Ex parte D'Silva et al.

Board of Patent Appeals and Interferences

Feb 19, 1998

08117242 (B.P.A.I. Feb. 19, 1998)

Application for patent filed September 3, 1993. 1
According to appellants, this application is a continuation of
Application 07/770,524, filed October 3, 1991, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ARTHUR P. D’SILVA and
EDWARD J. JASELSKIS
_____________
Appeal No. 95-4369
Application 08/117,2421
______________
ON BRIEF
_______________
Before BARRETT, LEE AND CARMICHAEL, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
final rejection of claims 45, 46, 48-57, 64-74, 81 and 83-84.
Claims 1-44, 47, 58-63, 75-80 and 82 have been canceled (Br. at
1). No claim has been allowed.
Appeal No. 95-4369
Application 08/117,242
2
References relied on by the Examiner
Jowitt et al. 4,598,577 Jul. 8, 1986
(Jowitt)
Bowen et al. 4,802,761 Feb. 7, 1989
(Bowen)
Kim 4,986,658 Jan. 22, 1991
Griffin et al. 5,085,499 Feb. 4, 1992
(Griffin) (filed Sep. 2, 1988)
Brewer Jr. et al. (Brewer, Jr.), "Studies of Aerosols Generated
by Electrically Vaporized Thin Films for ICP-AES, Applied
Spectroscopy, vol. 44, no. 3, (1990).
The Rejections on Appeal
Claims 45, 49-51, 55, 64, 66, 68-69 and 84 stand finally
rejected under 35 U.S.C. § 103 as being unpatentable over Jowitt
and Bowen.
Claims 46, 48, 52, 54, 56, 65, 67, 71-72 and 81 stand
finally rejected under 35 U.S.C. § 103 as being unpatentable over
Jowitt, Bowen and Griffin.
Claims 53 and 70 stand finally rejected under 35 U.S.C.
§ 103 as being unpatentable over Jowitt, Bowen and Kim.
Claims 57, 73 and 83 stand finally rejected under 35 U.S.C.
§ 103 as being unpatentable over Jowitt, Bowen and Brewer, Jr.
Claim 74 stands finally rejected under 35 U.S.C. § 103 as
being unpatentable over Jowitt, Bowen, Brewer, Jr. and Griffin.
Appeal No. 95-4369
Application 08/117,242
3
The Invention
The invention is directed to an apparatus and method using a
remote laser to ablate a hazardous material sample, exciting the
sample in a remotely located inductively coupled plasma source,
and analyzing the elemental constituents of the sample in a
detector remotely located from the plasma source.
Claims 45, 64, 73 and 81 are the only independent claims.
Claims 45, 64 and 81 recite an aerosol transport system for
transporting the material sample to the remote inductively
coupled plasma source. Claim 73, on the other hand, recites not
an aerosol transport system but a filter for collecting the
sample. Representative claims 64 and 73 are reproduced below:
64. A method for sampling and analyzing a material located
at a hazardous site, the material having a surface and elemental
constituents, comprising the steps of:
a) positioning a portable sampling probe proximate the
surface of the material at the hazardous site;
b) directing laser radiation from a laser source
located remote from the probe onto the surface of the
material through a first optical fiber, the first optical
fiber having two ends, a first end coupled to said laser
source and a second end mounted to the portable sampling
probe, the laser radiation ablating a sample from the
material;
c) transporting the sample through an aerosol transport
system from said probe to a remotely located inductively
coupled plasma source; and
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Application 08/117,242
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d) exciting the sample in the plasma source to provide
an emission characteristic of the elemental constituents of
the sample.
73. A method for sampling and analyzing a material located
at a hazardous site, the material having a surface and
elemental constituents, comprising the steps of:
a) positioning a portable sampling probe proximate the
surface of the material at the hazardous site;
b) directing laser radiation from a laser source
located remote from the probe onto the surface of the
material through an optical fiber, the optical fiber having
two ends, a first end coupled to said laser source and a
second end mounted to the portable probe, the laser
radiation ablating a sample of the material;
c) collecting the sample in a filter mounted in the
probe;
d) exciting the sample collected on said filter in an
inductively coupled plasma source located remotely from the
material to provide a characteristic emission of the
elemental constituents of the sample; and
e) applying said emission to an elemental constituent
detector located remote from the inductively coupled plasma
source.
