Ex Parte Sewald

Board of Patent Appeals and Interferences

Mar 30, 2009

10200705 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DIETER SEWALD
____________

Appeal 2009-0658
Application 10/200,705
Technology Center 1700
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Decided:1 March 30, 2009
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-10 and 12-19.
We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0658
Application 10/200,705

Claim 1 is illustrative:
1. A method for identifying molecules in a carrier liquid,
which comprises:

providing a container configuration having two electrodes;

placing the carrier liquid into the container configuration;

applying electrical radio-frequency energy varied over a wide range of
frequencies to the electrodes;

measuring a resonance spectrum in the wide range of frequencies;

determining, from the measured resonance spectrum, an absorption
resonant frequency within the wide range for the molecules; and

identifying the molecules based on the determined absorption
resonant frequency.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 2):
Fuller (hereafter Fuller ‘179 or Fuller) 4,765,179 Aug. 23, 1988
Fuller (hereafter Fuller ‘668) 5,792,668 Aug. 11, 1998
Appellant’s invention is directed to a method for identifying
molecules in a carrier liquid. The appealed claims also define a device for
performing the identification.
Appealed claim 19 stands rejected under 35 U.S.C. § 112, second
paragraph. Claims 1-3, 5-10, and 12-18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fuller ‘179. Also, claim 4 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over Fuller ‘179 in
view of Fuller ‘668.
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Application 10/200,705

The Examiner has properly determined that Appellant has provided
“no substantial arguments in rebuttal of the rejection of the dependent claims
2, 3, 5-7, 10 and 12” (Ans. 15, second para.). Accordingly, these claims
stand or fall together with the claims upon which they depend.
We have carefully considered each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner’s
reasoned analysis and application of the prior art, as well as his cogent and
thorough disposition of the arguments raised by Appellant. Accordingly, we
will adopt the Examiner’s reasoning as our own in sustaining the rejections
of record, and we add the following for emphasis only.
We consider first the Examiner’s rejection of claim 19 under § 112,
second paragraph. We agree with the Examiner that the claim recitation that
said container configuration and said electrodes are constructed in CMOS
technology fails to particularly point out and distinctly claim the invention.
Appellant cites textbook definitions for a CMOS device and CMOS
technology and submits that “[t]he textbook discloses that CMOS
technology employs both NMOS and PMOS transistors to form the logic
elements” (App. Br. 7, first para.). However, Appellant’s reference citation
fails to refute the compelling argument set forth by the Examiner as follows:
Claim 19 does not recite either a NMOS or PMOS
transistor element. It is unclear as to how these additional
elements are associated with the recited container
configuration and the electrodes actually recited in the claim
to form an operative device . . . It is the examiner’s position
that the final resulting structure of the claimed device that is
constructed in CMOS technology is simply still unclear and
therefore indefinite. It should also be noted that none of
these CMOS features appear in the appellant’s drawings.
The metes and bounds of the structure of this apparatus claim
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Appeal 2009-0658
Application 10/200,705

are unclear in that the claim does not positively recite any
specific structural limitations for the claimed device.

(Ans. 9). We find no error in the Examiner’s position that one of ordinary
skill in the art would not be able to readily ascertain the specific aspects of
CMOS technology that are used to construct the container configuration and
electrodes and how such technology is specifically implemented.
We now turn to the § 103 rejection over Fuller ‘179 (hereafter Fuller).
Fuller, like Appellant, discloses a method and device for identifying
molecules in a carrier liquid using radio-frequency energy having a wide
range of frequencies. Like Appellant, Fuller utilizes a container
configuration having two electrodes in conjunction with an oscillator or
waveform generator and a detection circuit. The method of Fuller
determines the fundamental frequencies of molecules in the carrier liquid,
and we agree with the Examiner that such fundamental frequencies
correspond to the claimed absorption resonant frequency.
Appellant maintains that the claimed invention is directed to a method
for identifying molecules, whereas Fuller “determines the concentration of
the chemical in the test sample” (App. Br. sentence bridging 9-10).
However, as emphasized by the Examiner, Fuller, in addition to disclosing a
spectroscopy apparatus and method for determining the concentration of a
chemical in a test sample, also discloses “a radio frequency spectroscopy
apparatus and method that are capable of discriminating between a chemical
to be tested for and a plurality of different chemicals having similar
properties which are contained in the same test sample” (col. 7, ll. 40-44).
Fuller sets forth that the apparatus and method “are capable of determining
the presence and concentration of a selected one of wide range of different
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Appeal 2009-0658
Application 10/200,705

