Ex Parte Pooch et al

Board of Patent Appeals and Interferences

Sep 4, 2002

08399853 (B.P.A.I. Sep. 4, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte INGO POOCH
and INGO KANEBLEI
__________
Appeal No. 1996-2959
Application 08/399,853
___________
ON BRIEF
___________
Before MCQUADE, NASE, and BAHR, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Ingo Pooch et al. originally took this appeal from the final
rejection of claims 1 through 17. As the appellants have since
canceled claim 14, the appeal now involves claims 1 through 13
and 15 through 17, all of the claims currently pending in the
application.
THE INVENTION
The invention relates to a device for detecting gaseous and
vaporous components of a gas mixture. Representative claim 1
reads as follows:
Appeal No. 1996-2959
Application 08/399,853
1 Although the term “said flow axis” in independent claims
1, 9 and 17 lacks a proper antecedent basis (an informality which
should be corrected in the event of further prosecution), its
context and the underlying specification indicate that it refers
to the respective flow axis of each channel forming the stated
angle.
2
1. A device for detecting gaseous and vaporous components
of a gas mixture, comprising: channel means for defining
optically perceptible reaction zones, said channel means
including channels, each zone being inside a channel; a support
for said channels, each channel having a gas inlet and a gas
outlet for parallel gas flow, each of said channels having a flow
axis following a course of said channel; a scanning device having
a scanning section, at least two of said channels being arranged
to define an angle, not equal to zero, formed between said flow
axis1 and said scanning section, each of said channels being
located in a position with a channel portion covered by said
scanning section.
THE PRIOR ART
The references relied on by the examiner as evidence of
obviousness are:
May 5,089,232 Feb. 18, 1992
Stark et al. (Stark) 5,397,538 Mar. 14, 1995
THE REJECTIONS
Claim 4 stands rejected under 35 U.S.C. § 112, fourth
paragraph, as being an improper dependent claim.
Claims 1 through 13 and 15 through 17 stand rejected under
35 U.S.C. § 103 as being unpatentable over either May or Stark.
Attention is directed to the main and reply briefs (Paper
Nos. 15 and 18) and to the answer (Paper No. 16) for the
Appeal No. 1996-2959
Application 08/399,853
2 The examiner entered the above rejections for the first
time in the answer to replace the rejections set forth in the
final rejection (Paper No. 5).
3 35 U.S.C. § 112, fourth paragraph, states in pertinent
part that “a claim in dependent form shall contain a reference to
a claim previously set forth and then specify a further
limitation of the subject matter claimed.”
3
respective positions of the appellants and the examiner with
regard to the merits of these rejections.2
DISCUSSION
I. The 35 U.S.C. § 112, fourth paragraph, rejection
Claim 4 depends from independent claim 1 and defines the
channels recited in the parent claim to be “arranged in parallel
to one another on said support.” In the examiner’s view, this
recitation fails to further limit the subject matter set forth in
claim 1, thereby making claim 4 an improper dependent claim under
§ 112, ¶ 4,3 because “[i]ndependent claim 1 require[s] the
channels to have an angle ‘not equal to zero’. Claim 4 does not
further limit claim 1 because it is directed to parallel channels
that would have an angle equal to zero” (answer, page 3).
This criticism rests on a faulty interpretation of parent
claim 1 which in actuality requires the angle in question to be
formed between the flow axis of each of the at least two