Opinion
Our opinion is based solely on the arguments raised by the
appellants in their brief. We do not address and offer no
opinion on arguments which could have been raised but were not
set forth in the brief.
The invention of claims 45, 64, 73 and 81 requires a laser
remotely located from the location where the material being
Appeal No. 95-4369
Application 08/117,242
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ablated by the laser beam is located, an inductively coupled
plasma source remotely located from the site of ablation, and a
detector receiving the output emission from the plasma source,
which detector is remotely located from the plasma source. In
short, both the laser and the plasma source have to be located
remote from where the material sample is ablated, and the
detector receiving emissions from the plasma source is remotely
located from the plasma source. According to the appellants and
the specification, this arrangement minimizes contamination of
persons and equipment by the material being ablated and analyzed.
The rejection of claims 45, 49-51, 55,
64, 66, 68-69 and 84 over Jowitt and Bowen
Jowitt discloses a material gathering and analyzing method
using a laser to ablate the material and a remotely located
inductively coupled plasma source to analyze the material.
According to the examiner, the only difference between Jowitt’s
system and the system of the rejected claims is that Jowitt’s
laser is not remotely located from the site of ablation of the
materials (answer at 3). The examiner relied on Bowen to show
that a laser can be remotely located from where the laser beam is
applied in a device for analyzing contaminants (answer at 3-4).
The appellants argue that the laser used in the claimed
invention is a high energy laser for ablating the material to be
Appeal No. 95-4369
Application 08/117,242
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analyzed, whereas in Bowen the laser is a low energy laser which
is used for conducting Raman spectroscopy for analyzing
contaminant components in liquid or gaseous media. The
appellants argue that remotely locating the laser is against the
teaching of Jowitt. The appellants also argue that Bowen’s in-
situ analysis of materials teaches away from the present
invention in which the analysis is accomplished at a remote
location. These arguments fail to demonstrate error in the
examiner’s position.
One cannot attack references individually where the
rejection is based on the combined teachings of the references as
a whole. One cannot attack reference showings individually.
In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380
(Fed. Cir. 1986); In re Young, 403 F.2d 754, 757, 159 USPQ 725,
728 (CCPA 1968). The test for obviousness is what the combined
teachings of the references would have suggested to those of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981).
Bowen was relied on merely to show that a laser does not
have to be located at the precise location where its emission is
applied. Rather, it may be remotely located and its emission can
be channeled to the site of application through an optical fiber.
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Application 08/117,242
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This teaching transcends the purported distinction based on what
the laser beam is being applied to do, e.g., high energy ablation
of materials or low energy application for Raman spectroscopy.
The appellants have not asserted, much less demonstrated, that
the state of the art was such that laser energy sufficient for
material ablation could not be channeled through an optical
fiber. In light of Bowen, it would have been obvious to one with
ordinary skill in the art that remotely locating the laser is an
alternative to locating the laser at the site of ablation.
Remotely locating the laser is also not "against" the teaching of
Jowitt. The appellants have not pointed to anything in Jowitt
which would suggest to one with ordinary skill in the art that
the laser must be located at the site of material ablation.
The appellants further argue that Jowitt neither teaches or
suggests a "separate" aerosol transport system, "but teaches the
use of a byproduct aerosol resulting from the laser/metal
interaction" (Br. at 12, lines 3-16). The argument is not
commensurate in scope with the claimed invention and thus is
rejected. None of claims 45, 64 and 81 requires a "separate"
aerosol transport system which does not make use of a byproduct
aerosol resulting from material ablation.
Appeal No. 95-4369
Application 08/117,242
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The appellants further argue that in Jowitt, the inductively
coupled plasma source is not remotely located from the detector
as is specifically required by all of claims 45, 64, 73 and 81.
