Ex Parte Tolliver

Board of Patent Appeals and Interferences

Dec 22, 2009

11136972 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte CHARLIE L. TOLLIVER
_____________

Appeal 2009-0142761
Application 11/136,972
Technology Center 2800
______________

Decided: December 22, 2009
_______________

Before JOHN C. MARTIN, ROBERT E. NAPPI, and MARC S. HOFF,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is the inventor, Charlie L. Tolliver.
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-46, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. Appellant’s invention2
Appellant’s invention relates to detecting the presence of illegal or
dangerous materials, such as narcotics, flammable chemicals, and
explosives. Specification ¶ 0006.
Figure 2 is reproduced below.

2 References herein to Appellant’s Specification are to the application as
filed rather than to corresponding Patent Application Publication
2006/0266102 A1.
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Figure 2 is a schematic of an exemplary embodiment illustrating
Appellant’s apparatus for detecting unknown chemical compounds. Id.
¶ 0017.
A trigger switch 155 is used to power on/off the apparatus and trigger
the apparatus. Id. A fan 160 is used to suck the sample air into the
apparatus and a filter 165 is used to appropriately filter out dirt and other
contaminants from the air sample. Id. The filtered air sample is then
analyzed in a chemical analyzer 170, such as an Ion Mobility Spectroscope,
a Filter-based Infrared Spectroscope, a Photo-Acoustic Infrared
Spectroscope, a Photo-Ionization Spectroscope, or a suitable combination
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thereof. Id. A DSP (Digital Signal Processor3) 175 “further comprising
necessary software and a database is coupled to the analyzer for associating
the chemical signature with the chemicals stored in the database.” Id. A
display 180 is used for displaying results of the analysis. Id.
Figure 3 is reproduced below.4

Figure 3 is a physical diagram of the exemplary embodiment of
Appellant’s invention. Id. ¶ 0018. This figure depicts the invention as a
handheld device.

3 Specification ¶ 0016.
4 This replacement version of Figure 3 was filed on November 22, 2005.
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B. The claims
The independent claims before us are claims 1, 18, and 28. Claims 1
and 18, which are specifically argued in the Brief, read as follows:
1. A method of detecting an unknown chemical
compound, the method comprising:
collecting an air sample from the vicinity of the unknown
chemical compound;
analyzing the air sample spectroscopically to determine a
chemical signature of the unknown chemical compound; and
associating the chemical signature of the unknown
chemical compound with a chemical compound in a database
on a Digital Signal Processor (DSP).
18. An apparatus for detecting an unknown chemical
compound, the apparatus comprising:
means for collecting an air sample from the vicinity of
the unknown chemical compound;
a spectroscopic analyzer to determine chemical signature
of the unknown chemical compound coupled to the means for
collecting the air sample; and
a Digital Signal Processor (DSP) coupled to the analyzer,
the DSP comprising a database of chemical compounds and
their chemical signature and further comprising means for
associating the chemical signature with chemical compounds in
the database.
Claims App. (Br. 16, 18).

C. The references
The Examiner relies on the following references:
Gethner et al. (“Gethner”) US 5,446,681 Aug. 29, 1995
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Sunshine et al. (“Sunshine”) US 6,422,061 B1 Jul. 23, 2002
Richards et al. (“Richards”) US 2004/0050188 A1 Mar. 18, 2004

D. The rejections
Claims 1-26 and 28-46 stand rejected under 35 U.S.C. § 103(a) for
obviousness over Sunshine in view of Gethner. Final Action 2.
Claim 27 stands rejected under 35 U.S.C. § 103(a) for obviousness
over Sunshine in view of Gethner and Richards. Id. at 5; see also Br. 6.

