Ex Parte Chou

Board of Patent Appeals and Interferences

Dec 23, 2008

10628991 (B.P.A.I. Dec. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAU-SONG CHOU
____________

Appeal 2008-3877
Application 10/628,991
Technology Center 1700
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Decided: December 23, 2008
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Before TERRY J. OWENS, THOMAS A. WALTZ, and
JEFFERY T. SMITH, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134 from the Examiner’s
rejections of pending claims 1-3, 5-12, 14, and 21-26 in the Office Action,
dated November 3, 2006. This Board has jurisdiction under 35 U.S.C. §
6(b). We AFFIRM.
Appeal 2008-3877
Application 10/628,991

The invention of the present application is directed to a system for
detecting and analyzing hazardous materials in an aerosol cloud. Claim 1 is
illustrative and reproduced below:
1. A system for detecting and analyzing
chemical and/or biological aerosols in a sample
cloud in the air, said system comprising:
a radiation source, said radiation source directing a
radiation beam towards the cloud, said radiation
beam heating the cloud to raise the temperature of
the cloud relative to its background; and
a spectrum analysis device responsive to emissions
from the cloud, said spectrum analysis device
generating an emission spectrum of the chemical
and/or biological aerosols in the cloud from the
emissions.
The Examiner relies on the following prior art as evidence of
unpatentability of the rejected claims:
Bernstein 4,496,839 Jan. 29, 1985
Carlon 4,568,190 Feb. 4, 1986
Ho 4,710,887 Dec. 1, 1987
Taylor 5,373,160 Dec. 13, 1994
Johnson 2004/0211900 Oct. 28, 2004

Childers, “Multi-pollutant concentration measurements around a
concentrated swine production facility using open-path FTIR spectrometry”,
35 Atmospheric Environment 1923-36 (2001)

Samuels, “Infrared spectral study of aerosolized ovabumin and aerosolized
Bacillus subtillis and Bacillus thuringiensis spores”, Proceedings of Fifth
Joint Conference on Standoff Detection for Chemical and Biological
Defense (2001).

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Application 10/628,991

The Examiner maintains the following rejections:1
1. Claims 1-3, 5-12, and 21-23 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Bernstein.
2. Claims 1-3, 5-7, and 21-23 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Taylor.
3. Claims 1-3, 5-7, and 21-23 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Childers, as evidenced by Taylor.
4. Claims 1-3, 5, and 21-23 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Johnson, as evidenced by Taylor.
5. Claims 8, 9, 11, 12, 14, and 24-26 stand rejected under 35
U.S.C. § 103(a) as obvious over Bernstein in view of Samuels.
6. Claim 10 stands rejected under 35 U.S.C. § 103(a) as obvious
over Samuels and Bernstein in view of Ho or Carlon.
BACKGROUND OF THE INVENTION
The invention relates to a system for detecting and analyzing chemical
and biological aerosols in a cloud, where the system comprises a radiation
source and an infrared spectrometer (Spec. [0001]). The radiation source,
preferably an infrared laser, radiates a sample cloud and heats the materials
in the cloud, raising their temperature against the background (Spec. [0010]).
The heated materials emit electromagnetic radiation, which is detected by a

1 The following rejections from the Final Office Action were withdrawn in
the Examiner’s Answer (Ans. 2):
• Claims 1-3, 5-12, 14, and 21-26 under 35 U.S.C. §112, 2nd paragraph,
• Claims 1-3, 5-7, and 21-23 under 35 U.S.C. § 103(a) over Theriault,
and
• Claims 8-9, 11-12, 14, and 24-26 under 35 U.S.C. § 103(a) over
Samuels in view of Bernstein.
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device, such as a Fourier Transform Infrared (“FTIR”) spectrophotometer.
In analyzing the emitted electromagnetic radiation, a wavelength is selected
in resonance with the absorption lines of a suspected molecule. The
emission intensity and spectrum of the emitted radiation indicates the
presence of the suspected molecule (Spec. [0011]).

