Ex Parte Howe

Patent Trial and Appeal Board

Jul 21, 2017

13633790 (P.T.A.B. Jul. 21, 2017)

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.
13/633,790 10/02/2012 Michael D. Howe MCN325USPT02 7083
23403 7590 07/25/2017
SHERRILL LAW OFFICES
4756 BANNING AVE
SUITE 212
WHITE BEAR LAKE, MN 55110-3205
EXAMINER
HULS, NATALIE F
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
07/25/2017 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):
michaels @ sherrilllaw.com
izag @ sherrilllaw.com
docketing @ sherrilllaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL D. HOWE
Appeal 2015-006230
Application 13/633,790
Technology Center 2800
Before LINDA M. GAUDETTE, MARK NAGUMO, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
November 25, 2014 decision finally rejecting claims 1—21 (“Final Act.”).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as Mocon, Inc. (Appeal Br. 2).
Appeal 2015-006230
Application 13/633,790
CLAIMED SUBJECT MATTER
Appellant’s invention is said to be directed to a method of calibrating a
zirconium oxide sensor for measuring the oxygen content of a monitored gas
and an oxygen sensor calibrated using that method (Abstract; Spec. 13).
According to Appellant, the claimed inventions “use a well-known
mathematical equation (the Nemst Equation) to perform a real-world
function of solving a specific technological problem in conventional industry
practice” (Appeal Br. 7). Details of the claimed invention are set forth in
representative claim 1, which is reproduced below from the Claims Appendix
of the Appeal Brief:
1. A method of calibrating a zirconium oxide sensor operable
for measuring oxygen content of a monitored gas by detecting
passage of oxygen ions through a heated zirconium oxide
ceramic partition having opposed first and second surfaces with
the first surface in fluid communication with a reference gas
having a known mole fraction of oxygen and the second surface
in fluid communication with a monitored gas having a known
mole fraction of oxygen, characterized by use of a reference gas
and a monitored gas having the same mole fraction of oxygen
but different partial pressures of oxygen.
REJECTIONS
I. Claims 1, 2, 5, 8, 11, 15, 16, and 19 are rejected under under 35
U.S.C. §112,12, as being incomplete for omitting essential steps.
II. Claims 1—21 are rejected under 35 U.S.C. § 101 as not being
directed to patentable subject matter.
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Application 13/633,790
III. Claims 1—21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ruka2 in view of Layzell.3
DISCUSSION
Rejection I. The Examiner determines that claim 1 omits essential
steps for the claimed method because the only method step recited is the
“use” of a reference gas and a monitored gas having the same mole fraction
of oxygen but different partial pressures of oxygen (Final Act. 6).
According to the Examiner:
Since all other method steps are missing, one having ordinary
skill would not know how to perform this method in such a way
as to result in the successful calibration of a sensor.
Furthermore, providing only a single method step does not
clearly and precisely inform persons skilled in the art of the
boundaries of the subject matter for which Applicant is seeking
protection.
The first reason set forth by the Examiner (a person of ordinary skill
would not know how to perform this method successfully) suggests an
enablement rejection, rather than an indefiniteness rejection. However, the
claim specifies that the method detects the passage of oxygen ions through a
heated CrCE ceramic partition, and the Specification provides details of how
to specifically carry out the claimed method (e.g., Spec. Tflf 13, 16—19). The
Specification also indicates that the methods of detecting the passage of
oxygen ions are standard in the art. The Examiner has not explained why
2 Ruka et al., US 5,498,487, issued March 12, 1996.
3 Layzell et al., US 5,542,284, issued August 6, 1996.
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Application 13/633,790
these characterizations are inaccurate or insufficient to carry out these parts
of the method. When rejecting a claim as non-enabled, the PTO bears an
initial burden of setting forth a reasonable explanation as to why it believes
the claim is not adequately enabled by the Specification. In re Wright, 999
F.2d 1557, 1561—62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220,
223-24 (CCPA 1971)).
With regards to the second rationale — that providing only a single
method step does not clearly and precisely inform persons skilled in the art
of the boundaries of the claimed subject matter —the Examiner further states
that the claimed method does not explain how one starts with an
uncalibrated sensor, uses the claimed gases, and arrives at a calibrated sensor
(Ans. 4).
During prosecution:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). Claims are definite if
they:
[S]et out and circumscribe a particular area with a reasonable
degree of precision and particularity. It is here where the
definiteness of the language employed must be analyzed—not
in a vacuum, but always in light of the teachings of the prior art
and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the
pertinent art.
In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). In other words, the
relevant question is: can a person of skill in the art understand whether a
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Application 13/633,790
particular embodiment falls inside or outside the scope of the claim at issue?
In this instance, as explained by Appellant, claim 1 is clear in stating that the
claimed method requires the use of a reference gas and a monitored gas
having the same mole fraction of oxygen but different partial pressures of
oxygen. Thus, the claim covers any process which uses a reference gas and
a monitored gas having the recited relationship to perform the calibration.
Appellant argues (Appeal Br. 5), and the Examiner does not dispute (Ans.
5), that a person of skill in the art would understand how to perform the
claimed calibration. As articulated by Appellant, the claim is broad in that
any process which uses the recited gases having the recited relationship
would fall within its scope. However, that a claim is broad does not mean it
is indefinite, so long as one of skill can understand its scope. Merely that a
claim is broad does not mean that it is indefinite. See In re Johnson, 558
F.2d 1008, 1016 n.17 (CCPA 1977).
Accordingly, we reverse the indefmiteness rejection under §112,12.
Rejection II. The Supreme Court has recently re-emphasized
