Ex Parte Pollack

Board of Patent Appeals and Interferences

Dec 31, 2007

10058658 (B.P.A.I. Dec. 31, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte MICHAEL J. POLLACK
_____________

Appeal 2007-2988
Application 10/058,658
Technology Center 2600
______________

Decided: December 31, 2007
_______________

Before ANITA PELLMAN GROSS, ROBERT E. NAPPI, and SCOTT R.
BOALICK, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 6(b) of the final
rejection of claims 1 through 31.
We reverse the Examiner’s rejections of these claims.

INVENTION

The invention is directed to a system for monitoring a parameter of a
hostile environment within the interior of a sealed chamber. See page 2 of
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Appellant’s Specification. Claim 1 is representative of the invention and
reproduced below:
1. An optical monitoring system for transmitting images from a
hostile environment within the interior of a sealed chamber to the
chamber exterior, the chamber having a wall and an access port
extending through the wall, the monitoring system comprising:
a flexible, generally tubular, elongated, hermetically sealed
housing having a distal end, a proximal end and an interior,
the housing being made of a non-porous, corrosive resistant
material,
the distal end of the housing including a sealed window,
the proximal end of the housing being rigidly secured to the
chamber wall at the access port to form a hermetic seal between the
proximal end of the housing and the chamber,
the interior of the housing being accessible through the access
port,
the interior of the housing including a transmission media for
transmitting images of the interior of the chamber obtained through
the window from the distal end of the housing to the proximal end of
the housing and through the access port; and
a monitor located outside of the chamber and connected to the
transmission media for receiving and displaying the images of the
interior of the chamber.

REFERENCES

Howell US 3,778,170 Dec. 11, 1973
Chiodo US 4,540,258 Sep. 10, 1985
Shattuck US 4,591,794 May 27, 1986
Qureshi US 5,956,077 Sep. 21, 1999
Heid US 5,993,902 Nov. 30, 1999
Nance US 6,111,599 Aug. 29, 2000
Braithwaite US 2002/0116987 A1 Aug. 29, 2002

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REJECTIONS AT ISSUE
Claims 1, 4, 5, 9, 10, 13, 14, 23, 27, 28, 30, and 31 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Qureshi in view of
Nance and Heid. The Examiner’s rejection is on pages 3 through 6 of the
Answer.
Claims 2, 11, and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Qureshi in view of Nance, Heid, and Shattuck. The
Examiner’s rejection is on page 6 of the Answer.
Claims 3, 12, and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Qureshi in view of Nance, Heid, and Chiodo. The
Examiner’s rejection is on page 7 of the Answer.
Claims 6, 7, 17, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Qureshi in view of Nance, Heid, and Howell. The
Examiner’s rejection is on pages 7 and 8 of the Answer.
Claims 8, 15, 16, 24, and 29 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Qureshi in view of Nance, Heid, and Braithwaite.
The Examiner’s rejection is on pages 9 through 10 of the Answer.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Qureshi in view of Nance, Heid, Howell and Shattuck.
The Examiner’s rejection is on page 10 of the Answer.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Qureshi in view of Nance, Heid, Howell, and Chiodo.
The Examiner’s rejection is on page 11of the Answer.
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Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Qureshi in view of Nance, Heid, Howell, and Braithwaite.
The Examiner’s rejection is on pages 11 and 12 of the Answer.
Throughout the opinion, we make reference to the Brief (received
October 16, 2006) and the Answer (mailed January 5, 2007) for the
respective details thereof.

