Ex Parte Liljenberg et al

Patent Trial and Appeal Board

Jun 14, 2017

10332955 (P.T.A.B. Jun. 14, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/332,955 06/17/2003 Thomas Liljenberg 1032822-000020 2671
21839 7590 06/16/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
GAKH, YELENA G
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
06/16/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS LILJENBERG, STEFAN BACKA,
LENNART THEGEL, and MATS ABOM
Appeal 2016-003902
Application 10/332,9551
Technology Center 1700
Before MARK NAGUMO, WESLEY B. DERRICK, and
JANE E. INGLESE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 29, 37^43, and 52-62. We have jurisdiction under
35 U.S.C. §6.
Claims 60-62 stand rejected under 35 U.S.C. § 112, first paragraph as
lacking written description. Claims 29, 37, 38, 40^13, 52-55, and 57-62
1 Appellants identify ACOSENSE AB as the real party in interest. Appeal
Brief filed May 27, 2015 (“Appeal Br.”), 2.
Appeal 2016-003902
Application 10/332,955
stand rejected under 35 U.S.C. § 103(a) over Nongaillard2 in view of
Esbensen.3 Claim 39 stands rejected under 35 U.S.C. § 103(a) over
Nongaillard in view of Esbensen and Potzick.4 We affirm the maintained
rejections of claims 29, 37^13, 52-55, and 57-62.5 We sua sponte dismiss
the appeal as to claim 56.
THE INVENTION
The subject matter of the claims on appeal relates to an apparatus
having an acoustic source and an acoustic sensor arranged to be in
connection via a fluid that includes volumes of gas, liquid, or solid phase
materials and use of the apparatus to obtain a spectrum of signals and then to
use the spectrum to predict characteristics of the fluid. Specification filed
January 14, 2003 (“Spec.”), Abstract.
Independent claims 52 and 57-60 are directed to apparatus.
Claim 52 is representative.
52. An analyzing apparatus for analysis of a process fluid
comprising a suspension of volumes of gas, liquid or solid
phase, wherein the volumes have a phase different than a phase
of the process fluid, said apparatus comprising:
an acoustic signal source operative to emit a controllable
acoustic signal into said process fluid for interaction with said
volumes of gas, liquid or solid phase, said acoustic signal
comprising audible frequencies below 20 kHz and a wavelength
that is larger than the volumes of gas, liquid or solid phase;
2 Nongaillard et al., FR2772476, published June 18, 1999.
3 Esbensen et al., Acoustic chemometrics—from noise to information,
Chemometrics and Intelligent Laboratory Systems 44 (1998) 61-76.
4 Potzick et al., US 4,445,389, issued May 1, 1984.
5 Prior pending grounds of rejection withdrawn by the Examiner included
rejections under 35 U.S.C. § 112, first paragraph for lack of written
description and enablement and second paragraph for indefmiteness.
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Application 10/332,955
an acoustic signal sensor operative to measure acoustic
signals from said process fluid and operative to measure a
spectmm of acoustic signals resulting from said interaction of
said controllable acoustic signal and said volumes of gas, liquid
or solid phase, said spectrum comprising audible frequencies
below 20 kHz, wherein the sensor and the signal source are not
arranged in the path of the process fluid;
a processor connected to said acoustic signal sensor, said
processor being configured to utilize multivariate statistical
analysis of said measured spectrum of acoustic signals to
determine at least one property, the at least one property
comprising at least one of:
- concentration of the volumes in the process fluid,
- size distribution of the volumes in the process fluid
and
- average size of the volumes,
wherein the analysis is bases on a calibration with a
known process fluid with known properties.
DISCUSSION6
As an initial matter, the rejection as to claim 56 is a new ground of
rejection. Ans. 4. As such, action by Appellants is required to avoid sua
sponte dismissal of the appeal as to claim 56. Ans. 10 (citing 37 C.F.R.
