Ex Parte Hibbs et al

Patent Trial and Appeal Board

Feb 26, 2018

12000234 (P.T.A.B. Feb. 26, 2018)

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.
12/000,234 12/11/2007 Andrew D. Hibbs QFS010 2850
7590 02/27/2018
DIEDERIKS & WHITELAW, PLC
Suite 317
13885 Hedgewood Dr.
Woodbridge, VA 22193-7932
EXAMINER
SCHINDLER, DAVID M
ART UNIT PAPER NUMBER
2858
MAIL DATE DELIVERY MODE
02/27/2018 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 ANDREW D. HIBBS and THOMAS KURT NIELSEN1
Appeal 2016-005553
Application 12/000,234
Technology Center 2800
Before BEVERLY A. FRANKLIN, KAREN M. HASTING, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Quasar Federal Systems,
Inc. Appeal Br. 4.
Appeal 2016-005553
Application 12/000,234
Appellants request our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1—14 and 19-28. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is set forth
below:
1. A system for measuring magnetic and electric fields present in an
electrically conducting medium, the system comprising:
a group of components constituting an integrated sensor package including:
two magnetic sensors, each magnetic sensor having a magnetic field
induction coil for producing a magnetic field signal and a magnetic field
signal amplifier connected to the induction coil for producing an amplified
magnetic field signal based on the magnetic field signal, each induction coil
being disposed so as to measure fields in orthogonal directions;
two electric field sensors, each electric field sensor having an electric
field signal amplifier connected to at least two electric potential antennas for
producing an amplified electric field signal, each electric field sensor being
disposed so as to measure fields in orthogonal directions, the at least two
electric potential antennas each including a respective capacitive electrode
being adapted to measure an electric potential and having a conducting core
and an electrically insulative layer covering the core, said insulative layer
preventing transfer of a resistive current from the core to the medium;
a data acquisition system for receiving the amplified electric field
signals and the amplified magnetic field signals and storing data
representative thereof; and
a power supply for providing electrical power to the data acquisition
system, the electric sensors and the magnetic sensors.
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Appeal 2016-005553
Application 12/000,234
The Examiner relies on the following prior art references as evidence of
unpatentability:
Jones US 2,872,638 Mar. 31, 1955
Chaney US 3,593,118 July 13, 1971
Stanbro US 4,728,882 Mar. 1, 1988
Constable US 5,770,945 June 23, 1998
Webb US 6,512,356 B1 Jan. 28, 2003
Conti US 6,842,006 B2 Jan. 11,2005
Hibbs US 2005/0073302 Al Apr. 7, 2005
THE REJECTIONS
1. Claims 10 and 21 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.2
2. Claims 1, 3, 5, 6, 8, 10, 11, 12, 14, 19, 20, 23, 24, 26, 27, and 28 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Constable in view
of Stanbro et al. (“Stanbro”) or Jones.
3. Claims 2, 4, 13, and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Constable in view of Stanbro or Jones and in further view of
Hibbs et al. (“Hibbs”).
4. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Constable in view of Stanbro or Jones and in further view of Chaney et al.
(“Chaney”).
2 In the Advisory Action dated August 5, 2015, the Examiner withdrew the
rejection of claims 2, 4, and 5 in this rejection. On page 2 of the Answer, the
Examiner also withdrew the rejection of claim 9 in this rejection. Claims 10 and 21
remain rejected.
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Application 12/000,234
5. Claims 9 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Constable in view of Stanbro or Jones and in further view of
Webb.
6. Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Constable in view of Stanbro or Jones and in further view of Conti et al.
(“Conti”).
ANALYSIS
Upon consideration of the evidence and each of the respective positions set
forth in the record, we find that the preponderance of evidence supports Appellants’
position in the record, and accordingly, we reverse each of the Examiner’s
rejections on appeal.
