Ex Parte JuhlDownload PDFPatent Trial and Appeal BoardOct 31, 201713885345 (P.T.A.B. Oct. 31, 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. 13/885,345 05/14/2013 Henrik Vilstrup Juhl 8472D-000028/US/NP 8475 30593 7590 11/02/2017 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER GAWORECKI, MARK R ART UNIT PAPER NUMBER 2884 NOTIFICATION DATE DELIVERY MODE 11/02/2017 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): dcmailroom@hdp.com pshaddin@hdp.com j Castellano @hdp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENRIK VILSTRUP JUHL Appeal 2016-005815 Application 13/885,345 Technology Center 2800 Before PETER F. KRATZ, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1—9 of Application 13/885,345 under 35 U.S.C. § 103(a) as obvious. Final Act. (March 10, 2015). Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we affirm. 1 Foss Analytical A/S is identified as the real party in interest. Appeal Br. 1. Appeal 2016-005815 Application 13/885,345 BACKGROUND The ’345 Application describes systems and methods for quantitatively determining components of a flowing heterogeneous material by mid-infrared spectral analysis. Spec. 11. These systems and methods are said to be particularly useful for determining the compositional parameters of liquids in which particles are suspended, e.g., fat-containing milk. Id. Claim 1 is representative of the 345 Application’s claims and is reproduced below from the Claims Appendix: 1. A method of determining components of a flowing heterogeneous sample comprising: obtaining a sample of material; measuring mid-infrared attenuation values of the sample; and calculating in a data processing unit an indication of a component of interest in the sample from the measured mid- infrared attenuation values, wherein the method further comprises flowing the sample; concurrently interacting mid-infrared radiation with the flowing sample in a measurement region; and subsequently measuring the mid-infrared attenuation values for one or more wavebands of the interacted radiation transmitted through the sample. Appeal Br. 21 (emphasis added). 2 Appeal 2016-005815 Application 13/885,345 REJECTION On appeal, the Examiner maintains the following rejection: Claims 1—9 are rejected under 35 U.S.C. §103 (a) as unpatentable over the combination of Mantele2 and Ridder.3 Final Act. 2. DISCUSSION Appellant presents substantive argument for reversal of the rejection of claim 1. See Appeal Br. 12—19. Claims 2—5 and 8 are alleged to be patentable by virtue of their dependency from claim 1. Id. at 19. Independent claim 6 is alleged to be “patentable for at least reasons somewhat similar to those set forth above regarding claim 1.” Id. Appellant presents no substantive argument and no explanation regarding any differences that might exist between the arguments advanced in support of the patentability of claim 6 and claim 1. Id. Claims 7 and 9 are alleged to be patentable based upon their dependency from claim 6. Id. In view of the foregoing, we select claim 1 as representative of all of the claims on appeal. 37 C.F.R. § 41.37(c)(l)(iv) (2015). The remaining claims on appeal will stand or fall with claim 1. Appellant argues that the rejection of claim 1 should be reversed for four reasons: (1) “the Office Action provides no discussion of which portions of Mantele discloses measuring the mid-infrared attenuation values for one or more wavebands of the interacted radiation transmitted through the sample, as recited in claim 1,” Appeal Br. 12; (2) “the Office Action 2 DE 103 52 924 Al, published July 14, 2005. We rely upon and cite the machine translation entered into the record on March 15, 2016. 3 US 2005/0279924 Al, published December 22, 2005. 3 Appeal 2016-005815 Application 13/885,345 provides no discussion regarding the deficiencies of Mantele for which Ridder is introduced,” id.', (3) the Examiner erred by finding that the combination of Mantele and Ridder discloses the feature of subsequently measuring the mid-infrared attenuation values for one or more wave bands of the interacted radiation transmitted through the sample, id. at 13; and (4) the Examiner’s proposed modification of Mantele in view of Ridder changes Mantele’s principle of operation and renders Mantele unsatisfactory for the intended purpose, id. at 14—19. For the reasons set forth below, we are not persuaded by Appellant’s arguments. First, Appellant argues that the Examiner does not identify which portions of Mantele discloses measuring the attenuation values for one or more wave bands of the interacted radiation transmitted through the sample as recited in claim 1. Id at 12. We agree with Appellant, but we determine that this does not constitute reversible error because the Examiner does not rely upon Mantele’s teaching this limitation. Rather, the Examiner relies upon Ridder’s description of methods and apparatus for determining components of the heterogeneous material (e.g., milk, paragraph [0001]) which would comprise the steps of obtaining a sample of material. . . , measuring mid-infrared attenuation values of the sample (from source 23 to detector 24 through the sample in cuvette 20), and calculating an indication of the component of interest from the measured values (paragraph [0079]). Final Act. 2—3 (bold italics added). Second, Appellant argues that the rejection should be reversed because “the Office Action provides no discussion regarding the deficiencies of Mantele for which Ridder is introduced.” Appeal Br. 12. We are not 4 Appeal 2016-005815 Application 13/885,345 aware of any requirement that the Examiner