ISSUES
Appellant contends that the Examiner’s rejection of claims 1, 4, 5, 9,
10, 13, 14, 23, 27, 28, 30, and 31 under 35 U.S.C. § 103(a) is in error. On
pages 9 through 18 of the Brief, Appellant presents several arguments
directed to the combination of Qureshi in view of Nance and Heid. On page
9 of the Brief, Appellant asserts that the cited art does not disclose “ (i) a
hermetically sealed housing, and (ii) a hermetic seal between the proximal
end of the housing and the chamber, as claimed.” Appellant reasons that
Nance, the reference the Examiner relies upon for teaching a hermetic seal,
is directed to a housing formed in the shape of a test tube with an opening at
one end and that the camera is not in the hermetically sealed chamber.
On pages 11 through 18 of the Brief, Appellant argues that the
Examiner has failed to establish a prima facie case of obviousness.
Appellant reasons “one of ordinary skill in the art reviewing the portable,
non-hermetically sealed inspection system of Qureshi would not be
motivated to seek hermetic sealing of a rigidly secured housing and so
would not look to Nance or Heid.”
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Thus, Appellant’s contentions present us with two issues. The first
issue is whether the combination of the references teaches a hermetically
sealed housing and a hermetic seal between the housing and the chamber.
The second issue is whether the Examiner has established a prima facie case
of obviousness.

FINDINGS OF FACT
1. Qureshi teaches an inspection system for train cars which includes
an articulated arm that has a camera on the end of the arm.
Abstract.
2. Nance teaches an apparatus for viewing hostile environments
which makes use of a camera mounted in a housing. Abstract.
3. Nance’s camera housing is shaped like a test tube and is
constructed such that it has a double wall. The two walls are
hermetically sealed and a vacuum is formed between the walls. A
camera is inserted into the inner part of the test tube shaped
housing. Abstract, col. 2, ll. 63-65, col. 4, ll. 29-37, and fig. 2.
4. The double wall protects the camera in the housing from the high
heat in the hostile environment outside the housing. The housing
is inserted into an opening in a chamber containing a hostile
environment such as a furnace. The open end of the test tube
shaped housing remains outside the chamber. Nance, col. 3, ll. 59-
63, col. 4, ll. 63-65, col. 5, ll. 1-4, and fig. 1.
5. The housing is transparent and made of quartz. Nance, col. 4,
ll. 17-19, 60-61.
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6. Heid teaches an apparatus to manufacture silicon crystals.
Abstract.
7. Heid’s apparatus includes a hermetically sealed furnace (chamber).
Col. 3, ll. 23-25.
8. There is a camera which is mounted such that it penetrates the
furnace and is able to view the furnace interior. Heid, col. 3, ll. 53-
54, item 50 fig 1.
9. As Heid’s camera penetrates the furnace (fact 8) and the furnace is
hermetically sealed (fact 7), the camera is necessarily hermetically
sealed to the furnace.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”). The Court
in Graham further noted that evidence of secondary considerations, such as
commercial success, long felt but unsolved needs, failure of others, etc.,
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“might be utilized to give light to the circumstances surrounding the origin
of the subject matter sought to be patented.” 383 U.S. at 17-18.
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” Id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248 [(1850)].” KSR, 127 S. Ct. at 1739 (citing Graham
v. John Deere Co., 383 U.S. 1, 12 (1966)), and reaffirmed principles based
on its precedent that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” Id. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id. at 1740.
“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” Id. at
1740 (citing Sakraida v. AG Pro, Inc., 425 U. S. 273, 282 (1976)).

