Ex parte VIG et al.

Board of Patent Appeals and Interferences

Jul 14, 1998

08545162 (B.P.A.I. Jul. 14, 1998)

Application for patent filed October 19, 1995.1
While the appendix to the brief shows claims 1 through 13 and 152
through 17, claim 15 was renumbered as claim 14 in accordance with 37 CFR 1.126,
which resulted in claim 16 becoming new claim 15 and claim 17 becoming new claim
16.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN R. VIG
and RAYMOND L. FILLER
_____________
Appeal No. 98-0174
Application 08/545,1621
______________
ON BRIEF
_______________
Before KRASS, TORCZON and CARMICHAEL, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 16 , all of the claims in the application.2
Appeal No. 98-0174
Application 08/545,162
2
The invention is directed to a method and apparatus for
measuring small mass changes by quartz crystal microbalances. In
order to avoid the temperature dependency problem of the prior
art microbalance measurements, the invention senses mass changes
using a quartz crystal microbalance which automatically
compensates for variations in ambient temperatures without
affecting the accuracy of the microbalance. More particularly,
this is accomplished by forming a quartz crystal resonator
excitable in two different modes at the same time in such a
manner that the mass change and the temperature change can be
measured independently.
Independent method claim 1 is reproduced as follows:
1. A method of measuring small mass changes,
comprising the steps of;
utilizing a quartz crystal resonator onto which a
material of a certain mass is added, wherein the quartz crystal
can be excited along two modes simultaneously;
exciting the quartz crystal along the two modes
simultaneously;
measuring a change in a first resultant frequency
of said resonator;
measuring a change in a second resultant frequency
of said resonator; and
Appeal No. 98-0174
Application 08/545,162
3
calculating the change in said mass from the
changes in said first and said second frequencies.
The examiner relies on the following references:
EerNisse et al. (EerNisse) 4,535,638 Aug. 20, 1985
Vali et al. (Vali) 5,179,028 Jan. 12, 1993
Claims 1 through 16 stand rejected under 35 U.S.C. 103 as
unpatentable over EerNisse in view of Vali.
Rather than reiterate the arguments of appellants and the
examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
We will sustain the rejection of claims 1 through 7 under 35
U.S.C. 103 but we will not sustain the rejection of claims 8
through 16 under 35 U.S.C. 103.
Turning first to claims 1 through 7, we view claim 1 as
being much broader than appellants [and the examiner] view it.
Vali clearly discloses a method for measuring small mass changes
Appeal No. 98-0174
Application 08/545,162
4
[this is done by sensing an absolute frequency shift in the
oscillating frequency of an antibody-coated oscillator]. Vali
utilizes a quartz crystal resonator upon which specific
antibodies are deposited. The crystal is certainly capable of
being excited along two modes simultaneously. Note the use of a
fundamental frequency and a higher frequency (column 5, lines 47-
50 of Vali) by Vali, which appears to correspond to appellants’
alternative mode described from the bottom of page 4 to the top
of page 5 of the instant specification. Also, EerNisse
discloses, at column 2, lines 1-8, the capability of these
crystals to be excited along two modes. Vali also teaches the
measuring of changes in two different frequencies of the
resonator and using a ratio of these changes for detecting a
change in mass.
Alternatively, the teaching by Vali, at column 5, lines 57-
63, of using the ratio of a frequency harmonic to a fundamental
frequency for change of mass detection along with the teaching of
this ratio being independent of temperature and pressure would
appear to have been a strong suggestion to the artisan to so
employ the frequencies of EerNisse to calculate change in mass in
addition to the force and temperature calculated by EerNisse.
Appeal No. 98-0174
Application 08/545,162
5
Appellants’ argument that EerNisse ?was fully aware of the
Vali...method...? [brief-page 7] but failed to arrive at the
claimed invention is unpersuasive under 35 U.S.C. 103 because
under that portion of the patent statute, we look to what the
fictional artisan of ordinary skill would have been led to do
with the disclosures before him/her. The fact that one
particular person, e.g., EerNisse, might not have been led to do
something does not speak to what the fictional artisan of
ordinary skill within the meaning of 35 U.S.C. 103, would have
been deemed to do.
Similarly, appellants’ argument that the claimed subject
matter would not have been obvious because ?none of the
commercially available quartz microbalances use two modes for
temperature compensation? [brief-page 7] is not persuasive;
first, because none of the method claims 1 through 7 requires a
?microbalance? and, second, because the mere absence of
appellants’ claimed invention from the marketplace does not, per
se, make for patentability under 35 U.S.C. 103.
Thus, we sustain the rejection of claims 1 through 7 under
35 U.S.C. 103.
Appeal No. 98-0174
Application 08/545,162
6
We reach an opposite result, however, with regard to claims
8 through 16. We will not sustain the rejection of these claims
under 35 U.S.C. 103 because we do not find in the applied
references any teaching or suggestion of employing two
frequencies in a crystal microbalance in order to calculate a
mass applied to the crystal wherein a first frequency is
temperature sensitive and a second frequency is mass sensitive,
as required by instant claim 8. Note that unlike independent
claim 8, independent claim 1 does not specify that each frequency
is particularly parameter sensitive..
The examiner’s decision rejecting claims 1 through 16 under
35 U.S.C. 103 is affirmed-in-part.
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
Appeal No. 98-0174
Application 08/545,162
7
)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
RICHARD L. TORCZON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
William H. Anderson
Amsel LG LS Commander
US Army Communications-Elec Command
Fort Monmouth, NJ 07703-5010