FINDINGS OF FACT
1. Bernstein discloses a system for remotely detecting and
identifying unknown chemical species in an aerosol. The system uses a
pulsed laser directed at an unknown chemical mass. The mass absorbs the
energy of the laser. By a molecular energy transfer process, the absorbed
energy is re-emitted at one or more non-resonant wavelengths. The re-
emitted radiation can be detected for a time period comparable to the
characteristic time for the energy to be dissipated as heat. The re-emitted
energy at the non-resonant wavelengths is detected with several infrared
detectors (Abstract, col. 2, ll. 23-41). The laser is a CO2 laser (col. 2, ll. 67-
68).
2. Bernstein discloses a pulsed laser with a control circuit 40a and
a firing circuit 60, which pulses the laser (col. 4, ll. 21-24).
3. Taylor discloses a system including a pulsed CO2 laser 22,
directing an infrared laser beam along a beam path 80 (col. 6, ll. 15-24). The
laser illuminates gases along the beam path (col. 4, ll. 49-52). The
illuminated gases selectively absorb radiation at specific frequencies. A
detector discriminates for known patterns of absorption (col. 1, ll. 44-49).
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4. Childers discloses a system including a monostatic OP/FTIR
monitor, which includes a non-specific infrared source and detectors in a
combined transmitting/receiving telescope (p. 1926). A retroreflector
reflects an IR beam emitted from the telescope transmitter back to the
telescope receiver (p. 1927). The system measures concentrations of
ammonia and methane gas at a swine production facility (p. 1924).
5. Johnson discloses a system including a broadband infrared
radiation source and a remotely-positioned receiver. The source is in view
of the receiver. The receiver collects spectral infrared absorption data
representative of the gas between the source and the receiver (Abstract).
6. Ho discloses an aerosol generating system for generating a
constant concentration of an aerosol in a chamber. (Abstract). The chamber
10 includes a small electric fan 20 to distribute the aerosol within the
chamber (col. 2, ll. 6-8).
7. Carlon discloses a system for generating an aerosol cloud in a
chamber. (Abstract). Disposed within the chamber 10 is a rotary fan 20.
(col. 7, ll. 54-55). The fan’s purpose is to continuously, thoroughly and
uniformly stir and intermix the aerosol particles to maintain a homogeneous
aerosol (col. 7, ll. 48-51).
8. Samuels discloses a system for detecting biological microbes in
an aerosol using a blackbody radiation source and an FTIR spectrometer
with a ZnSe window installed at either end of a chamber (pp. 2-3).
PRINCIPLES OF LAW
“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
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art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987)
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966),
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739.
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“A patent applicant is free to recite features of an apparatus either
structurally or functionally. [Citation omitted]. Yet, choosing to define an
element functionally, i.e, by what it does, carries with it a risk. As stated in
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971):
Functional terminology may render a claim quite
broad. By its own literal terms a claim employing
such language covers any and all embodiments
which perform the recited function.” [emphasis in
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original]. “[W]here the Patent Office has reason to
believe that a functional limitation asserted to be
critical for establishing novelty in the claimed
subject matter may, in fact be an inherent
characteristic of the prior art, it possesses the
authority to require the applicant to prove that the
subject matter shown to be in the prior art does not
possess the characteristic relied on.”
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

ANALYSIS
Grouping of Claims
In regards to the four §102 rejections, Appellant argues independent
claims 1 and 21 together. (See App. Br. 9-14)2. Appellant subsequently
argues for allowance of the remaining dependent claims as a group, asserting
generally that the prior art references do not teach the limitations of the
dependent claims. (App. Br. 15). Therefore, the claims 1-3, 5-12 and 21-23
will be addressed as a group in regards to the § 102 rejections, to stand or
fall together, with claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii).
Anticipation by Bernstein, Taylor, Childers or Johnson
Claim 1 stands rejected as anticipated by Bernstein (Rejection No. 1),
Taylor (Rejection No. 2), Childers (Rejection No. 3), and Johnson
(Rejection No. 4). In maintaining the rejections, the Examiner asserts that
each reference anticipates the claimed invention. Each reference teaches a
type of infrared radiation source (FF 1-5), such as a CO2 laser (FF 1, 3).
Bernstein and Taylor teach a pulsed infrared laser. (FF 1, 2, 3). Childers