chemicals when such selected chemical is present in a relatively chemically
complex test specimen” (col. 7, ll. 46-50, emphasis added). Manifestly, such
discriminating between a chemical to be tested and other chemicals in
determining the presence of a selected chemical is tantamount to Appellant’s
method for identifying molecules in a carrier liquid.
Appellant also contends that Fuller’s step of varying frequency
through a range of frequencies is only performed for selecting a suitable
shaped wave before the actual measurement is performed, but is not
performed for identifying molecules, as presently claimed. (App. Br. 12,
last para.). However, Fuller discloses that “[a] square wave is a desirable
form of shaped wave because it contains a broad spectrum of harmonic
frequencies” (col. 13, ll. 38-40). Hence, Fuller’s use of a square wave to
identify the chemical molecule meets the claim step of applying radio-
frequency energy varied over a wide range of frequencies. In an attempt to
distinguish the claimed varying of radio-frequency energy over the wave
form of Fuller, which comprises a broad spectrum of frequencies, Appellant
cites the Fuller disclosure that “[t]he use of a simultaneously present
plurality of frequencies differentiates the present invention from prior art
approaches such as the Larsen, et al. patent in which a range of discrete
frequencies are sequentially employed” (col. 9, ll. 6-10). However, the
claims on appeal do not recite a range of discrete frequencies that are
sequentially used. Furthermore, to the extent the appealed claims
encompass such sequential applications of discrete frequencies, we find that
Fuller evidences the obviousness of employing such an alternative to the
application of a wave form.
Moreover, Fuller expressly teaches that
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Appeal 2009-0658
Application 10/200,705

[a] rapid series of shaped signals at selected fundamental
frequencies tuned to selected chemicals can be sequentially
transmitted with corresponding circuit variations, if required,
to enable a high degree of selectivity and a large range of
chemical compounds to be sensed, measured, stored and then
output using the apparatus of the present invention and a
microprocessor controller

(col. 17, ll. 34-41). Accordingly, we find that Fuller teaches the claimed
method for identifying molecules in a carrier liquid by applying electrical
radio-frequency energy varied over a wide range of frequencies. We note
that the appealed claims encompass a method for identifying a variety of
molecules in the carrier liquid.
As for Appellant’s argument that Fuller does not show or suggest the
recited tunable radio-frequency oscillator of claim 13, we find no error in the
Examiner’s finding that the waveform generator 12 of Fuller is equivalent to
the claimed oscillator. We agree with the Examiner that “Fuller indicates
that the generator 12 is capable of being tuned or adjusted to generate a
plurality of different frequencies”, which generator has an oscillation rate in
the range of about one megahertz to about one gigahertz (Ans. 16, last para.,
citing Fuller at col. 9, ll. 53-68).
Concerning the claim 8 recitation of monitoring progress of a reaction
as a function of time, we agree with the Examiner that Fuller teaches such by
monitoring the blood glucose levels over time (see col. 17, ll. 14 et. seq.).
Appellant does not present a separate substantive argument against the
rejection of claim 4 over Fuller ‘179 in view of Fuller ‘668.
As a final point, we note that Appellant bases no argument upon
objective evidence of non-obviousness, such as unexpected results.
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Appeal 2009-0658
Application 10/200,705

In conclusion, based on the foregoing and reasons well stated by the
Examiner, the Examiner’s decision rejecting the appealed claims is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 35 U.S.C. § 1.136(a) (2008).

AFFIRMED

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LERNER GREENBERG STEMER LLP
FOR INFINEON TECHNOLOGIES AG
P.O. BOX 2480
HOLLYWOOD, FL 33022-2480

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