Ex Parte Sakai

Board of Patent Appeals and Interferences

Mar 13, 2007

09779125 (B.P.A.I. Mar. 13, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MASUMI SAKAI
____________________

Appeal 2006-2381
Application 09/779,125
Technology Center 2800
____________________

Decided: March 13, 2007
____________________

Before: HOWARD B. BLANKENSHIP, ALLEN R. MACDONALD, and
JEAN R. HOMERE, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 12, 13, 15, and 16. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
Appellant invented a furnace-type atomic absorption
spectrophotometer that heats a sample held in an electrically-conductive tube
by controlling a heating current passed to the tube. After atomizing the
Appeal 2006-2381
Application 09/779,125

sample, a beam of light is passed through the sample to measure its
absorbance. A heating control means digitally controls the heating current
such that the monitored temperature value will approach a specified target
temperature value. A parameter setting means sets parameters that
determine response characteristics of the heating control means and adjusts
the parameters according to the kinds of elements to be detected. As a
result, the heating control means’ indicial response characteristics are
controlled in units of milliseconds when the tube is heated.
Independent claim 12 under appeal reads as follows:
12. A furnace-type atomic absorption spectrophotometer comprising:

a tube for heating a sample therein;

monitoring means for monitoring temperature of said tube and
outputting a monitored value indicative of the monitored temperature;

heating control means for digitally controlling heating current for
heating said tube such that said monitored value will approach a specified
target temperature value; and

parameter setting means for setting parameters that determine
response characteristics of said heating control means, said parameter setting
means adjusting said parameters according to kinds of elements to be
detected and thereby controlling indicial response characteristics of said
heating control means in units of milliseconds when said tube is heated by
said heating control means;

wherein said heating control means includes a calculator for digitally
obtaining a quantity of a specified operation of said heating control means
by a PID control calculation on difference between said monitored value and
said target temperature value and said parameter setting means serves to set
at least one of parameters for said PID control calculation.

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Application 09/779,125

The Examiner rejected claims 12, 13, 15, and 16 under 35 U.S.C.
§ 103(a) (2004).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Egan US 4,159,876 Jul. 3, 1979
Pettit US 4,669,040 May 26, 1987
Okumoto US 5,104,220 Apr. 14, 1992

Appellant contends that the claimed subject matter would not have
been obvious to the skilled artisan at the time of the invention. Specifically,
Appellant argues that the prior art does not teach or suggest controlling
indicial response characteristics of the heating control means in units of
milliseconds when the tube is heated by the heating control means as
claimed (Br. 4; emphasis added). According to Appellant, a control in units
of milliseconds is not an obvious extension of a control in units of seconds
as in the prior art. Appellant emphasizes that since atomization usually ends
in about one second, a control in units of seconds would be of little use (Br.
4-5; Reply Br. 1-2).
The Examiner argues that the skilled artisan would have known that a
compensating time constant of 1-5 seconds disclosed in Egan is equivalent
to 1000-5000 milliseconds. According to the Examiner, the skilled artisan
would therefore recognize that the heating control means may operate in and
display units of milliseconds instead of seconds (Answer 8-9).
We affirm.

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Application 09/779,125

ISSUE
Has Appellant shown that the Examiner failed to establish that
controlling a heating control means’ indicial response characteristics in units
of milliseconds as claimed would have been obvious to the skilled artisan in
view of a known control in units of seconds?

FINDINGS OF FACT
At the outset, we note that the Examiner’s factual findings regarding
the specific teachings of the cited references to Egan, Pettit, and Okumoto
(Answer 3-5) are not in dispute except with respect to the limitation of claim
12 calling for controlling indicial response characteristics of the heating
control means in units of milliseconds. See Br. 3-5. Accordingly, we will
adopt the Examiner’s factual findings regarding the cited references as they
pertain to the undisputed claim limitations.
Egan describes a spectrophotometer including an atomizer for
receiving a sample to be analyzed. The atomizer is heated by applying
electric power to a workhead 2 via a control means. A feedback circuit is
connected between the atomizer and the control means that approximates the
heating response characteristics of the atomizer. Significantly, the time
taken to reach operating temperature when voltage is applied to the
workhead depends upon the heating response characteristics of the particular
workhead and may be within the range of 1-5 seconds (Egan, abstract; col.
3, ll. 1-48; Fig. 1).

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Application 09/779,125

PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). These showings by the Examiner are an essential
part of complying with the burden of presenting a prima facie case of
obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See id.; In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531
F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).

ANALYSIS
We agree with the Examiner that although the time to temperature
resulting from Egan’s heating control is stated in units of seconds (i.e., 1-5
seconds), a control in units of milliseconds would nonetheless have been
obvious to the skilled artisan at the time of the invention.
Egan’s range is equivalent to 1000 to 5000 milliseconds. Although
there is a difference in three orders of magnitude between a second and a
millisecond, nothing in independent claim 12 requires that the response
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Application 09/779,125

characteristics be controlled in one millisecond increments – or any other
increment less than 1000 milliseconds – as Appellant seems to suggest. All
that the claim requires is that the indicial response characteristics be
controlled “in units of milliseconds” – a control that is fully met by a 1-5
second control. Even assuming that Egan’s system only enabled control in
one second (1000 millisecond) increments, the scope and breadth of the
claim language simply does not preclude such increments. For at least this
reason, the Examiner has established at least a prima facie case of
obviousness for independent claim 12 based on the collective teachings of
Egan, Pettit, and Okumoto.
On the record before us, we conclude that the Examiner did not err in
rejecting independent claim 12 under § 103. Since Appellant has not
separately argued the patentability of dependent claims 13, 15, and 16, these
claims fall with independent claim 12. See In re Nielson, 816 F.2d 1567,
1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987). See also 37 C.F.R.
§ 41.37(c)(vii).

CONCLUSION OF LAW
On the record before us, Appellant has not shown that the Examiner
failed to establish that controlling a heating control means’ indicial response
characteristics in units of milliseconds as claimed would have been obvious
to the skilled artisan in view of a known control in units of seconds.

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Application 09/779,125

DECISION
The Examiner's rejection of claims 12, 13, 15, and 16 is affirmed.

AFFIRMED

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