Ex Parte Quarry

Patent Trial and Appeal Board

Feb 19, 2013

11143544 (P.T.A.B. Feb. 19, 2013)

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.
11/143,544 06/01/2005 Michael J. Quarry IL-11225 9214
24981 7590 02/20/2013
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
MILLER, ROSE MARY
ART UNIT PAPER NUMBER
2856
MAIL DATE DELIVERY MODE
02/20/2013 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 MICHAEL J. QUARRY
________________

Appeal 2010-008271
Application 11/143,544
Technology Center 2800
________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008271
Application 11/143,544

2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 5-13 and 16-31. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Claims 9, 21, and 25-31 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
1

2

Claims 1, 5-7, 13, and 16-19 stand rejected under 35 U.S.C. § 103(a)
as obvious over Giurgiutiu (WO 03/106958 A2; Dec. 24, 2003) in view of
Saitou (US 4,773,425; Sept. 27, 1988).
Claims 8 and 20 stand rejected under 35 U.S.C. § 103(a) as obvious
over Giurgiutiu and Saitou in view of Alleyne (GB 2 371 623 A; July 31,
2002) and further in view of Den Boer (US 6,896,171 B1; May 24, 2005).
Claims 10 and 22 stand rejected under 35 U.S.C. § 103(a) as obvious
over Giurgiutiu, Saitou and Den Boer and further in view of Fink (WO
2004/021038 A1; March 11, 2004).
Claims 11 and 23 stand rejected under 35 U.S.C. § 103(a) as obvious
over Giurgiutiu, Saitou, and Den Boer and further in view of Wilk (US
6,678,403 B1; Jan. 13, 2004).
3

1
Throughout this opinion, we refer to (1) the Appeal Brief filed September
29, 2009; (2) the Examiner’s Answer mailed December 17, 2009; and (3) the
Reply Brief filed December 30, 2009.
2
In the Final Rejection, claims 9 and 21 had been rejected under 35 U.S.C.
§ 103(a) as obvious over Giurgiutiu and Saitou in view of Takashima (US
4,200,858) and further in view of Den Boer. App. Br. 14. The Answer
withdrew this art rejection (Ans. 3) and newly rejected claims 9 and 21
under 35 U.S.C. § 112. Ans. 3, 12-13.
3
In the Final Rejection, claims 11 and 23 had been rejected under 35 U.S.C.
§ 103(a) as obvious over Giurgiutiu and Saitou in view of Den Boer. App.
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Claims 12 and 24 stand rejected under 35 U.S.C. § 103(a) as obvious
over Giurgiutiu, Saitou, and Wilk and further in view of Chang (US
6,370,964 B1; Apr. 16, 2002).
Claims 2-4, 14, and 15 have been canceled. App. Br. 3.

STATEMENT OF THE CASE
Appellant’s invention relates to nondestructively detecting defects in
structures using an ultrasonic array for directing and receiving guided waves
to and from a sample. A matrix switch is used to sequence through an array
of transducers. See Spec. ¶ 0008.

ANALYSIS
THE 35 U.S.C. § 112, FIRST PARAGRAPH REJECTIONS
Claims 25-31
Independent claim 25 is illustrative with key disputed limitations
emphasized:
25. A method for nondestructively evaluating a sample for a
defect, comprising the steps of:
directing guided waves to the sample using an ultrasonic
array having more than four transducers with each of said
transducers having an axis for directing guided waves to the
sample,
receiving guided waves from the sample using said
ultrasonic array having more than four transducers with each of
said transducers having an axis for receiving guided waves
from the sample,
sequencing said ultrasonic array using a matrix switch
operatively connected to said more than four transducers by

Br. 15. Without expressly withdrawing this rejection, the Answer newly
rejected claims 11 and 23 as stated in the text. Ans. 3, 13-14.
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repeating said step of directing guided waves to the sample and
said step of receiving guided waves from the sample to
simultaneously direct guided waves to the sample and to
sequence through said ultrasonic array of transducers with the
axis of the array parallel to the propagation direction, said step
of sequencing said ultrasonic array providing a modal
waveform, and
reconstructing said modal waveform by introducing the
appropriate time delays to search through the dispersion space
of guided waves for sample and determine the optimal mode for
inspection, where the optimal mode is determined by the
maximum signal-to-noise ratio for a reflection from the defect.

The Examiner concludes that the original Specification does not
support the limitation “each of said transducers within the ultrasonic array
having an axis for directing and receiving guided waves.”
4
Ans. 4:14-16.
That is, he concludes, there is no support for each individual transducer
having an axis for directing and receiving guided waves. Ans. 4:18-20.
Rather, the Examiner concludes, the original Specification supports only an
“ultrasonic array having an axis for directing and receiving guided waves.”
Ans. 4:17-18 (emphasis added).
Based on Specification paragraph 0019, and Figures 1A/1B showing
double headed arrows 108, Appellant contends that the disclosure provides
requisite support because “[t]his description is sufficient to enable one of
ordinary skill in the art to make or use Appellant’s claimed invention” (App.