§ 41.39(b)). In particular, an Appellant must either (1) “[rjequest that
prosecution be reopened” or (2) “[rjequest that the appeal be maintained by
filing a reply brief.” 37 C.F.R. § 41.39(b). There is no evidence in the
record before us that Appellants have either requested that prosecution be
reopened or filed a Reply Brief. We dismiss the appeal as to claim 56.
6 We refer to the Specification filed Jan. 14, 2003, the Final Office Action
issued April 28, 2014 (“Final Act.”), the Appeal Brief filed May 27, 2015,
and the Examiner’s Answer dated September 24, 2015 (“Ans.”).
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Application 10/332,955
Turning to the remaining claims, we have reviewed Appellants’
arguments for patentability set forth in the Appeal Brief, but are not
persuaded of reversible error in the Examiner’s decision rejecting the claims.
Maintained rejection of claims 60-62for lack of written description
Whether the written description requirement has been satisfied is a
question of fact and thus decided according to the preponderance of the
evidence. AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1353-54
(Fed. Cir. 2010) (enbanc).
The Examiner maintains in the Answer that she “fail[s] to find such
terms as ‘non-acoustic’ (claim 60), ‘combination of first and second spectra’
(claim 61) and anything related to surface (claim 62)” in the Specification.
Ans. 8. The Examiner further notes that none of the excerpts from
Appellants’ Specification that Appellants rely on as support for non-acoustic
measurements disclose non-acoustic measurements and that Appellants did
not map claims 61 and 62. Ans. 8.
As to claim 60, Appellants identify portions of the Specification that
they map to a portion of the claim that includes, inter alia, the recitation
“based on measurements performed on said process fluid using a non­
acoustic method.” Appeal Br. 8 (citing Spec. 5,11. 26-29; 10,11. 1-8, 13-17;
22,11. 20-31). Appellants contend, without further explanation, that this
constitutes support for the claim. Appeal Br. 17-18.
Having reviewed the cited portions of the Specification, we do not
find sufficient written description because the cited portions do not
reasonably convey use of any non-acoustic method to measure a property of
the process fluid, but rather, at best, convey the measurement of properties
of particles that may be included in a process fluid. See Spec. 5,11. 26-29,
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10,11. 6-8. This does not satisfy the written description requirement.
Carnegie Mellon University v. Hoffmann-La Roche Inc., 541 F.3d 1115,
1122 (Fed. Cir. 2008) (internal quotations omitted) (To satisfy the written
description requirement “the applicant must convey with reasonable clarity
to those skilled in the art that, as of the filing date sought, he or she was in
possession of the claimed invention.”).
As to claims 61 and 62, we note first that, while Appellants did not
map the claims in the same manner as claim 60, Appellants cite specific
portions of the Specification as providing written description support, albeit
without further explanation. Appeal Br. 18 (citing Spec. 6,11. 12-17, 16,
1. 16-17 1. 13, 18, 12-14). In doing so, Appellants neither assert that the
Examiner erred in failing to find the particular terms or phrases, nor explain
how the cited portions suffice as written description in the absence of the
particular terms or phrases.
On this record, accordingly, we are apprised on no reversible error in
the Examiner’s determination that the Specification also fails to satisfy the
written description requirement as to these additional limitations cited in
claims 61 and 62.
Rejection of claims 29, 37, 38, 40-43, and 52-55, and 57-62 over
Nongaillard in view Esbensen (and over claim 39 in further view of Potzick)
The Examiner relies on Nongaillard for its disclosure of an apparatus
for analyzing a process fluid comprising a suspension of gas, liquid, or solid
phase volumes where the volumes have a different phase than the process
fluid. Ans. 5 (citing Nongaillard, Figs. 1, 2, 6). The Examiner finds
Nongaillard to teach, inter alia, that the apparatus includes an acoustic signal
source, an acoustic signal sensor, and a processor connected to the acoustic
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signal sensor as set forth in the claims. Ans. 5 (citing Nongaillard, Abstract,
p. 8,1. 22, Figs. 1, 6).
