09977664 (B.P.A.I. Dec. 29, 2010)

Ex Parte Herpst

Board of Patent Appeals and InterferencesDec 29, 2010

09977664 (B.P.A.I. Dec. 29, 2010)

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. 09/977,664 10/15/2001 Robert D. Herpst 3468 26009 7590 12/29/2010 ROGER M. RATHBUN 13 MARGARITA COURT HILTON HEAD ISLAND, SC 29926 EXAMINER ALEXANDER, LYLE ART UNIT PAPER NUMBER 1773 MAIL DATE DELIVERY MODE 12/29/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte ROBERT D. HERPST ________________ Appeal 2009-010280 Application 09/977,664 Technology Center 1700 ________________ Before CHUNG K. PAK, CAROL A. SPIEGEL, and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-010280 Application 09/977,664 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, 10, 11, 15-20, 28, 30, 31, 33, 35-37, and 39-53, all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The appealed invention relates to a sample holder for use with a spectroscopic analytical instrument, comprising an infrared light transmitting alkali halide crystal sample supporting substrate, as well as methods of making and using the sample holder. Claim 1 is illustrative: 1. A sample holder for use with an infrared spectrophotometer or infrared filtometer that analyzes a sample through which infrared light is transmitted comprising a mounting means comprised of a first material having an aperture formed therein, an infrared light transmitting alkali halide crystal sample supporting substrate being present in the aperture comprised of a second material allowing infrared light to pass therethrough without the infrared light transmitting alkali halide crystal sample supporting substrate or any other material within the aperture substantially absorbing infrared light within a substantial portion of the infrared spectral range, said infrared light transmitting alkali halide crystal sample supporting substrate being formed by one or more of the steps comprising cleaving, fly cutting, chipping, milling, or scaling. In addition to the admitted prior art on pages 3-8 of the original Specification ("APA"), the Examiner also relies on the following prior art in rejecting the claims on appeal: Eden et al. 4,843,030 Jun. 27, 1989 Marker et al. 4,855,110 Aug. 8, 1989 Izumi 4,932,780 Jun. 12, 1990 Gagnon et al. 5,764,355 Jun. 9, 1998 Appeal 2009-010280 Application 09/977,664 3 Appellant requests review of the following rejections: Claims 1, 2, 10, 11, 15-20, 28, 30, 31, 33, 35-37, 39-44, and 46-53 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Gagnon and Eden, further in view of APA or Izumi. Claim 45 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Gagnon and Eden, further in view of APA or Izumi, further in view of Marker. OPINION The issue presented for review is the following: Did the Examiner err in determining that the combination of Gagnon, Eden, APA, and Izumi would have suggested a sample holder for use with a spectroscopic analytical instrument, comprising an infrared light transmitting alkali halide crystal sample supporting substrate as required by the independent claims.2, 3 We answer this question in the affirmative. Appellant argues that any combination of Gagnon, Eden, APA, and Izumi would not have suggested the claimed invention. (App. Br. 11-24). Appellant contends that Gagnon discloses two sample supporting embodiments. The first embodiment is a screen material and the second embodiment is a microporous sheet. (Paragraph bridging App. Br. 12-13). Appellant argues that Gagnon discloses glass, quartz, metals, and alloys, as well as polymeric materials, are suitable for utilization only as the first embodiment, i.e., screen material. (App. Br. 13). Appellant 2 We select independent claims 1 and 45 as representative of the appealed subject matter. Independent claim 45 can be found at pages 45-45 of the Appeal Brief. 3 The Examiner cited APA for "teach[ing that] the second IR transmitting material may be glass, quartz or polymeric materials" (Ans. 3) and for describing it was known to use highly polished crystals with spectrophotometers and Izumi for describing the polishing of crystals (id. at 4). Appeal 2009-010280 Application 09/977,664 4 maintains that there is no suggestion to substitute a cleaved crystal for the screen of Gagnon. Appellant further argues that “the Examiner does not point to any teaching in any prior art which shows that a crystal can be made into a screen….” (App. Br. 12). We agree with Appellant. The Examiner has not provided a reasonable basis for asserting that that the claimed particular cleaved crystal is useful as the screen of Gagnon or that a person of ordinary skill in the art would have had any other convincing reason to substitute the claimed particular cleaved crystal for the screen receiving means of Gagnon. The Examiner has failed to rely upon evidence that establishes a sufficient correlation or equivalency between screen material that does not transmit infrared radiation and a crystal substrate that allows infrared radiation to pass through. “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For the foregoing reasons the Examiner’s rejections are reversed. DECISION The Examiner’s rejections of claims 1, 2, 10, 11, 15-20, 28, 30, 31, 33, 35-37, and 39-53 are reversed. REVERSED bar Appeal 2009-010280 Application 09/977,664 5 ROGER M. RATHBUN 13 MARGARITA COURT HILTON HEAD ISLAND, SC 29926