Rejection 1
With regard to claim 10, the Examiner states that the claimed phrase “of the
at least four electric potential antennas” lacks antecedent basis and is therefore
unclear. The Examiner states that “[wjhile claim 1 does recite that each electric
field sensor is connected to at least two electric potential antennas, this does not
mean that each sensor cannot be connected to the same two potential antennas,
and as such there is not necessarily four antennas.” Final Act. 8.
On page 10 of the Appeal Brief, Appellants argue that while claim 1
does not specifically recite “at least four electric potential antennas”, claim 1
does recite “two electric field sensors, each electric field sensor having an
electric field amplifier connected to at least two electric potential antennas”
and that when read in light of the Specification, claim 1 does allow for
antecedent basis for four electric potential antennas.
In response, the Examiner states that claim 1 states “each electric field
sensor having an electric field amplifier connected to at least two electric
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Application 12/000,234
potential antennas.” Ans. 3. The Examiner states that therefore each electric
field sensor has an electric field amplifier, but the claim does not clearly state or
require that each electric field sensor also has at least two electric potential
antennas. Id. The Examiner states that the claim only requires that the electric
field amplifiers are connected to at least two electric potential antennas. In
other words, this claim can be interpreted as meaning that each electric field
sensor includes an amplifier, and that there are two electric potential
antennas, where the amplifier of each electric field sensor is connected to
these two electric potential antennas. Ans. 3^4. The Examiner states that
therefore claim 1 can reasonably be read to mean that there are only two
electric potential antennas introduced in claim 1, and therefore the recitation
in claim 10 of “the at least four electric potential” is unclear and lacks
antecedent basis because Appellants do not clearly have four electric
potential antennas in claim 1.
We note that a claim must be read in accordance with the precepts of English
grammar. In re Hyatt, 708 F.2d 712, 715 (Fed. Cir. 1983). There is a heavy
presumption that a claim term carries its ordinary and customary meaning. Amgen,
Inc. v. Hoechst Marion Rous el, Inc., 314 F.3d 1313, 1327. In the instant case, the
phrase “two electric field sensors, each electric field sensor having an electric field
signal amplifier connected to at least two electric potential antennas for producing
an amplified electric field signal” plainly means that each electric field amplifier
is connected to at least two potential antennas in a manner for producing an
amplified electric field signal. In order to produce the amplified electric field
signal, each electric field amplifier cannot be connected to the same at least two
electric potential antennas. As such, we agree with Appellants that each electric
field amplifier is connected to respective at least two electric potential antennas.
Figure 4 depicts such a configuration. This is not to say that limitations from
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Application 12/000,234
the Specification are being read into the claims as stated by the Examiner on
page 5 of the Answer. Rather, the claim requires such a configuration “for
producing an amplified electric field signal” which is recited in the claim.
We are thus persuaded by Appellants’ arguments pertaining to claim 10.
With regard to claim 21, the Examiner states that the phrase “minimizing a
DC potential difference between the electrodes and the water in order to minimize
electrochemical noise at the electrodes” is not understood in that it is not clear
how Appellants are performing this claim feature or what feature of the original
disclosure performs this feature. Final Act. 8.
Appellants argue that cited sections of the Specification on pages 10-11 of the
Appeal Brief show that it is electrical isolation that is used to minimize a DC
potential difference between the electrodes and water. Appellants refer to page 8 and
page 44 of the Specification in this regard. Appeal Br. 10-11.
On pages 6—8 of the Answer, the Examiner responds by stating that the parts
of the Specification relied upon by Appellants do not adequately support the function
of minimizing the DC potential to minimize electrochemical reactions at the
electrode, for the reasons discussed therein.
