Ex Parte Wolf et al

Patent Trial and Appeal Board

Feb 10, 2016

12160350 (P.T.A.B. Feb. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/160,350 06/01/2010
278 7590 02/12/2016
MICHAEL J, STRIKER
103 EAST NECK ROAD
HUNTINGTON, NY 11743
FIRST NAMED INVENTOR
Peter Wolf
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4402 1181
EXAMINER
RABOVIANSKI, IV AN I
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
02/12/2016 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):
striker@strikerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER WOLF, UWE SKULTETY-BETZ, JOERG STIERLE,
BJOERN HAASE, and KAI RENZ
Appeal2014-002013
Application 12/160,350
Technology Center 2800
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
JULIA HEANEY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-5 and 7-11under35 U.S.C. § 102(b) as
anticipated by Hinderling (WO 2004/074773 Al; relying on US
2006/0119833 Al to Hinderling et al., as the English equivalent) and claim 6
under 35 U.S.C. § 103(a) as unpatentable over Hinderling further in view of
Grillo (Patent No. US 6,833,740 B2) and further in view of Pourkamali
(Pourkamali et al., A 600kHz ELECTRICALLY-COUPLED MEMS
Appeal2014-002013
Application 12/160,350
BANDPASS FILTER, IEEE Conference Publications 19-23 Jan. 2003). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Claim 1 is illustrative:
1. A measuring device, comprising:
a transmitter unit (18) for transmitting measurement
signals (22) of different frequencies, wherein at least one first
frequency and at least one second frequency are provided for
the measurement signals; and
a processing unit (30) for processing the measurement
signals (22), wherein said processing unit has a frequency
response (70) with a first resonant frequency range (76) in
which the at least one first frequency of a first one of the
measurement signals (22) is located, wherein the frequency
response (70) has at least one second resonant frequency range
(78), in which the at least one second frequency of a second one
of the measurement signals (22) is located.
Appellants present arguments for independent claim 1 and dependent
claim 6 (Br. 5-9). Appellants do not present separate arguments for claims
2-5, and 7-11. Id. Claims not argued separately will stand or fall with
independent claim 1.
ANALYSIS
We have reviewed each of Appellants' arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner's finding that the claimed subject matter of representative claim 1
is anticipated within the meaning of§ 102 in view of Hinderling, and that
dependent claim 6 is also unpatentable over the applied prior art. Thus, we
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Application 12/160,350
will sustain the Examiner's§ 102 rejection, as well as the Examiner's§ 103
rejection, for essentially those reasons expressed in the Answer, including
the Examiner's Response to Argument section, and we add the following
primarily for emphasis.
The§ 102 Rejection
The Examiner's position is that the Appellants' argument relies upon
structure that is not recited in Claim 1 (e.g., Ans. 3, 4). Although a
processing unit is recited in the claim, the structure recited merely indicates
that the processing unit be capable of processing a measurement signal with
functionality of two frequency ranges (Id.).
The Examiner cited Hinderling as disclosing such a processing unit
(see e.g., Fin. Rej. 3; Hinderling - PU, M, PLL, VCO, FC, ADC, LP-Filter
and MIX blocks on Fig.16; i-f 80). Hinderling describes that in the spectral
range, the higher harmonic spectral components of the periodic signal
responses are measured in addition to the fundamental harmonics of said
responses, wherein the fundamental harmonics are encompassed by the "at
least one first frequency" (as recited in claim 1) in the first resonant
frequency range and the higher harmonic spectral components are
encompassed by the "at least one second frequency" (as recited in claim 1)
in at least one second resonant frequency range (e.g., Hinderling i-f 80). The
Examiner's position is that since Hinderling's processing unit is capable of
processing signals in multiple harmonic ranges, it is considered to have a
frequency response in those ranges, such that the processing unit as claimed
encompasses the processing unit of Hinderling.
Appellants do not directly address the Examiner's position that
Hinderling discloses a processing unit as claimed (Br. generally). The
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Application 12/160,350
Examiner's position that any further structure as argued by the Appellants is
not recited in the claim as written is reasonable (e.g., Ans. 3,4). Limitations
not appearing in the claims cannot be relied upon for patentability. In re Self,
671F.2d1344, 1348 (CCPA 1982).
Thus, a preponderance of the evidence supports the Examiner's
position (Ans. generally). Notably, Appellants have not directed our
attention to any persuasive reasoning or credible evidence to establish that
the Examiner's interpretation is unreasonable, nor to any portion of the
Specification that limits the definition of "the processing unit" to exclude the
processing unit found in Hinderling as pointed out by the Examiner.
Accordingly, we affirm the Examiner's anticipation rejection.
The§ 103 Rejection of dependent claim 6
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). "[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." Id. at 418.
Claim 6 depends from claim 1 via claim 4 which includes "a filter
device" (Claims App.). Claim 6 requires "at least [a] third order filter
circuit" in the filter device of the measuring device (Id.). Appellants do not
dispute that Hinderling' s processing unit includes a filter device as recited in
claim 4 (e.g., Final Rej. 4; Br.). The Examiner relies upon the teachings of
Grillo to exemplify the known importance of using more filters for filtering
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signals, and Pourkamali to exemplify that higher orders of filtration were
known to be desirable (e.g. Ans. 5).
Appellants argue that Grillo teaches that complex filters are to be
used, and that a practitioner therefore receives no teaching or suggestion
from this reference of a filter device for filtering of the auxiliary signal,
whereby the filter device includes a filter circuit of at least a third order
(App. Br. 8).
We are unpersuaded by this argument. Hinderling teaches the
processing unit includes a filter device As noted by the Examiner, Grillo
teaches the large amount of odd harmonics contained in the periodic square
signal makes filtering particularly difficult and it is then necessary to use
more filters and to increase their complexity to reach a low distortion rate in
the generated sine wave (Grillo, col. 1:20-40). The Examiner's
determination that "it would have been obvious to one of ordinary skill in
the art at the time the invention was made to use appropriate filtration for
obtaining desired amplitude of the harmonics taught by Grillo and to
incorporate it into the invention of Hinderling for suppressing not needed
frequencies" is reasonable (Ans. 5). Appellants do not dispute the
Examiner's determination that one would have been motivated to do so
because band pass filter is the standard way to eliminate frequencies that are
not desired (id.; Br. generally). Grillo does not teach the order of filtration.
However, the Examiner relies on Pourkamali to teach design of third or
fourth order of filtration (Pourkamali, Fig. 9b - higher order cascades
provide sharper roll-off and better selectivity).
Given these disclosures, it would have been prima facie obvious for
one of ordinary skill in the art to have included at least a third order filter
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circuit as recited in claim 6. Appellants have not provided persuasive
reasoning or credible evidence why one of ordinary skill in the art would not
have otherwise done so. See KSR, 550 U.S. at 421 ("A person of ordinary
skill is also a person of ordinary creativity, not an automaton.").
Thus, we also affirm the § 103 rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
dm
ORDER
AFFIRMED
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