ANALYSIS
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. Appellant’s arguments directed to the second issue are dispositive
of our holdings directed to the Examiner’s rejections, and as such we will
address the second issue first. However, as addressed infra in our new
ground of rejection, we do not find Appellant’s arguments directed to the
first issue to be persuasive.
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We do not find that one skilled in the art would combine the
references to arrive at the claimed invention. Independent claim 1 recites “a
flexible, generally tubular, elongated, hermetically sealed housing having a
distal end, a proximal end and an interior” and that one end of the housing is
rigidly secured to a chamber to form a hermetic seal between the housing
and the chamber. Independent claims 9, 17, 23, 30 and 31 recite similar
limitations, with the notable exception that claims 30 and 31 do not recite
that the housing is flexible.
Qureshi teaches an inspection device for railroad cars which includes
a housing for a camera. The housing takes the form of an articulated arm.
Fact 1. Nance also teaches an inspection device for a chamber wherein the
camera is inside of a housing. Fact 2. The housing is double walled with a
vacuum between the walls to reduce the heat transmitted from the chamber
to the camera. Facts 3 and 4. The housing is made of quartz. Fact 5. Heid
teaches a hermetically sealed chamber with a port to allow a camera to
observe inside the chamber. Facts 7 through 9. We do not however agree
with the Examiner that the collection of these elements would yield the
claimed invention. We note that the hermetically sealed housing of Nance is
made to provide thermal protection and is rigid, and we do not find that one
skilled in the art would readily recognize that such a housing could be made
to be flexible or articulated to be applied to the inspection arm of Qureshi.
Thus, we do not find that Qureshi is combinable with Nance and Heid so as
to render the claimed invention a predictable combination of old elements.
Further, we note that while the other references relied upon in the
Examiner’s rejections of the dependent claims teach features of the
dependent claims, we do not find the references overcome the noted
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deficiency in the rejection of the independent claims. Accordingly, we
reverse the Examiner’s rejections under 35 U.S.C. § 103(a) which rely upon
Qureshi in combination with other references.1

NEW GROUND OF REJECTION
We now enter a rejection of claims 30 and 31 under 35 U.S.C.
§ 103(a) as being unpatentable over Nance and Heid. Claims 30 and 31
recite a monitoring system for transmitting images from within a chamber to
outside a chamber. The claimed system makes use of a tubular elongated,
non-porous hermetically sealed housing with an interior. The claims recite
that the interior of the housing contains a transmission media. Nance
describes a tubular housing for a transmission media (camera) that is used in
a hostile environment. Facts 3 and 4. The tubular housing is inserted into a
chamber to observe the inside of the chamber. Fact 4. Nance’s housing is
hermetically sealed. Fact 3. Appellant’s Specification, on pages 1 and 2,
discusses hermetically sealed as it relates to a material or layer being
hermetically sealed (i.e. impervious). As Nance teaches that the housing
contains a hermetically sealed chamber, clearly the outer layer of the
housing is hermetically sealed. Further, claims 30 and 31 recite that the
housing has a window and that the interior of the housing is accessible
though an access port. Nance teaches that the housing is transparent, Fact 5,
and that the housing has an opening to access the interior at the location
where the housing meets the chamber. Facts 4 and 5. Nance does not teach

1 Note as discussed infra, we find that Nance and Heid do teach that the
device claimed in claims 30 and 31 is a predictable combination of old
elements.
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the claimed features of the housing being hermetically sealed to the chamber
and of a monitor (apparatus in claim 31) being outside the chamber to
receive the transmission from the transmission media. Initially, we note that
though Nance does not disclose that there is a monitor to view the images
captured by the camera, we consider using a monitor to view the images to
be a predictable use of Nance’s device. Further, Heid teaches a hermetically
sealed chamber for manufacturing silicon crystals. Fact 7. Heid teaches that
the chamber is heated to a high temperature and that a camera is used in the
chamber (i.e. the camera housing is hermetically sealed to the chamber).
Facts 8 and 9. We consider that using Nance’s camera housing for high
temperature chambers (such as a furnace) in the silicon manufacturing
chamber (a furnace) of Heid to be a predictable result, as it will allow for
viewing of the operations in the oven while preventing the camera from
being subjected to the high heat in the chamber.

CONCLUSION
We consider the Examiner’s rejections of claims 1 through 31 under
35 U.S.C. § 103(a) to be in error. However we enter a new rejection of
claims 30 and 31 under 35 U.S.C. § 103(a).

ORDER
For the foregoing reasons, we will not sustain the Examiner’s
rejections under 35 U.S.C. § 103. The decision of the Examiner is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of

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rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED - 37 C.F.R. § 41.50(b)

KIS

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