Ex Parte Kuwabara

Board of Patent Appeals and Interferences

Sep 12, 2002

08854620 (B.P.A.I. Sep. 12, 2002)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte SHOJI KUWABARA

Appeal No. 2000-1958
Application No. 08/854,620

ON BRIEF

Before KRASS, LALL and SAADAT, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1, 2, 4 and 5, all of the pending claims.
The invention is directed to qualitative analysis for
identifying elements in a sample by exciting the sample and
spectroscopically analyzing light emitted from the sample. In
the conventional analysis systems, wavelengths of various
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Application No. 08/854,620
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elements were preliminarily stored in a memory device and the
light emitted from the sample was compared against the stored
values in order to identify elements which show values close to
those in memory. However, many elements exist in the form of a
compound, rather than in elemental form. When an element is in
the form of a compound, a “chemical shift” is observed, i.e., the
peak for that element appears at a shifted wavelength compared to
when the element is in the elemental form.
Recognizing the “chemical shift” problem, the instant
invention stores, in a database memory, reference spectral line
data of various elements in different compound forms. If the
measured spectral line data include spectral lines of any of the
compound-forming elements, the reference spectral line data is
compared with the measured spectral line data to thereby identify
elements in the sample.
Representative independent claim 1 is reproduced as follows:
1. An apparatus for qualitative analysis for identifying
elements contained in a sample by exciting said sample and
spectroscopically analyzing signal light emitted from said
sample, said apparatus comprising:
a data memory for storing measured spectral line data
including chemical shifts obtained from a sample;
a data base memory storing reference spectral line data of
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Application No. 08/854,620
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various elements in different compound forms; and
a data analyzer for determining whether said measured
spectral line data include spectral lines of specified compound-
forming elements including oxygen, nitrogen and carbon and, if
said measured spectral line data include spectral lines of any of
said compound-forming elements, comparing said reference spectral
line data including chemical shifts with said measured spectral
line data to thereby identify elements in said sample.
The examiner relies on the following references:
Meyer et al. [Meyer] 5,218,529 Jun. 8, 1993
Robbat, Jr. et al. [Robbat] 5,668,373 Sep. 16, 1997
Claims 1, 2, 4 and 5 stand rejected under 35 U.S.C. 103 as
unpatentable over Robbat in view of Meyer.
Reference is made to the brief and answer for the respective
positions of appellant and the examiner.
OPINION
It is the examiner’s position that Robbat discloses the
claimed data memory for storing spectral line data at column 7,
line 68-column 8, line 1; the data base memory for storing
reference spectral line data of various elements in different
compound forms at column 8, lines 7-18; and the data analyzer at
column 3, lines 34-55 and column 7, lines 63-65.
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The examiner recognized that in Robbat the specific compound
forming elements, oxygen, carbon and nitrogen, are not disclosed
but held that it would have been obvious to include such elements
as the compound forming elements since it was within the skill of
the artisan “to select a known material on the basis of its
suitability for the intended use” [answer-page 4].
The examiner also recognized that Robbat does not provide
for “chemical shifts.” However, the examiner turned to Meyer for
a recognition of identifying materials using characteristic
spectral line data including the storage of chemical shifts,
citing column 5, lines 45-60, and column 7, lines 30-35, of
Meyer. The examiner concluded that it would have been obvious to
include, in Robbat, the storage of chemical shifts “to more
clearly identify the chemicals present” [answer-page 5].
Appellant argues that Robbat is limited to the kind of
analysis such as ultraviolet/visible radiation and mass
spectroscopy where chemical shifts do not present any problem.
Appellant concludes that since Robbat relates to a field of
technology where there is no motivation to consider the effects
of chemical shifts, there would have been no reason for combining
any teaching of Meyer regarding chemical shifts with that of
Robbat.
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Appellant further argues that the chemical shifts considered
by Meyer “are those related to the sample being measured, not
those in spectral lines and stored for reference purposes”
[brief-page 6], in contrast to the instant claims which require
the presence of “reference spectral line data including chemical
shifts” which are stored in a database memory and with which
measured spectral lines are compared.
Finally, appellant argues that oxygen and nitrogen which may
not be related to the target substance to be analyzed are
preliminarily measured and stored as a database memory for the
purpose of reference, but that this idea of preliminarily
providing a reference database, as in independent claims 1 and 4,
“is nowhere to be found in Meyer” [brief-page 7].
As to appellant’s first argument, our review of Robbat does
