Ex Parte Urban et alDownload PDFPatent Trial and Appeal BoardJun 7, 201713643605 (P.T.A.B. Jun. 7, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/643,605 10/26/2012 Martin Urban URBA3003/FJD/TL 1052 23364 7590 06/09/2017 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER KOLB, NATHANIEL J ART UNIT PAPER NUMBER 2856 NOTIFICATION DATE DELIVERY MODE 06/09/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): MAIL @B ACONTHOMAS .COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN URBAN and TOBIAS BRENGARTNER1 Appeal 2016-005876 Application 13/643,605 Technology Center 2800 Before JAMES C. HOUSEL, GEORGE C. BEST, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35U.S.C. § 134 from the Examiner’s Final Rejection of claims 9—16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The real party in interest is identified as ENDRESS + HAUSER GMBH + CO. KG. App. Br. 2. Appeal 2016-005876 Application 13/643,605 Claim 9 illustrates the subject matter on appeal and is reproduced below: 9. An apparatus for determining or monitoring at least fill level, a density or a viscosity, of a medium in a container, comprising: a mechanically oscillatable structure protruding into the container during operation, wherein said mechanically oscillatable structure has at least one oscillatory characteristic dependent on the process variable; an electromechanical transducer, which excites said mechanically oscillatable structure to execute mechanical oscillations by means of an exciter signal supplied to the input of said electromechanical transducer, and which converts the resulting oscillations of said mechanically oscillatable structure to an electrical received signal representing the oscillation and outputs this signal; and electronics, which includes an apparatus for producing the exciter signal connected to the input of said electromechanical transducer; which has a first filter connected to the output of said electromechanical transducer, wherein said first filter filters out a wanted signal from the received signal; and which determines or monitors the process variable based on the wanted signal, wherein: said first filter is a switched capacitor filter, which has at least one capacitor switched with a switching frequency, and whose center frequency is adjustable via the switching frequency; and said electronics includes an apparatus, which during operation sets the center frequency to the frequency of the exciter signal by means of controlling the switching frequency of the capacitor as a function of the instantaneous frequency of the excitor signal. 2 Appeal 2016-005876 Application 13/643,605 Appellants (see generally Appeal Brief) request review of the following rejections from the Examiner’s Final Office Action: I. Claims 9, 12—14, and 16 rejected under 35 U.S.C. § 103(a) as unpatentable over Fehrenbach (US 2003/0140695 Al, published July 31, 2013) and Yoshimura (US 5,831,178, issued November 3, 1998). II. Claims 10, 11, and 15 rejected under 35 U.S.C. § 103(a) as unpatentable over Fehrenbach, Yoshimura, and Seale (US 5,533,381, issued July 9, 1996). The Examiner’s Final Action (Final Act. 2—3) also includes the following rejection that was not reproduced in the Appeal Brief by Appellants or expressly withdrawn by the Examiner in the Answer: III. Claims 13 and 14 rejected under 35 U.S.C. § 112, 2, as indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. OPINION The Prior Art Rejections (Rejections I and II) Appellants present arguments for independent claim 9 and state that, for purposes of the appeal, the patentability of dependent claims 10—16 will rise or fall based on the determination of the patentability of claim 9. App. Br. 4. Accordingly, we select claim 9 as representative of the subject matter before us on appeal and limit our discussion thereto with the understanding that our discussion is applicable to all the claims subject to Rejections I and II. After review of the respective positions provided by Appellants and the Examiner, we AFFIRM for the reasons presented by the Examiner. We add the following for emphasis. 3 Appeal 2016-005876 Application 13/643,605 Claim 9 is directed to an apparatus for determining or monitoring at least fill level, a density or a viscosity, of a medium in a container comprising a switched capacitor filter as the first filter, the switched capacitor filter having at least one capacitor switched with a switching frequency. The Examiner found Fehrenbach teaches an apparatus that differs from the claimed invention in that Fehrenbach does not teach that “said first filter is a switched capacitor filter, which has at least one capacitor switched with a switching frequency.” Final Act. 3^4 (citing Fehrenbach H 1, 5, 6, 12, 13, 27, 28, 33). The Examiner, however, found Fehrenbach uses a band filter that can be realized with discrete components. Final Act. 4 (citing Fehrenbach 133). The Examiner found Yoshimura teaches the use of a switched capacitor filter as a band pass filter in a vibration-based measuring instrument. Final Act. 4 (citing Yoshimura col. 7,11. 33—39). The Examiner also found Yoshimura discloses that the center frequency is set to the center frequency of the exciter signal by controlling the switching frequency of the capacitor as a function of the instantaneous frequency of the exciter signal. Final Act. 4 (citing Yoshimura col. 14,11. 7—29). The Examiner determined that it would have been obvious to one having ordinary skill in the art to use Yoshimura’s switched capacitor filter in place of Fehrenbach’s discrete components filter because (1) it is a simple substitution of one known element for another to obtain predictable results and (2) the switched capacitor filter is a well-known adjustable filter for performing this function. Final Act. 5; Yoshimura col. 14,11. 