THE ISSUES
Appellant has the burden on appeal to show reversible error by the
Examiner in maintaining the rejection. See In re Kahn, 441 F.3d 977, 985-
86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” (citation omitted)).
One issue before us is whether Appellant has shown that the Examiner
failed to provide adequate notice in the Final Action that the rejection is
based on figures of Sunshine, including Figure 12A, in addition to Figures
3A, 3B, and 20.
Another issue is whether Appellant has shown that the Examiner erred
in concluding that it would have been obvious in view of Gethner to use a
spectroscopic analyzer to identify an unknown chemical compound instead
of the types of sensors disclosed by Sunshine.
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THE REJECTION BASED ON SUNSHINE IN VIEW OF GETHNER
A. Sunshine
Sunshine discloses a compact (e.g., handheld) sensing apparatus (also
referred to as an electronic-nose or e-nose device) that can be used to
measure or identify one or more analytes in a medium such as a vapor, a
liquid, a gas, or a solid. Sunshine, col. 3, ll. 10-15. The materials that can
be detected and identified using this apparatus include, inter alia, illegal
substances and explosives. Id. at col. 27, ll. 12-13.
Before considering Sunshine’s disclosure in more detail, we will
address Appellant’s argument (Reply Br. 2-4) regarding the Examiner’s
stated reliance in the Answer on all of Sunshine’s Figures 1-20. The only
figures of Sunshine that are identified by number in the Final Action are
Figures 3A and 3B (Final Action 2, 4), which show different embodiments
of noses for the e-nose device (Sunshine, col. 6, ll. 16-19), and “Figs. [sic]
20” (Final Action 2), which illustrates the data decoding formats employed
when data is transmitted from the e-nose device 100 to a remotely located
processor 12 for analysis (Sunshine, col. 29, ll. 54-56), as depicted in Figure
16 (id. at col. 27, ll. 27-32). In response to Appellant’s argument (Br. 8) that
Figure 20 is not relevant to the subject matter of claim 1, the Examiner
explained for the first time in the Answer that “[c]learly, all the Figures
(1 through 20) disclosed in Sunshine along with the corresponding
specification disclose the instant invention, and the Examiner inadvertently
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only referenced Figure 20 [sic: Figures 3A, 3B, and 20] in the previous
rejections.” (Answer 7.) Appellant responded by arguing that
[a]s a result of the Examiner’s actions, and the new broad brush
citation of the reference disclosed during appeal process, . . .
Appellant never had the opportunity to respond to what the
Examiner now says he actually meant with respect to the alleged
inadvertent error . . . . Also, even now, the Examiner fails to
explain how the entire document, with each and every figure
(including the figure 20 that Appellant has strenuously argued as
irrelevant to his invention) and the “entire disclosure” in the
reference, would be relevant or helpful in fair prosecution of his
application. Under the circumstances, it is not evident to the
Appellant as to how the examination complies with [the]
requirements of 37 C.F.R. §104, specifically with respect to [the]
requirement of making a ‘thorough study’ of the subject matter as
well as of the patentability of the claimed invention (§104 (a)).
(Reply Br. 3-4.) This argument is unpersuasive because it should have been
evident from the Sunshine passages cited by the Examiner in the Final
Action that his reliance on Sunshine’s figures was not limited to Figures 3A,
3B, and 20. The passage at column 15, lines 1-61 (cited at Final Action 2)
discusses Sunshine’s Figures 12A and 12C, of which Figure 12A is
reproduced and addressed infra. Also, the passage at column 4, lines 53-64,
cited at Final Action 2 and reproduced below, clearly describes features not
shown in Figures 3A, 3B, or 20:
When the controller is controlling the pump to direct one of the
plurality of reference vapors through the sample chamber, the
monitoring device monitors the electrical responses of the array of
vapor sensors to produce a reference signature. Thereafter, when
the controller is controlling the pump to direct the unknown vapor
sample through the sample chamber, the monitoring device
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monitors the electrical responses of the array of vapor sensors to
produce a vapor sample signature. The analyzer then compares
the vapor sample signature with a plurality of reference signatures,
to identify the unknown vapor sample.
Sunshine, col. 4, ll. 53-64. We therefore are not persuaded that the
Examiner failed to provide adequate notice in the Final Action that the
rejection is based on figures of Sunshine, including Figure 12A, in addition
to Figures 3A, 3B, and 20.
Turning now to the merits of the rejection, Sunshine’s e-nose device
can detect “sensory data such as physical, chemical, taste, olfaction, optical
olfaction, optical parameters or combinations thereof.” Id. at col. 3, ll. 19-
22.
Figure 2A of Sunshine is reproduced below.