It is not altogether clear what the claim term "remotely located"
means. The specification does not particularly define it. No
minimum distance is specified, either for defining remoteness or
a boundary of contamination. The claims also do not specify a
functional requirement for the remoteness of the location. The
specification discloses merely that the emissions from the
inductively coupled plasma source is not directly observed by the
spectrometer, but through a lens 36 which focuses the emissions
37 into an optical fiber 38 for transmission. Accordingly, we
interpret "remotely located" as it applies to the placement of
the plasma source relative to the detector to mean an arrangement
wherein the emissions from the plasma source is not directly
viewed by the detector but through a transmission medium such as
an optical fiber link.
Given the meaning accorded the term "remotely located" as
defined above, the appellants are correct that Jowitt and Bowen
do not disclose or suggest remotely locating an inductively
coupled plasma source from its associated detector.
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Application 08/117,242
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For the foregoing reasons, the rejection of claims 45, 49-
51, 55, 64, 66, 68, 69 and 84 over Jowitt and Bowen cannot be
sustained.
The rejection of claims 46, 48, 52, 54, 56, 65,
67, 71-72 and 81 over Jowitt, Bowen, and Griffin
The appellants argue that Griffin fails to overcome the
above-noted deficiencies of the combination of Jowitt and Bowen.
We disagree.
The appellants acknowledge (Br. at 13) that Griffin
discloses a plasma source located on or within a probe. In
Griffin, the spectrometer analyzing the emissions from the plasma
source is remotely located and connected to the plasma source by
an optical cable or light guide (Figure 2; column 2, lines 55-56;
column 3, lines 10-16 and 53-60). The appellants argue (Br. at
14, lines 9-11): "Griffin reference does not provide a suggestion
or motivation for separating the plasma source from a detector in
a system in which the probe is remote from the plasma source."
The argument is misplaced because it confines a reading of the
reference to the particular environment or problem with which the
reference is concerned and fails to appreciate the full scope of
the technical teachings therein as would be appreciated by one
with ordinary skill in the art.
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A reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention
it is describing and attempting to protect. EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907, 225 USPQ 20, 25 (Fed.
Cir.), cert. denied, 474 U.S. 843 (1985). A reference must be
evaluated for all its teachings and is not limited to its
specific embodiments. In re Bode, 550 F.2d 656, 661, 193 USPQ
12, 17 (CCPA 1977); In re Snow, 471 F.2d 1400, 1403, 176 USPQ
328, 329 (CCPA 1973).
The fact that Griffin’s plasma source is located on or
within the probe does not mean all of its technical disclosures
have application only when the plasma source is located on or
within the probe. Independent of whether the plasma source is
located on or within the probe, Griffin certainly teaches that
emissions from the plasma source need not be directly observed by
a detector but, instead, may be channeled to the detector through
a fiber optic cable. As for whether the plasma source should be
located on or within the probe, that would depend on the
particular working environment or the task at hand. Based on
Griffin, one with ordinary skill in the art would have known that
indirectly providing the emissions from a plasma source to its
corresponding detector was one way to operate the detector.
Appeal No. 95-4369
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The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure
of the primary reference, nor is it that the claimed invention
must be expressly suggested in any one or all of the references.
Keller, 642 F.2d at 425, 208 USPQ at 881. As already discussed,
the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art. Here, the
collective teachings of Jowitt, Bowen, and Griffin would have
made up for the deficiencies of only Jowitt and Bowen insofar as
remotely locating the plasma source from the detector is
concerned. One with ordinary skill in the art would have known
that another way to operate Jowitt’s inductively coupled plasma
source and spectrometer is to have them connected through a fiber
optic cable. The reasons for doing so need not be breath-taking
or lead to an impressive or fantastic result. The mere knowledge
that an alternative exists is a sufficient lead to obviousness.
For the foregoing reasons, we sustain the rejection of
claims 46, 48, 54, 56, 65, 71-72 and 81 as being unpatentable
over Jowitt, Bowen and Griffin.
Claim 52 further recites a "seal means attached to the
housing [in the sampling probe] proximate to said opening for
engagement with the surface of the material to be sampled for
Appeal No. 95-4369
Application 08/117,242
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substantially isolating said sampling chamber and the material
from the outside environment during sampling." The examiner
asserts (answer at 12, lines 8-11) that Griffin in column 10,
lines 25-28, and column 11, lines 19-24, teaches such
substantially isolating sealing means. We disagree.