2 We cite to and reference from Appellant’s Second Supplemental Brief,
dated August 3, 2007.
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and Johnson teach generic IR sources, for example, a CO2 laser, as
evidenced in Taylor (Ans. 5).
The Examiner further asserts each reference teaches a spectrum
analysis device, notably an FTIR spectrophotometer (see Ans. 3-5).
In his Brief, Appellant asserts that independent claims 1 and 21 are
directed to a “radiation beam [that] heats the cloud itself relative to the
clouds [sic, cloud’s] background” (App. Br. 9 [emphasis in original]).
Appellant also contends “that the frequency of the radiation beam is selected
to be in resonance with target molecules, water vapor molecules or oxygen
molecules in the cloud to cause the molecules to vibrate and increase the
temperature of the cloud” (Id.).
Appellant distinguishes his claimed invention from the prior art by
contending Bernstein teaches a laser radiation source which causes elevated
vibrational temperature of the atoms of the target molecule above the bulk
gas temperature of the cloud. Bernstein teaches the molecules decay and
emit radiation from this excited vibrational state very quickly, on the order
of 1 – 100 msec. Because of this short time period, Bernstein uses a short
excitation pulse and rapid sampling rates (App. Br. 10).
In contrast, Appellant contends the claimed system looks instead to
emissions from the aerosol cloud itself that occur from the cloud being at a
higher temperature than the background. Because of this, Appellant
contends his invention is “not restricted” to short excitation pulses and rapid
sampling, but can employ long pulse or continuous wave (CW) type
radiation (App. Br. 9-10).
Appellant notes that Taylor teaches a system including a laser
emitting a pulsed laser beam through a gas and a detector that detects the
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intensity of two separate frequency bands. Appellant contends that Taylor
does not teach that the laser beam heats the gas relative to the surrounding
background, nor a spectrum analysis device that generates an emissions
spectrum of an aerosol in the gas (App. Br. 12-13).
Regarding Childers, Appellant notes it teaches an open-path Fourier
transform infrared (OP/FTIR) spectrometer for measuring specified
atmospheric gases, but does not teach using a radiation source to raise the
temperature of a sample cloud relative to its background, or a spectrum
analysis device that receives emissions from the cloud (App. Br. 13).
Finally, Appellant contends Johnson discloses an FTIR spectroscopy
system with infrared radiation source, with a target gas emission disposed
between the receiver and the source, but does not teach detecting emissions
spectrum of an aerosol, and does not teach heating an aerosol cloud relative
to its background to generate emissions (App. Br. 13).
While we are substantially in accord with Appellant’s contentions of
the teachings of the cited prior art references (see FF 1, 3, 4, and 5), we do
not find Appellant’s arguments persuasive. Appellant’s arguments are
directed to the operation of the system and not its structure. The claim
limitations at issue, regarding directing a beam, heating the cloud, being
responsive to emissions and generating a spectrum, are directed to the
method of using the system. The first clause of claim 1 is directed to a
radiation beam directed towards a cloud which then heats the cloud to a
temperature above the background. These limitations are directed to the use
or application of the radiation beam. Likewise, the second clause of claim 1
involves a spectrum analysis device which is responsive to emissions from
the cloud, which generates a spectrum of aerosols in the cloud. Again, these
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limitations are directed to the use or application of the spectrum analysis
device. They do not limit the structure of the device. To the extent these
limit the use or application of system, they do not render an otherwise
known system patentable. Schreiber, 128 F.3d at 1477. Accordingly, we
construe claim 1 on appeal as a system including at least two structures,
namely a radiation source capable of heating a cloud to raise its temperature,
and a spectrum analysis device capable of generating an emission spectrum
of the aerosels in the cloud.
As correctly noted by Appellant, Bernstein involves a pulsed laser
used to very briefly heat the outer layer of an aerosol droplet, without
heating the surrounding bulk gas, or interstitial gas of the cloud (App. Br.
10-12). Appellant attempts to distinguish the laser of his invention by
noting that his is “not restricted” to the short pulses (App. Br. 11). However,
as construed above, claim 1 is not limited to non-pulsed or long-pulsed
lasers. Further, nothing precludes the pulsed laser from performing the
operation claimed by Appellant. The pulsed laser in Bernstein includes a
control circuit to pulse the laser (FF 2). Thus, one of ordinary skill in the art