15—29. Appellants argue Fehrenbach and Yoshimura are directed to different systems requiring different components. App. Br. 11. According to 4 Appeal 2016-005876 Application 13/643,605 Appellants, Fehrenbach does not disclose the claimed switched capacitor filter and is directed to an oscillating sensor that protrudes into the container that has a vibratory element (a vibrating rod or tuning fork) which is excited by the vibratory system, to measure one or more characteristic parameters of the reaction of the system to the excitation. App. Br. 9, 11; Fehrenbach 13, 18, 33. Appellants also contend Yoshimura, while disclosing a switched capacitor filter, is only directed to a vibration type measuring instrument that measures at least one of a mass flow rate and a density of a fluid flowing through a straight measurement pipe by vibrating the measurement pipe having a band pass filter for selectively outputting a signal for use in vibrating the measurement pipe, in which its center frequency is controlled within a band width around the resonant frequency of the second vibration mode of the measurement pipe. App. Br. 10, 11; Yoshimura col. 6,11. 59—67, col. 7,11. 33—39, col. 16,11. 47—52. Appellants, therefore, argue the Examiner relied on impermissible hindsight in combining the teachings of the prior art and did not provide an articulated reason showing how or why a skilled person would have been led or motivated to modify the vibratory system of Fehrenbach to use the band pass filter of Yoshimura. App. Br. 10, 12. Appellants also argue that combining the teachings of the prior art would not result in the claimed first filter because Fehrenbach only discloses a bandpass filter set to the frequency adjusted by means of the VCO while Yoshimura only discloses a band pass filter for selectively outputting a signal for use in vibrating the measurement pipe, in which its center frequency is controlled within a band width around the resonant frequency of the second vibration mode of the measurement pipe. Id. at 14. That is, Appellants argue that Yoshimura’s 5 Appeal 2016-005876 Application 13/643,605 switched capacitor filter is not capable of performing the functions desired by Fehrenbach. We are unpersuaded by these arguments. Appellants’ arguments are premised on bodily incorporation and do not adequately address the Examiner’s reason for combining the cited art. Final Act. 5; Ans. 4. It is well established that the obviousness inquiry does not ask “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference”). As noted above, the Examiner’s rejection is based on substituting Yoshimura’s switched capacitor filter for the discrete elements filter of Fehrenbach. Final Act. 5; Ans. 4. A person of ordinary skill in the art desiring to effectively suppress all interference frequencies using a bandpass filter would have reasonably expected that using a well-known bandpass filter, such as Yoshimura’s switched capacitor filter, would result in the desired suppression of interference frequencies. “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988); see also KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (explaining that patentable subject matter must “involve more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement”). As noted by the Examiner, a bandpass filter works the same no matter where the vibration signal is 6 Appeal 2016-005876 Application 13/643,605 coming from or how it is generated. Ans. 4. That is, one skilled in the art would have been capable of adapting or programming the filter of Yoshimura to perform the functions desired for the apparatus of Fehrenbach. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Appellants have not adequately explained why one skilled in the art would have expected Yoshimura’s switched capacitor filter to be unsuitable for use in Fehrenbach’s apparatus for monitoring the level of a material in a container. Accordingly we affirm the Examiner’s prior art rejections of claims 9—16 under 35 U.S.C. § 103 (a) for the reasons presented by the Examiner and given above. Rejection under 35 U.S.C. §112, f 2 (Rejection III) Claims 13 and 14 are rejected under 35 U.S.C. § 112,12, as indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Final Act. 2—3. As indicated above, this rejection was not reproduced in the Appeal Brief by Appellants or expressly withdrawn by the Examiner in the Answer. A review of the prosecution record shows Appellants submitted an amendment after final on September 21, 2015, to address the issues raised by the rejection under 35 U.S.C. § 112,12. However, this amendment was not entered by the Examiner because it presented additional claims without canceling a corresponding number of finally rejected claims, as noted on page 1 of Advisory Action October 8, 2015. Thus, this rejection is before us for review on appeal because the Examiner did not expressly withdraw it in the Answer. See 37 C.F.R. § 41.39(a)(1). 7 Appeal 2016-005876 Application 13/643,605 Appellants have not identified reversible error in the Examiner’s rejection of claims 13 and 14 under 35 U.S.C. § 112,12. See generally Appeal Brief. Because the Examiner did not withdraw the rejection in the Answer (see generally Answer), we summarily affirm this rejection for the reasons presented by the Examiner in the Final Action.2 We express no opinion regarding whether Appellants’ proposed amendment, had it been entered, would have overcome the rejection. DECISION The Examiner’s prior art rejections of claims 9—16 under 35 U.S.C. § 103(a) are affirmed. The Examiner’s rejection of claims 13 and 14 under 35 U.S.C. § 112, 12, is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 2 Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed., Revision 07.2015, Last Revised November 2015) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). 8 Copy with citationCopy as parenthetical citation