not find the disclosure therein limited, in any way, to only
those environments wherein chemical shifts present no problem.
It appears to us that Robbat is directed to a very general
purpose analytic device for determining the presence or absence
of a specific constituent in a mixture. Clearly, the mixture may
have constituents which will appear in compound form rather than
in purely elemental form. It is true that Robbat is devoid of
any teaching of chemical shifts but the examiner contends that
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the teaching by Meyer of considering chemical shifts when
determining the presence of an element in a sample, would have
led the artisan to consider such chemical shifts in the Robbat
system when analyzing samples which may contain compound forms of
a particular element.
The problem with the combination, as we see it, is that
Meyer is directed to training a neural network to analyze organic
materials using spectral data and, although Meyer mentions
“chemical shifts” (e.g., column 18, lines 62 and 66), it is not
at all clear that Meyer is storing measured spectral line data,
including such chemical shifts, obtained from a sample and/or
whether Meyer is comparing a reference spectral line data,
including such chemical shifts, with the measured spectral line
data in order to identify elements in the sample.
While Robbat teaches the measurement of spectral line data
for elements, the storage of reference spectral line data of
various elements and the comparison of the measured data with the
reference data in order to identify an element in a sample, it
lacks the measured spectral line data including chemical shifts
and the storage of reference spectral line data of various
elements “in different compound forms.” If Meyer clearly taught
or suggested that spectral line data may include chemical shifts
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and that a reference database may comprise spectral line data of
various elements “in different compound forms,” then there might
be a reason to combine since the skilled artisan would have been
taught that a reference database may comprise spectral line data
of not only various elements but also of such elements in a
compound form and the artisan would have been taught to compare a
measured spectral line data including chemical shifts with such
reference data. However, Meyer does not appear to teach or
suggest this much.
The examiner points to the abstract, column 18, lines 58-68,
and column 19, lines 1-15, of Meyer for a suggestion of storing
chemical shifts for reference purposes. However, our review of
these identified portions of Meyer does not find what the
examiner alleges is to be found. The abstract indicates that a
network is trained, according to a predetermined training
process, to identify particular materials, but the abstract does
not indicate any database of reference spectral line data of
various elements in different compound forms and a comparison,
with that reference spectral line data including chemical shifts,
of a measured spectral line data.
Column 18, lines 58-68, relates to enhancing performance of
a neural network’s tolerance to spectral data variations by
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manipulating free induction delays (FIDs) of recorded spectra and
that tolerance to “chemical shifts” can be obtained by
mathematically modifying the original data. That portion of
Meyer also indicates that “Chemical shifts can be changed by
shifting the transformed spectrum left and right.” We do not
understand how, exactly, the examiner is relying on this portion
of Meyer to teach or suggest a database of reference spectral
line data of various elements in different compound forms and a
comparison, with that reference spectral line data including
chemical shifts, of a measured spectral line data.
Column 19, lines 1-15, of Meyer, relates to signal overlap
in the hump region of the spectrum increasing as the complexity
of a molecule increases. It explains that in order to get a
satisfactory level of discrimination between closely related
structures, resolution-enhanced spectra may be necessary for a
neural network analysis. This section also explains that if the
complex hump region of the spectrum can be resolved into
individual lines, the spectrum may be more easily recognized by a
neural network. Again, we do not understand how such disclosure
is believed by the examiner to teach or suggest a database of
reference spectral line data of various elements in different
compound forms and a comparison, with that reference spectral
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line data including chemical shifts, of a measured spectral line
data.
Since we cannot find a clear suggestion in Meyer, and the
examiner has not convinced us of such a suggestion, of a database
of reference spectral line data of various elements in different
compound forms and a comparison, with that reference spectral
line data including chemical shifts, of measured spectral line
data, we find no prima facie case of obviousness regarding the
instant claimed subject matter.
Accordingly, the examiner’s decision rejecting claims 1, 2,
4 and 5 under 35 U.S.C. 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
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PARSHOTAM S. LALL )BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
)INTERFERENCES
Appeal No. 2000-1958
Application No. 08/854,620
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MAHSHID D. SAADAT )
Administrative Patent Judge )
EK/RWK
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