Ex Parte Leibfritz

Patent Trial and Appeal Board

Feb 14, 2019

12995989 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/995,989 02/22/2011 Martin Leibfritz
26389 7590 02/19/2019
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 Third Avenue
Suite 3600
Seattle, WA 98101
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.
MITS135635 4636
EXAMINER
HOFFA, ANGELA MARIE
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
02/19/2019 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):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN LEIBFRITZ
Appeal2017-001995
Application 12/995,989
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEYB. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 3, and 4. 3 We have jurisdiction under
35 U.S.C. § 6(b). The Appellant's representative appeared via telephone for
an Oral Hearing in this appeal on February 11, 2019.
We REVERSE.
1 Throughout this Decision, we refer to the Appellant's Appeal Brief
("Appeal Br.," filed Feb. 22, 2016), Reply Brief ("Reply Br.," filed Nov. 26,
2016), and Specification ("Spec.," filed Dec. 2, 2010), and to the Examiner's
Answer ("Ans.," mailed Sept. 26, 2016) and Final Office Action ("Final
Act.," mailed Sept. 22, 2015).
2 According to the Appellant, the real party in interest is Rohde & Schwarz
GmbH & Co. KG. Appeal Br. 3.
3 Claims 2, 5-9, 11, and 14--27 are canceled, and claims 10, 12, and 13 are
withdrawn. See Appeal Br., Claims App.
Appeal2017-001995
Application 12/995,989
STATEMENT OF THE CASE
The Appellant's invention "relates to a measuring device and a
method for microwave-based investigation." Spec. 1, 11. 6-7.
Claim 1 (Appeal Br. 19 (Claims App.)) is the only independent claim
on appeal, is representative of the subject matter on appeal, and is
reproduced below:
1. A measuring device, comprising: a microwave
transmitter; a microwave receiver; at least one antenna; a
control device configured to control the microwave transmitter
and the microwave receiver; and a dielectric extension adapted
to be disposed between the antenna and an object to be
investigated to electrically decouple the antenna from the object
to be investigated,
wherein the microwave transmitter is configured to
transmit a microwave signal by the antenna and the dielectric
extension into the object to be investigated,
wherein the object to be investigated is capable of
scattering the microwave signal,
wherein the microwave receiver is configured to receive
the scattered microwave signal by the antenna and the dielectric
extension,
wherein the dielectric extension has a length of 40 cm to
80 cm and has a dielectric constant of E > 4 such that the object
to be investigated is disposed in a remote field of the antenna,
wherein the remote field of the antenna is reached after a
travel by the microwave signal through the dielectric extension
of six wavelengths,
wherein the object to be investigated is a breast of a
female patient, the breast being disposed at one end of the
dielectric extension such that substantially no air is disposed
between the breast and the dielectric extension, and
wherein the measuring device is arranged so that the
breast of a patient is disposed between the rest of the body and
2
Appeal2017-001995
Application 12/995,989
the dielectric extension above a first end of the dielectric
extension, and wherein the measuring device is being arranged
so that the breast of the patient is compressed by the body
weight of the patient, leading to a largely flat, uniformly thick
shape of the breast.
REJECTIONS
Claim 1 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Simpkin (US 2007/0060816 Al, pub. Mar. 15, 2007),
Bridges (EP 0694282 A2, pub. Jan. 31, 1996), and Smith et al.
(US 2004/0097811 Al, pub. May 30, 2004) ("Smith").
Claims 3 and 4 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable Simpkin, Bridges, Smith, and Bridges (US 5,829,437,
iss. Nov. 3, 1998) ("Bridges II").
ANALYSIS
We agree with the Appellant's contention that the Examiner's
rejection under 35 U.S.C. § 103 of independent claim 1 is in error because
the Examiner has not adequately shown how Simpkin, upon which the
Examiner relies (see Final Act. 4; Ans. 7), teaches or renders obvious the
dielectric extension having a length of 40 cm to 80 cm and a dielectric
constant E > 4, as recited by the claim. See Appeal Br. 12, 14--16; Reply
Br. 2-3.
The Examiner agrees that Simpkin and the combination of the prior