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Figure 2A shows a top perspective view of an embodiment of
Sunshine’s e-nose device 100a. Id. at col. 7, ll. 26-27.
Numeral 150a designates a plug-in sensor module. Id. at col. 7, l. 39.
In the embodiment depicted in Figures 7A-C, the sensor module 150a
includes four sensor devices 720, each consisting of eight chemically
sensitive resistors 740. Id. at col. 10, l. 44 to col. 11, l. 1.
Sunshine identifies a number of different types of sensors that are
suitable for the e-nose device without mentioning spectroscopic analyzers:
Various sensors suitable for detection of analytes include, but are
not limited to: surface acoustic wave (SAW) sensors; quartz
microbalance sensors; conductive composites; chemiresistors;
metal oxide gas sensors, such as tin oxide gas sensors; organic gas
sensors; metal oxide field effect transistor (MOSFET);
piezoelectric devices; infrared sensors; sintered metal oxide
sensors; Pd-gate MOSFET; metal FET structures; metal oxide
sensors, such as a Tuguchi gas sensors; phthalocyanine sensors;
electrochemical cells; conducting polymer sensors; catalytic gas
sensors; fiber optical chemical sensors; organic semiconducting
gas sensors; solid electrolyte gas sensors; piezoelectric quartz
crystal sensors; and Langmuir-Blodgett film sensors.
Id. at col. 11, l. 63 to col. 12, l. 9. Thus, for a teaching of using
spectroscopic analyzers to identify unknown chemical compounds, the
Examiner relies on Gethner, addressed infra.
Figure 12A of Sunshine is reproduced below.
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Figure 12A is a diagram of an embodiment of the electrical circuitry
within the e-nose device. Id. at col. 13, ll. 1-2. The analog voltages from the
resistor-divider networks in the sensor array are provided through a
multiplexer (MUX) 1226 to an analog-to-digital converter (ADC) 1230, with
MUX 1226 selecting, in sequence, the chemically sensitive resistors on the
sensor module. Id. at col. 13, ll. 56-60.
The digitized samples (forming the digital signature) from ADC 1230
are provided to processor 1210 for further processing. Id. at col. 14, ll. 11-
12. Processor 1210 can be implemented as, for example, a digital signal
processor (DSP). Id. at col. 15, ll. 1-3. After the processor has collected
data representing a set of variable resistance measurements for a particular
unknown test sample, it proceeds to correlate that data with data representing
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a set of previously collected standards stored in memory (i.e., either RAM
1212 or ROM 1214). Id. at col. 15, ll. 37-41.
Figure 16, which is the basis for one of Appellant’s arguments, is
reproduced below.

Figure 16 is a simplified schematic block diagram showing a mode of
operation in which the e-nose device 100 detects an analyte 16 and
subsequently transmits the data relating to such analyte via a computer
network 18 to the processor 12 for analysis. Id. at col. 27, ll. 27-32. In this
embodiment, the processor 12 includes a processor interface 24 and an
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analyte analyzer 26. Id. at col. 27, ll. 41-42. The processor interface 24
receives data from the e-nose device 100 via the computer network 18 and
processes the data into a format that can be understood by the analyte
analyzer 26. Id. at col. 27, ll. 45-48.
In an argument directed to apparatus claim 18, Appellant argues that
“Sunshine et al. fails to disclose Appellant’s database on the DSP” (Br. 12
(emphasis added)) because
Sunshine et al. discloses databases, which comprise the electronic
library 14 [e.g., in Figure 16], wherein these databases may be
physically located separate from the processor 12, and further
these databases can reside on remote, distant servers on a local
area network of the Internet (Col. 28, lines: 43-46). . . .
Appellant’s apparatus and technique are primarily intended for
critical time sensitive applications in the field, like law
enforcement, and would fail if Sunshine et al.’s database
technique were adapted wherein slow time response or Internet
related glitches appear to be acceptable.
(Id. at 11-12.) This argument is unconvincing for two reasons. First, the
argument incorrectly interprets claim 18 as precluding the recited “Digital
Signal Processor (DSP)” from being connected (e.g., via the Internet) to a
remotely located “means for collecting” and/or “spectroscopic analyzer.”
Second, even assuming arguendo that this interpretation of claim 18 is
correct, this argument overlooks the fact that in Sunshine’s Figure 12A
embodiment, the database is located in the e-nose device. Specially, the
claim term “Digital Signal Processor (DSP)” can be read on processor 1210
in combination with RAM 1212 and/or ROM1 1240, which store data
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representing a set of previously collected standards stored in memory.
Sunshine, col. 15, ll. 39-41.5
For the foregoing reasons, Appellant has not shown error in the
Examiner’s finding that Sunshine discloses all of the features recited in the
independent claims except for using a spectroscopic analyzer to determine
the chemical signature. Final Action 3.

