Ex Parte Friedl et al

Patent Trial and Appeal Board

Jan 11, 2013

11797836 (P.T.A.B. Jan. 11, 2013)

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.
11/797,836 05/08/2007 Alexander Friedl 66374-184-7 1368
25269 7590 01/14/2013
DYKEMA GOSSETT PLLC
FRANKLIN SQUARE, THIRD FLOOR WEST
1300 I STREET, NW
WASHINGTON, DC 20005
EXAMINER
BUI, BRYAN
ART UNIT PAPER NUMBER
2857
MAIL DATE DELIVERY MODE
01/14/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte ALEXANDER FRIEDL, JOSEF GLASER,
KLAUS-CHRISTOPH HARMS, KLAUS LEITMEIER, JOSEF MOIK,
RUDIGER TEICHMANN, and WOLFGANG WALLNOFER
____________

Appeal 2010-010230
Application 11/797,836
Technology Center 2800
____________

Before MARC S. HOFF, GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/797,836

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 12-33 (App. Br. 1). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
The Invention
Exemplary Claim 12 follows:
12. A measuring apparatus, comprising:

a sensor for detecting mechanical, electrical,
physical or chemical values and emitting measurement
signals,

an identification unit in or on said sensor and
having a sensor identification capability,

a memory module containing data relevant to
conversion of measurement signals of said sensor into
measurement values,

an interpretation unit for interrogating said data
relevant to the conversion of measurement signals of said
sensor into measurement values from the memory
module and for converting the measurement signals from
said sensor into measurement values in consideration of
said data,

a first connection cable having first and second
ends, said first end being connected to said sensor and
said second end being connected to said memory module,
and

a second connection cable having first and second
ends, said first end being connected to said memory
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module and said second end being connected to said
interpretation unit.

Claims 12 and 13 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Marsh (U.S. Patent No. 5,353,009) (Ans. 4).
Claims 14-18, 21, 24 and 27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Marsh in view of Horowitz and Hill (Paul
Horowitz and Winfield Hill, THE ART OF ELECTRONICS, 55-56, (Cambridge
University Press, 2nd ed. 1989) (Ans. 5-6, 8-9, and 10-11).
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marsh in view of Ruile (U.S. Patent No. 6,084,503) and
Davis (U.S. Patent No. 3,169,242) (Ans. 6-7).
Claims 22, 23, 25, 26, 28, and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Marsh in view of Horowitz and Hill,
Ruile, and Davis (Ans. 7-12).
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marsh in view of Warrior (U.S. Patent No. 5,122,794)
(Ans. 12-13).
Claims 31-33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marsh in view of Horowitz and Hill, and further in view
of Warrior (Ans. 13-14).

FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer
(Ans. 3, et seq.).

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ISSUES
Appellants’ responses to the Examiner’s position present the
following issues:
1. Did the Examiner err in finding that claims 12 and 13 are
anticipated by Marsh?
2. Did the Examiner err in concluding that the combination of
Marsh, and Horowitz and Hill teaches that a “connection cable includes a
plug at a second end thereof which is detachably connected to said memory
module,” as recited in claim 14, and as similarly recited in claims 15-18, 21,
24, and 27?
3. Did the Examiner err in concluding that the combination of
Marsh and Ruile teaches a measuring apparatus including “a piezo-electric
measurement sensor,” as recited in claim 19 or “a surface-acoustic-wave
element,” as recited in claim 20?
4. Did the Examiner err in concluding that the combination of
March and Warrior teaches that data for the conversion of measurement
signals “is selected from the group consisting of measuring range, resonance
characteristics, temperature drift, calibration data and sensor sensitivity,” as
recited in claim 30-33?

ANALYSIS
Anticipation Rejection of Claims 12 and 13 By Marsh
Appellants contend that Marsh does not disclose:
A] measuring apparatus which includes a sensor emitting
measurement signals, an identification unit, a memory module
containing data relevant to conversion of measurement signals
of a sensor into measurement values and an interpretation unit
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for interrogating the data relevant to the conversion of
measurement signals of the sensor into measurement values
from the memory module and converting the measurement
signals from the sensor into measurement values based on the
data, especially in conjunction with connection cables
interconnected as defined in claim 12.

