Ex Parte Staphanos

Board of Patent Appeals and Interferences

Sep 22, 2004

09430469 (B.P.A.I. Sep. 22, 2004)

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for publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEPHEN STAPHANOS
____________
Appeal No. 2004-1887
Application No. 09/430,469
____________
ON BRIEF
____________
Before GARRIS, WALTZ, and MOORE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
Decision on appeal
This is a decision on an appeal from the final rejection of
claims 1-19 and 21-25. On pages 3 and 4 of the answer (i.e., Paper
No. 15, mailed March 4, 2004 in response to a remand by this panel
of the Board), the Examiner states that the prior art final
rejection of claims 12-14 is withdrawn whereby these claims are now
objected to but otherwise allowable. We therefore dismiss the
appeal as to claims 12-14 thereby leaving claims 1-11, 15-19 and
21-25 before us on this appeal. These are all of the claims
remaining in the application.
Appeal No. 2004-1887
Application No. 09/430,469
2
The subject matter on appeal relates to a process analytic
system comprising a sample handling system and a process analyzer
wherein the process analyzer is operably coupled to the sample
handling system to modify at least one sample handling parameter
based upon diagnostic information related to the sample handling
system. The appealed subject matter also relates to a process
analytic system comprising a sample handling system and a process
analyzer wherein the process analyzer is operably coupled to the
sample handling system to communicate digitally with the sample
handling system. This appealed subject matter is adequately
illustrated by independent claims 1 and 19 which read as follows:
1. A process analytic system, comprising
a sample handling system having a sample output, and a
sample input, the sample input being couplable to a
process container to extract a sample from the container
and convey the sample to the sample output;
a process analyzer coupled to the sample output of the sample
handling system, and adapted to analyze the sample to
provide an analytical output based upon a characteristic
of the sample; and
wherein the process analyzer is operably coupled to the sample
handling system to modify at least one sample handling
parameter based upon diagnostic information related to
the sample handling system.
19. A process analytic system, comprising
a sample handling system having a sample output, and a
sample input, the sample input being couplable to a
process container, and wherein the sample handling system
Appeal No. 2004-1887
Application No. 09/430,469
1 The Examiner has inappropriately used a variety of
differing nomenclatures in identifying this reference including
“GCX Manual on the HMI Software (July 1999)” (answer, page 4)
and “‘Model DCX [sic, GCX] Gas Chromatograph Transmitter’ (July
1999)” (answer, page 5 et. seq.) and “GCX” (answer, page 5 et.
seq.). Hereinafter, we identify this reference with the
nomenclature GCX.
3
is adapted to extract a sample from the container and
convey the sample to the sample output;
a process analyzer coupled to the sample output of the
sample handling system, and adapted to analyze the
sample to provide an analytical output based upon a
characteristic of the sample; and
wherein the process analyzer is operably coupled to the
sample handling system to communicate digitally with
the sample handling system.
The prior art set forth below, as listed by the Examiner on
page 4 of the answer, is relied upon as evidence of anticipation
in the § 102 rejections before us:
Sittler et al. (Sittler) WO 97/12239 Apr. 3, 1997
Hikosaka et al. (Hikosaka) 6,004,514 Dec. 21, 1999
“Rosemount Analytical, ‘Model DCX [sic, GCX] Gras [sic, Gas]
Chromatograph Transmitter’ [,Operator Manual] (July 1999),
pp. 1-1 thru [sic] 3-2 [sic; see footnote 2 infra)]” (answer,
page 4)1
Claims 1-4, 16, 19 and 21-25 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Sittler.
Claims 1-11, 15-19 and 21-25 stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by GCX.
Appeal No. 2004-1887
Application No. 09/430,469
4
Finally, claims 1-4, 15 and 21-25 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Hikosaka.
We refer to the brief filed August 30, 2002 and to the answer
mailed March 4, 2004 for an exposition of the respective positions
advocated by the Appellant and by the Examiner concerning the above
noted rejections.
Opinion
Based on the record before us, it is quite clear that none of
the Examiner’s § 102 rejections can be sustained for the reasons
set forth by the Appellant in his brief. We add the following
comments for emphasis.
The Section 102 rejection based on Sittler
The Examiner’s finding that independent claims 1 and 19 are
anticipated by Sittler is based on her belief that Sittler’s
controller 84 transmits a digital signal (indicative of the gas
species being analyzed) to the timing and control circuit 86 for
timing and actuation of valves 30, 32, 34 and 44-50 (e.g., see
pages 7-9 of the answer). As explained by the Appellant in the
brief, however, the aforementioned digital signal is transmitted to
display/storage circuit 92 rather than timing and control circuit
86. While we recognize that this timing and control circuit is
provided with an output from controller 84, the Sittler reference
Appeal No. 2004-1887
Application No. 09/430,469
2 Notwithstanding her explicit reliance on page 3-38, the
Examiner, for some unknown reason, has referred only to pages 1-1
through 3-2 in listing this reference on page 4 of the answer.
Despite this limited page referral, we have included page 3-38 in
our assessment of the GCX reference.
5
contains no teaching whatsoever that the aforementioned output
constitutes a digital signal indicative of the gas species. See
the first full paragraph on page 14 of the Sittler reference. In
fact, Sittler’s use of the indefinite article “an” in referring to
this output quite clearly reflects that this output is distinct
from the previously recited digital signal.
For these reasons and those set forth in the brief, it is
apparent that we cannot sustain the Examiner’s § 102 rejection of
claims 1-4, 16, 19 and 21-25 as being anticipated by Sittler.
The Section 102 rejection based on GCX
Our study of the application file record including the
advisory Action mailed June 21, 2002 reflects that the Examiner
regards the manual control feature disclosed on page 3-382 of GCX
as satisfying the appealed independent claim 1 requirement “wherein
the process analyzer is operably coupled to the sample handling
system to modify at least one sample handling parameter based upon
diagnostic information related to the sample handling system.”
Appeal No. 2004-1887
Application No. 09/430,469
6
In responding to the Appellant’s nonanticipation viewpoint, the
Examiner further elucidates her position on pages 9-10 of the
answer in the following manner:
With respect to the previous rejection of
claims 1-19, 21-25 [sic] under 35 U.S.C. 102(a)
as being anticipated by Model DCX [sic] Gas
Chromatograph Transmitter (July 1999),
Appellant argues that the manual control
provided by the GCX does not teach or suggest
actually modifying sample parameters of the
sample handling system based upon diagnostic
information of the sample handling system
itself. Examiner contends that the claim does
not require the diagnostic information to be
supplied by the sample handling system itself,
but rather the sample parameters are modified
based upon diagnostic information related to
the sample handling system. How the diagnostic
information is supplied to the process analyzer
is not recited in the claims. Office personnel
are to give claims their broadest reasonable
interpretation in light of the supporting
disclosure. In re Morris, 127 F.3d 1048, 1054-
55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997).
Limitations appearing in the specification but
not recited in the claim are not read into the
claim. In re Prater, 415 F.2d 1393, 1404-05,
162 USPQ 541, 550-551 (CCPA 1969). See also In
re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).

