Ex Parte Larsen et al

Patent Trial and Appeal Board

Aug 3, 2016

13417644 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/417,644
92689 7590
HONEYWELL/SLW
Patent Services
115 Tabor Road
P.O. Box 377
03/12/2012
08/05/2016
MORRIS PLAINS, NJ 07950
FIRST NAMED INVENTOR
Christopher Scott Larsen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H0033958.223346 1243
EXAMINER
PORTA, DAVID P
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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):
patentservices-us@honeywell.com
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER SCOTT LARSEN and BARRETTE. COLE1
Appeal2015-002290
Application 13/417,644
Technology Center 2800
Before BEYERL YA. FRANKLIN, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3, 4, 6, 8, 11, 13-18, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
BACKGROUND
The subject matter on appeal relates to a flame detector. E.g., Spec.
,-i 2; Claim 1. Claim 1 is reproduced below from page 10 (Claims Appendix)
of the Appeal Brief:
1 According to the Appellants, the Real Party in Interest is Honeywell
International Inc. App. Br. 2.
Appeal2015-002290
Application 13/417,644
1. A flame detector comprising:
an infrared detector;
a first window formed of germanium positioned adjacent the
infrared detector, wherein the first window rejects light having a
wavelength below approximately 2.6 µm;
a second window positioned adjacent to the first window,
wherein the second window rejects light having a wavelength
above approximately 4.5 µm; and
a band reject structure positioned adjacent to the second window,
wherein the band reject structure rejects a portion of light having
a wavelength greater than 2.7 µm and less than 4.4 µm.
REJECTIONS ON APPEAL2
1. Claims 1, 3, 6, 8, 11, 15-18, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Tar (US 4,459,484, issued July 10, 1984).
2. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tar in view of Brogi et al. (US 5,422,484, issued June 6, 1995).
3. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tar in view of Schapira et al. (US 4,206,454, issued June
3, 1980).
2 The Final Action includes a rejection of claims 9 and 10 under 35 U.S.C.
§ 112, iJ 1. Final Act. 2. Although the Examiner has not formally
withdrawn that rejection, see Ans. 2, it is moot in view of the Appellants'
cancellation of claims 9 and 10, see Office Action Response dated May 22,
2014, at 5.
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Application 13/417,644
ANALYSIS
Rejection 1
The Appellants present arguments concerning independent claims 1,
11, and 17. We limit our discussion to those claims. Dependent claims
subject to Rejection 1 will stand or fall with the independent claim from
which they depend.
Claim 1.
The Examiner finds that Tar anticipates claim 1. Concerning the
limitation "a first window formed of germanium ... [that] rejects light
having a wavelength below approximately 2.6 µm," the Examiner finds that
Tar's teaching of" germanium filter element 6 [that] defines a lower limit at
about 1.5 µm" discloses that element. Final Act. 3; Tar at 3:27-28. The
Examiner explains that "germanium is germanium, [and] Appellant has not
explained with facts why the germanium of the reference would perform
differently than the germanium of the claim." Ans. 4. The Examiner further
finds that, even if Tar's germanium does permit transmission of light having
wavelengths between 1.5 and 2.6 µm, "Appellant has not explained with
facts why 1.5 µmis not a rejected wavelength below 2.6 µm. The claims
requires [sic] the rejection of light having 'a' wavelength below
approximately 2.6 µm, not all or every wavelength below 2.6 µm, that is,
Appellant's argument fails because it is not based on limitations appearing in
the claims and is not commensurate with the broader scope of claims 1, 11,
and 17." Id. at 5.
We are not persuaded by the Examiner's rationale. It appears from
the Appellants' Specification and from Tar that a germanium filter does not
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Application 13/417,644
inherently reject light at the claimed wavelength range. The Specification
discloses that "[t]he first window 120 is adapted to reject light having a
wavelength below approximately 2 µm. The first window may be formed of
Ge in one embodiment, and may further reject light having a wavelength
below approximately 2.6 µm." Spec. iJ 9. Tar teaches a germanium filter
element that rejects light below "about 1.5 µm." Tar at 3:27-28. The
implication is that Tar's germanium filter element does not reject light above
about 1.5 µm. Id. Thus, it appears that different germanium filter elements
may reject light at somewhat different wavelengths, and, contrary to the
Examiner's position, it does not appear that all germanium filter elements
necessarily and inherently reject all light below approximately 2.6 µm. On
the record before us, and particularly in view of Tar's suggestion that its
germanium filter element permits transmission of light having wavelengths
greater than 1.5 µm, we are not persuaded that Tar's germanium filter
inherently rejects light having a wavelength below approximately 2.6 µm, as
recited by claim 1.
We are also not persuaded that the Examiner's interpretation of
claim 1 is correct. According to the Examiner's reasoning, a first window
that rejects light at, for example, 1.4 µm, but permits the transmission of
light at every other wavelength between 0 and 2.6 µm, constitutes a window
that "rejects light having a wavelength below approximately 2.6 µm." See
Ans. 5. In essence, the Examiner interprets claim 1 to mean that the first
window must reject at least some light having a wavelength below
approximately 2.6 µm. Claim 1, however, includes the following element:
"a band reject structure ... [that] rejects a portion of light having a
wavelength greater than 2.7 µm and less than 4.4 µm." (emphasis added).