B. Gethner
For a teaching of using a spectroscopic analyzer to identify an
unknown chemical compound, the Examiner relies on Gethner, which
discloses a method of estimating unknown property and/or composition data
(also referred to as “parameters”) of a sample. Gethner, col. 1, ll. 11-13.
Gethner explains in the “Background of the Invention” that it was known to
use spectroscopic analysis in infrared, mid-infrared, and near-infrared
spectra in order to identify and quantify chemical compounds. Id. at col. 1,
ll. 26-44. Gethner’s invention addresses the following problem:
[I]f one or more of the components of the test sample are not
included in the calibration samples on which the model is based,
then prediction of the property and/or composition data will be
inaccurate, because the predictive model produces a “best fit” of
the calibration data to the test sample where some of the
calibration data is inappropriate for that test sample.

5 It is therefore not necessary to address the Examiner’s finding (Answer 8)
that the recited “Digital Signal Processor (DSP)” reads on ADC (analog-to-
digital converter) 1230 in Sunshine’s Figure 12A embodiment or
Appellant’s arguments against that finding (Reply Br. 4-6).
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Id. at col. 2, ll. 24-31. In a passage cited by the Examiner (Final Action 3),
Gethner’s solution is summarized as follows:
In the present method, a determination is made, on the basis of a
check of the measured spectrum against the predictive model, as
to whether or not the measured spectrum is within the range of
calibration sample spectra in the model. If the result of the check
is negative, a response is generated, accordingly.
Gethner, col. 2, ll. 47-53. The Examiner additionally relies on another
passage (col. 3, ll. 1-30) for a teaching of updating the database, as recited in
dependent claims 11 and 39.
However, it is apparent that the rejection of independent claims 1, 18,
and 28 is based on Gethner’s more general teaching of using a spectroscopic
analyzer to identify an unknown chemical compound. Specifically, after
citing Sunshine’s disclosure that the e-nose device can measure “sensory
data such as . . . optical parameters” (Sunshine, col. 3, ll. 19-22), the
Examiner concluded that the spectroscopic analyzers described in Gethner
would have been recognized as alternatives to Sunshine’s disclosed sensors:
[T]he term “optical” is employed [in Sunshine], which clearly
falls under “spectroscopic” types, since “spectra” or, in other
words, “light” is employed to measure/detect the desired sensory
data. It is for this reason the Examiner stated in the rejection
above that an ordinar[il]y skilled artisan would be aware/well
versed in all types of sensors, detectors and apparatuses, thus
would look to the analogous Gethner reference, since it
specifically employs ‘spectroscopic’ sensors/methods in
measuring sensory data.
(Answer 7.) In view of the Examiner’s further observation (id.) that “the test
for obviousness is not whether the features of a secondary reference may be
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bodily incorporated into the structure of the primary reference,” we do not
understand the Examiner’s position to be that it would have been obvious in
view of Gethner to implement the sensor module 152a in Sunshine’s hand
held e-nose device as a spectroscopic analyzer. Instead, the Examiner
appears to have concluded that it would have been obvious in view of
Gethner and Sunshine to provide, for the purpose of identifying an unknown
chemical compound present in the air, an apparatus (not necessarily
handheld) that includes (1) means for collecting an air sample including the
unknown chemical compound, (2) a spectroscopic analyzer to determine the
chemical signature of the unknown chemical compound, and (3) a digital
signal processor (DSP) like Sunshine’s processor 1210, RAM 1212, and
ROM1 1214 in Sunshine’s Figure 12A in order to identify the unknown
chemical compound by comparing its chemical signature to the stored
chemical signatures of known chemical compounds. Appellant’s arguments,
addressed infra, do not persuade us that the Examiner’s position fails to
comport with the KSR principle that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007), or the KSR principle that “when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” Id.
One of Appellant’s arguments is that “Gethner et al. fails to disclose
spectroscopically analyzing chemical compounds” because
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[a] review of Gethner et al. discloses a technique for re-calibrating
an [spectroscopic] analyzer using a correlation between a
calibration sample [of a chemical] spectra and a property and/or
[chemical] composition data for estimating that property and/or
[chemical] composition data of a test sample. (claim 1, col. 60;
lines 27[-]30). Appellant respectfully submits that re-calibrating a
spectroscope using calibration samples of known characteristics
fails to disclose detecting unknown chemicals using spectroscopic
analysis in the manner disclosed by the Appellant.
(Br. 11 (alterations in original) (footnote omitted).) Appellant’s reliance on
Gethner’s recalibration technique is misplaced because, at least insofar as
the independent claims are concerned, the Examiner relies on Gethner only
for a general teaching that spectroscopic analyzers were recognized in the art
as useful for identifying unknown chemical compounds.
Appellant also questions the Examiner’s finding that “an ordinar[il]y
skilled artisan would be aware/well versed in all types of sensors, detectors
and apparatuses, [and] thus would look to the analogous Gethner reference.”
(Answer 7.) According to Appellant, this finding is unreasonable because it
“requires one of ordinary skill to have a knowledge of [a] potentially infinite
number of sensors that no person of ordinary skill can meet.” (Reply Br. 7.)6
This argument is unconvincing because Appellant has not established the
existence of a “potentially infinite number of sensors” known to be useful