established precedent that “laws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134 S. Ct.
2347, 2354 (2014) (quoting Assoc, for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The “abstract ideas” category
embodies the longstanding rule that an idea, by itself, is not patentable. Id.
at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court reiterates an analytical two-step
framework previously set forth in Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289 (2012), “for distinguishing patents that claim
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Application 13/633,790
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice, 134 S. Ct at 2355.
The first step in the analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts,” such as an abstract idea.
Id. If the claims are directed to a patent-ineligible concept, the second step
in the analysis is to consider the elements of the claims “individually and ‘as
an ordered combination’” to determine whether there are additional elements
that “‘transform the nature of the claim’ into a patent-eligible application.”
Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second
step is to “search for an ‘inventive concept’—i.e., an element or combination
of elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294).
In this instance, we determine that the claimed method and apparatus
are not directed to a patent-ineligible concepts, such as an abstract idea. In
particular, as explained by Appellant (Br. 7), the claimed method is a
specific application of the Nemst Equation to the process of calibrating a
sensor (Spec. ^fl[ 15—21). Thus, the claim “transforms” the uncalibrated
sensor from a device which is not useful to one which is useful.
Accordingly, we determine that the claimed method and apparatus are not
directed to an abstract idea or a law of nature. Thus, we reverse the rejection
under § 101.
Rejection III. The Examiner finds that Ruka discloses a method of
calibrating an oxide electrolyte oxygen sensor operable for measuring
oxygen content of a monitored gas by detecting the passage of oxygen ions
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Application 13/633,790
through a heated partition having opposed first and second surfaces (Final
Act. 10—11). The Examiner further finds that Ruka teaches that a zirconium
oxide sensor is a known example of an oxide electrolyte sensor (Final Act.
11, citing Ruka 4:51—5:14).
The Examiner also finds that Ruka does not disclose the use of a
reference gas and a monitored gas having the same mole fraction of oxygen
but different partial pressures of oxygen (Final Act. 11), but that Layzell
discloses the use of such gases in a method for calibrating an oxide sensor
{id., citing Layzell 10:11—45). The Examiner concludes that it would have
been obvious to apply Layzell’s technique to Ruka’s sensor for the purpose
of calibrating a zirconium oxide sensor with needing gas mixing or
additional laboratory facilities {id.)
Having considered the arguments and evidence raised in Appellant’s
Brief, we determine that Appellant has not shown reversible error in the
rejection.
Appellant contends that Ruka does not disclose a process of
calibration, but rather only a process for measuring oxygen partial pressure
(Br. 8). However, the passage cited by both Appellant and the Examiner
explicitly recites how Ruka’s system can be calibrated:
For calibration, in Ruka, et al., one of the electrodes of the
electrochemical cell is used as a reference electrode over which
flows an atmosphere with known oxygen partial pressure and
total overall pressure. An oxygen containing atmosphere to be
measured of known total pressure is exposed to the other
electrode which can be termed the measurement or sensor
electrode. The measured potential difference between the
electrodes is used to calculate the unknown partial pressure of
the oxygen at the sensor electrode and, thus, the oxygen
concentration of the oxygen containing sample atmosphere.
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Application 13/633,790
(Ruka 2:38-48). This passage describes a calibration process as recited in
claim 1. Accordingly, contrary to Appellant’s argument, Ruka at the very
least suggests a calibration technique.
Appellant also argues that Layzell does not disclose the use of a
reference gas and a monitored gas having the same mole fraction of oxygen
but different partial pressures of oxygen in connection with an absolute
sensor, but only in connection with the calibration of a differential sensor
block (Br. 9). However, as found by the Examiner, “[i]t is understood in the
art that two gas streams having different partial pressures of oxygen are
needed to calibrate both differential oxide sensor blocks (see Layzell col.
10, lines 12—16) and absolute zirconium oxide sensors (see Ruka, col. 2, 38-
48” (Ans. 11). The Examiner further finds that Layzell suggests that a
person of ordinary skill would want to use a reference gas and a monitored
gas having the same mole fraction of oxygen but different partial pressures
of oxygen for calibration, in order to use one gas source for both streams
(see, Layzell, 10:35—39), and that nothing in Layzell would preclude using
Layzell’s method step in Ruka’s sensor (id.)4 Appellant has not disputed
these findings and, therefore, has not shown reversible error in them.
With regards to the other arguments raised by Appellant (Br. 8—10),
Appellant has not persuasively explained how the technical issues discussed
4 Additionally, we note that Layzell discloses that the same O2 sensor
(Ligaro Model KE-25) is used in connection with both the absolute sensor
and the differential sensor block (Layzell, 5:33—36, 5:48—52). This supports
the Examiner’s finding that oxygen sensors for absolute and differential
blocks may be calibrated in the same manner.
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Application 13/633,790
therein pertain to limitations set forth in claim 1. Accordingly, these
technical arguments do not demonstrate reversible error in the rejection.
Accordingly, we affirm the obviousness rejection over Ruka in view
of Layzell.
CONCLUSION
We REVERSE the rejection of claims 1, 2, 5, 8, 11, 15, 16, and 19 under 35
U.S.C. §112,12, as being incomplete for omitting essential steps.
We REVERSE the rejection of claims 1—21 under 35 U.S.C. § 101 as
not being directed to patentable subject matter.
We AFFIRM the rejection of claims 1—21 under 35 U.S.C. § 103(a) as
being unpatentable over Ruka in view of Layzell.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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