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Application 13/417,644
The Examiner's interpretation effectively would read "a portion of' into
elements of claim 1 that do not recite that language, including the "first
window" element.
The term "rejects light," in juxtaposition with the term "rejects a
portion of light" (emphasis added), reasonably suggests that substantially all
light, rather than only a portion of light, is rejected. See Symantec Corp. v.
Computer Assoc. Int'!, Inc., 522 F.3d 1279, 1289 (Fed. Cir. 2008) ("[W]hen
construing terms in the body of a claim, the general assumption is that
different terms have different meanings .... "). That interpretation of the
claim is also consistent with the Specification. See, e.g., Spec. ,-i,-i 1, 12. The
Examiner's analysis fails to provide a persuasive basis to construe the term
"rejects light" as meaning essentially the same thing as the term "rejects a
portion of light." We conclude that a filter element such as that of Tar,
which permits transmission of light between 1.5 and 2.6 µm, does not
"reject[] light having a wavelength below approximately 2.6 µm," as recited
by claim 1.
In view of that, the Examiner's analysis fails to identify in Tar "a first
window formed of germanium ... [that] rejects light having a wavelength
below approximately 2.6 µm." The Examiner's anticipation rejection of
claim 1 must, therefore, be reversed. Because claims 3, 6, and 8 depend
from claim 1, and the Examiner's rejection of those claims does not remedy
the error identified above, we must likewise reverse the rejection of those
claims. 3
3 Portions of the Examiner's Answer indicate that the Examiner may have
conflated certain elements of obviousness with anticipation. See, e.g., Ans.
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Application 13/417,644
Claim 11.
Independent claim 11 recites:
11. A flame detector comprising:
an infrared detector;
a first window covering the infrared detector;
a second window positioned in front of the first window;
a band transmission filter positioned to block light having a
wavelength less than approximately 2.5µm and block light
having a wavelength greater than approximately 4.5µm from
reaching the infrared detector; and
a band reject structure positioned to reject a portion of light
having a wavelength greater than 2.8 µm and less than 4.3 µm.
The Examiner finds, inter alia, that Tar's "narrow band filters 5 and
5' ," which permit transmission of light "preferably" at wavelengths of 4.3-
4.4 µm, constitute the claimed "brand transmission filter," and that Tar's
auxiliary filter 12, which permits transmission of light at wavelengths of
4.1--4. 7 µm, constitutes the claimed "band reject structure." Final Act. 4.
The Appellants argue that claim 11 permits light transmission in the
range of 2.5 to 2.8 µm, and, because Tar permits light transmission only in
the range of 4.3 to 4.4 µm, Tar cannot anticipate claim 11. See App. Br. 6-
8; Reply Br. 1-3.
4 ("evidence of the prior art is that one skilled in the art may choose
additional wavelengths to reject"), 5 (same); see also Reply Br. 2 (discussing
same portions of Answer and arguing that "what is relevant in a section 102
analysis is what the claims recite and what the reference discloses, not what
a person of skill in the art could or could not add."). Our decision
concerning claim 1 is limited to the anticipation rejection before us; we take
no position as to whether claim 1 would have been obvious to a person of
ordinary skill in the art in view of Tar and/or other references.
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We disagree. Claim 11 is a "comprising" claim written in terms of
blocked or rejected light, and it does not affirmatively require the
transmission of light in the range of 2.5 to 2.8 µm. As currently drafted,
claim 11 does not preclude the use of elements that would eliminate light
transmission in that range. So long as Tar discloses a flame detector
comprising each element of claim 11, it is irrelevant whether Tar's detector
includes additional elements. We are not persuaded by the Appellants'
contention that a flame detector must permit light transmission in the range
of 2.5 to 2.8 µmin order to anticipate claim 11.
The Appellants do not dispute that Tar discloses a flame detector
comprising an infrared detector, a first window, and a second window. Tar
discloses band filters 5 and 5' which permit transmission of light at
wavelengths of 4.3 to 4.4 µm. Tar at 3: 18-21. The Appellants do not
dispute that those filters block light having a wavelength less than
approximately 4.3 µm (including less than 2.5 µm); nor do they dispute that
those filters block light having a wavelength greater than approximately 4.4
µm (including greater than 4.5 µm). Instead, they argue that a person of
ordinary skill in the art would read claim 11 's "band transmission filter"
limitation as requiring that the filter permit transmission of all light between
2.5 and 4.5 µm. See Reply Br. 2. However, they cite nothing persuasive for
support, and the plain language of claim 11 does not appear to be so limited,
particularly under the "broadest reasonable interpretation consistent with the
Specification" standard that is applicable to this proceeding. See, e.g., In re
Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000). On this record, we conclude
that claim 11 's "band transmission filter" limitation encompasses filters that
block wavelengths below 2.5 µm and above 4.5 µm, even if they block other
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Application 13/417,644
wavelengths as well. If the Appellants intend for the scope of claim 11 's
"band transmission filter" to be limited to embodiments in which all light
between 2.5 µm and 4.5 µmis transmitted, they may amend the claim to
clarify intended claim scope.