6 Because “In re [sic: Ex parte] Jones, 62 USPQ2d 1206, 1208 (B.P.A.I.
2001) (unpublished),” cited at page 7, footnote 4 of the Reply Brief as
providing support for this argument, has not been designated as precedential,
it will not be addressed.

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for identifying unknown chemical compounds. Nor has Appellant
demonstrated that Gethner is nonanalogous art by showing that it (1) is in a
different field from that of the inventor’s endeavor and (2) would not have
commended itself to an inventor’s attention in considering his problem. In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).

C. Conclusion of law regarding the rejection based on Sunshine in view of
Gethner
For the foregoing reasons, we are affirming the rejection of
independent claims 1, 18, and 28 for obviousness over Sunshine in view of
Gethner and are also affirming the rejection on that ground of dependent
claims 2-17, 19-26, and 29-46, which are not separately argued. In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).

THE REJECTION OF CLAIM 27
Dependent claim 27, which stands rejected for obviousness over
Sunshine in view of Gethner and Richards, reads as follows:
27. The apparatus as in claim 18, further comprising a
position location device.
Appellant’s Specification explains that the position location device
can take the form of a GPS (global positioning system) device.
Specification ¶ 0017.
Richards discloses a portable sensor comprising, e.g., a video camera
and/or other sensing device such as a gas sensing device. Richards, ¶ 0007.

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The portable sensor (10 in Fig. 3) can include sensing device(s) 22
and/or 23, each of which can comprise a gas sensing device designed to
detect any number or type of gases, such as oxygen, ozone, carbon
monoxide, carbon dioxide, radon, methane, hydrogen sulfide, lower
explosion limits, upper explosion limits, or any other gas. Id. ¶ 0048.
The sensor 10 can optionally include a Global Positioning System
(GPS) receiver incorporated into it to allow a user to mark an exact position
of an event being sensed. Id. ¶ 0037. The Examiner concluded that it would
have been obvious for the same reason to add a GPS receiver to the above-
described combination of Sunshine and Gethner. Final Action 5. Appellant
has not persuaded us of error in that conclusion. Appellant argues that “uses
of GPS for location related matters are sprawling in multitude of inventions”
(Br. 15) and “[t]he mere fact that Richards utilizes GPS for position location
in his application does not imply that every use of GPS in position location
makes that invention obvious.” (Id.) This argument is unpersuasive because
it is not responsive to the rejection, which relies on Richards for a specific
teaching of incorporating a GPS receiver in a device that is used to identify
unknown gases in order to record the location of the unknown gas.
The rejection of claim 27 is therefore affirmed.

DECISION
The rejections of claims 1-46 under 35 U.S.C. § 103(a) for
obviousness over the cited prior art are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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HARISH DHINGRA
10700 Rockley Road
Houston, TX 77099