(App. Br. 10 (emphasis omitted)).
We begin our analysis by observing that Appellants respond to the
Examiner’s final rejection of claim 12 by: (1) describing some of the
teachings of Marsh and (2) merely reciting the language of the claim,
asserting that the aforementioned limitations are not disclosed by Marsh.
(App. Br. 9-10). But Appellants failed to traverse the specific factual
findings the Examiner has set forth in the anticipation rejection of claims 12
and 13 (see Ans. 4).
“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(1)(iv). We decline to examine the claims sua sponte, looking for
distinctions over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). See also Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative).
Moreover, Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). “Argument in the brief does not take
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the place of evidence in the record.” In re Schulze, 346 F.2d 600, 602
(CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)).
On this record, we find that Appellants failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
the aforementioned disputed limitations. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011)(“W]e hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”). We also note that arguments that
were not made in the Briefs and were instead made for the first time at oral
hearing cannot be considered and are deemed to be waived. See 37 C.F.R.
§§ 41.37(c)(1)(iv), 41.47(e); see also Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir 2008)(Arguments not made are considered waived).
For these reasons, we sustain the Examiner’s § 102 rejection of claim
12, and claim 13 (not argued separately) which falls therewith. See 37
C.F.R. § 41.37(c)(1)(iv).

Obviousness Rejections of Claims 14-18, 21, 24, and 27 Over Marsh
and Horowitz and Hill
Appellants contend that the Examiner erred in rejecting claims 14-18,
21, 24 and 27 as obvious because “there is no suggestion of utilizing
detachable plugs at the ends of the various bus lines of Marsh et al. as
defined by applicants’ claims” (App. Br. 10). The Examiner concluded,
however, that in Horowitz and Hill, “connectors are disclosed with a
motivation for their use explicitly stated as providing flexibility by
permitting modules to be unplugged and replaced” (Ans. 16 citing Horowitz
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and Hill, p. 55). We agree with the Examiner. In particular, we conclude
that the claim limitation of a cable detachably connected to a memory
module is a combination of familiar elements from Marsh, and Horowitz and
Hill that would have yielded predictable results. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). Thus, we find no error in the Examiner’s
obviousness rejection of claims 14-18, 21, 24, and 27.

Obviousness Rejection of Claims 19 and 20 Over Marsh in view of
Ruile and Davis
Appellants contend that the Examiner erred in rejecting claims 19 and
20 as obvious because Ruile makes “no mention of hostile environments and
the examiner has filed to explain why the communication system of Marsh
et al. would necessarily be used in a hostile environment” (App. Br. 11).
The Examiner concluded however, that it would have been obvious to one of
ordinary skill in the art to use a piezo-electric sensor disclosed in Ruile and
Davis in a hostile environment because Davis “states that this type of device
allows for identification in rugged operating conditions” (Ans. 17). We
agree with the Examiner. Ruile discloses a “piezo-electric body, known per
se, of the surface-wave arrangement” (col. 3, ll. 14-15). Davis discloses a
device including piezoelectric elements that is “durable in most
environments, susceptible to rugged operation, and economical in cost” (col.
1, ll. 15-17). Accordingly, we conclude that one would have been motivated
to use a piezo-electric measurement sensor as taught by Ruile and Davis in a
measuring apparatus like the one taught by Marsh so that the apparatus
would be durable and could operate in hostile environments. Thus, we find
no error in the Examiner’s obviousness rejection of claims 19 and 20.
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Obviousness Rejections of Claims 22, 23, 25, 26, 28, and 29 Over
Marsh in view of Horowitz and Hill, Ruile and Davis
Appellants argue that the Examiner erred in rejecting claims 22, 23,
25, 28, and 29 for the same reasons set forth with respect to claims 19 and
20 (App. Br. 11-12). As explained supra, however, we do not find those
arguments to be persuasive and accordingly, we will sustain the Examiner’s
obviousness rejections of claims 22, 23, 25, 26, 28, and 29.

Obviousness Rejections of Claims 30-33
Appellants contend that the Examiner erred in rejecting claims 30 as
obvious because “the examiner has provided no explanation of how the
sensor/current control circuitry 46 of Warrior could be utilized in the system
of Marsh et al.” (App. Br. 12). Appellants also contend that the Examiner’s
rejections of claims 31-33 “should be reversed insofar as the examiner’s
attempted use of connectors (Horowitz and Hill) and calibration data
(Warrior) has not been adequately supported” (id. at 13, (emphasis
omitted)).
The Examiner concluded, however, that “i]t is well known in the art
that instruments can require calibration data . . . to produce accurate
measurements” (Ans. 18). The Examiner further reasoned that “[t]he benefit
of producing accurate measurements provides motivation for the use of the
calibration disclosed by Warrior with the invention of Marsh” (id.). We
agree with the Examiner. Warrior discloses the storage of “data used by
sensor/current control circuit 46, such as span and zero calibration data”
(col. 5, ll. 1-3). We conclude that one could have used the calibration data
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as taught by Warrior in a measuring apparatus as taught by Marsh to provide
accurate measurements. Thus, we find no error in the Examiner’s
obviousness rejections of claims 30-33.

DECISION
We affirm the Examiner’s decision rejecting claims 12 and 13 as
being anticipated under 35 U.S.C. § 102(b) and claims 14-33 as being
unpatentable under 35 U.S.C. § 103(a).
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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