The Examiner concedes Nongaillard does not specifically disclose
that the source and sensor are located off the fluid path and that the
processor is configured to use multivariate statistical analysis of measured
acoustic signals spectra to determine particle concentration or sizes based on
calibration with a known process fluid with known properties. Ans. 5-6.
As found by the Examiner, Esbensen also discloses an acoustic
system for measuring properties of suspension in a pipe. Ans. 8. The
Examiner relies on Esbensen for its disclosure of
acoustic chemometrics based on changes in acoustic noise
below 20 kHz affected by the suspension of particles with
sensors located in several places on the pipes and the source of
acoustic being natural noise of the pipes, with data on size of
particles, their concentration and distribution obtained from
calibrated samples using multivariate analysis.
Ans. 6. Also as noted by the Examiner, in Esbensen, the detector is outside
the pipe, i.e., positioned on the pipe and the detected acoustic waves are
those generated by the flow as there is no acoustic source. Ans. 8.
The Examiner concludes, inter alia, that it would have been obvious
to modify Nongaillard’s apparatus to position the acoustic source and
detector outside the pipe as the detector is positioned in Esbensen because it
is more practical and easier to construct, and to use multivariate analysis and
measuring of properties using calibration curves because it is no longer
necessary to accurately position the source and detector. Ans. 8; see also
Ans. 6. The Examiner further emphasizes that using an acoustic source
rather than relying on passive measurements provides more controllable
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Application 10/332,955
monitoring of the process and expands the range of possible measurements.
Ans. 8.
Appellants argue the claims subject to the rejection over Nongaillard
in view of Esbensen as a group, with further argument as to each of claims
58, 59, and 60. As to the rejection over Nongaillard in view of Esbensen
and Potzick, Appellants rely on the dependency of claim 39 from claim 57
rejected over Nongaillard in view of Esbensen.
Argument as to all claims
Appellants contend both that there is no reason to combine the
teachings of Nongaillard and Esbensen and that, if combined, the
combination would not meet the limitations of the claims. Appeal Br. 20.
Appellants’ arguments that there is no reason to combine are
grounded on Nongaillard teaching measuring the propagation speed of an
acoustic signal through a media, and that it is, accordingly “essential to
know the exact positions of the transmitter and the receiver as well as the
timing and frequency of the transmitted signal,” and that Esbensen does not
allow determination of propagation speed because it relies on noise
generated by the system. Appeal Br. 20. Appellants further distinguish the
two references in emphasizing that in Nongaillard it is preferred (or
required) to have direct coupling between the transmitting probe and
receiving probe via the medium to be characterized and in contending that
“Esbensen would not work if the sensor was in direct contact with the
particle flow in the pipe.” Appeal Br. 20-21. Appellants further contend
that “one skilled in the art would understand that Nongaillard teaches away
from applying the teachings of Esbensen to the apparatus of Nongaillard.”
Appeal Br. 21.
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Application 10/332,955
Appellants’ arguments are not persuasive of reversible error because
they fail to squarely address the Examiner’s reasoning that includes relying
on the benefits of not requiring a known distance between the acoustic
source and the acoustic sensor and the ability to obtain measurements other
than the propagation velocity of the signal through the medium. Ans. 6, 8-9.
Appellants’ contention that “Nongaillard requires direct contact with the
medium” (Appeal Br. 21) lacks evidentiary support where earlier in the brief
Appellants cite Nongaillard’s disclosure and contend merely that
“[according to Nongaillard, it is preferable to have a direct coupling . . . via
the medium to be characterized.” Appeal Br. 20 (emphasis added) (citing
Nongaillard, 8 11. 5-10). As well expressed by the Examiner (Ans. 8-9),
Appellants’ further arguments as to Esbensen not working with an acoustic
sensor (Appeal Br. 21) fail to address the rejection grounded on the acoustic
source and acoustic sensor being placed on, not in, the pipe.
