum analyzer 38
and the CPU (fig. 1) are all operatively connected to the first and second
transponders (see Katahara, fig. 1) and they collectively control (automate)
the electromechanical processes. Therefore, we find that the combination of
Katahara’s controller 36, spectrum analyzer 38 and CPU (fig. 1) is a
programmable logic controller (PLC) as called for in claim 4.
Accordingly, we conclude that Appellant has not demonstrated that
the Examiner erred in rejecting claim 4 as being anticipated by Katahara.
Appellant has likewise not demonstrated error in the Examiner’s rejection of
claim 5, which falls with claim 4.

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CONCLUSIONS
Appellant has not established that the Examiner erred in finding that
Katahara describes a first transponder selectively emitting an acoustic signal
at a frequency that is varied and a second transponder operatively connected
to the first transponder to be able to detect a substantial attenuation in the
acoustic signal as the frequency is varied, as called for in claim 1.
Appellant has not established that the Examiner erred in finding that
Katahara describes first and second transponders comprising piezoelectric
transducers, as called for in claims 2 and 3.
Appellant has not established that the Examiner erred in finding that
Katahara describes “a programmable logic controller operatively connected
to the first transponder or second transponder,” as called for in claim 4.

DECISION
The decision of the Examiner to reject claims 1-5 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)(iv) (2007).

AFFIRMED

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