Ex Parte Buhl et al

Patent Trial and Appeal Board

Apr 7, 2014

11975256 (P.T.A.B. Apr. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HANS-JOACHIM BUHL, DANIEL KASSELMANN,
HENRY BOEHLERT, LEON KOPELEV, and ABDUL WARRES
____________________

Appeal 2011-012627
Application 11/975,256
Technology Center 2100
____________________

Before HUBERT C. LORIN, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012627
Application 11/975,256

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-8, 10, 11, and 13-24. We have jurisdiction under
35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

THE CLAIMED INVENTION
Appellants’ claimed invention “relates to the management of
measurement data” (Spec., para. [0001]).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A device for managing a plurality of measurement
data, each measurement data representing a value of a physical
parameter, the device comprising
a file database configured for storing the plurality of
measurement data in the form of data files each of which being
assigned to a specific measurement;
a relational database configured for storing at least a part
of the plurality of measurement data in the form of relational
data being structured in accordance with individual
measurement parameters assigned to different measurements;
a processing unit configured for generating the relational
data from the data files, wherein at least a part of the
measurement data is stored only in the file database and not in
the relational database, and reference is made in the relational

1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
April 4, 2011) and Reply Brief (“Reply Br.,” filed August 1, 2011), and the
Examiner’s Answer (“Ans.,” mailed June 2, 2011).
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Application 11/975,256

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database to at least a part of the part of the measurement data
stored only in the file database.

THE REJECTIONS
The following rejections are before us for review:2
Claims 1-8, 10, 11, 13-15, 17, 18, and 22-24 are rejected under
35 U.S.C. § 102(b) as anticipated by Nguyen et al., Molecular Spectrometry
Data Interchange Applications for NIST’s SpectroML, Journal of Laboratory
Automation, December 2004 (hereinafter “Nguyen”).
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nguyen and Kasselmann (EP001672872 A1, pub. Jun. 21, 2006).

2 In setting forth the Grounds of Rejection in the Answer, the Examiner
includes a rejection of dependent claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Nguyen and Anschutz (US 2006/0089954 A1,
pub. Apr. 27, 2006). Appellants canceled claim 9 in an Amendment After
Final Rejection filed December 3, 2010, and incorporated the features of the
dependent claim into independent claims 1 and 23. The Advisory Action
mailed December 14, 2010 indicates that the amendment will be entered for
purposes of appeal, and that claim 9 is withdrawn from consideration.
The rejection of claim 9 is not identified, in the Answer, as having been
withdrawn. However, the Examiner “has no comment on the appellant’s
[sic] statement of the grounds of rejection to be reviewed on appeal,” which
does not include the rejection of claim 9, and “no comment on the copy of
the appealed claims contained in the Appendix to the appellant’s [sic] brief,”
which presents claims 1 and 23, as amended (Ans. 4). The Examiner also
does not identify claim 9 (or claim 12, which also was canceled in the
December 3, 2010 Amendment) as being among the pending claims: “The
following is a list of claims that are rejected and pending in the application:
1-8, 10-11, and 13-24” (Ans. 3).
Therefore, we will treat the Examiner’s inclusion of the rejection of claim 9
in the “Grounds of Rejection” as inadvertent error, and will treat the
rejection of claim 9 under 35 U.S.C. § 103(a) as moot.
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Claims 19-21 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nguyen and Banks (US 2008/0033960 A1, pub. Feb. 7, 2008).

ANALYSIS
Anticipation
Independent claims 1 and 23 and dependent claims 2-8, 10, 11, 13-15, 17,
18, 22, and 24
Claim 1 recites a device for managing a plurality of measurement
data, and recites that the device comprises, inter alia,
a processing unit configured for generating the relational data
from the data files, wherein at least a part of the measurement
data is stored only in the file database and not in the relational
database, and reference is made in the relational database to at
least a part of the part of the measurement data stored only in
the file database.

Claim 23 recites a corresponding method for managing a plurality of
measurement data, and similarly recites that “at least a part of the
measurement data is stored only in the file database and not in the relational
database, and reference is made in the relational database to at least a part of
the part of the measurement data stored only in the file database.”
Claims 1 and 23 are rejected under 35 U.S.C. § 102(b) as anticipated
by Nguyen. Yet the Examiner does not contend that Nguyen discloses that
“at least a part of the measurement data is stored only in the file database
and not in the relational database, and reference is made in the relational
database to at least a part of the part of the measurement data stored only in
the file database,” as recited in claims 1 and 23. Instead, the Examiner cites
paragraph [0038] of Anschutz as teaching this feature (Ans. 20 and 25-26).
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“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987) (emphasis added). The absence of any claimed
element from that single prior art reference, thus, negates anticipation.
See, e.g., Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed.
Cir. 1986) (citations omitted).
Nguyen, by the Examiner’s own admission, does not teach each and
every limitation, as set forth in claims 1 and 23. Therefore, Nguyen cannot
properly be found to anticipate these claims.
Accordingly, we will not sustain the Examiner’s rejection of claims 1
and 23 under 35 U.S.C. § 102(b). For the same reasons, we also will not
sustain the rejection of claims 2-8, 10, 11, 13-15, 17, 18, and 22, and
claim 24, which ultimately depend from claims 1 and 23, respectively.3
Obviousness
Dependent claims 16 and 19-21
Claims 16 and 19-21 depend, directly or indirectly, from claim 1. The
Examiner does not rely on Kasselmann or Banks to cure the deficiency of
Nguyen, as described above with respect to claim 1.
Therefore, we will not sustain the Examiner’s rejections of claims 16
and 19-21 under 35 U.S.C. § 103(a).

3 Because the issue is not properly before us, we decline Appellants’ request
that we consider the propriety of a rejection of claims 1-8, 10, 11, 13-15, 17,
18, and 22-24 under 35 U.S.C. § 103(a) as unpatentable over Nguyen and
Anschutz (see App. Br. 4).

Appeal 2011-012627
Application 11/975,256

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DECISION
The Examiner’s rejection of claims 1-8, 10, 11, 13-15, 17, 18, and
22-24 under 35 U.S.C. § 102(b) is reversed.
The Examiner’s rejections of claims 16 and 19-21 under 35 U.S.C.
§ 103(a) are reversed.

REVERSED

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