Further, Appellants’ arguments are also not persuasive because they
are grounded on bodily incorporation of elements rather than what the
combined teachings of the references would have suggested to one of
ordinary skill in the art, In re Keller, 642 F.2d 413, 425-26 (CCPA 1981),
and fail to “take account of the inferences and creative steps that a person of
ordinary skill in the art would employ” to overcome difficulties in arriving at
the claimed invention, KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
As to the cited prior art teaching away, Appellants’ conclusory
argument is not persuasive and, on this record, we find no teaching away.
Cf. DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d 1356, 1364
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Application 10/332,955
(Fed. Cir. 2006) (“We will not read into a reference a teaching away from a
process where no such language exists.”).
Separate arguments as to each of claims 58-61
As to claims 58 and 59, the proffered arguments are merely assertions
that the art does not teach or suggest the recited claim limitations. Appeal
Br. 22. Appellants do not otherwise identify any error.
On this record, we are not persuaded the Examiner erred reversibly
because we are directed to no separate substantive arguments as to these
claims. Cf. In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold
that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art. Because Lovin did not provide such arguments, the Board did not
err in refusing to separately address claims 2—15, 17—24, and 31—34.”); In re
Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for nonobvious distinctions over the prior art.”). In
addition, the Examiner’s further fact-finding and reasoning set forth in the
Answer at pages 6 and 9 stands unrebutted as Appellants declined to file a
Reply Brief.
As to claim 60, Appellants contend that “a modified apparatus
resulting from a combination of Nongaillard and Esbensen would not have
an acoustic source that is controlled to emit a multi-frequency transmit
signal (as is specified by claim 60).” Appeal Br. 23.
Appellants’ argument as to claim 60 lacks persuasive merit where it
merely contends that an element is missing without explaining how the
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Examiner erred or how the relied on prior art lacks a multi-frequency
acoustic signal meeting the recited limitation.
As to claim 61, Appellants summarily argue that “Esbensen discloses
different sensor locations, but not any combination of spectra from the
sensors” and that “it would not have been obvious to modify Esbensen to
combine the spectra to remove noise” because “Esbensen . . . uses the noise
to predict properties of the particle flow” and “removing noise . . . would
change the principle of operation of the cited art.” Appeal Br. 24.
The Examiner maintains that “using more parameters in multivariate
analysis and using more sensors increase the accuracy of measurements,
which is well recognized by routineers in the art.” Ans. 6. In so relying on
the use of more sensors to increase the accuracy of measurements, the
Examiner determines the combination of signals from spectra would have
been within the ambit of the routineer. As to Appellants’ argument that
removing noise would not have been obvious because Esbensen relies on the
noise, the Examiner responds on the basis of what would have been
understood as to the combined apparatus. Ans. 9.
On this record, we find the preponderance of evidence supports the
Examiner’s determination that one of ordinary skill in the art, armed with the
knowledge of the cited prior art, would have been led to the subject matter of
claim 61. As to Appellants’ argument grounded on Esbensen relying on the
noise to predict properties of the particle flow, it is not persuasive because it
fails to address the combination, particularly where the combination includes
active acoustic sources. We are not persuaded that the combination
impermissibly changes the principle of operation of Esbensen’s apparatus in
the absence of further evidence or persuasive argument as to the principle on
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which it operates and that the combination would not continue to operate, at
least in part where not all noise is eliminated, on that same principle.
For the reasons above, we are unpersuaded that the Examiner erred
reversibly in rejecting claims 29, 37^13, 52-55, and 57-62 and, accordingly,
affirm the rejection of these claims.
DECISION
We DISMISS sua sponte the appeal with regard to claim 56 subject to
new grounds of rejection, which were not responded to by Appellants in
accordance with 37 C.F.R. § 41.39(b).
We AFFIRM the Examiner’s rejection under 35 U.S.C. § 112, first
paragraph of claims 60-62.
We AFFIRM the Examiner’s rejections under 35 U.S.C. § 103(a) of
claims 29, 37^43, and 52-55, and 57-62.
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-IN-PART; DISMISSED-IN-PART
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