Ex parte SHOFNER et al.

Board of Patent Appeals and Interferences

Mar 21, 2000

08395376 (B.P.A.I. Mar. 21, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte FREDERICK M. SHOFNER,
MICHAEL E. GALYON, JOSEPH C. BALDWIN
and MASOOD A. KHAN
________________
Appeal No. 1997-3975
Application 08/395,376
________________
ON BRIEF
________________
Before KRASS, JERRY SMITH and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-3975
Application No. 08/395,376
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This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 9-11 and 13-18,
which constitute all the claims remaining in the application.
An amendment after final rejection was filed on January 6,
1997 but was denied entry by the examiner.
The invention pertains to an apparatus for sensing
characteristics of elongate entities having length and width
and being carried in an airflow. The invention is disclosed
as having particular utility when used with an Advanced Fiber
Information System (AFIS). More particularly, the invention
has analyzing means for distinguishing between sensor signals
corresponding to looped entities and sensor signals
corresponding to not looped entities.
Representative claim 9 is reproduced as follows:
9. An apparatus for sensing characteristics of elongate
entities having length and width and being carried in an
airflow, at least a portion of the entities being in a looped
condition in which an entity is folded back on itself along
its length; comprising:
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a sensing volume;
entity presentation means for receiving the entities and
airflow and presenting the entities in said sensing volume, a
portion of the entities being presented in said sensing volume
in
a looped condition and a portion of the entities being
presented in said sensing volume not in a looped condition;
sensor means for sensing the entities in said sensing
volume and for producing sensor signals corresponding to
characteristics of the sensed entities; and
analyzing means for receiving and analyzing said sensor
signals and for determining at least one characteristic of
looped entities based on said sensor signals, wherein said
analyzing means further comprises means for distinguishing
between sensor signals corresponding to looped entities and
sensor signals corresponding to not looped entities.