art do not "expressly teach" the dielectric extension having a length of 40 cm
to 80 cm. Final Act. 4; Ans. 7. The Examiner finds, however, that "Simpkin
teaches that the dimensions of the extension can be based upon ten times the
wavelength at the lowest operating frequency of the device. For example, a
3
Appeal2017-001995
Application 12/995,989
length of 30 cm is preferred at ten times the wavelength of 3 cm at 10 GHz."
Final Act. 4 (citing Simpkin ,r 134); see also Ans. 7. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
"to provide a working range of 40 cm to 80 cm, since it has been held that
where the general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only routine skill in
the art." Final Act. 4 (citing In re Aller, 220 F.2d 454 (CCPA 1955).
Specifically, the Examiner finds that Simpkin suggests that "when operating
at 5 GHz, the wavelength would be 6 cm and the distance would be 60 cm"
(id. (citing Simpkin ,r 134)), and teaches that "it is a well-known trade-off
between signal strength and distance between the imaged object and the
antenna" (id.). The Examiner further determines:
Id.
Although Simpkin teaches minimizing the distance between the
imaged object and the antenna, so long as remote field conditions
are maintained (par. 0081-0082), one of ordinary skill in the art
at the time of the invention would not have recognized any
critical result with providing an increased distance between the
antenna and the imaged object (i.e. the length of the dielectric
extension) that would patentably distinguish over the teachings
of Simpkin.
Aller established two conditions for a conclusion of obviousness: one,
the general conditions of the claim must be disclosed in the prior art; and
two, discovery of the optimum value or workable range must be a matter of
routine experimentation for a person of ordinary skill in the art. See Aller,
220 F .2d at 456. Here, the Examiner finds that Simpkin discloses the
general condition of the dielectric extension length corresponding to the
dielectric constant, the first condition of Aller. However, the Examiner does
not adequately establish the second condition in explaining how the
4
Appeal2017-001995
Application 12/995,989
discovery of the claimed range would be a matter of routine experimentation
for a person of ordinary skill in the art.
The Examiner's finding that there would be no "critical result with
providing an increased distance between the antenna and the imaged object"
(Final Act. 4; see also Ans. 8) is not supported by adequate evidence or
reasoning. Although Simpkin discloses that the "stand-off distance is not
critical," Simpkin continues and states that the distance "should preferably
be greater than five wavelengths at the lowest frequency of operation so that
the illuminating wavefront from each antenna element has a spherical phase
front with local plane-wave characteristics" (Simpkin ,r 81 ), and that "the
stand-off distance between the breast and the plane of the synthetic aperture
should preferably be at least 10 wavelengths at the lowest frequency of
operation in order to reduce the effects of multiple reflections between
antenna and breast to a negligible level" (id. ,r 82; see also id. ,r 134),
indicating benefits of specific distances. Further, as the Examiner
acknowledges (see Ans. 8), the Appellant's Specification provides evidence
as to the benefits of and reasons for the claimed range (see Appeal
Br. 14--15; Spec. 2, 11. 17-31). The Examiner provides some calculations to
show Simpkin's relationship between wavelength and frequency (see Final
Act. 3; Ans. 7), but the Examiner does not provide what suppositions are
used in the calculations, such as what value of the dielectric constant is
assumed and whether it is that of air, as the Appellant maintains (see Reply
Br. 2-3). The Examiner does not provide adequate reasoning as to how or
why one of ordinary skill in the art would get to the range of lengths claimed
from Simpkin's disclosure of a relationship between wavelength and
frequency.
5
Appeal2017-001995
Application 12/995,989
Accordingly, based on the record before us, we do not sustain the
rejection of independent claim 1 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the rejection of dependent claims 3 and 4.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
DECISION
The Examiner's rejections of claims 1, 3, and 4 under 35 U.S.C.
§ 103(a) are REVERSED.
REVERSED
6