4
The Examiner has apparently used the phrase “an axis for directing and
receiving” as a short-hand version for the actual recitations: “an axis for
directing” and “an axis for receiving.” Appellant does not assert any error
because of the short-hand summary.
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Br. 16-19; Reply Br. 3-5
5
) so that one skilled in the art “can clearly conclude
that as of the filing date the inventor Appellants had possession of the
claimed invention.” Reply Br. 5:12-14.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant had possession of the
claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Although the
description requirement under § 112 does not demand (1) any particular
form of disclosure, or (2) the Specification recite the claimed invention
verbatim, a description that merely renders the invention obvious does not
satisfy the requirement. Id. at 1352 (citations omitted).
We agree with the Examiner’s findings and reasoning (Ans. 4-5, 14-
15) and adopt them as our own. We emphasize that Appellant has failed to
provide written description support in the Specification describing “each of
said transducers having an axis.”
Therefore, the Examiner did not err in rejecting claims 25-31 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Claims 9 and 21
The Examiner concludes that the originally filed Specification and
claims fail to provide support for each transducer of the array having “an
annular shape for radial wave propagation.” Ans. 12. Appellant argues that

5
Appellant sometimes refers only to claim 25’s “receiving” step (App. Br.
17:7-10, 15-18; 19:11-13) and sometimes refers to various other descriptions
of the disputed claim limitations. See, e.g., App. Br. 19:6-8; Reply Br. 4:8-
9, 13-19; 5:1-5, 9-10. We consider Appellant’s arguments to be directed to
the claims as recited in the Claims Appendix.
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Specification paragraphs 0018 and 0020 provide sufficient information to
enable one skilled in the art to make and use the claimed invention in
sufficient detail to conclude that as of the filing date Appellant had
possession of the claimed invention. Reply Br. 24-25. Appellants’ analysis
is not persuasive. Ariad, supra.
We therefore again agree with the Examiner’s findings and reasoning
(Ans. 12-13) and adopt them as our own.
Accordingly, Appellant has not persuaded us that the Examiner erred
in determining that claims 9 and 21 fail to comply with the written
description requirement under 35 U.S.C. § 112, first paragraph.
THE OBVIOUSNESS REJECTIONS
Claims 1, 5-7, 13, and 16-19
Independent claim 1is illustrative with key disputed limitations
emphasized:
1. An apparatus for nondestructively evaluating a sample,
comprising:
an ultrasonic array that directs guided waves to the
sample and receives guided waves from the sample, wherein
said ultrasonic array includes more than four transducers,
a matrix switch connected to said ultrasonic array, said
matrix switch operatively connected to more than one of said
more than four transducers to simultaneously direct guided
waves to the sample,
a switch controller connected to said matrix switch,
a computer and software interface connected to said
switch controller,
a tone-burst source pulser connected to said matrix
switch and to said computer and software interface, and
more than four receivers with amplification connected to
said matrix switch and to said computer and software interface,
wherein said matrix switch is operatively connected to more
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than one of said more than four receivers to simultaneously
receive guided waves from the sample.

The Examiner finds that Giurgiutiu teaches the claimed invention
except for the recited matrix switch, switch controller, computer and
software interface, and more than four receivers with amplification. Ans. 6.
The Examiner further finds that Saitou teaches the claimed matrix switch
(Ans. 7:3-6; 15:9-18), switch controller (Ans. 7:6-7; 15:20-23), computer
and software interface (Ans. 7:7-8), and more than four receivers (Ans. 7:8-
14; 15:25-16:6).
Appellant argues the references individually, rather than as a
combination (App. Br. 24-27) and contends that the Examiner does not
provide an explanation of how or why the references could be combined to
produce the claimed invention. App. Br. 28. The Examiner does, however,
explain how and why it would have been obvious to combine the references.
Ans. 7:15-20. In addition, one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant, in the Reply Brief, first contends that the Answer does not
identify where missing claim limitations are found in the references. Reply
Br. 6:9-10. We disagree. See Ans. 15-16.
Appellant’s Reply Brief also contends that Saitou does not teach or
suggest the limitation “an ultrasonic array that directs guided waves to the
sample and receives guided waves from the sample.” Reply Br. 7-9. This
“ultrasonic array” limitation was not argued in Appellant’s Appeal Brief.
Arguments directed to that limitation are therefore waived. “[T]he reply
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brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.” Ex parte Borden, 93 USPQ2d, 1473, 1474 (BPAI 2010) (informative).
We are therefore not persuaded that the Examiner erred in rejecting
(1) representative claim 1; (2) claim 13 for similar reasons; and (3) claims 5-
7 and 16-19 not separately argued with particularity.
Accordingly, we will sustain the Examiner’s rejection of claims 1, 5-
7, 13, and 16-19.
THE REMAINING OBVIOUSNESS REJECTIONS
Appellant’s arguments are not persuasive regarding the patentability
of claims 8 and 20; 10 and 22; 11 and 23; and 12 and 24 because Appellant
attacks the references individually and relies upon recitations of the claim
limitations. See App. Br. 35-37; 46-47; 57-58 attacking references
individually; App. Br. 23-26; 34-35; 45; 56; Reply Br. 26-27 reciting claim
limitations. Keller, supra; Merck, supra; See also 37 C.F.R. §
41.37(c)(1)(vii) (noting that an argument that merely points out what a claim
recites is unpersuasive). Accord, In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[T]he 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.”)

Appeal 2010-008271
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In addition, the Reply Brief contends that Saitou does not teach “an
ultrasonic array that directs guided waves to the sample and receives guided
waves from the sample” (Reply Br. 11, 16) or guided waves (Reply Br. 20-
21; 28-30). Arguments regarding the ultrasonic array limitation and the
guided waves limitation are waived because they are presented for the first
time in the Reply Br. See Borden, supra.
We are therefore not persuaded that the Examiner erred in rejecting
claims 8, 10-12, 20, and 22-24.
Accordingly, we will sustain the Examiner’s rejection of claims 8,
10-12, 20, and 22-24.

CONCLUSION
Under § 112, first paragraph, the Examiner did not err in rejecting
claims 9, 21, and 25-31. Under § 103, the Examiner did not err in rejecting
claims 1, 5-8, 10-13, 16-20, and 22-24.

DECISION
The Examiner’s decision rejecting claims 1, 5-13, and 16-31 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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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