The examiner relies on the following references:
Duncan et al. (Duncan) 3,816,001 June 11,
1974
Shofner et al. (Shofner), “Advanced Fiber Information System:
A New Technology For Evaluating Cotton,” presented at the
Conference of the Textile Institute Fibre Science Group, 7-8
December 1988, pp. 1-10, figs. 1-21.
Claims 9-11 and 13-18 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being based on an inadequate
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disclosure. Claims 9-11 also stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by the disclosure of Shofner.
Finally, claims 13-18 also stand rejected under 35 U.S.C. §
103 as being unpatentable over the teachings of Shofner in
view of Duncan.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
in support of the rejections and the evidence of anticipation
and obviousness relied upon by the examiner as support for the
prior art rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellants’
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the disclosure in this application describes
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the claimed invention in a manner which complies with the
requirements of
35 U.S.C. § 112. We are also of the view that the disclosure
of Shofner fully meets the invention as recited in claims 9-
11. Finally, it is our view that the collective evidence
relied upon and the level of skill in the particular art would
have suggested to one of ordinary skill in the art the
obviousness of the invention as set forth in claim 16, but not
the invention as set
forth in claims 13-15, 17 and 18. Accordingly, we affirm-in-
part.
We consider first the rejection of claims 9-11 and 13-
18 based on the first paragraph of 35 U.S.C. § 112. The
examiner’s rejection is based on the position that the
originally filed specification does not support the invention
now being claimed. Amendments were made to the specification
which the examiner finds to be new matter. The claims on
appeal are rejected based on the examiner’s position that the
specification contains this “new matter.” Appellants argue
that the appealed claims do not recite any subject matter
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related to the alleged new matter, and the disclosure is fully
enabling for the claimed invention [brief, pages 5-6].
A rejection on new matter goes to the written
description requirement of 35 U.S.C. § 112. The purpose of
the written description requirement is to ensure that the
applicants convey with reasonable clarity to those skilled in
the art that they were in possession of the invention as of
the filing date of the application. For the purposes of the
written description requirement, the invention is "whatever is
now claimed." Vas-cath, Inc. v. Mahurkar, 935 F.2d 1555,
1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
We note that the material objected to as new matter by
the examiner relates to an addition to the disclosure that
“taper
means half-angle” [answer, page 3]. The terms “taper” and
“half-angle” are used only to describe the physical
characteristics of the nozzle. As pointed out by appellants,
however, the appealed claims recite no specific features of
the nozzle and only broadly recite an “entity presentation
means.” The original specification clearly supports the broad
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recitation of an entity presentation means regardless of
whether or not the “new matter” had been added. Since the
taper and half-angle characteristics are irrelevant to the
invention of the appealed claims, we do not sustain the
examiner’s rejection of claims 9-11 and 13-18 under the first
paragraph of 35 U.S.C. § 112 as having an inadequate written
description.
We now consider the rejection of claims 9-11 under
35 U.S.C. § 102(b) as being anticipated by the disclosure of
Shofner. These claims stand or fall together [brief, page 5].
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore
and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
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220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
The examiner asserts that Shofner discloses all the
components of independent claim 9. Appellants argue that
Shofner does not disclose “analyzing means further comprising
means for distinguishing between sensor signals corresponding
to looped entities and sensor signals corresponding to not
looped entities, as contained in Claim 9" [brief, page 7].
Appellants argue that Shofner can sense but not distinguish
between looped and not looped entities. The examiner responds
that Shofner discloses that the sensed signals are analyzed,
and the results of the analysis shown in graphical form
distinguish between looped and not looped entities as recited
in claim 9 [answer, pages 8-9]. We agree with the examiner.
Shofner clearly discloses that the sensed data “are
acquired, analyzed, and stored” [page 4 of reference, emphasis
added]. The question is whether the analysis in Shofner
distinguishes between sensor signals corresponding to looped
entities and sensor signals corresponding to not looped
entities.
We agree with the examiner that the graphical representation
of the fiber properties described on page 4 of the reference
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and
shown in Figures 5-18 of the reference constitutes a means for
distinguishing between looped and not looped entities to the
artisan skilled in interpreting such graphical
representations. Therefore, we sustain the rejection of
claims 9-11 under
35 U.S.C. § 102.
We now consider the rejection of claims 13-18 under
35 U.S.C. § 103 as unpatentable over the teachings of Shofner
in view of Duncan. In rejecting claims under 35 U.S.C. § 103,
it is incumbent upon the examiner to establish 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 is expected to make the
factual determinations set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
prior art references to arrive at the claimed invention. Such
reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art. Uniroyal, Inc. v.
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Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note 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). Only those arguments actually made
by appellants have been considered in this decision.
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Arguments which appellants could have made but chose not to
make in the brief have not been considered [see 37 CFR §
1.192(a)].
The examiner explains this rejection on pages 4-5 of
the answer. With respect to claims 13 and 17 which stand or
fall together [brief, page 5], appellants argue that neither
Shofner nor Duncan teaches a means for producing a compensated
waveform that compensates for varying velocities along the
length of the entity [brief, page 8]. The examiner responds
that compensation
is inherent in the systems of Shofner and Duncan [answer,
pages 9-10].
Whether compensation is broadly performed in Shofner
or Duncan is not the proper question to be considered by the
examiner. The proper question is whether the collective
teachings of the references would have suggested the
obviousness
of the analyzer means as specifically recited in claim 13. We
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agree with appellants that there is no suggestion in Shofner
or Duncan for producing a waveform that compensates for
varying velocities of the entities. The fact that velocity
can be measured in Duncan does not suggest the analyzer means
as recited in claim 13. Additionally, the record before us
does not support the examiner’s position that the specific
limitations of the analyzer means are inherent in the applied
prior art. Therefore,
the obviousness rejection with respect to claims 13 and 17 is
not sustained.
With respect to claims 14 and 18, which stand or fall
together [brief, page 5], appellants argue that nothing in
either Shofner or Duncan discloses the dividing of a waveform
into segments for cross-correlation [brief, page 8]. The
examiner responds that Shofner and Duncan inherently
compensate using a computer which includes any type of
mathematical procedure [answer, page 10].
The examiner’s position is totally without merit. There
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is nothing in Shofner or Duncan which would have suggested to
the artisan that a means for performing the specific steps of
claim 14 should be provided. The steps recited in claim 14
are not
inherently required by the systems of either Shofner or
Duncan. Therefore, we do not sustain the rejection of claims
14 and 18. Since claim 15 depends from claim 14, we also do
not sustain the rejection of claim 15.
With respect to claim 16, appellants again argue that
nothing in either Shofner or Duncan suggests the analyzer
means as recited therein [brief, page 9]. The examiner
responds that Shofner teaches that the sensors scatter light
based on the size and shape of the entities, and one of the
properties specifically
determined in Shofner is the length of various entities. The
examiner asserts that it would have been obvious to the
artisan
to determine separately the length of looped, unlooped and
multiply looped entities based on the different scattering
properties that they possess.
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We agree with the examiner that the invention as
broadly recited in claim 16 is suggested by the collective
teachings of Shofner and Duncan within the meaning of 35
U.S.C. § 103. The looped, not looped and multiply looped
entities of Shofner would yield different sensor outputs based
on size and shape as noted
in Shofner. When these different outputs are graphed based on
length as suggested in Shofner, the graph is an indication to
the
artisan of the length of looped, unlooped and multiply looped
entities. Therefore, we sustain the rejection as it applies
to claim 16.
In summary, we have not sustained the examiner’s
rejection of the claims under 35 U.S.C. § 112. We have
sustained the examiner’s rejection of claims 9-11 under 35
U.S.C. § 102(b) and the rejection of claim 16 under 35 U.S.C.
§ 103. We have not sustained the rejection of claims 13-15,
17 and 18 under
35 U.S.C. § 103. Therefore, the decision of the examiner
rejecting claims 9-11 and 13-18 is affirmed-in-part.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Errol A. Krass )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Jerry Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lance Leonard Barry )
Administrative Patent Judge )
JS/dm
Appeal No. 1997-3975
Application No. 08/395,376
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