specifically identify the deficiencies in any one reference for which other references may be introduced into a rejection under § 103. The difference or differences between the claimed invention and the combined teachings of the prior art (if any) is a question of fact underlying the legal conclusion of obviousness. Examiners should set forth their factual determinations regarding this question of fact in an Office Action. See MPEP § 706.02(j). Failure to do so with respect to each individual reference is not reversible error. Third, Appellant argues that the rejection of claim 1 should be reversed because, [g]iven the Examiner’s failure to provide any indication as to how either Mantele or Ridder disclose the feature of “subsequently measuring the mid-infrared attenuation values for one or more wavebands of the interacted radiation transmitted through the sample,” ... it is unclear how it would be obvious to one of ordinarly [sic] skill in the art to combine Mantele and Ridder to arrive at the above-recited feature of claim 1. Appeal Br. 13 (emphasis in original). This argument is not persuasive of reversible error. The Examiner found that [i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of Mantele et al. by the substitution of measuring reflectance with the measurement of transmission suggested by Ridder with predictable results (an analysis of milk to determine fat by spectroscopic measurements). Final Act. 3. Thus, the Examiner made the necessary findings and provided the required reasoning to support the rejection in this respect. 5 Appeal 2016-005815 Application 13/885,345 Fourth, Appellant argues that the rejection should be reversed because the Examiner’s proposed combination of Mantele and Ridder would change Mantele’s principle of operation and render Mantele unsatisfactory for its intended purpose. Appeal Br. 14—19. In particular, Appellant argues that Mantele is an infrared spectrometer that uses an attenuated total internal reflection (“ATR”) element to cause infrared radiation to interact with the sample. Id. at 14. In such a spectrometer, the infrared radiation does not pass through the sample. Rather, the interaction of the infrared radiation with the sample is limited to the interaction of the evanescent field with the sample. The evanescent field is a portion of the infrared radiation’s electromagnetic field that extends past the interface of the ATR element and into the sample at the point where the infrared radiation is reflected from the surface of the ATR element. In the rejection, the Examiner proposes replacing Mantele’s ATR element with Ridder’s optical system which passes infrared radiation through the sample as the sample flows through a cuvette. Final Act. 2—3. In the proposed combination, the infrared radiation passes through the sample, and the interaction of the infrared radiation with the sample is not limited to the evanescent field. According to Appellant, this substitution means that the Examiner’s proposed combination relies upon a different principle of operation than that used by Mantele. Appeal Br. 14—17. We are not persuaded by this argument. Appellant is considering the principle of operation of Mantele and of the Examiner’s proposed combination at a level that is too narrow and detailed. At the appropriate level of generality, both Mantele and the Examiner’s proposed combination 6 Appeal 2016-005815 Application 13/885,345 use the attenuation of mid-infrared radiation to provide a quantitative analysis of the composition of liquid samples. Appellant also argues that the Examiner’s proposed combination renders Mantele unsuitable for its intended purpose. Appeal Br. 18—19. In particular, Appellant argues that, because Mantele uses an ATR element, its measurements of the attenuation of the mid-infrared radiation by the sample is unaffected by suspended solids or gas bubbles in the bulk sample. Id. at 18 (citing Mantele 16). On the other hand, Ridder’s optical system passes the infrared radiation through the bulk sample. Id. Thus, Appellant argues, in the Examiner’s proposed combination, suspended solids and gas bubbles would interfere with the attenuation measurements. Id. This, according to Appellant, creates a system that is unsuitable for Mantele’s intended purpose. We are not persuaded by this argument. Substitution of Ridder’s optical system for the ATR element described in Mantele was a design choice that is within the level of ordinary skill in the art at the time of the invention. Each of these systems for interacting infrared radiation with a sample has a specific set of advantages and disadvantages that were known to a person of skill in the art. For example, because Mantele relies upon the interaction of a small evanescent field with the sample, the amount of attenuation provided by this interaction is very small relative to a system— such as that described in Ridder—in which the infrared radiation passes through a sample. A person of ordinary skill in the art would have been aware of each of the optical systems’ relative advantages and of ways to compensate for the disadvantages of each. Appellant has not provided sufficient evidence that a person of ordinary skill in the art would have been unable to compensate for the presence of suspended solids and gas bubbles 7 Appeal 2016-005815 Application 13/885,345 in a sample analyzed by an infrared spectrometer that uses Ridder’s optical system. CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1—9 of the ’345 Application. 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 8 Copy with citationCopy as parenthetical citation