would have a reasonable belief that the laser of Bernstein is capable of
performing the claimed function, simply by the control circuit allowing the
laser to radiate the cloud sufficiently long to heat both the aerosol droplets
and interstitial gas of the cloud, with respect to the background. Appellant
has not disputed that the sytem of Berstein is incapable of such use. See
Swinehart, 439 F.2d at 213.
In Taylor, Childers, and Johnson, systems with infrared radiation
sources and emissions detectors are taught which are used to analyze
constituents in gases, not aerosols. Nevertheless, the systems are otherwise
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identical to the claimed invention, differing only in the nature of the
application to which they are put. Appellant does not argue that the sources
and detectors disclosed in the three prior art references are not capable of
this use.
To reject a claim under §102, all limitations of the claim must be
found in the prior art. Verdegall Bros. v. Union Oil Co. of California, 814
F.2d at 631. For the foregoing reason, the rejections of claim 1 pursuant to
35 U.S.C. § 102 on grounds of anticipation by the four cited prior art
references, and of claims 2, 3, 5-12 and 21-23 by representation, are
sustained.
Obviousness over Bernstein in view of Samuels
Claims 8, 9, 11, 12, 14, and 24-26 stand rejected under 35 U.S.C. §
103(a) as obvious over Bernstein in view of Samuels. Similar to claim 1,
these claims are directed to a system comprising a radiation source and a
spectrum analysis device, but add a chamber for holding the aerosol, the
chamber having a first end with a window and a second end (see App. Br.
19). Samuels discloses an aerosol chamber with an infrared detector
mounted at a window at one end and a blackbody radiation source located at
the other for heating an aerosol sample (FF 8).
Appellant contends Samuels does not teach a radiation source that
heats an aerosol cloud relative to its background, but only a heated
background (the blackbody radiation source) relative to the aerosol. When
considered together with Bernstein, Appellant contends that neither prior art
reference discloses a system in which a radiation source heats an aerosol
cloud relative to its background (App. Br. 15).
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We disagree. For the same reasons above, we determine Bernstein
discloses a system having the limitations of a radiation source and a
spectrum analysis device, capable of performing the function or application
of heating an aerosol cloud against its background and detecting its
emissions, and differing from the claimed invention only to its application or
use. Schreiber, 128 F.3d at 1477. Samuels discloses a chamber for holding
the aerosol for laboratory testing with a different source of infrared
radiation. The Samuel system uses the blackbody source as a source of
infrared radiation to excite aerosol droplets, in a similar manner as the
infrared laser used in Bernstein. One of ordinary skill in this art would have
expected to obtain the same emission spectra as shown in Samuels,
regardless of the nature of the source generating the infrared radiation.
Therefore, adapting the Samuels system with an IR laser, as described in
Bernstein, would provide the same predicable results. See KSR, 127 S. Ct. at
1739. Therefore, the rejection of the claims as obvious over Bernstein in
view of Samuels is sustained.
Obviousness over Bernstein in view of Samuels and further in view of Ho or
Carlon
Claim 10 stands rejected under 35 U.S.C. § 103(a) as obvious over
Bernstein in view of Samuels and further in view of Ho or Carlon. Claim 10
depends on claim 8, adding a further limitation of at least one fan for
agitating a powder into the aerosol. Ho and Carlon each disclose a fan for
mixing aerosol particles within a chamber (FF 6, 7).
Appellant contends that neither Ho nor Carlon teach or suggest using
the disclosed fan to blow or distribute a powder into an aerosol in the
chamber (App. Br. 17). Again, the limitation relied upon by Appellant for
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distinguishing claim 10 from the applied prior art is a limitation on the
application of the device. One skilled in the art would have found a fan that
disperses or agitates an aerosol within a chamber would also have been
capable of agitating a dispersed powder. Appellant has not satisfied his
burden of showing the fans in either Ho or Carlon are not capable of
functioning as claimed. Modifying the combination system of Bernstein and
Samuels with a fan as taught in either Ho or Carlon would have yielded
predictable results, and therefore, would have been obvious to one of
ordinary skill at the time of the invention. KSR, 127 S. Ct. at 1739.
Accordingly, the rejection of claim 10 is sustained.
For the foregoing reasons, the six rejections maintained by the
Examiner are sustained. The decision of the Examiner is affirmed.

TIME PERIOD FOR RESPONSE
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

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