In reply, Appellants argues that the Examiner’s interpretation of page 44 is out
of context. Reply Br 3^4. Therein, Appellants argue that the Examiner
acknowledges that the section of the Specification cited by the Applicant (p. 44,
line 22 to p. 45, line 10), discloses “that the difference between the average DC
potential to the input of the amplifier module and the medium can be minimized,”
but denies that the cited section refers to the claimed minimizing of electromagnetic
noise at the electrodes. Appellants explain that the sentence in the Specification,
just before the section cited, refers to the electrochemical reactions at each
electrode surface. Appellants explain that, in other words, by reducing the
difference between the average DC potential to the input of the amplifier module
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Application 12/000,234
and the medium, one also is minimizing a DC potential difference between the
electrodes and the water in order to minimize electrochemical noise at the
electrodes. Reply Br. 4. Appellants submit that therefore the cited section of
Specification provides several ways of accomplishing this minimization. We are
persuaded by this argument.
Appellants also reply that the Examiner then requires an explanation of what
structure is used to perform the claimed minimization. Reply Br. 4. Appellants
submit that this method claim is supported by the Specification and one skilled in
the art would know to conduct the method with one of the many embodiments
disclosed in the Specification. Appellants state that, for example, one would know
to employ at least one of the following two described arrangements (Spec. p. 44, 1.
15 — p. 45, 1. 10), reproduced below:
An amplifier consisting of an analog amplification module is
connected to an electrically isolated battery power supply and circuit
ground point. The output of the analog amplification chain is connected
to an analog optical isolation stage which serves as the interface to a
digitizing module, which itself is referenced to the DC potential of the
other system elements, for example the magnetic field amplifiers.
Alternatively, the analog amplification module and digitizing module
are connected to a common, electrically isolated, battery power supply
and circuit ground point, and the output of the digitizing module is
connected to a digital optical isolation stage, which serves as the
interface to the DC electrical potential of the recording system and other
system elements.
In view of the above, we are persuaded by Appellants stated position in the
record regarding claim 21.
We thus reverse Rejection 1.
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Application 12/000,234
Rejection 2
The dispositive issue in this rejection is whether the Examiner’s equivalency
theory is supported by the facts in the record. The Examiner proposes to substitute
the non-polarizing electrode (resistive electrode) with the capacitive electrode of
Stanbro or Jones. Final Act. 10—11.
Appellant argues that because Constable discloses that any non-polarizing
electrodes can be used, that this excludes the claimed capacitive electrode which is a
polarizing electrode. As such, Appellants submit that it would not have been obvious
to have substituted a polarization electrode for the non-polarization electrode of
Constable. Appeal Br. 12.
The Examiner states that “[njowhere does Constable state that other types
of electrodes cannot be used” and that “Constable further does not state that
capacitive electrodes cannot be used in place of the disclosed electrodes.” Ans. 9.
The Examiner also relies upon the art recognized equivalence theory in support of the
proposed substitution. Ans. 9—10. The Examiner states that nothing in the
combination precludes the use of a different type of electrode such as a capacitive
electrode. Ans. 12.
However, we are in agreement with Appellants’ stated position in the record.
First, it is well settled that the Examiner bears the initial burden of presenting a prima
facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). It
is thus the Examiner’s burden to show art recognized equivalence. As pointed out by
Appellants, and contrary to the Examiner’s understanding of Constable, Constable is
limited to the use of non-polarizing (resistive) electrodes only. Constable, col. 6,11.
5—7. Appeal Br. 12. Reply Br. 5. Also, as pointed out by Appellants, resistive
electrodes and capacitive electrodes are no more substitutes for each other than
resistors are for capacitors. Reply Br. 6. Appellants point out that resistive
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Application 12/000,234
electrodes do not work the same way as capacitive electrodes and nowhere does the
prior art recognize their equivalence. Reply Br. 6.
In view of the above, we are persuaded that the Examiner’s equivalency
theory is unsupported by the facts in the record, and that the Examiner’s
understanding of Constable is not accurate, and thus we agree with Appellants that
the Examiner’s rejection is unsupported by the record. Rejections 3 and 4 are flawed
in a similar manner. We thus reverse Rejections 2-4.
DECISION
Each rejection is reversed.
ORDER
REVERSED
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