Ex Parte Leyer et al

Patent Trial and Appeal Board

Jun 15, 2016

12844014 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/844,014 07/27/2010 AxelLeyer
96897 7590 06/16/2016
PA TENT LAW OFFICES OF DR NORMAN R THOT
POSTFACH 10 17 56
RATINGEN, 40837
GERMANY
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.
TS/HAH 1005 US-PAT 7273
EXAMINER
HULS, NATALIE F
ART UNIT PAPER NUMBER
2856
MAILDATE DELIVERY MODE
06/16/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AXEL LEYER, LOTHAR HEIDEMANNS, ANDREAS JONAK,
MARKUS HAHN, MICHAEL KUSSMANN, HEINZ RUDDE, and
CLAUDIA RIEGER
Appeal2015-000568
Application 12/844,014
Technology Center 2800
Before, BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
13-18 and 21-33. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2015-000568
Application 12/844,014
STATEMENT OF THE CASE
The present application concerns "an immersion probe for water
analysis comprising at least two different sensors for determining different
water parameters." Spec. i-f 2. Claim 13 illustrates the claimed subject
matter:
13. An immersion probe for water analysis comprising:
at least two sensors configured to determine different
water parameters;
a sensor module receiving portion comprising at least two
sensor-module plug-in positions, a reference electrode, and an
electrolyte tank for the reference electrode, the at least two
sensor-module plug-in positions being configured to be
substantially physically and electrically similar; and
at least two sensor modules each of which respectively
comprises a sensor and each of which are disposed in a respective
sensor-module plug-in position,
wherein, each of the at least two sensor modules includes
an electronic sensor information memory configured to store
information on the respective sensor and a transmission device
configured to transmit the information on the respective sensor
to the sensor module receiving portion.
Br. 13.
REJECTION
Claims 13-18 and 21-33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Henry et al. (US 6,938,506 B2; issued Sept. 6, 2005) and
Uthemann et al. (US 2008/0264788 Al; published Oct. 30, 2008). See Final
Act. 5-13.
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Application 12/844,014
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments and the evidence of record, and we are unpersuaded that the
Examiner erred. We adopt the Examiner's reasoning, findings, and
conclusions set forth in the Final Action and Answer to the extent consistent
with the analysis below. We address Appellants' arguments in tum.
Appellants argue Uthemann does not teach or suggest the "sensor
module receiving portion" recited in claim 13. App. Br. 7-8. In particular,
Appellants argue Uthemann does not teach or suggest this limitation
"because nothing is ever received in Uthemann." Id. at 7. Appellants also
argue Uthemann does not teach or suggest-and in fact teaches away
from-this limitation because Uthemann teaches "[i]t is not provided that
the sensor element or reference element is replaceable or that an electrolyte
tank can be refilled." Id. (quoting Uthemann i-f 7) (emphasis omitted).
According to Appellants, Uthemann describes a dedicated system with a
single-use sensor cartridge where none of the sensors are exchangeable. See
id. at 7-9. Appellants contend that turning Uthemann's dedicated system
into a non-dedicated system such as Henry's is not taught or suggested in
either Henry or Uthemann. See id. at 9.
We are unpersuaded of error. The Examiner found a combination of
Henry's and Uthemann's disclosures teaches or suggests the recited "sensor
module receiving portion," not Uthemann's disclosure alone. See Final Act.
5---6; Ans. 4. In particular, the Examiner found "the claimed element of a
sensor module receiving portion comprising at least two sensor-module
plug-in positions is known in the art as disclosed by Henry." Ans. 4. The
Examiner also found "[i]n the same field of endeavor, Uthemann teaches the
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Application 12/844,014
use of a reference electrode, an electrolyte tank filled with an electrolyte, the
electrolyte tank configured to be in contact with an electrolyte bridge all
housed within an immersion probe." Id. The Examiner concluded"[ w ]hile
neither reference alone discloses the limitation as claimed, the combination
of the two references as stated in the rejection does." Id. (emphasis added).
We find Appellants' argument that Uthemann alone does not teach or
suggest this limitation unpersuasive, as "one cannot show non-obviousness
by attacking references individually where, as here, the rejections are based
on combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA
1981 ).
As for Appellants' argument that Uthemann teaches away from the
recited "sensor module receiving portion," this argument does not squarely
address the Examiner's rejection. Contrary to Appellants' arguments, the
Examiner's rejection does not rely on turning Uthemann's dedicated system
with non-exchangeable sensors into a non-dedicated system with