The portions of Griffin in column 10 referred to by the
examiner define a semi-permeable membrane which admits analyte
into the plasma cell implemented as a quartz capillary tube 63.
The portions of Griffin in column 11 referred to by the examiner
define a course screen and a semi-permeable membrane to provide
mechanical protection while allowing ambient air to enter the
apparatus for chemical monitoring. These structural elements do
not serve to substantially isolate the sampling chamber or the
material to be sampled from the outside environment. Rather,
they are a part of the sampling process and the sampling of
materials is done through these elements. The ambient air also
passes through these elements.
Claims 67 recites a similar isolating feature in method
form. For the above-discussed reasons, we do not sustain the
rejection of claims 52 and 67 as being unpatentable over Jowitt,
Bowen and Griffin.
Appeal No. 95-4369
Application 08/117,242
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The rejection of claims 53 and 70
under 35 U.S.C. § 103 over Jowitt, Bowen and Kim
Claim 53 depends ultimately from claim 45. Claim 70 depends
from claim 64. Both claims 45 and 64 were rejected only over
Jowitt and Bowen. The examiner relied on Kim only to show the
use of thermally resistant probes (answer at 12, lines 17-20).
The appellants are correct that Kim as applied by the examiner
does not cure the inadequacies of Jowitt and Bowen insofar as the
features of the parent claims are concerned. Accordingly, the
rejection of claims 53 and 70 cannot be sustained.
The rejection of claim 57 under 35 U.S.C. § 103
as being unpatentable over Jowitt, Bowen and Brewer, Jr.
Claim 57 depends from claim 45 which was rejected over
Jowitt and Bowen. The examiner applied Brewer, Jr. only to show
that filters have been used to collect samples (answer at 13,
lines 7-9). The appellants are correct that Brewer, Jr. as
applied by the examiner does not cure the inadequacies of Jowitt
and Bowen insofar as the features of the parent claims are
concerned. Accordingly, the rejection of claim 57 cannot be
sustained.
The rejection of claims 73 and 83 under 35 U.S.C. § 103
as being unpatentable over Jowitt, Bowen and Brewer, Jr.
Claim 73 is an independent claim and claim 83 depends from
claim 73. Like all other independent claims 45, 64 and 81, claim
Appeal No. 95-4369
Application 08/117,242
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73 requires the inductively coupled plasma source to be remotely
located from the associated detector. Unlike the other
independent claims 45, 64 and 81, claim 73 further requires the
step of "collecting the sample in a filter mounted in the probe."
Brewer, Jr. was relied on by the examiner only to show the
use of a filter to collect the sample material (answer at page 7,
lines 10-11 and 14-15). As applied by the examiner, Brewer, Jr.
does not make up for the deficiencies of Jowitt and Bowen with
regard to remotely locating the plasma source from the associated
detector. Accordingly, the rejection of claims 73 and 83 over
Jowitt, Bowen and Brewer, Jr. cannot be sustained.
The rejection of claim 74 under 35 U.S.C. § 103 as
being unpatentable over Jowitt, Bowen, Brewer, Jr. and Griffin
Claim 74 depends from claim 73 which has been rejected over
only Jowitt, Bowen and Brewer, Jr. The appellants argue that the
addition of Griffin does not overcome the deficiencies of Jowitt
and Bowen with respect to the features of independent claim 73.
We disagree.
With respect to remotely locating the inductively coupled
plasma source from the associated detector, we have already, in
the context of claims 46, 48, 52, 54, 56, 65, 67, 71-72 and 81,
discussed above how Griffin makes up for the deficiencies of
Jowitt and Bowen. We have also discussed, in the context of
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Application 08/117,242
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claims 45 and 64, why Jowitt and Bowen would reasonably have
suggested remotely locating the laser from the probe.