Appeal No. 1996-2959
Application 08/399,853
4 See n.1, supra.
4
channels4 and the scanning section, not between the flow axes
themselves. Claim 4 further limits the relationship between the
channels in a manner which is completely consistent with these
angle limitations. Thus, the examiner’s concern that claim 4 is
an improper dependent claim is unfounded.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, fourth paragraph, rejection of claim 4.
II. The 35 U.S.C. § 103 rejections
As framed by the appellants, the dispositive issue with
respect to the § 103 rejections of independent claims 1, 9 and 17
is whether either May or Stark teaches or would have suggested a
device meeting the limitations in these claims pertaining to the
relationship between the channels and the scanning section.
Independent claim 1 recites a detecting device comprising, inter
alia, (1) channels each having a flow axis and (2) a scanning
device having a scanning section, with “at least two of said
channels being arranged to define an angle, not equal to zero,
formed between said flow axis and said scanning section, each of
said channels being located in a position with a channel portion
covered by said scanning section.” Similarly, independent claim
9 recites a detecting device wherein “at least a portion of each
Appeal No. 1996-2959
Application 08/399,853
5
of said plurality of channels being disposed between said support
and said scanning section, at least some of said plurality of
channels being arranged to define an angle, not equal to zero,
formed between said flow axis and said scanning section line,”
and independent claim 17 recites a detecting device wherein
said scanning section being disposed facing said
support with at least a portion of each of said
plurality of channels being disposed between said
support and said scanning section, at least some of
said plurality of channels being arranged to define an
angle, not equal to zero, formed between said flow axis
and said scanning section line.
The appellants’ specification (see pages 3 through 5)
explains that the foregoing structural relationships are
advantageous in that they permit a time efficient and low cost
evaluation of a gas mixture.
May and Stark disclose detecting devices generally
comparable to that defined by the appealed claims in that each
includes a support, channels and a scanning device. In applying
these references to reject independent claims 1, 9 and 17, the
examiner states that
[t]he cited prior art is silent to the claimed
radial arrangement of the channels such that the angle
between two adjacent channels is not equal to zero
. . . .
One having ordinary skill in the art would have
recognized that it would have been desirable to orient
the channels such that an efficient sampling of the gas
could occur. The channels of the cited prior art
Appeal No. 1996-2959
Application 08/399,853
6
contain the sample and are containers for the sample
analysis. The court decided [in] In re Dailey ([357
F.2d 669, 672-73,] 149 USPQ [47,] 49 [(CCPA 1966)])
“that the configuration of the container is a mere
matter of choice...” and not significant to define over
the prior art which is a similar device with a similar
function with a different container configuration. The
cited prior art and the instant invention perform the
identical function of gas analysis. Appellants’ have
not demonstrated the claimed configuration give[s]
results that would not have been expected by the
devices of the cited prior art (e.g. no unexpected
results because of the claimed configuration have been
demonstrated). In the absence of a showing of
unexpected results and in view of Dailey above, one
having ordinary skill in the art would have concluded
that configuration of the channels to contain the gas
would have been a mere matter of choice and not
sufficient to define over the art of record. It would
have been within the skill of the art to modify either
May or Stark et al. to configure the channels at angles
greater than zero in a radial pattern or perpendicular
to each other as a mere matter of choice [answer, pages
4 and 5].
This analysis fails from the outset due to the examiner’s
inaccurate interpretation of claims 1, 9 and 17 as requiring the
recited angle to be formed between the channel flow axes rather
than between the channel flow axes and the scanning section. The
resulting determinations by the examiner as to what one of
ordinary skill in the art would have recognized to be desirable
and found to be obvious are irrelevant because they are not
directed to the subject matter actually claimed. They also
suffer from a complete lack of factual support, a deficiency
Appeal No. 1996-2959
Application 08/399,853
5 Upon return of the application to the technology center,
the examiner should reassess the patentability of the appealed
claims in light of May’s teachings regarding the configuration of
the channels and the simultaneous measurement of plural channels
by an opto-electronic scanning device (see May, for example, at
column 2, lines 14 through 18 and 29 through 33; column 3, lines
13 through 24; and column 5, lines 18 through 23 and 40 through
50).
7
finding no cure in the Dailey case which has little, if any,
pertinence to the issues of obviousness presented in this appeal.
Hence, as applied by the examiner, neither May nor Stark
establishes a prima facie case of obviousness with respect to the
subject matter recited in independent claims 1, 9 and 17.
Therefore, we shall not sustain the standing 35 U.S.C. § 103
rejection of claims 1, 9 and 17, and dependent claims 2 through
8, 10 through 13, 15 and 16, as being unpatentable over either
May or Stark.5
Appeal No. 1996-2959
Application 08/399,853
8
SUMMARY
The decision of the examiner to reject claims 1 through 13
and 15 through 17 is reversed.
REVERSED
JOHN P. MCQUADE )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JEFFREY V. NASE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/kis
Appeal No. 1996-2959
Application 08/399,853
9
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