exchangeable sensors. See Final Act. 5---6; Ans. 9. Rather, the Examiner
concluded it would have been obvious to modify Henry's sensor head
comprising interchangeable sensor head components to include Uthemann's
reference electrode and electrolyte tank. See Final Act. 5-6; Henry Fig. 1 b,
items 10, 30, 33, 34; Uthemann Fig. 2, items 44, 56; i-fi-17, 37, 44; Ans. 9.
Thus, even if Appellants were correct that Uthemann teaches away from
changing Uthemann 's system into a non-dedicated system with
exchangeable sensors, this argument does not persuasively address
modifying Henry's non-dedicated system to include well known prior art
parts, such as the reference electrode and electrolyte tank as evidenced by
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Application 12/844,014
Uthemann. Accordingly, we find unpersuasive Appellants' arguments
concerning the modification of Uthemann's system.
Appellants further argue the Examiner erred in combining Henry with
Uthemann because it would require wholesale removal and/or rearrangement
of the internal electrical components in Henry's multi-parameter measuring
head to make room for Uthemann's electrolyte tank filled with liquid
electrolyte. See App. Br. 9. Further, according to Appellants, a person of
ordinary skill in the art would not bring liquid electrolyte into close
proximity with Henry's internal electrical components such as circuit boards
and batteries. See id.
We are unpersuaded of error. As an initial matter, we are
unpersuaded because Appellants' arguments lack supporting evidence. See
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in
a brief cannot take the place of evidence."). Although Appellants assert the
Examiner's combination of Henry's and Uthemann's teachings would
require wholesale removal, rearrangement, or both of the electrical
components inside Henry's measuring head and bring those components in
close proximity to liquid electrolytes, Appellants have provided no
persuasive evidence or reasoning to support these assertions. See App. Br.
9. Contrary to Appellants' assertions, Henry appears to suggest that one of
ordinary skill in the art could remove one or more sensor ports to make room
for other components, such as Uthemann's electrolyte tank and reference
electrode. See Henry col. 5, 11. 39--45 (teaching that the number of ports in
the sensor head may be decreased depending on the particular environment
and available space). Based on the evidence of record, Appellants have not
established that the Examiner's proposed modification would have been
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"uniquely challenging or difficult for one of ordinary skill in the art."
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007).
Further, we are unpersuaded because Appellants' arguments assume
Henry and Uthemann's inventions must be physically combinable. See App.
Br. 9. "The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference." In re Keller, 642 F.2d 413, 425 (CCPA 1981). "Rather, the test
is what the combined teachings of those references would have suggested to
those of ordinary skill in the art." Id. The Examiner found Henry teaches all
of claim 13, including the "sensor module receiving portion," except for "a
reference electrode and an electrolyte tank for the reference electrode," for
which the Examiner relies on Uthemann. See Final Act. 5-6; Henry Fig. 1 b,
items 10, 30, 33, 34; col. 5, 11. 23--45; Uthemann Fig. 2, items 44, 56; i-fi-17,
37, 44. The Examiner concluded "[i]t would have been obvious to one of
ordinary skill in the art ... to use Uthemann's reference electrode and
electrolyte tank in Henry's module receiving portion in order to be able to
measure the pH for all samples without the need for a dedicated sensor
module." Final Act. 6; see Ans. 10. Appellants' arguments have not
persuaded us that the Examiner erred.
Lastly, Appellants argue a prima facie case of obviousness has not
been made because the Examiner failed to resolve the level of ordinary skill
in the art. See App. Br. 14. We are unpersuaded by Appellants' argument
and agree with the Examiner that the resolution of the level of ordinary skill
in the art is implicit within the prior art used by the Examiner to reject the
claimed invention. See Ans. 10; Okajima v. Bourdeau, 261F.3d1350, 1355
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(Fed. Cir. 2001) ("[T]he absence of specific findings on the level of skill in
the art does not give rise to reversible error where the prior art itself reflects
an appropriate level and a need for testimony is not shown") (citations and
internal quotations omitted).
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 13; as well as independent claim 25 and dependent claims
14--18, 21-24, and 26-33, which were not argued separately with
particularity beyond the arguments advanced for claim 13. See App. Br. 5-
1 1.
DECISION
The decision of the Examiner to reject claims 13-18 and 21-33 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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