In the context of claim 74, the feature "the step of
positioning the probe by remote control" refers to remotely
controlling the positioning of the probe, not remotely locating
the probe from the plasma source. Note that in the appellants’
specification, the probe position of the probe is controlled via
a robotic arm (spec. at page 9, lines 5-7). The appellants’
argument on page 21, lines 3-7, of the appeal brief is misplaced
in that it confuses remotely controlling the position of the
probe with remotely locating the probe from the plasma source.
The appellants have failed to demonstrate error in the examiner’s
reliance on Griffin to show positioning the probe by remote
control. We note further that Griffin’s probes are designed for
underground wells and the like, and it does not appear that
Griffin contemplates the presence of any human operator at the
precise physical location of the probe underground.
Because claim 74 depends from claim 73, it includes the
feature of "collecting the sample in a filter mounted in the
probe." The examiner relied on Brewer, Jr. which shows
collection of sample particles on a filter. See page 375 of
Brewer, Jr., lines 22-25. The appellants argue (Br. at 19, lines
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Application 08/117,242
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10-17) that in Brewer, Jr. the collected samples are analyzed
first by an electronic microscope and then by a conventional
atomic absorption flame, while the claim calls for analysis by a
plasma source. However, the appellants also acknowledge that the
sample particles of Brewer, Jr., "in a normal system," would be
directed toward an inductively coupled plasma source (Br. at 19,
lines 11-12). Indeed, the sample particles collected by Brewer,
Jr.’s filter are from the same source as those ordinarily
directed to an inductively coupled plasma source for analysis for
their elemental constituents.
We agree with the examiner that in light of Brewer, Jr.’s
disclosure that sample particles can be collected on a filter and
that the collected particles are from the same source as those
particles ordinarily directed to a plasma source for analysis, it
would have been obvious to one with ordinary skill to use a
filter to collect the sample materials to be furnished to the
plasma source. We have already discussed above that a
reference’s teachings should not be limited or confined to its
preferred embodiments or the invention which it is attempting to
protect. Rather, all of the technical disclosure reasonably
stemming from the reference must be considered from the
perspective of one with ordinary skill. Here, we see no reason
Appeal No. 95-4369
Application 08/117,242
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why one with ordinary skill in the art, in light of Brewer, Jr.’s
teaching of collecting sample particles on a filter, would not
recognize that the samples for analysis by the plasma source can
be collected by a filter. Note that appellants’ sample particles
are furnished through ablation by laser and Brewer, Jr.’s
particles are furnished by use of high voltage sparks. The
appellants have presented no reasons why this difference would
cause sample collection by filter to be useable in one but not
the other. We do not find that to be so.
For the foregoing reasons, we sustain the rejection of claim
74 over Jowitt, Bowen, Brewer, Jr. and Griffin.
Conclusion
The rejection of claims 45, 49-51, 55, 64, 66, 68, 69 and 84
under 35 U.S.C. § 103 as being unpatentable over Jowitt and Bowen
is reversed.
The rejection of claims 46, 48, 54, 56, 65, 71-72 and 81
under 35 U.S.C. § 103 as being unpatentable over Jowitt, Bowen
and Griffin is affirmed.
The rejection of claims 52 and 67 under 35 U.S.C. § 103 as
being unpatentable over Jowitt, Bowen and Griffin is reversed.
The rejection of claims 53 and 70 under 35 U.S.C. § 103 as
being unpatentable over Jowitt, Bowen and Kim is reversed.
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The rejection of claim 57 under 35 U.S.C. § 103 as being
unpatentable over Jowitt, Bowen and Brewer, Jr. is reversed.
The rejection of claims 73 and 83 under 35 U.S.C. § 103 as
being unpatentable over Jowitt, Bowen and Brewer, Jr. is
reversed.
The rejection of claim 74 under 35 U.S.C. § 103 as being
unpatentable over Jowitt, Bowen, Brewer, Jr. and Griffin is
affirmed.
We note the anomaly of the affirmance of the rejection of
dependent claims and the reversal of the rejection of those
claims from which they depend. This is due to the examiner’s
failure to apply the Griffin reference to the broader claims.
AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMESON LEE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Schwegman, Lundberg & Woessner, P.A.
Appeal No. 95-4369
Application 08/117,242
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