The Examiner’s position is not well taken in a number of
respects. In the first place, the Examiner’s above quoted comments
reflect a potential misunderstanding of the claim 1 requirement
under review (e.g., the Examiner seems to believe the Appellant’s
specification teaches that the sample handling system supplies the
Appeal No. 2004-1887
Application No. 09/430,469
7
diagnostic information, which is incorrect). Secondly, we perceive
no rational basis for the Examiner’s proposition that the manual
control taught by GCX would result in the process analyzer being
“operably coupled to the sample handling system to modify at least
one sample handling parameter based upon diagnostic information
related to the sample handling system” as required by the
Appellant’s independent claim 1. Thirdly, while it is true that,
during examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification (see
In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir.
2000)), the Examiner’s interpretation of the aforementioned claim 1
requirement as being anticipated by the manual control feature
of GCX is neither reasonable nor consistent with the subject
specification.
As for appealed independent claim 19, the Examiner has not
identified, and we do not independently find, any disclosure in the
GCX reference which satisfies the here claimed requirement “wherein
the process analyzer is operably coupled to the sample handling
system to communicate digitally with the sample handling system.”
Indeed, the answer contains no specific discussion concerning the
requirements of this claim or of any other claim on appeal beyond
the aforequoted remarks by the Examiner on pages 9-10. It
Appeal No. 2004-1887
Application No. 09/430,469
8
necessarily follows that, for this reason alone, the Examiner has
failed to carry her initial burden of establishing a prima facie
case of anticipation. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Under the circumstances set forth above and in the brief, we
also cannot sustain the Examiner’s § 102 rejection of claims 1-11,
15-19 and 21-25 as being anticipated by GCX.
The Section 102 rejection based on Hikosaka
We have fully considered all of the comments expressed by the
Examiner in her answer concerning this rejection. However, absent
from the answer is any meaningful and rational explanation as to
why the Examiner considers specifically identified disclosure in
the Hikosaka reference to satisfy the requirement set forth in
the last clause of appealed independent claim 1. For example,
no support for an anticipation finding relative to this claim
requirement is provided by the Examiner’s statements that “the
electrical control unit 21 [of Hikosaka] is disclosed as
operatively coupled to the analyzer and is for driving and
controlling analyses of the gas component by the system” (answer,
page 10) or that “the selector switch 47, (i.e. sample handling
system component) is switched in response to a signal from the
controller, which is coupled to the analyzer” (answer, pages 10-11)
Appeal No. 2004-1887
Application No. 09/430,469
9
or that “the electrical control unit 21 comprises printed circuit
boards 101 mounted with electrical circuits for driving and
controlling the whole system 20, i.e. provide communication between
the analyzer and sample handling portions” (answer, page 11).
None of these or any other statements made by the Examiner in
the answer provide a basis for finding that Hikosaka anticipates
the claim 1 requirement “wherein the process analyzer is operably
coupled to the sample handling system to modify at least one sample
handling parameter based upon diagnostic information related to the
sample handling system.” Thus, the Examiner again has failed to
carry her initial burden of establishing a prima facie case of
anticipation. See Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444.
In light of the foregoing and for the reasons expressed in the
brief, the § 102 rejection of claims 1-4, 15, and 21-25 as being
anticipated by Hikosaka likewise cannot be sustained.
Appeal No. 2004-1887
Application No. 09/430,469
10
Conclusion
The decision of the Examiner is reversed.
Reversed

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. MOORE )
Administrative Patent Judge )
BRG/jrg
Appeal No. 2004-1887
Application No. 09/430,469
11
CHRISTOPHER R. CHRISTENSON
WESTMAN CHAMPLIN & KELLY PA
SUITE 1600 INTERNATIONAL CENTRE
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 554023319