Ex Parte Feist et alDownload PDFPatent Trial and Appeal BoardNov 28, 201712994379 (P.T.A.B. Nov. 28, 2017) Copy Citation 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. 12/994,379 07/18/2011 Jorg Peter Feist FRYHP0191US 2711 23908 7590 11/30/2017 RENNER OTTO BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE NINETEENTH FLOOR CLEVELAND, OH 44115 EXAMINER SUNG, CHRISTINE ART UNIT PAPER NUMBER 2884 NOTIFICATION DATE DELIVERY MODE 11/30/2017 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): ipdocket @ rennerotto. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JORG PETER FEIST and JOHN RAYMENT NICHOLLS Appeal 2016-007700 Application 12/994,3791 Technology Center 2800 Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and MERRELL C. CASHION, JR., Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is identified as “Southside Thermal Sciences (STS) Limited” (Appeal Brief filed October 30, 2015, hereinafter “Appeal Br.,” 2). Appeal 2016-007700 Application 12/994,379 The Applicants (hereinafter “Appellants”) appeal under 35 U.S.C. § 134(a) from the Primary Examiner’s decision to reject claims 43—47, 57, and 58.2’3 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. I. BACKGROUND The subject matter on appeal relates to a method for determining the age of a luminescent material (Specification filed November 23, 2010, hereinafter “Spec.,” 1,11. 4—8). Specifically, the Appellants describe an embodiment in which the age is determined by determining a phase shift relationship between the excitation and luminescence signals created by varying the intensity of the excitation and then comparing the results with a “predetermined phase shift-to-ageing calibration table” (id. at 10,11. 28—34). Representative claim 43 is reproduced from page 16 of the Appeal Brief (Claims Appendix), with key limitations emphasized, as follows: 43. A method of determining ageing of a material, the method comprising the steps of: applying an excitation signal having a periodically- varying intensity to a material including a luminescent element; detecting a luminescence signal from the material; determining a phase relationship between the excitation and luminescence signals', and determining ageing of the material from the phase relationship between the excitation and luminescence signals. 2 Appeal Br. 2—15; Reply Brief filed August 9, 2016, hereinafter “Reply Br.,” 2—8; Final Office Action entered October 30, 2014, hereinafter “Final Act.,” 2—7; Examiner’s Answer entered June 9, 2016, hereinafter “Ans.,” 2— 10. 3 Claims 23, 24, 26, 29-32, 34—36, 38, 41, 42, and 51—56 have been allowed (Final Act. 1). 2 Appeal 2016-007700 Application 12/994,379 II. REJECTIONS ON APPEAL On appeal, the Examiner maintains several rejections, which are listed as follows: A. claim 58 under pre-AIA 35 U.S.C. § 112,14, as failing to further limit the subject matter of the claim upon which it depends or failing to include all the limitations of the claim upon which it depends; B. claims 43^46 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Srivastava et al.4 (hereinafter “Srivastava”) in view of Bemdt et al.5 (hereinafter “Berndt”); and C. claims 47, 57, and 58 under 35 U.S.C. § 103(a) as unpatentable over Srivastava in view of Doesburg et al.6 (hereinafter “Doesburg”). (Final Act. 2—7; Ans. 2—6.) In addition, the Examiner enters a new ground of rejection in the Answer (Ans. 7), as follows: D. claims 43—47, 57, and 587 under 35 U.S.C. § 101 as directed to a judicial exception (i.e., an abstract idea). 4 US 2003/0115941 Al, published June 26, 2003. 5 US 5,281,825, issued January 25, 1994. 6 US 2011/0003119 Al, published January 6, 2011. 7 The Examiner indicates that claims 43—58 are rejected (Ans. 7). Claims 48—50, however, were previously canceled (Amendments filed October 1, 2014 and March 17, 2014), and claims 51—56 were allowed (Final Act. 8). Thus, consistent with the Appellants’ understanding (Reply Br. 5), we consider the new ground of rejection to be entered only against claims 43— 47, 57, and 58. 