A similar analysis applies to the "band reject structure" limitation of
claim 11. The Appellants do not persuasively dispute that Tar's auxiliary
filter 12 is equivalent to the claimed band reject structure, nor do they
dispute that Tar's auxiliary filter 12 permits transmission of light at
wavelengths of 4.1--4. 7 µm and blocks transmission of light at wavelengths
below 4.1 and above 4.7 µm. Claim 11 's band reject structure is required
only to "reject a portion of light having a wavelength greater than 2.8 µm
and less than 4.3 µm" (emphasis added). Tar's auxiliary filter 12 rejects
light having a wavelength between 2.8 µm and 4.1 µm, which is "a portion
of light having a wavelength greater than 2. 8 µm and less than 4. 3 µm."
To the extent that the Appellants assert that Tar's filter is required to
reject all light in the range of 2.8 µm to 4.3 µmin order to anticipate claim
11, that interpretation is inconsistent with claim 11 's recitation of" a portion
of light" (emphasis added), which indicates that something less than the
entire wavelength range can be rejected and still fall within the scope of
claim 11. Compare claim 11 ("reject a portion of light having a wavelength
greater than 2.8 µm and less than 4.3 µm") with claim 17 ("rejecting light
between approximately 2.8 µm and 4.3 µm"). The Appellants provide no
basis to conclude otherwise. On this record, we conclude that the broadest
reasonable interpretation of claim 11 's "band reject structure" limitation
encompasses filters that reject light in less than the entire recited wavelength
range, i.e., in "a portion of' the range, including the auxiliary filter of Tar. If
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Application 13/417,644
the Appellants intend for the scope of claim 11 's "band reject structure" to
be limited only to embodiments that reject all or substantially all light in the
wavelength range of 2.8 µm to 4.3 µm, and nothing outside of that range,
they may amend the claim to clarify intended claim scope.
On the record before us, the Appellants have not shown reversible
error in the Examiner's rejection of claim 11. We therefore affirm the
rejection. Because claims 15 and 16 depend from claim 11, and the
Appellants present no separate arguments for those claims, we likewise
affirm the Examiner's rejection of those claims.
Claim 17.
Independent claim 17 recites:
17. A method comprising:
receiving light from a potential source of flame;
rejecting light having a wavelength below approximately 2. 7 µm;
rejecting light having a wavelength above approximately 4.4 µm;
rejecting light between approximately 2.8 µm and 4.3 µm; and
providing the light not rejected to an infrared detector element.
The Examiner finds that Tar anticipates claim 17. Final Act. 4. The
Examiner further determines that "claim 17 places no requirement on the
wavelength or wavelengths which might be passed in the providing step."
Id. at 7.
The Appellants disagree with the Examiner's interpretation of claim
17 and argue that "[t]he three ... steps [prior to the providing step] recite the
wavelengths of light that are rejected. Appellant respectfully submits that
the recitation of the wavelengths that are rejected and the recitation of
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Application 13/417,644
passing the wavelengths that are not rejected provide the wavelengths that
are passed in the providing step." App. Br. 8.
We are not persuaded by that argument. Claim 1 7 is a "comprising"
claim that recites certain "rejecting" steps, but it does not affirmatively recite
that any particular wavelength of light is transmitted. Although it is true that
the three "rejecting" steps recite specific wavelengths that are rejected,
nothing in the claim precludes the rejection of additional wavelengths.
Similar to arguments discussed above, the Appellants do not dispute that
Tar's method would achieve each of the "rejecting steps," they simply argue
that, because Tar's method would also reject additional wavelengths beyond
those recited by claim 17 (i.e., from 2.7 to 2.8 µm), it does not anticipate.
E.g., App. Br. 8.
Because claim 17 is a "comprising" claim, by its plain language, it
does not exclude the rejection of wavelengths beyond those recited. The
claim does not recite any wavelength that must be transmitted. The
Appellants' limited argument fails to provide any persuasive reason to
conclude otherwise. On this record, we affirm the Examiner's rejection of
claim 17. Because claims 18 and 20 depend from claim 1 7, and the
Appellants present no separate arguments for those claims, we likewise
affirm the Examiner's rejection of those claims.
Rejection 2
Claim 4 depends from claim 1, the rejection of which we reverse. The
Examiner's rejection of claim 4 does not remedy the error identified above
with respect to claim 1. Therefore, we likewise reverse the Examiner's
rejection of claim 4.
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Rejection 3
Claims 13 and 14 depend from claim 11, directly or indirectly.
Because we affirm the Examiner's rejection of claim 11, and the Appellants
present no separate arguments concerning claims 13 and 14, we likewise
affirm the Examiner's rejection of claims 13 and 14.
20.
CONCLUSION
We REVERSE the Examiner's rejections of claims 1, 3, 4, 6, and 8.
We AFFIRM the Examiner's rejections of claims 9-11, 13-18, and
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED-IN-PART
11