Ex Parte Juhl

Patent Trial and Appeal Board

Oct 31, 2017

13885345 (P.T.A.B. Oct. 31, 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.
13/885,345 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).
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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.
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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
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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.
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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
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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
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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
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