Ex Parte Cudini et al

Patent Trial and Appeal Board

Dec 30, 2016

10584276 (P.T.A.B. Dec. 30, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/584,276 05/21/2007 Robert Cudini CUDI3001 /FJD 4085
23364 7590
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
DEVITO, ALEX T
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
01/04/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MAIL @B ACONTHOMAS .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT CUDINI, BRUNO WORRETH,
IVO BRAEGGER, CEDRIC JEANNERET, and KILIAN STERN
Appeal 2012-002922
Application 10/584,276
Technology Center 2800
Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
DONNA M. PRAISS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING1
1 In this decision, we refer to the Specification filed June 23, 2006 (“Spec.”),
the Final Office Action mailed Sep. 7, 2010 (“Final Act.”), the Appeal Brief
filed Mar. 7, 2011 (“App. Br.”), the Examiner’s Answer mailed June 27,
2011, the Reply Brief filed Aug. 29, 2011 (“Reply Br.”), our Decision on
Appeal mailed Mar. 26, 2014 (“Dec.”), and the Request for Rehearing filed
May 27, 2014 (“Reh’g Req.”).
Appeal 2012-002922
Application 10/584,276
Appellants2 request reconsideration of our Decision on Appeal
affirming the rejections of claims 16—31 under 35 U.S.C. § 103(a). Reh’g
Req. 2.3
We have reconsidered our Decision in light of Appellants’ comments
in the Request for Rehearing, and we find no error in the disposition of the
§103 rejections.
We have thoroughly reviewed the arguments set forth by Appellants
in the Request. However, we remain of the opinion that the subject matter
of claims 16—31 is properly rejected and unpatentable under 35 U.S.C.
§ 103(a).
The subject matter of claims 16—31 is directed to a modular measuring
device including a sensor module and an electronics module in which the
sensor and electronics are arranged. Spec. 1:3—5.
Appellants contend that the Board overlooked or misapprehended the
disclosure in column 2 of Dreyer4 that describes the sensor as being
modular. Reh’g Req. 2. We quote below the entirety of the paragraph in
which this disclosure appears:
Another advantage of the sensor of the present invention is that
it is modular. The electronics and sensor element are separate
components which can be used independent of one another and
are only linked via the connection element. The sensor can
therefore be manufactured at little expense and offers a high
degree of flexibility. For example, there could be a kit of various
2 Appellants identify the real party in interest as Endress + Hauser Flowtec
AG. App. Br. 2.
3 Appellants’ Request for Rehearing was found to be timely filed because
May 26, 2014, was a federal holiday. Decision on Petition mailed May 4,
2015 (granting Appellants’ petition filed Sep. 23, 2014, requesting
withdrawal of the holding of abandonment of the present application).
4 Dreyer et al., US 6,539,819 Bl, issued Apr. 1, 2003 (“Dreyer”).
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Appeal 2012-002922
Application 10/584,276
electronics and different types of sensor elements, which can be
combined in any number of ways.
Dreyer 2:30—38. According to Appellants, Dreyer discloses “a single
assembly with one modular unit, not a single assembly with two modular
units like the present invention (See [Fig.] 2 of Dreyer, where the reference
numeral 2 refers to the entire assembly.)” Reh’g Req. 2. Appellants
concede that “[t]he noted passage from Dreyer clearly states that the sensor
of the present invention is modular.” Reh’g Req. 2. Appellants also do not
dispute the Examiner’s finding that “the electronics and sensor element are
separate components which can be used independent of one another.” Id.
The error, Appellants argue, is that “[b]eing separate does not mean that the
sensor and the electronics are individually modular. They must be disclosed
as such and not assumed to be such.” Id. For this reason, Appellants
contend that the preponderance of the evidence does not support the
Examiner’s determination of obviousness over Dreyer. Id. at 3.
As discussed in our Decision, Dreyer uses the term “sensor” and
“sensor element” differently. Dec. 5. Dreyer uses the term “sensor” alone
to refer to the assembly and explicitly states that it is modular. Compare
Dreyer 2:31—32 to 1:5—6. Dreyer then describes the sensor element section
and the electronics section as being separate components that are capable of
being “used independent from one another” and “only linked via the
connection element” and “can be combined in any number of ways” with
different electronics and sensor elements. Dreyer 2:32—38. Accordingly, the
Examiner’s finding that Dreyer discloses a sensor module and an electronics
module as required by the claims, is supported by the record. Appellants
have not directed us to any evidence that distinguishes the separate sensor
and electronics components of Dreyer, which can be separated and
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Appeal 2012-002922
Application 10/584,276
combined with other sensor and electronic components to make an
assembly, from the claimed sensor and electronics modules that are
“releasably, mechanically connected together” as recited in claim 16.
Appellants’ assertion that the language in the above quoted paragraph
of Dreyer is not sufficiently precise in disclosing “the sensor and electronics
are individually modular” is also not persuasive. Reh’g Req. 2. It is not
necessary that an obviousness analysis “seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellants have not directed us to any evidence in this record to establish
that one or ordinary skill in the art at the time of the invention would not
have understood the disclosure of Dreyer as teaching modular designs and
releasably, mechanically connecting modular designs as required by the
claims.
In the Rehearing Request, Appellants also indicate confusion as to
why the rejection over Dreyer is based on § 103 and not § 102 if Dreyer
reads on the claimed modular units. Reh’g Req. 2. The rejection is under
§103 because it is based on the combination of Dreyer with Olsson, which
teaches a groove connection. Final Act. 4 (citing Olsson Fig. 13, item 106).
We do not find Appellants’ arguments persuasive of error in the
Examiner’s obviousness determination. These arguments are the same as
those that were present in the Briefs. We do not find these repeated
arguments persuasive for the reasons presented in the Decision and
discussed herein. Thus, we decline to reconsider our decision to affirm the
Examiner’s § 103 rejections of the appealed claims.
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Appeal 2012-002922
Application 10/584,276
In conclusion, based on the foregoing, Appellants’ Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making changes to the final disposition of the rejections therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed March 26, 2014, and is final for the purposes of judicial
review. See 37 C.F.R. § 41.52(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v)(2010).
DENIED
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