3 Appeal 2016-007700 Application 12/994,379 The Appellants argue against this rejection on the merits in the Reply Brief (Reply Br. 5—8). III. DISCUSSION Rejection A. The Examiner finds that “[cjlaim 58 is drawn to a method of determining a remaining useful lifetime of the material while the independent claim (claim 43) and intervening claims (claims 47 and 57) from which claim 58 is dependent upon all recite a method of determining ageing of a material” (Ans. 2). The Appellants contend that “[tjhere is no mutual exclusivity or inconsistency between” determining the remaining useful lifetime of a material (claim 58) and determining the ageing of a material (claim 43) (Appeal Br. 4). We agree with the Appellants. As the Appellants point out {id. at 4; Reply Br. 2), information related to ageing of a material is used to determine the remaining useful lifetime of that material. In addition, contrary to the Examiner’s belief, claim 58 includes all the limitations recited in claims 43, 47, and 57. For these reasons and those given by the Appellants, we cannot sustain Rejection A. Rejections B and C. The Examiner acknowledges that Srivastava’s method for determining the age of a material differs from the claimed method in that the reference does not describe “an excitation signal having a periodically-varying intensity,” as recited in claim 43 (Ans. 5). Relying on Bemdt, however, the Examiner concludes that “[i]t would have been obvious to one having ordinary skill in the art... to have modified the 4 Appeal 2016-007700 Application 12/994,379 invention as disclosed by Srivastava with the source of Bemdt in order to maximize fluorescence detection” (id.). The Appellants contend that the combination of Srivastava and Bemdt fails to disclose or suggest determining a phase relationship between an excitation and luminescence signal to determine ageing of a material from that phase relationship (Appeal Br. 6). According to the Appellants, Bemdt discloses “measurements of an entirely different kind tha[n] those made in claim 43”—namely, measurements related to luminescence decay (id. at 9). We agree with the Appellants. Although Srivastava describes a method for determining the past-service conditions and remaining useful life of a thermal barrier coating (TBC) by measuring the intensity of a characteristic peak in the emission spectmm of a photoluminescent material incorporated into the TBC, the reference does not disclose using a phase relationship (Srivastava Ull, 26). Bemdt does teach varying the intensity of excitation signals (Bemdt, Abst.). Bemdt, however, is concerned with determining changes in decay time, phase angle, and/or modulation of the emitted luminescence to determine luminescence lifetimes—not a phase relationship between excitation and luminescence to determine ageing of the material, as recited in claim 43. For these reasons, we hold that the Examiner failed to articulate a sufficient reason with some rational underpinning to support a conclusion that a person having ordinary skill in the art would have combined Srivastava and Bemdt in the manner claimed by the Appellants. KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rejection D. The Examiner states that claim 43 is directed to patent- ineligible subject matter because it is directed to “mathematical procedures 5 Appeal 2016-007700 Application 12/994,379 for converting one form of numerical representation for another” and the claim does not “include additional elements that are sufficient to amount to significantly more than the judicial exception” (Ans. 7). The Appellants contend that the Examiner’s rejection is flawed because “claim 43 is not merely directed to the detection of luminescence signals or determination of a phase relationship between those signals and an excitation signal” (Reply Br. 7). According to the Appellants, “the claim includes concrete limitations on the type of target material (one that includes a luminescent element) and the type of excitation signal (one with periodically-varying intensity)” and that “[i]t is these specific limitations that allow for the generation of a luminescence signal and the calculation of a phase relationship between the excitation and the luminescence signal, which can then be used to determine the ageing of the material” (id.). The Appellants urge, therefore, that “the entire claim, when taken in combination, amounts to significantly more than a mathematical relationship” (id.). Again, we agree with the Appellants. In contrast to Srivastava’s method, the Appellants’ claimed method includes a new physical step of periodically varying the excitation signal to allow the determination of a phase relationship, which can then be used to determine ageing in a new and improved way (Spec. 11,11. 1—3; Fig. 9). For these reasons and those given by the Appellants, we cannot sustain Rejection D. 6 Appeal 2016-007700 Application 12/994,379 IV. SUMMARY Rejections A through D are not sustained. Therefore, the Examiner’s decision to reject claims 43—47, 57, and 58 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation