Ex Parte Koste et al

Board of Patent Appeals and Interferences

Jul 10, 2012

11277294 (B.P.A.I. Jul. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GLEN PETER KOSTE, RICHARD LOUIS FREY,
and JOSEPH ALFRED IANNOTTI
____________________

Appeal 2010-004096
Application 11/277,294
Technology Center 2800
____________________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JENNIFER S. BISK, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/277,294

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DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

STATEMENT OF THE CASE
The claims are directed to a system and method for optical sensor
interrogation. Title. Claim 1, reproduced below with emphases added, is
illustrative of the claimed subject matter:
1. An optical sensor-interrogation system comprising:
a multi-frequency optical source configured to generate an optical
interrogation signal;
at least one optical sensor configured to filter light at a wavelength
corresponding to a value of a sensed parameter and generate an
optical sensor data signal;
a photodetector configured to detect a reference signal and the
optical sensor data signal and generate an electrical difference
frequency signal corresponding to a wavelength difference between
the reference signal and the optical sensor data signal; and
an electrical frequency measurement module configured to
measure the electrical difference frequency.

THE REJECTIONS
1. Claims 1-8, 10-14, 16-19, 23, 24, and 27 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Kringlebotn (US 6,097,487; Aug.
1, 2000). Ans. 3-8.
2. Claims 9, 15, 20-22, 25, and 26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kringlebotn. Ans. 8.

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CONTENTIONS
The Examiner finds that because the Specification states that “a
photodetector is a square law detector, the two optical signals mix and form
sum and difference signals in the electrical domain,” the photodetector (7)
disclosed in Kringlebotn “inherently generate[s] sum and difference signals
when the reference light from the reference FBG (5) and the measurement
light from the FBG sensors (6) are received.” Final Rej. 3. Thus, the
Examiner finds that Kringlebotn discloses, explicitly or inherently, every
element of representative claim 1. Ans. 3-4.
Appellants argue that Kringlebotn does not disclose, explicitly or
inherently, generating or measuring an electrical difference frequency signal.
App. Br. 7-11; Reply Br. 4-5.

ISSUE
Has the Examiner erred in finding that Kringlebotn discloses “a
photodetector configured to . . . generate an electrical difference frequency
signal” (emphases added) and “an electrical frequency measurement module
configured to measure the electrical different frequency” (emphasis added)?

ANALYSIS
The Anticipation Rejection
We agree with Appellants. The Examiner finds that although
Kringlebotn “does not explicitly disclose determining a Bragg wavelength
through difference determination,” the reference does encompass the
“well-known method” of difference determination. Final Rej. 3. The
Examiner further explains this finding in the Answer by discussing the
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inherent properties of Kringlebotn’s optical sensor, disclosed to be a Fiber
Bragg Grating (“FBG”) sensor:
A Fiber Bragg Grating sensor is a very versatile and robust
sensor that allows a multitude of parameters, e.g. temperature,
pressure, strain, etc., to be measured within hostile
environments. The measurement of such parameters is
accomplished through the examination of the Bragg wavelength
of each sensor, wherein each FBG sensor is specifically
designed to reflect light within a narrow bandwidth centered at
the Bragg wavelength. As the parameter of interest is varied
around a FBG sensor, the Bragg wavelength will shift in
response to the variation of the parameter.
Ans. 9. We agree with the Examiner that Kringlebotn discloses at least one
FBG sensor “configured to filter light at a wavelength corresponding to a
value of a sensed parameter and generate an optical sensor data signal.”
Ans. 3 (citing Kringlebotn Fig. 1, element (6)). We also agree that
Kringlebotn’s photodetector (7) is configured “to detect a reference signal
[from FBG (5)] and the optical sensor data signal [FBG (6)].” Kringlebotn
Fig. 1; col. 4, ll. 37-67. And we find reasonable the Examiner’s finding,
quoted above, relating to the properties of FBG sensors.
However, this explanation does not address Appellants’ argument—
that the photodetector in Kringlebotn does not disclose “generat[ing] an
electrical difference frequency signal corresponding to a wavelength
difference between the reference signal and the optical sensor data signal.”
App. Br. 8. Although the explanation states that because of the nature of
FBG sensors “the Bragg wavelength will shift in response to the variation of
the parameter,” this does not address why photodetector (7) necessarily
generates an electrical difference frequency signal corresponding to the shift.
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To address this argument, the Examiner states, without reference to
evidence, that:
This shift in wavelength of the sensors must then be compared
to the Bragg wavelength of a reference FBG that has a known
and fixed Bragg wavelength. Through this comparison the FBG
sensor system is capable of determining an amount and
direction of variation of a desired parameter, wherein the
comparison is most easily characterized as a difference or
change in difference between the FBG sensor wavelength and
the reference FBG wavelength.
Therefore, Kringlebotn is understood to disclose a FBG
sensor system that utilizes a photodetector (7) to receive the
Bragg wavelengths from a plurality of FBG sensors (6) and a
reference FBG (5), wherein the optical signals received by the
detector (7) are converted into an electrical pulse train (col. 4,
ll. 51-58) (Figures 1 and 2), and wherein the difference between
the FBG sensor wavelengths and the reference FBG wavelength
must be determined to provide a measurement of the variation
of the parameter of interest.
Ans. 9-10.
We are not persuaded that the Examiner has met the burden required
to find a limitation inherently disclosed by a reference. Cont’l Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (“To serve as an
anticipation when the reference is silent about the asserted inherent
characteristic, such gap in the reference may be filled with recourse to
extrinsic evidence. Such evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”).
In fact, in the Final Rejection, the Examiner states that:
While the reference does not go into further detail as to the
processing of the received signals, there are many well-known
methods of electronically processing optical signals to
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determine the Bragg wavelength. One of which is through the
determination of a frequency difference between a reference
and a measured wavelength (See US Publication
2003/0142319)1. While Kringlebotn does not explicitly disclose
determining a Bragg wavelength through difference
determination, his disclosure was understood to encompass
those well-known methods, and therefore the method of
difference determination, through the description of “the signals
of detectors 7 and 10 are simultaneously sampled, processed
and compared”.
Final Rej. 3 (emphases added). Nothing in this finding establishes that
Kringlebotn necessarily uses the method of difference determination as
opposed to another of the “many well-known methods of electronically
processing optical signals.” Final Rej. 3. See In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999) (“Inherency . . . may not be established by probabilities
or possibilities.” (citations omitted)). In fact, as pointed out by the Examiner,
Figure 2 of Kringlebotn illustrates the output of the photodetector (7). Ans.
9. But Figure 2 shows only single peaks of reflection from the FBG sensors
(13a and 13b) and the reference FBG (12). It does not show any difference
frequency peak. Reply Br. 4-5 (citing Kringlebotn Fig. 2). Therefore, we
conclude that the Examiner has not properly presented a prima facie case of
anticipation.
For these reasons, we do not sustain the Examiner’s anticipation
rejection of (1) independent claim 1; (2) independent claims 11 and 16

1 The cited US publication is not part of the rejection. See In re Hoch, 428
F.2d 1341, 1342 n.3 (CCPA 1970) (“Where a reference is relied on to
support a rejection, whether or not in a ‘minor capacity,’ there would appear
to be no excuse for not positively including the reference in the statement of
the rejection.”)
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which recite commensurate limitations; and (3) dependent claims 2-8, 10,
12-14, 17-19, 23, 24, and 27.
The Obviousness Rejection
The Examiner’s obviousness rejection of claims 9, 15, 20-22, 25, and
26 relies on the same finding of inherency by the Examiner. Ans. 8. While
the Examiner stated that the method of difference determination is a well-
known technique, the Examiner has not adequately shown that this method
would have been recognized by ordinary skilled artisans to be included with
or encompassed by Kringlebotn’s system. Instead, the Examiner finds that
“it would have been obvious to one of ordinary skill in the art at the time the
invention was made to modify Kringlebotn to include the electrical
components listed above [frequency counters, frequency discriminators,
binary prescalers, passive filters, combiners, power taps, voltage control
oscillators, electrical splitters, RF power diodes, microcontrollers] for
yielding predictable results.” Ans. 8. Thus, we also do not sustain the
obviousness rejection of claims 9, 15, 20-22, 25, and 26.

DECISION
The Examiner’s decision rejecting claims 1-27 is reversed.

REVERSED

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